author: SIMPSON, Circuit Judge:

text:
    George O. PARKER, Plaintiff-Appellant, v. John J. McKEITHEN, Governor of the State of Louisiana, et al., Defendants-Appellees.
    No. 71-2499.
    United States Court of Appeals, Fifth Circuit.
    Jan. 24, 1974.
    Rehearing Denied Feb. 15, 1974.

      David L. Morgan, Jr., New Orleans, La., for plaintiff-appellant.
    Jack P. F. Gremillion, Atty. Gen., Stanford O. Bardwell, Jr., Baton Rouge, La., for defendants-appellees.
    Paul P. Rutledge, New Orleans, La., for Hartford Accident & Ind. Co.
    Before WISDOM, COLEMAN and SIMPSON, Circuit Judges.
   SIMPSON, Circuit Judge:

George O. Parker, the plaintiff below appeals from the entry of what was styled below as a summary judgment in favor of the appellees, McKeithen and others. Decision was withheld to await the result of other litigation and the appeal is now ripe for our decision. In our view, the order entered below amounted to a dismissal for failure to state a claim, an erroneous disposition. Since summary judgment is now a proper disposition, we vacate the original judgment below and remand for the entry of summary judgment upon new and independent grounds.

The suit by Parker was based on injuries received by him while an inmate of the Louisiana State Penitentiary at Angola, Louisiana. Named as defendants were the state and numerous Louisiana State officials ranging from Governor McKeithen to the Warden at Angola. Suit for damages in excess of one million dollars was brought under the federal civil rights, Title 42 U.S.C. Secs. 1981 and 1983 et seq., with jurisdiction claimed under Title 28 U.S.C. Secs. 1331 and 1343. The complaint charged that* due to the gross negligence of the prison officials acting under color of state statutes, usages and customs, Parker was deprived of his Eighth Amendment right to be free from cruel and unusual punishment and his Fourteenth Amendment right to equal protection of the laws.

The underlying facts are as follows. On September 15, 1969, the date of his injury, Parker was a medium security inmate in Camp H. of the Louisiana State Penitentiary at Angola. Counting time allowed for good behavior, Parker was due to be released from Angola less than a week later, September 21, 1969. On the morning of September 15th, inmate Willie Edmonson, also billeted in Camp H, made his way from the second floor of the building in which he and Parker were domiciled to Parker’s bed on the first floor. Parker was asleep. Edmonson stabbed Parker in the abdomen several times with a homemade knife, inflicting serious injuries. Parker was hospitalized at the Earl K. Long Hospital at Baton Rouge for two months.

The original complaint below alleged that Parker’s stabbing by Edmonson was the result of gross negligence on the part of prison officials in that: (1) the officials were aware that inmates at Angola — and Edmonson in particular— made and were regularly in possession of various types of weapons, including knives similar to the one used by Ed-monson on Parker, but failed to conduct inspections therefor and failed to maintain protective safeguards to prevent their manufacture; (2) prison officials were aware that Edmonson was a violent person with a record of- prior attacks on fellow inmates; (3) prison officials were aware that Edmonson had made specific threats against Parker shortly before the date of the attack; and (4) prison officials had refused to isolate Parker from Edmonson and other inmates but permitted him to remain in an open type dormitory.

Defendants moved for summary judgment alleging that Parker had not presented a substantial federal claim and pointing out that he had filed a suit identical in all respects save the allegations of violations of federal law in Louisiana state court. Following a hearing on the motion, summary judgment was granted as to all defendants, written reasons therefor being assigned by opinion-order.

The district court granted summary judgment in favor of the Governor, Mc-Keithen, C. C. Aycock, President Pro Tempore of the state senate and Lieutenant Governor, and John S. Garrett, Speaker of the House of Representatives on the ground of their immunity from suit for acts or omissions done within the sphere of legitimate executive or legislative activities. As to the Warden, Henderson, the Assistant Warden, Hoyle, and the Deputy Warden, Dees, the district judge asserted that, although since Monroe v. Pape, 1961, 365 U.S. 167, 81 S.Ct. 473, 5 L.Ed.2d 492, courts have differed as to whether unintentional negligent conduct under color of state law will support a claim under Sec. 1983, he followed the view that under exceptional circumstances, unintentional conduct by prison officials may support such a claim. However, he continued, Parker had failed to state such a claim because he alleged only “an isolated incident of negligent failure to protect.” Additionally, he considered himself bound by a federal “hands off” policy explicated in numerous cited eases, of refusing to review matters of prison administration, “including the discipline, treatment and care of those confined” unless “exercised in such a manner as to constitute clear abuse or caprice upon the part of prison officials”, citing Williams v. Field, 9 Cir. 1969, 416 F.2d 483, cert. denied, 1970, 397 U.S. 1016, 90 S. Ct. 1252, 25 L.Ed.2d 431. He found nothing in the record to indicate bad faith or oppressive motive on the part of the defendant prison officials in failing to protect Parker, and hence no violation of Eighth or Fourteenth Amendment rights.

Our review starts with noting that we are not bound by the label which the district court attached to its action. Tuley v. Heyd, 5 Cir. 1973, 482 F.2d 590. As in that ease, the district court here erroneously labeled as a summary judgment what was in fact a dismissal, either for failure to state a claim upon which relief could be granted, F.R.Civ.P. Rule 12(b)(6), or alternatively for reasons apparently based on principles of federal-state comity. We treat the district court’s order as a dismissal in our analysis.

We consider first the district court’s ruling that failure to allege “more than an isolated incident of negligent failure to protect” provided grounds for dismissal under F.R.Civ.P. Rule 12(b)(6). The district court cited no authority for such a test of the sufficiency of a complaint under Sec. 1983, and we know of none. Indeed, there are several cases from this Circuit in which claims under Sec. 1983, alleging violation of Eighth Amendment rights arising from negligence of state officials have been recognized. We hold that a dismissal in the instant case for failure to state a claim under Sec. 1983 was in error, and the judgment of the district court based on those grounds must be vacated.

We next consider the correctness of the district court’s action in dismissing the suit on the further basis that federal courts prefer to abstain on grounds of comity from reaching the merits of a challenge to the acts of state prison officials. While it is true that federal courts are usually reluctant to interfere in matters of prison administration, Sostre v. McGinnis, 2 Cir. 1971, 442 F.2d 178, 191, cert. denied, 404 U.S. 1049, 92 S.Ct. 719, 30 L.Ed.2d 740, cert. denied, Oswald v. Sostre, 405 U.S. 978, 92 S.Ct. 1190, 31 L.Ed.2d 254, it can no longer be correctly asserted that the federal courts are unwilling in all situations to review the actions of state prison administrators to determine the existence of possible violations of constitutional rights. Anderson v. Nosser, supra, Roberts v. Williams, supra, Whirl v. Kern, supra. For this reason we disapprove also the action of the district court to the extent that it can be considered a dismissal on abstention grounds.

In trying to determine what disposition is now to be made of this appeal, we note first that the plaintiff-appellant has sought and received a final adjudication of the question of negligence on the part of prison officials in a separate suit maintained in the courts of the State of Louisiana, Parker v. State, 1971, 19th Judicial District Court (June 29, 1972, Nos. 143, 418) aff’d, 1972 La. App., 261 So.2d 364, aff’d 1973, La., 282 So.2d 483, on rehearing, La.1973, 282 So.2d 488, cert. denied - U.S. -, 94 S.Ct. 724, 38 L.Ed.2d 550 [No. 73-597, 42 U.S.L.W. 3552, Dec. 10, 1973], filed 42 U.S.L.W. 3227 (No. 73-597, Oct. 4, 1973). In the state courts the decision was against the plaintiff on the question of negligence. The trial court applied the test earlier established in St. Julian v. State, La.App.1957, 98 So.2d 284, 285, for determining whether prison officials have been negligent in allowing prison inmates to inflict harm upon one another:

The general rule gathered from the cases is that in order to hold the State or the employees of a state who have charge of a prison liable for injury to one inmate inflicted by another inmate, there must be knowledge on the part of such officers in charge that such injuries will be inflicted, or good reason to anticipate such, and following that, there must be showing of negligence on the part of these officials in failing to prevent the injury. (Citing cases).

The state trial court found insufficient the plaintiff’s evidence that prison officials knew or should have known that Parker was to be stabbed by Edmonson and dismissed plaintiff’s suit.

On appeal, the Louisiana Court of Appeals affirmed the trial court. The court of appeals recognized that prison officials had been informed of the threats made by Edmonson against Parker, but noted that such threats were commonplace in the compound in which Parker was an inmate. The court felt compelled to draw a distinction between mere knowledge, of the existence of threats and the existence of actual danger of execution of the threat. The court of appeals found that the trial court had not erroneously concluded that Edmonson’s threat against Parker was properly treated by prison officials as little more than an idle threat by a temporarily jealous prisoner with homosexual tendencies against a male paramour with like proclivities. Parker was himself known to have violent tendencies since he was serving a prison term for manslaughter in the fatal stabbing of a male paramour. The population of Camp H was composed of similar prisoners and was constantly a source of petty quarrels, jealousies, bickerings and threats of various kinds. The court mentioned other grounds for upholding the decision of the trial court, inter alia, the fact that, upon being apprised of Edmonson’s threats, two prison officers made shakedown searches of . Edmonson and his bunk area to determine whether Edmonson was in possession of any weapons.

The Louisiana Supreme Court affirmed the decisions below, again citing the test established in St. Julian v. State, supra, as controlling. The Supreme Court found that the prison officials had taken reasonable measures, including the search of Edmonson and the counselling of both prisoners, to prevent harm to Parker. On rehearing, the Louisiana Supreme Court adhered to its original opinion. 282 So.2d 488.

We must consider, then, the effect, if any, which the litigation of the issue of negligence in the state courts of Louisiana is to have upon the determination of the plaintiff-appellant’s negligence-based Sec. 1983 suit in the federal courts. As this court noted in Hyman v. Regenstein, 5 Cir. 1958, 258. F.2d 502, 510, cert. denied sub nom., Hyman v. Continental Illinois National Bank, 1959, 359 U.S. 913, 79 S.Ct. 589, 3 L.Ed.2d 575: “It, of course, is well settled law that a fact decided in an earlier suit is conclusively established between the parties and their privies, provided it was necessary to the result in the first suit.” This is merely a statement of the doctrine of collateral estoppel by judgment more fully enunciated by our citation, in Hyman v. Regenstein, supra, to American Jurisprudence, Judgments, Section 371:

“ ‘It is a fundamental principle of jurisprudence that material facts or questions which were in issue in a former action, and were there admitted or judicially determined, are conclusively settled by a judgment rendered therein, and that such facts or questions become res judicata and may not again be litigated in a subsequent action between the same parties or their privies, regardless of the form the issues may take in the subsequent action, whether the subsequent action involves the same or a different form of proceeding, or whether the second action is upon the same or a different cause of action, subject matter, claim, or demand, as the earlier action. In such cases, it is also immaterial that the two actions are based on different grounds, or tried on different theories, or instituted for different purposes, and seek different relief. * * * ’ ” (Emphasis supplied)

We noted further in Hyman, supra, the potential dangers inherent in the doctrine of collateral estoppel, e. g., its “loose” application “to subsequent litigation having such a tenuous connection with the original controversy that application of the doctrine would work an injustice.” 258 F.2d at 510. Thus we stated a limitation on the applicability of the doctrine:

“collateral estoppel by judgment is applicable only when it is evident from the pleadings and record that determination of the fact in question was necessary to the final judgment and it was foreseeable that the fact would be of importance in possible future litigation.” Id. at 511.

Applying the doctrine of collateral estop-pel to the situation in the instant case, with due regard for its limitations, we think it is clear that determination of the question of negligence was the fundamental issue in the state court litigation. Aside from the question of damages, it was the only issue in the state courts. Determination of the issue of negligence was necessary to the judgment in the state court proceedings.

The state district court concluded that Parker had introduced insufficient evidence to show fore-knowledge on the part of prison officials that Parker was to be attacked by Edmonson. Under the test established in St. Julian v. State, supra, a showing of knowledge was the necessary prerequisite to proof of negligence. Thus, failure to prove knowledge is fatal to proof of negligence. Where does this determination leave Parker’s federal claim based on Sections 1981 and 1983?

In his complaint below, Parker alleged:

that the overall circumstances as herein alleged constitute gross negligence on the part of the State of Louisiana, its officials, the defendants, and all those persons associated with said prison and said persons are responsible unto petitioner for any and all injuries sustained while he was assigned and confined to said prison .

This quote manifests that Parker’s civil rights violation claim is premised upon his allegation that the defendants were grossly negligent in failing to protect him from being stabbed by Edmonson. If the defendants were not negligent, Parker’s Section 1981-1983 claims fail. It is at this juncture that the doctrine of collateral estoppel by judgment assumes control. The factual question of negligence was fully presented to the state courts, and Parker failed to introduce even sufficient evidence to prove the threshold element of knowledge, much less prove that the defendants were negligent. The state court thereupon dismissed Parker’s suit with prejudice. We hold that the doctrine of collateral estoppel by judgment operates to prevent Parker from relitigating the issues of negligence in the federal courts. Hyman v. Regenstein, supra. The final decision of the courts of the State of Louisiana that the defendants did not have the fore-knowledge essential to a finding of ■ their negligence estops Parker from litigating the question of negligence as a prerequisite to recovery on his suit under Title Section 1981 and 1983 of Title 42 U.S.C.

Having treated the order of the district court as a dismissal rather than as a granting of summary judgment for the defendants, we vacate that order, and remand to the district court with directions that summary judgment be entered for the defendants on the grounds that the plaintiff is collaterally estopped by the judgment in his suit in state court from raising the essential issue of negligence in the court below.

Vacated and remanded with directions.

      . The named defendants were: John J. Mc-Keithen, Governor of the State of Louisiana; C. C. Aycoek, Lt. Governor of the State of Louisiana, and President Pro Tempore of the Louisiana Senate; John S. Garrett, Speaker of the Louisiana House of Representatives ; the State of Louisiana, through the State Board and/or Department of Corrections ; Louis M. Sowers, Director of the Louisiana Department of Corrections; C. Murray Henderson, Warden of the Louisiana State Penitentiary at Angola, Louisiana; Lloyd W. Hoyle, Assistant Warden of the Louisiana State Penitentiary at Angola; Hayden J. Dees, Deputy Warden of the Louisiana State Penitentiary at Angola; The Hartford Accident and Indemnity Insurance Company, insurer of Louis M. Sowers, Hayden J. Dees, and Lloyd W. Hoyle; and Fireman’s Fund Insurance Company, insurer of C. Murray Henderson and Willie Edmonson (the inmate wlm physically attacked Parker causing the injuries of which he here complains) .

      . Made expressly applicable to the states through the Due Process Clause of the Fourteenth Amendment by Robinson v. California, 1962, 370 U.S. 660, 82 S.Ct. 1417, 8 L.Ed.2d 758 which cited dictum from an earlier Supreme Court case originating in the courts of Louisiana, State of Louisiana ex rel. Francis v. Resweber, 1947, 329 U.S. 459, 463, 67 S.Ct. 374, 376, 91 L.Ed. 422, 426.

      . The district court’s opinion and the appellate briefs contain only sparse factual recitals. For this reason we have relied in part upon the Stipulation of Facts cited by the Louisiana Court of Appeal in Parker v. State, La.App.1972, 261 So.2d 364, 366-367, aff’d, La.1973, 282 So.2d 483, cert. denied, - U.S. -, 94 S.Ct. 724, 38 L.Ed.2d 550 [No. 73-597, 42 U.S.L.W. 3352, Dee. 10, 1973], a suit arising out of the same injury as the instant suit filed in the state district court on July 20, 1970, some two months prior to the filing of suit in the court below.

      . Citing the following cases: Tenney v. Brandhove, 1951, 341 U.S. 367, 71 S.Ct. 783, 95 L.Ed. 1019; Martone v. McKeithen, 5 Cir. 1969, 413 F.2d 1373, and Parine v. Levine, E.D.Mich.1967, 274 F.Supp. 268.

      . Cooper v. Pate, 378 U.S. 546, 84 S.Ct. 1733, 12 L.Ed.2d 1030 (1964) ; Hughes v. Noble, 295 F.2d 495 (CA 5-1961) ; Stiltner v. Rhay, 371 F.2d 420 (CA 9-1967) ; Snow v. Gladden, 338 F.2d 999 (CA 9-1964) ; Schack v. State of Florida, 391 F.2d 593 (CA 5-1968) ; Granville v. Hunt, 411 F.2d 9 (CA 5-1969) ; Hess v. Blackwell, 409 F.2d 362 (CA 5-1969) ; Willis v. White, 310 F.Supp. 205 (ED La. 1970).

      . Roberts v. Williams, 5 Cir. 1971, 456 F.2d 819, Whirl v. Kern, 5 Cir. 1969, 407 F.2d 781. On the question of negligent deprivation of Eighth Amendment rights, compare the majority position in Roberts, supra, with this writer’s special concurrence in that same opinion. With adequate pendent Mississippi tort jurisdiction, I thought it was unnecessary to decide the Eighth Amendment question, as Judge Nichols did for the majority. See further the panel opinion in Anderson v. Nosser, 5 Cir. 1971, 438 F.2d 183 and the opinion, on rehearing en banc, 5 Cir. 1972, 456 F.2d 835; cert. denied 1973, sub nom. Nosser v. Bradley, 1972, 409 U.S. 848, 93 S.Ct. 53, 34 L.Ed.2d 89. The charges as to the Mississippi prison officials involved in Nosser were as to intentional, not negligent acts, but the opinion is significant as reflecting the views of all the then active judges of this circuit as to relief upon Eighth Amendment grounds for mistreatment by prison officials. Nosser dealt with alleged 'inhuman treatment accorded civil rights demonstrators arrested in Natchez, Mississippi and transferred to Parch-man Penitentiary under a state statute because of overcrowded conditions in the Natchez jail. The panel opinion found that the prison treatment of these arrestees violated the cruel and inhuman punishment provisions of the Eighth Amendment. While Judge Bell’s en banc opinion for .the majority “pretermitted the question of Eighth Amendment violation” and based its decision on Fourteenth Amendment due process grounds, seven other active judges of the court joined this writer’s special concurrence, 456 F.2d at p. 842, making a total of eight active judges, in asserting that “I would decide forthrightly that no violation of Eighth Amendment rights warranting the direction of a verdict as to liability was made out below, and definitely disapprove the panel decision to this effect,” with a footnote citation to my special concurrence in Roberts v. Williams, supra. If this position may be taken as approved by a majority of active judges of this court, a claim alleging as here a violation of Eighth Amendment rights resulting from the gross negligence of state prison officials would have at least colorable validity (as the legal equivalent of intentional acts) in considering the propriety of the dismissal below in the instant case.

      . In applying the doctrine of collateral estop-pel by judgment in this case, we are not unmindful of the unsettled nature of the law regarding the respect to be accorded state court rulings in subsequent federal court proceedings. See Vestal, Res Judicata/Preelusion by Judgment: The Law Applied in Federal Courts, 66 Mich.L.Rev. 1723, 1734, nl 45 and ■accompanying text. In particular, there appears to exist some difference of opinion whether state court decisions are to be accorded force in the federal courts under the doctrine of collateral estoppel by judgment or under the provisions of Title 28 U.S.C. Section 1738, an expansion of the “Full Faith and Credit” provision of Article IV of the United States Constitution. Section 1738 states:
      Such Acts, records and judicial px-oceedings or copies thereof (referring to the States), so authenticated, shall have the same full faith and credit in every court within the United States and its Territories and Possessions as they have by law or usage in the courts of such State, Terx-itory or Possession from which they are taken.
      We intimate no opinion as to the relative merits of one ground over the other, but rely on the doctrine of collateral estoppel because prior precedent in this circuit approves the doctrine. Hyman v. Regenstein, supra, text.
      At the same time we note the existence of a distinction between the factual situation in the instant case and that in Hyman v. Re-genstein. Hyman concerns the effect to be given the decision of a Coloreado state court by a Florida federal district court. We are concerned here with the effect to be accorded by a federal district coux't sitting in Louisiana to decisions of the courts of the State of Louisiana. No reason or rule of policy exists to our knowledge why the rule applied in Regen-stein to out-of-state judgments should not apply with equal force to in-state judgments, and we proceed upon that basis.

      . We do not review the decision below as to the executive and legislative immunity of the Governor, President Pro Tempore of the Senate and Lieutenant Governor, and Speaker of the House of Representatives, we vacate the judgment below in its entirety. The appellant’s brief does not address itself specifically to the question of executive immunity. It speaks rather in terms of negligence and of the governor’s responsibility for the acts of prison officials, and argues that the granting of summary judgment motions as to all defendants was improper because the question of negligence remained to be determined.
      The appellees’ brief, page 12, notes the lack of clarity in appellants’ brief, and says, assuming arguendo that the appellant is continuing to assert the liability of the governor and the members of the Louisiana legislative bodies for the harm he suffered, that the appellant must fail on the basis of the doctrines of executive and legislative immunity.
      We need not enter this thicket, inasmuch as summary judgment is directed to be entered for all defendants under our mandate.
      The question of the State of Louisiana’s being amenable to suit we likewise leave unanswered in these proceedings. In the state court suit appellant Parker cited House Concurrent Resolution No. 215 (17) and (19) of the Regular Session of the 1970 Louisiana Legislature as authorizing that action. Whether that legislative waiver of sovereign immunity is broad enough to permit this federal action to include the State of Louisiana as a defendant is not argued before us by either brief. Once again, we see no need to undertake this perhaps interesting but wholly unnecessary determination. The summary judgment to be entered below is directed to be as to the entire cause of action asserted against any and all defendants.


source: Caselaw Access Project

author: SNEED, Circuit Judge:

license: Public Domain

text:
    LA RAZA UNIDA OF SOUTHERN ALAMEDA COUNTY, etc., et al., Appellees, v. John VOLPE, Secty. Transportation, etc., et al., Appellants.
    Nos. 72-1059, 72-1111.
    United States Court of Appeals, Ninth Circuit.
    Nov. 29, 1973.

      James L. Browning, U. S. Atty., Donald M. Velasco, Dept, of PuMic Works, San Francisco, Cal., for appellants.
    Mario Obledo, Mexiean-American Legal Defense Fund, J. Anthony Kline (argued), Chief Counsel, San Francisco, Cal., for appellees.
    Before CHAMBERS, HUFSTEDLER and SNEED, Circuit Judges.
   OPINION

SNEED, Circuit Judge:

This is an appeal from an order granting the plaintiffs’ motions for a preliminary injunction restraining the defendants including the California Highway Commission, from proceeding with State Project 238, a proposed highway of 14 miles that will pass through three California cities, Hayward, Union City, and Fremont. The purpose of the injunction is to secure compliance by the California Highway Commission with 42 U.S.C. §§ 4622-4655, Uniform Relocation Assistance and Real Property Acquisition Policies for Federal and Federally Assisted Programs; 23 U.S.C. § 502(3), Federal-Aid Highway Act of 1968; 49 U.S.C. § 1653(f) of the Department of Transportation Act of 1966; 23 U.S.C. § 138, Federal-Aid Highway Act of 1968; and all Federal regulations promulgated under each of these provisions.

The Commission’s position on this appeal is that these provisions are applicable only in the sense that compliance is necessary in order to obtain federal funding. Under this interpretation the Commission would have an option to obtain federal funding by complying with these provisions. Failure to comply merely would deprive the State of federal funds. The determination whether the condition precedent to federal funding had occurred would be appropriate only at the final state of the approval process outlined in 23 U.S.C. § 106(a), the so-called “construction approval.” As a consequence, the Commission argues, it would have been appropriate for the District Court to have entered a declaratory judgment that the statutes here involved were applicable if federal funds are to become available and to have enjoined the Federal Government from making funds available to the project “until and unless the requirements are met and approved by the Court,” (Appellant’s Reply Brief, p. 5.) Under no circumstances should a state be enjoined to comply. The carrot of federal funding, not the stick of an injunction, insists the Commission, is the only compulsion authorized by the applicable statutory and regulatory scheme.

We do not agree with the Commission’s interpretation of these provisions. The general purpose of these statutes and regulations is to assure that projects for which federal funding might become available are carried out in a way that will afford the protection both to those displaced that 42 U.S.C. §§ 4622-4655 provides and to the environment, including public parks, that is commanded by 49 U.S.C. § 1653(f) and 23 U.S.C. § 138. The effectuation of this purpose makes necessary both the carrot and the stick. Without the stick there will be fewer instances in which compliance with these provisions will be achieved. This is true because the Commission under its interpretation would be able to secure the program approval contemplated by 23 U.S.C. § 105 for a greater number of projects than could be funded by the sums apportioned and made available pursuant to 23 U.S.C. § 104 and § 106(a) and to qualify for actual funding only those projects with respect to which compliance proved to be relatively easy and inexpensive.

We believe that Judge Peck-ham correctly interpreted the applicable statutes and regulations to require compliance by the Commission with those provisions providing relocation assistance and protecting the environment “before location approval, [and] prior to federal funding of a project.” La Raza Unida v. Volpe, 337 F.Supp. 221, 231 (N.D.Calif.1971). Moreover, it is our view that it is much too late for the State to avoid compliance by withdrawing State Project 238 from the Federal-aid system described in 23 U.S.C. § 103. Whether a withdrawal for this purpose would be effective if attempted subsequent to the program approval of 23 U. S.C. § 105 but prior to obtaining the location approval, which is required by-Policy and Procedure Memorandum, 20-8, Bureau of Public Roads, U. S. Department of Transportation (1969), is not before us. For present purposes it is enough to observe that such withdrawal must be clear and unambiguous and pri- or to causing significant harm either to those who might be displaced by the project or to the environment in a manner inconsistent with the intent of 49 U.S.C. § 1653(f) and 23 U.S.C. § 138.

Under the facts of the case before us, we see no reason to disturb the.preliminary injunction ordered by the District Court. It is consistent with the position taken by this Circuit in Lathan v. Volpe, 455 F.2d 1111 (9th Cir. 1971).

Affirmed.

      . Repealed by Pub.L.No.91-646, Title II, § 220(a) (10), 84 Stat. 1903.

      . The preliminary injunction which is the subject of this appeal provides in full:
      1. It is hereby ordered, adjudged, and decreed, that pending the further Order of the Court, state defendants, their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them or any of them are, each and all, hereby restrained and enjoined from:
      (a) Acquiring any further real property in the Cities of Hayward, Union City, and Fremont, California, for right-of-way for the Route 238 Project; and
      (b) Attempting to remove, threatening to remove, or acting to remove (by initiating contacts or making solicited or unsolicited offers or otherwise) any resident of premises located on or near proposed right-of-way for the Route 238 Project; and
      (c) Undertaking any other actions whatsoever in connection with the Route 238 Project that would materially affect the environment.
      2. It is further hereby ordered, adjudged and decreed, that commencing immediately, and thereafter until the further order of this Court, defendant Yolpe, his officers, agents, servants, employees, attorneys, and all persons in active concert with them or any of them, each and all, are hereby restrained and enjoined from continuing to accord or to accord any approval to the Route 238 Project or plans, maps, or other documents connected therewith.
      3. It is further hereby ordered, adjudged and decreed, that no person restrained and enjoined by this Preliminary Injunction shall undertake to avoid compliance by any indirection.
      4. Any person enjoined by this Preliminary Injunction may move for termination upon showing that Federal and State defendants have fully and reasonably complied with Sections 205 and 210 of the Uniform Relocation Assistance and Land Acquisition Policies Act of 1970, P.L. 91-646, 84 Stat. 1894; Section 502(3) of the Federal-Aid Highway Act of 1968, 23 U. S.O. § 502(3) ; Section 4(f) of the Department of Transportation Act of 1966, 49 U.S.C. § 1653(f) ; Section 138 of the Federal-Aid Highway Act of 1968, 23 U. S.C. § 138; and all Federal Regulations promulgated under each of said statutes.
      La Raza Unida v. Volpe, 337 F.Supp. 221, 234 (N.D.Cal., 1971).

      . The Federal-Aid Highway Act, 23 U.S.C. § 101 et seq., establishes a federal grant-in-aid program whereby the federal government, through the Federal Highway Commission, [FHWA], will assist in funding the construction of highways on the interstate, primary and urban systems of federal-aid highways provided that the State complies with the standards set forth in the Act. The program is administered through the FHWA’s approval of “projects” submitted by the states to obtain federal reimbursement ; and funding is ultimately dependent upon the successful completion of a series of successive stages at which FHWA reviews and approves the plans for each project which has been submitted.
      Two of. the approvals upon which funding depend are statutorily mandated. These are known as “program approval”, 23 U.S.C. § 105(a), and “approval of plans, specifications and estimates” or “P S & E approval”, 23 U.S.C. § 106(a). Program approval, which is to occur “as soon as practicable after the apportionments for the Federal-aid systems have been made for any fiscal year”, 23 U.S.C. § 105(a), and which is necessary to enable the State to receive any reimbursement for a project, does not impose on the federal government a contractual obligation to pay its share of the project’s costs. It is not until there has been “P S & E” approval, which is normally deferred until the state is actually ready to receive reimbursement funds, that any binding obligation arises. 23 U.S.C. § 106(a).
      In conjunction with the required statutory approvals, there are three additional approvals which are mandated by the applicable administrative regulations. Under 23 U.S.C. § 128(a), the state highway department must certify that it has given formal consideration to “the social, economic, environmental, and other effects” of a proposed route and its alternative possibilities. In order to meet this requirement, where the proposed highway is to pass through a city FHWA regulations require the State to hold a public hearing — called the “corridor hearing” — on the location of the route. Assuming that the State has held such a hearing, and fully complied with all other “applicable laws and regulations”, Policy and Procedure Memorandum (PPM) 20-8 (January 14, 1969), then “location approval” is accorded the project. The State must then hold a second hearing — called the “design hearing”- — concerning the proposed engineering design for the project. Again, the State must demonstrate compliance with all federal laws and regulations before “design approval” is given. Both location approval and design approval follow program approval of the project but must occur before P S & E approval is given under Section 106.
      At some point, prior to P S & E approval, the State is required, inter alia, to give “satisfactory assurances” that it can provide prospective displacees with adequate relocation housing and payments. 23 U.S.C. § 502. See also Information Memorandum 80-1-68. In addition, it must also prepare and submit an environmental impact statement as required by the National Environmental Policy Act of 1969. 42 U.S.C. § 4321 et seq. See Lathan v. Volpe, 455 F.2d 1111 (9th Cir. 1971). If these requirements are met, together with all other applicable laws and regulations, then P S & E approval is given under 23 U.S.C. § 106 and the federal government becomes bound to contribute to the project.
      Generally P S & E approval leads to right-of-way acquisition and preparation for construction. Assuming that no problems arise, the final FHWA approval, known as “authorization to proceed with work approval”, PPM 21-1 (April 15, 1950), is then received and actual construction of the project begins.


author: PER CURIAM.

text:
    UNITED STATES of America, Plaintiff-Appellant, v. Barthell WHITE, Defendant-Appellee.
    No. 73-1301.
    United States Court of Appeals, Sixth Circuit.
    Argued Oct. 2, 1973.
    Decided Dec. 13, 1973.
    Kenneth J. Haber, A.sst. U. S. Atty., Detroit, Mich., for plaintiff-appellant; Ralph B. Guy, Jr., U. S. Atty., Detroit, Mich., on brief.
    William D. Haynes, Detroit, Mich., for defendant-appellee.
    Before McCREE, and MILLER, Circuit Judges, and KRUPANSKY, District Judge.

      The Honorable Robert B. Krupansky, United States District Judge for the Northern District of Ohio, sitting by designation.

   PER CURIAM.

Plaintiff-appellant has appealed from an order of the district court granting defendant-appellee’s motion to suppress nine counterfeit notes seized from the glove compartment of his automobile. The district court held there was no justification for the Government’s failure to obtain a warrant to search his automobile.

In substance the facts as stipulated reflect that officers, alerted by a cashier in a K-Mart store, arrested Barthell White and charged him with possession of counterfeit notes. Upon searching the defendant, the officers found and seized a counterfeit note in addition to a note which had been given to the cashier, and keys to an Oldsmobile automobile.

Questioned by a U.S. Secret Service agent, the defendant recited two versions as to how he arrived at the K— Mart shopping center, stating first that a friend drove him there and secondly, that his wife drove him to the store. During the interrogation, a woman called the police station, identified herself as defendant’s wife, and inquired as to the whereabouts of the family automobile.

The police thereafter located a 1971 Oldsmobile automobile with license plates registered to the defendant in the K-Mart parking lot. The Secret Service agent entered the automobile and opened the glove compartment, the Government contends, to ascertain whether this was in fact the defendant’s vehicle. The agent found additional counterfeit notes and seized both the automobile and the notes.

The Government contends that the vehicle was lawfully seized pursuant to 49 U.S.C. § 781 et seq. as an instrumentality of a crime, and that the agent seizing the automobile was attempting only to identify its ownership rather than looking for contraband, thereby acting reasonably under the Fourth Amendment in seizing the notes.

In view of the defendant’s evasiveness in responding to questions advanced by the officers concerning his method of travel to the K-Mart and the call from his wife inquiring about the automobile, the Court is of the opinion that the officers had reasonable ground to believe the automobile had been used to transport contraband, if only the two counterfeit notes which were taken from the person of the defendant immediately after his arrest; consequently, the officers had probable cause to seize the automobile as the instrumentality of a crime pursuant to 49 U.S.C. §§ 781(a), (b)(3), and 782. Carroll v. United States, 267 U.S. 132, 160-162, 45 S.Ct. 280, 69 L.Ed. 543 (1925); United States v. Stout, 434 F.2d 1264 (10th Cir. 1970); United States v. Francolino, 367 F.2d 1013, 1018-1023 (2nd Cir. 1966), cert. denied, 386 U.S. 960, 87 S.Ct. 1020, 18 L.Ed.2d 110 (1967); Sirimarco v. United States, 315 F.2d 699, 701 (10th Cir. 1963), cert. denied, 374 U.S. 807, 83 S.Ct. 1696, 10 L. Ed.2d 1032 (1963).

Existing authority supports the legal proposition that probable cause alone, without a warrant, is sufficient to justify the seizure of the automobile here in issue pursuant to 49 U.S.C. §§ 782 and 783. In Sirimarco v. United States, supra, the Court of Appeals for the Tenth Circuit upheld the warrantless seizure of defendant’s automobile and subsequent search thereof, where the federal officer had probable cause to believe that the automobile had been used in the transportation of counterfeit notes. The Court held in part:

The existence of probable cause alone is not justification for a search without warrant. . . . But the existence of probable cause is justification for the seizure of a vehicle which has been used to transport or facilitate the transportation or possession of contraband so designated by statute. Carroll v. United States, 267 U.S. 132, 45 S.Ct. 280, 69 L.Ed. 543; Brinegar v. United States, 338 U.S. 160, 69 S. Ct. 1302, 93 L.Ed. 1879.
* * * * -X- *
We have no doubt that a vehicle which has been lawfully seized pursuant to the mandate of sec. 783 may be searched without a warrant or consent of possessor or owner and that evidence so discovered may be properly admitted in prosecutions charged under 18 U.S.C.A. § 472. (citations om-mitted) 315 F.2d at 701.

Equally applicable to the instant case are the pronouncements of the Third Circuit Court of Appeals in United States v. Troiano, 365 F.2d 416, 418-419 (3rd Cir. 1966), cert. denied, 385 U.S. 958, 87 S.Ct. 396, 17 L.Ed.2d 303 (1966), which involved the warrantless seizure of counterfeit postage stamps and the automobile containing them:

[B]oth the stamps and the car containing them were contraband, subject as such to seizure without warrant and over the possessor’s objection.
# * * * *
True, such seizure must be supported by probable cause to believe the vehicle contains contraband. In these circumstances, Troiano’s delivery of the car keys with consent to the opening of the trunk and an examination of its contents simplified the agents’ task but was not essential to their right to seize the car and stamps without a search warrant. (citations and footnotes omitted), (emphasis added).

The Court in Troiano followed the decision in Sirimarco, supra, and approved an agent’s authority to seize a vehicle including the contraband found therein without a search warrant if probable cause existed to believe the vehicle contained contraband. See also, United States v. Young, 456 F.2d 872, 875 (8th Cir. 1972); United States v. Stout, supra, 434 F.2d at 1267.

In view of the foregoing, we conclude that the initial seizure of the automobile without a warrant when such seizure is supported by probable cause is valid under law.

The subsequent search of the automobile and seizure of counterfeit bills from the glove compartment therein come within the pronouncements of the United States Supreme Court set forth in Cooper v. California, 386 U.S. 58, 87 S. Ct. 788, 17 L.Ed.2d 730 (1967) and, more recently, Cady v. Dombrowski, 413 U.S. 433, 93 S.Ct. 2523, 37 L.Ed.2d 706 (1973).

In Cooper, supra, the Court upheld the validity of a warrantless search of a glove compartment and seizure of its contents occurring one week after the petitioner had been arrested for selling heroin and his vehicle impounded pending forfeiture proceedings. The Court held:

Here the officers seized petitioner’s car because they were required to do so by state law. They seized it because of the crime for which they.arrested petitioner. They seized it to impound it and they had to keep it until forfeiture proceedings were concluded. Their subsequent search of the car — whether the State had “legal title” to it or not — was closely related to the reason petitioner was arrested, the reason his car had been impounded, and the reason it was being retained. The forfeiture of petitioner’s car did not take place until over four months after it was lawfully seized. It would be unreasonable to hold that the police, having to retain the car in their custody for such a length of time, had no right, even for their own protection, to search it . . . . Under the circumstances of ' this ease, we cannot hold unreasonable under the Fourth Amendment the examination of search of a car validly held by officers for use as evidence in a forfeiture proceeding. 386 U.S. at 61-62, 87 S.Ct. at p. 791.

See also, Sirimarco, supra, 315 F.2d at 701-702; Drummond v. United States, 350 F.2d 983, 988 (8th Cir. 1965), cert. denied, Castaldi v. United States, 384 U.S. 944, 86 S.Ct. 1469, 16 L.Ed.2d 542 (1966).

The Supreme Court relied upon Cooper, supra, in Cady, supra, wherein a police officer looking for a service revolver which respondent was thought to possess made a warrantless search of respondent’s automobile, already in the custody of the police, and found several bloodied items in the trunk which were introduced into evidence. In upholding the search, the Court held:

The Court’s previous recognition of the distinction between motor vehicles and dwelling places leads us to conclude that the type of caretaking “search” conducted here of a vehicle that was neither in the custody nor on the premises of its owner, and that had been placed where it was by virtue of lawful police action, was not unreasonable solely because a warrant had not been obtained. 413 U.S. at 447, 93 S.Ct. at 2531.

In view of the foregoing, the search conducted by the agent in the process of validly seizing the automobile pursuant to 49 U.S.C. § 781 et seq. was not invalid or unreasonable solely by reason of the agent’s failure to obtain a warrant.

Accordingly, we conclude that probable cause existed which warranted the seizure of appellee’s Oldsmobile pursuant to 49 U.S.C. § 781 et seq. and the subsequent search of the glove compartment was valid and reasonable within the meaning of the Fourth Amendment, and the evidence found therein by the agent was admissible into evidence against defendant White.

Reversed and remanded for further proceedings not inconsistent with this opinion.


author: VAN DUSEN, Circuit Judge.

text:
    U. S. EXPANSION BOLT COMPANY, Appellant, v. JORDAN INDUSTRIES, INC., et al.
    No. 72-1896.
    . United States Court of Appeals, Third Circuit.
    Argued Sept. 4, 1973.
    Decided Dec. 3, 1973.

      D’Agui & Del Collo, Philadelphia, Pa., for appellant; Samuel J. Stoll, and Robert S. Stoll, New York City, of counsel.
    Alan H. Bernstein, Caesar, Rivise, Bernstein & Cohen, Philadelphia, Pa., for appellees.
    Before HASTIE, VAN DUSEN and GIBBONS, Circuit Judges.
   OPINION OF THE COURT

VAN DUSEN, Circuit Judge.

This is an appeal from a judgment in favor of defendants-appellees in a patent infringement action in which plaintiff-appellant’s patent, U.S. Patent No. 3,022,701, was adjudged invalid as being reasonably obvious to one with ordinary skill in the art at the time of invention, within the meaning of 35 U.S.C. § 103. Because the district court found it unnecessary to decide the issue of infringement, the sole issue on appeal is whether the district court erred in holding plaintiff-appellant’s patent invalid on the ground of obviousness. Although the facts of this case present a close question on this issue under 35 U. S.C. § 103, after careful consideration of the record and the district court opinion, we affirm the judgment of the district court.

I.

The patent in question relates to an anchor-type wall fastener composed of an anchor and an expanding member. Since both parties adopted the district court’s description of the patented device for purposes of the appeal, we repeat that description:

“The [invention of the] patent in suit is a wall fastener composed of an anchor and an expanding member, sold commercially as the ‘Tap-It’ fastener. These fastening type devices are commonly used where conventional fasteners such as a nail or screw without anchor cannot be utilized because of the composition and physical characteristics of the wall to which the object will be attached. As stated in the patent, such wall materials would include concrete, cinder block, brick, plaster, stone, marble, composition board and others. The basic principle by which anchor type fasteners operate is not complicated. After a hole is drilled in the material, the anchor when placed in the hole is wedged in as it is expanded by a nail, screw or other member driven into it. The friction against the sides of the hole keeps the anchor in the wall, thus enabling an object to be fastened to a wall otherwise unsuited for such purposes.
“The expandable anchor of plaintiff’s patent is molded of plastic having the general properties of nylon. It generally has a cylindrical configuration with a head which does not enter the hole. At the headed end there is a longitudinal hole to receive the driven expanding member, with the other end having a longitudinal slot aligned with that hole and extending to it. The slot separates a pair of flexible portions. They are forced outwardly as the member is driven through the slot because of the fact that the slot has a smaller diameter than the shank of the expanding member. The expanding member part of this patent has a substantially cylindrical shank with a pointed tip adapted for wedging action as in the conventional nail. It can most aptly be described as a ‘screw-nail’, however, because unlike the conventional nail, only the bottom half of the shank is smooth. The .top of this ‘screw-nail’ has a screw-type head with a slot for a screwdriver, and next to this headed end shallow screw threads with rounded edges which terminate about midway on the length of the shank.
“The patent states that the ‘screw-nail’ may be hammer driven in a translatory motion (longitudinal, non-rotational). It is not rotated into the anchor with its threads cutting into the anchor wall. Instead, after being hammer driven, the nylon material of the anchor cold flows into the spaces between the threads to form transitory screw threads in the anchor wall. This member, because of its slotted screw-type head may be screwed out of the anchor by screwdriver means. Since Nylon has a relatively retentive memory, once the ‘screw-nail’ is withdrawn from its wedging engagement the anchor will tend to resume its original form and proportions and will, therefore, be reusable.”

346 F.Supp. at 542-543.

II.

The standard of obviousness as a ground of patent invalidity is set forth in 35 U.S.C. § 103, which provides:

“A patent may not be ' obtained 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.”

In Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), the Supreme Court definitively construed section 103 and established the primary tests for determining whether a patent was obvious at the time of invention:

“Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained ; and the level of ordinary skill in the pertinent art resolved.”

See also Anderson’s-Black Rock v. Pavement Salvage Co., 396 U.S. 57, 62, 90 S. Ct. 305, 308, 24 L.Ed.2d 258 (1969). We have examined both the record and the district court opinion and have concluded that the district court properly applied the above primary tests and that the district court’s findings of fact are not clearly erroneous.

With respect to the scope and content of the prior art, plaintiff does not contend that the nylon anchor was a new invention at the time of the patent application. The Patent Office recognized among the prior art two foreign wall anchor patents disclosing anchors which were made of a plastic material such as nylon. Swiss Patent No. 311,726 (1956); French Patent No. 1-122,536 (1956). Moreover, plaintiff stipulated at trial that the nylon anchor used in the patent in suit, both by itself and in conjunction with a plain nail, is prior art against the patent in suit.

Thus, as the district court properly noted, the validity of plaintiff’s patent hinges on the question whether plaintiff’s “screw-nail” used in combination with a known nylon anchor is obvious or not. Since the defendants came forward with significant prior art not considered by the Patent Office, the presumption of validity attaching to plaintiff’s patent in this case is weakened. Hadco Products, Inc. v. Walter Kidde, 462 F.2d 1265, 1272 n.33 (3d Cir. 1972).

The plaintiff contends that there are three significant differences between the screw-nail expander described in its patent and the anchor expanders taught in the prior art. First, plaintiff claims that the prior art does not show an expansion anchor expanded by a hammer-driven screw means of any kind. Second, plaintiff contends that the prior art does not show a screw-nail — used either in combination with an expansion anchor or by itself — having a non-tapered, non-threaded shank at its lower end. Finally, and most significantly, plaintiff claims that the prior art does not show a screw-nail having rounded threads. We will consider each of these differences to combine the advantageous features of seriatim.

With respect to the first difference, the prior art clearly evidences attempts to combine the advantágeous features of a screw and a nail. In fact, the primary advantages of a hammer-driven screw-nail — greater holding power, easy removability, and reusability — were taught by the prior art over a century ago. The district court examined the prior art in detail and concluded that plaintiff’s adaptation of the advantages of the hammer-driven screw-nail for use in an expansion anchor would be obvious to one skilled in the art:

“We find . . . that the level of ordinary skill in the pertinent art is that of the ordinary mechanic or tradesman, there thus being familiarity with screw nails used for a variety of purposes. It is apparent that one skilled in the art could very well decide to use any known screw nail with a known anchor.”

346 F.Supp. at 544.

We concur with the district court’s conclusion that an ordinary mechanic or tradesman could yery well decide to use any known screw-nail with a known anchor. The precise characteristics and advantages of the hammer-driven screw-nail had been clearly established in the prior art, and there was nothing to indicate that these advantages would not automatically accrue to the use of the screw-nail in combination with a nylon expansion anchor.

The second difference claimed by the plaintiff — the use of a screw-nail having a non-tapered, non-threaded shank at its lower end — is concededly shown nowhere in the prior art. However, the prior art does show (1) an'entirely threaded screw-nail with only a slightly tapered shank, (2) a partially threaded screw-nail tapered at the lower end, and (3) a non-threaded (plain), cylindrical nail used in combination with an expansion anchor. Plaintiff contends that the cylindrical feature of its screw-nail constitutes an extremely significant and patentable advance over the prior art since the non-tapered effect creates greater wedging action and, hence, greater fastening strength. We reject this contention since we believe that the use of a cylindrical screw-nail which would not only create greater wedging action but also preserve the distinct advantages of a screw-nail in general would have been obvious to one skilled in the art. A mechanic or tradesman would easily recognize that a screw-nail with no taper would maximize the utility of the nylon fastener.

The final difference claimed by the plaintiff — the rounding of the screw threads — proves most troublesome in resolving the issue of obviousness. Plaintiff argues that there is a crucial difference between sharp and rounded threads when used with anchors consisting of nylon or other plastic material. This difference results primarily from the property of nylon anchors known as “cold flow.” Normal screw-nails (such as the British Wells Patent and the Lee Patent) appear to have sharp cutting threads so that they can cut threads rotationally in the material in which they are driven. In anchors composed of non-cold flow material, such as wood, this effect is necessary to attain maximum gripping action. However, this effect is not only unnecessary in cold flow anchors, but in fact it may tend to undermine the fastening strength of the cold flow anchor. The district court found the following in this regard:

“The hammering of a screw with sharp threads into such an anchor would not only seriously damage the anchor but would reduce the tensile strength that would be present from the threading action if the screw was screwed in with a screw driver. . The screwing of a sheet metal screw or another screw with sharp threads would cut threads in the inner wall of the anchor leaving no space for cold flow between the routes of the threads of the screw and the wall. The anchor of course would not be reusable.”

346 F.Supp. at 544.

Thus, the screw-nail with rounded threads achieves an effect not achieved in the prior art. Unlike the sharp threaded screw-nail, the round threaded screw-nail does not ream the inner wall of the anchor; instead, the inner wall of the anchor cold flows around the rounded threads, forming complementary, transitory threads which disappear when the screw-nail is removed and rendering the anchor reusable.

Despite this modification over the prior art, the district court held that the rounding of the threads to achieve internal cold flow would be obvious to an ordinary tradesman having skill in the art:

“Because of the nylon anchors’ property of cold flow, sharp thread-cutting threads are not necessary with such an anchor, and plaintiff has rounded its screw threads to take maximum advantage of this property. We do not think this is enough, however, to render the patent non-obvious. While the precise screw-nail does not appear in the prior art, such a slight modification as the rounding of the screw thread of a nail of otherwise known configuration would be obvious to an ordinary tradesman having ordinary skill in the art. Not only was the nylon anchor not new, but its characteristic of cold flow with its advantages of an improved grip resistant to loosening due to shock and vibration was also known. J. Soled, Fasteners Handbook 387 (1957).”

346 F.Supp. at 544-545.

We concur with the district court’s conclusion. The nylon anchor’s property of cold flow was well established in the prior art, and we believe that the plaintiff’s maximization of the advantages of this property by rounding the threads would be obvious to one skilled in the art.

The plaintiff would have us draw a distinction between outward cold flow (i. e., cold flow into the pores of the material into which the anchor is driven) and inward cold flow (i. e., cold flow around the rounded threads of the screw-nail to form complementary transitory threads on the inside wall of the anchor). The plaintiff urges that its modification is a patentable contribution to the art because the prior art nowhere teaches the use of inward cold flow. We do not believe that this distinction compels a finding of non-obviousness. In reaching this conclusion, we note that the art of fasteners, particularly nails and screws, is a very ancient and well-developed art which has witnessed an almost infinite variety of modifications. While we do not imply that no room remains in the crowded art of fasteners for patentable contributions, we believe simply under the facts of this case that a mechanic or tradesman having ordinary skill in the art would be fully aware of the nylon anchor’s property of cold flow and would realize that a rounding of the screw-nail’s threads would result in a maximum utilization of this property.

The plaintiff apparently contends that, instead of analyzing the obviousness of the differences between the patent in suit and the prior art seriatim, the district court should have considered whether the patent in suit constitutes a “combination” patent having a “synergistic effect.” In Anderson’s-Black Rock v. Pavement Salvage Co., 396 U.S. 57, 61, 90 S.Ct. 305, 308, 24 L.Ed.2d 258 (1969), the Supreme Court stated that a patent may be valid on non-obviousness grounds where it creates a synergistic effect, one in which the “combination of elements . . . results in an effect greater than the sum of the several effects taken separately.” See also Hadco Products, Inc. v. Walter Kidde & Co., 462 F.2d 1265, 1269-1270 (3d Cir. 1972). The Supreme Court has also admonished courts, however, to “scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950). We do not believe that the patent in suit creates a synergistic effect. The combination in the plaintiff’s screw-nail of the elements known in the prior art results simply in an effect which represents no more than the sum of the several effects taken separately. For example, the partial threading of the shank facilitates removability and allows reuse of the screw-nail, the cylindrical shape of the shank creates greater wedging action, and the rounding of the screw threads enables the formation of transitory screw threads and allows reuse of the nylon anchor. The screw-nail — nylon anchor combination reflects no other effect which is greater than or substantially different from the aforementioned individual effects which we have held to be obvious to one having ordinary skill in the art.

As a final matter, the plaintiff emphasizes that its patented fastener has enjoyed tremendous commercial success in the trucking industry and that to a large extent in recent years it has been preferred over fasteners previously used in that industry. The Supreme Court has stated that secondary considerations, such as commercial success and the fulfillment of long-felt need, may be relevant as indicia of obviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L. Ed.2d 545 (1966). However, these factors are entitled to only measured weight, as the Supreme Court recently indicated in a decision finding a combination patent invalid on obviousness grounds despite the fact that it enjoyed commercial success. Anderson’s-Black Rock v. Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969).

The judgment of the district court will be affirmed.

      . The opinion of the district court is reported at 346 F.Supp. 541 (E.D.Pa.1972).

      . In addition to the defenses of obviousness and non-infringement, the defendants eon-tended at trial that the patent was unenforceable because the plaintiff was guilty of laches. The district court rejected this contention, 346 F.Supp. at 541-542, and we agree.

      . The prior art must be evaluated as of August 10, 1959, the time of the invention (the date of the patent application), in making the determination of obviousness.

      . Normally, the starting point in analyzing a challenge to a patent’s validity is the presumption that the patent is valid, with the burden of proof resting on. the party asserting invalidity. 35 U.S.C. § 282. See Trio Process Corporation v. L. Goldstein’s Sons, Inc., 461 F.2d 66, 70 (3d Cir. 1972).

      . Pratt Patent No. 10,171 (1853) ; Dunn Patent No. 83,699 (1868) ; Fetter Patent No. 8,121 (1878) ; British Wells Patent No. 8323 (1888). These patents did not teach use of the screw-nail with an expansion fastener.

      . 356 F.Supp. at 544.

      . Plaintiff’s patent was not the first patent to show use of a screw-nail with an expansion anchor. Lee Patent No. 1,865,866 (1932) discloses a “screw-nail” threaded for approximately 25% of the shank down from the head, which is intended to be used as an expanding member in a fastening device. Unlike the screw-nail in this suit, however, it was not intended to be completely hammer-driven. The Lee nail teaches hammering it in to the point where one thread is embedded, with the member then being screwed into place with a screwdriver, utilizing its sharp threads.

      . Pratt Patent No. 10,171 (1853). In addition, the screw-nail of Fetter Patent No. 8,121 (1878) has only a very slight taper and is almost entirely threaded, having a small unthreaded portion at the top of the shank. Fetter Patent No. 8,121 (1878). See Transcript at 5-50 to 5-52. See also J. . Soled, Fasteners Handbook 72 (1957).

      . British Wells Patent No. 8323 (1888) ; Lee Patent No. 477,810 (1930). The Lee Patent showed a tapered, partially threaded screw-nail used in combination with an expansion anchor.

      . The plaintiff stipulated at trial that its nylon anchor used in combination with a plain cylindrical nail, as demonstrated by Exhibit 14, was prior art. See Transcript at 1-31 to 1-32 ; Exhibit 14.

      . It is not clear at all that a nylon anchor used with a sharp threaded screw-nail is not reusable. The defendants demonstrated at trial with tests # 8 and # 10 of Defendants’ Exhibit No. 19 that a nylon anchor will perform satisfactorily with a sheet metal screw having sharp cutting threads and that the combination of the nylon anchor and the sheet screw is reusable. In test # 8, the sheet metal screw was driven into the nylon anchor with a hammer and removed with a screwdriver five times. See Transcript at 4r-S7 to 4-39. In test # 10, the same process was repeated three times. See Transcript at 4-40 to 4-41. These tests tend to indicate that the nylon anchor, rather than the expanding member, is most responsible for the fastener’s effectiveness. See note 13, infra.

      . Fasteners Handbook contained the following description of the nylon anchor’s property of cold flow: “As the plastic is expanded into the hole surface, it cold flows into the pores of the material to develop an improved grip.” J. Soled, Fasteners Handbook 387 (1957).

      . The district court noted that the commercial success of plaintiff’s fastener in the trucking industry may in large part result from the nylon composition of the anchor component and not from any modification reflected in plaintiff’s screw-nail. The district court stated:
      “ [The nylon anchor] is preferable to a hard anchor because of the resilient qualities of the nylon which enable plaintiff’s anchor to respond better to vibrations caused while riding over roads while a less resilient anchor might back out because of vibrations. This only reinforces our view that plaintiff’s fastener combination is effective principally because of the nylon anchor and its properties.”
      346 F.Supp. at 545.


text:
    UNITED STATES of America, Appellee, v. Albert Ray KITCHEN, Appellant.
    No. 73-1094.
    United States Court of Appeals, Eighth Circuit.
    Submitted June 12, 1973.
    Decided Dec. 7, 1973.

      David Murrin, Minneapolis, Minn., for appellant.
    J. Earl Cudd, Asst. U. S. Atty., Minneapolis, Minn., for appellee.
    Before GIBSON, LAY and ROSS, Circuit Judges.
   PER CURIAM.

This is an appeal from the district court in a conviction for illegal distribution of a controlled drug pursuant to 21 U.S.C. § 841(a)(1). This court has reviewed the grounds of error raised and finds there was sufficient evidence to sustain the defendant’s conviction. We also find that no prejudicial error occurred when evidence of a prior transfer of narcotics by Kitchen’s co-defendant Williams was admitted into evidence because the trial court properly instructed the jury that the evidence was not to be considered against the defendant, Kitchen.

However, in accord with United States v. Barnes, 486 F.2d 776 (8th Cir. 1973), we find error in the government’s failure to produce at trial the informant Sammy Floyd.

On June 27, 1973, we remanded this cause to the district court for the limited purpose of holding an evidentiary hearing. At that time we observed:

The record demonstrates that the government at a pretrial proceeding assured both the court and defendant that the informant, Sammy Floyd, would be available to testify at trial. The record shows that Floyd did not appear at trial and the trial court excused the government from producing the informant on the government’s statement that Floyd’s whereabouts were unknown at the time of trial. The record demonstrates that Floyd may have possessed material knowledge relating to the defendant’s participation in the charge of his distributing cocaine on September 24, 1971.

United States v. Kitchen, 480 F.2d 1222, 1223 (8th Cir. 1973).

Upon remand we ordered the trial court to hold:

[A] further hearing at which the government shall be given the opportunity of proving if such be the case, that it was genuinely unable through reasonable efforts to produce [Floyd] and also, if such be the case, that the government did not take steps to see to it that [Floyd] would be or become unavailable as a witness. The burden of proving these things should be on the government.

Id.

Thereafter the district court held a hearing and made extensive findings of fact. The district court certified the following conclusion to this court:

The government has failed to prove that “it was genuinely unable through reasonable efforts to produce * * informant Sammy Floyd at trial.
The government took no “steps to see to it that [Floyd] would be or become unavailable as a witness.”

On the basis of the district court’s findings we now vacate the judgment of conviction. The cause is remanded for the district court to hold an evidentiary hearing in accord with United States v. Barnes, supra,. At this hearing the government shall be given an opportunity to produce the informant, Floyd, for examination in the presence of the defendant and his counsel to determine whether the informant possessed any exculpatory evidence which would have in any way detracted from the credibility of the government’s proof at the original trial. In the event the informant cannot now be produced by the government or that the informant is produced and the district court finds that he possesses exculpatory evidence the court shall grant a new trial. On the other hand, if the informant is produced and the district court finds that he possesses no exculpatory information which would have been prejudicial to the government’s evidence at the original trial, the trial court may reinstate the judgment of conviction.

      . The district court found :
      1. David W. Major, who appeared both at trial and at the evidentiary hearing as a witness for the United States, is an agent of the Drug Enforcement Administration (formerly the Bureau of Narcotics and Dangerous Drugs), and was assigned to and worked on the above captioned case.
      2. For a period of time prior to the trial in this case Agent Major caused the employment by the government of one Sammy Floyd as a special employee to give information on drug law violations.
      3. Sammy Floyd is the informant whose presence at trial was requested by the defendants and whom the government promised but failed or was unable to make available.
      4. The government had ceased to employ Floyd prior to the commencement of the trial in this case, but Agent Major was informed of the necessity and desirability of locating and producing Mr. Floyd at least three weeks prior to trial.
      5. Although Agent Major some several months before trial had helped Floyd to rent an apartment, Floyd ceased to live there sometime prior to trial and Agent Major at trial time did not know where to locate him or where he resided.
      6. Floyd was not easy to locate for several reasons; first, he was a drug user and this activity generally is conducted clandestinely; second, he was a convicted criminal who still associated with criminal elements; third, he feared for his life in part at least due to threats from one of the present defendants as a result of his activities as an informant and fourth, he had no known employment, no known residence at which to begin a search, and was not a native resident of or had “roots” in Minneapolis.
      7. Agent- Major contacted the Narcotics Squad of the Minneapolis Police Department and the Secret Service, who also had previously employed Mr. Floyd, in an effort to locate him.
      8. Agent Major procured an order from his superior requesting the other Agents in his office to search for Mr. Floyd in the South side of the city when the agents were not otherwise occupied and were in the neighborhood. This order was published to all the agents in the office.
      9. Agent Major himself kept a lookout for Mr. Floyd among his other duties although he did- not leave the office at any time solely to search for Mr. Floyd.
      10. Agent Major received a phone call from Floyd’s girl friend approximately one week before the trial. She stated Floyd was out of town.
      11. Agent Major received a phone call from Floyd late at night shortly before the trial. He attempted to arrange a meeting with Floyd so as to inform him of the necessity of his appearance at the trial but Floyd failed to keep the appointment. He did not tell Floyd that he was needed as a witness when he had him on the phone supposedly in the belief that he merely would hang up, whereas if he could meet him, he could impress him with his duty.
      12. Agent Major considered other courses of action but rejected them. For example, that he considered contacting Floyd’s parole officer but did not do so because Floyd had previously stated that parole did not call for him to make regular reports to the parole officer. Also, Agent Major did not request the Minneapolis Police to arrest nor even to attempt to locate Floyd because he had no probable cause on which to request such an arrest. The office he worked out of had no other black informants at that time and to ask other informants Floyd’s whereabouts would have been futile.
      13. Major never issued nor attempted to serve a subpoena or warrant on Floyd and he made no effort to check certain bars where it was known black persons tend to congregate. Though he knew approximately three weeks in advance of the date of trial he made no effort personally to find Floyd and in working on other investigations did not come across him; he did not contact the Hennepin County narcotics office, the FBI, the Minneapolis police or Internal Revenue Intelligence unit or the Burglary or Theft division of the Minneapolis police. He did not secure any order or lodge any request to anyone for Floyd’s arrest, did not inquire at the Establishment bar where the confrontation with defendant Williams took place, made no inquiry at the Hennepin County Warrant office of the Police Department, nor at the University where Floyd once had been a student nor with the Hennepin County probation office where defendant was on probation for a state offense.
      14. There was no evidence produced that the government in any way took steps to see to it that Mr. Floyd would be br become unavailable to appear at the trial and defendant’s counsel did not and do not now so urge or contend.


author: CHOY, Circuit Judge:

text:
    FIRST NATIONAL BANK OF OREGON, Executor of the Estate of Fred M. Slade, Deceased, Plaintiff-Appellant, v. UNITED STATES of America, Defendant-Appellee.
    No. 72-2994.
    United States Court of Appeals, Ninth Circuit
    Dec. 3, 1973.

      Richard E. Alexander, Williams, Mon- ' tague, Stark, Hiefield & Norville, Portland, Or., for plaintiff-appellant.
    Scott P. Crampton, Asst. Atty. Gen., Tax Div., John M. Kirk, Trial Atty., Tax Div., Meyer Rothwacks, Atty., Loring W. Post and Michael L. Paup, Attys., U. S. Dept, of Justice, Washington, D. C., Sidney I. Lezak, U. S. Atty., Portland, Or., for defendant-appellee.
    Before WRIGHT, CHOY and SNEED, Circuit Judges.,
   CHOY, Circuit Judge:

Appellant, First National Bank of Oregon, is the executor of the estate of Fred M. Slade, deceased. It seeks a refund of federal estate taxes paid as a result .of the inclusion in the decedent’s gross estate of the proceeds of two insurance policies which were denominated gifts in contemplation of death by the Internal Revenue Service.

In 1966 the decedent had his wife sign the applications for two twenty-year term insurance policies on his life. This was done at the urging of his insurance agent who explained that such a purchase could exempt the proceeds from federal estate taxation. The policies were issued to Mrs. Slade as owner and beneficiary, but all the premiums were paid by Mr. Slade. Within three years Mr. Slade died.

Section 2035 of the Internal Revenue Code provides that transfers of interests in property made for less than adequate consideration and within three years of death are presumptively made in contemplation of death and, consequently, are includable in a decedent’s gross estate. It is not disputed that the premiums were paid and the policies procured in contemplation of death. The sole issue on appeal is whether the property interest transferred was the proceeds of - the policies, as the district court held, or only the premiums advanced by Mr. Slade, as appellant contends.

We agree with Detroit Bank and Trust Co. v. United States, 467 F.2d 964 (6th Cir. 1972), cert. denied, 410 U.S. 929, 93 S.Ct. 1364, 35 L.Ed.2d 590 (1973), and Bel v. United States, 452 F. 2d 683 (5th Cir. 1971), cert. denied, 406 U.S. 919, 92 S.Ct. 1770, 32 L.Ed.2d 118 (1972), that where life insurance policies are procured at the instance of the decedent within the presumptive period and where the premiums are paid by the deceased, the gross estate includes the proceeds of the policies.

Appellant argues that, since Mr. Slade never owned the policies, he could not have “transferred” them to Mrs. Slade. We cannot sanction such a technical reading of the statute. As the Supreme Court has said in a similar context,

Obviously, the word “transfer” in the statute [§§ 401 and 402(f) of the Revenue Act of 1921, ch. 136, §§ 401, 402(f), 42'Stat. 277, 279 taxing the “transfer” of insurance proceeds at death], or the privilege which may constitutionally be taxed, cannot be taken in such a restricted sense as to refer only to the passing of particular items of property directly from the decedent to the transferee. It must, we think, at least include the transfer of property procured through expenditures by the decedent with the purpose, effected at his death, of having it pass to another. Sec. 402(c) taxes transfers made in contemplation of death. It would not, we assume, be seriously argued that its provisions could be evaded by the purchase by a decedent from a third person of property, a savings bank book for example, and its delivery by the seller directly to the intended beneficiary on the purchaser’s death, or that the measure of the tax would be the cost and not the value of the proceeds at the time of death.

Chase National Bank v. United States, 278 U.S. 327, 337, 49 S.Ct. 126, 128, 73 L.Ed. 405 (1929). There is only a formal difference between a decedent first buying a policy, then transferring it to the beneficiary, and the beneficiary purchasing the policy at the urging of the decedent and with the decedent’s funds. See 82 Harv.L.Rev. 1765 (1969). No policy, except one of tax evasion, supports this formalistic distinction. We decline to adopt it.

Not only would appellant’s interpretation of section 2035 be unduly technical, it would also undermine its statutory goal. The purpose of section 2035 “is to reach substitutes for testamentary dispositions and thus to prevent the evasion of the estate tax.” United states v. Wells, 283 U.S. 102, 117, 51 S.Ct. 446, 451, 75 L.Ed. 867 (1931). An insured pays the premiums on a life insurance policy in order to leave the proceeds to his beneficiaries; thus where a policy is both procured at the behest of the decedent within the statutory period and where all the premiums are paid by the deceased in contemplation of death, the gift must necessarily be one of the property interest in the policy. See Rhodes, Contemplation of Death: The Problem of Life Insurance Proceeds, 24 Tax Lawyer 589, 591, 596 (1971). In short, what is intended with the purchase of a life insurance policy in circumstances like these is the passing of the proceeds at death. That is the equivalent of a testamentary disposition, and its taxation is precisely the object of section 2035.

Finally, acquiescing in appellant’s interpretation would create an anomalous exception to section 2035 in the case of life insurance policies. The normal rule under section 2.035 is that property transferred in contemplation of death is valued as of the decedent’s death, not as of the date the property was transferred. Treas.Reg. § 20.2035-1 (e). For example, if in contemplation of death, a decedent transferred stock which ultimately appreciated in worth by the time of his death, the stock would be valued for estate tax purposes at its increased value. But taxing only the premiums paid on life insurance as gifts in contemplation of death would mean ignoring the increase in value the premiums purchased — namely, the value of the proceeds. See Estate of Inez G. Coleman, 52 T.C. 921, 927 (1969) (Raum, J., dissenting) ,

Our holding does not, as appellant argues, impermissibly raises the old “premium payment” test “phoenix-like from the language” of section 2035. Estate of Inez G. Coleman, 52 T.C. at 923. That test was incorporated in section 811(g) of the 1939 Code which specifically included a pro rata portion of the proceeds of life insurance policies in a decedent's gross estate where the deceased had paid, no matter when, some of the premiums. Congress eliminated this harsh rule in adopting section 2042 of the 1954 Code dictating that life insurance proceeds are includable in the gross estate when the insured possesses at his death “any of the incidents of ownership” of the policy. Int.Rev.Code of 1954, § 2042. Appellant argues that the adoption of section 2042 wholly put to rest the “premium payment” test, and that a holding employing it for the limited purpose of determining the value of a gift in contemplation of death contravenes that congressional intent.

However, the legislative history of section 2042 demonstrates that the test was eliminated only as a standard for the inclusion of insurance proceeds under that section. Both the House and Senate committee reports stated that section 2042 “revises existing law so that payment of premiums is no longer a factor in determining the taxability under this section of insurance proceeds.” H.R.Rep.No.1337, 83d Cong., 2d Sess. A316 (1954), U.S.Code Cong. & Admin. News 1954, p. 4459; S.R.Rep.No,1622, 83d Cong., 2d Sess. 472 (1954) (emphasis added). Congress jettisoned the “premium payment” test under section 2042 because “no other property [was] subject to estate tax where the decedent initially purchased it and then long before his death gave away all rights to the property.” H.R.Rep.No.1337, supra at 91. U.S.Code Cong. & Admin.News 1954, p. 4118. The purpose was to end discrimination against insurance as a form of property, not to affect the treatment of insurance proceeds — or indeed favor insurance over other types of property — under section 2035. See Rhodes, supra at 595-96.

We therefore affirm the district court’s interpretation of section 2035. However, the parties have agreed that appellant’s attorney fees incurred in this action will be deductible from the gross estate. That will necessitate a partial refund of the taxes paid by the estate. Hence we remand for further proceedings relative to the deduction of the attorney fees.

Affirmed, but remanded for further proceedings.

      . Int.Rev.Code of 1954 § 2035 provides:
      (a) General rule. — The value of the-gross estate shall include the value of all property to the extent of any interest therein of which the decedent has at any time made a transfer (except in case of a bona fide sale for an adequate and full consideration in money or money’s worth), by trust or otherwise, in contemplation of his death.
      (b) Application of general rule. — If the decedent within a period of 3 years ending with the date of his death (except in case of a bona fide sale for an adequate and full consideration in money or money’s worth) .transferred an interest in property, relinquished a power, or exercised or released a general power of appointment, such transfer, relinquishment, exercise, or release shall, unless shown to the contrary, be deemed to have been made in contemplation of death within the meaning of this section and sections 2038 and 2041 (relating to revocable transfers and powers of appointment) ; but no such transfer, relinquishment, exercise, or release made before such 3-year period shall be treated as having been made in contemplation of death.

      . Though the policies involved here were term life insurance policies, it would make no difference if whole life policies had been purchased within three years of death since in each case the right to the proceeds is created within the presumptive period. See Note, Insurance Policies Transferred in Contemplation of Death — The Premium Payment Test Revived?, 44 U.Colo.L.Rev. 633, 645 (1973).
      We note that two of the cases cited by appellant involve distinguishable factual sitúa-tions: First National Bank of Midland v. United States, 423 F.2d 1286 (5th Cir. 1970) and Estate of Inez G. Coleman, 52 T. C. 921 (1969). In both cases life insurance policies had been first obtained prior to the presumptive three year period of § 2035(b). The decedents, however, continued to pay the premiums during the three years previous to their deaths. The Commissioner of the Internal Revenue Service contended that a pro rata portion of the proceeds, according to the proportion of the premiums paid in the three year period, should be included in the decedents’ gross estates. Both courts rejected this position. Because the policies were procured and some premiums paid prior to the three year period, these cases present very different issues on which we intimate no opinion. In any case, the Commissioner has acquiesced in those decisions, though continuing to assert that the proceeds are taxable when the policy is first procured, as in the instant case, within the statutory period. See Rev.Rul. 71-497, 1971-2 Cum.Bul. 329.

      . In Estate of Inez G. Coleman, 52 T.C. 921, 923 (1969), the Tax Court seemed to adopt a “diversion” theory, under which the estate would be taxed only on what the decedent “parted with” during the three years prior to his death. This theory is, of course, inconsistent with the general rule under § 2035 that the value of property at the time of death is determinative for estate tax purposes.

      . Ch. 3, § 811(g), 53 Stat. 122 (Part 1) as amended by § 404(a) of the Revenue Act of 1942, ch. 619, § 404(a), 56 Stat. 944. See generally A. Casner, Estate Planning, 322 (3d ed. 1961).

      . The only two eases which directly support appellant, Mercantile Trust Co. Nat. Ass’n v. United States, 312 F.Supp. 108 (E.D.Mo. 1970) and Gorman v. United States, 288 F. Supp. 225 (E.D.Mich.1968), relied to a substantial degree on what we believe is this erroneous view of the effect of § 2042. See Mercantile Trust Co. Nat. Ass’n v. United States, supra at 110; Gorman v. United States, supra at 226-228, 230.