author: TONE, Circuit Judge.

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Leonard L. CAPPETTO, Individually and doing business as Western Avenue Billiards, et al., Defendants-Appellants.
    No. 74-1350.
    United States Court of Appeals, Seventh Circuit.
    Argued June 13, 1974.
    Decided Sept. 4, 1974.
    Rehearing Denied Oct. 1, 1974.

      Melvyn L. Segal, Melvin B. Lewis, Chicago, 111., for defendants-appellants.
    James R. Thompson, U. S. Atty., Gary L. Starkman, John B. Simon, Robert B. Schaefer, Asst. U. S. Attys., Chicago, 111., for plaintiff-appellee.
    Before STEVENS, SPRECHER and TONE, Circuit Judges.
   TONE, Circuit Judge.

The constitutionality of the civil remedies provision of the Organized Crime Control Act of 1970 (18 U.S.C. § 1964) is challenged in this appeal from an order granting a preliminary injunction against further gambling activities, a related default order, and a contempt order.

The provisions of the Act pertinent here provide as follows: Section 1955 of Title 18 makes it an offense to participate in an illegal gambling business, which is defined as a gambling business violative of state law involving five or more participants that remains in substantially continuous operation for over 30 days or has a gross revenue of $2,000 in any one day. Section 1961 defines “racketeering activity” to include, inter alia, any act indictable under Section 1955 and “pattern of racketeering activity” to mean at least two acts of racketeering activity, with qualifications not germane here. Section 1962, in subsection (b), makes it unlawful for any person through a pattern of racketeering activity or through collection of an unlawful debt to acquire or maintain, directly or indirectly, any interest in or control of any enterprise which is engaged in, or whose activities affect, interstate or foreign commerce. Subsection (c) of that section makes it unlawful for any person employed by or associated with such an enterprise to participate in the conduct of the enterprise’s affairs through a pattern of racketeering activity or collection of an unlawful debt. Subsection (d) makes it unlawful to conspire to violate any of the other subsections of Section 1962. Section 1963, which is not invoked by the government in this case, prescribes criminal penalties for violation of Section 1962. Finally, Section 1964, under which this action is brought, gives the District Courts of the United States “jurisdiction to prevent and restrain violations of section 1962,” and lists by way of illustration several types of equitable relief that may be granted.

The Act thus gives the government both civil and criminal remedies for the enforcement of Section 1962. In this case the government elected to use its civil remedy.

The complaint alleges the following facts. On various occasions from October 26, 1973 to the date of the filing of the complaint, defendants Joseph A. Corabi, Stanley J. Mikolajczak, and Thomas J. Wilson used a building known as Western Avenue Billiards in Chicago and the telephone located there to receive horse race and sports wagers and to transmit wagering information. This activity took place with the knowledge of the owner, defendant Leonard L. Cap-petto. Defendants Joseph I. Mantia, George J. Musteikas, and Nicholas J. Pidone, and others known to the government only by nickname, placed wagers with defendants Corabi, Mikolajczak, and Wilson for persons other than themselves. On various occasions another person known to the plaintiff only as “Joe” received wagers from, and gave wagering information to defendant Corabi. Defendant Pidone also allowed his residence to be used for the gambling operation. These activities are alleged to constitute an illegal gambling business having a gross revenue of over $2,000 on a single day and involving five or more persons in violation of Illinois law and Section 1955 which has diverted money and goods from legitimate enterprises into illegal channels.

In Count I of the complaint which is laid under Section 1962(b), it is alleged that, through a pattern of racketeering activity consisting of participating on two or more occasions in an illegal gambling business violative of Section 1955, or through collection of an unlawful debt, the defendants acquired or maintained interests in or control of an enterprise, viz., an illegal gambling business proscribed by Section 1955, which was engaged in, or the activities of which affected, interstate commerce. In Count II it is alleged that the defendants violated Section 1962(c) by conducting the enterprise’s affairs through a pattern of racketeering activity. In Count III it is alleged that the defendants violated Section 1962(d) by conspiring to do the acts charged in Counts I and II. Jurisdiction is alleged under Section 1964 and also under the general jurisdictional grant of 28 U.S.C. § 1345.

In addition to preliminary and permanent injunctions restraining the defendants and those acting in concert with them from engaging in the illegal gambling operation, the government seeks divestiture by defendant Cappetto of his interest in the building; disclosure of the identities of those persons acting in concert with defendants in the gambling business complained of, including those known to the government only by nickname; an order directing each of the defendants to submit to the United States Attorney for a period of ten years sworn quarterly reports stating his current address, business, sources of income and other information bearing on his compliance with the injunction the court is asked to enter; and such further relief as the court deems just.

After the entry of a preliminary restraining order without notice, the propriety of which is not before us, the District Court denied a motion to dismiss the complaint and entered various discovery orders, including an order granting defendant Corabi “use” immunity under 18 U.S.C. §§ 6002 and 6003. Defendants, relying on the Fifth Amendment, refused to comply with the discovery orders and refused even to appear for depositions and be sworn. The District Court then entered the three orders from which this appeal is taken. The first order provided that, by reason of defendants’ refusal to obey the discovery orders, the material allegations of the complaint were taken as true, the defendants were adjudged in default, and default judgment was entered against them. In the second order the court preliminarily enjoined the defendants from carrying on the gambling activities described in the complaint. In the third order the court also held defendants in contempt and ordered them committed until they obeyed the discovery orders. The execution of the latter order has been stayed pending appeal.

Defendants’ principal argument is that this action under Section 1964 is essentially a criminal proceeding, and therefore they are entitled to the rights guaranteed by the Constitution to defendants in criminal cases. They also argue that Section 1964 is unconstitutionally vague. In addition, they argue that Congress lacks authority under the commerce clause of the Constitution (Article I, Section 8, Clause 3) to prohibit gambling, and that Section 1964, and Section 1955 as well, are unconstitutional for that additional reason.

The latter argument need not detain us long. The power of Congress to prohibit activities made unlawful by-state law which take place in, or affect, interstate commerce has long been settled. Caminetti v. United States, 242 U.S. 470, 37 S.Ct. 192, 61 L.Ed. 442 (1917); Wickard v. Filburn, 317 U.S. 111, 63 S.Ct. 82, 87 L.Ed. 122 (1942). The Supreme Court has upheld the federal loanshark statute (18 U.S.C. § 891 et seq.) against a challenge similar to the one made by defendants here. Perez v. United States, 402 U.S. 146, 91 S.Ct. 1357, 28 L.Ed.2d 686 (1971). This court and other courts of appeals have held that Section 1955 is authorized by the commerce clause. United States v. Hunter, 478 F.2d 1019, 1020-1021 (7th Cir. 1973), cert. denied, 414 U.S. 857, 94 S.Ct. 162, 38 L.Ed.2d 107 (1973); United States v. Becker, 461 F.2d 230, 233-234 (2d Cir. 1972); United States v. Riehl,. 460 F.2d 454, 458 (3rd Cir. 1972); United States v. Ceraso, 467 F.2d 653, 657-658 (3rd Cir. 1972); United States v. Harris, 460 F.2d 1041, 1043-1049 (5th Cir. 1972), cert. denied, 409 U.S. 877, 93 S.Ct. 128, 34 L.Ed.2d 130 (1972); Schneider v. United States, 459 F.2d 540, 541-542 (8th Cir. 1972), cert. denied, 409 U.S. 877, 93 S.Ct. 129, 34 L.Ed.2d 131 (1972); United States v. Sacco, 491 F.2d 995, 999-1001 (9th Cir. 1974). These cases demonstrate that Congress had power to determine, that the class of activities described in Section 1955 adversely affects interstate commerce and, based upon that finding, to prohibit those activities. It is also settled, on the authority of Perez, that the statute is valid “even when applied to individual members of the class whose own activities may not have any demonstrable impact on interstate commerce.” United States v. Hunter, supra, 478 F.2d at 1021. See also Schneider v. United States, supra, 459 F.2d at 541; and United States v. Becker, supra, 461 F.2d at 233-234.

Congress also has power to provide for civil injunctive relief against activities which adversely affect interstate commerce, and that power extends to activities which are made criminal by state or federal law. Long ago the Supreme Court, in the case of In re Debs, 158 U.S. 564, 15 S.Ct. 900, 39 L.Ed. 1092 (1895), held that the commerce clause authorizes the federal government, through injunctive relief granted by its courts, to restrain or remove obstructions to interstate commerce, stating:

“. . . the jurisdiction of courts to interfere in such matters by injunction is one recognized from ancient times and by indubitable authority; . . . such jurisdiction is not ousted by the fact that the obstructions are accompanied by or consist of acts in themselves violations of the criminal law; . . . the proceeding by injunction is of a civil character, and may be enforced by proceedings in contempt; . . . such proceedings are not in execution of the criminal laws of the land . . . .” 158 U.S. at 599, 15 S.Ct. at 912.

Although the Court in the Debs case appears to rest its decision on broader grounds, the injunction in that case was issued (United States v. Debs, 64 F. 724, 745 (C.C.N.D.Ill.1894)) under the Sherman Act of 1890, 15 U.S.C. § 1, et seq., in which Congress made violations of the prohibitions against restraints of trade and monopolizing actionable in both criminal and civil proceedings. Referring to the equitable action authorized by that statute, the Court said in United States v. Trans-Missouri Freight Association, 166 U.S. 290, 343, 17 S.Ct. 540, 559, 41 L.Ed. 1007 (1897):

“Congress, having the control of interstate commerce, has also the duty of protecting it, and it is entirely competent for that body to give the remedy by injunction as more efficient than any other civil remedy.”

In the exercise of its authority to regulate commerce, Congress has also provided civil actions for injunction as alternatives to criminal actions in the Federal Food, Drug and Cosmetic Act, 21 U.S.C. §§ 321-334, the Federal Insecticide, Fungicide and Rodenticide Act, 7 U.S.C. § 135, et seq., and the Meat Inspection Act, 21 U.S.C. §§ 674-676. Acting under other constitutional grants of authority, Congress has provided alternative civil and criminal remedies in the Internal Revenue Code, 26 U.S.C. §§ 7201, 7231, 7402; and the three emergency price control acts, the Emergency Price Control Act of 1942, 56 Stat. 26, the Defense Production Act of 1950, 50 App. U.S.C. § 2109, and the Economic Stabilization Act of 1970, 12 U.S.C.A. § 1904 note. Nothing in the Constitution prevents Congress from providing for both civil and criminal enforcement of a statute.

It has thus been settled since the Debs decision that acts which may be prohibited by Congress may be made the subject of both criminal and civil proceedings, and the prosecuting arm of the government may be authorized to elect whether' to bring a civil or criminal action, or both. A civil proceeding to enjoin those acts is not rendered criminal in character by the fact that the acts also are punishable as crimes.

Defendants unsuccessfully attempt to distinguish what they refer to as “the federal anti-trust, pure food, and similar statutes.” They argue that the civil proceedings provided for in those statutes, unlike those under Section 1964, are not designed as alternatives to criminal prosecution to serve when the requisite proofs are lacking. Neither, necessarily, is a proceeding under Section 1964, but the standard of proof is lower in a civil proceeding than it is in a criminal proceeding under any of the statutes we are considering. Defendants argue that the other statutes were designed to serve values “totally different from the purely criminal thrust of the Organized Crime Control Act.” We see no basis in this distinction, if it is one, for circumscribing Congress’ power to regulate activities affecting interstate commerce. Conduct adversely affecting interstate commerce which is of a kind that is traditionally proscribed under criminal statutes, state or federal, does not enjoy a special immunity from regulation through civil proceedings, as the Supreme Court pointed out in the Debs case.

This is not a case in which the procedure “though technically a civil proceeding, is in substance and effect a criminal one,” as was Boyd v. United States, 116 U.S. 616, 634, 6 S.Ct. 524, 534, 29 L.Ed. 746 (1886), on which defendants rely heavily. Boyd was expressly distinguished in Debs, supra (158 U.S. at 594, 15 S.Ct. 900), a decision which defendants do not see fit to mention in their main brief. Similarly In re Gault, 387 U.S. 1, 87 S.Ct. 1428, 18 L.Ed.2d 527 (1967) and In re Winship, 397 U.S. 358, 90 S.Ct. 1068, 25 L.Ed.2d 368 (1970), relied upon by defendants, involved juvenile proceedings which were civil in name but in which sanctions of a criminal nature were imposed. One 1958 Plymouth Sedan v. Pennsylvania, 380 U.S. 693, 696-698, 85 S.Ct. 1246, 14 L.Ed.2d 170 (1965) and United States v. U. S. Coin & Currency Co., 401 U.S. 715, 91 S.Ct. 1041, 28 L.Ed.2d 434 (1971), also relied upon by defendants, involved forfeitures. No forfeiture is provided for in Section 1964 or sought by the government in this proceeding.

Section 1964 provides for a civil action in which only equitable relief can be granted. The relief authorized by that section is remedial not punitive and is of a type traditionally granted by courts of equity. It is the same kind of equitable relief that federal courts have been granting for generations in civil actions under Section 4 of the Sherman Act and Section 15 of the Clayton Act, 15 U.S.C. §§ 4 and 25.

The argument that Section 1964 is unconstitutionally vague is also without merit. That section, like Section 4 of the Sherman Act, is merely a specific grant of jurisdiction to enforce the substantive provisions of the statute by injunction. The kinds of activity to which the injunction may be addressed are described with sufficient particularity in those substantive provisions, Section 1955 and Section 1962. Defendants do not argue that either of these sections is unconstitutionally vague. Nor do they question that the alleged gambling activities are covered by Section 1955. They do challenge the applicability of Section 1962, but we construe that section below to apply to their enterprise.

The conditions under which an injunction will be issued pursuant to Section 1964 are determinable from the principles that govern the granting of equitable relief. See Appalachian Coals, Inc. v. United States, 288 U.S. 344, 377-378, 53 S.Ct. 471, 77 L.Ed. 825 (1933); Hecht Co. v. Bowles, 321 U.S. 321, 327-331, 64 S.Ct. 587, 88 L.Ed. 754 (1944); United States v. W. T. Grant Co., 345 U.S. 629, 632-633, 73 S.Ct. 894, 97 L.Ed. 1303 (1953); Walling v. T. Buettner & Co., 133 F.2d 306, 308 (7th Cir. 1943); Bowles v. Lentin, 151 F.2d 615, 620 (7th Cir. 1945). Whether equitable relief is appropriate depends, as it does in other cases in equity, on whether a preponderance of the evidence shows a likelihood that the defendants will commit wrongful acts in the future, a likelihood which is frequently established by inferences drawn from past conduct.

Section 1964 is a valid exercise of Congress’ authority to regulate commerce. We turn now to the other arguments advanced by the defendants.

Defendants contend that the Act does not authorize the action brought by the government here, because Congress’ purpose was to protect “legitimate business” against infiltration by racketeers and not to prohibit racketeering itself. Both the statutory language and the legislative history, however, support the government’s contrary interpretation of the Act. While one of Congress’ targets was “the infiltration of legitimate organizations by organized crime” (Sen. Rep. 91-617, p. 80 (1969)), and subsection (a) of Section 1962 is aimed at that target, Congress also intended to prohibit any pattern of racketeering activity in or affecting commerce; and subsections (b) and (e) of Section 1962 specifically prohibit such activity. Subsection (b) forbids acquiring or maintaining an interest in an enterprise which affects commerce through a pattern of racketeering activity or through collection of an unlawful debt; and subsection (e) forbids participation in the affairs of such an enterprise through those means. That Congress intended to give the term “enterprise” a very broad meaning is recognized in a recent Second Circuit case. United States v. Parness, 503 F.2d 430 p. 439 (2nd Cir., 1974). There is nothing in the language of subsection (b) or (c) or in the definition section of the Act, Section 1961, to suggest that the enterprise must be a legitimate one. Congress’ intention to include an illegal gambling business in the categories of “racketeering activity” and “enterprise” appears not only from the language of the statute but from the Senate Committee Report:

“Despite the best efforts made to date by both the Federal and the several State governments, gambling continues to exist on a large scale to the benefit of organized crime and the detriment of the American people. A more effective effort must be mounted to eliminate illegal gambling. In that effort the Federal Government must be able not only to deny the use and facilities of interstate commerce to the day-to-day operations of illegal gamblers — as it can do under existing statutes — but also to prohibit directly substantial business entez'prises of gambling . . . . ” Sen. Rep. 91-617, pp. 72, 73 (1969).

Defendants also argue that the government has not shown irreparable injury or inadequacy of the remedy at law. We need not decide the academic question of whether, in the absence of Section 1964, such a showing would be necessary. It was plainly the intention of Congress in adopting Section 1964 to pz-ovide for injunctive relief against violations of Section 1962 without any requirement of a showing of irreparable injuz’y other than that injury to the public which Congress found to be inherent in the conduct made unlawful by Section 1962. It is also obvious that Congress did not intend to require a showing of inadequacy of the remedy at law. If, as defendants contend, the existence of the criminal remedy at law under Section 1963 would defeat an action in equity under Section 1964, the latter section would be a nullity.

The defendants challenge the government’s requests for divestiture and for a requirement that the defendants file quarterly reports for ten years. Divestiture has been a favored remedy for antitrust violations since Standard Oil Co. v. United States, 221 U.S. 1, 77-78, 31 S.Ct. 502, 55 L.Ed. 619 (1910). United States v. Grinnell Corp., 384 U.S. 563, 580, 86 S.Ct. 1698, 16 L.Ed.2d 778 (1966). Challenges to that form of relief as punitive have been unsuccessful. E. g., United States v. Crescent Amusement Co., 323 U.S. 173, 189, 65 S.Ct. 254, 89 L.Ed. 160 (1944). See also United States v. E. I. duPont de Nemours & Co., 366 U.S. 316, 326-327, 81 S.Ct. 1243, 6 L.Ed.2d 318 (1961). Requiring a corporate defendant to file reports is a form of relief “commonly granted for the purpose of determining whether a defendant has complied with an antitrust decree,” United States v. Grinnell Corp., 384 U.S. 563, 579, 86 S.Ct. 1698, 1708, 16 L.Ed.2d 778 (1966), but, when the defendant is an individual, Fifth Amendment rights come into play. Cf. United States v. Bausch & Lomb Co., 321 U.S. 707, 726-728, 64 S.Ct. 805, 88 L.Ed. 1024 (1944). It is premature to consider whether divestiture or a reporting requirement in any form would be appropriate in this case, because the District Court has not yet ruled on the requests for these kinds of relief. The preliminary injunction order merely enjoins further gambling activities pendente lite, relief clearly civil in nature and within the power of the District Court to grant in this action.

Defendants’ attack on the District Court’s contempt order and default order falls with their challenge to the complaint on its merits. Since this was a civil proceeding, plaintiff was entitled to discovery as in any other civil case, and the court had the authority granted by the Federal Rules of Civil Procedure to enter appropriate discovery orders and to enforce those orders. Defendants have no more right to refuse to be sworn or to refuse to submit to questioning than any other party in a civil case. A defendant of course has the right under the Fifth Amendment to refuse to answer a specific question on the ground that the answer may tend to incriminate him. This right disappears, however, if use immunity is granted under 18 U.S.C. §§ 600'2 and 6003, as it was to defendant Corabi. The immunity granted is coextensive with the' privilege against self-incrimination, Kastigar v. United States, 406 U.S. 441, 461, 92 S.Ct. 1653, 32 L.Ed.2d 212 (1972), and therefore may be invoked only against criminal proceedings. Accordingly, testimony given by a party in a civil case under a grant of immunity may be used against that party in that case, although it cannot be used in any criminal proceeding against him. When Corabi refused to testify despite the grant of immunity, and when the other defendants refused to obey the court’s order to appear for depositions, they were in contempt and subject to sanctions under Rule 37, F.R.Civ.P. The District Court had authority to declare them in default and to grant interlocutory relief on the basis of that default and also had authority to hold them in contempt and to order them committed until they purged themselves of the contempts.

The orders appealed from are affirmed.

Affirmed.


source: Caselaw Access Project

author: CHOY, Circuit Judge:

license: Public Domain

text:
    Kenneth B. STEPHENS, on behalf of himself and all others similarly situated, Plaintiff-Appellant, v. George P. TIELSCH, Chief of Police of the City of Seattle, Defendant-Appellee.
    No. 73-3580.
    United States Court of Appeals, Ninth Circuit.
    Sept. 3, 1974.
    Peter Greenfield (argued), of the Legal Services Center, Seattle, Wash., for appellant.
    Charles R. Nelson (argued), Asst. City Atty., Seattle, Wash., for appellee.
    Before BROWNING and CHOY, Circuit Judges, and WEIGEL, District Judge.

       The Honorable Stanley A. Weigel, U.S. District Judge for the Northern District of California, sitting by designation.

   OPINION

CHOY, Circuit Judge:

Appellant, Kenneth Stephens, brought this civil rights action to challenge a Seattle city ordinance, Seattle, Wash., Code c. 21.48, which permits the towing of illegally parked vehicles. Basically, his claim is that it offends procedural due process not to require that a hearing be held immediately after a vehicle is towed but before the towing charges are paid. The district court invoked the doctrine of abstention so as to permit state judicial consideration of Stephens’ claim; it reasoned that the issue was one of local concern which had “not been subjected to the full scrutiny of the state courts.” We reverse.

The ordinance, the parties agree, is unambiguous and thus not itself in need of a clarifying interpretation. So, while the lower court’s opinion is not entirely clear on the precise reason it abstained, it must have been to allow the Washington courts to pass on the validity of the ordinance under the due process clause of the state constitution, Wash.Const., Art. I, § 3. That provision is interpreted in essentially the same way as the due process clause of the Fourteenth Amendment. E. g., Olympic Forest Products, Inc. v. Chaussee Corp., 82 Wash.2d 418, 422, 511 P.2d 1002, 1005 (1973). The sole issue on this appeal, therefore, is whether it is proper for a federal court to abstain to enable the local courts to consider a case in the light of a state constitutional provision which is essentially the mirror of the portion of the federal Constitution at issue in the case.

We think there can be little doubt of how this issue ought to be resolved, whether on grounds of precedent or on grounds of policy.

As to the precedent, the Supreme Court, in Wisconsin v. Constantineau, 400 U.S. 433, 91 S.Ct. 507, 27 L.Ed.2d 515 (1971), confronted the very same issue. There, it held unconstitutional a Wisconsin statute which permitted sheriffs to post the names of notorious drunks in local taverns without prior notice or hearing. The little-used statute had never been interpreted in the state courts. Seizing on this fact, Chief Justice Burger, in dissent, argued that abstention was appropriate to consider the statute under the state’s due process clause, a provision, he noted, which was construed like its federal counterpart. Id. at 440 & n. 1, 91 S.Ct. 507. The Court declined to adopt the Chief Justice’s position. Observing that the statute was unambiguous, id. at 439, 91 S. Ct. 507, 511, Justice Douglas, writing for the Court, held that abstention would not be appropriate “merely to await an attempt to vindicate the claim in a state court.” Id.; see Conover v. Montemuro, 477 F.2d 1073, 1088 n. 26 (3d Cir. 1973) (Adams, J., concurring). Constantineau would appear to bind us here.

It is urged, however, that other eases have undercut the holding of Constanti-neau. These cases are distinguishable. The two most cogent are Askew v. Hargrave, 401 U.S. 476, 91 S.Ct. 856, 28 L.Ed.2d 196 (1971) and Garfinkle v. Wells Fargo Bank, 483 F.2d 1074, 1077-1078 (9th Cir. 1973). In Hargrave the plaintiffs challenged an educational taxing scheme on equal protection grounds. In a brief per curiam the Court ordered abstention. It is not clear that what the Supreme Court wished the state courts to initially decide was a claim based on the state’s counterpart to the equal protection clause; the opinion simply does not say. However, it does seem likely that there were non-mirror state issues in the case, for otherwise it certainly would have been appropriate for the Court to have discussed Constantineau, decided earlier in the term. Even were that not so, there is a critical difference between Hargrave and both Constanti-neau and the instant case. In Har-grave another action making the same challenge was pending in the Florida courts, a factor on which the Court relied. There was, then, “a substantial and immediate possibility of obviating [the] federal claim by a decision on state law grounds.” Steffel v. Thompson, 415 U.S. 452, 475 n. 22, 94 S.Ct. 1209, 1224, 89 L.Ed.2d 505 (1974) (emphasis added).

In Garfinkle the plaintiffs claimed California’s system of nonjudicial mortgage foreclosure did not provide sufficient procedural safeguards to measure up to due process standards. The court found abstention was appropriate “inasmuch as it does not appear that the precise constitutional questions, which have been asserted in this ease, have been finally settled in the California courts.” 483 F.2d at 1077. While some of the language in the opinion, especially the quoted statement, supports appellee, a closer examination reveals that there were a number of disputed state law issues in the case which were not by any means identical to the Garfinkles’ federal constitutional challenge — for example, whether the plaintiff had in fact defaulted on his mortgage, the extent of foreclosure notice and hearing required under local law, and so on. Indeed, plaintiffs suggested the propriety of abstention because of the controversy over those issues.

[W]e feel compelled ... to acknowledge that the bank has challenged a large number of our statements of the law of California. This Court could properly determine that abstention is prudent, either on the entire case or, more particularly, on the state law question of whether there has been a default.

This, we think, was the ground for abstention in Garfinkle, not the supposed presence of state constitutional issues identical to the federal ones.

As to the policy grounds, it would entail wasteful duplication of effort to send cases back for state adjudication in the circumstances present here. Litigants would have two bites at the apple —first in state court, then in federal court — both on essentially the same constitutional claim.

More importantly, abstention “is an extraordinary and narrow exception to the duty of a District Court to adjudicate a controversy properly before it.” Allegheny County v. Frank Mashuda Co., 360 U.S. 185, 188, 79 S.Ct. 1060, 1063, 3 L.Ed.2d 1163 (1959). In this connection, we have said that civil rights cases “are the least likely candidates for abstention.” Canton v. Spokane School District No. 81, 498 F.2d 840, 846 (9th Cir. 1974), quoting from, Wright v. McMann, 387 F.2d 519, 525 (2d Cir. 1967). In the type of case we have here, a rule requiring abstention would seriously undermine the remedy afforded by the civil rights acts. Since most states have both some form of due process clause and some form of equal protection clause, abstention would be necessary, or at least within the power of the district judge, in nearly every civil rights action. Consequently, litigants’ access to a federal forum would be significantly delayed. That could endanger the very effectiveness of the civil rights jurisdiction.

Reversed.

      . A number of other cases, relying on Constantineau, have rejected the notion that abstention is proper “where the state claims . . . are grounded upon state constitutional rights which are merely counterparts for the federal rights asserted.” Reid v. Board of Education, 453 F.2d 238, 244 (2d Cir. 1971) (dictum). See Boraas v. Village of Belle Terre, 476 F.2d 806, 811-812 (2d Cir. 1973), Rev’d on other grounds, 416 U.S. I, 94 S.Ct. 1536, 39 L.Ed.2d 797 (1974); Public Funds for Public Schools of New Jersey v. Marburger, 358 F.Supp. 29, 32 (D.N.J. 1973); Barrick Realty, Inc. v. City of Cary, 354 F.Supp. 126, 130 (N.D.Ind.1973), aff’d, 491 F.2d 161 (7th Cir. 1974); cf. Procunier v. Martinez, 416 U.S. 396, 400-401, 94 S.Ct. 1800, 40 L.Ed.2d 224 (1974); Steffel v. Thompson, 415 U.S. 452, 475-476 n. 22, 94 S.Ct. 1209, 39 L.Ed.2d 505 (1974); Webster v. Perry, 367 F.Supp. 666, 670 (W.D.N.C. 1973) (dictum). See also Canton v. Spokane School District No. 81, 498 F.2d 840, 844-846 (9th Cir., 1974).

      . Two other cases are more easily distinguishable. First, in City of Meridian v. Southern Bell Tele. & Tele. Co., 358 U.S. 639, 79 S.Ct. 455, 3 L.Ed.2d 562 (1959), Southern Bell challenged a city tax arguing that an 1886 Mississippi statute granted it a perpetual franchise. It claimed that the statute was a contract that the city could not impair; one unclear issue of state law was the meaning of this statute. See the opinion below, 154 F.Supp. 736, 737-738 (S. D.Miss.1957). Also, the city contended that the preexisting franchises were extinguished by the 1890 Mississippi constitution. 154 F.Supp. at 738. A second state issue was thus based on the state constitution, but it was unique to the Mississippi constitution.
      Reetz v. Bozanich, 397 U.S. 82, 90 S.Ct. 788, 25 L.Ed.2d 68 (1970), is similar in this respect. Abstention was ordered because of the possible applicability of two previously uninterpreted sections of the Alaska constitution. Both dealt specifically with fishing rights and obviously have no federal counterparts.

      . Cf. testimony of Judge Friendly, Hearings on S. 1876 Before the Subcomm. on Improvements in Judicial Machinery of the Senate Comm. on the Judiciary, Part 2, 92d Cong., 2d Sess. 759-60 (1972).

      . Memorandum of Additional Authorities, June 28, 1973 at 2.

      . This also seems to have been the case in Warren v. Government Nat. Mort. Ass’n, 443 F.2d 624 (8tli Cir.), cert. denied, 404 U.S. 886, 92 S.Ct. 220, 30 L.Ed.2d 169 (1971).


author: HILL, Circuit Judge.

text:
    Thomas HARTEN and Laurie Harten, Plaintiffs-Appellees, v. John COONS et al., Defendants-Appellants.
    No. 74-1023.
    United States Court of Appeals, Tenth Circuit.
    Argued Aug. 21, 1974.
    Decided Sept. 26, 1974.
    Judith S. Feigin, Washington, D. C. (Carla A. Hills, Asst. Atty. Gen., Victor R. Ortega, U. S. Atty., Robert E. Kopp, Dept, of Justice, Washington, D. C., on the brief), for defendants-appellants.

      Louis S. Marjon, Albuquerque, N. M. (James A. Toulouse, Albuquerque, N. M., on the brief), for plaintiff s-appel-lees.
    Before HILL and McWILLIAMS, Circuit Judges, and SMITH, District Judge.

       Honorable Talbot Smitli, Eastern District of Michigan sitting by designation.

   HILL, Circuit Judge.

This is an interlocutory appeal from an order denying , the government’s motion to dismiss a serviceman’s suit for injuries under the Federal Tort Claims Act (Act), 28 U.S.C. § 1346(b).

Appellees are Thomas Harten and his wife, Laurie. In 1971; Thomas, on active duty in the United States Armed Forces, underwent an elective vasectomy operation at Sandia Base, New Mexico. He was then provided with an analysis report indicating he was sterile. Subsequently, Laurie became pregnant and bore a child. The Hartens then brought this action under the Act, in the United States District Court for the District of New Mexico, against the military medical personnel involved in the operation and the United States. The complaint alleged the operation had been negligently performed and that the Hartens had negligently been provided with an inaccurate analysis report. Additionally, the complaint requested $50,000 for the necessary costs of raising and maintaining the child to the age of eighteen.

The government moved to dismiss the suit on jurisdictional grounds. The trial court found that appellees had not exhausted their administrative remedies, and dismissed the suit without prejudice. Appellees then filed a motion for reconsideration, and stated that an administrative claim had been filed with and disapproved by the United States Army Claims Service. The motion further stated that appellees’ counsel had inadvertently neglected to submit the claim to the court. The trial court vacated its order dismissing the suit and allowed the parties two months to file additional authorities concerning the government’s motion to dismiss.

The government’s motion placed primary emphasis on the doctrine announced in Feres v. United States, 340 U.S. 135, 71 S.Ct. 153, 95 L.Ed. 152 (1950), that “[t]he Government is not liable under the Federal Tort Claims Act for injuries to servicemen where the injuries arise out of or are in the course of activity incident to service.” The trial court found that a vasectomy operation was not “incident to service” and denied the government’s motion, but stated that an immediate appeal could be taken because the order involved a “controlling question of law as to which there is substantial ground for difference of opinion.”

The question presented by this appeal appears to be one of first impression in the Tenth Circuit.

Whether a serviceman’s injury arises out of activity “incident to service” depends on whether it stems from an official military relationship between the negligent person and the serviceman. In other words, it depends on the claimant's “status” at the time of the injury. See, e. g., Henning v. United States, 446 F.2d 774 (3rd Cir. 1971), cert. den’d, 404 U.S. 1016, 92 S.Ct. 676, 30 L.Ed.2d 664.

Thus, if a claimant is on leave, or on inactive status at the time of the injury, or if the injury is not the product of a military relationship, suit under the Act may be allowed.

On the other hand, when a serviceman on active duty sustains an injury stemming from the military relationship, courts consistently have denied recovery under the Act. Surgery, whether elective or required, is “incident to service” when performed upon a serviceman on active duty because the serviceman is taking advantage of medical privileges granted only to military personnel. Herreman v. United States, 476 F.2d 234 (7th Cir. 1973). A ease in point is Lowe v. United States, 440 F.2d 452, 453 (5th Cir. 1971), cert. den’d, 404 U.S. 833, 92 S.Ct. 83, 30 L.Ed.2d 64, where a serviceman on active duty underwent elective surgerv. In affirming the dismissal of the action the appellate court stated:

[I]t is obvious that the injured man could not have been admitted, and would not have been admitted, to the Naval Hospital except for his military status. He was there treated by Naval medical personnel solely because of that status. It inescapably follows that whatever happened to him in that hospital and during the course of that treatment had to be “in the course of activity incident to service.”

We believe Harten’s injuries were sustained in the course of activity incident to service and that a suit thereon cannot be maintained under the Act. The trial court’s order denying the government’s motion to dismiss is therefore reversed.

      . 28 U.S.C. § 1346(b) provides, in part: “Subject to the provisions of this title, the district courts . . . shall have exclusive jurisdiction of civil actions on claims against the United States, for money damages, accruing on and after January 1, 1945, for injury or loss of property, or personal injury or death caused by the negligent or wrongful act or omission of any employee of the Government while acting within the scope of his office or employment, under circumstances where the United States, if a private person, would be liable to the claimant in accordance with the law of the place where the act or omission occurred.”

      . An analogous case is Barr v. Brezina Const. Co., 464 F.2d 1141 (10th Cir. 1972), cert. den’d, 409 U.S. 1125, 93 S.Ct. 937, 35 L.Ed.2d 256, which involved a third-party indemnity claim against the government. Brezina obtained a contract to do remodeling work on a building at Hill Air Force Base, in Utah, and sublet the installation of an access stairway. Barr, an airman on active duty, fell down the stairway while engaged in the performance of military duties. Barr instituted suit against Brezina, who settled for $45,000 and brought an indemnity action against the government on the grounds it knew the stairway was defective. The trial court dismissed the suit because, inter alia, Barr would have been precluded from direct recovery himself under the Feres doctrine. This Court affirmed.

      . In Brooks v. United States, 337 U.S. 49, 69 S.Ct. 918, 93 L.Ed. 1200 (1949), suit under the Act was permitted by a serviceman on leave who was negligently injured on a public highway when the vehicle in which he was riding was struck by a government vehicle driven by a government employee.

      . In United States v. Brown, 348 U.S. 110, 75 S.Ct. 141, 99 L.Ed. 139 (1954), a serviceman sustained a knee injury while on active duty and Veterans Administration doctors negligently operated on the knee seven years after his discharge. Suit was permitted under the Act.

      . In United States v. Snyder, 218 F.2d 266 (4th Cir. 1954), aff’d mem., 350 U.S. 906, 76 S.Ct. 191, suit under the Act was permitted by an off-duty serviceman who sustained injuries when a military aircraft crashed into his off-base residence.

      . See, e.g., Herreman v. United States, 476 F.2d 234 (7th Cir. 1973), member of National Ouard killed when military aircraft in which he was riding crashed; Henninger v. United States, 473 F.2d 814 (9th Cir. 1973), cert. den’d, 414 U.S. 819, 94 S.Ct. 43, 38 L.Ed.2d 51, serviceman suffered injuries when Navy doctors negligently performed a hernia operation required for discharge; Henning v. United States, 446 F.2d 774 (3rd Cir. 1971), cert. den’d, 404 U.S. 1016, 92 S.Ct. 676, 30 L.Ed.2d 664, Army doctor negligently misread a serviceman’s X-ray and failed to advise him of a tubercular condition which subsequently became aggravated; Lowe v. United States, 440 F.2d 452 (5th Cir. 1971), cert. den’d, 404 U.S. 833, 92 S.Ct. 83, 30 L.Ed.2d 64, elective surgery; Shults v. United States, 421 F.2d 170 (5th Cir. 1969), sailor on liberty struck by automobile and taken to military hospital where he died due to alleged negligence of military doctors; Chambers v. United States, 357 F.2d 224 (8th Cir. 1966), serviceman drowned in military swimming pool due to alleged negligence of government in failing to keep qualified lifeguards at pool and to provide adequate life saving equipment.


author: CASTLE, Senior Circuit Judge.

text:
    Mary S. KRALY, Plaintiff-Appellant and Cross-Appellee, v. NATIONAL DISTILLERS AND CHEMICAL CORPORATION, Defendant-Ap-pellee and Cross-Appellant.
    Nos. 73-1589, 73-1590.
    United States Court of Appeals, Seventh Circuit.
    Argued April 25, 1974.
    Decided July 25, 1974.
    As Amended Sept. 4, 1974.
    Rehearing Denied Oct. 2, 1974.

      George W. Thompson, Chicago, 111., Marvin C. Soffen, New York City, for National Distillers.
    James M. Wetzel, Chicago, 111., for Mary S. Kraly.
    Before CASTLE, Senior Circuit Judge, SPRECHER, Circuit Judge, and SOLOMON, Senior District Judge.

       Honorable Gus J. Solomon, Senior District Judge, District of Oregon, is sitting by designation.

   CASTLE, Senior Circuit Judge.

Plaintiff Mary S. Kraly appeals from an order of the district court holding claims 3-6 of patent No. 3,095,342, relating to a specific type of tubeless tire repair insert, invalid and a partial defense to an action for specific performance and damages for breach of an agreement granting defendant National Distillers and Chemical Corporation’s predecessor-in-interest, H. B. Egan Manufacturing Co., a nonexclusive license under the above patent. National Distillers cross-appeals from that aspect of the order holding it liable to Kraly under the licensing agreement for royalties for the fourth quarter of 1969 and the first three quarters of 1970. On appeal, Kraly contends that principles of res judicata bar National Distillers from challenging the validity of the patent because an earlier litigation between Kraly and Egan was dismissed with prejudice when the parties accepted a licensing agreement which provided, inter alia, that Egan would not contest the validity of the patent. Kraly alternatively argues that the court erred in determining that the claims of the patent in question were invalid. In its cross-appeal, National Distillers asserts that it is not liable to Kraly for royalties under the licensing agreement, even though it continued to stamp Kraly’s patent number on its tire inserts through September 1970, because Kraly obtained the patent through misrepresentation. National Distillers also argues that it is excused from its duty to pay royalties because Kraly breached its licensing agreement by failing to take measures to abate unlicensed sales after receiving adequate notice of such sales from National Distillers. We affirm the order of the district court.

On November 4, 1966, Mary Kraly instituted an action in federal district court against Sears, Roebuck & Co. and H. B. Egan Manufacturing Co., Inc. That suit alleged infringement of the same patent involved in this case, and Egan asserted defenses of invalidity and fraud in his answer. On February 27, 1967, Kraly and Egan entered into an agreement providing that Egan would receive a nonexclusive license from Kraly for production of the patented tire repair insert, that Egan would pay royalties to Kraly on each licensed insert sold, and that Egan would mark each insert with “Licensed under U. S. Patent No. 3,095,-342” or its equivalent. Moreover, the agreement provided that Egan’s obligations would be conditioned on Kraly’s bringing suit for infringement to prevent substantial quantities of unlicensed sales within six months after notice of such sales was given by Egan. Finally, Egan would pay Kraly $8,000 “in full satisfaction of any and all claims” that Kraly might have against Egan arising from the latter’s “past sales of tire repair inserts,” and would not “contest the validity” of the patent. Thereafter, the court dismissed the action with prejudice (even though the parties had requested that the dismissal be entered without prejudice). The court stated that the parties, by agreement, had made full settlement of all claims for infringement, with Egan taking a license under the Kraly patent.

The parties or their successors complied with the terms of the licensing agreement through each quarter of 1967, 1968, and the first three quarters of 1969. Additionally, Mrs. Kraly received $8,000 from Egan. National Distillers sent Kraly a letter on May 5, 1969, allegedly giving notice of substantial unlicensed sales, and no royalty payments were made subsequent to the third quarter of 1969.

I.

Citing Phillips v. Shannon, 445 F.2d 460, 462 (7th Cir. 1971), Kraly first argues that a “dismissal with prejudice is as conclusive of the rights of parties as an adverse judgment after trial, being res judicata of all questions which might have been litigated in the suit.” We do not quarrel with the general proposition that a judgment with prejudice entered upon a settlement or compromise is binding as to the parties and their privies. See generally, IB J. Moore, Federal Practice, |f 0.409 (2d ed. 1948). Nonetheless, this proposition is subject to qualification where overriding principles are implicated, and it is well-established that one such principle is “the public interest in obtaining a judicial determination of the invalidity of a worthless patent.” Id.; accord, Ad-dressograph-Multigraph Corp. v. Cooper, 156 F.2d 483 (2d Cir. 1946). In the circumstances of this case, therefore, the doctrine of res judicata has no applicability.

Kraly next asserts that the court erred in extending the rationale of Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969) to a prior dismissal with prejudice and in concluding that the dismissal did not estop National Distillers from defending the suit on the ground of invalidity. In Lear, a contract action for unpaid royalties, the Court held that the licensee was not estopped from challenging the validity of the patent notwithstanding a prior licensing agreement. The Court reasoned that “federal law requires, that all ideas in general circulation be dedicated to the common good unless they are protected by a valid patent,” id. at 668, 89 S.Ct. at 1910, and that this federal policy prevails over the “technical requirements of contract doctrine.” Id. at 670, 89 S.Ct. 1902. In Business Forms Finishing Service, Inc. v. Carson, 452 F.2d 70 (7th Cir. 1971), this court held that even though Lear involved a purely private agreement entered into prior to any litigation, the rationale of Lear required that a party be permitted to challenge validity notwithstanding a prior consent decree which had held the patent not infringed. The Court, relying on Addressograph-Multigraph Corp. v. Cooper, supra, stated that unless there was an adjudication of infringement embodied in the consent decree, the decree would not estop the licensee from subsequently challenging the validity of the patent. Id. at 75; accord, Broadview Chemical Corp. v. Loctite Corp., 474 F.2d 1391, 1395 (2d Cir. 1973). In this case, as in Business Forms, there was no adjudication of infringement. It is true that Egan agreed to pay Kraly $8,000 in settlement of “any and all claims.” That, however, is not the equivalent of an adjudication of infringement. Certainly the expeditious settlement of a potentially lengthy and costly lawsuit as well as the obtaining of a licensing agreement can be expected to have an independent value to the licensee. Moreover, in contrast with Addressograph-Multigraph v. Cooper, supra, the parties to this suit were ordered to bear their own costs and fees. Even if we assume, however, that the consent decree embodied an adjudication of infringement, we do not believe that the Lear rationale would necessarily be inapplicable. To allow the parties to consent to an adjudication of infringement would simply result in the erection of another obstacle to tests of patent validity. We conclude that National Distillers, the licensee, is not estopped from challenging the validity of the patent, even though a prior consent decree incorporated an understanding not to challenge the validity of the patent. As Judge Stevens points out in Business Forms, “A contrary result could not be reconciled with ‘the public interest in a judicial determination of the invalidity of a worthless patent.’ ” 452 F.2d at 75.

Kraly argues that this result conflicts with our decision in Ransburg Electro-Coating Corp. v. Spiller & Spiller, Inc., 489 F.2d 974 (7th Cir. 1973), and in support of this argument cites Schlegel Manufacturing Co. v. King Aluminum Corp., 369 F.Supp. 650 (S.D.Ohio 1973). We cannot agree with the Schlegel court that Ransburg supports the proposition that “once a party enters a consent decree accepting the validity of a particular patent, that party is estopped from raising the validity issue in subsequent litigation regarding the same parties and the same patent.” Id. at 653. While it is true that in Ransburg this court reasoned that “the Lear case did not signify that something called ‘federal public policy on patents’ could be used to undo the effects of a valid lawsuit settlement contract,” id., that reasoning was applied only to that portion of the settlement involving past infringement.

In Ransburg, the court was confronted with the issue of the extent to which a prior settlement of an infringement action is enforceable once noninfringement has been established. There, as here, the settlement agreement included both a payment for past infringement and a prospective licensing agreement. With respect to the payment for past infringement described in the opinion as the “settlement contract,” the court allowed the plaintiff to recover the balance due on the basis that the agreement was “a promise ... to pay liquidated damages for past infringements in return for a dismissal of the infringement suit.” 489 F.2d at 977. The court properly recognized the difference between the consideration supporting a “release from past wrongdoing” and a “license to do rightfully the same thing in the future.” The enforcement of the settlement contract, unlike prospective enforcement of a licensing agreement, does not represent a demand for royalties for use of an idea within the public domain but rather a demand for the quid pro quo of a “good faith compromise of a bona fide claim.” Id. at 976-978. It was for this reason that the court concluded,

Although the federal patent policy prevails over ‘the technical requirements of contract doctrine’ ... we believe that such policy must occupy a subsidiary position to the fundamental policy favoring the expedient and orderly settlement of disputes and the fostering of judicial economy. . The vehicle of settlement would be a useless item if contracts such as the one here, were subject to invalidation after they were consummated. We think the federal patent policy should not be carried so far. 489 F.2d at 978.

Furthermore, the court reasoned that a failure to enforce the settlement contract would not effectuate the policy of encouraging early tests of patent validity enunciated in Lear, inasmuch as it would allow the alleged infringer to settle at a time when he had an opportunity to litigate validity secure in the knowledge that the settlement would cost nothing in the event the patent was subsequently declared invalid. Id.

In this case, the defendant has not counterclaimed for a refund of the monies paid for past infringement. The decision in Ransburg does not support Kraly’s position because the policy considerations are expressly grounded on the distinction between “settlement contracts” and licensing agreements.

II.

Kraly further contends that the court erred in determining that claims 3-6 of the patent were invalid. Claim 3 relates to the structure and composition of the tire repair insert, while claims 4-6 refer to the method of its application and use to repair a tire while it is mounted on the vehicle. More specifically, Kraly argues respecting claim 3 that the court erred in its application of the obviousness test and in its conclusions that there was only one distinction between the prior art and the patent in question and that that distinction was obvious to persons of ordinary skill. We cannot agree, and we find that the court applied pertinent patent law in reaching its amply-supported conclusions.

Claim 3 describes a multi-ply, wafer-type tire repair insert with a base lamination of cured rubber and an overlapping or outer facing lamination of uncured rubber. The claim specifies that the insert is folded prior to insertion into the tire injury, so that the uncured rubber lamination is on the outside. Combined with the outer lamination is a chemical accelerator. A rubber-based adhesive containing a second accelerator is first applied to the tire injury, and when the insert with its own accelerator in the laminated uneured rubber is inserted into the tire, self-vulcanization of the insert to the tire is initiated.

The court found it undisputed that two-ply laminations of cured and uncured rubber were known and used in patching tires from the outside and on the wheel, and further, that it was known that inserts with an outer layer of uncured rubber could be activated by a sulfur accelerator and heat to initiate vulcanization. The court then focused on Kraly’s claimed invention: “a combination of a special insert with a special adhesive doubled for insertion, or inserted, into a tire injury for binding to the hole.”

In applying the criteria articulated by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the court began its analysis by examining the scope of the principal prior art. It found that the Chambers patent describes a laminated insert, either round, oval or angular, with an outer layer of uncured rubber combined with sulfur. The vulcanization is accomplished by the heat generated in use on the road, and no cement involving a second accelerator is used in the process. The court further found that the Belgian patent uses two accelerators to achieve vulcanization, which is accomplished through road heat.

The court concluded that nothing in the prior art precisely duplicated the Kraly patent, in that one accelerator was incorporated in the layer of uncured rubber while the second one was contained in the cement. It then considered whether this combination would have been obvious to a person reasonably knowledgeable or skilled in the art. The court found that neither the chemist from whom Kraly obtained the technical and chemical information regarding acceleration (and specifically the “self-vulcanizing” cement) nor Kraly’s patent attorney believed that “the inclusion in the vulcanizing cement of a second accelerator to trigger activation of the primary accelerator in the uncured lami-nations” was patentable “simply because it is a feature which at least half a dozen companies are using.” Kraly’s lawyer had, moreover, advised his client that it was his opinion that “no invention is involved in retaining this triggering relationship in two materials long used in tire repairs, when changing to a wafer form one such material whose form had previously been different,” an obvious reference to the round or oval Chambers insert. The court then properly concluded that persons of ordinary skill in the art were well aware of the possibility of the combination and method of accelerating vulcanization found in the Kraly patent and did not consider it patentable. Moreover, such persons found that the shape of the insert resulted in no functional difference in the repair process.

In affirming the court’s determination of invalidity, we specifically reject Kraly's contention that Finding No. 46 of the lower court opinion is clearly erroneous. That finding stated that it was known prior to Kraly’s alleged invention that a flat section of a laminated tire repair material could be folded, inserted folded end first, and then cemented with a suitable adhesive into an injury opening, for the repair of tubeless tires. We note first that Kraly does not challenge, and therefore presumably accepts, the court’s Finding No. 44, in which the court stated more explicitly that the “Chambers insert is applied to repair an injury in the same manner as the Kraly insert, i. e., the protective covering is removed and the insert is folded upon itself before being inserted into the injury opening” (emphasis added). Moreover, we find that the challenged finding is well-supported by the Mix patent, the Pearson book, and the lower court’s judicial notice of his method for repairing bicycle fees as a boy.

National Distillers’ cross-appeal relates to the court’s awarding of royalties to Kraly for the last quarter of 1969 and the first three quarters of 1970 plus interest. The court keyed the terminal date of National Distillers’ royalty obligation to the date on which National Distillers stopped marking its product with Kraly’s patent number. Anticipating the result reached by this court in Ransburg, the lower court presciently reasoned:

We do not, however, believe that our present finding of invalidity relieves the defendant of its obligation to pay royalties for the period in which it was enjoying the benefit of its license and representing to the public that its product was licensed under the Kraly patent. So long as [the] defendant sought the protection, of the patent, it is only equitable that it should discharge its royalty obligation under the license agreement. Once it ceased to represent that its product was licensed under the patent, it had repudiated the license agreement and assumed the risk of being found liable for infringing without receiving the concomitant commercial benefit of being a licensee.

While it is true that patent licensees are not estopped from challenging the validity of a licensed patent merely because they have marked their - products with the patent number, Beckman Instruments, Inc. v. Technical Development Corp., 433 F.2d 55 (7th Cir. 1970), cert. den., 401 U.S. 976, 91 S.Ct. 1199, 28 L.Ed. 2d 326 (1971), Ransburg properly distinguishes between the refusal of courts to enforce prospectively the terms of a licensing agreement when the underlying patent has been declared invalid and the appropriate use of judicial power to enforce the terms of a licensing agreement during the period prior to an adjudication of invalidity in which both parties benefited from the agreement. This principle was implicitly approved in Troxel Manufacturing Co. v. Schwinn Bicycle Co., 465 F.2d 1253 (6th Cir. 1972), by the Sixth Circuit, which refused to permit licensees of a patent subsequently held to be invalid to recover all royalties ever paid on that patent. The application of such equitable principles by the district court with respect to this issue was eminently correct.

National Distillers further contends that its obligation to pay royalties was excused by Kraly’s breach of a contractual condition requiring Kraly to bring suit for infringement to bar substantial unlicensed sales when it receives adequate notice from National Distillers. National Distillers argues that its letter of May 5, 1969 provided adequate notice within the meaning of the licensing agreement, and therefore, that Finding No. 51 is clearly erroneous. We find that the court below properly and fully dealt with this factual question, and we adopt that portion of the court’s opinion which follows:

It is obvious from the undisputed facts that, at the time the letter in question was written, the defendant had not yet ascertained the number of inserts sold per year by the companies named nor had conducted any chemical tests on their products to determine whether or not they were “unlicensed sales of Licensed Inserts in substantial quantities (which, for the purpose hereof, shall be deemed to be sales from any one source at the rate of 400,000 Licensed Inserts over a period of any one calendar year). . . .”
While the license agreement does not define the investigation which the licensee was to make prior to invoking Section 6.02, it is reasonable to infer that it had an obligation to do more than simply list eight of its competitors in a letter to the licensor. It is clear that defendant on May 5, 1969 had no knowledge on which to base its notice under Section 6.02 other than the fact that the companies it named were selling outside-in repair kits. Indeed, on the record before us, there is no evidence that any of the companies utilized a combination of an accelerator in the insert and a second accelerator in the cement to achieve self-vulcanization.
We conclude, therefore, that defendant’s letter of May 5, 1969 was not an adequate notice under Section 6.02 of the license agreement.

We have considered National Distillers’ claim that Kraly’s alleged misrepresentation to the U. S. Patent Office precludes any award of royalties. We find that the actions of Kraly’s attorney [not the attorney of record in this appeal] were hardly exemplary and agree with the district court that “[i]t is inconceivable that in any but an ex parte proceeding such a contention [i. e., Kraly’s claim of inventiveness] would have been successful or would even have been urged by an attorney who had previously written to his client that, in his opinion, ‘no invention is involved’ in either the triggering mechanism or the shape.” Nonetheless, we do not find that such conduct amounted to a misrepresentation. We therefore affirm the district court’s award of royalties.

The judgment of the district court is affirmed.

Affirmed.

      . The plaintiff, Mary S. Kraly, is the successor-in-interest to John Kraly, the original patentee of No. 3,095,842, issued on January 25, 1963.

      . Mary S. Kraly, Executrix of the Estate of John Kraly v. Sears, Roebuck & Co. and H. B. Egan Manufacturing Co., Inc., No. 66 C 2016 (N.D.Ill.1967).

      . We note that the district court altered the terms of the decree prepared by the attorneys to provide for a stipulated dismissal of the suit with prejudice. The lower court’s action comported with the prevailing pr e-Lear thought that acknowledgment of the validity of a patent through acceptance of a licensing agreement incorporated into a consent decree barred the parties or their privies from subsequently challenging the validity of the patent. In the trial transcript, Judge Will states: “This is a case in which acknowledgment of validity of the patent and an agreement not to attack it is part of the consideration for the disposition of a lawsuit, as well as for a license agreement.” The court continued that while there was no express finding of validity in the decree — in contrast with the acknowledgment of validity embodied in the agreement — this case was distinguishable from Lear, which involved a purely private agreement. The clear implication from the transcript is that in recognizing the agreement as the basis for dismissal, the court by incorporation adjudicated the issue of validity.

      . If the parties had requested a dismissal with prejudice, we would have no trouble con-dueling that the $8,000 payment was “a grant of some relief from which infringement can be inferred.” Understanding that a dismissal with prejudice is res judicata as to all issues presented, the parties would clearly have intended the payment to represent an admission of infringement. Insofar as a stipulated dismissal is interpreted as denoting only what the parties acknowledge, it is unclear what effect the court’s decision to enter the order with prejudice has on conclusions to be drawn with respect to what the agreement acknowledged.

      . This court’s opinion in Maxon Premix Burner Co. v. Eclipse Fuel Engineering Co., 471 F.2d 308 (7th Cir. 1972) is equally unavailing to Kraly. In Maxon, this court ruled that a party who had lost an infringement action at the trial level was estopped from subsequently contesting the validity of the infringed patent when that party had failed to offer any proof at the trial level related to the question of validity and had, in fact, made statements admitting the validity of the patent claims. The court concluded that neither the policy encouraging tests of patent validity nor the policy of conserving judicial resources would “be served by a ruling which permitted a party to contest validity only when the close of the trial revealed that it had lost on the issue of infringement.” Id. at 312.

      . Kraly additionally cites as error the failure of the court to respond to a motion filed pursuant to rule 52(b) of the Federal Rules of Civil Procedure for a finding as to the presumption of validity accorded to the patent in the case. By its terms, rule 52(b) permits the court to make additional findings at its discretion. As that rule of adjudication was implicit in the court’s resolution of the case, whatever the court’s personal view, it was not an abuse of discretion for the court to determine that the requested finding was unnecessary.

      . Chambers and Moats Patent No. 2,966,187.

      . Gruber Belgian Patent No. 546,957.

      . Letter from Ephraim Banning, Esq., to Horace Brose, Kraly’s agent and prospective partner, dated December 13, 1961, quoting in part from a letter sent by Robert A. Flory, Kraly’s chemist, to Brose dated October 9, 1961.

      . Kraly does not specify the grounds on which she contests the finding of invalidity respecting claims 4-6. These claims refer to the proper method for applying the tire repair insert. Essentially, the method prescribes that one remove the protective cover from the insert, prestretch it, and then place it in a needle and insert it into the tire injury, which has already been coated with a cement containing the second accelerator. In holding that the prior art as to method of inserting tire repair inserts into a punctured tire in-eluded all the elements described in the three claims, the court stated :
      Nothing therein is new. All tire repair from the outside involves the insertion of rubber into the hole or injury with a needle. The Court repaired punctures in his bicycle tires more than fifty years ago by this method. Nor is the use of cement in connection therewith novel, or the presti'etching of the insert before insertion. This leaves only the use of an insert containing an accelerator in the cement which we have already discussed.
      We conclude as to claims 4, 5 and 6 that the prior art as to the method of insertion of inserts into a punctured tire included all elements described in the three claims and they are, therefore, also invalid.
      We concur in these findings and the conclusion of the trial court.

      . Mix patent No. 553,562.

      . II. Pearson, Pneumatic Tires 1086-1087.


author: PELL, Circuit Judge.

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Joseph Russell JOHNSON, Jr., Defendant-Appellant.
    No. 74-1030.
    United States Court of Appeals, Seventh Circuit.
    Argued April 2, 1974.
    Decided Sept. 11, 1974.

      Timothy F. Kelly, Hammond, Ind., for defendant-appellant.
    John R. Wilks, U. S. Atty., Joseph S. Van Bokkelen, Asst. U. S. Atty., Hammond, Ind., for plaintiff-appellee.
    Before PELL and SPRECHER, Circuit Judges, and CAMPBELL, Senior District Judge.

       Senior District Judge William J. Campbell of the Northern District of Illinois is sitting by designation.

   PELL, Circuit Judge.

Defendant Joseph R. Johnson, Jr. was found guilty by a jury of robbing a United States post office and of placing the life of a mail custodian in jeopardy by use of a dangerous weapon, in violation of 18 U.S.C. § 2114. Johnson was given the statutorily mandated sentence of 25 years’ imprisonment.

The evidence indicated that on July 10, 1973, the Brunswick Postal Service in Gary, Indiana, was robbed of four money orders. During the robbery, Susan Hudak, the postal clerk from whom the money orders were taken, was shot in the hand by the robber.

Johnson raises three issues on appeal: (1) whether the district court erred in permitting certain evidence to be introduced by the Government; (2) whether the evidence was sufficient to prove that Johnson had placed Susan Hudak’s life in jeopardy; (3) whether the jury should have been informed that the defendant, if convicted, would receive a sentence of 25 years’ imprisonment.

I

Prior to Johnson's arrest, Susan Hu-dak and another postal clerk present during the robbery, Shellena Evans, made photographic identifications of the defendant. A lineup was conducted, with the same witnesses present, after Johnson was ai-rested. The police records did not indicate that a positive identification had been made by either witness at the lineup.

The district court, in a pretrial order, granted the defendant’s motion to suppress the photographic identifications. The defense made no motion to suppress the lineup confrontation.

At the trial, the district judge permitted the Government, on rebuttal, to inquire, to a limited extent, into the suppressed photographic identifications. Johnson contends that this amounted to revei’sible error. We disagree.

In direct examination, the prosecutor did not raise, at any time, the matter of eyewitness identification of Johnson. This issue was first brought up by the defense in cross-examination. In cross-examining Susan Hudak, the defense counsel limited his questions to the lineup confrontation. In cross-examining Shellena Evans, the defense again asked about the lineup but then proceeded to ask the broad question:

“Q. And it is your testimony now that you were unable to identify Joseph Russell Johnson, Jr. as the assailant or the perpetrator of that robbery, is that correct?
A. Yes.”

On redirect, the prosecutor was permitted to ask Shellena Evans:

“Q. Did you ever on any other occasion make an identification of the person who committed the robbery at the Brunswick Postal Station ?
-***#■**
A. Yes.”

Later, on redirect rebuttal, the prosecutor asked Gerald Phillips, a postal inspector who was present during the lineup, the following questions:

“Q. Did you also on August 1, 1973, talk to the witness Shellena Evans concerning a possible identification ?
A. Yes, sir, I did.
Q. And in your presence did she make an identification?
A. In effect, she did, yes.
Q. Would you explain your answer, ‘in effect.’
A. Well, she identified Joseph Russell Johnson, Jr., here, the defendant here, as the same person as she had subsequently picked out of—
MR. KELLY: Your Honor, I’m going to object to this question.
THE COURT: I’ll sustain your objection. I’ll strike the evidence. And I’ll admonish the jury not to consider it.”

As the district court noted, the defense counsel, in cross-examining Shel-lena Evans, opened the door on the issue of all pretrial identifications made by that witness. The last question and answer in the defense’s cross-examination of Ms. Evans was not limited to the lineup confrontation; rather, the implication was that Shellena Evans had never made an eyewitness identification of Johnson.® This inference was unfair to the Government since Ms. Evans had, in fact, identified Johnson in a photo-spread even though the circumstances of the identification were such as to activate the exclusionary rule.

In this situation, it was permissible to allow the Government to explore, in rebuttal, testimony which was not admissible on direct in order to prevent prejudice. United States v. Winston, 145 U.S.App.D.C. 67, 447 F.2d 1236, 1240 (1971); J. Wigmore, Evidence § 15 (3d ed. 1940). The doctrine of curative admissibility has been specifically held to permit rebuttal use of pretrial identifications that are otherwise inadmissible because of constitutional violations. United States v. Winston, supra at 1240; United States v. Clark, 294 F.Supp. 44 (D.D.C.1968), aff’d sub nom. Clemons v. United States, 133 U.S.App.D.C. 27, 408 F.2d 1230 (1968), cert. denied 394 U.S. 964, 89 S.Ct. 1318, 22 L.Ed.2d 567 (1969).

The doctrine of curative admissibility can, of course, only be used to prevent prejudice; it cannot be “subverted into a rule for injection of prejudice.” United States v. Winston, supra, 447 F.2d at 1240. In the present ease, however, the district court was very careful to limit the Government’s use of the suppressed evidence. Shellena Evans only testified, on redirect, that on some occasion she made an identification of the person who robbed the Brunswick Postal Station. The prosecutor did not ask about the details of this identification or even whom Ms. Evans had identified. Gerald Phillips’ testimony was even more limited. Phillips was only permitted to testify as to whether Ms. Evans had made an identification at the lineup, an issue clearly opened by the defense. That part of Phillips’ answer which went beyond this matter was stricken by the district judge.

In any event, the proof of Johnson’s guilt, even though in part circumstantial in nature, was so conclusive that if there had been error it would have been harmless. Johnson’s fingerprints were found on the counter where the robbery occurred. The defendant’s fingerprints were also found on the stubs from the stolen money orders and on the stolen money orders themselves. The money orders, furthermore, were cashed on July 20, 1973, in Johnson’s hometown, Warren, Ohio. When arrested, on July 24, 1973, Johnson told a police officer that he had just returned from Warren, Ohio. Finally, Susan Hudak indicated that she had identified Johnson at the lineup. In light of this overwhelming evidence and the Government’s limited inquiry into the photograph identifications, if there had been error it was harmless beyond a reasonable doubt. Harrington v. California, 395 U.S. 250, 89 S.Ct. 1726, 23 L.Ed.2d 284 (1969); Chapman v. California, 386 U.S. 18, 87 S.Ct. 824, 17 L.Ed.2d 705 (1967).

II

The defendant next contends that the evidence was insufficient to prove that Johnson wounded Susan Hudak or put her life in jeopardy. This argument rests on two facts: (1) a firearm introduced into evidence by the Government did not have Johnson’s fingerprints on it, and no ballistic test was performed to connect the weapon to the robbery; (2) Susan Hudak testified that the firearm used in the robbery had a long barrel while the weapon introduced into evidence was a snub-nosed pistol. Aside from the fact that a victim looking at the business end of a gun may err in gauging the length of the barrel, the proof at trial negates these contentions of Johnson.

Susan Hudak was shot in the hand by the person who robbed the Brunswick Postal Station. As previously explained, the fingerprint and identification evidence overwhelmingly indicated that Johnson committed the robbery. Johnson’s reliance on Newsom v. United States, 335 F.2d 237 (5th Cir. 1964), is misplaced. The present case is not the situation adverted to in that case (at 239) of “mere presence at the scene of a criminal offense,” because the individual, i. e.. Johnson, identified as being present, was also identified as the individual who fired the injurious shot. Further, the Government was not required to prove that a particular weapon was used in the robbery but only' that, in effecting the robbery, Johnson placed Susan Hudak’s life in jeopardy by use of a dangerous weapon. The evidence was clearly sufficient to prove the latter.

Ill

The defendant’s final contention is that the defense should have been permitted, in closing argument or in a jury instruction, to inform the jury that if they convicted Johnson, he would receive a mandatory sentence of 25 years’ imprisonment. This contention is also without merit.

The statute in question does not provide the jury with any role with regard to punishment. The jury’s only function in this case was to determine guilt or innocence. The issue of sentencing was wholly irrelevant to this determination. “To inform the jury that the court may impose minimum or maximum sentence or other matters relating to disposition of the defendant, tend to draw the attention of the jury away from their chief function as sole judges of the facts, open the door to compromise verdicts and to confuse the issue or issues to be decided.” Pope v. United States, 298 F.2d 507, 508 (5th Cir. 1962), cert. denied, 381 U.S. 941, 85 S.Ct. 1776, 14 L.Ed.2d 704 (1965). See also Chapman v. United States, 443 F.2d 917, 920 (10th Cir. 1971); United States v. Del Toro, 426 F.2d 181, 184 (5th Cir. 1970), cert. denied, 400 U.S. 829, 91 S.Ct. 58, 27 L.Ed.2d 60.

The defense may wish to inform the jury of the mandatory sentence in the hope that the jury might “hang” or acquit simply because some or all of the jurors thought that the penalty was too severe. Congress, however, has already made the policy determination as to the severity of the sentence where a person is found guilty under this statute. It is not for the courts or the juries to make a new policy determination in such a situation.

Affirmed.

      . 18 U.S.C. § 2114 provides :
      “Whoever assaults any person having lawful charge, control, or custody of any mail matter or of any money or other property of the United States, with intent to rob, steal, or purloin such mail matter, money, or other property of the United States, or robs any such person of mail matter, or of any money, or other property of the United States, shall, for the first offense, be imprisoned not more than ten years; and if in effecting or attempting to effect such robbery he wounds the person having custody of such mail, money, or other property of the United States, or puts his life in jeopardy by the use of a dangerous weapon, or for a subsequent offense, shall be imprisoned twenty-five years.”

      . At the trial, however, Susan Hudak testified, on cross-examination, that she had identified Johnson at the line-up. See note 4 infra.

      . The district 3'udge did not explain, in his order, why he suppressed the photograph identifications. The defense, in seeking the suppression, had argued that the photo-spread was suggestive since Ms. Hudak had described the robber as having an “Afro” hair style and only Johnson’s picture (of the 12 pictures used) showed a black male wearing an “Afro” hair style.

      . “Q. Okay, fine. Miss Hudak, I would like now to direct your attention to August 1, 1973 and ask you if on that day you had an opportunity to participate in a police lineup in the Police Department in Gary, Indiana?
      A. Yes, I did.
      Q. And I will further ask you if you were able to identify on that day your assailant?
      A. Yes, I did.
      Q. . . . Did you give any positive eye- - witness identification on that day as to who was your assailant in that robbery?
      8}! ^ 8}! H* 8}{
      A. The person that I had picked out very much resembled the person that I remembered.
      Q. Well now, is your testimony that he very much resembled the person as you remember him or is it your testimony that he was the assailant?
      A. I would say that it was him.
      Q. Did you say that on the day that that lineup was conducted?
      A. I believe I did.
      Sji í|< 8¡S s¡; 8¡!
      Q. . . . Is it your testimony now that you positively identified Joseph Russell Johnson, Jr. at that lineup as your assailant?
      A. Yes.”

      . “Q. I would like now to direct your attention to August 1, 1973 and ask you if on that occasion you had an opportunity to participate in a police lineup?
      A. Yes.
      Q. And at that police lineup, did you identify the defendant in this case, Joseph Russell Johnson, Jr.?
      Let me rephrase that. Did you positively identify the defendant in this case, Joseph Russell Johnson, Jr., as the assailant or the robber of the morning of July 10, 1973?
      A. No, I didn’t.”

      . Shellena Evans apparently interpreted the defense’s last question as referring only to the lineup confrontation since she answered it affirmatively. Ms. Evans’ interpretation of the question, however, is irrelevant with respect to the impression made on the jury by the question, i. e., that she at no time had ever identified Johnson as the robber.

      . This counter had been dusted before 7:30 A.M. on the day of the robbery with a treated cloth which would have removed any earlier fingerprints. The robbery occurred at approximately 10:30 A.M. and the post office was immediately closed thereafter.

      . Ms. Hudak testified that the robber took tlie money orders before she could remove the stubs. The stubs were later found in a mail box located approximately seven blocks from the Brunswick Postal Station. The money orders themselves were recovered after they had been cashed in Warren, Ohio.

      . The weapon was found at the defendant’s home. When the gun was offered into evidence, counsel for Johnson stated there was no objection to its admission. The gun had five cartridges and one empty Remington .22 caliber cartridge casing. The bullet shot in the post office was recovered only in fragments but these were sufficient to be indicative of a .22 caliber Remington cartridge.