author: KUNZIG, Judge.

text:
    FRAASS SURGICAL MFG. CO., INC. v. The UNITED STATES.
    No. 343-73.
    United States Court of Claims.
    Nov. 20, 1974.

      Jacob H. Fischman, Forest Hills, N. Y., attorney of record for plaintiff. Norman Jacobson, of counsel.
    Gerald L. Schrader, Washington, D. C., with whom was Asst. Atty. Gen. Carla A. Hills, Washington, D. C., for defendant.
    Before DAVIS, SKELTON, and KUN-ZIG, Judges.
   ON DEFENDANT’S MOTION FOR SUMMARY JUDGMENT

KUNZIG, Judge.

In this case involving three defense supply contracts, plaintiff, Fraass Surgical Manufacturing Company, Inc., presents a three-count petition for relief:

Count I is a request for reformation of contract to relieve plaintiff of liability for destruction of government property lost in a fire on plaintiff’s premises.

Count II seeks mitigation under the contracts of the amount of plaintiff’s alleged liability to the government.

Count III asserts that the money which plaintiff ultimately paid to defendant was paid under mistake of fact or law and that plaintiff is, accordingly, entitled to repayment.

The case is before us on defendant’s five-pronged motion for summary judgment. We sustain the motion in part, dismissing portions of plaintiff’s Count II and all of Count III. The remainder of the motion is denied.

Plaintiff is a supplier to the United States armed services of tropical survival kits assembled in part from materials furnished by the government and in part from items purchased by the contractor from other sources. On January 9, 1967, plaintiff’s premises were almost completely destroyed by fire, and a quantity of government-furnished property (GFP), delivered by defendant and awaiting incorporation into survival kits, was destroyed. Following the fire, defendant informed plaintiff that language included in the proposals for each of three supply contracts negotiated in 1966 obligated plaintiff to assume strict liability for any damage or loss of GFP regardless of whether the contractor was at fault.

By letter of September 8, 1967, the Contracting Officer set the final amount of the government demand for reimbursement for lost GFP at $126,220.38. Of this amount, $15,117.10 was attributed to loss of GFP delivered for use under Contract No. DSA-120-67-C-0959 (No. 0959); $110,760.25 to lost GFP for Contract No. DSA-120-67-C-1174 (No. 1174); and $343.03 to GFP for Contract No. DSA-120-67-C-1222 (No. 1222). In early October 1967, at the insistence of defendant, plaintiff paid, under protest, the proceeds of a $75,000 insurance policy covering the GFP which had been stored on plaintiff’s premises. The remaining $51,220.38 was offset against progress payments on Contract No. 1174.

To recover the $126,220.38 held by defendant, plaintiff filed suit directly in this court September 21, 1973. (No appeal was ever taken from the Contracting Officer’s September 8, 1967 letter to the Armed Services Board of Contract Appeals (ASBCA).)

Plaintiff’s basic contention in this suit (Count I) is that an Armed Services Procurement Regulation (ASPR) in effect when these contracts were negotiated in 1966 relieved plaintiff of liability for loss of GFP. Plaintiff argues that ASPR 13-702(g) (1964) applied to “negotiated fixed price” defense supply contracts of the type here involved and required to be inserted in the contract proposals a clause “g” which would have imposed liability on the contractor only for loss of GFP caused by the contractor’s “willful misconduct or lack of good faith.” Instead, defendant’s Contracting Officer included in the contract proposals a clause “g” placing risk of loss of GFP on plaintiff regardless of the cause of the loss. Plaintiff contends that this inclusion was both erroneous as a matter of law and contrary to the intentions of the parties. Claiming, too, that the warehouse fire was not caused by elements of contractor misconduct specified in the correct clause “g,” plaintiff seeks from this court reformation of the three contracts involved and return of the $126,-220.38.

Plaintiff argues secondly (Count II) that, assuming plaintiff is properly to be held accountable for loss of GFP, the dollar amount recoverable by defendant should be less than the $126,220.38 claimed because the loss was increased by government delay in delivering the property to the contractor. This delay, plaintiff asserts, violated delivery schedules which had been added as modifications to each of the three contracts. As a direct result of this delay, the contractor had more GFP on hand at the time of the fire than it would have had if the deliveries of GFP had been made on schedule.

Plaintiff’s Count III alleges that its payments to defendant were made under mistake of fact or law and that plaintiff is accordingly entitled to repayment of $126,220.38.

In its dispositive motion, defendant does not address the merits of plaintiff’s contentions, but instead moves for summary judgment on the following grounds:

(A) all of plaintiff’s claims are barred by the statute of limitations,
(B) all of plaintiff’s claims should be barred by laches,
(C) plaintiff’s Count II claim for mitigation of contractor’s liability is barred by an accord and satisfaction with respect to Contracts No. 0959 and No. 1174,
(D) plaintiff has failed to exhaust its administrative remedies under Contract No. 1222 on its Count II claim, and
(E) plaintiff’s Count III, alleging payment under mistake of fact or law, either (a) is duplicative of plaintiff’s Count I claim for reformation or (b) fails to state a claim upon which relief can be granted.

For reasons detailed below, we remand this case to the trial division for resolution of a factual dispute concerning when the statute of limitations began to run and, if then necessary, for decision of the substantive issues raised in plaintiff’s Count I. Defendant’s laches argument fails as a matter of law. Plaintiff’s Count II claim on Contracts No. 0959 and No. 1174 is dismissed as barred by an accord and satisfaction. We hold, however, that plaintiff’s omission to pursue contractual remedies with respect to Contract No. 1222 is excused by failure of the Contracting Officer to issue a proper “final decision” apprising plaintiff of its appeal rights. The remaining portion of plaintiff’s Count II (Contract No. 1222) is remanded to the trial division along with plaintiff’s Count 1. Plaintiff’s Count III is redundant and is, accordingly, dismissed.

(A) Statute of Limitations

This suit was brought September 21, 1973. In its motion for summary judgment, defendant argues that plaintiff’s action is barred by the statute of limitations, 28 U.S.C. § 2501, because all of the events fixing the alleged liability of the defendant and entitling plaintiff to institute an action occurred more than six years before the date plaintiff filed its petition. Defendant contends the statute of limitations began to run either on September 8, 1967, when plaintiff was notified by certified mail of the final amount of the government claim, or on September 15, 1967, when the first $12,382.02 was allegedly withheld from the first partial payment due plaintiff under Contract No. 1174.

Defendant asserts the statute of limitations began to run from September 8, 1967, when defendant made an “authoritative demand” for reimbursement by a letter of the Contracting Officer setting the final dollar amount of the government claim for lost GFP. We disagree.

Scott v. United States, 18 Ct.Cl. 1 (1882), and Wood v. United States, 25 Ct.Cl. 98 (1889), cited by defendant as support for the proposition that the statute of limitations begins to run at the time “authoritative demand” is made, are not applicable to the case we are now considering. Those cases dealt with a special statute enabling federal paymasters to sue in the Court of Claims for relief of their responsibility for loss of public money stolen from them in the line of duty. In such cases, the statute of limitations has been held not to run until authoritative demand for repayment of the lost funds has been made by the government. In sharp contrast to this special rule for the accrual of the cause of action in paymaster cases,

* * * where a claim is based upon a contractual obligation of the Government to pay money, the claim first accrues on the date when the payment becomes due and is wrongfully withheld in breach of the contract. (Emphasis added).

Oceanic Steamship Co. v. United States, 165 Ct.Cl. 217, 225 (1964). Accord, Empire Institute of Tailoring, Inc. v. United States, 161 F.Supp. 409, 410, 142 Ct.Cl. 165, 167 (1958). In this case, no money was withheld from the contractor until at least September 15, 1967, the date defendant claims plaintiff was notified that $12,382.02 was being withheld from the first partial payment then due the contractor on Contract No. 1174. Until that date, under the rule set forth in Oceanic Steamship, plaintiff had no basis upon which it could sue the United States. Therefore, a cause of action may have accrued September 15, 1967.

However, by sworn affidavit, plaintiff claims it never was informed that any partial payment was being withheld. Plaintiff notes further that the Contracting Officer’s letter of October 10, 1967, acknowledging receipt of plaintiff’s insurer’s check for $75,000 in partial satisfaction of the total $126,220.38 government claim, gave $51,220.38 as the outstanding balance owed to defendant. No account had been taken of the $12,382.02 allegedly deducted on September 15, 1967.

Defendant argues that plaintiff’s entire claim accrued when the first deduction was made. Since the deduction itself is clearly in issue, this is a question we need not now decide. We refer this .dispute to the trial division for resolution of the parties’ conflicting assertions of fact regarding when the first offsets were made against contract payments owed to plaintiff.

(B) Laches

Asserting lack of diligence on the part of plaintiff in prosecuting its claim and resultant prejudice to defendant, defendant argues that all of plaintiff’s claims should be barred by laches. The prejudice alleged by defendant arose from the fact that files for Contracts No. 0959 and No. 1222 were destroyed July 24, 1973, supposedly in accordance with the requirement of Defense Supply Agency Manual Subsection 820.10. By affidavit, the administrative official who authorized destruction of the records states that he had no notice of pending litigation or of any other reason to preserve the files.

We reject defendant’s laches claim for two reasons. First, as defendant itself concedes, this court has never applied the defense of laches in a contract action. H & M Moving, Inc. v. United States, 499 F.2d 660, 672, 204 Ct.Cl. 696, 719 (1974). Secondly, even if it were customary for this court to apply the equitable doctrine of laches in a contract action, the present case is not an appropriate one for use of this principle. In Maxan Dress Corp. v. United States, 115 F.Supp. 439, 444, 126 Ct.Cl. 434, 442 (1953), we stated:

Implicit in the concept [of laches] is the idea of prejudice to the opposing party by the surprising assertions of duties owed or rights violated at a time when the elements of proof are obscured by the passage of months or years, or subsequent to some prejudicial change of position by the party sued.

Here, there were no “surprising assertions” of duties and rights. The defendant’s agents had notice of plaintiff’s refusal to concede liability for loss of GFP from the outset. Even while negotiating for delivery to defendant of plaintiff's insurer's cheek for $75,000 in partial satisfaction of defendant’s demand for reimbursement for lost GFP, plaintiff denied responsibility for the loss. Plaintiff’s letters of September 12 and 14, 1967, stated clearly that delivery of its insurer’s check to defendant was made on the understanding that plaintiff conceded no liability to defendant for any sums whatsoever. Since defendant was apprised of plaintiff’s legal position from the outset, the doctrine of laches cannot apply. Defendant’s laches argument, therefore, fails as a matter of law.

(C) Accord and Satisfaction

As noted above, plaintiff contends (Count II) that if it is liable for loss of GFP, the extent of its liability should be reduced because of defendant’s delay in delivering the materials it had agreed to provide. It is this alternative basis of relief which defendant asserts is barred by an accord and satisfaction.

The fire which gave rise to this litigation occurred January 9, 1967. February 9, 1967, the Contracting Officer gave plaintiff formal written notice that the government considered plaintiff to be responsible for loss of GFP in the January 9 fire. February 23, 1967, plaintiff’s president, H. D. Offenhartz, replied to the Contracting Officer, asking that he take into account the fact that the amount of GFP lost in the fire had been greatly increased by government delay in delivery. By letter of March 13, 1967, the Contracting Officer rejected plaintiff’s argument, reminding plaintiff that “[t]he GFP Clause provides exclusive remedy for the delays caused by the Government * * *.” On August 3, 1967, well after the issue between the parties had been thus joined, plaintiff submitted a claim for increased labor and overhead costs caused by government delay in delivering GFP for Contract No. 0959 and No. 1174, as well as for Contract No. 0226 (not included in this case). By letter of December 20, 1967, plaintiff (again by its president, H. D. Offenhartz) agreed to accept $14,-532 in settlement of its delay claim. Plaintiff’s letter did not reserve any other claims against defendant arising from delay in delivery of GFP. In fact, a notation on the second page of the “Amendment of Solicitation/Modification of Contract” awarding the $14,532 in supplementary compensation to plaintiff provided explicitly:

It is further agreed that the adjustment reflected above constitutes the entire equitable adjustment due the Contractor under clause 60.1-3a during the pendency of contracts DSA-120-67-C-0226, DSA-120-67-C-0959 and DSA-120-67-C-1174. (emphasis added)

Defendant contends plaintiff is now estopped from seeking mitigation of the government claim for lost GFP on Contracts No. 0959 and No. 1174 because the contractor failed to reserve its rights when it accepted the $14,532 equitable adjustment. Plaintiff argues in response that despite the plain language of the modification agreement, the delay-based modification was not intended by either party to constitute the entire adjustment or to preclude plaintiff’s right to assert government delay as a defense to the $126,220.38 claim for loss of GFP. We hold for the government.

As defendant correctly points out, the rule in cases where a contractor receives an equitable adjustment is that a contractor who accepts without reservation or protest the benefits of a supplemental agreement increasing his compensation may not later claim further compensation for alleged breach of contract. Brock & Blevins Co. v. United States, 343 F.2d 951, 170 Ct.Cl. 52 (1965). This court has also held that a supplemental agreement entered into between a contractor and the government operates as a bar to all claims not specifically reserved. Langoma Industries, Inc. v. United States, 135 F.Supp. 282, 285, 133 Ct.Cl. 248, 253 (1955).

In Cannon Construction Company v. United States, 319 F.2d 173, 176, 162 Ct.Cl. 94, 100 (1963), we said, “[tjhere is no ambiguity in language which states that a certain sum shall constitute full compensation for delays.” Similarly, there is no ambiguity in language which states that a payment to the contractor “constitutes the entire equitable adjustment due the contractor.” In the Cannon Construction Company case, this court noted further that conduct of the parties is relevant in determining their intentions in a settlement situation. Id. Here, as the result of plaintiff’s February 23 letter, both parties knew that plaintiff believed its liability for loss of GFP should be reduced because of government delay. Nevertheless, plaintiff kept silent when it accepted the $14,532 equitable adjustment. Accord and satisfaction was reached without reservation and yet plaintiff now attempts to reopen the entire issue of government delay. This it may not do. Accordingly, plaintiff’s Count II for mitigation of defendant’s demand for reimbursement is dismissed as to Contracts No. 0959 and No. 1174.

(D) Administrative Remedies

Defendant’s next contention is that plaintiff’s claim for mitigation of its liability for loss of government property furnished under Contract No. 1222 should be barred by plaintiff’s alleged failure to exhaust its administrative remedies on that contract.

Plaintiff argues, on the other hand, that plaintiff had no obligation to pursue an administrative appeal because it was not informed by the Contracting Officer of its appeal rights. Although the Contracting Officer’s letter setting defendant’s demand for lost GFP at $126,-220.38 purported to be the “final statement of the loss of Government Furnished Material sustained by the Government and for which you must reimburse the Government under the terms of the contract,” the letter made no mention of procedures for appeals of the Contracting Officer’s decision. We agree with plaintiff.

This court has been confronted before with a situation similar to the one we have in the instant case. In Zidell Explorations, Inc. v. United States, 427 F.2d 735, 738, 192 Ct.Cl. 331, 335-336 (1970), we noted that an Armed Services Procurement Regulation (32 CFR § 1.-314(a) (1965)) expressly required the Contracting Officer to detail a contractor's appeal rights from an adverse decision. Accordingly, in that case we directed the Contracting Officer to render the proper “final decision” outlining those rights and dismissed plaintiff’s petition without prejudice in order to allow the contractor to pursue its appeal before the ASBCA. This same ASPR, re-codified as 32 CFR § 1.314(d) (1966), is applicable to the case at bar.

Therefore, under the Zidell rule, we could refer plaintiff to the ASBCA for determination of whether plaintiff is entitled to any mitigation it claims in Count II of the $343.03 demanded by defendant as compensation for loss of GFP supplied for Contract No. 1222. However, in this particular instance, the little that still remains of plaintiff’s Count II may become moot if plaintiff ultimately prevails on its Count I claim that the wrong provision allocating the risk of loss of GFP was included in its contracts with defendant. Moreover, the factual setting of this case is now seven years old and the amount in dispute totals only $343.03. Accordingly, we remand the remnant of plaintiff’s Count II to the trial division, along with plaintiff’s Count I for appropriate action consistent with this opinion.

(E) Count III is Redundant

Defendant’s motion for summary judgment correctly points out that if plaintiff is alleging unilateral mistake in his Count III, we cannot grant relief. Although unilateral mistake may provide grounds for rescinding an executory contract, each of the contracts involved in this case has been fully performed. In fact, plaintiff makes no request for rescission. Only mutual mistake can provide a basis for reformation, Dale Ingram, Inc. v. United States, 475 F.2d 1177, 201 Ct.Cl. 56 (1973); and it is mutual mistake which plaintiff alleges in its Count I. Therefore, Count III is redundant and is dismissed.

Accordingly, defendant’s motion for summary judgment on Count I and on the Contract No. 1222 element of Count II is denied; defendant’s motion for summary judgment on the Contracts No. 0959 and No. 1174 aspects of Count II and on Count III is granted; and these portions of the petition are hereby dismissed. The case is remanded to the trial division for proceedings consistent with this opinion.

      . Since the ASBCA has not been involved in this case, our Wunderlich Act standard of review is not relevant here.

      . Through a clerical error, plaintiff’s Count III asks for refund of $122,220.38 paid under mistake of fact or law. It is clear from the rest of plaintiff’s petition, as well as from the subsequent pleadings and briefs, that the correct amount is $126,220.38.

      . No equitable adjustment was either requested or received on Contract No. 1222.

      . Clause 60.1-3(a), included in all three contracts involved here, provided as follows:
      “60.1-3 (a) Government-Furnished Property. * * * In the event that Government-furnished property is not delivered to the contractor by [times designated in the contract], the Contracting Officer shall, ui>on timely written request made by the contractor, make a determination of the delay, if any, occasioned the contractor thereby, and shall equitably adjust the delivery or performance dates or the contract price, or both, and any other contractual provision affected by any such delay. * * * ” (emphasis added)


source: Caselaw Access Project

author: MARKEY, Chief Judge.

license: Public Domain

text:
    Application of Walter L. BORKOWSKI and John J. vanVenrooy.
    Patent Appeal No. 74-564.
    United States Court of Customs and Patent Appeals.
    Nov. 27, 1974.
    Rehearing Denied Jan. 23, 1975.

      Barry A. Bisson, Wilmington, Del., attorney of record, for appellants.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Gerald H. Bjorge, Washington, D.C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MARKEY, Chief Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection under 35 U.S.C. § 103 of claims 1-14 and 24-32 in appellants’ application serial No. 621,379, filed January 23, 1967, entitled “Chlorination of Hydrocarbons.” A Rule 131 affidavit submitted to antedate the sole prior art patent on which the rejection was based was held inadequate. We affirm.

The Invention

Claim 1 illustrates appellants’ invention :

1. Method of chlorinating a hydrocarbon which comprises
(a) feeding hydrocarbon in vapor phase at an intermediate level into a reactor maintained at a temperature in the range of 315-500 °C., said hydrocarbon and its chlorination reaction products being a vapor at the selected reaction temperature and said reactor containing a bed of ferrous chloride extending from the bottom thereof to near the level of hydrocarbon introduction and having a reaction space above the bed,
(b) flowing the hydrocarbon vapor upwardly in said reaction space,
(c) feeding hydrogen chloride and oxygen into the bottom of said bed in an HCI :02 molar proportion of at least 4:1 and flowing the same upwardly in contact with the ferrous chloride, whereby ferrous chloride is continuously converted to gaseous ferric chloride,
(d) flowing the gaseous ferric chloride upwardly in said reaction space in contact with the hydrocarbon, whereby chlorination of the hydrocarbon occurs with the formation of by-product hydrogen chloride and the ferric chloride is reduced to solid ferrous chloride which falls downwardly to said bed, and
(e) withdrawing chlorinated hydrocarbon and by-product hydrogen chloride from the upper part of said reactor.

No separate arguments having been presented in appellants’ brief with respect to claims 2-14 and 24-32, those claims stand or fall with claim 1.

The Issues

Appellants assert that the board erred in: (1) failing to find, from the record as a whole, that the relevant disclosure in the Borkowski, Oberdorfer, and Seitzer patent (Borkowski et al.) is not prior art because it is not the invention of “another”; (2) refusing to consider their supplemental affidavit submitted in response to the board’s additional criticism of the Rule 131 affidavit and, hence, denying appellants due process; (3) finding the claims obvious under 35 U.S.C. § 103 over Borkowski et al.; and (4) rejecting the Rule 131 and supplemental affidavits as insufficient to remove Borkowski et al. as prior art. We deal with the issues in the order listed.

Appellants’ Arguments

Regarding issue (1) appellants point to affidavits by Seitzer and Oberdorfer, stating that they made no contribution to the claimed invention, as a basis for an inference that the relevant disclosure in Borkowski et al. was derived from Borkowski. The joint oath by appellants in the present application is relied upon as additional support for an inference that the relevant disclosure in Bor-kowski et al. was derived from appellants.

In arguing lack of due process in their presentation of issue (2), appellants agree that the board had the right under its examining function to make new findings in the form of its additional criticisms of the Rule 131 affidavit. However, appellants contend that under such circumstances 35 U.S.C. § 132 required that the board provide applicants an opportunity to respond to the additional criticisms.

Respecting issue (3), appellants rely on a prior board decision involving an application which is a parent to the present application. In that decision the board reversed a § 103 rejection based on Borkowski et al. Appellants insist that the prior board decision is “res judicata” and thus binding upon the examiner in this case. If not res judicata, say appellants, that prior decision should at least tip the scales in favor of non-obviousness here. Appellants further argue that the present claims set forth inventions which would not have been obvious over Borkowski et al.

Appellants stress, with respect to issue (4), that the board used improper standards from interference case law to test the sufficiency of the affidavits. Citing In re Moore, 444 F.2d 572, 58 CCPA 1340 (1971), as setting forth the proper standard, appellants assert the affidavits are sufficient. Appellants further assert that one of ordinary skill in the art, upon reading the reference in an invention disclosure, affidavit Exhibit 1, to laboratory notebook pages (Exhibit 2), “would have no doubt that they had actually reduced to practice” their invention. Lastly, appellants argue that the board failed to give any weight to the “sworn testimony” in the Rule 131 affidavit as to the interpretation of the attached exhibits.

The Prior Art

Borkowski et al. disclose a process for chlorination of methane by contacting it with ferric chloride (FeCl3) vapor in one reaction zone at a temperature in the range of 220°-800°C. That process of ferrichlorination of methane is admitted as having been described and claimed in an abandoned application of Blair. Borkowski et al. additionally disclose that solid ferrous chloride (FeCl2) settles out from the reaction products and a portion thereof is removed to another reaction zone. The ferrous chloride is there regenerated into ferric chloride, for recycling to the first reaction zone, by contacting it with HC1 and oxygen.

The Rule 131 Affidavit

A principal issue is whether the Rule 131 affidavit overcomes Borkowski et al. as prior art. Appellants there assert that they invented the subject matter of the present application and that they conceived and reduced to practice the disclosed and claimed subject matter of their application prior to the filing date of Borkowski et al. The remainder of the affidavit states:

THAT attached hereto are copies of the following papers which they prepared: (1) an invention disclosure labeled “Exhibit 1”; (2) copies of laboratory notebook pages marked “Exhibit 2”; (3) copies of calculation sheets referring to the data shown in Exhibit 2 and labeled “Exhibit 3,” all of which describe a reduction to practice of the process of this application.
THAT Exhibit 2 shows: (1) the temperature profiles of a reactor used in the process of this invention, (2) at page 322141, a bed of ferrous chloride extending from the bottom of the reactor to an intermediate level, (3) the feeding of methane into the reactor at a level above the bed and at a temperature above its boiling point, (4) the methane vapor flowing upward, (5) feeding hydrogen chloride and oxygen into the bottom of the bed in a proportion of HC1:02 of at least 4:1, (6) the HC1 and 02 contacting the bed of ferrous chloride.
THAT Exhibit 2 further shows the running times of the reaction of the invention, the flows of starting materials and vapor phase chromatography, (VPC), runs on the products of the reaction at particular times.
THAT Exhibit 3 shows analyses of some of the vapor phase chromatography runs corresponding to the VPC numbers shown in Exhibit 2 and that these analyses indicate chlorinated hydrocarbon in the product stream and further shows an iron balance on pages 315009, 315012 and 315013 which shows that FeCl2 was converted to FeCl3 which then chlorinated methane with conversion back to FeCl2.
THAT the dates which have been removed from Exhibit 1, Exhibit 2 and Exhibit 3 are prior to the April 13, 1961 filing date of Patent 3,172,915.

Exhibit 1, the invention disclosure, refers under the heading “Reduction to Practice” to certain notebook pages which coincide with pages in Exhibit 2.

Exhibits 2 (seven pages) and 3 (eight pages) appear to be records of laboratory data.

Criticism of the Rule 131 Affidavit

The examiner’s criticisms of the affidavit were: (1) there is no showing of how formation of Fe203 from the reaction of 02 and HC1 with FeCl2 is suppressed or how it is removed except in Exhibit 1 which refers to test run #500; (2) test run #500 with only an 02 feed (no HC1 feed) is not within the claims; (3) Exhibit 1 describes a proposal and not a reduction to practice; (4) the affidavit “does not allege that the reduction to practice shown in Exhibits 2 and 3 were [sic] carried out by applicants or on their behalf”; and (5) only some of the notebook pages of Exhibits 2 and 3 are signed by van-Venrooy, and none is signed by Bor-kowski.

The board additionally commented that: (1) the exhibits consist in most part of unexplained data; (2) the analysis by vapor phase chromatography (VPC) of two out of approximately 40 periodic samples of the reaction products taken during the test runs is not sufficient to establish any results relative to the remaining samples, and the significance of the two samples has not been explained; and (3) there is no evidence of any conviction of success or appreciation of the reduction to practice.

In response to the above criticisms by the board, appellants submitted a supplemental affidavit with their petition for reconsideration. The board regarded that affidavit as not entitled to consideration, but it did hold that “the proofs submitted under the provisions of Rule 131, when considered as a whole,” were not convincing. In the supplemental affidavit, appellants stated in pertinent part:

(5) Additionally, they now present the attached Exhibit 4 to supplement their original exhibits. The said Exhibit 4 is a copy, with dates removed, of a routine progress report, made by the said John J. vanVenrooy to his supervisor, Dr. Paul E. Oberdorfer, Jr., in which the significance of runs 500 and 501 was reported. Note at page 1 of the exhibit that in run 500, made without HC1 addition, the bed of FeCL had been converted to Fe203 in 160 minutes, whereas after 600 minutes of running time in run 501 (where HCL and 02 were introduced into the FeCl2 section of the reactor) the bed still contained FeCl2 (although the major part was Fe203). Accordingly, although iron oxide formation had occurred, the report shows that applicants appreciated that the desired process (of the present Claim 1) had in fact been reduced to practice.
(6) Also note in Exhibit 4 (at page 2, second paragraph) that the invention of Claim 1 was also reduced to practice in run No. 502, which was made prior to April 13, 1961. As reported in Exhibit 4, in run No. 502 (which ran for 980 minutes) the shrinkage of the FeCl2 bed due to Fe203 formation only became apparent after several hours of operation during which chlorination of the methane feed was observed.

The content of Exhibit 4, entitled “Monthly Progress Report,” is exemplified in the body of the supplemental affidavit.

OPINION

(1) The Prior Art Issue

The record manifestly contains nothing to rebut the prima facie availability of Borkowski et al. as evidence of an invention of another described in a prior patent (35 U.S.C. § 102(e)). The affidavits of Oberdorfer and Seitzer stating that they made no contribution to the claimed invention plainly do not raise an inference that the relevant disclosure in Borkowski et al. was derived from appellants. Further, appellants have submitted nothing establishing that the relevant disclosure of Borkowski et al. is their invention. See In re Facius, 408 F.2d 1396, 56 CCPA 1348 (1969). The record here is not inconsistent with the possibility, if not probability, that the relevant disclosure of Borkowski et al. is at least in part the contribution of Blair. Accordingly, appellants have not met the burden of proving facts sufficient to overcome the prima facie available reference. In re Facius, supra.

(2) The Due Process Issue

Although the board opinion includes an indication that appellants’ supplemental affidavit and exhibits would not be considered, a reading of the entire opinion of the board on reconsideration convinces us that it did in fact consider that evidence in reaching its final decision. There is, therefore, no proper basis for appellants’ complaint with respect to due process.

(3) The Obviousness Issue

(a) “Res Judicata”

Appellants’ contention that the prior board decision reversing a rejection under 35 U.S.C. § 103 over Borkowski et al. in a parent application should have been “res judicata” to the examiner in this case is unpersuasive. This court stated in In re Craig, 411 F.2d 1333, 56 C.C.P.A. 1438 (1969), that the policy and purpose of the patent laws preclude the applicability of any doctrine akin to the judicially-developed doctrine of “res judicata” to bar the granting of patents on inventions that comply with the statute. The same policy and purpose precludes reliance on any such doctrine to force the granting of patents on inventions that do not comply with the statute. The Patent Office must have the flexibility to reconsider and correct prior decisions that it may find to have been in error. As this court stated in In re Schmidt, 377 F.2d 639, 54 C.C.P.A. 1577 (1967), in sustaining the board’s right to grant an examiner’s request for reconsideration and thereafter to reverse its decision favorable to an applicant:

It is the duty of the Patent Office to satisfy itself in the first instance that the statutory requirements pertaining to the obtaining of patents have been met. We are aware of no authority, and appellants cite none, which precludes the Patent Office from retaining jurisdiction in the prosecution of applications and correcting what it considers to be mistakes in its decisions, until the time for judicial review has expired or a patent has issued. Compare In re Citron, 326 F.2d 418, 51 C.C.P.A. 869 [(1964)]. Quite evidently the board simply overlooked and misapprehended the examiner’s reasons in its first decision, and was convinced of its error upon review. Under the circumstances we see no abuse of discretion upon the part of the board in acting as it did here.

(b) Obviousness

Considering the entire record before us, we find no reversible error in the present board’s decision sustaining the rejection under 35 U.S.C. § 103. The use in Borkowski et al. of two reaction zones which are interconnected by conduits for removal of FeCl2 and the regenerating of a portion of the FeCl2 into FeCl3 for recycling into the first zone to chlorinate the hydrocarbon clearly suggest a process having two contiguous zones. The reactions of appellants and Borkowski et al. are the same, and the record does not indicate any unexpected difference between the results from appellants’ contiguous reaction zones (single reactor) and the two interconnected reaction zones of Borkowski et al. The meager comments by the prior board in the decision in the parent case are not persuasive of any reversible error in the decision on appeal here.

(4) The Rule 131 and Supplemental Affidavits Issue

We find ourselves in agreement with the board’s decision to the extent that it held the proofs submitted under Rule 131 “taken as a whole” to be unconvincing. The original and supplemental affidavits together with the accompanying comments do not adequately explain what facts or data appellants are relying upon to show a completion of their invention prior to April 13, 1961. The affidavits for the most part consist of vague and general statements in the broadest terms as to what the exhibits show along with the assertion that the exhibits describe a reduction to practice. This amounts essentially to mere pleading, unsupported by proof or showing of facts. In re Harry, 333 F.2d 920, 51 CCPA 1541 (1964).

An “Invention Disclosure,” similar to Exhibit 1, may constitute evidence of a conviction of success and may be of evi-dentiary value when combined with other evidence of a reduction to practice. It cannot itself establish a reduction to practice where, as here, the facts essential to show a reduction to practice are not themselves clearly established on the record.

A review of the fifteen notebook pages of Exhibits 2 and 3 reveals that they are by no means clear on their face. It was appellants’ burden to explain the content of these notebook pages as proof of acts amounting to reduction to practice. That was not done. Appellants have not challenged the board’s finding that two of the seven notebook pages of Exhibit 2 and four pages of Exhibit 3 are not themselves directed to the invention in issue. The probative value of those pages, if any, therefore, is minimal. Absent a clear explanation of the remaining notebook pages pointing out exactly what facts are established therein and relied on by appellants, the affidavits based thereon are of little assistance in enabling the Patent Office and its reviewing courts to judge whether there was an actual reduction to practice of the invention. See In re Harry, supra.

Appellants argue that the board erroneously applied the strict standards of interference practice. The board’s opinions do cite interference cases and stress such elements as “conviction of success” and “possession of the invention as claimed.” The board did not have before it our recent decision in In re Spiller, 500 F.2d 1170 (CCPA 1974), wherein we pointed out that a Rule 131 affidavit need not establish prior possession of the invention as claimed, i. e. of the invention as defined by all of the claim limitations. There are, of course, differences between the requirements of interference practice (Rule 201 et seq.) and the ex parte showing of completion of an invention prior to the effective date of a patent or publication (Rule 131). Nonetheless, a review of the board’s opinions in their entireties establishes the correctness of the board’s basic finding that the affidavits were insufficient to meet the requirements of Rule 131. The affidavits are equally insufficient when considered in the light of our holding in Spiller, which nowhere weakens the requirement, under Rule 131, of a factual showing of completion of the invention before the critical date.

For the reasons expressed above, the decision of the board is affirmed.

Affirmed.

      . Appellants have been afforded the benefit of the filing date of applications serial No. 144,202, serial No. 144,219 and serial No. 144,221, all of which were filed on October 10, 1961.

      . Patent No. 3,172,915 issued March 9, 1965, filed April 13, 1961.

      . Appeal No. 632-30, dated November 23, 1966, in application serial No. 144,202.

      . Serial No. 60,423, filed October 4, 1960.

      . The board also noted that the brief on the request for reconsideration contains no spe-cifie explanation of why the additional proofs overcome the defects set forth in the original decision,


author: RICH, Judge.

text:
    NATIONAL DISTILLERS AND CHEMICAL CORPORATION, Appellant, v. WILLIAM GRANT & SONS, INC., Appellee.
    Patent Appeal No. 74-566.
    United States Court of Customs and Patent Appeals.
    Nov. 27, 1974.

      David S. Patterson, Breed, Abbott & Morgan, New York City, atty. of record, for appellant. Gerald J. Craugh, New York City, of counsel.
    Edward G. Fenwick, Jr., Mason, Fen-wick & Lawrence, Washington, D. C., atty. of record, for appellee.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   RICH, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, 180 USPQ 342 (1973), sustaining appellee’s opposition to the registration of DUET as a trademark for prepared alcoholic cocktails, application serial No. 333,597 filed July 25, 1969, claiming first use July 11, 1969. Incidental to this appeal on the merits, appeal was simultaneously taken from a much earlier decision of the board of March 20, 1972, abstracted at 173 USPQ 813, granting a motion to dismiss a counterclaim filed by the applicant to cancel the registration relied on by the opposer. This appeal was not taken until November 9,1973. We reverse.

Facts

Neither party took testimony, but both stipulated that named witnesses, one for each side, would, if called, give certain testimony. There is no conflict in the stipulated testimony.

Applicant’s evidence shows that it has been a manufacturer and seller of various brands of alcoholic beverages since 1933. The prepared cocktails it has sold since 1969 under the trademark DUET are marketed in cans containing two drinks, the intention behind the mark being to suggest that the contents are sufficient to provide drinks for two people or two drinks. Eleven different cocktails are sold under the mark. Applicant’s sales from July 11, 1969, through July 30, 1972, amounted to $7,415, 389, and extended throughout the United States. Nearly $500,000 was spent on advertising.

Opposer relies on its Reg.No. 387,-768, of May 27, 1941, renewed 1961, of DUVET for “liqueur” and on use of DUVET on French brandy since 1957. Paragraph 5 of opposer’s stipulated testimony states:

Currently Opposer’s DUVET trademark is being used solely in connection with the sale of brandy and Op-poser’s records show that the following sales of DUVET brandy were made during the years indicated:
Cases
June 1966-May 1967 12,807
June 1967-May 1968 7,562
June 1968-May 1969 6,032
June 1969-May 1970 6,044
June 1970-May 1971 5,705

Paragraph 7 of opposer’s stipulated testimony states that the following is a specimen of the DUVET brandy label now being used:

OPINION

We will assume familiarity with the board opinion on the merits. The only question we find it necessary to decide is whether the board was correct in finding likelihood of confusion from concurrent use of DUET on cocktails and of DUVET on French brandy and liqueurs. We conclude it was not.

Regardless of how DUVET might be pronounced, we do not think purchasers would confuse it with DUET. The latter is a very common word in the English language which has the connotation of two of something. Virtually everyone is familiar with this word and its meaning. As applied by applicant to its goods, the suggestiveness of the mark is clear— that there are two drinks in the can or that the can contains drinks for two people. Purchasers of alcoholic beverages would not, we believe, think that DUVET is an English word. It is to be found in Webster’s Third New International Dictionary, unabridged, as an English word of French origin, pronounced “du-vay,” meaning “a downy growth characteristic of some fungus cultures,” but we think practically no Americans other than experts in fungus cultures would be aware of this definition. In any case, it is not a familiar English word. In French it means “down; wool, nap.”

Our basic reasons for believing that confusion would not be likely to result from concurrent use of DUET and DUVET were fully expressed in In re General Electric Co., 49 C.C.P.A. 1186, 304 F.2d 688 (1962), their substance being that the familiar is readily distinguishable from the unfamiliar. DUET is a familiar word; DUVET is not. DUET has clear and obvious meaning; DUVET does not. Clearly, the goods on which the marks are used, or presumed to be used, are not such as to contribute to likelihood of confusion, either of the goods or their origin. We do not believe anyone would think that DUVET NAPOLEON French Brandy came from the same source as DUET canned cocktails, even if the cocktail is made with brandy, as is the DUET brandy Manhattan.

We are constrained to disagree with the board’s view that DUET and DUVET “are substantially similar in both sound and appearance.” The similarities are obvious but so are the differences, and we think the latter are as important as the former. We consider that the sound and meaning are substantially different and sufficiently so to preclude likelihood of confusion.

Having reached this conclusion on the assumption that the registration of DUVET for liqueurs is a valid registration, the questions raised in the counterclaim for cancellation of that registration are moot, and we therefore find it unnecessary to consider whether the decision dismissing that counterclaim is properly before us for review, it being contended that no appeal from the decision was taken within the time prescribed by the rules. We express no opinion on that question.

The decision of the board sustaining the opposition is reversed.

Reversed.

       Applicant does not press its petition for cancellation in the event the decision sustaining the opposition is reversed.


text:
    The UNITED STATES, Appellant, v. H. M. YOUNG ASSOCIATES, INC., Appellee.
    Customs Appeal No. 5532.
    United States Court of Customs and Patent Appeals.
    Nov. 21, 1974.

      Carla A. Hills, Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Bernard J. Babb, New York City, for the United States.
    Lawrence J. West, Chicago, 111., Rode & Qualey, New York City, attorneys of record, for appellee; Ellsworth F. Qualey, New York City, of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MARKEY, Chief Judge.

The United States appeals from the judgment of the Customs Court which granted appellee’s motion for summary judgment and denied appellant’s cross-motion for summary judgment, 69 Cust. Ct. 155, C.D. 4388, 349 F.Supp. 1007 (1972). We affirm.

The imported merchandise consists of elastic fabric, described as “COTTON TISSUES (Waistband-Elastic).” The importer, H. M. Young Associates, Inc., of New York, purchased the subject merchandise from the manufacturer, HCH Kalbskopf of West Germany, in 1965 at an invoiced price of 62 cents per yard F.O.B., and the merchandise was so entered. It was resold to Jaymar-Ruby, Inc., which used the fabric in the manufacture of trousers. Jaymar-Ruby, Inc., paid patent royalty and trade-mark certification fees to extraneous parties who were neither importers nor manufacturers. Appraisement was made under constructed value by adding to the invoiced price of 62 cents per yard the sum of 36 cents, representing patent royalty and trademark fees of 24 cents and 12 cents, respectively. The parties agree that constructed value is the proper basis for appraisal. The merchandise, the parties, and the facts are the same as those involved in H. M. Young Associates, Inc. v. United States, 64 Cust.Ct. 642, R.D. 11695 (1970), wherein the Customs Court held that the fees paid by Jay-mar-Ruby, Inc., were not part of constructed value and that the importer was entitled, under the separability rule, to rely on the presumption of correctness attaching to the remainder of the ap-praisement.

Noting the identity of the basis of ap-praisement, the merchandise, the parties, and the issues herein with those in H. M. Young Associates, supra, the Customs Court cited the doctrine of collateral estoppel as requiring the same result here. The court rejected appellant’s contention that an intervening change in the law respecting the application of the separability doctrine to constructed value had occurred.

OPINION

Because neither party has raised the question of whether collateral estoppel may apply in reappraisement cases, we need consider only whether the Customs Court was justified in its application of collateral estoppel in this particular action.

The doctrine of collateral estoppel rests on the public policy of precluding repetitious lawsuits. Three questions must be answered affirmatively to find appellant collaterally estopped herein by the final judgment in H. M. Young Associates, supra: (1) Were the issues decided in the prior action identical with those presented in the instant action? (2) Was there a final judgment on the merits in the prior action? (3) Was the party against whom the plea is asserted a party, or in privity with a party, to the prior action? Commissioner v. Sunnen, 333 U.S. 591, 68 S.Ct. 715, 92 L.Ed. 898 (1948).

That the answer to questions (2) and (3) is clearly “yes” is not disputed. Appellant argues that the answer to question (1) must be “no.”

Appellant maintains that our treatment of the separability rule in United States v. Pan American Import Corp., 57 CCPA 134, C.A.D. 993, 428 F.2d 848 (1970), introduced an intervening change in the law which raises an issue not litigated in H. M. Young Associates, supra. That issue is whether the importer proved that the undisputed portion of the appraisement represented all the elements of constructed value.

We agree that the issues in this case are identical to those litigated in H. M. Young Associates, supra, and with the view of the trial judge that our opinion in Pan American did not require a contrary result. We, therefore, affirm the judgment of the Customs Court. However, we are compelled by the trial judge’s one-sentence dismissal of Pan American and by the vigorous nature of appellant’s attack on application of the rule of separability, to say more.

The trial judge distinguished Pan American on the ground that it involved export value, whereas the present case involves constructed value. Though we join his apparent distaste for a tendency to confuse differing segments of the statute, we note that H. M. Young Associates, supra, on which the trial judge based his application of collateral estop-pel, rested on two cases involving export value.

Appellant makes no candid frontal attack on the separability rule itself. Nonetheless, appellant’s position herein, if sustained, would result in emasculation of that rule.

As we said in Pan American, the phrases “separable appraisement” and “separability rule” were succinctly explained in United States v. Supreme Merchandise Co., 48 Cust.Ct. 714, A.R.D. 145 (1962), as follows:

If ex-factory prices and other charges are separately stated on the invoices and the appraiser’s finding of value is expressed in terms of the invoice unit prices, plus the questioned charges, the appraisement is deemed to be separable. United States v. Dan Brechner et al., 38 Cust.Ct. 719, A.R.D. 71 [1957]; United States v. Gitkin Co., * * * ; Valley Knitting Co., Inc., et al. v. United States, 44 Cust.Ct. 599, Reap.Dec. 9627 [1960]. Under the rule expressed in United States v. Fritzsche Bros., Inc., 35 C.C.P.A. (Customs) 60, C.A.D. 371 [1947], a party to a reappraisement proceeding may challenge one or more of the elements entering into an appraisement, while relying upon the presumption of correctness of the appraiser’s return as to all other elements, whenever the challenged items do not disturb the effect of the remainder of the appraisement. Such is the case in the instance of an appraisement at ex-factory-plus-charges value, and the charges may be disputed without the necessity of proof that the ex-factory prices comply with the statutory definition of export value. United States v. Dan Brechner et al., supra.

The separability rule is a salutary one. In United States v. Bud Berman Sportswear, Inc., 55 CCPA 28, C.A.D. 929 (1967), we described it as a “framework of convenience for the analysis of disputed appraisements.” While clearly productive of procedural convenience, the rule is also rooted in fairness. In every case of disputed appraisement the importer confronts, and the government enjoys, a presumption of correctness attaching to the appraiser’s valuation and all items therein. Sec. 501, Tariff Act of 1930, 28 U.S.C. § 2635. When the appraisement is separable and the importer challenges less than all of its separate items, it would not only be wasteful of judicial time to require the importer to prove the correctness of presumptively correct and unchallenged items, it would be unfair and incongruous. Absent the separability rule, the courts, the government, and importers would all undergo an anomalous process in which plaintiff would undertake to prove the correctness of unchallenged actions of defendant, while defendant, presumably, would abandon the presumption of correctness and attempt to prove its own unchallenged actions incorrect. To require an importer facing a separable appraisement to “challenge all or challenge nothing” seems manifestly unfair, not only to the importer, but also to the courts and to the society, which must be taxed to pay for a portion of every litigious process in which the government participates. In this sense, the separability rule, like the doctrine of collateral estop-pel and other procedural rules, is grounded in public policy. Collateral es-toppel reduces the number of lawsuits. Separability reduces the length and complexity of reappraisement cases.

Yet the effective destruction of the separability rule is sought herein by appellant. Its brief contains the following:

It seems to us that C.A.D. 993 [Pan American] requires that where constructed value is involved and one seeks to avail himself of the presumptions inherent in the doctrine of separability, it is not enough to show that that portion of the appraisement in dispute is not a part of the value, but the party relying upon the undisputed portion must go further and prove that, all of the elements of constructed value * * * are included in the amount which is “not in dispute” before there is a presumption that that amount is the correct constructed value. [Emphasis added.]

And again:

As the importer in Pan-American, supra, was required to show that the elements of export value were present with regard to the manner in which the exporter did business before the presumption arose that the ex-factory price represented export value, so also should the plaintiff in H. M. Young, supra, and herein have proved that the amount of the appraised value alleged not to be disputed represented all of the elements of constructed value before the Court granted it judgment. [Emphasis added.]

If the foregoing contentions of appellant were adopted, requiring a plaintiff to prove all elements of constructed value in every case, there would be no point or purpose to the separability rule. Appellant reads too much into our opinion in Pan American. We held in that case that an importer challenging only the addition of inland charges could rely on the presumption of correctness of the ex-factory price as the export value, thus recognizing the continuing viability of the separability rule. We did not hold, as argued by appellant, that the importer was required to prove “that all elements of export value have been met.” (Emphasis added.)

In Pan American, we pointed out that in Bud Berman, supra, and United States v. Chadwick-Miller Importers, Inc., 54 CCPA 93, C.A.D. 914 (1967), the plaintiffs had in fact established that the merchandise had been freely sold or offered to all purchasers at ex-factory prices, we found that the lower courts’ reliance on those authorities, in defining plaintiff’s burden as being met upon proof of ex-factory sale only to it, constituted error.

Our opinion in Pan American must be read in the light of the fact situation there present. Plaintiff had elected to challenge the correctness of the addition of inland charges. The bona fides of inland charges as such depends on whether such or similar merchandise is freely sold or offered to all at ex-factory prices. Part of plaintiff’s burden on that issue, therefore, was to prove that such or similar merchandise was freely sold or offered to all on an ex-factory basis.

From what has been said, it is apparent that the opinion in Pan American applies to cases involving a challenge to the addition of inland charges to an ex-factory invoice price in an appraisement based on export value. Other “export value” cases may find the separability rule working to relieve the plaintiff from any requirement to prove that the merchandise was freely sold or offered to all at ex-factory prices. In one of the earliest cases applying the rule, United States v. Fritzsche Bros., 35 CCPA 60, C.A.D. 371 (1947), wherein the addition to export value was occasioned by a reduction in weight of the merchandise, this court said:

Appellee challenged the item of 8.-40108 per centum, and by uneontra-dicted evidence overcame the presumption of correctness attaching to that item. Because, however, the importer had challenged that item only and no other item of the appraisement, the presumption of correctness as to all those others is not destroyed, and, therefore, they stand as presumptively correct.

Thus, in Fritzsche, plaintiff was able to prove the incorrectness of the addition for reduced weight by showing that such reduction did not increase unit value but reduced it. The separability rule operated as intended, i. e., to limit the trial to the sole issue raised by the challenge to the appraisement. See also United States v. Tide Water Oil Co., 19 CCPA 392, T.D. 45554 (1932).

In the prior litigation appellee accepted the presumption of correctness for one part of the value and successfully challenged the other. Appellant may not require appellee to meet this burden again under the facts presented in this case. Appellant has not shown that Pan American altered the separability rule or that its application in this case violates any public policy or works any injustice. To the contrary, we think it would work an injustice if the rule were not fully applied herein.

Summarizing, we hold that the trial court committed no error in granting ap-pellee’s motion for summary judgment and in denying appellant's cross-motion.

Affirmed.

      . The briefs incorrectly describe the appeal as being from the “decision and judgment.” 28 U.S.C. § 2601 was amended in 1970 to substitute “judgment or order” for “decision.”

      . United States v. Bud Berman Sportswear, Inc., 55 CCPA 28, C.A.D. 929 (1967); United States v. Chadwick-Miller Importers, Inc., 54 CCPA 93, C.A.D. 914 (1967).


author: ROSS, Circuit Judge.

text:
    UNITED STATES of America, Appellee, v. Jeannette Elizabeth HAGER, Appellant.
    No. 74-1308.
    United States Court of Appeals, Eighth Circuit.
    Submitted Oct. 15, 1974.
    Decided Nov. 5, 1974.

      John W. Brickler, St. Louis, Mo., for appellant.
    Richard E. Coughlin, Asst. U. S. Atty., St. Louis, Mo., for appellee.
    Before HEANEY, BRIGHT and ROSS, Circuit Judges.
   ROSS, Circuit Judge.

Jeannette Elizabeth Hager appeals from her conviction by a jury of two counts of possession of matter which had been stolen from the mail in violation of 18 U.S.C. § 1708. We affirm that conviction.

The two counts in the indictment were based on two incidents occurring a few months apart in which personal checks were stolen from the mail, the name of the payee was altered and Ms. Hager appeared at financial institutions to cash these stolen, altered instruments. The first time she was successful in her endeavor, but the second time she was apprehended after suspicious bank employees notified the police. She was attempting to cash the second check using an assumed name when she was arrested.

During the trial various government witnesses who were postal inspectors and local policemen testified regarding the contents of certain exculpatory statements Ms. Hager had made to them in the course of their investigations. However, these statements had been given by her before she had been given the warnings required by Miranda v. Arizona, 384 U.S. 436, 86 S.Ct. 1602, 16 L.Ed.2d 694 (1966).

Also, in his closing argument to the jury, the government’s attorney stated that “there are certain questions I would like answered by the defense in this case.” He then propounded five questions regarding the evidence in the case. Appellant claims that this was improper because it implied that the defendant had a burden of proving her innocence. Additionally, during the closing argument the prosecutor said, “Nobody gave the defendant, Jeannette Hager, or at least the people that the government produced, no one gave her permission to have this check in her possession. It didn’t come from Alice Cooper and it didn’t come from Ruth Maness.” This, allegedly, was improper because, again, it implied that the defendant had to come forward with evidence and because it was in itself a comment on the defendant’s having not testified. The prosecutor also told the jury that “the evidence in this case, I think, is totally overwhelming;” which Ms. Hager’s appellate attorney argues is an improper statement of personal opinion by the government attorney.

Ms. Hager’s trial attorney, Mr. Jess Ullom, made no attempt to suppress the exculpatory statements nor did he object to this testimony at trial. Neither did he object to the prosecutor’s remarks made during closing argument. In fact, he attempted to answer the questions raised by the prosecutor during his own closing argument. There was no motion for a mistrial.

In this posture the only issue with which we must deal on this appeal is whether or not Ms. Hager was denied her constitutional right to effective assistance of legal counsel. We believe that she was not.

The standard for ineffectiveness of counsel followed by this circuit is the so-called “mockery of justice” standard. An oft-quoted statement of this standard is found in Cardarella v. United States, 375 F.2d 222, 230 (8th Cir.), cert. denied, 389 U.S. 882, 88 S.Ct. 129, 19 L.Ed.2d 176 (1967):

The rule applicable is that a charge of inadequate representation can prevail “only if it can be said that what was or was not done by the defendant’s attorney for his client made the proceedings a farce and a mockery of justice, shocking to the conscience of the Court.” O’Malley v. United States, 6 Cir., 285 F.2d 733, 734 (1961).

Two recent opinions of this Court have continued this standard in effect, but have pointed out its limitations. Garton v. Swenson, 497 F.2d 1137, 1139-1140 (8th Cir. 1974); McQueen v. Swenson, 498 F.2d 207, 214-218 (8th Cir. 1974). These opinions have demonstrated that the “mockery of justice” standard is not meant to be an impenetrable obstacle to any meaningful analysis of the facts of the particular case. As stated in McQueen v. Swenson, supra, 498 F.2d at 214:

Stringent as the “mockery of justice” standard may seem, we have never intended it to be used as a shibboleth to avoid a searching evaluation of possible constitutional violations; nor has it been so used in this circuit. It was not intended that the “mockery of justice” standard be taken literally, but rather that it be employed as an embodiment of the principle that a petitioner must shoulder a heavy burden in proving unfairness.

Nonetheless, applying the “mockery of justice” standard as interpreted in McQueen to the facts of the present case it is clear that Ms. Hager was not denied effective assistance of legal counsel. It should be noted initially that unlike McQueen and Garton v. Swenson, supra, the appellant here does not attack her trial attorney’s preparation of the case. Rather, she asserts that he made mistakes in the conduct of the defense during the trial itself. However, this attack runs directly into the precept stated in Robinson v. United States, 448 F.2d 1255, 1256 (8th Cir. 1971), and expressly reaffirmed in McQueen, supra, 498 F.2d at 216, that in choosing trial tactics “the exercise of a defense attorney’s professional judgment should not be second-guessed by hindsight . . . .” A wrong or poorly advised decision by a defense attorney is not alone enough to support a subsequent claim of ineffective counsel. Robinson v. United States, supra, 448 F.2d at 1256. Analysis of the arguments advanced by Ms. Hager indicate clearly that she is asking us to do what this Court has expressly refused to do — second-guess by hindsight the trial tactics utilized by the defense attorney.

In any event, we are not certain that the trial tactics chosen by Mr. Ullom were wrong. At the time of the trial Ms. Hager had at least six prior felony convictions. Mr. Ullom could easily foresee that if she took the witness stand to tell her own story, the prosecutor could and would inquire about these past convictions for impeachment purposes and that the jury might be swayed by this evidence in spite of any cautionary instructions. Instead of having Ms. Hager testify, he logically chose to allow her version of how she happened to have the stolen checks in her possession to come out through the testimony of the government witnesses regarding the exculpatory statements given to them by Ms. Hager. For this reason he did not challenge their admissibility on the grounds of the failure to give the Miranda warnings. Whether or not on hindsight this strategic decision was wise, we need not decide, but we certainly cannot say that it alone shows ineffective assistance of counsel.

This same conclusion is applicable to appellant’s contention that it was a tactical mistake for Mr. Ullom to admonish the jury during his opening argument to keep the evidence presented as to the first and second counts separate and distinct. In fact, it would normally be considered good practice to stress to the jury that the government must prove every element of every crime charged. ■

Finally, Ms. Hager asserts that her trial attorney blundered by not objecting to the allegedly improper comments made by the prosecutor. There is no merit to this argument for the reason that it is far from clear that the prosecutor’s remarks were objectionable. It takes a great deal of twisting of the language used to conclude that the questions asked by the prosecutor and his statement that none of the government witnesses had given Ms. Hager permission to possess the check were indirect comments on the failure of the defendant to testify or were an effort to shift the burden of proof to the defendant. We are satisfied that the propounding of questions was merely a rhetorical device designed to stress the government’s circumstantial evidence of guilty knowledge. And, at most, the statement regarding permission might be construed as a comment upon the defense’s failure to call any witnesses to contradict the government’s case — a comment the government is free to make, except where the defendant alone has the information to do so. United States v. Thompson, 490 F.2d 1218, 1221 (8th Cir. 1974).

Likewise, the interjection of the words “I think” into the prosecutor’s statement that the evidence was overwhelming did not prejudice Ms. Hager. This is not a situation in which the prosecutor told the jury that he personally believed the defendant guilty, see, e. g., United States v. Kilpatrick, 477 F.2d 857, 360-361 (6th Cir. 1973), or in which he claimed that the government only prosecuted guilty individuals, see, e. g., United States v. Chrisco, 493 F.2d 232, 237-238 (8th Cir. 1974). Rather, he simply expressed his opinion of the evidence which had been adduced. It is clear that a prosecutor may “comment on the evidence and the reasonable inferences that [can] be drawn therefrom.” United States v. Lawson, 483 F.2d 535, 539 (8th Cir. 1973), cert. denied, 414 U.S. 1133, 94 S.Ct. 874, 38 L.Ed.2d 757 (1974). See also, United States v. Olsen, 487 F.2d 77, 83 (8th Cir. 1973), cert. denied, 415 U.S. 993, 94 S.Ct. 1594, 39 L.Ed.2d 890 (1974).

It is true that “even if based on the evidence, statements by counsel of their personal conviction of the merits of their client’s cause should always be avoided.” United States v. Benson, 487 F.2d 978, 981 (3d Cir. 1973). See also, United States v. LeFevre, 483 F.2d 477, 478-479 (3d Cir. 1973); ABA Project on Standards for Criminal Justice, Standards Relating to the Prosecution Function, Standard 5.8(b) (Approved Draft, 1971). However, it is equally true that “if based on the evidence, prosecutorial comments on the guilt of the accused are not reversible error per se.” United States v. Benson, supra, 487 F.2d at 981. See also, United States v. LeFevre, supra, 483 F.2d at 479; United States v. Kilpatrick, supra, 477 F.2d at 360-361. Where, as here, the evidence of guilt was, in fact, “overwhelming,” the prosecutor’s use of the words “I think” did not inject reversible error into the proceedings.

For the foregoing reasons, it cannot be said that Ms. Hager’s trial attorney was ineffective because he did not object to the prosecutor’s remarks. We conclude that the appellant was not denied her right to effective assistance of counsel, and the judgment of conviction is affirmed.

      . At oral argument before this panel Ms. Hager’s appellate attorney conceded that her trial attorney had waived the Miranda issue by not raising objections to the introduction of the evidence at the trial. In that regard see Henry v. Mississippi, 379 U.S. 443, 451-452, 85 S.Ct. 564, 13 L.Ed.2d 408 (1965).


author: McCREE, Circuit Judge.

text:
    William GARY, Plaintiff-Appellant, v. Henry DARNELL, t/d/b/a Hank Darnell Motors, Defendant-Appellee.
    No. 73-2222.
    United States Court of Appeals, Sixth Circuit.
    Argued Oct. 15, 1973.
    Decided Oct. 23, 1974.
    Stuart L. Lyon, David Kaplan, Louisville, Ky., for plaintiff-appellant.
    Thomas W. Burks, Louisville, Ky., for defendant-appellee.
    Before McCREE, MILLER, and EN-GEL, Circuit Judges.
   McCREE, Circuit Judge.

This appeal presents the question whether the repossession of an automobile pursuant to Kentucky’s self-help repossession statute, § 9-503 of the Uniform Commercial Code, constitutes action under color of state law within the meaning of 42 U.S.C. § 1983. We follow this court’s decision in Turner v. Impala Motors, 503 F.2d 607, decided September 20, 1974, and hold that the act of repossession pursuant to § 9-503 was not made under color of state law.

On July 25, 1972, appellant entered into a consumer credit transaction with appellee for the purchase of an automobile. The deferred payments were not made according to the terms of the agreement, and appellee’s employee, on December 29, 1972, repossessed the automobile. Appellant contends that this repossession was improper because it occurred without notice or prior hearing and that it is cognizable in the federal courts because it was under color of state law.

In Turner, supra, another panel of this court upheld the identically worded Tennessee repossession statute. In determining whether the acts of repossession were under color of state law, we decided then that the remedy was privately created by contract and that the statute did not create, but rather codified, the common law right to repossession in cases of default.

The only significant difference between Turner and this case is that Tennessee, at common law, recognized the remedy of self-help repossession. On the other hand, in Kentucky, the seller in a secured transaction, prior to the enactment of the Uniform Commercial Code, obtained a lien on the chattel and the right of repossession was permitted only if stipulated in the agreement. Cartwright v. C.I.T. Corp., 253 Ky. 690, 70 S.W.2d 388 (1934); Brown v. Woods Motor Co., 239 Ky. 312, 39 S.W.2d 507 (1931). Appellant argues that the enactment of 9-503 significantly changed Kentucky law so that state action was present whenever repossessions were made pursuant to the statute. Cf. Reit-man v. Mulkey, 387 U.S. 369, 87 S.Ct. 1627, 18 L.Ed.2d 830 (1967).

The history of self-help repossession in California is similar to that in Kentucky. Before the enactment of the California Commercial Code, parties to secured transactions could expressly provide by contract for the remedy of self-help repossession, and such an agreement could also be implied. The Ninth Circuit, in its decision upholding repossessions made pursuant to § 9-503, regarded this difference as without significance, and noted that “the enactment of the provisions of the Uniform Commercial Code did not reverse the law as it had been prior to the enactment of the Code, but merely codified existing law for the most part.” Adams v. Southern California First National Bank, 492 F.2d 324, 332 (9th Cir. 1973). We deem this statement applicable to this case and we perceive no more state action in a legislative change of law than in a judge-made change. Since we find no significant involvement of the state in this repossession, we affirm the judgment of the district court. Compare Moose Lodge No. 107 v. Irvis, 407 U.S. 163, 173, 92 S.Ct. 1965, 32 L.Ed.2d 627 (1972) with Burton v. Wilmington Parking Authority, 365 U.S. 715, 81 S.Ct. 856, 6 L.Ed.2d 45 (1961).

Affirmed.

      . 855.9-503 Sectored party’s right to take possession after default. Unless otherwise agreed a secured party has on default the right to take possession of the collateral. In taking possession a secured party may proceed without judicial process if this can be done without breach of the peace or may proceed by action. If the security agreement so provides the secured party may require the debtor to assemble the collateral and make it available to the secured party at a place to be designated by the secured party which is reasonably convenient to both parties. 'Without removal a secured party may render equipment unusable, and may dispose of collateral on the debtor’s premises under KRS 355.9-504. (1958, c. 77, § 9-503 ; effective July 1, 1960).

      . § 1988. Civil action for deprivation of rights

      Every person who, under color of any statute, ordinance, regulation, custom, or usage, of any State or Territory, subjects, or caus s to be subjected, any citizen of the United States or other person within the jurisdiction thereof to the deprivation of any rights, privileges, or immunities secured by the Constitution and laws, shall be liable to the party injured in an action at law, suit in equity, or other proper proceeding for redress. R.S. § 1979.


author: PER CURIAM:

text:
    UNITED STATES NATIONAL BANK OF OREGON, a National Banking Association, Plaintiff, v. AMERICAN HOME ASSURANCE COMPANY, Defendant-Appellant, v. Charles L. SHEPHERD, Intervenor-Appellee.
    No. 72-2630.
    United States Court of Appeals, Ninth Circuit.
    Nov. 11, 1974.

      Lloyd B. Ericsson (argued), Dusen-bery, Martin, Bischoff & Templeton, Portland, Or., for defendant-appellant.
    R. W. Kitson, Rader & Kitson (no appearance), Portland, Or., for interve-nor-appellee.
    Before TRASK and SNEED, Circuit Judges, and GRAY, District Judge.

       Honorable William P. Gray, United States District Judge, Central District of California, sitting by designation.

   OPINION

PER CURIAM:

This is a diversity case in which American Home Assurance Company (American Home) appeals from the judgment of the district court denying it a right of subrogation against the principal insured, Charles L. Shepherd. We affirm.

Shepherd, the appellee, purchased an aircraft by giving his promissory note, secured by a chattel mortgage on the airplane. The seller assigned the note and mortgage to the United States National Bank of Oregon (the bank). American Home issued a policy insuring Shepherd against loss of or damage to the airplane. The policy contained an exclusionary clause which provided that the policy would be voided as to Shepherd if the loss or damage were to be caused by his misconduct or occurred while the airplane was being operated by an unlicensed pilot.

Pursuant to a requirement by the bank as a condition to its accepting assignment of the note, the policy also contained an endorsement that provided for payment to the bank of the amount of its lien, irrespective of whether the policy was invalidated as to Shepherd because of his misconduct or the participation of an unlicensed pilot.

During the term of the policy, the airplane was destroyed in a crash. American Home denied all liability under the policy because at the time of the accident the plane was being operated by a friend of Shepherd that lacked the necessary pilot certification. However, the district court later found Shepherd to have been innocent of any fraud, deception, or other impropriety.

In the resulting litigation, the bank obtained judgment against Shepherd on the note and against American Home on the endorsement, the latter judgment providing that payment thereof would satisfy the judgment against Shepherd. American Home paid to the bank the amount of the note and sought to recover the money so paid from Shepherd on the contingent cross-claim that it filed against him. American Home based its claim upon a provision in the policy which reads:

“Whenever the Insurer shall pay any sum for loss, damage or expense under this policy and claim that, as to the Insured, no liability existed therefor, the Lienholder shall thereupon, to the extent of such payment, assign, deliver and convey all interest that the Lienholder may have in said aircraft, all instruments of security pertaining thereto and rights against the Insured, to the Insurer.”

Relying upon the exclusionary clause in the policy to disclaim liability to Shepherd (the insured) for the loss that it paid to the bank (the lienholder), American Home contended that it was entitled to succeed to the bank’s right to collect from Shepherd on the note. In other words, American Home contended that the quoted provision gave it a right of subrogation against Shepherd, the purchaser of the policy.

The district court disagreed and dismissed with prejudice American Home’s claim in an opinion which expressed the view that “Subrogation clauses in insurance policies must be strictly construed against the Insurance Company. If the Insurance Company wanted to collect against the principal insured, it must so provide in clear and unequivocal language. Without such a provision, there is no right of subrogation. Milwaukee Mechanics’ Ins. Co. v. Ramsey, 76 Or. 570, 149 P. 542 (1915) . . . .” (347 F.Supp. 311, 313 (D. Oregon 1972)).

We agree with the trial court in its statement of Oregon law (which must be followed in this diversity case) and in its reliance upon Ramsey. That case involved a fire insurance policy purchased by Ramsey to cover a laundry that he owned and had mortgaged to the bank, which he designated as an insured under the policy. A loss occurred; the insurance company paid the bank’s claim under the policy and unsuccessfully sought subrogation against Ramsey. In affirming the decision of the trial court, the opinion of the Oregon Supreme Court said:

“We cannot import into the contract a stipulation to the effect that Ramsey should not only pay the premium, but also reimburse the company for the loss. It was not the intention of the parties that Ramsey should thus carry all the risk, besides paying the premium.” Milwaukee Mechanics’ Ins. Co. v. Ramsey, 76 Or. 570, 149 P. 542, 544 (1915).

See also, American Central Insurance Company v. Weller, 106 Or. 494, 212 P. 803 (1923).

Likewise in the present case, Shepherd paid all of the insurance premiums under the policy, including the endorsement upon which the bank recovered. We do not know what portion of the premium was allocable to that endorsement; it may be that American Home’s undertaking under that endorsement was intended to be no more than a guaranty of Shepherd’s debt to the bank. Under such circumstances, subrogation would be anticipated as appropriate. But, under Oregon law, if an insurance company wishes to enjoy such a right of subrogation against an insured who purchases a policy and pays the premiums, it is obliged to give its customer clear and unequivocal notification to that effect. We agree with the trial court that the subject policy did not comply with such requirement.

Judgment affirmed.

      . The litigation also included a claim by Shepherd against American Home under the policy. Summary judgment was granted against him on statute of limitations grounds, and sucli judgment was affirmed on appeal by this court. 443 F.2d 844 (9th Cir. 1971).


text:
    John B. KOTMAIR, Jr., dba (Sole owner of Free State Home Builders, Inc.), Appellant, v. D. GRAY et al., Appellees.
    No. 74-1716.
    United States Court of Appeals, Fourth Circuit.
    Submitted Sept. 26, 1974.
    Decided Nov. 8, 1974.

      John B. Kotmair, Jr., on brief for appellant.
    George Beall, U. S. Atty., Donald H. Feige, Asst. U. S. Atty., M. King Hill, Jr., and Michael A. Pretl, Baltimore, Md., on brief for appellees.
    Before CRAVEN, BUTZNER and RUSSELL, Circuit Judges.
   PER CURIAM:

John B. Kotmair filed a pro se complaint against D. Gray and Gale Youn-kins, officers of the Internal Revenue Service, and certain employees of the Carroll County Bank and Trust Co. charging them with violating a number of his constitutional rights while acting under color of state law (42 U.S.C. §§ 1983 and 1985) and seeking $20,000 general and $60,000 punitive damages against each defendant. This action arose when Free State Home Builders, Inc., a corporation wholly owned by Kot-mair, incurred a penalty of $26.88 for late payment of $806.46 Federal Employment Taxes. Kotmair received a notice of the deficiency on February 19, 1973, and two letters entitled “Final Notice Before Seizure” on May 3 and August 8, 1973. These notices explained that if the amount due was not paid within 10 days, Free State’s assets could be levied upon without further notice. Appellant explained to the IRS agents and the bank in which Free State had an account that if they levied upon or permitted levy upon Free State’s account, he would bring legal action against them. The account was levied upon; the amount levied was transferred from the bank to the government; and this suit was brought. The district court, on a motion by the defendants, granted summary judgment, and we affirm.

In his complaint, appellant attacks the constitutionality of 26 U.S.C. § 6331, which authorized collection of overdue taxes by levy and seizure. However, a determination of that statute’s constitutionality is not necessary to a decision of the instant appeal. We need note only that the defendants, in seizing and paying the penalty, acted within their official scope of duty and in good faith reliance upon the law, see Eslinger v. Thomas, 476 F.2d 225 (4th Cir. 1973), and therefore are not subject to suit for their actions. Barr v. Mateo, 360 U.S. 564, 79 S.Ct. 1335, 3 L.Ed.2d 1434 (1959). In any event, there was no action under color of state law. Rather, the IRS agents acted under federal law, and the bank employees acted as private citizens obeying the federal law. Thus, none of the defendants would be subject to suit under 42 U.S.C. § 1983 even had their actions not been protected.

Although appellant contends that there are important issues of fact to be decided, summary judgment is appropriate where, as is the ease in the instant action, one party is entitled to judgment as a matter of law, Fed.R.Civ. P., Rule 56; for it is clear that even were appellant to prove all of the facts which he has alleged, he would not be entitled to judgment in this case.

Accordingly, we dispense with oral argument and the judgment of the District Court is affirmed.

Affirmed.


author: PER CURIAM.

text:
    In re Jerome P. TROY, Appellant.

      No. 74-1229.

    United States Court of Appeals, First Circuit.
    Heard Oct. 8, 1974.
    Decided Nov. 1, 1974.
    Certiorari Denied March 17, 1975.
    See 95 S.Ct. 1412.

      Lawrence F. O’Donnell Boston, Mass., for appellant.
    Richard J. Yita, Boston, Mass., for Massachusetts Bar Association.
    Before COFFIN, Chief Judge, ALD-RICH and McENTEE, Circuit Judges.
   PER CURIAM.

This is an appeal from, disbarment from the federal bar in Massachusetts, after a hearing before three district court judges based upon the transcripts of testimony, exhibits proffered, and the ultimate decision reached in a state action against the appellant brought before the Supreme Judicial Court of Massachusetts. The conclusions reached by the Massachusetts court resulted in appellant’s removal as judge of the Dorchester District Court and disbarment from the Massachusetts bar. In Matter of Troy, 193 Mass.Adv.Sh. 1107, 306 N.E.2d 203.

The appellant raises three separate grounds to challenge the proceedings below. The first is that the district court inappropriately considered the findings of the Supreme Judicial Court. This claim rests in part on the assertion that that court had no power under the Constitution of the Commonwealth to remove the appellant as judge; that under Massachusetts law such power was vested in the legislature. But the Massachusetts law has been definitely interpreted to permit such removal from judicial office by the highest court of the state. Matter of DeSaulnier, 1971 Mass.Adv. Sh. 1345, 274 N.E.2d 454. This interpretation is binding upon us. Moreover, the power to remove Massachusetts judges was never at issue before the federal court, the single question being the qualifications of the appellant as a member of the bar. The Massachusetts court’s authority to examine qualifications of bar members, except as to the procedural matter discussed as appellant’s third claim, infra, is not being challenged by appellant. See, e. g., Matter of Mayberry, 295 Mass. 155, 3 N.E.2d 248 (1936); Boston Bar Ass’n v. Greenhood, 168 Mass. 169, 46 N.E. 568 (1897).

The appellant’s second claim is that the evidence adduced in the state proceeding demonstrated only a failure to meet the high requirements of judicial propriety and that the standard for membership in the bar is a lower one. We could take issue with the premise that standards are or must be different, as did the district court, but note instead that even accepting the distinction for present purposes, there was ample evidence to support disbarment. The charges were not of mere inattention to judicial responsibility. Aside from violation of the court rules and denial of the rights of defendants who had appeared before appellant, there were findings of gross abuse of the judicial process. The information alleged and the Massachusetts court found that appellant had deliberately violated the terms of a license and that in testifying before the Superior Court on this matter he had purposefully misled the court. The Supreme Judicial Court found there had been purposeful alteration of court records in an effort to conceal evidence and that appellant had filed under penalty of perjury knowingly false answers to interrogatories. In finding this last fact the Massachusetts court rejected the testimony appellant gave as “entirely incredible. We do not believe that there was any failure of memory. We find instead a deliberate, calculated, persistently repeated lie.” In Matter of Troy, 306 N.E.2d at 223. It is unnecessary to go into the remainder of the court’s findings-. An attorney’s obligation in such instances is clear. Disbarment based on such findings is well founded:

“[A] fair private and professional character is essential to the right to be a member of [the federal] Bar. . . . [T]heir loss by wrongful personal and professional conduct, where-ever committed, operates everywhere and must, in the nature of things, furnish adequate reason in every jurisdiction for taking away the right to continue to be a member of the Bar in good standing.” Selling v. Radford, 243 U.S. 46, 49, 37 S.Ct. 377, 378, 61 L.Ed. 585 (1917).

The appellant’s third and final claim is that he was denied due pi; cess by the Massachusetts court’s failure to provide adequate notice of the possibility that the proceeding could result in disbarment. There is no dispute as to the necessity of providing due process where disbarment is threatened. It is clear that the district court may rely upon the findings of the state court only if the state procedure afforded due process. Selling v. Radford at 51, 37 S.Ct. 377.

It was, therefore, incumbent upon the district court and upon this court to examine the record to determine whether there was adequate notice. The district court ruled that the disbarment of a judge that took place in Matter of DeSaulnier, 1972 Mass.Adv.Sh. 65, 279 N.E.2d 296, put appellant on notice. We need not rely exclusively on that point. Having examined the information, pleadings and pretrial motions, we find that appellant had actual notice of the possibility of disbarment prior to the state hearing. Not only was the proceeding initiated bythe Bar Association, but the amicus curiae “The People First” in the petition to intervene and the motion to present arguments and briefs as amicus, specifically sought disbarment and described the Bar Association petition as being based in part on its earlier letters to the bar requesting investigation and possible disbarment. Finally, in a prehearing motion to dismiss filed by the appellant, the reasons stated in support of the motion included a claim that “the allegations of the amended petition, even if proven as true, would not warrant disbarment, suspension or censure.” It is clear that appellant was on notice as to the possible ramifications of an adverse finding. The district court appropriately relied upon the state court procedure.

Affirmed.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. David Patrick WILLIS, Defendant-Appellant.
    No. 74-1751.
    United States Court of Appeals, Ninth Circuit.
    Oct. 23, 1974.
    Certiorari Denied March 3, 1975.
    See 95 S.Ct. 1355.

      Richard G. Reinjohn (argued), of Von Herzen Catlin, Reinjohn & Clements, Los Angeles, Cal., for defendant-appellant.
    Jan L. Handzlik, Asst. U. S. Atty. (argued), Los Angeles, Cal., for plaintiff-appellee.
    Before DUNIWAY and CHOY, Circuit Judges, and SMITH, District Judge.

       The Honorable Russell E. Smith, United States District Judge for the District of Montana, sitting by designation.

   OPINION

PER CURIAM:

Willis appeals from his conviction in a jury trial on eleven counts of knowingly making false statements in acquiring firearms from a licensed dealer in violation of 18 U.S.C. § 922(a)(6) and § 924(a). We affirm.

In 1967, Willis was indicted in New York state court for criminally possessing a loaded firearm, a felony. Plea bargaining led to his pleading guilty to a lesser included offense of attempting to unlawfully possess a loaded firearm, still a felony with maximum sentence of 3% years. During the bargaining the judge had said that if a plea were entered he would sentence Willis “as if it were a misdemeanor”. The sentence imposed was nine months, which was duly served.

In 1969 Willis moved to California. Between 1971 and 1972 he bought eleven guns from a dealer in Orange County. Each time he filled in and signed the required state and federal forms. Question 8b on the federal form was:

Have you been convicted in any court of a crime punishable by imprisonment for a term exceeding one year? (Note: The actual sentence given by the judge does not matter — a yes answer is necessary if the judge could have [printed in bold face] given a sentence of more than one year).

He answered this question, “No”.

Willis contends among other things, that § 922(a)(6) is void for vagueness and unconstitutional as applied to him, and that his answer to question 8b was not false. We disagree.

We are not persuaded by appellant’s claim that that portion of the statute referring to a crime punishable by more than one year and the “Note” to question 8b did not give fair and adequate notice to him under his particular circumstances. Willis would have us analyze his answer to question 8b from his perspective after the plea bargain was struck. From that point on, Willis argues, under New York law, the judge could not have imposed a sentence of more than one year. In reading question 8b and applying the statute we find no reason to adopt that distorted perspective. It is true that the judge did agree that he would not sentence Willis to more than one year, but that agreement does not alter the fact that the crime was “punishable by imprisonment for a term exceeding one year,” as specified by the statute, 18 U.S.C. § 922(d)(1), and question 8b.

“The question itself was forthright and direct, stating that it was concerned with conviction of a crime punishable by imprisonment for a term exceeding one year and that this meant the term which could have been imposed and not the sentence actually given.” Huddleston v. United States, 415 U.S. 814, 94 S.Ct. 1262, 1272, 39 L.Ed.2d 782 (1974). We fully agree with this statement as applied to the facts presented to us by Willis. His answer to question 8b was false in each instance.

Appellant’s other contentions are without merit.

Affirmed.


text:
    Barney J. BAKER, Appellant, v. STATE OF ARKANSAS, Appellee.
    No. 74-1665.
    United States Court of Appeals, Eighth Circuit.
    Submitted Nov. 15, 1974.
    Decided Nov. 19, 1974.
    Barney J. Baker, pro se.
    James Guy Tucker, Atty. Gen., and Jack T. Lassiter, Asst. Atty. Gen., Little Rock, Ark., for appellee.
    Before LAY and HEANEY, Circuit Judges, and TALBOT SMITH, Senior District Judge.

       TALBOT SMITH, Senior District Judge, Eastern District of Michigan, sitting by designation.

   PER CURIAM.

Petitioner Baker, an Arkansas prisoner, appeals the dismissal of his habeas corpus petition in which he challenges Rule 8(d) of the Rules of the Supreme Court of Arkansas. That rule provides:

Pro Se Briefs will be accepted only in those criminal appeals in which the appellant has knowingly and intelligently refused the services of an attorney on appeal. Such a brief shall be accompanied by an affidavit that the appellant has prepared it without the assistance of any other prison inmate.

Petitioner alleges he wishes to proceed pro se in an appeal from the denial of post-conviction relief in the Arkansas state courts. He asserts, however, that the Supreme Court of Arkansas, in conformity with Rule 8(d), will not allow him to proceed pro se beyond the filing stage unless he is willing to submit an affidavit stating that he has prepared his brief without the assistance of any other prison inmate. If the affidavit is not filed, the Supreme Court requires the appointment of counsel. Petitioner challenges this as a violation of Johnson v. Avery, 393 U.S. 483, 89 S.Ct. 747, 21 L.Ed.2d 718 (1969), and an infringement upon his constitutional right of reasonable access to the courts. We disagree and affirm the district court’s refusal to grant relief.

Johnson v. Avery, supra, set aside a rule which prohibited inmates within the Tennessee State Penitentiary from advising or aiding one another in preparing writs and other legal matters. The Supreme Court held that this would deny access to the courts in some eases and that the state could not abridge or impair a prisoner’s right to apply to a federal court for a writ of habeas corpus. In so holding the Court emphasized that Tennessee did not provide available alternatives to the assistance then provided by other inmates. 393 U. S. at 488, 89 S.Ct. 747.

The Arkansas rule does not fall within the prohibition of the Avery case for at least two cogent reasons. First, a prisoner is not denied the right to petition a court, pro se, with the assistance of another inmate. The Supreme Court’s rule relates only to filing legal briefs on appeal. Second, the rule recognizes an alternative for legal assistance afforded by other inmates, i. e., the appointment of counsel in every case. The rule is clearly not intended to restrict an individual’s access to the court. Quite the contrary, it has a two-fold salutary purpose: (a) the provision of free trained legal assistance to an indigent prisoner, and (b) assistance to the court through elimination of the necessity of sifting through an “unskillful” writ writer’s brief. Furthermore, after appointed counsel has filed his brief, the petitioner “may supplement it in any part for consideration on appeal.”

It would appear . that the State Supreme Court has promulgated a rule designed to aid the petitioner, not to hinder a prisoner in the exercise of his right to petition the courts. The unskilled eye of the inmate “writ writer,” who is not trained in the science of the law, evidently views the rule as a challenge to the status he has achieved by virtue of his ability to render some assistance to other inmates. Johnson v. Avery was not intended to protect that status, however. The greater interest to be served is the recognition of some form of legal assistance to the inmate. The Arkansas rule is obviously intended to assure that confined individuals will be given every opportunity to assert those legal rights which may affect their very liberty, and that they will have the guiding hand of competent legal assistance in their efforts. It is difficult to say that the rule is constitutionally impermissible.

Judgment affirmed.

      . The petitioner alleges the district court erred in treating his petition under 42 U.S. C. § 1983. Since the claim itself does not relate to unlawful custody, it would appear that the claim could be viewed by the court under either § 1983 or 28 U.S.O. § 2254. See Wilwording v. Swenson, 404 U.S. 249, 92 S.Ct. 407, 30 L.Ed.2d 418 (1971).

      . This fact was made known to petitioner in a letter from the office of the Clerk of the Supreme Court of Arkansas. We assume that it states a general concomitant of Rule 8(d).