author: ADAMS, Circuit Judge:

text:
    The CONSERVATION SOCIETY OF SOUTHERN VERMONT, INC., et al., Appellees, v. SECRETARY OF TRANSPORTATION, et al., Appellants in No. 73-2629. The VERMONT NATURAL RESOURCES COUNCIL, INC., et al., Appellants in No. 74-2168, v. Claude S. BRINEGAR, Secretary of Transportation, et al., Appellees, Town of St. Johnsbury, Intervenor-Appellee.
    Nos. 63, 288, 341, Dockets 73-2629, 74-2168, 73-2715.
    United States Court of Appeals, Second Circuit.
    Argued Sept. 17, 1974.
    Decided Dec. 11, 1974.

      Harvey D. Carter, Jr., Bennington, Vt. (Williams, Witten, Carter & Wickes, Bennington, Vt., R. Paul Wickes, Ben-nington, Vt., Haynes N. Johnson, Stamford, Conn., Frederick Pope, Jr., Brattle-boro, Vt., on the brief), for appellees in No. 73 — 2699 and appellants in No. 74-2168.
    Robert C. Schwartz, Asst. Atty. Gen., Vt., William B. Gray, Asst. U. S. Atty., Rutland, Vt., Edmund B. Clark, Atty., Dept, of Justice, Washington, D. C. (Wallace H. Johnson,' Asst. Atty. Gen., George W. F. Cook, U. S. Atty., D. Vt., Kenneth A. Rubin, Atty., Dept, of Justice, Washington, D. C., on the brief), for appellants in No. 73 — 2699 and appellees in No. 74-2168.
    Sarah Chasis, Angus Macbeth, New York City, William F. Morrill, Lakeville, Conn., John Souweine, of counsel for am-ici curiae Natural Resources Defense Council, Inc., in No. 73 — 2629.
    J. G. Speth, Edward L. Strohbehn, Jr., Washington, D. C., on the brief, for ami-cus curiae Natural Resources Defense Council, Inc., in No. 74 — 2168.

      Edward R. Zuccaro, St. Johnsbury, Vt. (Witters, Zuccaro, Willis & Lium, St. Johnsbury, Vt.), for intervenor-appellee.
    Before MOORE, MULLIGAN and ADAMS, Circuit Judges.

       Of the Third Circuit Court of Appeals, sitting by designation.

   ADAMS, Circuit Judge:

Two cases are consolidated for appeal here because they present an identical issue, namely, whether this Circuit adheres to the holding of Greene County Planning Board v. Federal Power Commission, that an environmental impact statement (EIS) sufficient to satisfy the requirements of the National Environmental Policy Act must be prepared by the responsible federal agency. We reaffirm that Greene County remains the law of this Circuit, and that the Federal Highway Administration (FHWA) must formulate and prepare its own impact statement to assess the environmental effects of proposed federally-funded highway projects.

I. Background.

Objections by environmental groups to proposed Vermont highway construction have generated both these cases, and the defendants in each include the state and federal highway officials.

In Conservation Society of Southern Vermont v. Secretary of Transportation, improvement was planned for a twenty-mile segment of U. S. Route 7 between Bennington and Manchester, Vermont. The district court, Circuit Judge Oakes sitting by designation, granted a permanent injunction in 1972 against proceeding with construction pending compliance with the mandate of NEPA. In 1973, the federal defendants, asserting procedural and substantive compliance with NEPA, moved to dissolve the Route 7 injunction. That motion was denied. Federal participation in preparation of the EIS, Judge Oakes concluded, was scant, perfunctory and insufficient to satisfy the procedures of NEPA as that Act was interpreted in Greene County,

Judge Oakes found that the ultimate conversion of the Route 7 corridor into a divided limited-access superhighway through Connecticut, Massachusetts and Vermont is not the subject of an existing federal plan. However, he found that it is nonetheless viewed by the respective state highway departments as a goal “possible of accomplishment with legislative and federal approval over a long-range period of time, with federal approval taking place on an ad hoc basis at the division engineer level.” 362 F.Supp. at 636. The district court determined that the FHWA has knowledge of each state’s planning process and acts in a “partnership” with the officials of each state respectively. Conversion of isolated portions of Route 7 into a superhighway, the court stated, will produce greater traffic, thus creating synergistic pressure for further construction to connect the newly expanded sections.

The district court therefore held that before the contemplated construction was undertaken, a comprehensive exploration into the environmental impact of development alternatives through the 280 mile corridor was called for. Judge Oakes concluded that there was justification for his order both under NEPA and under the Intergovernmental Cooperation Act of 1968. This appeal by defendants followed.

In the companion case, Vermont Natural Resources Council v. Brinegar, an appeal is taken by environmentalist-plaintiffs from rulings of District Judge Cof-frin on several issues relating to a proposed construction denominated the Sleepers River Interchange. The interchange, to be located in St. Johnsbury, Vermont, would provide a highway connection for motorists between U. S. Route 2 (an east-west road) and Interstate 1-91 (a north-south road). Without the interchange, those who wished to transfer from one highway to the other would have to leave the highway and pass through the narrow streets of St. Johnsbury. The two principal roadways, Route 2 and 1-91, are presently under construction; the sole project at issue before this Court is the proposed interchange.

As envisaged, building the St. Johns-bury interchange would require the channelization of approximately one mile of Sleepers River. The environmentalists sought to enjoin the project because of alleged failures by defendants to comply with federal law. They alleged procedural and substantive violations of NEPA § 102(2)(c). Before the trial court, and here, that the draft and final EIS were prepared by the state agency rather than by the federal agency and observed that, contrary to statute, the EIS did not consider alternatives to the construction. While conceding certain shortcomings in the EIS, the district court found the construction essential and declined to issue an injunction. Noncompliance with the permit requirements of the Federal Water Pollution Control Act of 1972 is also pressed on this appeal as grounds for enjoining further work on the interchange. The district court found that plaintiffs could not maintain such cause of action because they had not satisfied a sixty-day notice requirement established by the Pollution Control Act as a precondition to private suit.

II. The “Responsible Official” to Prepare the EIS.

Consideration of environmental factors in planning major federal projects has been deemed a high national priority. The duty of a federal agency under NEPA is to produce, as part of a determination .whether to proceed with a project, a detached and comprehensive analysis of the impact on the environment of such project.

In Greene County, supra, the New York Power Authority, in accordance with the regulations of the Federal Power Commission, prepared and filed with the Commission an impact statement to accompany an application for a new power line. The Commission reviewed and circulated the statement that had been prepared by the Authority, a state agency, in alleged satisfaction of its duty under NEPA. Chief Judge Kaufman held that in so doing, the Federal Commission:

abdicated a significant part of its responsibility by substituting the statement of [the state agency] for its own. The Commission appears to be content to collate the comments of other federal agencies, its own staff and the in-tervenors and once again to act as an umpire. The danger of this procedure, and one obvious shortcoming, is the potential, if not likelihood, that the applicant’s statement will be based upon self-serving assumptions.

NEPA, Chief Judge Kaufman stated, “explicitly requires the [federal] agency’s own detailed statement” of the expected environmental impact of a major federal action. The Act places “primary and nondelegable responsibility” for preparation of the EIS on the federal agency. Accordingly, Greene County held that, to the extent regulations of the Federal Power Commission did not implement Congressional policy, compliance with the Commission’s regulations would not satisfy NEPA.

In the highway cases presently before us, the FHWA is the initial decision maker under the Act. While it does not plan, design or construct highways, FHWA decides whether the commitment of millions of dollars of federal money should be allocated to specific highway projects. Accordingly, having carefully considered the Act, the regulations and precedent, we conclude that FHWA is in the best position to weigh the costs to the environment and the benefits hoped for from the project and then to reach, as it must, a decision based on “its own evaluation of the environmental issues.”

A state agency is established to pursue defined state goals. In attempting to secure federal approval of a project, “self-serving assumptions” may ineluctably color a state agency’s presentation of the environmental data or influence its final recommendation. Transposing the federal duty to prepare the EIS to a state agency is thus unlikely to result in as dispassionate an appraisal of environmental considerations as the federal agency itself could produce. Judge Oakes declared that:

Prior to making any detailed statement, the responsible Federal official shall consult with and obtain the comments of any Federal agency which has jurisdiction by law or special expertise with respect to any environmental impact involved. Copies of such statement and the comments and views of the appropriate Federal, State, and local agencies, which are authorized to'develop and enforce environmental standards, shall be made available to the President, the Council on Environmental Quality and to the public as provided by section 552 of title 5, United States Code, and shall accompany the proposal through the existing agency review processes.
[T]he Vermont Highway Department has the duty ... to follow legislative mandate in regard to proposed highway construction, and the construction here contemplated [Route 7] was legislatively mandated in 1968. Thus, it is impossible for the Vermont Highway Department not to be an advocate of legislatively mandated construction and still act consistently with its duty as a state agency.

Requiring strict adherence to the Greene County rule would provide a clear and effective means to obtain an objective, comprehensive EIS. Furthermore, the beneficial effects of such an approach are substantial.

[Appropriate agency regulations on EIS authorship . . . would shift the initial burden of monitoring compliance with this aspect of NEPA to the agencies themselves, while facilitating ultimate judicial evaluation of such compliance. . . . [T]he case-by-case approach . . . tends to encourage even more NEPA litigation, while at the same time increasing the chance that a legally insufficient EIS might for lack of litigation become the basis for federal decisions made in ignorance of potentially disastrous environmental consequences.

Lodging primary responsibility with the federal agencies would clarify definitively the respective roles of agency and court in effectuating the Congressional purposes. By assuring unambiguous rules, judicial intrusion into what are in essence agency determinations will be avoided wherever possible.

Further litigation before this Court should be rendered unnecessary, or at least kept to a minimum, regarding whether “significant federal participation” or “substantial interaction” between federal and state agencies satisfy NEPA requirements. Nothing short of “genuine” federal preparation of the EIS accords with Greene County.

The interpretation of the statute by the Council on Environmental Quality, CEQ, has been expressly accommodated to the Greene County result. The CEQ guidelines presently read:

§ 7(c). Where [a federal] agency relies on an applicant to submit initial environmental.information, the agency should assist the applicant by outlining the types of information required. In all cases, the agency should make its own evaluation of the environmental issues and take responsibility for the scope and content of draft and final environmental statements,

It is objected that a stringent rule requiring FHWA preparation of the EIS is unmanageable from a practical viewpoint. Upon careful review, however, it would appear that the problems entailed in conforming to Greene County are tractable.

It is contended that the FHWA is not involved in planning a particular project from the earliest stages, and thus does not have the advantage of information available to the state. This handicap is minimized however, for the CEQ guidelines explicitly preserve sufficient flexibility for the federal agency to solicit and integrate information from state agencies. Surely there is no reason to lose the benefit of any work done by the state during initial exploration into project possibilities prior to federal involvement.

Turning now to the cases before the Court, in Conservation Society of Southern Vermont, we affirm the judgment of Judge Oakes that the requisite EIS be prepared by the FHWA, the responsible federal agency. The injunction prohibiting construction of Route 7 will continue until the requisite EIS is prepared in compliance with the district court order.

In Vermont Natural Resources Council a significantly different factual- context is presented. To the extent that the district court questioned the need for FHWA compliance with Greene County, its opinion is not sustained. But the district court ascertained that, in any event, several factual considerations combined to justify withholding an injunction. Since we have resolved that the district court did not abuse its discretion in making its determination, we affirm the result reached below on this point.

In determining whether to issue an injunction against proceeding with the Sleepers River Interchange, Judge Cof-frin found that, under the circumstances, the equities largely favored the defendants. The court pointed to the late stage reached by the general construction program, to the very strong considerations of public safety urged by St. Johnsbury into whose streets the 1-91 highway traffic must otherwise empty, and to the urgency attending completion of this project.

Although the procedural requirements of NEPA must be followed scrupulously and cost or delay will not alone justify noncompliance with the Act, where the equities require, it remains within the sound discretion of a district court to decline an injunction, even where deviations from prescribed NEPA procedures have occurred. We cannot conclude, based on its factual determinations and its weighing of the equities, that the district court abused its discretion in refusing to enjoin construction of the Sleepers River Interchange.

III. EIS for the Route 7 Corridor

The defendants appeal from the portion of the order in Conservation Society of Southern Vermont that, within six months from issuance by the FHWA of the EIS relating to the 20 mile project, an EIS concerning development of transportation systems in the entire 280 mile Route 7 corridor must be prepared.

Although no plan presently exists for constructing a Route 7 superhighway through Connecticut, Massachusetts and Vermont, the district court made particular findings indicating a long-range goal of superhighway construction by the respective states and the federal government, acting in partnership. Development is apparently foreseen as the piecemeal connection of smaller segments, each considered on an ad hoc basis. It appeared that the FHWA would not consider a comprehensive corridor-long EIS necessary because the highway as an entity would never be characterized as a “major Federal action.” Judge Oakes emphasized the undesirable consequences if each isolated increment is approved in ignorance both of the cumulative environmental impact of fragmented growth and of major transportation alternatives that might be planned in lieu of highway construction.

The government advances the contention that the scope of the EIS required by the district court is excessive, first, in view of the nonexistence of any present plans to build the three-state highway, and second, in light of the relatively small portion of road reviewed here.

Under the facts as found, we would not disturb the district court’s conclusion that an ultimate Route 7 superhighway is the expectation of state agencies with the knowledge and cooperation of the federal government. We thus must reach the second issue, whether it was beyond the sound exercise of discretion of the district court to order an EIS considerably greater in scope than the specific project before the agency at this time.

Support for the order below may be found in NEPA, which provides that the EIS include consideration of the relation between short and long term uses of the environment, especially where “irreversible and irretrievable commitments of resources” will follow from approval of the proposed project. NEPA also requires that federal agencies “recognize the worldwide and long-range character of environmental problems. For consideration of environmental factors “to the fullest extent possible”, CEQ requires review “beginning at the earliest possible point.” CEQ reminds agencies that, to be meaningful, impact statements “are to serve as the means for assessing the environmental impact of proposed agency actions, rather than as a justification for decisions already made.”

The appropriateness of ordering impact statements for entire development programs when a proposal before an agency concerns only one portion of a more massive undertaking is not a novel issue in the courts. In Scientists’ Institute for Public Information v. AEC, the plaintiffs sought to force AEC to prepare an EIS regarding a liquid metal fast breeder reactor program to develop fuel for nuclear-powered electric generators. The AEC conceded that at some future time prior to the construction of generator plants an EIS would be required, but the agency ascertained administratively that the program, still in the research and development stages, was not ripe for preparation of an EIS. The Court of Appeals for the District of Columbia disagreed. It reasoned that developments presently occurring required the “irreversible and irretrievable commitments of resources,” and that these commitments themselves would curtail subsequent broad-scale assessment of alternatives.

Judge Oakes was equally concerned with the irretrievable commitment of federal funds to local highway projects without early attention to possible alternatives to highway development. Furthermore, in contrast to the situation in Scientists’ Institute, where it was clear that an EIS would be forthcoming at some time covering the reactor program, in the Route 7 case it appears that no overall impact statement is likely to emerge spontaneously from the FHWA.

The Bennington-Manchester Road is admittedly a project with local utility. Accordingly, the government asserts that by submitting an EIS for this segment compliance is established with the NEPA mandate to consider the environment from a broad perspective. The FHWA guidelines themselves would seem to answer this contention. Guidelines on the scope of an EIS provide:

The highway section included in an environmental statement should be as long as practicable to permit consideration of environmental matters on a broad scope. If possible, the highway section should be of substantial length that would normally be included in a multi-year highway improvement program.

Upon careful consideration of the facts, and with a sensitive eye to the options often imperceptibly foreclosed by fragmented growth, we conclude that the legislation, the regulations and precedent appear to afford ample basis for Judge Oakes’ determination. The court thus did not abuse its discretion in concluding that the time was appropriate for early, comprehensive and meaningful consideration of the environmental impact, of an alternative to continued highway expansion in the Route 7 corridor.

IV. Consideration of Alternatives at Sleepers River

An attack was leveled by plaintiffs in Vermont Natural Resources on the substantive adequacy of the EIS for the Sleepers River Interchange because the EIS did not consider, as required by NEPA, other route locations or the alternative of abandoning the project. NEPA’s mandate is clear that agencies must accord thorough heed to the environmental impact of reasonably available options prior to a formal determination to pursue a course of action. While consideration of every conceivable alternative is not necessary, “what is required is information sufficient to permit a reasoned choice of alternatives . . ..” Generally an EIS must consider the possibility of doing nothing as well as various ways to achieve a certain end.

The EIS here, in violation of NEPA, did not include a discussion of the environmental impact of not building the Sleepers River Interchange. Despite this failure, a constellation of facts contributed to the district court’s conclusion that no injunctive relief was warranted in the case before it. Plaintiffs contend that a clear violation of NEPA justified injunctive relief against defendants pending compliance with the statute. Ordinarily, we would not take issue with a rule that, where other things are equal, a clear violation of a statute embodying a strong national policy merits injunctive relief. But here the district court found that the equities clearly and strongly favored the defendants.

Three grounds, each supported by the record, provided the basis for the district court’s result. We need not decide today whether fewer than the sum of these would justify withholding injunctive relief, for here all were present.

First, the district court found that the general 1 — 91 highway project and the Sleepers River Interchange were at an advanced stage of completion. 1 — 91 when complete will provide highway transportation in Vermont from the Massachusetts border north to Canada. Most of the construction phase is ended and all but 24 miles of 1 — 91 are in operation in Vermont. The 1 — 91 portion to be serviced by the interchange was almost finished, and the interchange was found necessary to provide adequate access to 1 — 91. The land acquisition program for the interchange right of way was accomplished. Contracts had been let and construction had begun except for actual diversion of the river bed.

Second, granting an injunction appeared unjustified where the outcome was virtually undisputed, where the affected resource was not “so environmentally unique [as to require] any special consideration,” and where extensive and thoughtful consideration had been given to mitigating the adverse environmental consequences of the project. Thus, the court found that the interchange was essential “for the benefit of the traveling public and the effective utilization of 1 — 91” as well as for the safety and general welfare of the citizenry of St. Johnsbury. Elimination of the interchange, the court found, was “a very remote possibility” and alternative proposals were “impossible to realistically implement because of adverse terrain.” Further, in preparing plans for the actual construction, exhaustive efforts had been expended to preserve the ecological value of the river, notwithstanding the channelization.

Third, Judge Coffrin found that the heavy damage to defendants to be expected from an injunction militated against its issue. Delay and concomitant cost increases would not alone justify noncompliance with the Act. Here, however, the’court found that until the interchange was complete the town bore an “impermissibly heavy traffic burden,” compromising the quality of life in the town and the safety of its inhabitants. Also, construction would provide jobs in an area of high unemployment. On the other hand, the delay occasioned by an injunction would be especially costly because of the curtailed construction season in northern Vermont, which would, in effect, postpone the job an entire year, although a far shorter period might be required to comply with NEPA.

The district court gave the above reasons for withholding injunctive relief notwithstanding the violation of NEPA in regard to contemplation of alternatives in the EIS for the Sleepers River Interchange. When all the pertinent facts are considered, we cannot say the district court abused its discretion in so deciding.

V. The Federal Water Pollution Control Act Claim .

The plaintiffs in Vermont Natural Resources Council also contend that the district court erred by concluding it lacked jurisdiction to entertain a claim that defendants’ channelization of Sleepers River violated the Federal Water Pollution Control Act (FWPCA) Amendments of 1972. The court concluded that only by waiting sixty days after giving notice to the administrator, the state, and the alleged violator as required by the statute could plaintiffs obtain review of the defendants’ actions.

After careful consideration we are not persuaded that Congress intended the sixty-day notice provision to erect an absolute barrier to earlier suit by private citizens under the FWPCA. However, we decline to remand the case for a determination of the merits of plaintiffs’ claims. Assuming arguendo that the district court had jurisdiction over the FWPCA claims and, assuming further that a stream channelization project such as the one here would require a permit under the Act, we would not employ the equitable powers available to this Court to enjoin further construction of the Sleepers River Interchange until such a permit is obtained. As already pointed out, granting such an injunction would cause serious harm and inconvenience both to St. Johnsbury and to the general travelling public. The purposes which would be served by enjoining construction at this late date are simply not sufficiently weighty to balance the injury which further delays would cause.

Accordingly, the judgment of the district court in each of these cases will be affirmed.

      . 455 F.2d 412 (2d Cir.), cert. denied 409 U.S. 849, 93 S.Ct. 56, 34 L.Ed.2d 90 (1972).

      . 42 U.S.C. § 4321 et seq. (1973) (NEPA).

      . Contra, Life of the Land v. Brinegar, 485 F.2d 460 (9th Cir. 1973), cert. denied 416 U.S. 961, 94 S.Ct. 1979, 40 L.Ed.2d 312 (1974); Citizens Environmental Council v. Volpe, 484 F.2d 870 (10th Cir. 1973), cert. denied, 416 U.S. 936, 94 S.Ct. 1935, 40 L.Ed.2d 286 (1974); Iowa Citizens for Environmental Quality, Inc. v. Volpe, 487 F.2d 849 (8th Cir. 1973); Finish Allatoona’s Interstate Right, Inc. v. Brinegar, 484 F.2d 638 (5th Cir. 1973); Movement Against Destruction v. Volpe, 500 F.2d 29 (4th Cir. 1974).

      . The Town of St. Johnsbury is the defendant-intervenor in Vermont Natural Resources Council. In both cases briefs by amici curiae have been filed and considered.

      . 343 F.Supp. 761 (D.Vt.1972). The holding that there had been noncompliance with § 4®, Department of Transportation Act of 1966, 49 U.S.C. § 1653(f), which served as a basis for the original injunction, is not questioned in this appeal.

      . “There is no indication whatsoever that FHWA or any of its employees conceived, wrote or even edited any section of or passage in the EIS.” 362 F.Supp. 627, 632 (D.Vt.1973).
      In contrast to the procedural shortcoming of the EIS, the district court found that substantively the EIS was adequate. There is no appeal from this aspect of the district court opinion.

      . 42 U.S.C. § 4231(b), (e) (1973).

      . D.Vt., Civ. No. 74-149, order entered Aug. 16, 1974, opinion filed Aug. 21, 1974 (Coffrin, J.). The district court in effect bifurcated the proceedings to enable speedy disposition of the Sleepers River Interchange controversy, designated a matter of “considerable urgency.”
      By order dated Aug. 26, 1974, a stay pending appeal was issued by a panel of this Circuit pursuant to F.R.App.Proc. 8. The stay was dissolved by the present panel, in an order dated October 23, 1974.

      . Channelization of a stream, in the context employed here, involves the creation of an artificial stream bed and diversion of a stream from its natural course to the constructed waterway. From perspectives of engineering, ecology and aesthetics, clearly a broad spectrum is comprehended in the term “channelization.”

      . 42 U.S.C. § 4332(2)(C) (1973).

      . 33 U.S.C. §§ 1311, 1344 (Supp.1974).

      . A claim under the Federal Rivers and Harbors Act, 33 U.S.C. §§ 403, 407 (1970), rejected by the court below, was not pursued in this appeal.

      . 42 U.S.C. § 4332(2)(C), NEPA Section 102(2)(C), provides in full:
      Sec. 102. The Congress authorizes and directs that, to the fullest extent possible: (2) all agencies of the Federal Government shall—

        (C) include in every recommendation or report on proposals for legislation and other major Federal actions significantly affecting the quality of the human environment, a detailed statement by the responsible official on- — ■
      (i) the environmental impact of the proposed action,
      (ii) any adverse environmental effects which cannot be avoided should the proposal be implemented,
      (iii) alternatives to the proposed action,
      (iv) the relationship between local short-term uses of man’s environment and the maintenance and enhancement of long-term productivity, and
      (v) any irreversible and irretrievable commitments of resources which would be involved in the proposed action should it be implemented.

      . 455 F.2d at 420 (footnotes omitted).

      . Id. at 421 (emphasis original).

      . Id. at 420.

      . Council on Environmental Quality (CEQ) Guidelines, 38 Fed.Reg. 20553 (1973).

      . 362 F.Supp. at 631.

      . 1-291 Why? Ass’n v. Burns, 372 F.Supp. 223, 246, n. 72 (D.Conn.1974), appeal filed No. 74-1545 (2d Cir. Feb. 7, 1974).

      . See, Natural Resources Defense Council, Inc. v. Morton, 148 U.S.App.D.C. 5, 458 F.2d 827, 838 (1972).

      . 362 F.Supp. at 632.

      . 38 Fed.Reg. 10856, 10865 (1973) (statement accompanying proposed guidelines for the preparation of an EIS; comments to § 7(d)).

      . Fed.Reg. 20550, 20553 (1973), codified as 40 CFR § 1500.7(c) (emphasis added). The guidelines do permit “the use [after review] of initial information furnished by an applicant in the form of an EIS.” 38 Fed Reg 10865.
      The CEQ published FHWA Policy and Procedure Memorandum (PPM) 90-1 two years prior to issuance of its revised guidelines (102 Monitor, Vol. 1, No. 9, Oct. 1971). Such earlier publication does not provide evidence that CEQ presently approves the procedures outlined in PPM 90-1. The more likely inference is that the 1973 guidelines were intended by CEQ to stimulate agency revision of internal procedures inconsistent with judicial and CEQ interpretations of the Act.

      . Shortages of both general and expert personnel are cited. However, we agree with the district court in Southern Vermont that this difficulty is best addressed to Congress. 362 F.Supp. at 361. Testimony on behalf of • the Vermont Highway Department indicated that the FHWA already absorbs that share of the cost of EIS preparation commensurate with its underwriting of construction costs. It has been suggested that states might be asked to continue to pay their portion of costs when the FHWA prepares the EIS. No financial constraints operating on FHWA would thus hamper their ability to prepare the EIS. See Comment, The Independent Offices Appropriations Act of 1952; Who Should Pay for the Impact Statement, 3 E.L.R. 10059 (1973); Comment, More on the Independent Offices Appropriations Act of 1952, 3 E.L.R. 10086 (1973). The Supreme Court recently approved a fee assessment by a federal agency under the Appropriations Act. National Cable Television Assoc., Inc. v. United States, 415 U.S. 336, 94 S.Ct. 1146, 39 L.Ed.2d 370 (1974).

      . Notes 22, 23, supra.

      . It would appear that the district court was moved in part at least by what it perceived as significant federal interaction in the preparation of the EIS. In contradistinction to Conservation Society, Judge Coffrin found that federal-state cooperation was “much more extensive.” Slip Opinion 15. Federal review of the draft EIS was described as “searching.” Slip Opinion at 12. In addition, federal agency contributions incorporated into the final EIS were found to be substantial.
      While the level of involvement described does not reach the standard reaffirmed by this Court today, Judge Coffrin’s findings in this regard help sustain his decision not to enjoin construction in the Sleepers River case until a properly prepared EIS is available.

      . Design approval for the 1-91 construction was prior to Feb. 1, 1971. 1-91 construction in Vermont was in its final phase. Even as to the interchange project at issue here, land acquisition has been completed, contracts have been awarded and construction has begun. Slip Opinion 5-6, 22, n. 1.

      . Calvert Cliffs’ Coordinating Committee v. AEC, 146 U.S.App.D.C. 33, 449 F.2d 1109 (1971); Greene County, supra; City of New York v. United States, 344 F.2d 929 (E.D.N.Y.1972) (3-judge court, Friendly, J.).

      . Calvert Cliffs’, supra; Greene County, supra; Environmental Defense Fund, Inc. v. Froehlke, 477 F.2d 1033 (8th Cir. 1973).

      . In Greene County, the court held that as to certain portions of the power line construction, “[T]here can be no question that the Commission failed to comply with NEPA. . Nevertheless we find no compelling basis for halting construction of the lines so far [80%] advanced ...” 455 F.2d at 424-425. See also Environmental Defense Fund, Inc. v. Froehlke, 477 F.2d 1033 (8th Cir. 1973), and cases cited therein.

      . 362 F.Supp. at 638.

      . Id. at 636.

      . 42 U.S.C. § 4332(2)(c).

      . The defendants would cast this determination by the district court as an intrusion into FHWA decision-making inconsistent with the limited scope of review afforded substantive matters. The failure of the FHWA to provide any impact statement regarding the entirety of what the district court found to be an ongoing, albeit piecemeal, development is not so sheltered from judicial review. Scientists’ Institute for Public Information, Inc. v. A.E.C., 156 U.S.App.D.C. 395, 481 F.2d 1079 (1973); Natural Resources Defense Council, Inc. v. Morton, 148 U.S.App.D.C. 5, 458 F.2d 827 (1972); City of New York v. United States (II), 344 F.Supp. 929 (E.D.N.Y.1972) (3-judge court).

      . The Bennington-Manchester Route 7 project is approximately 20 miles in length.

      . 42 U.S.C. § 4332(2)(C)(iv), (v).

      . 42 U.S.C. § 4332(2)(E). The Senate report accompanying NEPA states expressly that one function of the Act is to prevent decision-making that affects the environment to take place “in small but steady increments which perpetuate rather than avoid the recognized mistakes of previous decades.” S.Rep.No.91-296, 91st Cong., 1st Sess. 5 (1969).

      . 38 Fed.Reg. 10856, 10865 (1973).

      . 38 Fed.Reg. 20550, 20552 (1973). 40 C.F.R. § 1500.2(a) mandates that “in all cases prior to agency decision” a detailed EIS is necessary. Courts also have required impact statements prior to decision-making by agencies. Calvert Cliffs’, supra, described tardy consideration of environmental factors as a “hollow exercise.” 449 F.2d at 1128.

        See also Arlington Coalition on Transportation v. Volpe, 458 F.2d 1323 (4th Cir.), cert. denied, 409 U.S. 1000, 93 S.Ct. 312, 34 L.Ed.2d 261 (1972); Citizens Env’l Council v. Volpe, 364 F.Supp. 286, 293-294 (D.Kan.), aff'd, 484 F.2d 870 (10th Cir. 1973), cert. denied, 416 U.S. 936, 94 S.Ct. 1935, 40 L.Ed.2d 286 (1974); Citizens for Clean Air v. Corps of Engineers, 349 F.Supp. 696, 708 (S.D.N.Y.1972).

      . The related question of artificial division of a project into smaller segments for approval is considered in Indian Lookout Alliance v. Volpe, 484 F.2d 11 (8th Cir. 1973), and Named Individual Members v. Texas Highway Dept., 446 F.2d 1013 (5th Cir. 1971), cert. denied, 406 U.S. 933, 92 S.Ct. 1775, 32 L.Ed.2d 136 (1972). The test for whether an isolated highway segment is the proper subject of an EIS appears to be whether the segment has an independent utility, whether it has logical functional termini. PPM 90-1 § 3(a).

      . 156 U.S.App.D.C. 395, 481 F.2d 1079 (1973).

      . Id at 1092. See also Natural Resources Defense Council, Inc. v. Morton, 148 U.S.App.D.C. 5, 458 F.2d 827, 835 (1972).

      . PPM 90-1 )1 6.

      . In a recent per curiam opinion, this Circuit affirmed a district court determination relating to a portion of the Route 7 corridor between Danbury and New Milford, Connecticut. Citizens for Balanced Environment and Transportation, Inc. v. Volpe, 503 F.2d 601 (2d Cir. 1974). In that case the district court dealt solely with the question of whether or not there was federal action in the construction of the Danbury-New Milford portion of Route 7; it did not consider the issue of the necessity for an EIS covering the entire corridor. Thus, the affirmance by this Court of Judge Newman’s specific finding does not preclude, and is unaffected by, the present affirmance of Judge Oakes’ general findings.

      . Since we affirm the district court’s requirement of a corridor-lóng EIS based on NEPA, we do not reach the question whether such order might be bottomed on the additional basis asserted by the district court, namely, the Intergovernmental Cooperation Act of 1968, 42 U.S.C. § 4231 (1973).

      . The EIS shall include a detailed statement of “any adverse environmental effects which cannot be avoided should the proposal be implemented,” as well as “alternatives to the proposed action.” 42 U.S.C. § 4332(2)(C).
      All federal agencies are required to “study, develop, and describe appropriate alternatives to recommended courses of action in any proposal which involves unresolved conflicts concerning alternative uses of available resources.” 42 U.S.C. § 4332(2)(D). See also S.Rep.No.91-296, 91st Cong., 1st Sess. 21.

      . Citizens Environmental Council v. Volpe, 484 F.2d 870 (10th Cir. 1973), cert. denied, 416 U.S. 936, 94 S.Ct. 1935, 40 L.Ed.2d 286 (1974); Monroe County Conservation Council, Inc. v. Volpe, 472 F.2d 693 (2d Cir. 1972); Natural Resources Defense Council, Inc. v. Morton, 148 U.S.App.D.C. 5, 458 F.2d 827 (1972); Committee for Nuclear Responsibility, Inc. v. Seaborg, 149 U.S.App.D.C. 385, 463 F.2d 783 (1971).

      . Natural Resources Defense Council, Inc. v. Morton, supra.

      . Monroe County Conservation Council, Inc., supra.

      . It was stated at oral argument without contradiction that approximately 80%, or 3,900 feet of the 4,800 foot-long channelization of Sleepers River was attributable to the 1-91 construction to which no objections are raised.

      . The late stage at which this construction has been subjected to attack provides a vivid contrast to the situation in Southern Vermont, the companion case here, where the district court ordered early contemplation of alternatives, permitting a more meaningful appraisal. Greene County, supra; Arlington Coalition on Transportation, supra; Calvert Cliffs’, supra.

      . Dist. Court slip opinion at 24. The Court noted that although six alternative routes were suggested in the final EIS for the remaining 24 miles of 1-91, all contained identical plans for the Sleepers River Interchange.

      . Id. at 23.

      . Id. at 24.

      . Id. at 19.

      . Id. at 21-24. In the course of review prior to issuance of the final EIS, there had been meetings with the U. S. Department of Interi- or Fish & Wildlife Service and the Vermont Fish & Game Department. Many aspects of construction were tailored to incorporate suggestions to alleviate the environmental impact of channelization, directed to flood control and the preservation of the fishing, recreational and aesthetic value of the stream. Some of the modifications involved placing a natural boulder fill in the channel, designating the steepness of the banks and the depth of the channel, and planting shade trees to keep down water temperature, to hold the soil and to promote the growth of other vegetation.

      . Greene County, supra; Calvert Cliffs’, supra.

      . Slip opinion at 18.

      . Id. at 35. This would appear to be of no consequence if the ultimate outcome were in substantial doubt, but such was not found to be the case.

      . Aberdeen & Rockfish RR. Co. v. Students Challenging Regulatory Agency Proceedings (SCRAP), 409 U.S. 1207, 1218, 93 S.Ct. 1, 34 L.Ed.2d 21 (1972) (Burger, C. J., sitting as Circuit Justice).

      . 33 U.S.C. § 1251 et seq. (Supp.1974).
      Section 1311(a) provides:
      Except in compliance with this section and [section 1344] of this title, the discharge of any pollutant by any person shall be unlawful.
      Section 1344(a) states:
      (a) The Secretary of the Army, acting through the Chief of Engineers, may issue permits, after notice and opportunity for public hearings for the discharge of dredged or fill material into the navigable waters at specified disposal sites.
      “Pollutant” is defined in 33 U.S.C. § 1362(6) to include dredged spoil, rock, and sand.

      . 33 U.S.C. § 1365(a) reads in pertinent part:
      [A]ny citizen may commence a civil action on his own behalf—
      (1) against any person (including (i) the United States, and (ii) any other governmental instrumentality or agency to the extent permitted by the eleventh amendment to the Constitution) who is alleged to be in violation of (A) an effluent standard or limitation under this chapter
      ******
      33 U.S.C. § 1365(b) reads:
      No action may be commenced—
      (1) under subsection (a)(1) of this section—
      (A) prior to sixty days after the plaintiff has given notice of the alleged violation (i) to the Administrator, (ii) to the State in which the alleged violation occurs, and (iii) to any alleged violator of the standard, limitation, or order

      . See Natural Resources Defense Council, Inc. v. Train, 510 F.2d 692 (D.C.Cir.1974). Ordinarily, the 60-day notice provisions must be adhered to prior to initiation of suit under the FWPCA. The purpose of the 60-day notice procedure of § 1365 is to provide the Administrator time to launch governmental enforcement of the FWPCA in lieu of enforcement through private citizens suits. See Sen. Rep.No.92-414, 92nd Cong., 1st Sess., 79-80 (1971); 1972 U.S.Code Cong. & Admin.News 3668, 3745.
      However, a crabbed construction of § 1365 which would elevate the 60-day rule to the position of an absolute barrier to earlier suit fails to account for § 1365(e), which preserves all private rights to sue for relief under any statute, or common law. Moreover, a review of the legislative history of § 1365 and its prototype, § 304 of the Clean Air Act, supports the conclusion that the provisions for obtaining judicial review set forth in § 1365 were not intended to eliminate avenues previously avaiLable to citizens seeking enforcement of the Act, but were rather intended to provide citizens with an additional remedy. Section 304 of the Clean Air Act, 42 U.S.C. §§ 1857h et seq., was the model for the citizen-suit provision of the FWPCA, and is substantially identical to § 505 of the FWPCA. See Sen. Comm, on Public Works (Library of Congress) A Legislative History of the Federal Water Pollution Control Act Amendments of 1972, 93d Cong., 1st Sess. (Jan. 1973) (2 vols.), at 820, 1497. See Sen. Comm, of Public Works, A Legislative History of the Clean Air Amendments of 1970, 93d Cong., 2d Sess. (Jan. 1974) (2 vols.) at 436-439.
      Although it appears that no court has expressly ruled on whether the § 505 procedure is the exclusive means of obtaining review of agency action under the FWPCA, district courts have in fact exercised jurisdiction over FWPCA claims based on other jurisdictional statutes. See, e. g., Scenic Hudson Preservation Conference v. Callaway, 370 F.Supp. 162 (S.D.N.Y.1973), aff'd 499 F.2d 127 (2d Cir. 1974) (establishing jurisdiction to grant permanent and injunctive relief for alleged violation of § 404 of FWPCA under 28 U.S.C. § 1331 and the APA, 5 U.S.C. §§ 701-706); Natural Resources Defense Council, Inc. v. Quarles, (Civil No. 1629-73, D.D.C., Feb. 1, 1974). See also City of Highland Park v. Train, 374 F.Supp. 758 (N.D.Ill.1974), in which the court held that it had jurisdiction under 28 U.S.C. § 1331 to review the failure of the EPA Administrator to promulgate regulations in conformity with the Clear Air Act, 42 U.S.C. §§ 1857 et seq.
      Abbott Laboratories v. Gardner announces the standard to be applied:
      [J]udicial review of a final agency action by an aggrieved person will not be cut off unless there is persuasive reason to believe that such was the purpose of Congress.
      387 U.S. 136, 140, 87 S.Ct. 1507, 1511, 18 L.Ed.2d 681 (1967). See also PBW Stock Exchange, Inc. v. SEC, 485 F.2d 718, 733 (3d Cir. 1973) (dissenting opinion).
      Since a “persuasive reason” does not appear in this case, the notice requirements of § 505 would not operate as a total jurisdictional bar to entertaining plaintiffs’ claim.

      . Plaintiffs assert that the district court had jurisdiction to review under either the federal question statute, 28 U.S.C. § 1331, or the Administrative Procedure Act, 5 U.S.C. §§ 701-706.


source: Caselaw Access Project

author: TYLER, District Judge.

license: Public Domain

text:
    Leonard KAHN, Plaintiff-Appellant, v. DYNAMICS CORPORATION OF AMERICA, Defendant-Appellee.
    No. 981, Docket 73-2848.
    United States Court of Appeals, Second Circuit.
    Argued May 21, 1974!
    Decided Dec. 10, 1974.
    As Modified On Denial of Rehearing Jan. 9, 1975.
    Certiorari Denied April 21, 1975.
    See 95 S.Ct. 1657.

      Laurence B. Dodds, Great Neck, N. Y. (Joseph R. McPhee, Jr., and George Pollack, New York City, on the brief), for plaintiff-appellant.
    Thomas M. Ferrill, Jr., and Allen V. Hazeltine, Blue Bell, Pa., for defendant-appellee.
    Before SMITH and TIMBERS, Circuit Judges, and TYLER, District Judge.

       United States District Judge for the Southern District of New York, sitting by designation.

   TYLER, District Judge.

Plaintiff Leonard R. Kahn sued Dynamics Corporation of America (“DCA”), charging that certain models of the “REL” radio receiving systems, made and distributed by DCA, infringed Kahn’s patent No. 3,030,503, issued on April 17, 1962 (hereinafter the “503 patent”). He appeals from the trial court’s denial of his claims and assessment of liability on his part for attorneys’ fees. Since we believe there is ample evidence to support the reasoning and judgment of the trial court, we affirm in all respects but remand the case for determination of the exact amount of attorneys’ fees to be awarded to defendant.

After the trial, the district court entered judgment on the basis of an opinion holding that the Kahn patent was invalid in view of certain prior art, 35 U.S.C. §§ 102 and 103; holding that the 503 patent was invalid because of Kahn’s failure to disclose material facts and because he made material misrepresentations to the Patent Office; determining that claims 15 and 16 of the 503 patent were invalid because they were first asserted in and after August, 1961, more than one year after equipment identical to that charged to infringe had been on sale and distributed to customers; holding that plaintiff had failed to sustain his burden of proving infringement; dismissing the complaint with costs; and determining that, because the case is exceptional within the purview of 35 U.S.C. § 285, defendant is entitled to recover attorneys’ fees as part of its costs.

Kahn has asserted that his patent covers all diversity radio receiving systems wherein the outputs of the diversity receiving branches are combined linearly in phase by any circuit which causes the strength of the signal from each branch, at the point where the signals from all branches are combined, to be proportional to the square of the strength of the signal received by the antenna for that branch. The practical core of this patent dispute is that both the 503 patent and the devices manufactured by DCA are intended and designed to overcome the problem known even to laymen as “fading” of radio signals.

As is commonly known, radio signals take many courses in traveling substantial distances from a transmitter to a receiver. While radio signals can, but rarely do, follow the earth’s curvature, they usually travel upward away from earth and are refracted back to earth by the ionosphere. Indeed, radio waves may be refracted once, or they may bounce back and forth between the earth and the ionosphere several times before they reach a receiver. Thus, signals intercepted by the receiver system antennae may have traveled over widely different paths of unequal distances.

Radio signals are cyclical in nature; that is, they have crests, or positive phases, and troughs, or negative phases. Therefore, the crest of a portion of a signal traveling on one path may arrive at the same time as the trough of a portion of the same signal traveling on another path. Moreover, the relationship of the phases at the receiver may vary from 0 to 360 degrees, resulting in either a weakening or a strengthening of the signal when the portions are combined. In sum, continuous variations from a full reinforcement (0 degree or 360 degree phase relationship) to complete cancellation (180 degree phase relationship) result in what is called fading.

As the trial court also found, a radio signal does not occupy a single frequency but includes a band or range of frequencies. Each frequency is affected differently by the refractions from the ionosphere to the earth. As a consequence, the various signals within a frequency band may be affected differently so that the relationship among their strengths at the receiver is not the same as it was at the transmitter. This condition produces what is known as selective fading.

Kahn’s 503 patent is intended to reduce these fading problems by making use of a diversity reception system for improving signal strength in relation to noise level. By this method, two or more receivers are simultaneously employed to receive signals transmitted over long distances. After linear amplification and demodulation, the signals are combined in phase and in proportion to the squares of the strengths of the incoming signals. Thus, should the incoming signals have relative amplitudes of three to two, they will be combined in a ratio of nine to four. The subject matter of the 503 patent amounts to a claimed improvement in the field of diversity receiving systems effected by utilizing two or more receivers in combination to overcome the effects of signal fading which may result in a low or virtually negligible signal reception in one or more of the multiple receivers.

The 503 patent was granted to Kahn on April 17, 1962, upon a continuation of Kahn’s original application (No. 365,964) which was filed July 3, 1953, but abandoned on December 13, 1960, after continued disallowances by the Patent Office. Accompanying the continuation application was a letter setting forth arguments with respect to the so-called Oswald Patent (No. 2,219,749, issued October 29, 1940). The significance of this letter was that theretofore the Patent Office had consistently concluded that the teaching of the Oswald Patent clearly embraced the Kahn application. Indeed, on June 20, 1961, the continuation application of Kahn was again rejected as being substantially met or anticipated by Oswald. Indefatigable, Kahn and his counsel nevertheless filed an amendment in August, 1961, wherein they contended, inter alia, that the system described by Oswald could not work because of random phase variations of the signals to be combined. The last contention appears to have been largely responsible for finally persuading the Patent Office to issue a patent. But at trial Judge Ten-ney found the contention completely lacking in merit because the Oswald patent describes a system which would satisfactorily solve the random phase variation problem. In other words, the trial court accepted the testimony of defendant’s experts which established that, by proceeding on the basis of the Oswald patent, a satisfactory diversity system using ratio square combination could be devised without undue difficulties caused by random phase inconsistency. The system contemplated would operate by reconditioning the reduced amplitude carrier of each receiving branch and by introducing each branch’s reconditioned carrier into its second detector.

We believe that the testimony at trial amply supports the trial judge’s conclusions on the teaching of Oswald and on other prior art in the field. We have little to add to the specific findings and reasoning of the trial court on this and other matters. Nevertheless, some of the evidence at trial and findings of the trial court will be explored to determine whether Kahn misled the Patent Office and proceeded in bad faith in other ways. Such actions would be sufficient to make this an “exceptional case” within the meaning of 35 U.S.C. § 285 and to support the trial judge’s exercise of discretion under that statute in awarding attorneys’ fees to the defendant.

As Judge Tenney recognized, the presumption of validity of a patent may be strengthened where the Patent Office has granted it with knowledge of relevant prior art, here most particularly the Oswald Patent. However, that presumption should not attach where there is evidence that the Patent Office has been misled as to the true import of prior art references. Cf. John Deere Co. v. Graham, 333 F.2d 529, 530 (8th Cir. 1964), aff’d, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The presumption has also been weakened in recent years by the fact that the Patent Office is too overworked to give adequate attention to patent applications and grants. See Ansul Company v. Uniroyal, Inc., 301 F.Supp. 273, at 280 (S.D.N.Y.1969), aff’d in relevant part, 448 F.2d 872 (2d Cir. 1971), cert. denied, 404 U.S. 1018, 92 S.Ct. 680, 30 L.Ed.2d 666 (1972); cf. Graham v. John Deere Co., 383 U.S. 1, 18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Here on the basis of persuasive evidence, the trial court found that Kahn made no new contributions to the art but, at best, reworked and republicized information previously developed by others. Indeed, Judge Tenney found that some of the information Kahn used was obtained from publicly available works which he had encountered many years ago while working as an engineer for Crosby Laboratories.

The record clearly indicates that the Oswald Patent contains a full disclosure of the principle of ratio-squared combining in a diversity system. Moreover, the mode of operation and the circuitry described by the Oswald Patent seem to compare closely to those disclosed by the 503 patent. Not surprisingly, therefore, the trial court was impressed by the testimony of DCA’s expert Bingley. He prepared a hypothetical circuit which in reality was the Oswald Patent circuit incorporating the change which Oswald himself had proposed and which was disclosed in the Ohl Patent (No. 2,041,855, issued May 26, 1936). Unfortunately for Kahn, there is no evidence that the patent examiner knew of the Ohl Patent or that it was called to his attention by Kahn. Therefore, the presumption of validity accorded a patent granted in light of prior art is inapplicable. Consequently, we accept, with a minor qualification, the trial court’s finding that Kahn’s circuit was anticipated by the Oswald Patent with one possible distinction, which distinction nonetheless was anticipated by the Ohl Patent. See 367 F.Supp. 67, at 72. At first blush, this determination seems contra the general rule that, upon challenge under Section 102, the challenging party must prove that all elements of the invention, or equivalents thereof, are to be found in a preexisting single structure or description. See, e. g. Scaramucci v. Dresser Industries, 427 F.2d 1309, 1313-1314 (10th Cir. 1970). Particularly since Oswald himself proposed the change later embodied in the Ohl Patent, and because Oswald’s patent in itself disclosed the principle of ratio-squared combining in a diversity system with a method of operation similar to the Kahn disclosures, we think the additional reference to Ohl by the trial court was insubstantial and thus unnecessary to establish the Section 102 defense. Shelco, Inc. v. Dow Chemical Co., 466 F.2d 613, at 614 (7th Cir. 1972). We scarcely need add that our review of the record indicates likewise that any differences which might be perceived between the subject matter of the 503 patent 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” such as an electrical engineer like Kahn. 35 U.S.C. § 103.

We also believe that there is ample evidence to support the conclusion of the trial court that claims 15 and 16 of the 503 patent, the only claims as to which Kahn attempted to prove infringement by DCA, are invalid. They were not presented under either the original or the continuation application until more than one year after equipment substantially the same as that charged to infringe had been on sale and delivered to customers. See 35 U.S.C. § 102(b); cf. Muncie Gearworks Inc. v. Outboard Marine & Manufacturing Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171 (1942).

Finally, the trial court determined that the DCA systems operate quite differently from the system contemplated by the 503 patent. Diversity receiving systems conforming to the specifications of that patent would combine the signals from each branch in proportion to the squares of their strengths as received, regardless of how greatly the relative strengths of the signals differed. DCA’s system or systems do not operate this way; in effect, they are hybrid systems. If the signals in the branches differ in strength by less than two to one, they are combined in proportion to a varying power of the input signal strengths. When incoming signals of the branches differ in strength by more than two to one, only the signals from the branches having the stronger input contribute to the output; the weaker signal contributions are switched off. As the trial court put it, defendant’s systems are both combining and selective. Not surprisingly, therefore, Judge Tenney determined, that Kahn’s expert witness could not explain “any definitively understood relation between the claims in suit and the disclosure in Kahn’s specifications and drawings.” For this and other reasons supported by the evidence, we conclude that the trial court was correct in holding that DCA’s devices do not infringe the Kahn Patent, most particularly claims 15 and 16 thereof.

We come now to the issue of whether DCA is entitled to an award of reasona- ■ ble attorneys’ fees under 35 U.S.C. § 285. In what is perhaps the leading case in this circuit on this subject, the United States District Court for the Southern District of New York enunciated the rule that “only where the court is convinced that the patent in suit is so wholly devoid of substance that the plaintiff could not have had a bona fide belief in its validity shall it award the defendant reasonable attorneys’ fees pursuant” to the statute. Indiana General Corp. v. Krystinel Corp., 297 F.Supp. 427, 449 (S.D.N.Y.1969), aff’d, 421 F.2d 1023 (2d Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1820, 26 L.Ed.2d 91 (1970). Mention has already been made that the trial court, well aware of this principle, made a finding that Kahn had misled the patent examiner with respect to the true nature, scope and capabilities of the method or system disclosed in the Oswald Patent. In addition, the trial court made a finding that Kahn deceived the Patent Office by withholding from it the nature and significance of highly relevant papers, the contents of which were familiar to Kahn as early as the 1930’s when he was working for Crosby Laboratories.

Moreover, while the trial court did not pass upon DCA’s asserted defense of laches, it did note that in September, 1962, less than six months after his patent had issued, Kahn charged by letter that DCA might be infringing the 503 patent. As a result, DCA’s lawyers studied the 503 patent and, in apparent good faith, replied to Kahn’s attorneys in November, 1963, that it would seem clear that there was no possible infringement by the devices put out by the REL division of DCA. Apparently, there then followed a considerable period in which there was no communication between the parties and no further charges of infringement on behalf of Kahn. The record indicates, however, that in 1969 defendant had written Kahn’s attorneys explaining in greater detail why the REL devices did not infringe the 503 patent. Surprisingly, ten days after that letter, this suit was instituted. However, for the three year period thereafter until trial was reached, plaintiff and his attorneys made absolutely no attempt, through discovery or otherwise, to test and consider the contentions of DCA that there was no infringement.

On the basis of these findings, the trial court inferred that Kahn’s purpose in commencing this litigation was to force DCA to obtain a non-exclusive license under the 503 patent by threatening DCA with a suit, the defense of which would entail considerable expenses. Additionally, examination of the discovery materials in the case and of the performance of the plaintiff and his witnesses at trial fortified the trial court’s conclusion that Kahn and his lawyers made no meaningful effort to establish just how the REL devices infringed the 503 patent. The trial court also analyzed the specific preparations and arguments of DCA, in particular those used in its pretrial efforts to persuade Kahn that his claims were lacking in merit. It finally concluded that Kahn failed to use reasonable and responsible care in assessing his claims prior to and during suit and that this suit was commenced and prosecuted^ in bad faith on the part of plaintiff. Therefore, the trial judge determined that the case was exceptional and justified the award of both costs and attorneys’ fees to the defendant. See Kaehni v. Diffraction Co., Inc., 342 F.Supp. 523, 535 (D.Md.1972), aff’d without op., 473 F.2d 908 (4th Cir.), cert. denied, 414 U.S. 854, 94 S.Ct. 151, 38 L.Ed.2d 103 (1973).

In patent suits, no less than other types of suits in the federal courts, it is the general rule that awarding attorneys’ fees to the prevailing party is not favored absent a specific statute providing therefor. Here we have such a statute, but the relief it provides is not usually granted. The patent suit involved must qualify as an “exceptional” case. It is obvious from the language of 35 U.S.C. § 285 that Congress intended the trial court to exercise its sound discretion in deciding whether a case was sufficiently exceptional to vitiate the normal rule that each party bear his own attorneys’ fees.

Fraud on the Patent Office would certainly be enough to make a case exceptional, “[b]ut conduct short of fraud and in excess of simple negligence is also an adequate foundation for deciding that a patent action is exceptional.” Monolith Portland Midwest Co. v. Kaiser Aluminum and Chemical Corp., 407 F.2d 288, 294 (9th Cir. 1969). The trial court’s findings that plaintiff was dilatory, that he had misled the Patent Office, and that he had failed or refused to meet the specific reasoning and arguments of DCA concerning the infringement issue were more than ample to support a finding of conduct “in excess of simple negligence” and a determination of bad faith on the part of plaintiff in commencing and litigating this suit. We agree with the trial judge that such negligence and bad faith are sufficient to justify classifying the case as exceptional and awarding attorneys’ fees to the defendant. We find no errors in the trial court’s determinations and no abuse of discretion in its award.

In conclusion, we note that the record does not indicate that the trial court has fixed the exact amount of the attorneys’ fees to be awarded to DCA. Hence, we affirm the judgment and order appealed from in all respects but remand the case to the trial court for determination of this amount. Costs of this appeal are awarded to defendant.


author: BUTZNER, Circuit Judge: FIELD, Circuit Judge

text:
    MOORE-McCORMACK LINES, INC., Appellant, v. I.T.O. CORPORATION OF BALTIMORE, Appellee, Secretary of Labor, Amicus Curiae.
    No. 73-2165.
    United States Court of Appeals, Fourth Circuit.
    Argued June 6, 1974.
    Decided Dec. 27, 1974.

      Randall C. Coleman and Thomas C. Lederman, Baltimore, Md. (John T. Ward, Ober, Grimes & Shriver, Baltimore, Md., on brief), for appellant.
    David R. Owen, Baltimore, Md. (Semmes, Bowen & Semmes, Baltimore, Md., on brief), for appellee.
    David M. Cohen, Atty., U. S. Dept, of Justice (Carla A. Hills, Asst. Atty. Gen., Stephen F. Eilperin, Atty., Dept, of Justice, Michael H. Levin, Counsel for App. Litigation, and Louis Weiner, Regional Sol., U. S. Dept, of Labor, on brief), for amicus curiae.
    Before HAYNSWORTH, Chief Judge, and BUTZNER and FIELD, Circuit Judges.
   BUTZNER, Circuit Judge:

Moore-McCormack Lines, Inc., appeals from the dismissal of its third party claim against I.T.O. Corporation, a steve-doring company, in which it sought indemnity for damages paid Joseph L. Wodzenski, a longshoreman injured on one of Moore-McCormack’s ships. Moore-McCormack assigns numerous errors which, with one exception, we find to be without merit. The single assignment of error warranting discussion is the district court’s ruling that the Freedom of Information Act did not require disclosure of a critical paragraph in the Department of Labor’s accident report and the court’s consequent limitation of the examination of the Department’s compliance officer. We conclude that the Department was not entitled to withhold the contested paragraph and that the Rules of Civil Procedure did not bar admission of the evidence. Accordingly, we vacate and remand the case for reconsideration in light of the entire record as supplemented by the excluded evidence.

I

While Moore-McCormack’s vessel was being unloaded, the port vang purchase wire snapped and the lower vang pendant and block fell, striking the longshoreman. The stevedore contends that the vang broke because it was corroded and unable to withstand the stress of unloading. The shipowner claims that improper operation of the winch by one of the stevedore’s employees caused the break. The shipowner settled the longshoreman’s claim and then submitted its third party complaint for indemnity against the stevedore to the court without a jury.

In an effort to prove that the winch operator was at fault, Moore-McCormack subpoenaed the Department of Labor’s compliance officer and the accident report that he had prepared. The Department voluntarily released all of the report except a paragraph which it said contained the compliance officer’s conclusion about the cause of the accident. The Department also released its official agency opinion stating that no violation of pertinent regulations caused or contributed to the accident.

The district court examined the report in camera and admitted into evidence the following “Finding & Facts” which were in the portion of the report released by the Department:

“1. The crib load of quebracho (6.9 & 7.1 tons) was within [safe working load] of gear (see attached ref.).
2. The guy wire that broke was not visibly poor and showed no signs of kinks, broken strands nor dry rot.
3. The winch operator is one of the better ones on the waterfront and has had no accidents on his record.
4. The injured was not in an unsafe position in relation to the load.
5. The positioning of guys, booms and falls were in accordance with good rigging practice and have been used safely since the accident on all sister vessels.
6. The angle of the falls never exceeded 120 degrees as the positioning of booms and the load at time of accident preclude any greater angle from being introduced into the gear.”

The court ruled, however, that the intra-agency exemption to the Freedom of Information Act, 5 U.S.C. § 552(b)(5), authorized the Department to withhold the report’s next paragraph which the Department had deleted from the copies furnished counsel:

“Conclusions:
In [view] of the above, it is concluded that the wire parted under, a sudden shock load that was put on it by hauling on burton wire fall at a time (1st draft off vessel) when the mid-ship guy was still too slack and this transfer of the load from dual falls to a single one caused the port boom to surge inboard until the guy took up abruptly and caused the wire to part.”

Ruling consistently, the district judge limited the examination of the compliance officer to his findings and facts. The court also sustained objections to Moore-McCormack’s questioning the compliance officer about the following comment, although the Department had previously released this part of the report: “The operation was and is done in a safe, reasonable manner; but a possible sudden load surge must be guarded against. Retrain winch operator.”

At the conclusion of the shipowner’s1 case, the district court granted the stevedore’s motion to dismiss under Rule 41(b) of the Federal Rules of Civil Procedure. Relying in part on the Department’s official opinion exonerating the stevedore and noting the absence of evidence that the winch operator had put any undue stress on the gear, the court ruled that the shipowner had failed to prove that the vang broke because the stevedore had breached its warranty of workmanlike service. Specifically, the district court found that the wire was defective at the time of the accident, rendering the vessel unseaworthy. It held that the injured longshoreman was not contribu-torily negligent and that the stevedore had properly rigged and operated the vessel’s gear. The district court’s ruling is amply supported by the record, and had not the contested evidence been excluded, the judgment would be unimpeachable.

II

With exceptions not pertinent to this case, the Freedom of Information Act, 5 U.S.C. § 552(a), requires government agencies to make their records available to any person, unless the Act specifically exempts disclosure. The exemption on which the district court relied, § 552(b)(5), provides:

“(b) This section does not apply to matters that are—
(5) inter-agency or intra-agency memorandums or letters which would not be available by law to a party other than an agency in litigation with the agency.”

In Environmental Protection Agency v. Mink, 410 U.S. 73, 93 S.Ct. 827, 35 L.Ed.2d 119 (1973), the leading case construing exemption (5), the Supreme Court distilled a commonsense, flexible rule from the legislative history and judicial opinions dealing with the privilege of executive agencies to withhold information from their adversaries. The Court held that the exemption authorized an agency to withhold “materials reflecting deliberative or policy-making processes” but required disclosure of “purely factual, investigative matters.” 410 U.S. at 89, 93 S.Ct. at 837.

In the excluded paragraph of the report, the compliance officer neither expressed an opinion nor made a recommendation to his superiors concerning I.T.O.’s violation of any regulation or statute. Notwithstanding the paragraph’s label of “Conclusions,” it contains no more than inferences that are essentially similar to the findings which preceded it. Both parts of the report are investigative and depend on the observation and expertise of the compliance officer, but neither reflects the deliberative processes of decision or policy-making. Under the heading “Finding & Facts,” the compliance officer listed factors which he believed did not cause the accident, while in the paragraph labeled “Conclusions,” he described the sequence of events which he believed did cause the accident. Admission of the paragraph containing the officer’s “Finding & Facts” and exclusion of the paragraph containing his “Conclusions” reflected only a part of his investigation and created an unintended false impression about it. „

Both the facts revealed by an accident investigation and the inferences drawn from the facts may influence the agency’s decisions, but this does not insulate either from disclosure. In Machin v. Zuckert, 114 U.S.App.D.C. 335, 316 F.2d 336, cert. denied, 375 U.S. 896, 84 S.Ct. 172, 11 L.Ed.2d 124 (1963), appeal after remand, 118 U.S.App.D.C. 410, 336 F.2d 914 (1964), at the instance of a party who was suing the manufacturer of a military aircraft, the Court of Appeals directed the district court to examine in camera the investigatory report of Air Force mechanics. It ordered disclosure not only of strictly factual findings but also, over the objection of the Secretary of the Air Force, of “opinions” or “conclusions” the mechanics expressed concerning possible defects in the propellers that might have been due to the negligence of the manufacturer. Machín provides sound precedent although it predates the Freedom of Information Act. The Act was designed to expand, not contract, the information formerly made available to the public.

We do not, of course, suggest that all the material contained in an agency accident report need always be made available to the public, but it bears repeating that “the Act makes disclosure the rule and secrecy the exception.” See Ethyl Corporation v. Environmental Protection Agency, 478 F.2d 47, 49 (4th Cir. 1973). Agencies must carefully observe the distinction Mink draws between exempt and nonexempt intra-agency records. Inferences about the cause of an accident drawn from facts revealed by the investigation, though labeled as opinions or conclusions, are not exempt under the guise of deliberative or policy-making material. All too frequently their suppression will distort the tenor of the document. See generally Note, The Freedom of Information Act and the Exemption for Intra-Agency Memoranda, 86 Harv.L.Rev. 1047 (1973).

Ill

The Department also contends that 5 U.S.C. § 552(b)(7) prohibits disclosure of the investigator’s conclusions. That exemption specifies:

“(7) investigatory files compiled for law enforcement purposes except to the extent available by law to a party other than an agency.”

The legislative history indicates that this exemption is meant to apply to all law enforcement proceedings, not just to violations of the criminal statutes. Wellman Industries, Inc. v. NLRB, 490 F.2d 427 (4th Cir. 1974); H.R.Rep. No. 1497, 89th Cong., 2d Sess., 2 U.S.Code Cong, and Ad.News, 2418, 2428 (1966). However, the bare assertion that the files are for law enforcement purposes is not sufficient to preclude disclosure when no enforcement proceedings are contemplated. Bristol-Myers v. FTC, 138 U.S.App.D.C. 22, 424 F.2d 935, 939 (1970). Instead, exemption must be tested by the Congressional purpose underlying § 552(b)(7) which has been aptly summarized as follows:

“(1) to prevent the premature disclosure of the results of an investigation so that the government can present its strongest case in court, and
“(2) to keep confidential the procedures by which the agency conducted its investigation and by which it has obtained information.”

Disclosure here will offend neither aspect of the legislative purpose. Because no enforcement proceeding is pending or contemplated, disclosure will not prejudice the government. Nor is there any question of endangering government sources or investigative techniques. The excluded paragraph of the report adds nothing on these subjects to the information the Department released. The compliance officer’s observations of facts and the inferences he drew were the origin of both parts of the report. His investigative technique was clearly revealed in the portion of the report the Department furnished the parties. This included information about how the officer learned of the accident, the time and place of the investigation, the names and titles of the people from whom he obtained information, numerous photographs of the ship’s rigging and the broken cable, the officer’s comment that he had found no violations, and his recommendation that the winch operator should be retrained. The excluded paragraph disclosed nothing additional about the sources of the Department’s information or its confidential procedures. We conclude, therefore, that no sound reason exists for applying the investigatory file exemption.

IV

Finally, the Department suggests it can withhold the contested paragraph by virtue of traditional privilege under Rule 26(b) of the Federal Rules of Civil Procedure. We find no merit in this contention. A government agency now has no privilege to withhold information from the public if the Freedom of Information Act requires its disclosure. Consequently, the Department’s claim for exclusion under Rule 26(b) must be viewed as a restatement of its claim for exemption under 5 U.S.C. § 552(b)(5) and (7). Cf. Ethyl Corporation v. Environmental Protection Agency, 478 F.2d 47, 52 (4th Cir. 1973).

The Act requires that all records, except those which by its terms need not be disclosed, should be made available to the public. The Act, however, does not forbid disclosure of any records, so government officials may make public that which it exempts. Disclosure of exempt data is governed by a variety of statutes, rules, and regulations. See generally Davis, The Information Act: A Preliminary Analysis, 34 U.Chi.L.Rev. 761, 766 (1967). Since the Act does not exempt the contested paragraph, we have no occasion in this opinion to consider the effect of Rule 26(b) on the extent of discovery when a record which is exempt under the Act might be produced under some other statute or regulation. It is sufficient for us to hold that Rule 26(b) does not authorize an agency to withhold any records which the Act commands it to disclose.

The judgment is vacated and the ease is remanded for further proceedings consistent with this opinion. Since the case was tried without a jury, there is no need for a full re-trial of the issues. The district court should reconsider its decision in light of the paragraph of the report that was previously excluded and, if needed, the further testimony of the compliance officer. Based on this evidence, the court can make supplemental findings and conclusions. We, of course, express no opinion on the effect that this additional evidence should have on the outcome of the case. Each party shall bear its own costs.

FIELD, Circuit Judge

(concurring and dissenting):

While I agree with the views expressed in parts III and IV of Judge Butzner’s opinion, I think the district judge was correct in ruling that the portion of the compliance officer’s report entitled “Conclusions” fell within the in-tra-agency exemption of the Freedom of Information Act.

To some degree my disagreement with the majority stems from my reading of the report. The purpose of the investigation by the compliance officer was to determine whether Wodzenski’s injury had resulted from the violation of any of the regulations which had been promulgated by the Department of Labor to protect the health and safety of longshoremen. The officer’s report was prepared for the use of the Department and contained the six factual observations upon which it reached the conclusion that the operation had been carried out in a safe and reasonable manner. Upon request the Department disclosed all of the officer’s factual findings and in addition thereto the shipowner received the full investigatory report. This latter report included the following:

“WHAT REMAINS TO BE DONE?— INVESTIGATOR’S COMMENT.
The operation was and is done in a safe, reasonable manner; but a possible sudden load surge must be guarded against. Retrain winch operator.” (Emphasis added).

It would reasonably appear that the compliance officer, having failed to find any regulatory violation, was pointing out to his superiors a possible explanation for the accident with a recommendation that winch operators be retrained to guard against such a contingency in the future. To me this would not reflect the conclusion of the compliance officer that such a load surge did, in fact, cause the wire to part; rather, it was his individual opinion with respect to a possible hazard which he relayed to his superiors in the course of the administrative process.

I am also concerned that implicit in the majority decision is the suggestion that the Freedom of Information Act not only entitles one in the position of the shipowner to opinions appearing in the investigatory file, but requires the official investigator to appear as an expert witness in a private civil action. Such a requirement would effect an unwarranted and disruptive intrusion upon the official duties and responsibilities of these investigators and involve them in private controversies unrelated to official business. Additionally, while it is not too significant in the present case which was tried to the court, it would be most unfair to the opposing party to have such an investigator, bearing the apparent imprimatur of the Department of Labor, testify before a jury with respect to his administrative opinions.

      . See generally Note, In Camera Inspections Under the Freedom of Information Act, 41 U.Chi.L.Rev. 557, 575 (1974).

      . The report reads “in lieu of the above.” We have assumed that the compliance officer meant “in view.” However, if “in lieu” was intended, there can be no question about the similar import of the admitted and excluded paragraphs, and both should have been admitted. Environmental Protection Agency v. Mink, 410 U.S. 73, 93 S.Ct. 827, 35 L.Ed.2d 119 (1973).

      . The wire was examined several times after the accident. A metallurgist testified that a chloride test conducted forty-five days after the break revealed heavy salt contamination in the broken section of wire. In a laboratory experiment made over four months after the accident, a strand of wire broke under a load far less than its nominal strength.

      . However, in another part of the report which the Department voluntarily released, the compliance officer advised his superiors, “As of this writing, no violation of the regulations has been noted.”

      . See Frankel v. SEC, 460 F.2d 813, 817 (2nd Cir. 1972); accord, Aspin v. Department of Defense, 160 U.S.App.D.C. 231, 491 F.2d 24, 29 (1973).

      . Rule 26(b)(1) provides in part: “Parties may obtain discovery regarding any matter, not privileged, which is relevant to the subject matter involved in the pending action .

      . We find it unnecessary to discuss extensively the compliance officer’s role as a witness. Both parties sought his testimony about his findings, and the court allowed limited examination and cross examination on this subject. As we have noted, the court relied in part on these findings in reaching its decision. Fundamental fairness dictates that if either party desires the officer to testify about the excluded paragraph, the court should receive his testimony.

      . 5 U.S.C. § 552(b)(5).

      . The use of the phrase “in lieu of the above” by the compliance officer is consistent with this interpretation, and I find no reason to assume that the officer intended to say “in view of the above” as suggested by the majority.

      . Pilar v. SS Hess Petrol, 55 F.R.D. 159 (D.C.Md.1972); see 29 C.F.R. 1906.5(a) and 1906.6.


author: CELEBREZZE, Circuit Judge.

text:
    Billy Joe STOUT, Petitioner-Appellant, v. UNITED STATES of America, Respondent-Appellee.
    No. 74-1036.
    United States Court of Appeals, Sixth Circuit.
    Jan. 10, 1975.

      Billy Joe Stout, pro se.
    G. P. Gaby, Milligan, Coleman, Fletcher & Gaby, Greeneville, Tenn. (Court-appointed), for petitioner-appellant.
    John L. Bowers, U. S. Atty., Robert E. Simpson, Knoxville, Tenn., for respondent-appellee.
    Before CELEBREZZE and MILLER, Circuit Judges, and O’SULLIVAN, Senior Circuit Judge.
   CELEBREZZE, Circuit Judge.

This is a direct appeal from the District Court’s dismissal of Appellant’s motion under 28 U.S.C. § 2255 (1971), challenging the validity of his conviction of three counts of attempted bank extortion under 18 U.S.C. § 1951 (1970).

Appellant’s trial began October 5, 1972. On October 6, 1972, Appellant withdrew his not-guilty plea and entered a plea of guilty on all three counts of the indictment. The District Court, after thoroughly questioning Appellant as to the plea’s voluntariness, accepted it and sentenced him on November 27, 1972, to three years’ confinement on each count, the sentences to run consecutively. At all times Appellant was represented by retained counsel.

On December 11, 1972, Appellant filed a letter with the District Court, which was treated as a motion for reduction in sentence. The District Court denied the motion on December 15, 1972.

On September 27, 1973, Appellant filed a pro se motion to vacate sentence under 28 U.S.C. § 2255. Counsel was appointed to represent Appellant. On October 10, 1973, the Court granted Appellant an ev-identiary hearing on the sole issue of whether he had been coerced by his retained counsel into entering a guilty plea. On October 26, 1973, the District Court found that the guilty plea was not coerced, dismissed the complaint, and denied Appellant all relief.

Appellant raises two issues on appeal. First he asserts that the District Court erred in determining that his guilty plea was not coerced by his retained counsel. Second, Appellant argues that the District Court erred in not granting him an evidentiary hearing on his allegations that government agents had obtained fingerprint evidence from him by trickery or fraud.

The District Court thoroughly reviewed the facts upon which Appellant’s claim of a coerced guilty plea is based. At the evidentiary hearing Appellant testified that he was assured by his retained counsel that the attorney “. could beat the case on the grounds alone that the FBI violated my rights the day I was picked up. . . .” Appellant testified that after his motion to suppress the evidence of handwriting exemplars taken from him had been denied on the second day of trial, his attorney said, “. . . I’m sorry; I don’t think' I can beat the case. . . .” Appellant further testified that the attorney advised him to change his plea to guilty. Appellant added that the attorney indicated that a guilty plea would be met with a “couple of years probation,” whereas a guilty verdict after a jury trial might prompt the judge to impose the maximum 60-year sentence. Appellant understood these choices and chose to plead guilty.

The attorney testified that he told Appellant that based on his years of experience, all things being equal, and assuming that Appellant had a good record, the Court might be lenient and put Appellant on probation, although the attorney added that he told Appellant that he could give Appellant no assurances about that. The attorney also denied that he advised Appellant to change his plea.

The District Court properly viewed the question of whether Appellant’s plea was coerced to be one of fact. Machibroda v. United States, 368 U.S. 487, 82 S.Ct. 510, 7 L.Ed.2d 473 (1962). The District Court, based on the evidence adduced at the hearing, determined that the attorney’s comments were a mere prediction of the outcome of the case. In the absence of a clearly erroneous finding, we accept this determination by the District Court, which has had the opportunity to assess the credibility of the witnesses. United States v. Creek, 403 F.2d 220 (6 Cir. 1968).

A plea is not rendered involuntary merely because a prediction that a guilty plea will result in a light sentence does not come true. Holland v. United States, 406 F.2d 213, 216 (5th Cir. 1969). See also United States v. Edmo, 456 F.2d 240, 242 (9th Cir. 1972); Swanson v. United States, 304 F.2d 865, 866 (8th Cir. 1972); Domenica v. United States, 292 F.2d 483, 485 (1st Cir. 1961).

Were we to determine that the attorney’s advice was not within the range of competence demanded of attorneys in criminal cases, Appellant’s claim might yet be valid, based on an alleged lack of effective assistance of counsel. See McMann v. Richardson, 397 U.S. 759, 90 S.Ct. 1441, 25 L.Ed.2d 763 (1970); Ray v. Rose, 491 F.2d 285 (6th Cir. 1974); Beasley v. United States, 491 F.2d 687 (6th Cir. 1974). The burden of proof is on Appellant to demonstrate that his attorney’s advice was not within this range. Tollett v. Henderson, 411 U.S. 258, 267, 93 S.Ct. 1602, 36 L.Ed.2d 235 (1973). Appellant did not meet this burden. To the contrary, his attorney’s advice was within the range of competence demanded of him, and the guilty plea must stand.

Appellant has raised the additional issue of whether the District Court erred in denying him an evidentiary hearing on his claim that FBI agents tricked him into putting his fingerprints on the extortion notes.

An inquiry into the merits of this claim would be warranted were it not for the rule that a guilty plea waives the assertion of such claims. As the Supreme Court held in Tollett,

“When a criminal defendant has solemnly admitted in open court that he is in fact guilty of the offense with which he is charged, he may not thereafter raise independent claims relating to the deprivation of constitutional rights that occurred prior to the entry of the guilty plea.” 411 U.S. at 267, 93 S.Ct. at 1608.

See also Reid v. Rose, 493 F.2d 1248 (6th Cir. 1974).

The District Court’s denial of the motion is affirmed.

      . It was noted in Tollett that:
      “A guilty plea, voluntarily and intelligently entered, may not be vacated because the defendant was not advised of every conceivable constitutional plea in abatement he might have to the charge, no matter how peripheral such a plea might be to the normal focus of counsel’s inquiry.” 411 U.S. at 267, 93 S.Ct. at 1608.