text:
    PENCE CONSTRUCTION CORPORATION, Plaintiff-Appellee, v. HOISTING AND PORTABLE ENGINEERS LOCAL 450 OF the INTERNATIONAL UNION OF OPERATING ENGINEERS, AFL-CIO, Defendant-Appellant.
    No. 73-1334
    Summary Calendar.*
    United States Court of Appeals, Fifth Circuit.
    Aug. 30, 1973.
    Rehearing Denied Oct. 4, 1973.

      W. Arthur Combs, W. Dickinson Yale, Jr., Houston, Tex., for defendant-appellant.
    A. J. Harper, II, L. G. Clinton, Jr., Houston, Tex., for plaintiff-appellee.
    Before THORNBERRY, GOLDBERG and RONEY, Circuit Judges.
   GOLDBERG, Circuit Judge:

In this appeal from an award of damages for losses resulting from a labor strike, we are asked to determine whether a union that has engaged in a strike in violation of a collective bargaining agreement is relieved of liability in damages by reason of the contracting company’s prior breach of the same agreement. The United States District Court for the Southern District of Texas held that prior breach does not preclude the payment of damages, and awarded the injured company $10,450.00, as stipulated by the parties. We affirm.

The events that bring these litigants before us commenced on January 16, 1970, when Pence Construction Corp. [hereinafter “the Company”] discharged a shop steward, Charles Fitts, from his employment as an Operating Engineer at the Company’s Texas Instruments, Inc. job site in Stafford, Texas. Shortly before his discharge Fitts had been elected “Building Trades Steward” for Hoisting and Portable Engineers Local 450 [hereinafter “the Union”], and in that capacity represented all employees on the job site. The Company claimed that it had fired Fitts for various unspecified acts of misconduct. The Union claimed that the Company had fired Fitts, in violation of the collective bargaining agreement, for engaging in lawful Union activities. The Union struck and established a picket at the Texas Instruments job site on January 19, 1970.

The following day the Company filed application in state district court for a temporary restraining order enjoining the Union from picketing and striking. The court granted the restraining order, and contemporaneously ordered the Company to reinstate Fitts to his previous employment. The Union then removed the case to federal district court. 2On January 26, 1970, after renewal of Union picketing, the District Court ordered the Union to submit to grievance and arbitration procedures under the collective bargaining agreement.

The Arbitrator determined that both parties had violated the collective bargaining agreement. He found that the Company had fired Fitts because of activities in his capacity as Union steward, and ordered that Fitts be reinstated with full seniority and back pay. Then, holding that the Union had violated Article Y of the agreement by establishing and maintaining picket lines on January 19, 20, and 26, and February 2 and 3, the Arbitrator ordered the Union to cease and desist from picketing at the Company’s Texas Instruments job site. Prior to the hearing before the Arbitrator, the Company and the Union had entered into a written agreement excluding from arbitration the issue of damages suffered by the Company as a result of the strike.

Following arbitration the Company filed a Motion for Enforcement of Arbitrator’s Award in the District Court. The parties entered a Stipulation that the Company had suffered actual damages in the amount of $10,450.00 as a result of the Union’s strike and picketing. On September 15, 1972 the trial judge entered a final order adopting the Arbitrator’s findings, rejecting the Union’s argument that the prior breach of the agreement by the Company precluded damages, and awarding damages to the Company in the amount stipulated by the parties.

Seeking reversal of the damage award in this Court, the Union contends that the District Court erred in three respects: (1) by awarding damages to a party which itself was guilty of a prior breach of the agreement; (2) by awarding damages for an alleged safety strike; and (3) by excluding the testimony of the Union’s business representative. We find none of these contentions persuasive.

I

The parties apparently agree that the District Court's order compelling arbitration was proper. In enforcing the Arbitrator’s decision and awarding damages to the Company, the District Court was merely requiring the Union to respond in damages for its breach of contract in the same manner the Company had been required to expend damages, in the form of back pay, for its own breach. We are compelled to uphold this even-handed result, not only by our sense of justice, but also by the unmistakable precedential commands of two decades of federal labor law decisions.

The courts have long recognized that a party who breaches a collective bargaining agreement may be held accountable in damages. See e. g., Drake Bakeries v. Local 50, American Bakery & Confectionery Workers, 1962, 370 U.S. 254, 266, 82 S.Ct. 1346, 8 L.Ed.2d 474; Local 653, Int’l Union of Operating Eng’rs v. Bay City Erection Co., 5th Cir. 1962, 300 F.2d 270, 272-273. That concept is not challenged by the parties here.

The Union urges, however, that an exception to this well established principle be implied from Texas’ general contract law. The Union alleges that, under Texas law, material violation of a contract by one party relieves the other party of any further obligation to comply with its provisions. Even assuming the accuracy of this statement of the Texas law, the application of state law to a suit under Section 301 of the Labor Management Relations Act would be wholly inappropriate. In Textile Workers Union v. Lincoln Mills, 1957, 353 U. S. 448, 77 S.Ct. 912, 1 L.Ed.2d 972, the Supreme Court outlined the comparative roles of state and federal law in Section 301 suits:

“We conclude that the substantive law to apply in suits under § 301(a) is federal law, which the courts must fashion from the policy of our national labor laws .... Federal interpretation of the federal law will govern, not state law .... But state law, if compatible with the purpose of § 301, may be resorted to in order to find the rule that will best effectuate the federal policy.”

Id., 353 U.S. at 456-457, 77 S.Ct. at 918, 1 L.Ed.2d at 980-981.

Uniformity in the formulation and application of labor laws is essential to the effective administration of collective bargaining agreements. Local 174, Int’l Brotherhood of Teamsters v. Lucas Flour Co., 1962, 369 U.S. 95, 103, 82 S. Ct. 571, 7 L.Ed.2d 593, 599. The uniformity so avidly sought clearly would not be well served by the interpretation of Texas contract law offered by the Union. Federal labor policy does not view collective bargaining agreements as ordinary contracts. The collective bargaining agreement is sui generis, providing the basis for individual contracts of employment; as such, it has always been a favorite of the law. J. I. Case Co. v. N.L.R.B., 1944, 321 U.S. 332, 64 S.Ct. 576, 88 L.Ed. 762. Because the collective bargaining agreement is the foundation for a broad network of relationships, the tools to destroy its tensile strength must indeed be sturdy and steady, not weak and reedy. We must not permit the peccadilloes or peculiarities of a particular state, honored and hallowed though they be by time, to undermine a national approach to collective bargaining contracts. Contractual parochialism would destroy that uniformity in construction of such contracts which federal labor policy has made a paramount desideratum.

As indicated above, federal labor law contemplates damage awards for strikes in violation of collective bargaining agreements. No exception to that rule has been established for situations involving a prior breach of the agreement by the employer. To the contrary, grievance procedures constitute an integral part of the collective bargaining contract, so that a dispute over one aspect of the agreement can be resolved without impairing other contractual rights and obligations. In Drake Bakeries, supra, the Supreme Court declared that “ [arbitration provisions, which themselves have not been repudiated, are meant to survive breaches of contract, in many contexts, even total breach.” 370 U.S. at 262, 82 S.Ct. at 1351, 8 L.Ed.2d at 480.

In Local 721, Packinghouse Workers v. Needham Packing Co., 1964, 376 U.S. 247, 84 S.Ct. 773, 11 L.Ed.2d 680, a case involving facts similar to those in the case before us, the Court reaffirmed this position. The company discharged an employee, and 190 union members responded by striking. The company opposed arbitration on the ground that the union had “repudiated and terminated the labor agreement.” Rejecting that argument, the Supreme Court held that the duty to arbitrate remained in force even though the union had violated its agreement, and that the company could prosecute and recover on its claim for damages resulting from the strike.

This Court has recently affirmed a district court decision containing a similar ruling. In Dow Chemical Co. v. International Union of Electrical Workers, M.D.Fla.1971, 82 LRRM 3169, 3181, aff’d 5th Cir., 480 F.2d 433, 1973, the district court noted that even if the terminations of employees that caused the strike were unlawful, they would not have legitimized the strike, because: grievances concerning the terminations could have been carried through the contractual grievance procedures within a reasonable time; the terminations did not constitute a flagrant unfair labor practice; and the terminations were not of such a nature as to threaten ouster of the union or destruction of the bargaining relationship. These same considerations apply to the case before us. Although situations may arise in which an employer’s breach of a collective bargaining agreement will justify a union’s breach of a no-strike clause, no such situation has been presented to us here. We therefore hold that the Union was not relieved of liability in damages because of the Company’s prior breach of the collective bargaining agreement.

II

The Union contends also that the District Court erred in awarding damages to the Company because the Union was engaged in a strike involving safety conditions. The principle invoked by the Union is a significant one in a developing area of the law. Section 502 of the Labor Management Relations Act, 29 U.S.C. § 143 (1970), provides in part:

. . nor shall the quitting of labor by an employee or employees in good faith because of abnormally dangerous conditions for work at the place of employment of such employee or employees be deemed a strike under this chapter.”

See Gateway Coal Co. v. United Mine Workers, 3d Cir. 1972, 466 F.2d 1157, cert, granted 410 U.S. 593, 93 S.Ct. 1418, 35 L.Ed.2d 686; Hanna Mining Co. v. United Steelworkers, 8th Cir. 1972, 464 F.2d 565; Missouri-K.-T. R.R. v. Brotherhood of R.R. Trainmen, 5th Cir. 1965, 342 F.2d 298; N.L.R.B. v. Knight Morley Corp., 6th Cir. 1958, 251 F.2d 753, cert denied 357 U.S. 927, 78 S.Ct. 1372, 2 L.Ed.2d 1370, reh. denied 358 U.S. 858, 79 S.Ct. 15, 3 L.Ed.2d 93.

We endorse the philosophy underlying Section 502 and the decisions protecting safety strikes — that the health and safety of working people take precedence over the easing of industrial strife. Nevertheless, we are unable to glean from the briefs or the record herein any fact or shred of evidence to indicate that the Union merits the statute’s protection. The Union cites no “abnormally dangerous conditions” and makes no claim that any employee was placed in unusual danger. Neither the Arbitrator nor the District Judge found unsafe working conditions to be the genesis of the employees’ exodus. The sole motivation for the strike appears to be the discharge of the Union’s shop steward. The Arbitrator found that the steward’s insistence that the Company make the premises safe was a reason for his dismissal. The firing of a safety protagonist, however, is not proof of unsafety. That alone, in the absence of any allegation of particular dangerous conditions, is insufficient to make this work stoppage a safety strike. See Hanna Mining Co. v. United Steelworkers, supra, 464 F.2d at 568 n. 2. On the basis of the evidence presented, we cannot say that the Arbitrator and the District Court erred in declining to clothe this garden variety strike with the protective garments of Section 502.

Ill

Finally, the Union charges that the District Court erred by excluding the testimony of the Union’s business representative, Robert L. Johnson. We do not agree.

Johnson was the only witness presented to testify at the District Court’s hearing on the Company’s damage claim. Upon objection by counsel for the Company, and upon ascertaining that Johnson had previously presented his testimony before the Arbitrator, the Court excluded Johnson’s testimony as irrelevant.

The Arbitrator, after hearing Johnson’s testimony, had made written findings as to the liability of the parties. The District Court properly adopted a presumption of ’unarbitrariness about the Arbitrator’s findings and chose not to rehear the evidence on which those findings were based. Pursuant to Fed. R.Civ.P. 10(c), the Union has filed a Statement in Lieu of Transcript, containing the evidence witness Johnson would have presented if his testimony had not been excluded. (App. 96.) Our examination of Johnson’s statement reveals no evidence that would have led the District Court to a different result. We conclude that, even if the trial judge should have resolved his doubts in favor of admissibility, United States v. Lykes Brothers Steamship Co., 5th Cir. 1970, 432 F.2d 1076, 1077, his failure to do so did not “affect the substantial rights of the parties,” and thus did not constitute reversible error. Fed.R.Civ.P. 61.

CONCLUSION

The decision of the District Court comports with both law and reason. National labor policy, as implemented by decisions of the federal courts, clearly mandates that the Union not be relieved of liability in damages by reason of the Company’s prior breach of the collective bargaining agreement. That policy is not so portable that it may be readily displaced by discordant principles of state contract law. Moreover, we decline to hoist the Union’s work stoppage to the protected status of a safety strike. Finally, we find the exclusion of the Union business representative’s testimony totally devoid of noxiousness, and the objection to same devoid of merit. Consequently, we uphold the decision of the District Court and affirm its award of recompense to the Company.

Affirmed.

      Rule 18, 5 Cir.; see Isbell Enterprises, Inc. v. Citizens Casualty Company of New York, 5 Cir. 1970, 431 F.2d 409, Part I.

      . The District Court had original jurisdiction under Section 301 of the Labor Management Relations Act, 29 U.S.C. § 185 (1970).

      . The strike continued on February 2 and 3, 1970, after dissolution of the state court’s restraining order.

      . “ARTICLE V
      “Grievance Procedure
      “It is agreed that all disputes, other than those pertaining to jurisdictional disputes, that may arise on any job covered by this Agreement shall be handled in the following manner without any person permitting or causing the grievance to cause a work stoppage or interfere in any way with the progress and prosecution of the work.

      . Indeed, that order was compelled by clear mandate of the Supreme Court in the Steelworkers trilogy. United Steelworkers v. American Mfg. Co., 1960, 363 U.S. 564, 80 S.Ct. 1343, 4 L.Ed.2d 1403; United Steelworkers v. Warrior & Gulf Nav. Co., 1960, 363 U.S. 574, 80 S.Ct. 1347, 4 L.Ed.2d 1409; United Steelworkers v. Enterprise Wheel & Car Corp., 1960, 363 U.S. 593, 80 S.Ct. 1358, 4 L.Ed.2d 1424.


source: Caselaw Access Project

author: EDWARDS, Circuit Judge. McCREE, Circuit Judge

license: Public Domain

text:
    Dolores WERNET and Helen Golden, Plaintiffs-Appellants, v. AMALGAMATED MEAT CUTTERS AND BUTCHERMEN, LOCAL 17, AFL-CIO, Defendant-Appellee.
    No. 72-2113.
    United States Court of Appeals, Sixth Circuit.
    Argued June 4, 1973.
    Decided Aug. 24, 1973.
    Lawrence H. Curtis, Amerman, Burt & Jones Co., Canton, Ohio, on brief, for plaintiffs-appellants.
    Jerry P. Hontas, Canton, Ohio, on brief, for defendant-appellee.
    Before WEICK, EDWARDS and Mc-CREE, Circuit Judges.
   EDWARDS, Circuit Judge.

Appellants Wernet and Golden appeal from the dismissal after trial of their complaint against their union. They had filed complaints under the Civil Rights Act, 42 U.S.C. § 2000e (1970), against Pioneer Food Company, their employer, and against the Amalgamated Meat Cutters Union.

On trial of this case plaintiffs settled their differences with Pioneer Food Company and dismissed the case as to the employer. The case continued against the union, with the evidence showing that Pioneer Food during the years 1967, 1968 and 1969 maintained two seniority lists, one for men and one for women, in order to comply with the female protective statutes of the State of Ohio then in effect, O.R.C. §§ 4107.-43, 4107.46 (1965). Both employees filed grievances with the union in 1968, and the second of these grievances filed by plaintiff Golden was ultimately arbitrated under the union-management contract, with the issue being resolved in favor of the company. The arbitrator relied upon the Ohio statute previously referred to.

The District Judge expressed the opinion that “the defendant union failed to adequately represent the plaintiffs, and that the allegation of the complaint that the defendant union failed to employ proper grievance procedures on behalf of the plaintiffs is well taken.”

However, the District Judge also specifically found that “there was a lack of bad faith and there was an absence of an intentional wrongful act on the part of the defendant union,” citing Pierson v. Ray, 386 U.S. 547, 87 S.Ct. 1213, 18 L.Ed.2d 288 (1967), and Ridinger v. General Motors Corp., 325 F.Supp. 1089 (S.D.Ohio 1971).

This court has recently, of course, had occasion to deal with the defense of employers based upon good faith adherence to state female protective laws not yet found to have been violative of the federal Constitution. See United Steelworkers v. United States Steel Corp., 479 F.2d 1255 (6th Cir. 1973); Manning v. International Union, 466 F.2d 812 (6th Cir. 1972). In Manning this Court said:

The defendant, General Motors, did not have the benefit of any judicial determination of the validity of the Ohio female protective laws until 1971, and the enforcing agency had not handed down any definitive administrative interpretation which would assist in resolving the conflict between any such state statutes and the provisions of Title VII until August 19, 1969. Under all the circumstances of this case we cannot conclude that the District Judge abused his discretion in denying back pay to these plaintiffs. Id. at 816.

In this case we reach this same result in relation to appellee union and for the same reason affirm the District Judge.

Here the only allegations which concern the union are the following:

(5) Defendant Union willfully engaged in unlawful employment practices in violation of Title VII of the Civil Rights Act of 1964, by discriminating against them because of their sex by failing to represent them in grievance procedures.
* * * * * *
(8) Defendant Union, upon being duly informed of plaintiffs’ grievances as aforementioned, failed and has continued to fail to employ proper grievance procedures on behalf of plaintiffs to remedy said discrimination, and this failure was and is discrimination on behalf of its male members.

The discrimination alleged against the union is entirely derivative in this case. It arises out of the company’s alleged discriminatory maintenance of separate seniority lists for men and women.

We read the findings of the District Judge (arguably somewhat contradictory) as indicating that the union employed something less than all-out efforts on behalf of these two female members but that its lack of vigor was mitigated by reliance in good faith upon the female protection laws of Ohio which mandated the employer’s separate seniority lists and which at that time had not been declared unconstitutional.

If good faith reliance upon the state female protection statute (until found unconstitutional) is a defense which a District Judge may consider in denying money damages as to the employer who created the separate seniority lists, it must likewise serve as a defense for the union from such damages for waging something less than an all-out battle on behalf of its female members in the face of an apparently valid state law.

We agree with the dissent that, as to allegations of discrimination by a union directly affecting employment (i. e., in hiring halls or apprentice programs, etc.), plaintiffs are no more required to prove “bad faith” than they are in relation to similar complaints against employers. Under Manning, supra, however, good faith reliance upon a presumptively valid state law may represent an exception to the general rule.

We note that appellants’ brief appears to argue their case as if it were a breach of contract action under § 301 of the Labor-Management Relations Act, 29 U.S.C. § 185 (1970). No reference to § 301 was made in plaintiffs’ complaint, however. Further, if this action be viewed as a § 301 complaint, it is governed by the standards of Vaca v. Sipes, 386 U.S. 171, 87 S.Ct. 903, 17 L.Ed.2d 842 (1967), and Motor Coach Employees v. Lockridge, 403 U.S. 274, 91 S.Ct. 1909, 29 L.Ed.2d 473 (1971). The standard of these two cases requires the plaintiff to prove “arbitrary or badfaith conduct on the part of the Union.” Vaca v. Sipes, supra at 193 of 386 U.S., at 918 of 87 S.Ct.; Motor Coach Employees v. Lockridge, supra at 299 of 403 U.S., 91 S.Ct. at 1913. The District Court Judge herein rejected such a finding.

The judgment of the District Court is affirmed.

McCREE, Circuit Judge

(dissenting).

I respectfully dissent. The majority opinion affirms the denial of relief because the district court found that appellants did not prove bad faith on the part of the union. Because a defendant’s bad faith is not a necessary element of a claim under the Civil Rights Act, and because I regard the district court’s findings as inconsistent and insufficient, I dissent.

Appellants, who are women, asserted in their complaint that the union failed to employ proper grievance procedures on their behalf to redress their layoffs by their employer when men with less seniority were hired to perform duties identical or similar to theirs. The complaint charged that the union discriminated against them “because of their sex by failing to represent them in grievance procedures.” Injunctive and monetary relief, in the form of backpay, were sought.

The district court, at the conclusion of the trial at which the defendant union rested without presenting any evidence, resolved in plaintiffs’ favor what he concluded to be “the sole issue” for him to determine. Specifically, the court found “that the defendant Union failed to adequately represent the plaintiffs, and that the allegation of the complaint that the defendant Union failed to employ proper grievance procedures on behalf of the plaintiffs is well taken.” Nevertheless, although he gave them costs, the district court refused to award damages to plaintiffs for three reasons: the union was entitled to rely on the state statutes mandating discriminatory treatment of females; the union was under no duty to challenge those statutes; and there was no showing that the union acted in bad faith.

I believe that none of these reasons provides an adequate ground to justify denying a remedy. The first is insufficient because the union, unlike the employer in this case and in Manning v. International Union, 466 F.2d 812 (6th Cir. 1972), was not the party regulated by the female protective statutes, and thus was not whip-sawed between the requirements of state and federal laws. The second reason is contradicted by the court’s own finding that the union did breach a duty owed to plaintiffs to represent them adequately, and is irrelevant in any case because plaintiffs did not request the union to challenge the state statutes. The third reason — on which the majority in this case places its reliance — is a misapprehension of the test to be applied in resolving damage claims under Title VII.

The relevant statute;, 42 U.S.C. § 2000e — 5(g), provides in pertinent part:

(g) If the court finds that the respondent has intentionally engaged in or is intentionally engaging in an unlawful employment practice charged in the complaint, the court may enjoin the respondent from engaging in such unlawful employment practice, and order such affirmative action as may be appropriate, which may include reinstatement or hiring of employees, with or without back pay (payable by the employer, employment agency, or labor organization, as the case may be, responsible for the -unlawful employment practice). Interim earnings or amounts earnable with reasonable diligence by the person or persons discriminated against shall operate to reduce the back pay otherwise allowable.

This provision does not, in my view, require that a plaintiff show bad faith on the part of the defendant as a precondition to recovering backpay. The requirement that the defendant should have “intentionally” discriminated means no more than “that the defendant meant to do what he did, that is, his employment practice was not accidental.” Papermakers Local 189 v. United States, 416 F.2d 980, 996 (5th Cir. 1969), cert, denied, 397 U.S. 919, 90 S.Ct. 926, 25 L.Ed.2d '100 (1970). It is clear that a plaintiff does not have to show bad faith in order to establish the commission of an unlawful employment practice under the Act; “ . . . Congress directed the thrust of the Act to the consequences of employment practices, not simply the motivation.” Griggs v. Duke Power Company, 401 U.S. 424, 432, 91 S.Ct. 849, 854, 28 L.Ed.2d 158 (1971). Accordingly, a plaintiff need show only a prohibited discriminatory consequence of an act intentionally undertaken; good faith on the part of the defendant, which must be, and in this case was not, pleaded by the defendant as an affirmative defense, Fed. R.Civ.P. 8(c), cannot insulate a defendant from a finding of discrimination and an order under § 2000e — 5(g) enjoining the unlawful practice. Since there is no requirement in the Act that a plaintiff show bad faith in order to establish his claim, we should not require it as a precondition to the awarding of damages— limited to backpay — intended to make the plaintiff whole.

We recognized in Manning, supra, that this provision of the Civil Rights Act gives district courts a degree of discretion in deciding whether to award backpay. See 466 F.2d at 815-816. The statutory standard empowers the courts to take “such affirmative action as may be appropriate.” The district court has not specified why an award of backpay to these appellants would not be appropriate to remedy the wrong they admittedly have suffered at the hands of the union, and none is advanced by appellee. I recognize the fact that the district court made the determination that the union did not act in bad faith, but this is an immaterial consideration as I have shown above. Accordingly, at a minimum we should remand for additional findings.

Moreover, the union introduced no evidence at trial, and it has pointed to no evidence in plaintiffs’ case to support its contention that it acted in good faith or to support the court’s finding that it did not act in bad faith. Assuming that this finding was permissible despite noncomplianee with Fed.R.Civ.P. 8(c), there appears to be no evidence to support it.

If we should assume, as the majority observes in the last paragraph of its opinion, that the standard of 29 U.S.C. § 185 governs this case, I still believe that we should at least remand the case for further consideration. In Vaca v. Sipes, 386 U.S. 171, 190, 87 S.Ct. 903, 916, 17 L.Ed.2d 842 (1967), the Court stated:

A breach of the statutory duty of fair representation occurs only when a union’s conduct toward a member of the collective bargaining unit is arbitrary, discriminatory, or in bad faith. (Emphasis added.)

Bad faith is thus only an alternate predicate for a claim under § 301; a plaintiff can recover if he can show that the union acted arbitrarily or discriminato-rily but not necessarily in bad faith. There is no indication that the district court considered these other elements in its resolution of plaintiffs’ claim. Further, if bad faith is an essential part of a plaintiff’s claim under § 301, then the findings of the district court- are inconsistent, because the court found a breach of duty on the part of the union but then found that the union had not been guilty of bad faith.

Accordingly, I would, at a minimum, reverse and remand for additional findings. In the alternative, I would reverse the judgment of the district court and direct the entry of an award of backpay to plaintiffs in an amount equal to their wage loss less the amounts received from the employer in settlement of the claim against it and any other sums received in mitigation.

      . Appellants in this case failed to order a transcript or present any appendix. In the absence of an appellate record, every reasonable assumption should be indulged in favor of the court’s decree. See Fraser v. Doing, 130 F.2d 617 (D.C.Cir. 1942).


author: LIVELY, Circuit Judge.

text:
    The DUNLOP COMPANY, LIMITED, Plaintiff-Appellant and Cross-Appellee, v. KELSEY-HAYES COMPANY, Defendant-Appellee and Cross-Appellant.
    Nos. 72-1892, 72-1893.
    United States Court of Appeals, Sixth Circuit.
    Argued April 9, 1973.
    Decided Aug. 24, 1973.

      John A. Young, Fort Wayne, Ind., and Ellsworth H. Mosher, Arlington, Va., for plaintiff-appellant-cross-appellee; Joseph J. Marshal], Helm, Marshall, Schumann & Vanker, Detroit, Mich., on brief for The Dunlop Co., Limited; Stevens, Davis, Miller & Mosher, Arlington, Va., of counsel.
    Don K. Harness, Detroit, Mich., for defendant-appellee-cross-appellant ; Hugh G. Harness, Harness, Dickey & Pierce, Detroit, Mich., on brief for Kelsey-Hayes Co.
    Before PHILLIPS, Chief Judge, LIVELY, Circuit Judge, and O’SULLIVAN, Senior Circuit Judge.
   LIVELY, Circuit Judge.

The subject matter of the two patents involved in this appeal is disc brakes. As originally filed, the complaint by Dunlop alleged that Kelsey-Hayes was infringing four Dunlop patents. Patent number 2,790,516 (hereafter ’516) was issued to Dunlop by the United States Patent Office on April 30, 1957, application having been filed on January 22, 1951. In the application for this patent the invention was described as relating to disc brakes and disc brake assemblies for motor vehicles. It was stated that the object of the invention was to provide a disc-type brake for motor vehicles and to provide a wheel and disc brake assembly for motor vehicles. Patent number 2,921,650 (hereafter ’650) was issued to Dunlop by the United States Patent Office on January 19, 1960, application having been made on September 14, 1954. This application recited that the invention related to disc brakes, and more particularly to disc brakes for heavy vehicles, rolling stock, industrial machinery and the like.

In its answer Kelsey-Hayes asserted that the patents were invalid and denied infringement. It also pled a number of affirmative defenses under 35 U.S.C. §§ 102 and 103 and further charged Dunlop with inequitable conduct and violation of the antitrust laws of the United States. In addition to asking that the patents in suit be declared invalid and not infringed, Kelsey-Hayes sought treble damages against Dunlop and its attorneys’ fees in the action.

Issues of validity and infringement with respect to all four patents were decided by the District Court, but the rulings with respect to the ’516 and '650 patents only have been appealed. The District Court held that '516 is invalid and has not been infringed, and that ’650 is valid, but that it has not been infringed by Kelsey-Hayes. Although Dunlop has been a pioneer in the development of automotive disc brakes, neither of the patents in controversy relates to the primary invention of the disc brake. What is involved are certain features of so-called “fixed caliper disc brakes.” Prior to World War II drum or shoe brakes were used almost universally on automobiles both in Europe and the United States. During the war disc brakes were developed for military aircraft and both Dunlop and Goodyear Aircraft Corporation, a subsidiary of Goodyear Tire and Rubber Company, were extensively involved in the production of disc brakes for this purpose. The wartime success with disc brakes on aircraft produced an interest in the adaptation of such brakes to automobiles. Dunlop was the leader in England in the development and production of disc brakes which were used on English and European sports cars. The Jaguar was equipped with disc brakes and Dunlop granted licenses to several European automobile manufacturers who equipped their products with Dunlop disc brakes. An exclusive license for automotive use in the United States was granted by Dunlop to Bendix Corporation and this applied to then existing as well as subsequently issued patents.

There was serious resistance to the use of disc brakes in the American automobile industry, based primarily on the fact that disc brakes then in production were designed for the generally lighter European cars and it was felt that they would not perform effectively on the heavier and more powerful cars produced in this country. In January 1961 at a convention of engineers in Detroit an official of Dunlop made a speech in which he discussed automotive disc brakes. Kelsey-Hayes was a leading manufacturer of automotive drum brakes in the United States, and following the Detroit speech, its officers made contact with officers of Dunlop concerning the possibility of further development of the disc brake industry in this country. There were a number of visits back and forth between the personnel of Kelsey-Hayes and Dunlop, and Dunlop released a large quantity of technical information about automotive disc brakes to Kelsey-Hayes. Because Bendix had an exclusive license in the United States from Dunlop, the only way that Kelsey-Hayes could enter the business using Dunlop patents was to obtain a subli-cense. On or about July 1, 1963 Bendix did sublicense Kelsey-Hayes under the patents in litigation. Kelsey-Hayes canceled the sublicensing agreement on December 31, 1965, and Dunlop claims that it has been infringing continuously since that date.

The disc brakes and assemblies involved in the disputed patents may be described generally as consisting of a disc or rotor which is attached to the axle and turns with the wheel, and a housing which is fixed to a stationary portion of the vehicle and is of an inverted U-shaped design and positioned so that it envelops only a portion of the disc. The U-shaped housing consists of a bridge-like part which is set across the top of the disc and perpendicular to its plane and arms extending downward from either side of the bridge, with the disc rotating freely within this structure. Each arm has one or more chambers or cylinders in which pistons are fitted. These pistons are aligned transversely to the plane of the disc. Friction elements or asbestos brake pads, either with or without backing plates, are placed within the housing between the disc and the pistons. Hydraulic pressure is maintained at a level when the brakes are not activated which positions the friction pads within a few thousandths of an inch from the disc. When the brake pedal is depressed additional hydraulic fluid is forced into the cylinders and this moves the pistons toward the disc. The pistons on each side of the disc then push the friction pads against the disc. This pinching or squeezing of the pads against both sides of the disc simultaneously forces the disc to stop turning, which results in a stopping of the vehicle since the disc is attached to the same mechanism as the wheel. When the friction members engage the disc, hydraulic pressure causes them to be slightly compressed against the disc. When braking is completed and the pressurization relaxed, the friction members return to their original positions.

In any braking action the contact between stationary and rotating components produces heat. In the instance of drum brakes, this heat is trapped within the drum, and constant or “hard” braking results in a loss of braking power known as “brake fade.” One of the chief advantages of disc brakes is that they permit rapid and relatively unhampered dissipation of heat, thereby reducing the incidence of brake fade. One witness in this case testified that a disc brake is a mechanism which converts the kinetic energy of a moving body into heat and then dissipates that heat. The particular disc brake assemblies involved in this appeal are referred to as “fixed caliper” brake assemblies. The term “caliper” refers to the housing of the brake. Both in ’516 and ’650 and in the accused Kelsey-Hayes brake the caliper or housing is stationary and the movement, which occurs when braking is initiated, is confined to the pistons, the friction elements, and their backings. There are, therefore, a number of similarities between the patented Dunlop brakes and the accused Kelsey-Hayes device in terms of design and operation.

The ’516 Patent

The District Court held the ’516 patent invalid, and we will consider this issue first. Kelsey-Hayes, in its answer, asserted that the patents in suit are invalid under the provisions of 35 U.S.C. §§ 102(a), 102(b), and 102(g), which read as follows:

§ 102. Conditions for patentability; novelty and loss of right to patent
A person shall be entitled to a patent unless — •
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
* X X X * x
(g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. July 19,1952, c. 950, § 1, 66 Stat. 797.

The holding of invalidity with respect to the ’516 patent is based on the “Goodyear evidence.” The testimony of witnesses produced by Kelsey-Hayes and accepted by the District Court was that just a few days after it had signed the sublicensing agreement with Bendix, Kelsey-Hayes learned from Ford Motor Company that Goodyear had engaged in considerable activity with respect to fixed caliper disc brakes for vehicles other than aircraft in the period immediately after World War II. The evidence revealed that in the year 1943 Jesse Hawley, an inventor with several patents to his credit, constructed a fixed caliper disc brake which he installed on a 1941 Ford. At this time he was involved in design work for Goodyear Aircraft and he licensed Goodyear under all of his brake designs, other than those for aircraft, and sold the Ford automobile equipped with his disc brakes to Goodyear. There is a marked similarity both in design and function between the Hawley disc brake, the Dunlop ’516 brake and the accused Kelsey-Hayes brake. In addition to the brake mounted on the 1941 Ford, Goodyear constructed at least three other disc brakes from the same basic design. One was installed on a radar trailer manufactured by Brooks and Perkins for Bell Telephone Laboratories; one was manufactured as a helicopter rotor brake and sold to Sikorsky Aircraft and one was installed by United Aircraft as a wind tunnel brake.

A number of witnesses testified concerning the Goodyear activity in non-aircraft disc brakes. These included employees of Goodyear during the period when the brakes were constructed and sold as well as employees of the purchasing companies. Detailed drawings of the original Hawley brake and the subsequently produced brakes embodying the same basic principles and design were introduced along with several photographs. The secretary of Goodyear testified that in the late 1940’s as assistant secretary he was involved in Goodyear’s purchase of the Hawley 1941 Ford equipped with fixed caliper disc brakes. An engineering specialist with Goodyear testified that he was familiar with the first automotive disc brake built by Goodyear on the Hawley design. He testified that standard auto brake tests were conducted on the Ford equipped with these brakes and that it was taken to Sideling Hill, Pennsylvania and left for a week of tests. He further testified that the ear was taken by Goodyear to Detroit in 1945 and left with Ford Motor Company for two or three days of testing. This witness stated that he drove the Ford equipped with the Hawley brakes many times, using it for routine transportation and that the brakes were quite satisfactory and he did not experience the “fade” of drum brakes. He testified that Goodyear kept the car for about three years before selling it and that it was used extensively and publicly in that time!

The former manager of the Wheel and Brake Division of Goodyear testified that he recalled the Hawley disc brake which was mounted on the 1941 Ford. He stated that this brake was demonstrated to at least four automobile manufacturers, none of whom was persuaded to switch to disc brakes. He testified that he thought the brake performed better than existing drum brakes, but that at the particular time (1946) there was such great demand for automobiles produced in Detroit that there was no inclination among the major manufacturers to make a change in basic equipment such as this. This witness described the Hawley brake in great detail and showed a familiarity with its design and operation. He introduced as an exhibit a report dated July 7, 1949 which was a résumé of the testing of Goodyear’s single disc brakes on automobiles. This report described not only the original Hawley brake but several variations which were designed and constructed by Goodyear and then tested on a fleet of cars at the Goodyear plant.

Another witness produced by Kelsey-Hayes was a former Goodyear engineer in charge of the development and test work on automotive disc brakes. In addition to identifying the Hawley disc brake and testifying that he drove the automobile equipped with this brake many times with satisfactory results, he also described improvements to the brake which were developed by Goodyear. He referred particularly to another fixed housing brake which was shown by pictures in the résumé previously referred to and which was mounted on a 1946 Ford. He testified that this was basically the same as the Hawley brake, with opposed pistons which moved laterally and fixed cylinders which were bolted to the housing or calipers. He stated that this brake unit was subjected to comprehensive tests on the 1940 Ford and that there were no difficulties in normal operations. On excessively rough roads, problems were experienced with this brake, but it was his opinion that this could have been corrected by rearranging the hydraulic system. The brake had an automatic adjusting feature which was not present in the original Hawley model. The witness also identified a set of brakes that was made for Brooks and Perkins Company of Detroit. These brakes were mounted on a radar trailer manufactured for Bell Telephone Laboratories. He stated that aside from the automatic adjuster it was a similar brake to the original Hawley brake. It had two pistons on each side of the disc compared to single pistons which were used on automobile brakes. He testified that the design work for the Brooks and Perkins brake was done in 1948 and that the brakes were produced in 1949. The trailer for which these brakes were manufactured was designed to carry electronic equipment used in the Nike missile program and was part of a government contract. The witness saw the brakes attached to the trailer, but did not know exactly how many sets of these brakes were actually sold. He said that he was the designer of the brake and that it was never patented.

Although, there were indications that the Brooks and Perkins trailer was classified “restricted” by the military, the witness could not recall any particular security restrictions which were imposed while the brakes were being produced for the trailer. It was the opinion of at least one of the witnesses that only the electronic equipment was restricted and that this classification did not extend to such equipment as wheels and brakes on the trailer. In this connection, a question was raised about an outside shield which was installed around this brake and it was testified that the purpose of this shield was to protect the brake when the trailer was floated in water. One of the specifications for the trailer was that it was required to float for a certain period of time. A trial witness observed a test of the trailer in the Detroit River and stated that the shield performed well and that no water leaked into the brake assembly. Other former Goodyear employees identified detailed drawings of the Hawley-type brakes made for Sikorsky Aircraft for its helicopter rotors and one built for United Aircraft as a wind tunnel brake. Sales records were produced which authenticated the sales of these brakes by Goodyear.

Dunlop maintains that the Goodyear activity does not qualify, for a number of reasons, as prior art under 35 U.S.C. § 102. Instead, Dunlop would classify the Goodyear activity as “paper” prior art, which was never actually reduced to practice by successful testing. It hinges its entire case with respect to the validity of ’516 on the proposition that the District Court erred as a matter of law in holding that the Goodyear uses invalidated this patent without a finding of fact that there had been an actual reduction to practice by successful testing. In National Latex Products Co. v. Sun Rubber Co., 274 F.2d 224 (6th Cir.), cert, denied 362 U.S. 989, 80 S.Ct. 1078, 4 L.Ed.2d 1022 (1960), this Court held that one claiming that a patent is void because it has been anticipated by prior art in the field carries a heavy burden and that proof of prior knowledge and use must be “clear and satisfactory.” Id., 274 F.2d at 231. The opinion emphasizes that prior art should be established by more than oral testimony and that reduction to practice is an essential if prior art is to be held to anticipate a patent. However, the case does not establish a requirement of successful testing as contended by Dun-lop. The fact that a device has imperfections and encounters commercial problems does not disqualify it as anticipating prior art. While pointing out that a machine might qualify as prior art even though inoperative, the Court of Appeals for the Seventh Circuit stated: “So long as it embodies the same construction and principle as the alleged invention, a structure is effective as prior art even though the construction of the machine is crude, or the machine is imperfect in operation.” Sutter Products v. Pettibone Mulliken Corp., 428 F.2d 639, 647 (7th Cir. 1970).

The requirement of 35 U.S.C. § 102(b) is that there has been a public use or sale of the invention in this country more than one year prior to the date of the patent application, and the alleged infringer must show this fact by clear and convincing evidence. Minnesota Mining & Mfg. Co. v. Kent Industries, Inc., 409 F.2d 99 (6th Cir. 1969). A single public use or a mere placing of the invention on sale meets the requirements of the statute. In F. M. C. Corporation v. F. E. Myers & Bro. Co., 384 F.2d 4 (6th Cir. 1967), cert, denied 390 U.S. 988, 88 S.Ct. 1183, 19 L.Ed.2d 1291 (1968), “public use” was defined as “any nonsecret use of a completed and operative invention in its natural and intended way.” 384 F.2d at 9. A prior use which is substantially for experimental purposes does not invalidate a later patent. Minnesota Mining & Mfg. Co. v. Kent Industries, Inc., supra,. A prior device need not be patented in order to anticipate, and if it has been reduced to practice, even though it is abandoned later, it may negative novelty in a subsequent patent. Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406 (6th Cir.), cert, denied 379 U.S. 888, 85 S.Ct. 160, 13 L.Ed.2d 93 (1964). The statute speaks in terms of sales and use of the prior device and no testing requirement, as such, is listed. There was testimony that the original Hawley brake on the 1941 Ford was tested and similarly that some testing took place on the Hawley-type brake installed on the 1946 Ford by Goodyear and on the brakes built for Brooks and Perkins, Sikorsky and United Aircraft. A reading of Dunlop’s brief reveals that the type of testing it maintains should be required is something comparable to the highway safety standards promulgated by the Department of Transportation. Such testing might well be required before any automobile part were mass produced and affixed to vehicles offered for sale to the public generally, but the requirement that prior art be reduced to practice does not entail this degree of perfection. The total effect of Dunlop’s arguments with respect to the Goodyear evidence is that Goodyear engaged only in experimental work with fixed caliper automotive disc brakes and that there was no successful reduction to practice of this concept by Goodyear.

Every patent issued by the United States Patent Office carries with it a presumption of validity. 35 U.S.C. § 282. However, where applicable prior art has not been considered by the Patent Office this presumption is greatly weakened. Aluminum Company of America v. Sperry Products, Inc., 285 F.2d 911 (6th Cir. 1960), cert, denied, 368 U.S. 890, 82 S'.Ct. 139, 7 L.Ed.2d 87 (1961). In F. M. C. Corporation v. F. E. Myers & Bro. Co., supra, we held that when an alleged infringer makes a prima facie demonstration of prior use, the inventor then has the burden of proving that this use “was not of a functionally operative device, or was substantially used for experimentation or testing purpose.” 384 F.2d at 10. The evidence of the Goodyear activity in fixed caliper disc brakes was sufficient to make a pri-ma facie ease of anticipation by prior use. The evidence of Dunlop, to the contrary, fell short of that required to rebut this showing. The novelty required by 35 U.S.C. § 102(a) is lacking where there has been anticipation by an earlier device, whether patented or not, where all the elements of the patent, doing substantially the same work in the same way are found in a single prior art structure. A. J. Industries, Inc. v. Dayton Steel Foundry Co., 394 F.2d 357 (6th Cir. 1968). In his findings of fact with respect to the validity of ’516 patent, Judge Pratt held that each of the four Hawley-type disc brakes manufactured by Goodyear was substantially identical to the claims of the ’516 brake of Dunlop; that each of the brakes was sold and that each was successfully operated for a period of time. He also found that the use of the Goodyear brakes was public and that the brakes were not merely experimental but should more accurately be classified as “custom built.” The Court also made a specific finding that the evidence of Goodyear disc brake activity was not considered by the Patent Office prior to the issuance of the ’516 patent.

There was introduced into evidence a letter written on May 13, 1964 from the general manager of Dunlop’s brake division to an attorney for Kelsey-Hayes. This was after Kelsey-Hayes had discovered the existence of the previous Goodyear activity and had determined to cancel its sublicense from Bendix and proceed with the production of fixed caliper disc brakes without royalty payments to Bendix or Dunlop. This letter indicated considerable doubt by> Dunlop concerning the validity of the ’516 patent but disclosed an intention to bring infringement actions for commercial advantage. The relevant portion of the letter is as follows:

“The reports from our attorneys are in fact very much as we expected them to be. Considerable doubt is expressed as to the validity of No. 2,-790,516 in view of the Goodyear disclosures. However, it also seems the case that most of the evidence on which an opponent might have to rely has been destroyed or is no longer available and whilst we think that we would be reluctant to litigate this patent we would not like you to assume that in no circumstances would we fail to do so. On the contrary it could well be of advantage to us, commercially, to start an action for infringement.”

The findings of fact of the District Court with respect to the validity of the ’516 patent are supported by competent evidence and are not clearly erroneous. Having found that the Goodyear devices constitute prior art and were known or used by others in this country, that the uses were public and not secret or purely experimental, the Court properly concluded that the claims of the ’516 patent had been anticipated and that it was not a patentable invention under 35 U.S.C. § 102(a), (b) or (g).' Our holding that the ’516 patent is invalid dispenses with the need for consideration of the infringement issue. Felburn v. New York Central Railroad Co., 350 F.2d 416 (6th Cir. 1965), cert, denied, 383 U.S. 935, 86 S.Ct. 1063, 15 L.Ed.2d 852 (1966); National Transformer Corp. v. France Mfg. Co., 215 F.2d 343 (6th Cir. 1954).

The ’650 Patent

As has been earlier pointed out, the ’650 patent is also a fixed caliper, opposing piston disc brake. However, it was designed specifically for railroad cars and heavy industrial equipment. Claim 13 of the patent application deals with a feature for the removal of the friction pads. Since the entire controversy concerning the validity of the ’650 patent revolves around Claim 13 it is set forth verbatim. Claim 13 of the ’650 patent reads as follows:

“A disc brake comprising a rotatable disc; a pair of friction elements, one on each side of said disc and covering only a portion of the braking surfaces of said disc, each of said elements having end portions transverse to the direction of movement of the disc and providing bearing surfaces on which said elements are slidably supported; a stationary torque-resisting member having at least three components holding said friction elements from movement in a plane parallel to said disc, and at least one of said components being displaceable to permit removal of said friction elements in a plane parallel to said disc and a pair of said components being held in axially spaced positions on each side of and closely spaced from said disc and having surfaces transverse to the direction of rotation of said disc and placed complementarily to the transverse end portions of said friction elements to guide said elements at their opposite ends in movement to and from said disc and to restrain said elements from circumferential movement parallel with said disc; and means to move said friction elements toward said disc, each of said friction elements being between said means and said disc.”

Kelsey-Hayes bases its attack on the ’650 patent in part on an assertion that the invention was not patentable because of obviousness under 35 U.S.C. § 103 and the claim that the specification of the patent does not comply with the requirements of 35 U.S.C. § 112. Section 103 provides as follows:

§ 103. Conditions for patentability; non-obvious subject matter
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was'made. July 19, 1952, c. 950, § 1, 66 Stat. 798.

The ’650 brake provides a means for removing friction elements and replacing them. This is important because these friction pads wear out more quickly than the other components of the brake, and a quick and inexpensive method of replacing worn pads is a desirable feature of any disc brake. While this need was obvious, the method by which it was met in the ’650 patent was not obvious within the meaning of § 103, and the District Court correctly held that it did not lack patentability for obviousness.

The more serious attack by Kelsey-Hayes on the ’650 patent concerns the language of Claim 13 and the late filing of that Claim. Claim 13 was not added to Dunlop’s application for the ’650 patent until more than five years after the original application. Kelsey-Hayes asserts that the language of Claim 13 is purposely vague and indefinite in an attempt to cover brakes of other manufacturers already on the market. It particularly attacks the language of Claim 13 which refers to a “. . . stationary torque-resisting member having at least three components holding said friction elements from movement in a plane parallel to said disc, and at least one of said components being displaceable to permit removal of said friction elements in a plane parallel to said disc and a pair of said components being held in axially spaced positions on each side of and closely spaced from said disc. . . . ” (emphasis added). It is claimed that the evidence at the trial showed that no pair of components is held in axially spaced positions on opposite sides of the disc and that the use of the word “components” was contrived to be broadly enough defined to cover dissimilar elements of other devices.

There was a great deal of discussion by the witnessses and attorneys of the meaning of the word “components” and whether it is synonymous with “elements.” Kelsey-Hayes makes much of the fact that the expert witness who testified for Dunlop designated four components whereas an answer to interrogatories and the file history of the patent identified three components. In upholding the validity of the ’650 patent, the District Court decided this battle of semantics by finding that “the essence of the invention is the provision for a dis-placeable member which is a working portion of the caliper and is integral to the torque-taking function, but allows the removal of an end piece which does not disturb the power sides of the unit. . . . ” The Court reached this conclusion by examining the language of the Claim itself. The Claim describes a stationary torque-resisting member having at least three components, at least one of which is displaceable to permit removal of the friction elements in a plane parallel to the disc and a pair of “said components” being held in axially spaced positions on each side of and closely spaced from the disc. The displaceable portion of the brake assembly is a component of the fixed housing. A comparison of this language with the specification and the preferred form leads to the conclusion that the only members which could provide the surfaces described in Claim 13 and perform the functions called for therein would be the limb portions of the two ends of the caliper, one of which is the displaceable end. This restrictive reading of the scope of Claim 13 also led the Court to the conclusion that the original disclosure of the application would permit the addition of Claim 13 as against the contention of Kelsey-Hayes that the patent is invalid under the “late claiming” doctrine. In Muncie Gear Works, Inc. v. Outboard Marine & Manufacturing Co., 315 U.S. 759, 62 S. Ct. 865, 86 L.Ed. 1171 (1942), the Supreme Court held that a late claim filed more than one year after public use of an invention does not invalidate the original application if it only clarifies matter sufficiently disclosed in the original application. As interpreted by the District Court Claim 13 related to matters fully disclosed in the original application. Coats Loaders & Stackers, Inc. v. Henderson, 233 F.2d 915, 924 (6th Cir. 1956).

The restrictive reading which the Court gave to Claim 13 compelled the further finding that the accused device of Kelsey-Hayes does not infringe ’650. It is difficult to compare the two brakes since ’650 was designed for railroad rolling stock and other heavy industrial uses and the accused brake of Kelsey-Hayes is a disc brake assembly for automobiles. Removal of the friction elements from the Kelsey-Hayes brake is accomplished in quite a different manner from that of the ’650 brake. Rather than having a portion of one arm of the fixed caliper made displaceable for purposes of removing friction pads circumferentially, the Kelsey-Hayes brake is equipped with spring clips attached to the housing, and unscrewing these spring clips permits the friction pads to be withdrawn radially. Although Dunlop’s expert witness attempted to find in the Kelsey-Hayes brake elements which correspond with each of the “components” set forth in Claim 13, certain important differences between the two devices could not be overlooked. A patent is infringed when a comparison between it and an accused device reveals that every element of the claim alleged to be infringed is found in the accused device and that both perform “substantially the same function in substantially the same way to obtain the same results. F. M. C. Corporation v. F. E. Myers & Bro. Co., supra, 384 F.2d at 14.

The District Court made the following four findings of fact with respect to infringement of the ’650 patent, all of which are supported by competent evidence:

1. The accused brake method includes the displacement of two spring clips on top of the housing but not integral to the housing, which spring clips serve a torque-taking function in a radially outward direction, a minor, if not minimal, torque action created by the rotation of the disc.
2. The accused brake uses the ends of the caliper as guiding and torque-taking surfaces similar generally to the use of the ends of the ’650 caliper.
3. The friction members of the accused brake have backing plates which are elongated and which have, on the top ends, ears which fit into and ride on ledges formed into the ends or bridge pieces of the caliper. The ears are held down by the spring clips which are attached to the caliper ends by screws.
4. The accused brake is entirely open on the top and the friction pads may be removed by unscrewing the spring clips from the caliper. The pads are thus removed radially and outwardly in a plane parallel to the disc.

In discussing the “distinctive contrasts” between the ’650 brake and the accused Kelsey-Hayes device, the District Judge pinpointed the difference in the identity and function of the displaceable members of the two brakes in the following language: “Most importantly, in the ’650 patent the removal requires the displacement of an integral end of the caliper, the predominant torque-taking device, whereas in the accused brake, removal requires the displacement of two spring clips which serve little torque-taking function. The clips are attached to, but not integral to the top of the caliper.” We agree that this is a real distinction between the two brakes. Certainly the principal of a disc brake assembly having a displaceable member to provide for the removal of worn friction pads is not in itself patentable. Having necessarily confined itself to a particular application of this principle Dunlop cannot successfully claim infringement against a brake which achieves this result in a different manner.

We are not unaware of the fact that during the period of time that Kelsey-Hayes was a sublicensee of Bendix, the licensee of Dunlop, there was an exchange of information between Dunlop and Kelsey-Hayes relating to fixed caliper disc brakes for automobiles. Nevertheless, upon learning of the Goodyear activity, Kelsey-Hayes expressed its dissatisfaction with the sublicensing agreement a few days after it was signed. A period of time passed in which negotiations were carried on between Dunlop and Kelsey-Hayes looking toward a possible settlement of the dispute, but they were not suceesful. Upon being advised by Dunlop during this period of time that it was sending certain information to Kelsey-Hayes which it considered confidential, Kelsey-Hayes immediately directed Dunlop not to send the material. The record indicates that both parties considered it to be advantageous to their interests to maintain close contact with each other during the period before the final break which led to this law suit.

The District Court correctly held that the ’650 patent is valid and that Kelsey-Hayes has not been guilty of infringement with respect to it.

The Kelsey-Hayes Cross-Appeal

Kelsey-Hayes sought treble damages for alleged violation of the antitrust laws of the United States in certain actions of Dunlop. It is alleged that various foreign licenses of Dunlop which forbid exportation of the Dunlop brakes from the foreign manufacturers to the United States constitute an illegal division of world markets. The case cited by Kelsey-Hayes, United States v. Topeo Associates, 405 U.S. 596, 92 S.Ct. 1126, 31 L.Ed.2d 515 (1972), is not in point. That case involved a horizontal agreement dividing markets within the United States. Dunlop’s agreements with its licensees in Japan, Italy, Germany and Australia cannot be characterized as true horizontal agreements dividing markets. They are merely territorial licenses granted by a patentee such as are permitted by 35 U.S.C. § 261. If one who received a patent from the United States may so restrict his licenses without violating the domestic antitrust laws, it would seem clear that a patentee could do the same thing with foreign licenses without violating the antitrust laws of this country. Kelsey-Hayes also cited Krampe v. Ideal Industries, Inc., 347 F.Supp. 1384 (N.D.I11. 1972). In that ease misuse of a patent was found to exist because the licensing agreement required the licensee to sell no other products which were similar or identical to the patented device. The fact that this prohibition might limit commerce in the patented device between Germany and the United States was a purely incidental consideration in the holding of the Court.

Referring to the letter from Dunlop management to Kelsey-Hayes counsel in- which doubts were expressed about the validity of the ’516 patent, Kelsey-Hayes alleged a misuse of the patent ,in Dunlop’s efforts to license it after having, doubts about its validity. It also claims that Dunlop, knowing the ’516 patent was invalid, nevertheless attempted to persuade Kelsey-Hayes to pay royalties under the '516 patent in order to obtain a license to manufacture other Dunlop brakes in the United States. These charges of misuse of the patent are not supported by evidence of probative value, and the District Court correctly held that Kelsey-Hayes had not established misuse.

Other allegations of unclean hands were made by Kelsey-Hayes in support of its demand for attorneys’ fees in this action. In his Memorandum, Judge Pratt noted that both sides indulged in innuendo and sought to create inferences of inequitable conduct by the other party. However, hard proof of any misconduct on the part of either plaintiff or defendant is lacking, and Kelsey-Hayes simply failed in its burden of proving the allegations.

Our conclusion from studying the entire record in this case, which record is lengthy and in many respects obfuscated, is that Judge Pratt displayed a clear understanding of the mechanical principles as well as the legal issues involved and that his findings and conclusions are correct.

The judgment of the District Court is affirmed.


author: BELL, Circuit Judge: GOLDBERG, Circuit Judge

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Hubert Geroid BROWN, Defendant-Appellant.
    No. 72-2181.
    United States Court of Appeals, Fifth Circuit.
    Aug. 22, 1973.

      William M. Kunstler, New York City, Edward Carl Broege, Newark, N. J., Murphy W. Bell, Baton Rouge, La., David J. Dennis, New Orleans, La., for defendant-appellant.
    Gerald J. Gallinghouse, U. S. Atty., Mary Williams Cazales, Asst. U. S. Atty., New Orleans, La., for plaintiff-appellee; Louis C. LaCour, U. S. Atty., Horace P. Rowley, III, Gene S. Palmi-sano, Robert O. Homes, Jr., Harry. F. Connick, Asst. U. S. Attys., on the brief.
    Before BELL, GOLDBERG and SIMPSON, Circuit Judges.
   BELL, Circuit Judge:

This appeal is from a judgment of conviction entered on a jury verdict finding defendant guilty of transporting a firearm from New Orleans to New York while a passenger on Delta Airlines flight 818 in violation of 15 U.S.C. A. § 902(e). (The Federal Firearms Act) He was found not guilty on one additional count charging transportation of the same firearm from New York to New Orleans on a previous day. The gravamen of the offense was that he transported the firearm while under indictment. The contested fact issue was whether defendant knew at the time that he was under indictment in Maryland.

I.

The somewhat contorted history of this case, with the long delay between conviction in 1968 and the present appeal, is the result of two prior appeals. On April 3, 1969, in accordance with the procedure followed in Alderman v. United States, 1969, , 394 U.S. 165, 89 S.Ct. 961, 22 L.Ed.2d 176, this court remanded the case to the district court for a hearing to consider the effect of certain evidence obtained by wiretapping. (Unreported order dated April 3, 1969 in Brown v. United States, No. 26,249).

Following an Alderman hearing and in camera inspection, the district court, 317 F.Supp. 531 (E.D.La.1970), found that three of the four documents containing wiretapped conversations (Exhibits 1-1, 1-2, and 1-3), were obtained by electronic surveillance authorized by the Attorney General and made solely for the purpose of gathering foreign intelligence. As to these three foreign intelligence wiretaps, the court held (1) that they were legal, albeit warrantless, and (2) that the information contained therein was in no way related to the prosecution’s case. The district court therefore ordered that the contents of the wiretaps would not be disclosed to defendant.

The fourth document (Exhibit 1-4), contained information overheard by Louisiana state officials who monitored some of the telephone conversations of prisoners in their custody by listening on a telephone extension. The federal government used the state jail facilities in New Orleans for holding federal prisoners. After indictment and while incarcerated in the state facility, jail officials recorded some of defendant’s conversations and passed one recording to New Orleans police. The substance of this recording was then divulged to an F.B.I. agent who incorporated it in a memorandum which is Exhibit 1-4.

The only part of Exhibit 1-4 which is related to defendant’s case is the report of a conversation between defendant Brown and his attorney, William Kunst-ler, Esq., as follows:

At approximately 2:30 PM, on February 29, 1968, H. Rap Brown tele-phonically contacted his attorney William Kunstler in New York City. Brown advised Kunstler that New Orleans was “ready to go” as was Baton Rouge which was especially “hot” at Southern University in that city. Brown indicated that all that was necessary was mobilization of forces and he requested that Stokley Carmichael come to New Orleans on March 2, 1968. Kunstler stated he would attempt to make arrangements with Carmichael and that Carmichael would most likely also travel to Baton Rouge, Louisiana.
Kunstler advised Brown that he had obtained 30 minutes of time on three radio stations (location not indicated) and that a big press release had been prepared regarding Brown’s cause. Kunstler indicated that Brown has the full cooperation of all Civil Rights organizations.
Kunstler advised that Ed Milbrook (Phonetic) would be visiting Brown at the Orleans Parish Prison, New Orleans, Louisiana, where he is presently incarcerated. Kunstler stated that Brown could expect to remain in Orleans Parish Prison until March 20, 1968, at which time Kunstler would attempt to obtain his release for re- ■ turn to New York City.

While finding Exhibit 1-4 to be the product of illegal surveillance, the district court held that the information obtained in no way prejudiced defendant or tainted his conviction.

Following the district court’s findings on the wiretap claims, this case was again appealed to this court. However, at some point in the proceedings Brown became a fugitive from justice. Consequently a panel of this court ordered the appeal stricken from the docket but on condition that it be reinstated if and when it should be made known to the court that Brown was subject to the court’s jurisdiction. United States v. Brown, 5 Cir., 1972, 456 F.2d 1112. Finally, in June of 1972, Brown appeared before the district court and was re-sentenced to five years imprisonment and a fine of $2,000. This appeal followed. We affirm.

II.

There are seven assignments of error to be considered on this appeal:

(1) the government’s proof of an essential element of the crime, actual knowledge of the Maryland indictment, was insufficient as a matter of law;

(2) the court’s instructions on the issue of actual knowledge were contradictory and prejudicial;

(3) the court should have granted defendant’s motion for a change of venue because the security measures employed at his trial denied him a fair trial;

(4) 15 U.S.C.A. § 902(e) is unconstitutional for the reasons that in prohibiting a person under indictment from carrying firearms, the statute imposes an arbitrary classification and also violates the individual’s right to be presumed innocent;

(5) the alleged invalidity of the Maryland indictment necessitates a reversal ;

(6) the overhear of counsel in the telephone conversation between defendant and his attorney (Exhibit 1-4, supra), violated defendant’s right to counsel under the Sixth Amendment and mandates at least a new trial, and

(7) the court erred in refusing to hold an adversary hearing on the relevance of the materials contained in Exhibits 1-1, 1-2, and 1-3, discussed supra.

We will consider these assignments of error seriatim.

III.

First, as to lack of proof, 15 U. S.C.A. § 902(e), under which defendant was convicted, provides that “[I]t shall be unlawful for any person who is under indictment ... to ship, transport, or cause to be shipped or transported in interstate or foreign commerce any firearm or ammunition.” To prove a violation of § 902(e) it must be shown that a defendant actually had knowledge of a pending indictment while he transported a firearm in interstate commerce. Cf. Costello v. United States, 8 Cir., 1958, 255 F.2d 389, 396.

Defendant argues that the government’s proof of his actual knowledge of the pending Maryland indictment was insufficient as a matter of law. On appeal the jury’s finding of actual knowledge must be sustained if there is substantial evidence taking the view most favorable to the government to support it. Glasser v. United States, 1942, 315 U.S. 60, 80, 62 S.Ct. 457, 86 L.Ed. 680; United States v. Harper, 5 Cir., 1971, 450 F.2d 1032, 1040. While the government did not introduce any direct evidence to prove that the defendant actually knew of the Maryland indictment, there was a substantial body of circumstantial evidence on which the jury might have based its verdict. The evidence will be briefly summarized.

When the indictment was returned, about noon on August 14, 1967, Brown was in Los Angeles. Shortly thereafter he boarded a plane and returned to New York where he was met by a group of friends at the airport. The government proved that news of Brown’s indictment was carried by all major news media in the New York area, as well as news media in New Orleans and Baton Rouge, Louisiana. For the next day and a half, Brown remained in New York visiting with friends including his attorney, William Kunstler, Esq. On the afternoon of August 16, Brown and his bodyguard, Frazier, flew to New Orleans carrying the weapon in question, an “M-l carbine.” Although traveling incognito, Brown was recognized, photographed, and interviewed by the press in New Orleans. He also talked with some of his supporters during his two hour stay. From New Orleans, Brown and Frazier left by bus for Baton Rouge where Brown’s parents resided. While staying with Brown’s parents in Baton Rouge, Brown received about fifty visitors. He also visited and talked with friends at a restaurant, a barber shop and a bar in Baton Rouge. It was also shown that the August 15 edition of the Baton Rouge State-Times was delivered to the home of Brown’s parents on August 15. This edition of the newspaper carried on the front page, a headline entitled “RAP BROWN INDICTED FOR ARSON.”

Based on this evidence, the government argued that it would have been unreasonable to conclude that Brown was unaware of the indictment. The jury verdict implicitly included a finding that Brown did have actual knowledge of the indictment. It can be overturned only if we conclude that the jury must necessarily have had a reasonable doubt as to his actual knowledge. United States v. Warner, 5 Cir., 1971, 441 F.2d 821, 825. We cannot say, in light of the sum of this evidence, that the jury must necessarily have had reasonable doubt about his actual knowledge. We therefore hold that the evidence was legally sufficient to sustain the verdict.

Second, defendant urges that the district court gave contradictory instructions on the issue of actual knowledge. We have carefully examined the charge and find no merit in this contention.

Some evidence of the care with which the jury followed the instructions on the necessity of knowledge of the indictment and proof by circumstantial evidence will be seen in the finding of not guilty on the count involving transportation of the firearm from New York to New Orleans. The additional proof of the headline in the Baton Rouge newspaper was substantial and could well have been the factor which caused the guilty ver-diet on the count which related to transporting the firearm thereafter.

We likewise find without merit the claim asserted in the third ¿ assignment of error, that defendant’s motion for a change of venue should have been granted. We are unable to conclude that the security measures employed at the trial reached such proportions as to deny defendant a fair trial. There was no mob dominated atmosphere as in Moore v. Dempsey, 1923, 261 U.S. 86, 43 S.Ct. 265, 67 L.Ed. 543; nor publicity or television problems of the kind involved, respectively, in Sheppard v. Maxwell, 1966, 384 U.S. 333, 86 S.Ct. 1507, 16 L.Ed.2d 600; and Estes v. Texas, 1965, 381 U.S. 532, 85 S.Ct. 1628, 14 L.Ed.2d 543. The transcript of the trial discloses that defendant’s right to a fair trial was carefully guarded by the district court in the context of the security problem obtaining at the time.

Four, we find no merit in the claim that § 902(e) is unconstitutional for the alleged reason that it draws no distinction between indictment for crimes of violence and non-violence, or because it is an undue restriction on the presumption of innocence.

We note that Congress has broad power to regulate interstate activities under its commerce power. See Heart of Atlanta Motel v. United States, 1964, 379 U.S. 241, 85 S.Ct. 348, 13 L.Ed.2d 258; Katzenbach v. McClung, 1964, 379 U.S. 294, 85 S.Ct. 377, 13 L. Ed.2d 290. We must uphold the constitutionality of the regulation involved here unless we determine that there is no rational basis for the congressional classification. See Heart of Atlanta Motel, supra, 379 U.S. at 258, 85 S.Ct. 348. 15 U.S.C.A. § 902(e) prohibits the interstate carriage of firearms by a person who is under indictment for an offense punishable by imprisonment for more than a year. We are unable to conclude that this classification is without rational basis. The differentiation of the statute among indicted persons according to the seriousness of the crimes with which they are charged is, without more, sufficient in our .judgment. t See United States v. De Pugh, W.D.Missouri, 1967, 266 F.Supp. 453, aff'd 8 Cir., 393 F.2d 367.

Nor do we find any merit in the contention that § 902(e) violates the presumption of innocence. Persons under indictment are often subject to restraints on their freedom and the restriction here is not of such weight as to offend the presumption.

Five, defendant contends that the invalidity of the Maryland indictment necessitates a reversal of his Louisiana conviction. Even assuming arguendo that the underlying indictment is later found invalid, the crime under § 902(e) is complete when a firearm is carried in interstate commerce by a person then under indictment. United States v. Quiroz, 9 Cir., 1971, 449 F.2d 583, 584-585; United States v. De Pugh, supra. Thus this contention is also without merit.

IY.

With respect to Exhibit 1-4 defendant urges that a new trial is required because (1) the unlawful wiretap and subsequent overhear invaded his Sixth Amendment right to counsel, and (2) the contents of the invasion were not disclosed until after conviction. This contention is discussed at some length in the opinion of the district court. United States v. Brown, E.D.La., 1970, 317 F. Supp. 531.

This argument is premised on the proposition that any undisclosed government overhear of an attorney-client conversation requires a new trial irrespective of whether the information obtained is relevant. Defendant maintains that the per curiam decisions in Black v. United States, 1966, 385 U.S. 26, 87 S. Ct. 190, 17 L.Ed.2d 26, and O’Brien v. United States, 1967; 386 U.S. 345, 87 S. Ct. 1158, 18 L.Ed.2d 94, require this conclusion. We cannot agree.

In Hoffa v. United States, 1967, 385 U.S. 293, 87 S.Ct. 408, 17 L.Ed.2d 374, a case involving an alleged overhear of Hoffa’s counsel in person by a government informer, and decided after Black and before O’Brien, the Supreme Court examined in more detail the problem of governmental intrusion upon the attorney-client relationship. Two cases decided by the District of Columbia Circuit, holding that a surreptitious invasion by a government agent into the legal camp of the defense violates the protection of the Sixth Amendment, were cited with approval in Hoffa. Caldwell v. United States, 1953, 92 U.S.App.D.C. 355, 205 F.2d 879; Coplon v. United States, 1951, 89 U.S.App.D.C. 103, 191 F.2d 749. However, the Court carefully noted that both Caldwell and Coplon “dealt with government intrusion of the grossest kind upon the confidential relationship between the defendant and his counsel.” Hoffa, supra, 385 U.S. at 306, 87 S.Ct. at 416.

In light of the discussion in Hoffa with regard to “intrusion of the grossest kind”, and the fact that neither Black nor O’Brien expressly states that any undisclosed overhear, regardless of circumstances or relevancy, violates the Sixth Amendment, we decline to adopt such a rule. Instead, we proceed to consider the circumstances which led to the overhear and the question of whether the overhear could have in any fashion tainted the conviction.

The overhear involved in the instant case resulted from the actions of the state officials. There is no indication that defendant’s telephone conversations were monitored for the purpose of gaining information to use at his trial, a practice we would immediately proscribe with appropriate remedy. Instead, testimony adduced at an adversary hearing on the question disclosed that state prison officials followed a practice of monitoring some of the telephone conversations of prisoners in their custody for security reasons. The surveillance was neither authorized nor approved by federal authorities. Indeed, there was no evidence that the Federal authorities were aware of the state practice. We therefore conclude that the facts presented do not demonstrate the type of governmental intrusion upon the confidential relationship between defendant and his counsel which would, without more, require a new trial.

Concluding that neither the type of overhear, standing alone, nor the circumstances surrounding it resulted in a violation of the right to counsel, the question remains whether the overhear tainted defendant’s conviction. The substance of the only conversation between defendant and his counsel, Kunstler, is quoted supra, p. 421. Defendant does not seriously contend and we cannot conclude that this conversation in any way tainted defendant’s conviction. Cf. In Re Tierney, 5 Cir., 1972, 465 F.2d 806, 813.

V.

We turn now to Exhibits 1-1, 1-2, and 1-3, warrantless wiretaps authorized by the then Attorney General acting for the President, prior to January 10, 1968, the date of the wiretaps. The district judge examined these exhibits as well as the authorization in camera and concluded (1) that they were legal wiretaps made for the purpose of gathering foreign intelligence and (2) that they contained nothing which would be even arguably relevant to defendant’s case. In fact, the- involvement of defendant in the wiretaps was happenstance at the most. On appeal, defendant argues that the wiretaps were illegal and therefore under Alderman he is entitled to disclosure and an adversary hearing on relevancy.

Alderman requires disclosure and an adversary proceeding only if the trial court determines that the government’s electronic surveillance was unlawful. Alderman, supra, 394 U.S. at 170 n. 3, 89 S.Ct. 961; Giordano v. United States, 1969, 394 U.S. 310, 312-313, 89 S.Ct. 1163, 22 L.Ed.2d 297. Thus the issue presented to us is whether the trial court correctly determined that the wiretaps were lawful. This issue requires us to decide a question which was expressly reserved by the Supreme Court in United States v. United States District Court, 1972, 407 U.S. 297, 92 S.Ct. 2125, 32 L.Ed.2d 752; that is, whether the President, acting through the Attorney General, has the constitutional power to conduct warrantless electronic surveillance for the purpose of obtaining foreign intelligence.

In United States District Court, the Supreme Court held that the President did not have the power to authorize electronic surveillance in internal security matters without prior judicial approval. However, the Court was at pains to distinguish between surveillance of domestic organizations deemed threats to national security and surveillance involving the activities of foreign powers or their agents. 407 U.S. at 308 and at 321-322, 92 S.Ct. 2125.

While the Court carefully reserved the question of presidential power with respect to foreign threats to national security, reference was made in a footnote to the view of others that warrantless surveillance may be constitutional where foreign powers are involved even though impermissible in domestic security cases. 407 U.S. at 322 n. 20, 92 S.Ct. 2125. (Citing United States v. Smith, C.D.Cal., 1971, 321 F.Supp. 424; United States v. Clay, 5 Cir., 1970, 430 F.2d 165; ABA Criminal Justice Project, Standards Relating to Electronic Surveillance, Feb. 1971, pp. 11, 120, 121).

In United States v. Clay, 5 Cir., 1970, 430 F.2d 165, 170-172, rev’d on other grounds, 1971, 403 U.S. 698, 91 S.Ct. 2068, 29 L.Ed.2d 810, the case referred to in the Supreme Court’s footnote 20, we concluded that the President had such authority over and above the Warrant Clause of the Fourth Amendment.

We found that authority in the inherent power of the President with respect to conducting foreign affairs. We took our text from Chicago & Southern Air Lines v. Waterman S.S. Corp., 1948, 333 U.S. 103, 111, 68 S.Ct. 431, 92 L.Ed. 568, where the Supreme Court stated:

[T]he President, both as Commander-in-Chief and as the Nation’s organ for foreign affairs, has available intelligence services whose reports are not and ought not to be published to the world. It would be intolerable that courts, without the relevant information, should review and perhaps nullify actions of the Executive taken on information properly held secret. 333 U.S. at 111, 68 S.Ct. at 436.

See also United States v. Belmont, 1937, 301 U.S. 324 at 328, 57 S.Ct. 758, 81 L.Ed. 1134.

The constitutional power of the President is adverted to, although not conferred, by Congress in Title III of the Omnibus Crime Control and Safe Streets Act of 1968. 18 U.S.C.A. §§ 2510-2520. 18 U.S.C.A. § 2511(3) of that Act provides as follows:

“Nothing contained in this chapter or in section 605 of the Communications Act of 1934 (48 Stat. 1103; 47 U.S.C. 605) shall limit the constitutional power of the President to take such measures as he deems necessary to protect the Nation against actual or potential attack or other hostile acts of a foreign power, to obtain foreign intelligence information deemed essential to the security of the United States, or to protect national security information against foreign intelligence activities. . . . ”

As United States District Court teaches, in the area of domestic security, the President may not authorize electronic surveillance without some form of prior judicial approval. However, because of the President’s constitutional duty to act for the United States in the field of foreign relations, and his inherent power to protect national security in the context of foreign affairs, we reaffirm what we held in United States v. Clay, supra, that the President may constitutionally authorize warrantless wiretaps for the purpose of gathering foreign intelligence. Accord, Zweibon v. Mitchell, D.D.C.1973, 363 F.Supp. 936; United States v. Butenko, D.N.J., 1970, 318 F.Supp. 66, Restrictions upon the President’s power which are appropriate in cases of domestic security become artificial in the context of the international sphere. United States v. Smith, supra, 321 F.Supp. at 430 (dicta).

Our holding in Clay is buttressed by a thread which runs through the Federalist Papers: that the President must take care to safeguard the nation from possible foreign encroachment, whether in its existence as a nation or in its intercourse with other nations. See e. g., The Federalist No. 64, at 434-36 (Jay); The Federalist No. 70, at 471 (Hamilton) ; The Federalist No. 74 at 500 (Hamilton) (J. Cooke ed. 1961).

We thus conclude that the wiretaps involved in Exhibits 1-1, 1-2, and 1-3 were lawful and that their dis- ' closure was not required. Alderman, supra, 394 U.S. at 170 n. 3, 89 S.Ct. 961. Moreover, we hold, after in camera examination, that the information disclosed by the wiretaps had no relevancy whatever to the crime here in question, either directly or indirectly.

In sum, we agree with the following statement of the District Court which is couched in the precise terms of our decision in United States v. Clay, supra, 430 F.2d at 170.

From an in camera examination of Exhibits 1-1, 1-2, and 1-3, we find that these logs were authorized by the then Attorney General in writing; they were not made pursuant to a surveillance of defendant but rather of others, and the premises were identified; that they were made in connection with obtaining foreign intelligence information; that the Executive Branch of the Government has properly and reasonably requested these exhibits not be disclosed to the defendant or the public because “it would prejudice the national interest to disclose the particular facts concerning this surveillance other than to the Court in camera” and its contents do not in any manner bear upon the issues involved in this case, and in no way have these wiretaps prejudiced defendant, helped build a case against him, or assisted in bringing about his conviction.

We thus find no merit in the assignments of error.

Affirmed.

GOLDBERG, Circuit Judge

(specially concurring):

I concur not only in the affirmance of this conviction, but also in the opinion of the Court. My words of special concurrence relate only to Part V and are intended merely to make explicit what is now implicit in the excellent opinion of my Brother Bell.

There can be no quibble or quarrel with the findings and conclusions that the wiretap under consideration here had its origin and complete implementation in the field of foreign intelligence. This Court and the able district judge have conducted inescapably independent reviews of the action of the then Attorney General in authorizing this warrant-less electronic surveillance. All agree in the determination that the wiretap was indeed directly related to legitimate foreign intelligence gathering activities for national security purposes; and that it was, therefore, a legal wiretap and not within the ambit of Alderman v. United States, 1969, 394 U.S. 165, 89 S.Ct. 961, 22 L.Ed.2d 176. This case in no way involved the spurious use of national security as a cover for warrantless electronic surveillance of accused and potential criminal defendants, domestic radicals, or political dissenters; and the panel opinion narrowly barricades warrantless wiretaps within the confines of legitimate foreign intelligence surveillance.

It is unfortunate for the development of the law in this area of foreign intelligence wiretapping that the essential information on which the legality of executive action turns — the subject, location, scope, and duration of the surveillance —cannot be revealed. This circumstance places tremendous responsibility for both national security and cherished constitutional rights in the hands of individual judges, acting largely in ignorance of the related decisions of their colleagues and permanently insulated from the helpful criticisms and suggestions that result from the adversary process and the publication of explanatory opinions. Nevertheless, it remains the difficult but essential burden- of the courts to be ever vigilant, so that foreign intelligence never becomes a pro forma justification for any degree of intrusion into zones of privacy guaranteed by the Fourth Amendment. Courts must insure that there be no future tidal wave of warrantless wiretaps and that the floodgates controlling their use not be opened for domestic intelligence purposes. The judiciary must not be astigmatic in the presence of warrantless surveillance; rather judges must microscopically examine the wiretaps in order to determine whether they had their origin in foreign intelligence or were merely camouflaged domestic intrusions. The serious step of recognizing the legality of a warrantless wiretap can be justified only when, as in the case before us, the foreign and sensitive nature of the government surveillance is crystal clear.

We must not trespass into the field of foreign intelligence and frustrate the executive in the pursuance of its obligations to conduct our foreign affairs. The Fourth Amendment, however, is no less a part of our Constitution than Article II, and its great protection against unreasonable invasions of privacy must remain inviolate. The fact that we develop the law of national security wiretaps largely in camera can never be allowed to lessen our zeal in the protection of fundamental rights. Indeed, the very secrecy surrounding our decisions requires that we give the closest scrutiny to executive assertions of national security interest.

      . It shall be unlawful for any person who is under indictment or who has been convicted of a crime punishable by imprisonment for a term exceeding one year . . . to ship, transport, or cause to be shipped or transported in interstate or foreign commerce any firearm or ammunition.

      . This question is to be distinguished from “silver platter” problems arising from state originated evidence being made available to federal prosecutions. Elkins v. United States, 1960, 364 U.S. 206, 80 S.Ct. 1437, 4 L.Ed.2d 1669. We do not here deal with whether to admit evidence, harmful to the appellant, which was gathered by state authorities in violation of constitutional rights. Rather, we are concerned with the circumstances and scope of the instrusion on the attorney-client privilege. Our question is whether the intrusion, by either state or federal officers, is so gross as to justify a new trial regardless of the relevancy of the information obtained. In our opinion it is relevant to this issue that the overhear was by state officials, solely in the discharge of their prison security responsibilities, rather than by federal officials seeking to facilitate their prosecution of the appellant.