author: MILLER, Judge. MARKEY, Chief Judge RICH, Judge

text:
    James R. PIPER and Thomas P. Johnston, Appellants, v. The ATOMIC ENERGY COMMISSION, Appellee.
    Patent Appeal No. 9071.
    United States Court of Customs and Patent Appeals.
    Sept. 26, 1974.
    Rehearing Denied Nov. 21, 1974.
    Markey, C. J., concurred in result and filed opinion.
    Rich, J., dissented and filed opinion.
    Robert H. Berdo, Alfred N. Goodman, Washington, D. C., attys of record, for appellants; Walter C. Farley, D. C. Roylance, Washington, D. C. (Roylance, Abrams, Berdo & Kaul, Washington, D. C.) of counsel.
    J. A. Horan, Washington, D. C., atty of record, for appellee, Randall G. Erd-ley, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MILLER, Judge.

This is an appeal from the final order of the Patent Office Board of Patent Interferences in a proceeding to determine the right of the Atomic Energy Commission (AEC) to have a patent issued to it instead of to the inventors or their as-signee, under section 152 of the Atomic Energy Act of 1954, as amended (42 U. S.C. § 2182). The board held that the AEC was entitled to direct the Commissioner of Patents to issue the patent to it. We reverse.

Section 152 provides, in part, as follows:

Any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission, shall be vested in, and be the property of, the Commission, except that the Commission may waive its claim to any such invention or discovery under such circumstances as the Commission may deem appropriate, consistent with the policy of this section. No patent for any invention if on discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application ... a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery . ... The Commissioner of Patents shall as soon as the application is otherwise in condition for allowance forward copies of the application and the statement to the Commission.
The Commissioner of Patents may proceed with the application and issue the patent to the applicant (if the invention or discovery is otherwise patentable) unless the Commission, within 90 days after receipt of copies of the application and statement, directs the Commissioner of Patents to issue the patent to the Commission
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In our view, the decisive question is whether the language in section 152, “useful in the production or utilization of special nuclear material or atomic energy,” reaches appellants’ invention, which is described below.

The Invention

Involved here is the patent application of Piper et al., serial No. 784,231, filed December 16, 1968, for “Antiradiation Agents.” The application claims certain chemical compounds stated to be useful as antiradiation agents, the disclosure of utility being as follows :

Such compounds are potentially useful in several different areas. Thus, for example, in X-ray therapy it is desirable to provide a drug which can be administered to a subject and which will then provide protection against the harmful effects of X-ray radiation. Antiradiation agents may also be useful in providing protection against other sources of harmful radiation such as may be encountered by personnel in the fringe areas of a nuclear explosion or by space travelers.

The application discloses that the claimed compounds were tested on mice by peritoneal injection of solutions or suspensions of the drugs and then exposing the mice so treated to “lethal radiation, i. e., 825 roentgens of X-rays or 950 to 1050 roentgens of gamma rays.” It is stated that no uninjected control mice survived for 30 days, whereas various percentages of the treated mice survived for 30 days according to the drugs administered and the size of the doses. It is assumed that the disclosure of utility of the claimed compounds as antira-diation agents was found sufficient inasmuch as that is the only utility disclosed and the application was allowed. The invention was developed in the course of a contract between appellants’ employer and the U. S. Army Medical Research and Development Command. That the contract was for the benefit of the AEC for purposes of section 152 is not at issue.

Proceedings Below

Subsequent events were in accordance with procedures under section 152. The Patent Office first called on the applicants to file a statement under oath or a declaration disclosing the circumstances under which the invention was made, because it appeared to be “useful in the production or utilization of special nuclear material or atomic energy.” Applicants filed such a declaration, which showed that the invention was made by them as employees of Southern Research Institute under a contract it had with the U. S. Army Medical Research and Development Command, No. DA-49-193-MD-2028, for the synthesis of potential antiradiation drugs. At the same time, applicants’ attorneys argued that the compounds claimed in the application are not “useful in the production or utilization of special nuclear material or atomic energy” within the meaning of section 152 and that the AEC should, therefore, have no interest in the patent application.

Pursuant to section 152, the AEC thereafter directed the Commissioner of Patents to issue a patent on the invention to it as the agent of the United States of America; applicants then requested a hearing before the Board of Patent Interferences, which docketed the proceeding, Case No. 245/71, on May 20, 1971.

On May 28, 1971, applicants filed with the board a motion for summary judgment, supported by argument, reciting the following (emphasis supplied);

This proceeding has been instituted under Section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182) to determine whether the Atomic Energy Commission is entitled to the title to the Piper at [sic] al application involved in this proceeding and to the patent which will issue thereon. It is believed that there is no question as to the facts involved in this proceeding and that the sole issue involved relates to statutory interpretation.
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It is believed that a proper interpretation of the language used in Section 152 of the Atomic Energy Act of 1952 [sic, 1954] (42 U.S.C. 2182) will be dispositive of this proceeding.
Section 152 of the Atomic Energy Act of 1954 applies only to an “invention or discovery, useful in the production or utilization of special nuclear material or atomic energy.” Therefore, if the invention disclosed in the Piper et al application is not “useful in the production or utilization of special nuclear material or atomic energy,” then the Atomic Energy Commission has no rights in the application.
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For the foregoing reasons, it is respectfully submitted that there is no genuine issue in this proceeding as to any material fact and that upon the facts before the Board of Patent Interferences, a summary judgment should be granted as a matter of law in favor of petitioners, James R. Piper et al.

The AEC filed an opposition to this motion and itself moved for summary judgment. Both its motion and its opposition were predicated, inter alia, on the proposition that the applicants’ compounds are “useful in the production or utilization of special nuclear material or atomic energy,” within the meaning of section 152. Thus the issue was joined on the single question of statutory construction.

The Board Decision

The board’s statements and holdings of significance to this appeal were as follows:

The parties having raised no issue of fact, these motions, plus other papers relating to the matter, raise before us a single dispositive issue as to which oral arguments were presented on behalf of both parties at a hearing on September 16, 1971.
The issue is whether the new compounds (antiradiation drugs) claimed in this application are or are not useful in the production or utilization of special nuclear material or atomic energy, within the purview of the Atomic Energy Act of 1954.
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. Whether the contract was for the benefit of the Atomic Energy Commission is not an issue here.
♦X- * * * * •*
It is apparent in view of the arguments presented by the parties that the breadth of the language of 42 USC 2182 under consideration is anything but clearly delimited.
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[W]e hold that under the facts of this case, where the efficacy of the drugs is so proximately related to the actual production or utilization of special nuclear material or atomic energy as a protective agent for those involved in such activity, the invention is useful in the production or utilization of special nuclear material or atomic energy within the purview of 42 USC 2182. Therefore, petitioners’ motion for summary judgment is denied and respondent’s motion for summary judgment is granted.
Accordingly, we hold in this case the Atomic Energy Commission is entitled to the direction [to the Commissioner of Patents to issue the patent to it] here in issue.

Opinion

The words in section 152 of the Act, “useful in the production or utilization of special nuclear material or atomic energy,” are by no means clear. Obviously, they could be so broadly construed as to include inventions relating to nuts and bolts on general purpose machinery used in the production of atomic energy —an absurd result which is not to be attributed to the Congress. See United States v. American Trucking Associations, Inc., 310 U.S. 534, 543, 60 S.Ct. 1059, 84 L.Ed. 1345 (1940); United States v. Ryan, 284 U.S. 167, 175, 52 S.Ct. 65, 76 L.Ed. 224 (1931). They could be interpreted to encompass inventions which, like that of appellants, appear to have a use predominantly in the nongovernmental sector. And they could be interpreted to exclude such inventions. As the board well said, the breadth of the statutory language “is anything but clearly delimited.”

A statute must be construed to achieve its clear objective, and if two constructions are possible, one achieving and the other defeating that objective, the former prevails. See Shapiro v. United States, 335 U.S.. 1, 31, 68 S.Ct. 1375, 92 L.Ed. 1787 (1048). The objective of the Atomic Energy Act of 1954 was recommended by the President in his message to the Congress on February 17, 1954, as follows:

5. Liberalize the patent provisions of the Atomic Energy Act, principally by expanding the area in which private patents can be obtained to include the production as well as utilization of fissionable material . [Emphasis supplied.]

That Congress adopted this recommendation is shown by the statement in the reports of both the Senate and House of Representatives that:

It [The Atomic Energy Act of 1954] accomplishes the purposes, set forth in the President’s February 17 message to the Congress.

The board’s approach, giving “useful in” a broad meaning in favor of the government, would narrow rather than expand the area in which private patents can be obtained — contrary to the objective of the Act. In contrast, that objective is achieved by giving “useful in” a narrower meaning to expand the area for private patents to include appellants’ invention.

Our conclusion is reinforced by the apparent lack of an essential or fundamental relationship which appellants’ invention bears to the production or utilization of special nuclear material or atomic energy. Nowhere in appellants’ application is there any suggestion that the compounds, per se, are essential or fundamental to such production or utilization. At most, the application merely states that:

Antiradiation agents may also be useful in providing protection against other sources of harmful radiation such as may be encountered by personnel in the fringe areas of a nuclear explosion or by space travelers. [Emphasis supplied.]

Indeed, counsel for appellee candidly admitted during oral argument that production of atomic energy is exactly the same, whether people in the area have the compound in them or not. And ap-pellee’s brief states:

Thus, if the invention of this application will provide protection against the harmful effects of radiation as the application states, . . . personnel engaged in the acts of making, refining or separating plutonium could use this drug as a radioprotective agent against the harmful effects of the radiation from the plutonium. It might conceivably be used in lieu of, or supplemental to, radiation shielding in carrying out these acts of plutonium production. [Emphasis supplied.]

Section 153 of the Act (42 U.S.C. § 2183) relating to “nonmilitary utilization” and compulsory licensing, effectively limits the “public interest” in patents, issued pursuant to section 152, to inventions or discoveries of primary importance in the production or utilization of special nuclear material or atomic energy, thus :

(a) The Commission may, after giving the patent owner an opportunity for a hearing, declare any patent to be affected with the public interest if (1) the invention or discovery covered by the patent is of primary importance in the production or utilization of special nuclear material or atomic energy; and (2) the licensing of such invention or discovery under this section is of primary importance to effectuate the policies and purposes of this chapter. [Emphasis supplied.]
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Similarly, section 158 (42 U.S.C. § 2188), another “public interest” section, limits special relief in antitrust law violations to patents or discoveries “of primary use” in the utilization or production of special nuclear material or atomic energy. See Helvering v. N. Y. Trust Co., 292 U.S. 455, 464-465, 54 S.Ct. 806, 78 L.Ed. 1361 (1934).

The board held that appellants’ invention is “useful in the production or utilization of special nuclear material or atomic energy,” because it is “proximately related” thereto as a protective agent for personnel engaged in such activities. However, we can find no basis in the legislative history or in the statute itself for such an interpretation, and no presumption of correctness attaches to such interpretation. See Fitch v. Atomic Energy Commission, 491 F.2d 1392 (Cust. & Pat.App.1974).

Appellee argues that the board was correct in holding that there is nothing in the statute that limits its application to. inventions which are solely useful in the production or utilization of special nuclear material or atomic energy, and we would agree. It then cites the board’s reference to the authority .vested in the Atomic Energy Commission by section 31 (42 U.S.C. § 2051) to conduct research and development activities relating to the protection of health and the promotion of safety during research and production activities; also the board’s conclusion that inventions or discoveries falling within the areas of health and safety would fall within the authorized activities of the Commission and thus were intended to be covered by section 152 as well.

The fatal defect in this conclusion is that the 1954 Act struck out section 11(b) of the 1946 Act, which provided:

No patent hereafter granted shall confer any rights with respect to any invention or discovery to the extent that such invention or discovery is used in the conduct of research or development activities in the fields specified in section 3. .

Section 3 of the 1946 Act was the predecessor of section 31 of the 1954 Act. No replacement provision for section 11(b) was included in the 1954 Act to exclude the private sector from patents involving research and development in the protection of health and the promotion of safety during research and production activities.

In view of the foregoing, we hold that appellants’ invention is not “useful in the production or utilization of special nuclear material or atomic energy,” within the meaning of section 152 of the Atomic Energy Act of 1954.

The decision of the board is reversed. Reversed.

MARKEY, Chief Judge

(concurring).

Because I do not regard the contractor-developed invention before us as falling under § 152 of the statute, I concur in the result reached by the majority. Vesting in the AEC of title to the patent in this case, in my view, is not mandated by the statute.

Because we are presented with a contractor-developed invention and a statutory provision, § 152, concerned with the right of the AEC to take title to patents on certain of such inventions, I would begin with at least the premise that the AEC may have such right in this case. The case is here because the invention before us has a use not totally oblivious to the existence of nuclear material or atomic energy. The burden of persuasion that the board erred rests upon appellant, the decision below being entitled as always to great weight. Nonetheless, the appeal is from a summary judgment and the sole question before us, i. e. whether this invention is within or without the statute, is one of law. That question turns on the relationship of the invention to the “production or utilization * * * atomic energy.” Each invention, and its use, must be independently analyzed, requiring that each case involving that phrase in § 152, of which this is the first, be determined on its own facts. The establishment of guidelines, or pigeon-holes into which future inventions may fall, must await delineation in future cases.

In the present case, I am convinced that the board erred in interpreting the statutory phrase “useful in” as though it read “useful in proximate relation to.”

The board’s sole duty in this case, and ours, is to determine a single issue, i. e. to decide whether the statutory phrase “useful in the production or utilization of special nuclear material or atomic energy” is of sufficient breadth to encompass the particular chemical compounds before us. In accomplishing that duty, it would appear unnecessary, and unwise, to substitute a new phrase for that employed in the statute by the Congress. Mindful of the dangers attending the exercise of such judicial powers, I find in the present case no requirement therefor. Neither the fact that we approach our duty in a precedential void, nor the fact that we are presented by the parties with conflicting interpretations, would justify the approach undertaken by the board in this case.

Moreover, I regard the new language substituted by the board as productive of less certainty, not more, in the future application of § 152. Future cases, as indicated above, will involve different inventions, the nature of which is necessarily unpredictable. It would be at least as difficult, if not more difficult, to apply to such future inventions the phrase “useful in proximate relation to” as it is to apply “useful in” to the invention now before us. In such future cases we would then be interpreting our own word, “proximate,” rather than the statute itself. Hence, I would limit our decision to the facts before us.

In all events, I believe a consideration of the facts of the case provides sufficient basis for our decision. The primary fact is the invention itself. The surrounding facts are those related to the environment in which the invention is used.

The Invention

The invention relates only to chemical compounds. The claims are totally devoid of any reference whatever to any use. .No relationship appears in any claim to the “production or utilization of special nuclear material or atomic energy.” No claim refers in any manner to “radiation.”

Of course the chemical compound must have utility. Though tested only on mice, we must assume, for the purposes of this case, that the compound is useful in protecting humans against the effects of radiation.

Although the parties employ the handy label “antiradiation drug,” the invention does not prevent the occurrence of radiation. It neither produces nor uses radiation. It has nothing whatever to do with radiation per se. The invention necessarily works only on the effects of radiation, which effects can occur only in or upon a living organism. The invention necessarily works the same, regardless of the source of radiation, the “production or utilization of special nuclear material or atomic energy” being only one such source.

Environment of Use

Thus, as above indicated, the use of the invention occurs at a special place. The invention is useful “in” the bodies of mice or men. It is useful “in” nothing else.

The use of the invention also occurs at a different time. Clearly, the invention before us, by its very definition, has no use at all until after special nuclear material or atomic energy has been produced and utilized. Regardless of when they may be injected or ingested, and regardless of how they work, internally or externally of the body, the compounds of the invention cannot perform their intended protective function until after radiation occurs and reaches or approaches the body to be protected. Then, and only then, can the compounds act to blunt or assumedly defeat, the effects of radiation in or upon the body. That the body may be bombarded by a continuing series of gamma rays does not conflict with the fact that the invention can act against the effects of each ray only after that ray is generated. Until there is radiation there is nothing to be protected against. If the compounds did not require the presence of radiation (from some source) for their utility, the case would not have arisen. In sum, use of the compounds requires the presence of radiation, not the other way round.

The use of this particular invention, against the effects (on humans) of radiation is simply too remote, in my view, to bring the invention within the purview of § 152.

“Production and Utilization”

The statute speaks of “production or utilization.” The actual production and utilization of special nuclear material or atomic energy are totally unaffected by the invention. As agreed at oral argument, special nuclear material and atomic energy are producible and utilizible in exactly the same way, for the same purposes, and with the same devices, as they have been for years, whether the invention is present or not.

“Production” and “utilization” are action words. The present invention takes no part whatever in the act of producing or in the act of utilizing special nuclear material or atomic energy. The invention is totally passive in relation to such production or utilization. It never “gets into the act.” It is just there, in the bodies of mice or men. A contractor-developed invention which has no effect whatever on “production or utilization or special nuclear material or atomic energy” cannot be said to be useful in such production or utilization, so as to require the AEC to take title to the patent thereon under § 152.

The only things anyone can do with atomic energy are to produce it and use it. It is clear that the Congress was and remains concerned with the producing of atomic energy and the using of it. Hence its language “useful in the production or utilization * * *.” The chemical compounds before us neither produce nor utilize special nuclear material or atomic energy. Title to a patent thereon may therefore be safely left in the hands of appellant in full compliance with the overall intent of Congress to encourage private industry. For the AEC to take title to this particular invention is contrary to that intent. At the same time, such taking would do nothing to further Congress’ concern for control over production and use of atomic energy.

The “Absence of the Invention” Argument

All of appellee’s arguments resolve into a single hypothetical. Fairly summarized, the argument runs, “In the absence of the invention, there may be some situations in which special nuclear material or atomic energy could not be pi'oduced or utilized by unprotected workers.” No evidence of any such situation is of record. From that sole hypothetical, counsel urges the conclusion that the invention must be “useful in” such production or utilization.

The difficulty with employing a hypothetical absence of the invention (rather than what it is and what it does to what) as the sole decision making device lies in its breadth of application. It is difficult, if not impossible, to conceive of an invention which might escape the designation of “useful in the production or utilization of special nuclear material or atomic energy” if one need only imagine circumstances under which such production or utilization would- be impeded by the absence of the invention from those circumstances.

The most that can be said for appel-lee’s hypothesis is that use of these chemical compounds might, under some circumstances, be ancillary to the production or utilization of special nuclear material or atomic energy. The difficulty is that that is not what the statute says.

Similarly, certain items within the hypothesis are clearly exempt. Appellee’s counsel admitted, with admirable candor at oral argument, that a tranquilizer invention in the bodies of nervous workers, though it enabled use of atomic ene-gy where it couldn’t otherwise be used, would not be “useful in” such production or utilization under the statute.

It is clear, nonetheless, that appellee’s hypothesis formed the fundamental basis for the board’s decision, which was that the “efficacy of the drugs is so proximately related to the actual production or utilization of special nuclear material or atomic energy as a protective agent for those involved in such activity” as to bring the invention under § 152. But that holding redrafts the statute to add “proximate relation to” after “useful in.” As indicated above, I find no warrant for such redrafting.

Contrary to the board’s statement, the “efficacy” of the compounds is necessarily upon or within the person whose body contains them, not on the “actual production” of atomic energy. As ap-pellee admits, the compounds themselves have no efficacy whatever vis-a-vis the actual production or utilization of special nuclear material or atomic energy. Only the imagined circumstances of ap-pellee’s argument, hypothesizing some production or utilization circumstances occurring in the absence of the invention, could have led the board to the view that the compounds somehow had an efficacy related, even proximately, to “actual production” of atomic energy.

The board supplies no compelling reason for interpreting “useful in the production or utilization of special nuclear material or atomic energy” as encompassing inventions only “proximately” related to such production or utilization. For the reasons stated, I regard the invention as “related” only to the effects of radiation on the bodies of mice or men, which effects occur after such production or utilization. But even if the board’s “proximately related” characterization, based on counsel’s hypothetical, be given full credence, I find erroneous the notion that the present chemical compounds, the use of which is only “proximately” related to production or utilization of atomic energy, are also used sufficiently “in” such production or utilization as to bring them within the statute.

The future may well disclose a class of inventions which are not directly employed in the actual production or utilization of special nuclear material or atomic energy but which are so closely related to, or so directly affect, such production or utilization as to fall within the provisions of § 152. In my view, the chemical compounds before us are not of that class.

Hence I would find that chemical compounds which are used only in the bodies of persons exposed to radiation, and only to counteract or preclude the effects of such radiation, are not so “useful in the production or utilization of special nuclear material or atomic energy” as to bring such' compounds within the purview of § 152. Accordingly, and on that basis, I would reverse the decision of the board.

RICH, Judge

(dissenting).

I respectfully dissent because I believe that the language of the applicable statute encompasses this invention.

Section 151 and Congressional Intent

The majority quotes from the President’s message to Congress and the House and Senate Reports. I agree with the reports that the AEC Act accomplishes the purpose set forth in the President’s message. That purpose was accomplished, however, not by § 152, but by the changes Congress made in § 11 of the 1946 Act by enacting § 151 of the 1954 Act. Section 152 was an entirely new section which deals with something entirely different from the “area in which private patents can be obtained,” of which the President spoke. If there is in the statute an intent to “liberalize,” the question to ask is “liberalize what?” I answer by saying “to liberalize § 11” by enacting § 151, and I will now show why.

The majority, like appellants, confuses the sections of the patent provisions of the 1954 Act which deal, first, with the rights of all inventors, whether they are employed by the Government or anyone else, to get private patents in the field of atomic energy, which was the subject of § 11 of the 1946 Act and is the subject of § 151 of the 1954 Act, and, second, with the disposition of title to inventions made under contracts with the AEC, the subject of § 152 and § 159 (42 U.S.C. § 2189) of the 1954 Act, which have no counterparts in the 1946 Act. The former is what Congress liberalized; the latter was made, if anything, more strict by the 1954 Act.

As the majority notes, the President called upon Congress to

Liberalize the patent provisions of the Atomic Energy Act, principally by expanding the area in which private patents can be obtained to include the production as well as utilization of fissionable material * * *. [Additional emphasis added.]

Congress responded by deleting § 11(b) in the 1946 Act and replacing § 11(a)(1) and (2) with new sections 151(a) and (b) where, among other things, the recitation of “production of fissionable material” was dropped in order that, under the revised section, private patents could be granted and confer rights in inventions useful in the production of fissionable material. If § 152 is to be considered in the same light as § 151, it would indeed be strange that Congress put into § 152 essentially the same wording, “production of special nuclear material,” which it deleted from § 151 to liberalize the patent provisions according to the President’s request. The answer, of course, is that Congress did not take away in § 152 that which it gave in revised § 151 because the two sections relate to different matters. Section 151 deals with the fields in which the Patent Office may grant patents, or in which the patents granted confer rights (i. e., the area in which private patents can be obtained), while § 152, as shown by its title, deals only with the disposition of title to patents where the invention is made or conceived while the inventor is under a contract with or for the benefit of the AEC. Accordingly, the legislative history supporting liberalization of the patent provisions does not apply to § 152, and thus the majority is in error in saying that the board’s, or this court’s, construction of the language of § 152 has anything to do with expanding “the area in which private patents can be obtained —[and is therefore] contrary to the objective of the Act.”

Substitution of Language

The concurring opinion chides the board and the dissent for indulging in the substitution of its own language for that of the statute. I do not believe that the board’s use of the term “proximately related to,” in the portion of the board’s opinion quoted by the majority, is properly characterized as a substitution of the language “useful in proximate relation to” for the “useful in” of the statute. I believe the board was properly characterizing what it believed was the relationship of this invention to the production or utilization of special nuclear material or atomic energy, and the board was no more engaging in the substitution of language than does the concurring opinion when it makes the following four statements:

The use of this particular invention, against the effects (oh humans) of radiation is simply too remote, in my view, to bring the invention within the purview of § 152.
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A contractor-developed invention which has no effect whatever on “production or utilization of special nuclear vfhaterial or atomic energy” cannot be said to be useful in such production or utilization * * *. * * * The chemical compounds before us neither produce nor utilize special nuclear material or atomic energy.
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The future may well disclose a class of inventions which are not directly employed in the actual production or utilization of special nuclear material or atomic energy but which are so closely related to, or so directly affect, such production or utilization as to fall within the provisions of § 152.
* * * * * *

If the board’s statement is to be looked upon as a substitution of language, then a much more serious substitution of language occurs, I believe, in the statement of the majority that notes “the apparent lack of an essential or fundamental relationship which appellants’ invention bears to the production or utilization of special nuclear material or atomic energy.” (Emphasis mine.) I ask what is an “essential or fundamental relationship” to atomic energy, and how is it to be determined? It seems to me that if Congress wanted the Commissioner to issue patents on contractor-made inventions to the AEC which bore an “essential or fundamental relationship” to atomic energy, it would have said so, and would probably have used words very much like those it did use in other sections of the Act, namely, § 153 and § 158.

If § 152 is to be interpreted as requiring “an essential or fundamental relationship * * * to the production or utilization of special nuclear material or atomic energy,” where Congress stated that the invention need only be “useful in” such production or utilization, then must not other provisions of the Act containing the same language be given the same restrictive meaning? The same phrase, “invention . . . useful in the production or utilization of special nuclear material or atomic energy,” appears throughout the patent provisions of the Act. Some of these sections, like § 157(b)(3), benefit the public. Does not the holding of the majority mean that one making an invention which lacks “an essential or fundamental relationship” to atomic energy, etc., cannot now get an award under the above section? Similarly, does not the majority’s reliance on the assumed fact that “production of atomic energy is exactly the same” whether the invention is used or not to show that the invention has no “fundamental or essential relationship” mean that the AEC can now deny claims for awards under § 157 for such things as the shielding mentioned by the majority’s quotation from the AEC’s brief because plutonium can be produced without it? This seems to be a short-sighted approach to statutory language which only requires the invention to be “useful in” atomic energy, etc.

Section SI of the Act

The majority’s reliance upon section 31, and its predecessor, section 3, seems misplaced. The majority treats its discovery that § 11(b) was amended in 1954 to remove a reference to § 3 as an easy answer to “the board’s conclusion that inventions or discoveries falling within the areas of health and safety would fall within the authorized activities of the Commission and thus were intended to be covered by section 152 as well.” (Emphasis mine.) In fact, the board’s reference to § 31 was not to show that § 152 would cover health and safety inventions, but only to show that present § 31 would give the AEC the right to contract for such health and safety inventions and thus, in the words of the board, the AEC “in issuing the direction under consideration here * * * did not reach beyond the limits of what it was in fact authorized and directed to do by direct arrangement with such a contractor.” The reference to § 3 in the 1946 Act, which was omitted in 1954, was in section 11(b), as noted by the majority, and, as previously noted, like section 1.1’s replacement, section 151, it deals only with the right of inventors to get patents and not the disposition of title to inventions made under AEC contracts.

Other Sections of the Act

The majority considers the language of § 153 and § 158 to control in some way the meaning of § 152. It is not clear to me how the different words Congress used in these sections has any bearing on the meaning of the words in the section which we must here construe. There is no basis for the majority’s statement that § 153 “effectively limits the ‘public interest’ in patents, issued pursuant to section 152 * * Section 153 has no connection at all with § 152; it is only a provision for compulsory licensing of patents and gives the AEC the right to declare a patent “to be affected with the public interest.” The patents are not “pursuant to section 152.” As noted earlier, § 152 is not a patent-granting or patent-issuing statute; it deals only with the disposition of rights in inventions made in the course of or under AEC contracts. Reliance upon the language of § 153 here shows again that the majority has not appreciated the fact that § 152 has nothing whatsoever to do with the issuance of patents. I fail to see how the use by Congress of different language in § 153, and § 158, has a bearing on the meaning of § 152. If anything, the fact that Congress chose to use different language in these sections suggests that Congress meant the sections to have different meanings.

The Concurring Opinion .

The concurring opinion, under the heading “Environment of Use,” states that:

Clearly, the invention before us, by its very definition, has no use at all until after special nuclear material or atomic energy has been produced and utilized. Regardless of when they may be injected or ingested, and regardless of how they work, internally or externally of the body, the compounds of the invention cannot perform their intended protective function until after radiation occurs and reaches or approaches the body to be protected.

I know of no support in the record for the proposition that “the invention before us, by its very definition, has no use at all until after special nuclear material or atomic energy has been produced and utilized.” Lethal radiation is not only released after special nuclear material and atomic energy are produced and utilized, but during the production and utilization process as well. For example, in the process of producing the “special nuclear material,” plutonium, radiation is emitted during the production process as well as from the final product. Even, however, if the statement of the concurring opinion were true, utility after production or utilization would not mean a lack of utility in production and utilization, which' is all the statute requires.

Secondly, I fail to see the relationship to utility (“useful in”) of the admitted fact that “the compounds of the invention cannot perform their intended protective function until after radiation occurs and reaches or approaches the body to be protected.” Raincoats and umbrellas cannot perform their intended protective function until after rain occurs and reaches or approaches the body of the user either, but this does not make them any less useful in fulfilling that function. As noted in the portion of the AEC brief quoted by the majority, the compounds of the invention are considered to be an alternative to, or supplement to, radiation shielding. The parties have not controverted the utility of conventional shielding in the production or utilization of special nuclear material or atomic energy, but the test established by the concurring opinion would read conventional shielding out of the statute as well.

The second reason why the concurring opinion finds the invention to be without the statutory language is that “special nuclear material and atomic energy are producible and utilizable in exactly the same way, for the same purposes, and with the same devices, * * *, whether the invention is present or not.” If the concurring opinion means by this statement and by the assertion that the “invention is totally passive * * * [and] never ‘gets into the act’ ” that the invention serves only as an emergency backup safety system, then such a rationale would read out of the statute all such backup system inventions. If what the statement means is that regardless of the presence of the drugs in an operator or another who is near a reactor or plutonium production apparatus which is releasing radiation at lethal levels, the reactor or apparatus will function just the same, then the concurring opinion takes a myopic view of utility. A requirement that in order to be “useful” an invention affect the production or utilization so as to modify it seems to me to be asking for the very standard which the concurring opinion vehemently rejects, the “absence of the invention” test. If one must ask whether “special nuclear material and atomic energy are producible and utilizable in exactly the same way, for the same purposes, and with the same devices * * *, whether the invention is present or not,” is not this a requirement that the AEC prove that in the “absence of the invention,” the utilization and production “in exactly the same way * * * with the same devices” would not be possible? Further, such a requirement would mean that such things as a reactor containment vessel and all of its concomitant radiation shielding apparatus would also not be “useful in” atomic energy, etc., because the reactor would run the same way without such shielding. To require that the production or utilization of atomic energy or special nuclear material somehow be affected by the presence of the invention appears, therefore, to be a much too stringent requirement where the language used by Congress only requires that the invention be “useful.”

Finally, it is the view of the concurring opinion that “All of appellee’s arguments resolve into” the single argument that “In the absence of the invention, there may be some situations in which special nuclear material or atomic energy could not be produced or utilized by unprotected workers.” I cannot agree that this is a correct summary of appel-lee’s arguments, which deal primarily with the meaning of the words of the statute. In fact, I have studied in detail all of the briefs of appellee before the board and this court, and the only evidence of such an argument appears in the single statement appellee’s counsel made in response to a question from the bench at oral argument, which statement is as follows: .

In the- case of a nuclear reactor or in the case of a laboratory where gamma radiation is produced and utilized, the persons in the area could be injected before they begin the reactions which produce the gamma radiation, and if they were very effective, perhaps certain reactions which take place would be rendered possible, whereas in the absence of radio-protective drugs it would be impossible to run the experiments. In any event, if the drugs have the utility that the application alleges they do, there is still the foreseeable use of injecting, for example, an operator around a nuclear reactor who is apt to be exposed to gamma radiation from the reaction, and thereby he could conduct certain work in that area which in the absence of the drugs he could not conduct.

In my view, the AEC did not ask that the ease be decided on the basis of the “absence of the invention” argument but only on the wording of the statute. Further I do not find in the opinion of the board reliance upon an “absence of the invention” test as a standard for determining whether an invention is “useful.”

I do not know the mental processes of the board any better than the author of the concurring opinion, but I do not find in the language of the board any basis for the statement of the concurring opinion; and it is improper, in my view, to attribute such a hypothetical foundation to the language of the board. I read the statement of the board which uses the word “proximately” as an effort by the board to note the proximity, or closeness, of this invention to atomic energy, etc., and to distinguish such inventions as the “tranquilizer” discussed by the concurring opinion. What the board was saying, I believe, was only that the compounds of the invention work against the very effect of atomic energy and special nuclear material production and utilization, radiation, while other inventions, such as tranquilizers, would not be so closely, or proximately, related to such production or utilization.

My Decisional Basis

I would affirm the decision of the board. I am satisfied that there is a logical answer to each and every one of appellants’ arguments and I find that the ordinary meaning of the statutory phrase “useful in the production or utilization of special nuclear material or atomic energy” encompasses this invention.

While the breadth of the language of the statute is, as noted by the board, “anything but clearly delimited,” I would limit our decision to the facts of this case and hold, as did the board, that “the efficacy of the drugs is so proximately related to the actual production or utilization of special nuclear material or atomic energy as a protective agent for those involved in such activity” that it is within the purview of § 152. In the posture in which this case comes before us it must be assumed that the invention will protect people, as well as mice, from the effects of gamma rays which are given off “in the production * * * of [the] special nuclear material,” plutonium, and is thus “useful in” the production of such material.

I am convinced that if Congress had not intended such a construction of its language, it would have used more limited phrases or limiting modifiers such as the majority now substitutes and such as Congress used in many other sections of the Act. Congress not having done so, however, I conclude that Congress must have intended the broader scope of the broader language it used. Accordingly, on the required assumption that the invention would save human lives, as it did the lives of the mice, I find the invention to be “useful in the production or utilization of special nuclear material or atomic energy” and would affirm the decision of the board.

      . At oral hearing, counsel for appellee suggested, as “the most vivid example,” the use of appellants’ invention for personnel in areas around nuclear power generating plants.

      . H.R.Doc.No.328, 83d Cong., 2d Sess. 7 (1954).

      . S.Rep.1699, 83d Cong., 2d Sess. 6 (1954) ; H.R.Rep.2181, 83rd Cong., 2d Sess. 6 (1954). It is to be noted that the statement refers to the Act as a whole — not to any particular section or sections, and nowhere in the committee reports is there to be found any statement indicating that “liberalization” was confined to any particular section or sections.

      . Sections 151 through 160 comprise Subchap-ter XII, “PATENTS AND INVENTIONS,” of the Act.

      . It is noted that section 11(e) of the 1946 Act, the predecessor to section 153(a), provided: “(1) It shall be the duty of the Commission to declare any patent to be affected with the public interest if (A) the invention or discovery covered by the patent utilizes or is essential in the utilization of fissionable material or atomic energy; . . ..” (Emphasis supplied.) The 1954 Act replaced “essential” with the words “of primary importance.” See Consolidated Engineering Corp. v. United States, 127 F.Supp. 558, 130 Ct.Cl. 504 (1955), cert. den., 349 U.S. 939, 75 S.Ct. 783, 99 L.Ed. 1267 (1955).

      . I disagree witli major portions of the approaches to statutory interpretation in the majority and dissenting opinions. The result reached by the majority accords with Congress’ overall liberalizing intent. I find no compelling evidence that Congress had an opposite intent when it came to § 152. Congress could hardly make “more strict” what had not previously existed. Contrast, the liberal provision, in § 152 as originally enacted, for waiver of title by the AEC to patents on inventions unquestionably within § 152. The 1961 amendment of § 152 totally deleted all inventions made by those engaged in “other relationships” with the AEC. H. R.Res.8599, 87th Cong., 1st Sess., 107 Cong.Res. 16953 (1961).
      We should not interpret a new provision, enacted with and as part of a new, liberalizing Act, in such manner as to achieve the intent of the old Act. Certainly we should not do so without strong guidance in that direction from the Congress.
      Moreover, I find no valid distinction, in this context, between the opportunity to “get” patents and the opportunity to “get title” to patents, or between government employees and government contractors.

      . Only title is at issue. The AEC’s existing royalty-free license to make, have made, and use the invention for all governmental purposes is not material to the question before us. Whether the AEC should or should not control the use of the invention for non-governmental purposes, in private hospitals, clinics, X-ray laboratories, and power plants, is equally irrelevant.

      . For example, having rejected the addition of a certain modifier (“directly”) on the “ground” that Congress could have inserted that modifier if it had wanted to, a view applicable to any interpretation, the board then proceeded to insert its own modifier (“proximate relation to”) after “useful in” in the statute. Obviously Congress could have inserted “proximate relation to” if it had “wanted to.” It didn’t.

      . Webster’s Seventh New Collegiate Dictionary, 1971 Edition.

      . Counsel for appellee admitted at oral argument, however, that these very compounds, in the bodies of mice, would not be useful in such production or utilization.

      . See footnote 5 of the majority opinion which notes that Congress replaced the very word “essential” with the words “of primary importance in” in the 1954 Act in another section of the Act.

      . This is really a minor argument of the board, anyway, compared with the many pages the board spent construing the meaning of the terms of the statute it had to interpret.

      . If such is the test to be applied, however, then the example given by counsel for appel-lee, discussed shortly, would suggest that the invention here fulfills it.

      . I do not believe that we should pre-decide that “inventions relating to nuts and bolts on general purpose machinery used in the production of atomic energy” are not within the statutory language. This is not the case before the court, and such statements will only make it more difficult for the court to decide other cases in the future, which may involve general purpose machinery.
      The statement of the majority opinion also suggests that the invention “[has] a use predominantly in the nongovernmental sector.” I do not find this supported by the record; and nothing is gained by speaking not of use in atomic energy, but predominant use in the nongovernmental sector. The implication of footnote 1 in the majority opinion is that the AEC counsel was giving a “vivid example” of use of the invention in the nongovernmental sector, when, in fact, I believe he was speaking only generally of the use of the invention “in the area around a nuclear reaction, nuclear reactor, say for the production of electrical energy,” and said nothing about whether nuclear reactors are governmental or nongovernmental. Section 2 of the Act (42 U.S.C. § 2012) even seems to show a Congressional finding that the use of atomic energy and special nuclear material is, at least to some extent, a governmental function.

      . For example, as has been shown, when Congress wanted to use the phrase “of primary use in” in § 153, it did so. Congress also used this more limiting language in § 158 (42 U.S.C. § 2188).


source: Caselaw Access Project

author: HAYS, Circuit Judge: OAKES, Circuit Judge

license: Public Domain

text:
    UNITED STATES of America ex rel. Cornelius LUCAS, Petitioner-Appellant, v. Paul J. REGAN, Chairman, New York State Division of Parole, Respondent-Appellee.
    No. 1070, Docket 74-1094.
    United States Court of Appeals, Second Circuit.
    Argued May 16, 1974.
    Decided Sept. 3, 1974.
    Oakes, Circuit Judge, dissented and filed opinion.

      Before KAUFMAN, Chief Judge, and HAYS and OAKES, Circuit Judges.
   HAYS, Circuit Judge:

Appellant commenced this action for a writ of habeas corpus alleging that an impermissibly suggestive pre-trial identification and certain errors in the state court trial at which he was convicted deprived him of various constitutional rights. The district court found no deprivation of constitutional rights and denied the writ. 365 F.Supp. 1290 (E.D.N.Y.1973). We affirm.

On the evening of April 23, 1964, three men gained entry to the apartment of Carl and Almeta Gardner by giving a false name. They proceeded to rob the Gardners of $140.00. In the course of the robbery Mr. Gardner was struck with a gun and had to be hospitalized.

Appellant, Edward Polhill and Norman Adderley were arrested and charged with the crimes. Shortly before trial Adderley pleaded guilty to a charge which was reduced in return for his promise to testify. Appellant was tried with Polhill before a jury and convicted in the Supreme Court, Kings County, New York. On October 15, 1968, the Supreme Court, Kings County, denied eoram nobis relief. The Appellate Division affirmed on a consolidated direct appeal and coram nobis appeal. 33 A.D.2d 994, 308 N.Y.S.2d 299 (2d Dep’t 1970). The New York Court of Appeals affirmed, 28 N.Y.2d 761, 321 N.Y.S.2d 371, 269 N.E.2d 914 (1971), rehearing denied, 29 N.Y.2d 549, 324 N.Y.S.2d 95, 272 N.E.2d 583 (1971). The United States Supreme Court denied certiorari. 404 U.S. 994, 92 S.Ct. 542, 30 L.Ed.2d 547 (1971). Appellant then commenced this action for a federal writ of habeas corpus, which the district court denied.

I.

Appellant claims the state trial court deprived him of a fair trial by denying a continuance to locate a material witness and to obtain psychiatric records for purposes of cross-examining a prosecution witness.

After the robbery Mrs. Gardner identified Polhill and Adderley as two of the robbers. After some hesitation she identified one Ulysses Bryant as the third robber. Shortly, thereafter, however, she was shown Lucas. She immediately stated that she had been mistaken in her earlier identification and that Lucas was actually the third robber. Defense counsel did not learn of Mrs. Gardner’s earlier identification of Bryant until a year later on May 21, 1965, the second day of the trial. During the next four days the defense tried but failed to locate Bryant. On May 25, the last day of the trial, the defense moved for a continuance, which the trial judge denied.

In Ungar v. Sarafite, 376 U.S. 575, 589, 84 S.Ct. 841, 849, 11 L.Ed.2d 921 (1964), the Supreme Court said:

“The matter of continuance is traditionally within the discretion of the trial judge. . . . There are no mechanical tests for deciding when a denial of a continuance is so arbitrary as to violate due process. The answer must be found in the circumstances present in every case, particularly in the reasons presented to the trial judge at the time the request is denied.”

Under the circumstances of this case the trial judge did not abuse his discretion in denying a continuance. It was not crucial that Bryant appear as a witness. The defense did not want him primarily to testify — the jury already knew that Mrs. Gardner had originally identified another as the third robber. The defense wanted Bryant primarily to show the jury how different his appearance was from Lucas’. But this could have been accomplished with photographs or by examination of other witnesses.

More important, the defense did not show that a reasonable continuance would enable it to locate Bryant. The probability of locating the witness must be considered in the light of “the reasons presented to the trial judge at the time the request is denied.” Ungar v. Sarafite, supra, at 589, 84 S.Ct. at 850. See also United States v. Ellenbogen, 365 F.2d 982, 986 (2d Cir. 1966), cert. denied, 386 U.S. 923, 87 S.Ct. 892, 17 L.Ed.2d 795 (1967); Neufield v. United States, 73 App.D.C. 174, 118 F.2d 375, 380 (1941), cert. denied, 315 U.S. 798, 62 S.Ct. 580, 86 L.Ed. 1199 (1942). The defense here did not even indicate what steps had been taken or would be taken to locate Bryant.

The. denial of a continuance to secure psychiatric records of Adderley was also within the area of the trial court’s discretion. The defense hoped to attack Adderley’s credibility by showing that his mental state was poor. The defense claims that it first learned of Adderley’s psychiatric history at the trial. The judge signed a subpoena for the records on the second day of the trial. Four days later the records still had not been produced. In seeking a continuance the defense did not indicate, and before this court still does not indicate, what measures it took to secure compliance with the subpoena. .Appellee here claims, and appellant does not deny, that a single phone call would have insured production of the records.

The trial court had to exercise its discretion in determining whether the records were so important that a continuance was warranted pending their production. At the time of the motion the significance of the records was unknown. Defense counsel had not examined them or, apparently, even attempted to examine them. The defense had already brought out on cross-examination that Adderley had undergone psychiatric examination. It was not unreasonable for the trial court to assume, in the absence of proof to the contrary, that the records of these examinations would not disclose any additional information of great importance to the trial. Under these circumstances denial of a continuance did not deprive appellant of due process.

II.

Three days after the robbery, and 90 minutes after she had identified Bryant, Mrs. Gardner was shown Lucas alone. She immediately stated that her prior identification of Bryant was incorrect and that Lucas was the third robber. Appellant claims that this showup was so impermissibly suggestive as to lead to a substantial likelihood of misidentification.

In Neil v. Biggers, 409 U.S. 188, 93 S.Ct. 375, 34 L.Ed.2d 401 (1972), the Supreme Court held that in cases like that now before us, where the identification occurred before the decision in Sto-vall v. Denno, 388 U.S. 293, 87 S.Ct. 1967, 18 L.Ed.2d 1199 (1967), a confrontation is not objectionable even though impermissibly suggestive, if it is reliable.

“[T]he factors to be considered in evaluating the likelihood of misidenti-fication include the opportunity of the witness to view the criminal at the time of the crime, the witness’ degree of attention, the accuracy of the witness’ prior description of the criminal, the level of certainty demonstrated by the witness at the confrontation, and the length of time between the crime and the confrontation.” Neil v. Big-gers, supra, 409 U.S. at 199, 93 S.Ct. at 382.

Applying this standard, we find Mrs. Gardner’s identification reliable. She testified that she had been able to see the robbers at close range when they first entered the apartment, that the light in the apartment was good, and that she was able to watch the robbers the entire time they were in the apartment. She stated that she couldn’t forget their faces and that they made an impression on her. As soon as she saw Lucas at the station house she withdrew her prior identification of Bryant and stated that Lucas was the third robber. This identification took place only three days after the robbery. Although she claimed to have given the police a description of the robbers before the show-up, the nature of the description does not appear in the record. To the extent that the appearance of Bryant differed from that of Lucas, her identification of Bryant might be taken to be a prior inaccurate description. But in view of the other factors supporting the reliability of the identification, this single factor does not render the identification unreliable. The prior identification of Bryant Was merely one factor affecting the credibility of Mrs. Gardner which the defense could and did raise to the jury.

III.

Shortly before the trial Adderley was permitted to plead guilty to a reduced charge in return for his promise to testify. Appellant claims that under the bargain Adderley would not have obtained the reduction in the charge unless his testimony implicated Appellant and Polhill. He claims that at the trial Adderley denied he would lose the bargain unless he implicated the defendants and that the trial judge and the prosecutor failed to correct this testimony. Indeed, appellant claims that the trial judge himself supported Adderley’s claim. Appellant argues this denied him a fair trial.

Immediately after the judge accepted the plea he explained to Adderley the scope of his duty in no uncertain terms:

The Court: “Bail continued. When you take the stand, I want the Gospel truth. I don’t care if it varies from what you said, you tell the Gospel truth.”
Defendant Adderley: “I will, your Honor.”

Thus it was accurate for Adderley to testify, and for the trial judge to support the testimony, that his promise was only to tell the truth.

Affirmed.

OAKES, Circuit Judge

(dissenting):

I respectfully dissent.

The pretrial identification of appellant by Mrs. Gardner was unnecessarily and impermissibly suggestive. Under all of the circumstances, Mrs. Gardner’s subsequent in-court identification of the appellant as the third robber was unreliable and presented a substantial likelihood of an irreparable mistaken identification. Thus I believe that a new trial should be ordered under Neil v. Biggers, 409 U.S. 188, 93 S.Ct. 375, 34 L.Ed.2d 401 (1972); Foster v. California, 394 U.S. 440, 89 S.Ct. 1127, 22 L.Ed.2d 402 (1969); Stovall v. Denno, 388 U.S. 293, 87 S.Ct. 1967, 18 L.Ed.2d 1199 (1967); and our Second Circuit cases such as United States ex rel. Rivera v. McKendrick, 448 F.2d 30, 34 (2d Cir. 1971), and United States ex rel. Phipps v. Follette, 428 F.2d 912, 915 (2d Cir. 1970). See also United States v. Wade, 388 U.S. 218, 87 S.Ct. 1926, 18 L.Ed.2d 1149 (1967).

The majority concedes, as it is required to, that the show-up procedure used to identify the appellant was im-permissibly suggestive. There were three robbers in the Gardner apartment. Three days after the robbery, a lineup was conducted at the station house at which Mrs. Gardner selected Adderley, Polhill and Ulysses Bryant as the three. Several hours later, these three men were brought in individually in a three part show-up by the Assistant District Attorney whereupon Mrs. Gardner confirmed her identifications. Ninety minutes later, however, appellant, who was bearded and 39 years old (Bryant was cleanshaven and 25) was brought to appear alone in a show-up before Mrs. Gardner. She then retracted her prior identification of Bryant and identified the appellant. In so doing it seems clear that Mrs. Gardner must have been influenced by the police and prosecutor’s apparent belief — from the show-up of Lucas — that her prior identification of Bryant was mistaken and that the appellant was a participant in the robbery. Cf. Neil v. Biggers, 409 U.S. at 196-197, 93 S.Ct. 375, and Foster v. California, 394 U.S. at 443, 89 S.Ct. 1127. The show-up was clearly suggestive, and, indeed, it was unnecessarily so; unlike the victim in Stovall, Mrs. Gardner was neither injured nor indisposed at the time of the idenification. Bryant and the others had been placed in a lineup earlier in the day. Neither the State nor the majority suggest any reason why the appellant could not also have been displayed to Mrs. Gardner in a lineup. See Note, Pretrial Identification Procedures — Wade to Gilbert to Stovall: Lower Courts Bobble the Ball, 55 Minn.L. Rev. 779, 789 (1971). See also Levine and Tapp, The Psychology of Criminal Identification: The Gap from Wade to Kirby, 121 U.Penn.L.Rev. 1079, 1081 (May 1973): “In fact the lineup procedure itself was developed by the British police because show-up confrontation was considered grossly suggestive and unfair.” See generally P. Wall, Eyewitness Identification in Criminal Cases (1965); N. Sobel, Eyewitness Identification, Legal and Practical Problems (1972).

I come then to the question whether, under the “totality of circumstances” the identification by Mrs. Gardner in court was sufficiently reliable even though the confrontation procedure was suggestive. The teaching of Neil v. Biggers, 409 U.S. at 198-199, 93 S.Ct. 375, is that the factors to be considered in evaluating the likelihood of misidenti-fication include (1) the opportunity of the witness to view the criminal at the time of the crime; (2) the witness’ degree of attention; (3) the accuracy of the witness’ prior identification of the criminal; (4) the level of certainty demonstrated by the witness at the confrontation; and (5) the length of time between the crime and the confrontation. In my view, these factors were here insufficiently met so that, indeed, there was “a very substantial likelihood of irreparable misidentification.” See United States ex rel. Phipps v. Follette, 428 F.2d at 915.

First, Mrs. Gardner’s opportunity to observe the third robber at the time of the crime was minimal. Under her testimony the' third robber moved in and out of the apartment searching the various rooms of the apartment for money; he had no physical contact with her. Adderley had tied her to a bed with her face down. ■ She was so hysterical that she did not know how much time elapsed during the incident.

Her attention, moreover, was focused on Adderley, who had put a gun to her head as soon as the door was opened, and held the gun to her head throughout the entire incident, threatening to kill her on three different occasions. Under the “totality of circumstances,” her degree of attention to the third robber must have been minimal. See United States ex rel. Rivera v. McKendrick, 448 F.2d 30, 34 (2d Cir. 1971).

As to the third Neil v. Biggers factor, Mrs. Gardner apparently gave no prior description of the third robber, or, if she gave one, no record of it has been preserved. In view of the fact, however, that she first identified a cleanshaven 25-year-old as the third robber, we may take it that any prior description she might have given would have been substantially different from that of a 39-year-old bearded man.

The next factor is the level of certainty of the person making the identification, but the Court was speaking to an initial identification, not one as here where there was a prior identification of another person, dissimilar in appearance, as the criminal. Admittedly, Mrs. Gardner spoke with certainty when she identified appellant. Her level of certainty during the prior identification of Bryant, however, had also been quite high. She was definitive and positive in identifying him as the third robber who searched the apartment for money. The transcript of her station house identification contains little doubt on her part as to Bryant’s having been the third robber.

At trial, to be sure, she did testify that she had been uncertain about Bryant. One can only suppose that this trial testimony was in explanation of her change of mind and change of identification. The fact that she was equally certain when she did ultimately identify Lucas does not, for me, carry much weight, because this was after an imper-missibly and unnecessarily suggestive show-up. Three days after the commission of the crime she was so angry (and properly so), or so upset or anxious, she was- apparently willing to identify anyone. Proof of this is that she made a mistaken identification of Bryant not once, but on two occasions on the very same day of her identification of Lucas.

Beyond this, her inability to make a reliable identification of Lucas is shown by the fact that she was apparently mistaken in her' belief that he had worn a hat during the commission of the crime. She testified that only one of the three men had worn a hat, and at the station house when Bryant was brought in for his show-up without a hat, she asked that he wear one. When he put a hat on, her identification was positive. The other witnesses — Mrs. Gardner’s husband and a detective who saw the robbers enter a car outside the building— indicated that only Polhill had been wearing a hat. If, as the majority says, Mrs. Gardner could not forget the faces of the robbers, which they claim made such an impression upon her, how could she misidentify Bryant and how could she think that the third robber was the one wearing a hat ?

It goes to make this case doubly compelling for a new trial that it was not until the trial that the defense learned that there had been a prior misidentification of Bryant. The defense wished to produce Bryant, presumably to show the jury how different his appearance was from Lucas’. While the majority says that this could have been accomplished by photographs or by examination of other witnesses, it is obvious that the production of Bryant himself would have been much the superior evidence, and there is no showing or indication that there were any photographs that would have been available upon diligent search. While the majority says that the defense did not even indicate what steps had been taken or would be taken to locate Bryant, the defense was not asked to do this by the court, and I cannot see what relevancy that has to whether or not the trial judge’s discretion should have been exercised in favor of granting the continuance, under Ungar v. Sarafite, 376 U.S. 575, 589, 84 S.Ct. 841, 11 L.Ed.2d 921 (1964). See also United States v. Ellenbogen, 365 F.2d 982, 986 (2d Cir. 1966), cert. denied, 386 U.S. 923, 87 S.Ct. 892, 17 L.Ed.2d 795 (1967).

There was very little other evidence implicating Lucas as the third robber, so that it cannot possibly be said — nor does the majority advance the suggestion — that the error in admitting Mrs. Gardner’s in-court identification testimony was harmless. See United States ex rel. Springle v. Follette, 435 F.2d 1380, 1384 n.4 (2d Cir. 1970). Detective Broughton’s identification of appellant was based only on several seconds of observation in the night, made from 150 feet away. The testimony of Adderley was inherently suspect and under New York law required corroboration, N.Y. Crim.Proc.Law § 60.22 (McKinney’s Consol.Laws, c. 11-A 1971); in addition, there was some doubt cast on his testimony on the basis of the promise made to him in return for his testimony as a prosecution witness. In any event, there was an inconsistency between Broughton’s testimony that he did not observe a fourth man in the car and was certain that there were three and Adderley’s to the effect that there was a fourth man in the car who never went into the apartment. The case against appellant relied heavily on Mrs. Gardner’s testimony. The jury was out for eight hours, indicating doubt on their part. The only way justice can be served, in my view, is by a new trial.

The majority seems to suggest that the factors which relate to the basic unreliability of Mrs. Gardner’s identification of the appellant are merely issues which the defense could have raised and did raise to the jury on cross-examination and summation. We are presented here, however, with such a compelling case of likely misidentification that the only way to remedy the potential harm to the defendant would be through the exclusion of Mrs. Gardner’s in-court identification.

The psychology of criminal identification is still in a state where a great deal of research has to be done — research by social scientists as well as by lawyers. See Marshall, Marquis and Oskamp, Effects of Kind of Question and Atmosphere of Interrogation on Accuracy and Completeness of Testimony, 84 Harv.L. Rev. 1620, 1639-40 (1971). See also Levine and Tapp, The Psychology of Criminal Identification: The Gap from Wade to Kirby, 121 U.Penn.L.Rev. at 1130. The best thinking on the subject is that “the dangers from fallible sense perception and memory and from suggestive influence are overwhelming.” Ibid. The fact that Neil v. Biggers, supra, and Kirby v. Illinois, 406 U.S. 682, 92 S.Ct. 1877, 32 L.Ed.2d 411 (1972), do narrow and are thought to cut back on Wade and Stovall does not in any way lessen our task as judges in arriving at fair and just decisions in identification cases. Here the eyewitness identification was exceedingly doubtful at best. It is true that this was a pre-PFade conviction and hence that no suppression hearing was required. We have all the more reason, however, to examine in depth whether or not a fair trial was had and whether or not Mrs. Gardner’s identification evidence was fairly admitted.

I would vote, as did Judge Breitel when the appeal was initially heard by the New York Court of Appeals, to reverse and to remand.

      . Appellant claims that under Brady v. Maryland, 373 U.S. 83, 87, 83 S.Ct. 1194, 10 L.Ed.2d 215 (1963), the prosecution was required to disclose this information before trial and that if this had been done the defense would have had ample time to locate Bryant. Neither Brady nor any other case we know of requires that disclosures under Brady must be made before trial. We would need a much more convincing showing that it would have been impossible to locate Bryant in the time available after disclosure before we would be willing to entertain such a claim.

      . The trial judge followed this admonition with another:
      The Court: “And when you are asked whether you are getting anything, don’t you hesitate. You must tell what you are being promised and what you hope to get; do you understand that?”
      Defendant Adderley: “Yes, sir.”
      The Court: “I don’t want any monkeying around or anything of that character.”

      . Adderley pleaded guilty to a lesser charge with respect to the robbery aud subsequently testified for the prosecution at Lucas’ trial. Polhill was plainly guilty and was convicted at trial with Lucas. Bryant was misidentified.

      . The transcript shows that she expressed • some initial uncertainty about identifying Bryant as the third robber. Once she saw him with a hat on, however, her identification was positive:
      Q. Who is that man?
      A. That’s one of the men that came to my house and held me up.
      Q. What did he do?
      A. lie ran around. lie was doing the searching. He was tearing up the house. He was looking to see if I had the money in the house.
      Tr. 321.

      . People v. Lucas, 28 N.Y.2d 761, 321 N.Y.S.2d 914, 269 N.E.2d 914, cert. denied, 404 U.S. 994, 92 S.Ct. 542, 30 L.Ed.2d 547 (1971).


author: FIELD, Circuit Judge:

text:
    McLEAN TRUCKING COMPANY, Petitioner, v. OCCUPATIONAL SAFETY AND HEALTH REVIEW COMMISSION, and Secretary of Labor, Respondents.
    No. 73-2392.
    United States Court of Appeals, Fourth Circuit.
    Argued June 4, 1974.
    Decided Sept. 4, 1974.

      Wayne H. Foushee, for petitioner.
    Karen K. Siegel, Atty., U. S. Dept, of Justice (William J. Kilberg, Sol. of Labor, Benjamin W. Mintz, Associate Sol., for Occupational Safety and Health, Michael H. Levin, Washington, D. C., for Appellate Litigation, Helen Schuitmaker, Atty., U. S. Dept, of Labor, Carla A. Hills, Asst. Atty. Gen., and Stephen F. Eilperin, Atty., U. S. Dept, of Justice, on brief, for respondents.
    Before CRAVEN, RUSSELL and FIELD, Circuit Judges.
   FIELD, Circuit Judge:

McLean Trucking Company (McLean) has petitioned pursuant to Section 11(a) of the Occupational Safety and Health Act of 1970 (Act), 29 U.S.C. § 651 et seq., for review of a final order of the Occupational Safety and Health Review Commission (Commission) which became final on October 31, 1973. This court has jurisdiction under 29 U.S.C. § 660(a).

The order determined that McLean had violated Section 5(a)(2) of the Act by its non-compliance with 29 C.F.R. 1910.132(a) in failing, to furnish protective foot equipment to its dock employees and require them to wear the same while working. The order held that a penalty was inappropriate under the circumstances of the case and enlarged the period of abatement to include ninety days from the date of the final order of the Commission. McLean is a motor vehicle common carrier which operates over one hundred terminals throughout the United States, one of which is located in Richmond, Virginia. At the Richmond terminal the dock workers transfer freight between waiting trucks or between designated dock areas and trucks. The freight handled on the dock is a mélange of sizes and shapes and the weight of the items varies from ten pounds to fifteen hundred pounds. Approximately seventy per cent of the containers are moved by hand or dollies and the remaining thirty per cent of the freight is moved by forklift trucks.

On April 6, 1973, a compliance officer of the Department of Labor conducted an inspection of the Richmond terminal, during the course of which he observed the loading dock operations and learned that McLean did not require its dock employees to wear safety shoes or other means of foot protection. The dockmen wore all types of footwear from tennis shoes and sandals to substantial work shoes. The officer noted that the freight being carried by the employees or placed on the dollies or forklifts could drop or fall on an employee’s foot and learned that, in fact, ten foot injuries had been reported in the three years prior to his inspection. The compliance officer concluded that the dock operation was conducive to foot injuries and that protective foot equipment should be worn and, accordingly, on April 19, 1973, the Secretary cited McLean for a non-serious violation of Section 5(a) (2). McLean timely contested the citation pursuant to 29 U.S.C. § 659(c), whereupon the Secretary filed a formal complaint before the Commission. Upon McLean’s answer the case was heard by an administrative law judge of the Commission, and upon the evidence adduced the judge determined that McLean had violated the Act. This decision of the administrative law judge became the final order of the Commission pursuant to 29 U.S.C. § 661 (i) and McLean’s petition for review of this order followed.

Primarily, McLean challenges the Commission’s order on the ground that the standard of conduct of 29 C.F. R. 1910.132(a) is so vague that men of common intelligence must necessarily guess at its meaning and, accordingly, it is constitutionally impermissible. In rejecting McLean’s contention on this point the administrative law judge relied upon the Commission’s decision in Ryder Truck Lines v. Brennan, 1 OSHC 1290, OSHRC No. 391 (1973). In that case Ryder was cited for non-compliance with the subject regulation by its failure to require foot protection for its employees on its loading dock, and like McLean in the present case, challenged the validity of the regulatory standard. The Commission (Moran, Chairman, dissenting) rejected Ryder’s contention. Subsequent to the oral argument in the present case the Fifth Circuit affirmed the action of the Commission and denied Ryder’s petition for review. Ryder Truck Lines, Inc. v. Brennan, 497 F.2d 230 (5 Cir., 1974). In rejecting Ryder’s claim of vagueness that Court noted that the regulation implements remedial civil legislation in contradistinction to criminal legislation, and since the rights guaranteed by the First Amendment are not even remotely involved, the regulation should be considered in the light of its application rather than on its face, citing United States v. National Dairy Corp., 372 U.S. 29, 36, 83 S.Ct. 594, 9 L.Ed.2d 561 (1963).

In addition to the foregoing “two critical factors,” we agree with the observation in Ryder that “[t]he regulation appears to have been drafted with as much exactitude as possible in light of the myriad conceivable situations which could arise and which would be capable of causing injury,” and that inherent in the regulatory standard “is an external and objective test, namely, whether or not a reasonable person would recognize a hazard of foot injuries to dockmen, * * This appraisal of the subject regulation accords with the Congressional purpose as reflected in the general duty statute that an employer must

“furnish to each of his employees employment and a place of employment which are free from recognized hazards that are causing or are likely to cause death or serious physical harm to his employees.” 29 U.S.C. § 654(a)(1).

The language employed in the foregoing statute is certainly no more definitive than that of the subject regulation, and we note that in its consideration of this legislation the Senate committee recognized “that precise standards to cover every conceivable situation will not always exist” and with respect to the general duty standard stated:

“The committee has concluded that such a provision is based on sound and reasonable policy. Under principles of common law, individuals are obliged to refrain from actions which cause harm to others. Courts often refer to this as a general duty to others. Statutes usually increase but sometimes modify this duty. The committee believes that employers are equally bound by this general and common duty to bring no adverse effects to the life and health of their employees throughout the course of their employment.”

In effect the legislative and regulatory standards call for the “reasonable man” test and the application of this classic criterion eliminates to a large degree the alleged facial vagueness. McLean’s argument that it was unable to ascertain what was required of it under the Act and Regulations is further blunted by the fact that 29 C.F.R. 1910.136 specifies that safety-toe foot-wear “shall meet the requirements and specifications in American National Standard for Men’s Safety-Toe Footwear, Z41.1-1967.”

In our opinion the totality of the foregoing elements was sufficient to convey to McLean a reasonable understanding of the conduct required of it by 29 C.F.R. 1910.132. See United States v. Petrillo, 332 U.S. 1, 67 S.Ct. 1538, 91 L.Ed. 1877 (1947).

McLean also contends that the Act denies it procedural due process by permitting the Secretary to issue citations with proposed penalties without giving employers an opportunity to be heard. It should be noted, however, that it is only where the employer fails to contest the citation that it becomes final and unreviewable. 29 U.S.C. § 659(a). If the employer contests the citation, the Commission is required to conduct a hearing and thereafter “issue an order, based on findings of fact, affirming, modifying, or vacating the Secretary’s citation or proposed penalty . * * 29 U.S.C. § 659(c). “Such a procedure, so long as it affords to those affected a reasonable opportunity to be heard and present evidence, does not offend against due process.” Yakus v. United States, 321 U.S. 414, 433, 64 S.Ct. 660, 671, 88 L.Ed. 834 (1944).

McLean’s final contention that the Act unconstitutionally delegates judicial power to the Secretary of Labor is without merit. The Congress gave careful consideration to this question and while the Secretary is. authorized to set mandatory standards and issue citations, the Act vests the adjudicatory function in the Commission as an independent governmental agency. With the right of administrative and judicial review carefully preserved, the mere fact that the initial adjudicative function has been conferred upon the Commission does not bring this legislation into conflict with the principle of the separation of powers. See Yakus v. United States, supra; Davis, Administrative Law Treatise, Vol. 1, § 2.12.

The petition is denied.

      . 29 C.F.R. 1910.132 appears as the first section of a subpart entitled “Personal Protective Equipment” and provides:
      (a) Application. Protective equipment, including personal protective equipment for eyes, face, head, and extremities, protective clothing, respiratory devices, and protective shields and barriers, shall be provided, used, and maintained in a sanitary and reliable condition wherever it is necessary by reason of hazards of processes or environment, chemical hazards, radiological hazards, or mechanical irritants encountered in a manner capable of causing injury or impairment in the function of any part of the body through absorption, inhalation or physical contact.
      (b) Employee-owned equipment. Where employees provide their own protective equipment, the emjDloyer shall be responsible to assure its adequacy, including proper maintenance, and sanitation of such equipment.
      (c) Design. All personal protective equipment shall be of safe design and construction for the work to be performed.

      . On November 12, 1973, McLean moved the Commission for a stay of its order pendente lite which stay granted.

      . The standard of the general duty statute was upheld in National Rlty. & C. Co., Inc. v. Occupational S. & II. R. Com’n, 489 F.2d 1257 (D.C.Cir.1973).

      . S.Rep.No.91-1282, Oct. G, 1970, U.S.Code Cong. & Admin.News, 91st Cong.2d Sess., p. 5185.

      . id., p. 5186.

      . In a floor speech Representative Daniels, in discussing the general duty clause stated:
      A recognized hazard is a condition that is known to be hazardous, and is known not necessarily by each and every individual employer but is known taking into account the standard of knowledge- in the industry. In other words, whether or not a hazard is “recognized” is a matter for objective determination ; it does not depend on whether the particular employer is aware of it. 116 Cong. Rec. (Part 28) 38377 (1970).

      . 29 U.S.C. §§ 651(b)(3) and 661.