author: BARNES, Circuit Judge.

text:
    Application of Deborah JOHNSON et al.
    No. 72-1344.
    United States Court of Appeals, Seventh Circuit.
    Argued April 13, 1973.
    Decided Aug. 3, 1973.
    As Amended Aug. 22, 1973.

      Jonathan M. Hyman, Chicago, 111., David Scribner, New York City, William J. Bender, Arthur Kinoy, Newark, N. J., for appellants.
    John C. Hoyle, Atty., U. S. Dept, of Justice, Washington, D. C., James R. Thompson, U. S. Atty., William T. Huyck, Asst. U. S. Atty., Chicago, 111., for appellee.
    Before HASTINGS, BARNES, and SPRECHER, Circuit Judges.

       The Honorable Stanley N. Barnes, Senior Judge of the Ninth Circuit, sitting by designation.

   BARNES, Circuit Judge.

This is an appeal from a decision of the District Court (1) declining to issue an order (a) annulling, and (b) directing the Clerk of the District Court to expunge, from the Records of the District Court, a report made on May 15, 1970, by the January Grand Jury of the District Court for the Northern District of Illinois, Eastern Division; and (2) dismissing, on motion of the Government, the said application for such annulment and expunction.

The order made on February 24, 1972 is concise and reads as follows:

“ENTER ORDER: Granting the Government’s motion to dismiss this application to expunge a grand jury report.

“The report in question was issued by the January 1970 Grand Jury upon authorization by this court on May 15,1970. Pursuant to this court’s order, copies of the report were distributed to designated public officials, the news media, and the general public at a nominal cost.

“Fifteen months after the grand jury report had been widely distributed, these three applicants moved to expunge that report on the grounds that the grand jury exceeded its lawful authority and violated Rule 6(e), Federal Rules of Criminal Procedure, by issuing the report and, further, that these applicants were prejudiced by certain statements contained in the report itself.

“The secrecy of grand jury proceedings is not absolute; authorization of disclosure by means of grand jury reports or otherwise is committed to the discretion of the court. In re Grand Jury January, 1969, 315 F.Supp. 662 (D. Md.1970), and cases cited therein. Here, the court specifically found that disclosure of the grand Jury’s findings was in the public interest. The court therefore concludes that issuance of the grand jury report was lawful.

“Furthermore, the contention that these applicants are prejudiced by the continued existence of the report also lacks merit. The report does not accuse them of any criminal conduct, nor are they under indictment in this court or any other court for activities related to the matters discussed in the grand jury report. Their reliance on Hammond v. Brown, 323 F.Supp. 326 (N.D.Ohio 1971), aff’d 450 F.2d 480 (6th Cir., No. 71-1278, October 22, 1971) is therefore misplaced.

“Under all of these circumstances, this court is of the opinion that the application lacks merit and should be dismissed.”

Appellants assert as grounds for their application:

(a) the Grand Jury had no authority to issue the Report;

(b) the Report and its disclosure violate the rule of secrecy of grand jury proceedings;

(c) the recommendations as to conduct of executive agencies violate the doctrine of separation of powers;

(d) the recommendations as to conduct and function of news media, and the conduct of lawyers in criminal cases, are beyond the jury’s lawful authority and jurisdiction;

(e) the submission of the grand jury conclusions and recommendations to “public exposure” is beyond the authority and jurisdiction of the grand jury;

(f) that the charge and findings that the failure and refusal of certain named persons to testify before the grand jury are contrary to law and the scope of the jury’s authority and jurisdiction ;

(g) the repetition of newspaper reports on the purported conduct of Black Panther leaders, members and adherents, including plaintiffs, was beyond the scope of the grand jury’s power;

(h) the report evidences bias against the Black Panther party, its members and adherents, including plaintiffs;

(i) the report “acted as a public Grand Censor” of the views and conduct of the community, the Black Panther Party, its members and adherents, including the “victims of the police raid of December 4, 1969, and those of the news media”;

(j) applicants were accused of conduct constituting a crime.

The United States, appearing in opposition to the motion, urges there are but two questions involved:

1. Whether the order of the district court dismissing the application to expunge is an appealable order; and

2. If so, whether the district court erred in dismissing an application to expunge from the record a' grand jury report published and distributed pursuant to an order of the district court where the application was made fifteen months after the publication of the report and the applicants are not accused in the report of any illegal activity.

We need to state here further background. The notice of appeal herein was timely filed on March 23, 1972. On April 3, 1972, appellants filed a petition for a Writ of Mandamus entitled Deborah Johnson, et al. v. Chief Judge Robson, in the district court of the Northern District of Illinois No. 71 C 1908, stating they believed a Writ of Mandamus rather than an appeal to be the correct procedure to follow. (Pet. at 7). This Court denied the petition for a Writ of Mandamus to require the District Court to expunge in a short order.

We agree that relief through a Petition for Mandamus is the proper procedure with which to have the Court of Appeals require a district court to consider the application.

The United States Court of Appeals is a statutory court and its jurisdiction is created and established by statute alone. 28 U.S.C. §§ 1291 and 1292 are the statutes, covering certain final opinions and certain interlocutory orders, enabling the taking of appeals. We also have jurisdiction by use of prerogative writs, authorized by 28 U.S.C. § 1651 — the “All Writs” statute. “Review by prerogative writ is extraordinary and rare.” Moore, Federal Practice, § 110.01. We have no other jurisdiction than that thus given by statute.

There being no criminal case pending against petitioners in the district court, the order of the district court was unrelated to the merits of a criminal trial, “and thus cannot be raised on appeal.” Chase v. Robson, 435 F.2d 1059, 1062 (7th Cir. 1970).

Because, however, such unusual motions as that made below are “final” in the sense that they are not interlocutory with relation to any pending matter, and are final as far as any relief to petitioners is concerned, the courts have at times seen fit to rely on the so-called “supervisory mandamus” power first enunciated in and recognized by the Supreme Court in LaBuy v. Howes Leather Co., 352 U.S. 249, 259-260, 77 S.Ct. 309, 1 L.Ed.2d 290 (1957). Cf. Will v. United States, 389 U.S. 90, 88 S.Ct. 269, 19 L.Ed.2d 305 (1967); Schlagenhauf v. Holder, 379 U.S. 104, 85 S.Ct. 234, 13 L.Ed.2d 152 (1964).

While an ordinary writ of mandamus will only issue to require a district judge to act, this “supervisory jurisdiction” is said to arise under the all-writs statute, “to correct error or abuses of discretion on the part of district judges in dealing with grand jury investigations.” United States v. United States District Court, 238 F.2d 713, 719 (4th Cir. 1965), cert, denied, 352 U.S. 981, 77 S.Ct. 382,1 L.Ed.2d 365 (1957).

But appellate courts are advised to be cautious in their approach to claimed rights under the all-writs statute, and “to confine an inferior court to a lawful exercise of its prescribed jurisdiction, or to compel it to exercise its authority when it is its duty to do so.” Roche v. Evaporated Milk Ass’n, 319 U. S. 21, 26, 63 S.Ct. 938, 941, 87 L.Ed. 1185 (1943). Obviously, the district court here had not refused to act; it acted when it denied the motion to quash, and dismissed the petition. Thus, the sole issue before this Court on the earlier mandamus petition was whether the exercise of the district court’s jurisdiction was lawful, and not an abuse of discretion.

That mandamus was the proper procedure to obtain a review of the refusal of the district court to annul and expunge does not mean that the refusal by this Court to grant relief was error. Such a type of review is “extraordinary” and “reserved for exceptional cases.” Ex Parte Fahey, 332 U.S. 258, 67 S.Ct. 1558, 91 L.Ed. 2041 (1947).

This is particularly true when the appellate courts are asked to consider the manner in which the district courts supervise grand juries. In re Texas Co., 91 U.S.App.D.C. 272, 201 F.2d 177 (1952), cert, denied, 344 U.S. 904, 73 S. Ct. 283, 97 L.Ed. 698 (1952); Pet. of A. & H. Transportation Co., 319 F.2d 69, 70 (4th Cir. 1963), cert, denied, 375 U.S. 924, 84 S.Ct. 266, 11 L.Ed.2d 166 (1963); Cobbledick v. United States, 309 U.S. 323, 60 S.Ct. 540, 84 L.Ed. 783 (1940); Chase v. Robson, supra.

We hold this appeal presently before us is taken from an unappealable order, which can only be reached by a petition for mandamus. That remedy has been tried, and failed.

We recognize that other Circuit Courts have exercised jurisdiction over actions of district courts with respect to grand jury reports, either after the report had been ordered filed as a public record, or had been ordered published. An example of the former is a recent case in the Fifth Circuit, decided June 4, 1973, entitled: In re Report of Grand Jury Proceedings filed on June 15, 1972, Honorable Jerry Woodward, et al., Appellants. 479 F.2d 458. In that opinion, no reference was made to the jurisdiction of the appellate court to consider the district court’s order. Neither does it appear from the opinion whether it had to do with a “special” grand jury, which was specifically authorized by Congress in 1970 (18 U.S.C. § 3333) .to make reports. We know it was not in this case, however, because the May 15, 1970 Order of Publication, made by Judge Robson in this case, was made prior to the Congressional enactment of 18 U.S.C. § 3331 et seq. (October 15, 1970 — Public Law 91-452), which authorized “special” grand juries.

In the above-mentioned Woodward matter, the appellant raised the same issue as was raised first here by appellant —that a “grand jury can only lawfully indict or return a no true bill and that it is powerless to speak publicly of any other matter.” Because of the decision of the Fifth Circuit Court to expunge certain passages objected to by State Judge Woodward, the panel decided to “pretermit the issue of whether a federal grand jury has the authority to make reports.” It then added:

“We point out, however, that there is persuasive authority and considerable historical data to support a holding that federal grand juries have authority to issue reports which do not indict for crime, in addition to their authority to indict and to return á no true bill.”

citing voluminous authority in its note 2. 479 F.2d 458, at 460 decided June 4, 1973.

The court ordered expunction of portions because they were found to “bear little relevance to federal subject matter,” or federal concern, or purpose.

The order here appealed from is not a “collateral order” — an off-shoot from the principal litigation in which it is issued. Thus, Cohen v. Beneficial Industrial Loan Co. (1949), 337 U.S. 541, 69 S.Ct. 1221, 93 L.Ed. 1528 is not applicable. Wright, Fed.Cts., 2d Ed., Ch. 11, § 101.

Nor can we hold that the present “appeal” could be considered by us as a petition for a common law writ of certiorari, and that 28 U.S.C. § 1651 “affords ample authority for using the writ as an auxiliary process and whenever there is imperative necessity therefor, as a means of correcting excesses of jurisdiction, of giving full force and effect to existing appellate authority, and of furthering justice in other kindred ways.” We would be required to find some such “excesses of jurisdiction” or denial of justice in the actions of Judge Robson. His action has already been rendered res adjudicada, by our denial of the Writ of Mandamus filed by the same petitioners. Writs filed under § 1651 cannot be used “to actually control the decision of the trial court.” Bankers Life & Cas. v. Holland, 346 U.S. 379, 74 S.Ct. 145, 98 L.Ed. 106 (1953); Will v. United States, 389 U.S. 90, 95, 88 S.Ct. 269, 19 L.Ed.2d 305 (1967); Parr v. United States, 351 U.S. 513, 520, 76 S. Ct. 912, 100 L.Ed. 1377 (1956).

A reading of Rule 6 of the Federal Rules of Criminal Procedure merely emphasizes the large legal discretion granted to and resting in the district judge with respect to grand juries, and the disclosure of testimony given before it.

Two further practical matters deserve comment.

First, the report sought to be expunged was filed by the jury on May 15, 1970, and the release, publication and distribution of the report was authorized the same day by Judge Robson, not by the jury. The Application to Ex- . punge was filed August 3, 1971, nearly fifteen months later. Meanwhile, as the district court’s order of dismissal states, “copies of the report (printed at the Government Printing Office at Washington, D.C., and sold the public for 50 cents) were distributed to designated public officials, the news media, and the general public.” As the appellants themselves assert, many newspapers, and radio and television stations, both in Chicago and throughout the country, published, paraphrased, referred to, commented upon, analysed and reviewed the report.

In the 35 months from the publication to the argument on appeal any harm that was done to appellants (if we assume some exists) is an accomplished fact. As was said by Judge Nordbye, a distinguished and experienced judge, when he declined to expunge a grand jury report:

“Any harm that may have resulted from [the] publicity has already taken place, . . . Rathei', the result of (ex-punction) might be that further publicity would flow from such a ruling.”

United States v. Connelly, 129 F.Supp. 786, 787-788 (D. Minn. 1955).

Thus, “no equitable remedy whereby to forestall the fait accompli” can be devised. Randolph v. Willis, 220 F.Supp. 355, 359 (S.D. Cal. 1963).

Second, appellants rely heavily on In Application of United Electrical, Radio and Machine Workers of America, 111 F.Supp. 858 (S.D. N.Y. 1953), (wherein applicants were charged with illegal activity) and their names “deliberately leaked” to the press; and Hammond v. Brown, 323 F.Supp. 326 (N.D. Ohio 1971), aff’d, 450 F.2d 480 (6th Cir. 1971) (wherein 30 indictments were also returned, and those indicted were about to stand trial). Here in the record before us, no illegal activity was charged against the appellants; none were indicted ; nor are they facing trial.

Appellants generally allege in their briefs they were charged with illegal possession of weapons, were engaged in deliberate obstruction of justice by refusing to testify, and were accused of being violence-prone revolutionaries. The government brief denies specifically that any of said charges against appellants appeared in the report. Thus, 19 unregistered guns were found on the raided premises, and catalogued, possession of which was a violation of law— but no reference is made as to who possessed these weapons. (Report, at 106).

Again, the report refers to a possible obstruction of justice when the appellants refused to testify, by the actions of one Bobby Rush, not by appellants. (Report, at 102-105). Finally, the report characterizes the members of the Black Panther party as “violence-prone” ■ — not the plaintiffs by name. (Report, at 126).

Thus, the distinction between the facts of 'this ease and the cases principally relied upon by appellants is clear. The usual reasons urged to protect those individually charged with crimes, or about to be charged with crimes, does not here exist.

We are satisfied that, should the dismissal by the lower court be an appeala-ble order, and not res judicata, by reason of our previous order, we should affirm, which we do.

We affirm the action of the District Court in dismissing the application upon all grounds mentioned in the District Court’s order, namely: 1. laches of the plaintiffs; 2. that the grand jury had the authority to make the report; 3. that before the disclosure, the district court properly found that such disclosure was in the public’s best interest; 4. that no prejudice results to any applicant by the existence of the report; and 5. that the motion to expunge cannot be accomplished as a fact, and the seeking of such relief for expunction is moot.

       The correct appellate citation for Hammond v. Brown, supra, is “450 F.2d 480 (6th Cir. 1971).”

      . “This matter comes before the Court on the petition of Deborah Johnson, Brenda Harris and Ronald Satchel, by their attorneys, for a writ of mandamus directed to Honorable Edwin A. Robson, Chief Judge of the United States District Court for the Northern District of Illinois, Eastern Division, to require him to annul the Report of the January 1970 Grand Jury, have the Clerk expunge the Report from the records of the Court, and reverse his order of May 15, 1970 authorizing publication of the Report. On consideration whereof,
      IT IS ORDERED AND ADJUDGED by this Court that the said petition for writ of mandamus be and the same is hereby DENIED.”
      This panel is informed by the Clerk of this Court that no record was ordered for use in connection with any proposed petition for Writ of Certiorari in the Supreme Court.

      , “The petitioner has sought to bring the matter here by appeal. Since it clearly is an unappealable order, we have treated the notice of appeal as a petition for a writ of mandamus . . . (Emphasis added.) Petition of A. & H. Transportation, Inc., 319 F.2d 69, 70 (4th Cir. 1963), cert, denied, 375 U.S. 924, 84 S.Ct. 266,11 L.Ed.2d 166 (1963).

      . Moore’s Federal Practice, §§ 110.02, 110.-28, and cases cited therein.

      . We note that in one of the cases cited in Note 2 in the 'Woodward opinion (the concurring opinion of Judge Wisdom in United States v. Cox, 342 F.2d 167 (5th Cir. 1965), cert, denied, 381 U.S. 935, 85 S.Ct. 1767, 14 L.Ed.2d 700 (1965)), the following language is used:
      “The decision of the majority does not affect the inquisitorial power of the grand jury. No one questions the jury’s plenary power to inquire, to summon and interrogate witnesses, and to present either findings and a report or an accusation in open court by presentment.” (Emphasis added), 342 F.2d at 189.
      And see, generally, Note: “The Grand Jury as an Investigatory Body,” 74 Harv. L.Rev. 590 et seq. (1961).

      . Moore’s Federal Practice, § 110.26.

      . A district judge is authorized to convene a grand jury when he thinks best, (Rule 6(a)) and discharge it when he thinks proper — within the eighteen months limitation (Rule 6(g)). He determines its size (Rule 6(a)). He appoints a Foreman and a Deputy Foreman (Rule 6(e)). He can direct disclosure (Rule 6(e)) of testimony contrary to the usual policy of secrecy of grand jury proceedings, once the good cause, as used in Ride 84, has teen demonstrated.

      . Compare United Elec. Workers, cited, with, “In the Matter of Camden County Grand Jury,” 10 N.J. 23, 66, 89, 89 A.2d 416, 444 (1952).

      . In this connection we note that the Report here involved, is described by the authors of Modern Crim. Proc., 3rd Ed., 1972 Supp. at p. 194 as:
      “A lengthy grand jury report in Chicago that severely criticized police and prosecutor conduct during ‘a raid’ in which two members of the Black Panther were killed.”


source: Caselaw Access Project

author: Mr. Justice CLARK.

license: Public Domain

text:
    Lorraine LE BEAU et al., Plaintiffs-Appellants, v. LIBBY-OWENS-FORD COMPANY, Defendant-Appellee.
    No. 72-1994.
    United States Court of Appeals, Seventh Circuit.
    Argued May 23, 1973.
    Decided July 17, 1973.

      Marion W. Garnett, Chicago, 111., Martin Slate, E. E. O. C., Washington, D. C., for plaintiffs-appellants.
    Stewart R. Jaffy, David dayman, Columbus, Ohio, Charles J. Griffin, Jr., Chicago, 111., John G. Poust, Terrence E. Kiwala, Chicago, 111., Andrew J. O’Connor, Ottawa, 111., for defendant-ap-pellee.
    Before CLARK,  Associate Justice, and ENOCH and CASTLE, Senior Circuit Judges.

       Associate Justice Tom C. Clark, United States Supreme Court, Retired, is sitting by designation.

   Mr. Justice CLARK.

Appellants, forty-six women employees of Libbey-Owens-Ford Company (LOF) at Ottawa, Illinois, filed this sex discrimination class action under the Civil Rights Act of 1964 against LOF, the United Glass and Ceramic Workers of North America, AFL-CIO-CLC (International Union) and Local 19, United Glass and Ceramic Workers (Local 19). The claim was based on a complaint filed with the Equal Employment Opportunity Commission (EEOC) on March 16, 1970, in which the appellants claimed that LOF and Local 19 had entered into collective bargaining agreements which discriminated against female employees at the Ottawa plants by (1) limiting women to certain jobs and departments and (2) failing to afford them the same protections against lay off and recall privileges that were accorded male employees. Both injunctive relief'and back pay were sought.

The International Union moved to dismiss on the grounds that it had not been named as a respondent before the EEOC, that it was not “doing business” in Illinois for purposes of jurisdiction and that Local 19, upon whom service had been made, was not its agent since the Local was self-governing and autonomous with respect to the matters complained of in the suit. The District Court granted this motion, whereupon, LOF and Local 19 moved to dismiss on the ground that the International Union was an indispensible party. The District Court held that the International Union was a party necessary “for a just adjudication under Rule 19,” Fed.R.Civ. P. and would be “adversely affected” by an adjudication in its absence, and it therefore dismissed the action. We affirm the dismissal of the International Union on the ground that it was not named as a respondent before the EEOC but reverse the judgment dismissing the suit against LOF and Local 19, finding a misapplication of Rule 19.

1. The Dismissal of the International Union:

None of the complainants before the EEOC named the International Union as a respondent and that Union never appeared or participated before the Commission. Title VII employment discrimination suits are permitted only “against the respondent named in the charge” before the EEOC. 42 USC § 2000e-5(f) (1). This policy decision is based on the Congressional purpose of encouraging conciliation and voluntary settlements of disputes and is supported by a long line of case authority: Bowe v. Colgate-Palmolive Company, 416 F.2d 711, 719 (7 Cir. 1969); Mickel v. South Carolina State Employment Service, 377 F.2d 239, 241 (4 Cir. 1967), cert, denied, 389 U.S. 877, 88 S.Ct. 177, 19 L.Ed.2d 166; Chrapliwy v. Uniroyal, 5 EPD § 8518, p. 7473 (1973); Jamison v. Olga Coal Co., 335 F.Supp. 454, 460-461 (W. Va.1971); Butler v. Local No. 4 and Local No. 269, Laborers’ International Union, 308 F.Supp. 528, 530-531 (N.D.Ill. 1969). See Waters v. Wisconsin Steel Works, 427 F.2d 476, 485-486 (7 Cir. 1970), cert, denied sub nom. United Order American Bricklayers v. Waters, 400 U.S. 911, 91 S.Ct. 137, 27 L.Ed.2d 151 (1970).

2. The Dismissal of LOF and Local 19:

As we have noted this dismissal was based on Rule 19, Fed.R.Civ.P. This rule mandates two separate but interrelated inquiries. First, is the absent party a person “to be joined if feasible”; and, second, if not feasible should the court in equity and good conscience allow the action to proceed or treat the absent party as indispensible. The desirability of joining a party depends on whether (1) complete relief can be granted in his absence; and (2) whether his interests will be prejudiced or those already parties will be subjected to a substantial risk of incurring inconsistent obligations. Where joinder is desirable but not feasible, the Rule provides criteria for determining whether the suit should be dismissed; the possible prejudice to the absent person or to those who are parties resulting from the entry of the judgment; the possibility of shaping relief to avoid such prejudice; the adequacy of the judgment entered in the person’s absence; and the alternatives that are available to the complainant if the action is dismissed for nonjoinder. See generally Provident Bank & Trust Co. v. Patterson, 390 U.S. 102, 88 S.Ct. 733, 19 L.Ed.2d 936 (1968). The application of Rule 19, of course, turns on the facts of each case. In the present case this application requires pragmatic consideration of the roles of LOF, the International Union and Local 19 in the formulation of the practices complained of as discriminatory and the stake each has in the same.

Collective bargaining negotiation between LOF and the Glass and Ceramic Workers Union has been carried on at two levels. At the LOF company-wide level master agreements have been negotiated and signed between LOF and the International Union. Such agreements govern wages, hours and conditions of employment for all union members working at LOF’s various plants. In some instances, however, the master agreement expressly permits variation of its general provisions by individualized agreements at the plant or factory level. For instance, Section 5 of the 1968 master agreement establishes departmental (as opposed to plant) seniority as the general rule for purposes of promotion, lay off, and recall of employees previously laid off. Under this rule an employee laid off from one department is out of work, although he may have worked at the particular plant longer than another employee working in a different department.

Section 9 of the master agreement, however, provides that written agreements at specific LOF plants previously or subsequently entered into modifying the seniority rules set out in the master agreement shall supersede its general rules. Local 19 and LOF’s Ottawa plant management negotiated and signed a “Seniority Security Agreement” on January 6, 1964, which provided for a seniority system materially different from that prescribed in the master agreement. Instead of departmental seniority, the local agreement called for plant seniority to govern lay off and recall decisions at the Ottawa plants. Thus, if an employee laid off from one department had more plant seniority than an employee in some other department, the former could displace the latter. Similarly, if both employees were laid off, the senior plant employee had the right to first recall, even though the open position was in a department in which he had never worked and the department had not yet recalled all of its own employees on the lay off list. But the local agreement was expressly made applicable to male employees only. Female employees were subject to displacement by male employees from another department with greater plant seniority, but apparently the female employees were themselves limited to the departmental seniority prescribed by the master agreement; they could not use their plant seniority to avoid lay off or obtain earlier recall.

3. Application of Rule 19:

(a) On the basis of these facts we are not convinced that the International is a party to be joined if feasible under Rule 19(a). Complete relief can be accorded appellants by money damages and such injunctive relief as is necessary to prevent future discrimination and to eliminate the effects of past illegal discrimination. No party has called to our attention, and we have been unable to find on our own, any agreement negotiated by the International Union which would be in any way affected by such a judgment. In these circumstances Rule 19(a) does not require the presence of the International. See Butler v. Local No. 4 and Local No. 269, Laborers’ Union, 308 F.Supp. 528, 532 (N. D.Ill.1969). Cf. I. O. Koven and Bros. Inc. v. Local Union 5767, United Steelworkers, 250 F.Supp. 810, 813-814 (D. N.J.1966), aff’d in part, and rev’d in part on the other grounds, 381 F.2d 196 (3 Cir., 1967).

Local 19 and LOF make much of the fact that the International Union is the sole and exclusive bargaining agent for appellants and other employees at LOF’s Ottawa plants and that the local, male-only seniority agreement was negotiated on the basis of authority conferred in Section 9 of the master agreement. Section 9 empowers a specific plant’s management and the Industrial Relations Committee composed of local union officers and other members to modify the master agreement’s seniority rules by mutual assent. Thus, it is argued that the local agreements are really a part of the master agreement which is negotiated and signed by the International Union and that the local agreements are negotiated and signed by members of Local 19 in their capacity not as members and officers of the autonomous Local but as members of the International Union. We reject this analysis. It is the very sort of formalistic, inflexible reasoning that Rule 19 was designed to avoid. Provident Bank & Trust Co. v. Patterson, supra. The question is what practical prejudice will the International Union, Local 19 and LOF risk if the case is adjudicated in the International Union’s absence. We see none. Section 9 of the master agreement indicates a decision by LOF and the International Union that seniority should be determined, if possible, by mutual agreement at the plant level. By delegating to local union members the power and responsibility to represent their own interests on the seniority issue, the International Union necessarily decided that uniformity was undesirable or at least non-essential. If appellants prevail, only local agreements and practices will be affected. It would not appear necessary for the District Court to modify any language in the master agreement or take any other action that might affect the interests of the International Union’s members outside Local 19. Likewise, the record reveals that Local 19 has its own treasury that will be available to satisfy any monetary judgment that might be rendered against it. There has been no suggestion that the International Union would somehow be liable for a judgment rendered against Local 19.

Nor does there appear to be any substantial risk that the LOF or Local 19 will be prejudiced by adjudication in the International Union’s absence. Local 19 states that LOF would be subject to suit by the International Union over its contract and therefore subject to the risk of inconsistent judgments. We doubt, however, that the International Union would have standing to enforce a local agreement, especially in the event local practices and agreements are adjudged illegal and discriminatory in this suit. However, we need not pursue this inquiry further since in its appellate briefs the Company makes no mention of the risk of prejudicing its own interests as a reason for dismissing the suit.

(b) Even assuming that the International Union is a party to be joined if feasible pursuant to Rule 19(a), the District Court’s decision to dismiss the suit in view of the jurisdictional bar to joining it was error under Rule 19(b). Any interest the International Union has in preserving local seniority agreements against appellants’ attack is too speculative to justify dismissal of the suit against Local 19 and LÓF. Arguments on behalf of the International Union are “particularly non-compelling” given its voluntary withdrawal from the suit. Chrapliwy v. Uniroyal, Inc., 5 EPD ¶ 8588, p. 7723 (1973). Local 19 appears to be an adequate representative of the International Union’s interests in this litigation. See United States v. Chesapeake and Ohio Railway, 5 FEP 308, 316 (4 Cir. 1972). Appellants, on the other hand, would be substantially prejudiced by a dismissal of their suit. At the least such a decision would require them to file another complaint with the EEOC naming both unions and LOF as respondents and then, with the Commission’s consent, to again file suit. Some or all relief may then be barred by limitation, and in any event, substantial delay would be entailed. In addition, the International Union might, as it did here, seek a dismissal for lack of personal jurisdiction. If the International Union prevailed, appellants would be permanently barred from all relief. In the light of these considerations we conclude that appellants’ suit against the LOF and Local 19 should not have been dismissed under Rule 19(b).

The judgment dismissing the International Union is affirmed; the judgment dismissing LOF and Local 19 is reversed and the case is remanded for further proceedings.

      . As amended by the Equal Employment Opportunity Act of 1972, 86 Stat. 103 (1972).

      . This agreement was signed by the “LIB-BEY-OWENS-FORD GLASS COMPANY, OTTAWA PLANTS” and “UNITED GLASS AND CERAMIC WORKERS OF NORTH AMERICA, AFL-CIO-CLC, LOCAL #19.” The first signature for the Local is identified as “President-Local #19.” On March 5, 1970, the agreement was amended by a document entitled “Security Seniority Agreement for Plants #5 and #7 — Ottawa, Illinois” and signed “for the Union” by Joseph S. Corrigan, “President, Local 19,” the Local’s two Vice-Presidents, and other union members.


author: STEVENS, Circuit Judge.

text:
    Gerald Daniel WALKER, Plaintiff-Appellant, v. Earl Joseph KRUSE, Defendant-Appellee.
    No. 72-1346.
    United States Court of Appeals, Seventh Circuit.
    Argued April 17, 1973.
    Decided Aug. 20, 1973.
    Rehearing Denied Sept. 18, 1973.

      Jerold S. Solovy and Richard C. Bol-low, Chicago, 111., for plaintiff-appellant.
    Tom L. Yates, Robert Guritz, Chicago, 111., for appellee.
    Before HASTINGS, Senior Circuit Judge, and CUMMINGS and STEVENS, Circuit Judges.
   STEVENS, Circuit Judge.

Plaintiff appeals from an order dismissing his malpractice action against a lawyer who was appointed to provide him with legal advice in defending a charge of attempted murder and aggravated battery. Plaintiff was found guilty in November, 1969, and sentenced to the Illinois State Penitentiary for a term of 16 to 20 years. In this litigation he accuses the defendant of negligence in failing to carry out various requests which plaintiff made before, during, and after the criminal trial. After deciding preliminary motions, the district court dismissed the complaint, holding that a civil action questioning the competency of defendant’s professional services should not go forward until plaintiff had exhausted state procedures, including habeas corpus, whereby his criminal conviction might be overturned on that ground. In effect, the district court dismissed the complaint on abstention grounds.

We believe the lower court should not have abstained. Jurisdiction is based on diversity of citizenship, and the complaint raises only issues of state law. Except in extraordinary situations, federal courts should not abstain from deciding state law issues in diversity cases. See Meredith v. Winter Haven, 320 U.S. 228, 64 S.Ct. 7, 88 L.Ed. 9.

Moreover, after the district court’s decision, the Illinois Supreme Court affirmed plaintiff’s conviction and denied his petition for writ of habeas corpus. Walker v. Pate, 53 I11.2d 485, 292 N.E.2d 387 (1973). Therefore, even if the basis for the district court’s action were correct, there no longer is any reason why this matter should not be decided. We are convinced that the Illinois courts would dismiss this action on any of several grounds.

We are assured by counsel that the competency of counsel question was raised on appeal, but the Supreme Court’s exhaustive opinion never specifically addressed it. Apparently the court saw no merit in it whatsoever: “There are other contentions which the defendant makes, but the clear want of merit in them warrants our not formally discussing them in detail in this already lengthy opinion.” Id. at 399. This holding by the Illinois Supreme Court might very well bar relief in plaintiff’s malpractice action. Plaintiff correctly observes that the standard of proof in a malpractice action might not be as strenuous as it is when questioning the constitutional adequacy of counsel. However, there is sufficient similarity that an Illinois civil court might dismiss the complaint when the Supreme Court has found a “clear want of merit” in the contention.

Alternatively, the Illinois courts might require an allegation of innocence. On the record before us we must assume that plaintiff is in fact guilty of the crime of which he was convicted. He does not allege otherwise; he primarily contends that his conviction might have been avoided if the defendant had complied with certain tactical requests relating to the possible suppression of incriminating evidence. In these circumstances, it is questionable whether the Illinois courts would conclude that the defendant’s alleged professional shortcomings proximately caused an injury to the plaintiff which entitles him to damages. An Illinois court might well hold, as a matter of law, that a criminal conviction cannot support a malpractice claim unless the plaintiff is able to establish, his actual innocence.

Illinois also has a firmly established policy of requiring the plaintiff advancing a negligence claim to plead and prove his own freedom from contributory negligence. In view of the rather unusual relationship between plaintiff and defendant during the criminal proceedings, it is doubtful that plaintiff could satisfy this requirement. The references to the criminal trial which are before us make it quite plain that plaintiff retained control of his own defense and utilized defendant’s assistance only as he pleased; he did not entrust responsibility for the conduct of the trial to counsel, and therefore cannot properly claim that counsel served in a typical fiduciary capacity. Since the complaint, as illuminated by the various exhibits and attachments in the record, makes it clear that plaintiff participated significantly in, and interfered with, the conduct of the trial, an Illinois court might well conclude, as a matter of law, that plaintiff’s own contribution to the ultimate outcome should foreclose any recovery on a negligence theory.

Moreover, there are strong reasons of policy which might persuade the Illinois courts to hold that a lawyer, who has been appointed to serve without compensation in the defense of an indigent citizen accused of crime, should be immune from malpractice liability. Requiring such lawyers to defend charges such as this can only make it more difficult for the Bar to discharge its professional responsibilities which have recently been so greatly enlarged by the Supreme Court’s holding in Argersinger v. Hamlin, 407 U.S. 25, 92 S.Ct. 2006, 32 L.Ed. 2d 530. The reasoning which provides immunity for various public officials, see, e. g., Pierson v. Ray, 386 U.S. 547, 553-554, 87 S.Ct. 1213, 18 L.Ed.2d 288, is also applicable to the performance by private citizens of public services which play such a significant role in the administration of justice.

In a diversity action it is our duty to decide the case as we believe an Illinois court would decide it. In the absence of Illinois precedent precisely in point, we must estimate, as best we can, what an Illinois tribunal would do with this case. Although we are not sure of the theory on which a state court would base its decision, we are convinced that an Illinois court would dismiss this complaint for failure to state a cause of action. The district court is therefore directed to vacate its order of February 22, 1972, and to enter judgment dismissing the complaint with prejudice.

Vacated and remanded with directions.

      . In Olson v. North, 276 Ill.App. 457 (2d Dist. 1934), on which appellant relies, the plaintiff did allege his own innocence as well as the fact that third persons had confessed to the crime for which he was tried. See 276 Ill.App. at 461-465. Indeed, in this connection, the Illinois courts could require plaintiff to obtain post-conviction relief as a prerequisite to civil relief.

      . See, e. g., Williams v. Rock River Savings and Loan Ass’n, 51 Ill.App.2d 5, 200 N.E. 2d 848 (2d Dist. 1964).

      . The order appointing defendant in the criminal trial reads as follows:
      “ON MOTION of the Defendant, acting as Attorney for himself,
      “IT IS HEREBY ORDERED AND DECREED that EARL JOSEPH KRUSE, a duly qualified practicing attorney of the State of Illinois, be and he is hereby appointed as counsel for the defendant, DANIEL WALKER, limited in scope as heretofore indicated on the record by the defendant, but subject to further direction of defendant as may from time to time be expressed on the record hereafter.”
      The foregoing order was entered by Judge Carey on August 29, 1969, and approved by plaintiff Walker pro se.


author: JOHN W. REYNOLDS, District Judge.

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Emma Jean GREATHOUSE, Defendant-Appellant.
    No. 72-2004.
    United States Court of Appeals, Seventh Circuit.
    Argued June 14, 1973.
    Decided Aug. 16, 1973.
    Rehearing Denied Sept. 26, 1973.

      Carolyn Jaffe, Chicago, Ill., for defendant-appellant.
    James R. Thompson, U. S. Atty., William T. Huyck, and Terry M. Gordon, Asst. U. S. Attys., Chicago, 111., for plaintiff-appellee.
    Before SWYGERT, Chief Judge, and GRANT and REYNOLDS, District Judges.

       Senior District Judge Robert A. Grant of the Northern District of Indiana is sitting by designation.

       Chief District Judge John W. Reynolds of the Eastern District of Wisconsin is sitting by designation.

   JOHN W. REYNOLDS, District Judge.

Defendant Emma Jean Greathouse was convicted in a court trial of three counts of transporting and negotiating forged securities in violation of 18 U.S. C.A. § 2314. She now claims she was denied a fair trial because the presiding judge had previously read the presen-tence report of codefendant Bob Greene who testified against her and because this same presentence report, which tended to impeach Greene, was not disclosed to her attorney.

In August 1971, defendant collaborated with Greene to forge and cash securities of the Eastman-Kodak Company. Defendant made counterfeit copies of a legitimate Eastman-Kodak check. Greene, who had gained the trust of certain bank employees from his previous employment as a bookkeeper for a large corporation, attempted to cash the checks at various banks in the immediate area.

Greene pleaded guilty on July 11, 1972, a presentence was ordered, and the date for sentencing was set. On the same day that Greene was to be sentenced, defendant’s trial began. Before the Government began its case-in-chief, the judge made the following remarks:

“I must advise the parties that I have read the presentence investigation report of Mr. Greene, which has been in my office for some days. So, I am pretty well familiarized with the case.”

Defense counsel did not raise any objection.

Defendant does not contend that the presentence report of Greene contained any new information bearing on the offense. The alleged prejudice arose from Greene’s statement in the report that defendant told him a third party, the cashier, “came to her house to meet girls and smoke dope,” thereby suggesting that defendant engaged in other criminal activities. The defendant claims that the report’s value to her lay in the fact that Greene lied in the report even about such things as his age, education, and prior marital and employment history.

During the trial Greene testified for the Government that defendant had given him the checks and that he negotiated them at her request, sharing some of the proceeds with her. Other evidence also suggested that defendant had participated in the crime. A search of a filing cabinet in the defendant’s office produced twenty-eight undated Eastman-Kodak checks payable in blank, a receipt for a check of $7,000, and a legitimate Eastman-Kodak check which was payable to a third person and on which defendant’s fingerprints were found. Another blank Eastman-Kodak check was found on defendant’s person.

Defendant attempted to show that Greene alone was guilty. She indicated that they had been having an affair. And it was corroborated that Greene visited her office often and maintained exclusively the filing cabinet where most of the checks were found.

In finding defendant guilty on all counts, the judge stated, “Mr. Greene is probably a pathological liar” and “I don’t believe his testimony in many respects.” However, he went on to say, “I think the evidence is too strong to discharge * * * [defendant] from the charge of aiding and abetting. * * * [T]o say that she did not have any knowledge of what was going on and did not participate and help Mr. Greene in his activities * * * is stretching my credulity too far.”

Defendant has failed to establish that the judge’s reading of the presentence report prejudiced her to any significant extent. Nothing in the record indicates that the information in the presentence report affected the judge’s deliberation. Much that comes to the attention of a judge in a bench trial would be inadmissible in a jury trial. But as this court said in United States v. Fox, 437 F.2d 733, 734 (7th Cir. 1971), “* * * in a bench trial, the court is deemed to have considered only admissible and relevant material [citations omitted], at least absent a showing of substantive prejudice.” To the same effect is Judge Castle’s statement in United States v. Menk, 406 F.2d 124, 126 (7th Cir. 1968), cert, denied 395 U.S. 946, 89 S.Ct. 2019, 23 L.Ed.2d 464 (1969):

“•* •>;■ * we cannot probe the mind of the trial judge * * *, [and] we likewise cannot presume error by inferring that he considered the improperly admitted evidence * * * ‘the appellant has both the burden of proving error and of showing that he was prejudiced thereby.’ * * * ”

Defendant also contends that she should have been shown Greene’s presentence report since it contained information impeaching him. Brady v. Maryland, 373 U.S. 83, 83 S.Ct. 1194, 10 L.Ed.2d 215 (1963). Putting to one side the facts that defendant did not ask to see the presentence and that Brady involved the prosecutor’s duty, not the trial judge’s, *and assuming that the duty imposed by Brady extends to impeachment evidence, it still does not follow that the presentence report must be disclosed. Presentence reports warrant special treatment. As other courts have held, requiring disclosure of a presentence report is contrary to the public interest as it would adversely affect the sentencing court’s ability to obtain data on a confidential basis from the accused and from sources independent of the accused for use in the sentencing process. United States v. Evans, 454 F.2d 813, 820 (8th Cir. 1972). Rule 32(c)(2) of the Federal Rules of Criminal Procedure.

Even if defendant had a right to see the report, the report’s negligent suppression would not warrant reversal. As it was, the trial court made it clear that he found Greene a “pathological liar.” It is not likely that he would have reached a different verdict if Greene had been more thoroughly impeached by cross-examination. Kyle v. United States, 297 F.2d 507, 514 (2d Cir. 1961).

The judgment of the district court is affirmed.


author: PELL, Circuit Judge.

text:
    Milton M. MORRIS, d/b/a Milmor Manufacturing Co., Plaintiff-Appellant, Cross-Appellee, v. UNITED STATES of America, Defendant-Appellee, Cross-Appellant.
    Nos. 72-1281, 72-1282.
    United States Court of Appeals, Seventh Circuit.
    Argued April 5, 1973.
    Decided Aug. 3, 1973.

      Henry C. Lowenhaupt, Owen T. Armstrong, St. Louis, Mo., for Morris.
    Donald B. Mackay, U. S. Atty., Springfield, Ill., Scott P. Crampton, Asst. Atty. Gen., Jane M. Edmisten, Atty., Tax Div., Dept, of Justice, Washington, D. C., for U. S.
    Before CLARK, Associate Justice, and PELL and SPRECHER, Circuit Judges.

       Associate Justice Tom C. Clark, United States Supreme Court, Retired, is sitting by designation.

   PELL, Circuit Judge.

Taxpayer appeals from a partial judgment in his favor in this excise tax refund suit. The United States cross-appeals. During the five quarters in issue, Morris manufactured rectangular steel boxes, most of which were approximately 17 feet long, 8 feet wide, and 5 feet high and had been designed to be lifted onto trucks purchased elsewhere which taxpayer had modified by adding hydraulic lift equipment. These boxes or “containers” were purchased by construction companies primarily for storage at building sites, for trash accumulation, and for holding tools and materials during movements thereof. The Government contended that the containers were automobile truck bodies and thus subject to a 10% excise tax under Section 4061(a) (1) of the Internal Revenue Code of 1954. Taxpayer paid the assessment with interest and penalties and brought this suit for a refund. The district court, 331 F.Supp. 200, concluded that the containers were not automobile truck bodies but were parts or accessories subject to the 8% excise tax, Section 4061(b) of the Internal Revenue Code of 1954. That holding is challenged by Morris, who contends no tax at all was owing or, in the alternative, that the court was correct that the tax should be only 8%.

In reaching the above result, the district court made two findings of fact which the Government and taxpayer view as inconsistent. The Government emphasizes the finding that the containers “are the load-carrying function of the truck.” The Government’s theory of the ease is that containers which contribute to the load-carrying function are taxable as accessories or parts, but that containers, such as the ones in the present case, which constitute the load-carrying function are taxable as truck bodies. Only when the container is the load itself does the Code provide total relief from taxation.

Taxpayer relies on the district court’s finding that the containers “are not primarily designed for use in the transportation of property on the highway ; however these ‘containers’ are primarily adapted for use in connection with and add utility to a truck.” Morris analogizes them to the “cargo containers” found nontaxable in Rev.Rul. 60-185,1960-1 Cum.Bull. 412.

We agree with the district court that the proper test is that of the primary use design rather than the possibility of particularized ultimate use of a nontaxable variety. Pacific Car and Foundry Co. v. United States, 420 F.2d 905, 912 (9th Cir. 1969), cert, denied, 397 U.S. 1041, 90 S.Ct. 1363, 25 L.Ed.2d 652 (1970). Considering the design of the containers, we are of the opinion that their primary use design is for automobile truck bodies. They were the only bodies that could be utilized by the modified trucks and would give the trucks their transportation capability. Without the container, the modified truck had no particular transportation capability. The Milmor Prime Mover, the truck chassis which taxpayer modified to enable it to pick up and carry the containers, remains, despite the modification, nothing more than a chassis. Thus, this case is clearly distinguishable from the camper designed to fit a pickup truck involved in King Trailer Co., Inc. v. United States, 228 F.Supp. 1013 (S.D.Calif.1964), aff’d, 350 F.2d 947 (9th Cir. 1965).

The district court’s finding of fact that the containers were the load-carrying function of the truck is clearly supported by the record since the Milmor Prime Mover, without the containers, was virtually worthless in a material transportation sense. All of its costly special adaptations would have been of no value. On the other hand, the district court’s finding that the containers were not primarily designed for use in the transportation of property on the highway, even though the court found that they were primarily adapted for use in connection with the truck, seems to have confused design and ultimate day-to-day use. The containers in question were designed the way they were so that they could be lifted onto the Milmor Prime Mover chassis. It is this special adaptation to carriage by this special truck which distinguishes the containers in the present case from “cargo containers” which may be moved by water, rail, or highway and are nontaxable under Rev.Rul. 60-185. See Rev.Rul. 61-159, 1961-2 Cum.Bull. 170, where this distinction was drawn as to containers similar to taxpayer’s. Because the container was, primarily adapted for use with the special chassis, it is immaterial that over 90% of the time it is in a fixed position. Nor is it material that some of taxpayer’s customers might use the container as a fancy storage shed, never moving it. In this analysis we agree with the court in Transport Equipment Co. v. United States, 331 F.Supp. 769 (W.D. Wash.1971), when it held detachable containers designed for the collection and disposal of trash to be taxable “truck bodies,” where the containers in question were designed for use on a truck chassis which transported them from the collection site to the disposal site. The court found that the container fell squarely within Rev.Rul. 61-159, 1961-2 Cum.Bull. 170.

The taxpayer argues that Congress in passing Section 401(a)(2) of the Revenue Act of 1971, which added subsection 4063(a)(7) of the Internal Revenue Code specifically exempting “any box, container, receptacle, bin, or other similar article which is to be used as a trash container . . .,” was making it clear that it felt that the court in Transport Equipment Co, had misinterpreted the law.

The Government, however, has no difficulty in finding an ancipital aspect to the 1971 statute and argues that “the subsequent enactment reflects the view by the 92nd Congress that such items properly were covered under the statute and that nothing short of a statutory exception could shield them.” This deadlock as to the meaning to be ascribed to the later enactment, an impasse which we do not propose to resolve, illustrates the generally unsatisfactory nature of reliance upon this type of support for construction of the precursory statute. “No rule of construction needs more careful application. . . . [T]he later statute may be declaratory of the meaning of the previous law or a codification, or recognition of a contemporaneous construction, crystallizing it into statutory law; it may be a clarification of an earlier act. On the other hand, a later statute may be intended to supplant an earlier act rather than as an elucidation of it.” 1 Paul & Mertens, Law of Federal Income Taxation § 3.15, at 46, quoted approvingly in Girard Investment Co. v. Commissioner, 122 F.2d 843, 846 (3d Cir. 1941), cert, denied, 314 U.S. 699, 62 S.Ct. 479, 86 L.Ed. 559 (1942).

For the reasons hereinbefore given, we hold that the district court was incorrect in concluding that the containers were not automobile truck bodies. We do not intend to express any view as to whether or not taxpayer’s containers will be subject to the excise tax after the effective date of the Revenue Act of 1971. We, therefor, reverse and remand to the district court so that it may enter judgment for the United States on the cross-appeal and against the plaintiff on its complaint.

Reversed and remanded.

      . The statute during the taxable periods in question provided in material part as follows:

        “(a) Automobiles. — There is hereby imposed upon the following articles (including in each case parts or accessories therefor sold on or in connection therewith or with the sale thereof) sold by the manufacturer, producer, or importer a tax equivalent to the specified percent of the price for which sold:
      (1) Articles taxable at 10 percent Automobile truck chassis. Automobile truck bodies. Tractors of the kind chiefly used for highway transportation 'in combination with a tractor or semitrailer.
      * * * * *

        “(b) Parts and Accessories.— (1) Except as provided in paragraph (2), there is hereby imposed upon parts or accessories (other than tires and inner tubes) for any of the articles enumerated in subsection (a) (1) sold by the manufacturer, producer, or importer a tax equivalent to 8 percent of the price for which so sold . . . . ”


author: BAZELON, Chief Judge: LEVENTHAL, Circuit Judge, TAMM, Circuit Judge, PER CURIAM.

text:
    UNITED STATES of America v. Whitt SNOW, Appellant.
    No. 72-1021.
    United States Court of Appeals, District of Columbia Circuit.
    Argued Dec. 20, 1972.
    Decided April 25, 1973.
    Judgment June 7, 1973.
    Jack Lipson, Washington, D. C. (appointed by this Court), for appellant.
    Guy H. Cunningham, Asst. U. S. Atty., for appellee. Harold H. Titus, Jr., U. S. Atty., John A. Terry, Brian W. Shaughnessy and Garey G. Stark, Washington, D. C., were on the brief for appellee.
    Before BAZELON, Chief Judge, and TAMM and LEVENTHAL, Circuit Judges.
   BAZELON, Chief Judge:

Whitt Snow was found guilty of escaping from a Department of Corrections halfway house on 13th Street, N. W. Snow waived his right to a jury trial and was tried before a judge alone. In such circumstances, Rule 23 of the Federal Rules of Criminal Procedure requires the court to enter findings of fact to support its verdict. No findings were entered in this case. Although the trial judge directed the prosecutor to prepare the findings for the court’s approval, the prosecutor apparently never did so.

This error frustrates our review of the case. Snow’s main argument on appeal is that the prosecution failed to prove that he acted with criminal intent — an essential element of the criminal charge. Referring to our opinion in Castle v. United States, 120 U.S. App.D.C. 398, 400, 347 F.2d 492, 494 (1965), Snow maintains that his escape was “an act committed under compulsion, such as apprehension of serious and immediate bodily harm . ” We said in Castle that such an act is “involuntary, and, therefore, not criminal.” A determination as to whether Snow’s escape falls into that category necessarily involves issues of fact. On the present record, however, we have no indication of the trial court’s findings on the factual questions. We cannot tell whether the judge failed to consider Snow’s defense, whether he did not recognize compulsion to be a defense to the criminal charge, or whether he decided that the facts do not support a finding of compulsion. Since there are colorable questions on factual issues in this case, the case must be remanded for the entry of findings of fact dealing-with all elements of the offense charged.

Judge Tamm’s suggestion that a remand here is a “waste of judicial time” is a serious concern in an era when the District Court’s caseload is heavy. The proper way to save time in this case, however, would have -been to enter the required findings within a reasonable period after the original trial. In a decision requiring a somewhat similar statement from trial judges, it was recognized that “[s]uch a [statement] is not onerous if the matter was dealt with in a conscientious manner in passing on the merits.”

The requirement that a trial judge prepare findings which will cast light on his reasoning is not a trivial matter. It is an important element of fairness to the accused. As a distinguished trial judge has observed, “The existence of a rationale may not make the hurt pleasant, or even just. But the absence, or refusal, of reasons is a hallmark of injustice.” Moreover, the trial court’s statement is an important element of judicial administration, because “. an appellate court must be able to ascertain the grounds for [a lower court’s decision] in order to fulfill its responsibility of review.”

For these reasons, we remand the case for the entry of findings, as set forth above.

So ordered.

LEVENTHAL, Circuit Judge,

concurring in the result.

As matters stand, I can’t tell whether the district judge found that there was not apprehension of such bodily harm as permits application of the compulsion defense, or whether he thought that mere apprehension of bodily harm cannot be a legal defense to a charge of escape, or whether he had still another reason for his judgment. The pertinent rule (Rule 23) provides that where required the district judge shall provide pertinent findings before the appellate judges consider whether there has been prejudicial error.

TAMM, Circuit Judge,

dissenting:

I would affirm the action of the district court in this case. It is my view that a remand to the district court for the entry of findings of fact is a waste of judicial time on the part of both this court and the district court. The record before us is sufficient by my standards to justify affirmation of the appellant’s conviction and does not justify a further waste of judicial time in pursuit of a legal trivia.

JUDGMENT

PER CURIAM.

On April 25, 1973 an order was entered remanding the record to the District Court for further proceedings consistent with the opinion filed herein on the same date. The record has been returned supplemented by the remand proceedings. On consideration of the foregoing, it is

Ordered and adjudged by this Court that the judgment of the District Court appealed from in this cause is hereby affirmed.

The duty of counsel is fully discharged without filing a suggestion for rehearing en banc unless the case meets the rigid standards of Federal Rule of Appellate Procedure 35(a).

      . The charge was brought under 18 U.S.C. § 751(a).

      . The rule requires findings of fact “on request”. In this case, where the trial judge recognized the need for findings and directed that they be prepared, it was unnecessary for counsel to make a request.

      . The record indicates that Snow had been accused by other inmates in the halfway house of stealing clothing from a room in the house. Snow’s testimony, which was partially corroborated by another witness, described an atmosphere of hostility, threats, and fighting during the weekend when Snow escaped.

      . Davis v. Clark, 131 U.S.App.D.C. 379, 381, 404 F.2d 1356, 1358 (1968) (Statement of Circuit Judge Tamm).

      . M. E. Frankel, Criminal Sentences, at - (to be published in April, 1973).

      . Tatem v. United States, 107 U.S.App. D.C. 230, 232, 275 F.2d 894, 896 (1960).


author: EDWARDS, Circuit Judge: ROBB, Circuit Judge,

text:
    Louise H. BROWN et al., Appellants, v. Robert GOTTSCHALK, Commissioner of Patents.
    No. 72-1252.
    United States Court of Appeals, District of Columbia Circuit.
    Argued Jan. 26, 1973.
    Decided Aug. 3, 1973.
    Douglas E. Olson, Los Angeles, Cal., of the bar of the Supreme Court of California, pro hac vice by special leave of Court for appellants. Jesse B. Grove, Jr., Arlington, Va., was on the brief for appellants.
    Jack E. Armore, Associate Sol., with whom S. William Cochran, Sol., U. S. Patent Office, was on the brief, for ap-pellee.
    Before GEORGE C. EDWARDS, Jr., Circuit Judge for the Sixth Circuit, ROBB, Circuit Judge, and GERHARD A. GESELL, District Judge for the United States District Court for the District of Columbia.

       Sitting by designation pursuant to 28 U.S.C. § 291(a)

       Sitting by designation pursuant to 28 U.S.C. § 292(a).

   EDWARDS, Circuit Judge:

This is an appeal from the United States District Court for the District of Columbia dismissing a complaint filed under 35 U.S.C. § 145 (1970), which provides a civil action for issuance of a patent denied by the Board of Appeals of the United States Patent Office. Brown and Swidler are the inventors of a claimed chemical invention and Armour and Company is the assignee. Appellee Gottschalk is the Commissioner of Patents, whose refusal of the patent was upheld by the Board of Patent Appeals.

The only claims at issue in this appeal are claims 7 through 10 describing what appellants term “novel compounds called phenyl stearyl amines” possessing “surprisingly good corrosion inhibition characteristics which were not recognized in the prior art.” The Examiner rejected these claims “as being obvious under 35 U.S.C. § 103 over Suter et al.” (U. S. Patent No. 2,441,518).

The District Court, after an eviden-tiary hearing, found structural obviousness from the generic formula disclosed by Suter and by the close relationship between the Brown compounds and the 10-phenyl-undecylamine compound disclosed by Suter. He also found that such obviousness was not overcome by the claimed newly discovered use (corrosion inhibition) since there was no comparative testing to rule out such a property in the nearest prior art compound (just noted above).

Since we believe the District Court was right in holding that the decision of the Patent Office was entitled to a presumption of correctness ((Reynolds v. Aghnides, 123 U.S.App.D.C. 28, 356 F.2d 367 (1966); Hays v. Brenner, 123 U.S.App.D.C. 96, 357 F.2d 287 (1966)) and we cannot hold that his findings of fact are “clearly erroneous,” (Fed.R. Civ.P. 52(a)) we affirm.

Some of the essentially undisputed background facts of this litigation are set forth succinctly in the District Judge’s findings:

The specification of the application in suit relates to a class of aryl-sub-stituted long-chain alkylamine compounds, wherein the alkyl group may contain from 10 to 24 carbon atoms and the aryl substitutent may be bonded to any carbon atom from the third carbon to the twenty-third carbon from the amine group. Each compound of the class is disclosed to be “especially effective in corrosion inhibiting,” i. e., “useful in connection with the protection of ferrous metal against corrosion.” The “preferred” compounds have 14 to 18 carbon atoms in the alkyl group and include aryl stearyl amines wherein the alkyl (stearyl) group has 18 carbon atoms. The compounds are prepared by reacting an aromatic compound with an unsaturated long-chain fatty acid and converting the acid to an amine. Examples of useful alkyl groups include undecyl (from undeeylenic acid, 11 carbon atoms) and stearyl (from oleic acid, 18 carbon atoms). Examples of useful aryl radicals include phenyl, naphthyl, anisóle and tolyl.
The four claims 7 to 10 at issue are drawn to aryl-substituted long-chain alkyl amines having 18 carbon atoms in the alkyl group, wherein the aromatic radical may be on the sixth carbon atom from the amine group or on any other carbon atom except the terminal carbon. The claims differ only in the aromatic radical which may be naphthyl, phenyl, anisóle or tolyl.
The prior art relied on by defendant is U. S. Patent No. 2,441,518 to Suter et al. (hereinafter “Suter”) granted on May 11,1948.
The Suter patent discloses arylali-phatic amines containing up to 24 carbon atoms in the alkyl group, prepared by direct condensation of an aromatic compound with an unsaturated aliphatic amine, in the presence of a condensing agent. The aromatic compound may be benzene, naphthalene, anisóle or toluene. The unsaturated aliphatic amine may be selected from a class of compounds represented by general structure formulas containing up to 24 carbon atoms and explicitly may be the eleven carbon atom unde-cylamine. Suter also explicitly discloses, as one of the product arylali-phatic amines, the long-chain compound 10-methyl-10-phenyl-decylamine (also known as 10-phenyl-undecyla-mine) — which is an 11 carbon atom amine prepared from the undecen-ylamine.
The claimed compounds and the 10-methyl-10-phenyl-decylamine compound disclosed by Suter (also known as 10-phenyl-undecylamine) are closely related in their molecular structure. The close structural relationship of the compounds is further evident from the general structural formula in the application at bar, which includes the Suter and the claimed compounds.

To these facts appellant would want added at least the following facts which likewise seem undisputed :

1) No compound claimed by Brown was disclosed or claimed by Suter.

2) Suter’s patent application disclosed no utility for any of its compounds, whereas (as the District Judge found) Brown’s compounds are disclosed to be “especially effective in corrosion inhibiting.”

3) The only two expert witnesses to testify, Dr. Swern and Mr. Shapiro, both testified generally that Brown’s compounds were not obvious to them from. Suter’s disclosures.

The District Judge’s disputed findings of fact are as follows:

The disclosure in the Suter patent was sufficient to have enabled a skilled chemist to prepare the 11 carbon atom amine compound at the time the present application was filed.
The sole disclosed use for the claimed compounds in the application at bar is that they are corrosion inhibitors for ferrous metals. The same sole use is disclosed in the present application for all the compounds embraced by the general structural formula therein, which includes the Suter 11 carbon atom amine compound.
The claimed compounds would be prima facie obvious from the 10-phen-yl-undecylamine compound disclosed by Suter. Those .compounds would also be prima facie obvious from the Suter disclosure of that 11 carbon atom amine compound and a generic disclosure in the patent including up to 24 carbon atom amine compounds.
The evidence of comparative tests relating to corrosion inhibiting is of no legal significance since there was no comparative test with the nearest prior art compound, which is the 10-phenyl-undecylamine compound explicitly disclosed by Suter.
The plaintiffs’ comparative test with 11-phenyl-undecylamine was not a test with 10-phenyl-undecylamine which is a different compound. The testimony brought out that the 10-phenyl-undecylamine compound was not tested.

The District Judge’s final finding of fact was:

The compounds recited in claims 7 to 10 inclusive would have been obvious to one of ordinary skill in the art, at the time plaintiffs filed their application, from the teachings in the Suter patent.

On this appeal appellants contend:

1) Brown compound claims were not obvious from either a) the Suter disclosure of the 10-phenyl-undecylamine compound, or b) the generic formula disclosed in Suter, or c) a combination of these two.

2) The only two expert witnesses in the District Court trial testified to non-obviousness of Brown compounds as related to Suter disclosures.

3) Even if structural obviousness is assumed, under the authority of In re Stemniski, 444 F.2d 581 (CCPA 1971), the patent should issue because Brown disclosed utility and Suter did not.

The appellee’s positions on the other hand are:

1) The disputed findings of the District Judge on obviousness are not “clearly erroneous.” (Fed.R.Civ.P. 52(a)).

2) The District Judge properly held that the Brown compounds set forth in claims 7 through 10 inclusive were pri-ma facie obvious from the Suter patent.

3) There was no comparative test as to utility with the nearest prior art compound disclosed by Suter (the 10-phen-yl-undecylamine compound), hence, appellants’ evidence did not overcome the prima facie obviousness of the Brown compounds.

In utilizing the test of patentability set out in 35 U.S.C. § 103 (1970), we are guided by the admonition of the United States Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684,15 L.Ed.2d 545 (1966):

Although we conclude here that the inquiry which the Patent Office and the courts must make as to patentability must be beamed with greater intensity on the requirements of § 103, it bears repeating that we find no change in the general strictness with which the overall test is to be applied. We have been urged to find in § 103 a relaxed standard, supposedly a congressional reaction to the “increased standard” applied by this Court in its decisions over the last 20 or 30 years. The standard has remained invariable in this Court. Technology, however, has advanced — and with remarkable rapidity in the last 50 years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard of a half century ago. It is but an evenhanded application to require that those persons granted the benefit of a patent monopoly be charged with an awareness of these changed conditions. The same is true of the less technical, but still useful arts. He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office. Graham v. John Deere Co., supra at 19, 86 S.Ct. at 694, 695.

We believe the District Judge’s findings of structural obviousness of the Brown compounds as compared to the prior art disclosed in the Suter patent cannot properly be held to be “clearly erroneous.” Fed.R.Civ.P. 52(a). The generic formula disclosed in Suter, as the Board of Patent Appeals held, tends to suggest the formulas employed for the Brown compounds. In addition, the 10-methyl-10-phenyl-decylamine compound disclosed by Suter (See Col. 9 of Suter patent) is very close in molecular structure to the compounds claimed in the Brown patent application in claim 8. There was testimony to support the District Judge’s finding that a chemist skilled in the art would know how to derive the latter from the former.

In this regard Dr. Swern testified on cross-examination:

MR. ARMORE: Now taking that general description of the process in the first paragraph, and taking the specific corresponding unsaturated compound in Column 9, wouldn’t a skilled chemist know how to accomplish this known reaction, the condensation reaction, by reacting the specific unsaturated compound in Column 9 with the desired arymatic compound to achieve an aryl-substituted alkyl amine ?
DR. SWERN: This might depend on whether the unsaturated amines you refer to in Column 9 has the appropriate solubility and reactivity characteristics that would permit a successful reaction, but it would not be an a priori assumption that it would in fact react.
MR. ARMORE: Assuming it had the appropriate solubility characteristics would the chemist know how to conduct this condensation reaction to arrive at and prepare the 10-phenyl, undecyl amine?
DR. SWERN: A skilled chemist would repeat Example #1, which is the—
MR. ARMORE: I am not referring to Examples, Dr. Swern. I am referring to the knowledge of the art; that you can react an arymatic compound with an unsaturated aliphatic amine by a known reaction. Would the skilled chemist know that you can do this with the precursor shown in Column 9 to arrive at the 10-phenyl, un-decyl amine?
DR. SWERN: It would be a reasonable presumption; yes.
MR. ARMORE: Thank you.

Additionally, it is worth noting (as shown below) that once a Brown application Claim 8 compound has been arrived at, claims 7, 9 and 10 vary only in the substitution of the reactants naph-thyl, anisóle and tolyl for the Claim 8 reactant, phenyl:

7. Amines having the formula:

CH3. (CH2) CH-(CH2) ch2 nh2 X | Y R

wherein Y is greater than 3 and X + Y is 15 and R is naphthyl.

8. Amines having the formula:

CH3 (CH2) CH-(CH2) ch2 nh2 X | Y R

wherein Y is greater than 3 and X + Y is 15 and R is phenyl.

9. Amines having the formula:

CH3 (CH2) CH - (CH2) ch2 nh2 X | Y R

wherein Y is greater than 3 and X + Y is 15 and R is anisóle.

10. Amines having the formula:

CH3 (CH2) CH - (CH2) CH2 NH2 X | Y R

wherein Y is greater than 3 and X + Y is 15 and R is tolyl.

CA 77653

It is, however, appellants’ earnest contention that even if we affirm the District Judge’s finding of structural obviousness, the discovery of a new use for a novel (if obvious) compound warrants a product patent under the holding of In re Stemniski, 444 F.2d 581 (CCPA 1971).

The difficulty with this argument is twofold: first, this circuit has never adopted the principle of Stemniski; and second, the record of this case and the briefing of the statutory and constitutional problems which would be required for careful consideration of adoption of Stemniski is utterly inadequate to the purpose.

The closest case in point in the District of Columbia Circuit is clearly Commissioner of Patents v. Deutsche Gold-Und-Silber-Scheideanstalt Vormals Roes-sler, 130 U.S.App.D.C. 95, 397 F.2d 656 (1968) (Bazelon, Jdissenting). Butin the Deutsche Gold case Chief Justice Burger reaffirmed the necessity of comparative testing to prove difference in utility between two compounds. In holding that the comparative testing in that case was adequate to support the patentability holding of the District Court, Justice Burger said:

We recognize, of course, that the best method of demonstrating patenta-bility under Papesch and its progeny by the existence of a novel and unob-vious property is through the use of comprehensive comparative testing. Nevertheless, on the whole record we are satisfied that the District Judge’s conclusion of law concerning comparative testing was correct as applied to the facts of this case. We reach this conclusion on the basis of the limited comparative testing here, which, although it did not disprove the existence of the same properties in the prior art, strongly suggests, by reason of the vastly superior results obtained, that those new results derived from the existence of a novel property in the claimed compound; by limiting Henze to its facts, as the Court of Customs and Patent Appeals has done; and by what we read as to the meaning of the additional evidence adduced in this case. It should be recalled that Appellee attempted to overcome the burden of structural obviousness through two evidentiary showings. In the first place, as we have indicated, evidence was offered to show new and unexpected properties and novel utilization of the claimed compounds. Had that been the only evidence offered we, and the District Judge as well, might have required further comparative testing. But Ap-pellee went on to offer further evidence of a secondary nature — the indirect utility of the claimed compound as an intermediate for the production of known drugs with greater effectiveness than when prepared under then-existing methodology. In light of this dual approach we find that the District Judge’s conclusion of law not requiring comparative tests to be correct.

Id., at 671.

As the District Judge pointed out in our instant case, however, the testing of utility (corrosion inhibition) did not encompass the Suter disclosure of 10-meth-yl-10-phenyl-decylamine — the closest substance in the prior art, thus, the comparative testing was wholly inadequate.

In view of the dissent, we reiterate that the District Court found structural obviousness of the Brown compounds from 1) the generic formula disclosed in Suter, and 2) the close relationship between the Brown compounds and the 10-phenyl-undecylamine compound disclosed by Suter. He also found 3) that this obviousness was not overcome by the claim of newly discovered use (corrosion inhibition) since Brown offered no comparative tests to rule out this same property in the nearest prior art compound. These findings are not “clearly erroneous.”

In our view the District Judge admitted all relevant and material evidence bearing on this subject. Unless this court is prepared to dispense with the requirement of comparative testing as to such claims of a new utility, we believe the District Judge's judgment must be affirmed as consistent with established law.

The judgment of the District Court is affirmed.

ROBB, Circuit Judge,

dissenting:

The basis of the majority opinion is that appellants’ compound is “structurally obvious” from the “generic formula” disclosed by the Suter reference. Majority opinion at 814, 816. Since I believe that this is not the proper test for determining the obviousness of a chemical compound under 35 U.S.C. § 103 (1970), and since the District Court prevented appellants from introducing legally relevant evidence in support of their claim, I respectfully dissent.

This court in Comm’n of Patents v. Deutsche Gold-und-Silber-Scheidean-stalt Vormals Roessler, 130 U.S.App.D.C. 95, 397 F.2d 656 (1968) held that structural obviousness cannot alone be the basis of a patent rejection under 35 U.S.C. § 103 (1970). The court in Deutsche Gold was convinced, as is the majority here, of the “structural obviousness of the claimed compound and the prior art references . . . . ” 130 U.S.App. D.C. at 100, 397 F.2d at 661. However, the court quoting with approval from the decision of the Court of Customs and Patent Appeals in In re Papesch, 315 F.2d 381, 391, 50 CCPA 1084 (C.C. P.A.1963) noted that:

. . . . a formula is not a compound and while it may serve in a claim to identify what is being patented, as the metes and bounds of a deed identify a plot of land, the thing that is patented is not the formula but the compound identified by it. And the patentability of the thing does not depend on the similarity of its formula to that of another compound but of the similarity of the former compound to the latter. There is no basis in law for ignoring any property in making such a comparison. An assumed similarity based on a comparison of for-mulae must give way to evidence that the assumption is erroneous, (emphasis in original).

Thus, the District Court’s reliance on structural similarity as proof of obviousness, rather than on the properties of the claimed compound — the subject matter as a whole — was “clearly erroneous”. See, Eli Lilly & Co. v. Generix, 460 F.2d 1096, 1103 (5th Cir. 1972); In re Stem-niski, 444 F.2d 581 (C.C.P.A. 1971); Note; Patentability of Chemical Compounds, 50 Tex.L.Rev. 566 (1972).

Although appellants should not be denied a patent under 35 U.S.C. § 103 (1970) because of structural obviousness alone they still must demonstrate an “advancement in the art” in order to meet the constitutional requirement for the granting of a patent. Graham v. John Deere Co., 383 U.S. 1, 6, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Comm’n of Patents v. Deutsche Gold, 130 U.S.App. D.C. at 104, 397 F.2d at 665. One of the decisive questions in determining whether a claimed compound has contributed to an “advancement in the art” is whether the utility of the claimed compound is unobvious. Deutsche Gold, 130 U.S.App.D.C. at 106, 397 F.2d at 667. In the present case the prior art reference, Suter, does not disclose any specific utility for the patented compounds which would suggest that the utility of appellants’ compound was obvious. This was the same problem facing the court in Deutsche Gold, 130 U.S.App.D.C. at 107 n. 35, 397 F.2d at 668 n. 35. In responding to this problem the District Court in that case found that:

When” the prior art does not contain the slightest suggestion that the properties of a claimed compound would make it useful for a certain advantageous purpose, then the utility itself is unobvious, and it is unnecessary for an applicant to prove by comparative tests that his compound is more useful for the certain purpose than closely related prior art compounds. 251 F. Supp. at 628. rt

This court approved the District Court’s ruling but noted that if limited comparative testing of the primary utility of a compound were all that was presented to the court “we, and the District Judge as well, might have required further comparative testing” 130 U.S.App.D.C. at 110, 397 F.2d at 671; however, the court did not remand the case but affirmed the grant of the patent because of secondary evidence which helped to establish that the utility of the claimed compound was unobvious.

Although evidence of a secondary or indirect utility of a claimed compound may demonstrate that there has been an “advancement in the art”, Deutsche Gold, 130 U.S.App.D.C. at 671-672, the District Court in the present case declined to receive evidence offered by appellants to demonstrate a secondary utility of the claimed compound. (Tr. 158-160, 180-183). Thus not only did the District Court improperly rely on structural obviousness as a basis for rejection under 35 U.S.C. § 103 (1970) but the court denied appellants the opportunity to introduce the type of evidence which this court has specifically found to be probative of a compound’s utility and unobviousness.

Since the majority’s determination of obviousness of a compound’s structure to a chemist (Majority opinion at 816) is not necessarily conclusive as to obviousness of the subject matter as a whole under 35 U.S.C. § 103 (1970), and since I think the District Court erred in its evidentiary rulings I respectfully dissent.

      . Claims 1 through 5 pertaining to process patent claims were withdrawn before the District Judge. The • Patent Office’s rejection of claim 6 was never challenged by plaintiff.

      . The only utility claimed for the Suter compound was:
      The various new arylaliphatie amines are suitable for various purposes in the arts including the preparation of therapeutically useful and physiologically active amines and also as intermediates.
      Suter Patent No. 2,441,518 Col. 9 Lines 56-61.

      . Although the secondary evidence referred to by the court was presented to the Commissioner of Patents in Deutsche Gold the court’s statement is helpful in the present case since new evidence bearing on utility is always admissible in a 35 U.S.C. § 145, de novo proceeding in a district court. Schindler v. Comm’n of Patents, 269 F.Supp. 630 (D.C.D.C. 1967); Monsanto Co. v. Kamp, 269 F. Supp. 818 (D.C.D.C.1967).