author: WINTER, Circuit Judge:

text:
    EQUITY MORTGAGE CORPORATION, a Virginia corporation, Appellee, v. Harold J. LOFTUS, Jr. and Jeanne M. Loftus, Defendants, United States of America, Appellant.
    No. 74-1003.
    United States Court of Appeals, Fourth Circuit.
    Argued May 9, 1974.
    Decided Oct. 18, 1974.

      Gary R. Allen, Atty., Tax Div., U. S. Dept, of Justice (Scott P. Crampton, Asst. Atty. Gen.,- Meyer Rothwacks, Crombie J. D. Garrett, Attys., Tax Div., U. S. Dept, of Justice, Brian P. Gettings, U. S. Atty., and James A. Oast, Jr., Asst. U. S. Atty., on brief) for appellant.
    Robert M. White, Norfolk, Va. (White & Selkin, Norfolk, Va., on brief) for appellee.
    Before BOREMAN, Senior Circuit Judge, WINTER and CRAVEN, Circuit J udges.
   WINTER, Circuit Judge:

When Equity Mortgage Corporation (Equity) foreclosed its second deed of trust on property owned by Mr. and Mrs. Harold Loftus in Virginia Beach, Virginia, it purchased the property for $1,000, subject to a first deed of trust to Mutual Federal Savings and Loan Association (Mutual) on which the principal balance was $17,956.33. At the time, the principal balance on the second deed of trust was $3,210.28. Additionally, before foreclosure, Equity had made payments to Mutual of $1,796.40 on account of the debt in order to avoid a foreclosure by Mutual and extinguishment of Equity’s second lien.

Equity’s foreclosure extinguished a federal tax lien for unpaid income taxes which was junior to Equity’s second deed of trust. Within the time prescribed by statute, the government purported to exercise its right of redemption under 28 U.S.C. § 2410(d) and 26 U.S.C. § 7425 (d), and tendered Equity $1,019.27— Equity’s purchase price at the foreclosure sale, plus statutory interest — but Equity declined the tender.

In this suit to quiet title, the district court, construing 28 U.S.C. § 2410(d) (1), held that the government could have redeemed only by paying Equity the full amount of its lien. We disagree. We hold that under the statute the government may redeem by paying Equity the amount the latter paid at foreclosure together with the expenses necessarily incurred in connection with such property which we hold included payments to Mutual prior to Equity’s foreclosure as well as after foreclosure and prior to redemption. Additionally, on general principles of equity, we hold that the government must pay Equity subsequent amounts it paid to Mutual while this litigation was pending. Finally, we reject Equity’s claim that the statute fixing the redemption price is unconstitutional. We reverse and remand for further proceedings in accordance with the views set forth herein.

I.

The facts are not disputed, and we adopt the statement set forth in the government’s brief:

At all pertinent times prior to March 21, 1969, taxpayers, Harold and Jeanne Loftus, were the owners of certain real property located in Virginia Beach, Virginia. The property was subject to a first deed of trust securing a note executed by taxpayers in favor of Mutual Federal Savings and Loan Association (Mutual), and a second deed of trust (duly recorded on June 15, 1966) securing a note executed by taxpayers in favor of Equity.
On June 15, 1967, notice of a federal tax lien arising under assessments made against taxpayers for federal income taxes for the years 1961 through 1963 in the amount of $17,221.79 was filed in the Circuit Court of the City of Virginia Beach, Virginia. The government’s tax lien was junior to both the first deed of trust securing the note held by Mutual and the second deed of trust securing the note held by Equity.
Thereafter, taxpayers defaulted on payments due on both of these notes, and Equity made payments to Mutual on the note secured by the first deed of trust in the total amount of $1,-796.40 during the period July 15, 1968, to February 28, 1969. Equity thereupon instructed its trustee to foreclose on the second deed of trust. After proper notice was given to the Commissioner of Internal Revenue, pursuant to Section 7425 of the Internal Revenue Code of 1954, the property was offered for sale at public auction on March 21, 1969, at which time Equity purchased the property, subject to the first deed of trust, for the sum of $1,000. As of that date, there was a principal balance outstanding on Mutual’s note, secured by the first deed of trust, of $17,956.33, and a principal balance outstanding on Equity's note, secured by the second deed of trust, of $3,-210.28. The effect of the foreclosure sale under Virginia law was to discharge the property from the Government’s junior tax lien and to satisfy taxpayers’ obligation on the note held by Equity only to the extent of the purchase price less expenses of sale (i. e., $1,000 less $198.05 = $801.-95).
On March 26, 1969, Equity offered to assign the property to the Government for the amount then owed Equity by taxpayers of $5,224.80 (including the principal balance outstanding on the note, Equity’s payments to Mutual and certain foreclosure expenses) plus a five-percent “Trustee’s commission.” The offer was not accepted. Instead, on July 16, 1969, within the 120-day period allowed for the exercise of the Government’s right of redemption under Section 7425 of the Internal Revenue Code and 28 U.S.C. § 2410, the Government tendered Equity a check in the amount of $1,019.27 (reflecting Equity’s purchase price plus statutory interest as provided for under 28 U. S.C. § 2410(d) ) for the purpose of exercising its right of redemption. Although Equity declined to accept the tender, the District Director of Internal Revenue caused a certificate of redemption to be recorded in the Circuit Court of the City of Virginia Beach on July 18, 1969. On April 15, 1970, Equity recorded its deed at a cost of $103.50 based on an estimated fair market value for the property of $32,500. Between the date of the foreclosure sale and the date of the tender, Equity made additional payments to Mutual on the note secured by the first deed of trust in the total amount of $563.80, and between the date of tender and June 1, 1970, Equity made further payments on Mutual’s note in the amount of $1,656.20.
The District Court invalidated the certificate of redemption on the grounds that the Government’s tender was insufficient in light of the payments made by Equity to Mutual, its expenses of recording its deed, and the principal balance remaining outstanding on its note. Notwithstanding the fact that taxpayer’s obligation to Equity was satisfied by the foreclosure sale only to the extent of the net proceeds thereof, the court concluded that the provisions of 28 U.S.C. § 2410(d)(1) required the tender of the full amount of the obligation secured by the lien where, as here, the purchaser (Equity) has stated its willingness (after this action was commenced) to waive its right to a deficiency judgment if the full amount were tendered. (Record references omitted.)

II.

The government’s right of redemption, which is not contested, was created by 26 U.S.C. § 7425(d). Section 7425(b) governs a sale of property on which the United States has or claims a lien, and § 7425(d) states that “[i]n the ease of a sale of real property to which subsection (b) applies to satisfy a lien prior to that of the United States, the Secretary . . . may redeem within the period of 120 days from the date of sale . The section states that the redemption price shall be the amount prescribed in 28 U.S.C. § 2410(d). The pertinent part of § 2410(d) reads:

(d) In any case in which the United States redeems real property under section 7425 of the Internal Revenue Code of 1954, the amount to be paid for such property shall be the sum of—
(1) the actual amount paid by the purchaser at such sale (which, in the case of a purchaser who is the holder of the lien being foreclosed, shall include the amount of the obligation secured by such lien to the extent satisfied by reason of such sale),
(2) interest on the amount paid (as determined under paragraph (1) ) at 6 percent per annum from the date of such sale, and
(3) the amount (if any) equal to the excess of (A) the expenses necessarily incurred in connection with such property, over (B) the income from such property plus (to the extent such property is used by the purchaser) a reasonable rental value of such property.

The part of the language of § 2410(d) which gives rise to this litigation is that in subparagraph (1) — “the actual amount paid by the purchaser . which [since Equity was the lienor and purchaser] shall include the amount of the obligation ... to the extent satisfied by reason of such sale . . . ” (emphasis added). The language is troublesome because one is required to look to state law to determine the effect of the lienor’s purchase of the property at foreclosure on the overall obligation, and the laws of the various states differ. It is not disputed that, under the applicable Virginia law, Equity’s lien was satisfied only to the extent of the purchase price ($1,000), less the expenses of sale ($198.05), and that Equity would be entitled to a deficiency judgment against Mr. and Mrs. Loftus for the remaining unpaid balance. But this is not necessarily true in other states and, hence, § 2410(d)(1) may have a different effect in them in prescribing what the government must pay if it exercises its right to redeem.

That there are these differences in state law and that therefore § 2410(d) (1) prescribes a shifting quantum of redemption price depending upon the state in which it is applied are fully recognized in the examples to 26 C.F.R. § 400.5-l(c) (2), the temporary regulations to the Federal Tax Lien Act of 1966, and, specifically, to subparagraph (1) (i), which is a restatement of § 2410 (d)(1). They follow:

Example (1). A, a delinquent taxpayer, owns Blackaere located in X State upon which B holds a mortgage. After the mortgage is properly recorded, a notice of tax lien is filed which is applicable to Blackaere. Subsequently, A defaults on the mortgage and B forecloses on the mortgage which has an outstanding obligation in the amount of $100,000. At the foreclosure sale, B bids $50,000 and obtains title to Blackaere as a result of the sale. At the time of the foreclosure sale, Blackaere has a fair market value of $75,000. Under the laws of X State, the mortgage obligcution is fully satisfied as a result of the foreclosure sale and the mortgagee cannot obtain a deficiency judgment. Under subparagraph (l)(i) of this paragraph, the district director must pay $100,000 in order to redeem Black-acre.
Example (2). Assume the same facts as in example (1), except that under the laws of X State, the fair market value of the property foreclosed is the amount of the obligation legally satisfied as a result of the foreclosure sale, and in a case in which the amount of the obligation exceeds the amount of the fair market value of the property, the mortgagee has the right to a judgment for the deficiency computed as the difference between the obligation and the fair market value of the property. In such a case the district director must, under subpara-graph (1) (i) of this paragraph, pay $75,000 in order to redeem Blackacre, whether or not B seeks a judgment for the deficiency.
Example (3). Assume the same facts as in example (1), except that under the laws of X State, the amount bid is the amount of the obligation legally satisfied as a result of the foreclosure sale, and in the case in which the amount of the obligation exceeds the amount bid, the mortgagee has the right to a judgment for the deficiency computed as the difference between the amount of the obligation and the amount bid. In such a case, the district director must, under subpara-graph (1) (i) of this paragraph, pay $50,000 in order to redeem Blackacre, whether or not B seeks a judgment for the deficiency. (Emphasis added.)

It will be seen that Virginia is a state within the third example and the redemption price, before adjustments required by other provisions of law, is the amount bid at foreclosure irrespective of whether Equity has obtained a deficiency judgment for the balance of its unpaid debt.

Notwithstanding the contrary views of the district court, Equity Mortgage Corporation v. Loftus, 323 F.Supp. 144 (E.D.Va.1970), we think that the legislative history of § 2410(d) indicates that the statute means literally what it says. The definitive statement of purpose and intent is contained in S.Rept.No.1708, 89th Cong., 2d Sess., at 34 (1966):

The bill also provides a formula for determining the price the Government must pay where it redeems property sold in proceedings where the Government is joined as a party (under this section), and where it is sold in foreclosures other than plenary judicial proceedings. The redemption price is to be the amount paid by the purchaser at the foreclosure sale plus interest at the statutory rate (6 percent) from the date of sale. Where the purchaser at the sale is the person whose lien is being foreclosed, the amount paid by him includes the amount of the debt underlying his lien to the extent that the lien is satisfied by the sale. Where the lien is fully satisfied, the purchaser is not to receive less than the amount due him at the time of the sale. Where the lien attaches to other property, however, or where, after the sale, "the purchaser still has the right to sue for the unpaid balance of the amount due him, the amount paid does not include this unpaid balance. S.Rept.No.1708, 89th Cong., 2d Sess.; 1966 [3] U.S.Code Cong. & Admin. News, at 3756.

We think the expression of legislative intent clear, concise and specific. Certainly it was intended to change the case law of such authorities as First National Bank & Trust Co. v. MacGarvie, 22 N.J. 539, 126 A.2d 880 (1956), affirming 41 N.J.Super. 151, 124 A.2d 345 (1956) and United States v. Brosnan, 264 F.2d 762 (3 Cir. 1956), aff’d, 363 U.S. 237, 80 S.Ct. 1108, 4 L.Ed.2d 1192 (1960); and it was intended as a uniform federal rule to fix the computation of redemption price where federal statutes were theretofore silent. We do not think that literal application can be avoided on the ground of legislative overkill (323 F.Supp. at 154), or the subsequent unilateral act of the lienor after a title dispute and litigation have ensued (323 F.Supp. at 155). We hold that § 2410(d)(1) required the government to tender Equity only the amount paid by Equity at the foreclosure sale in order for the government to exercise its right of redemption. By the terms of § 2410 (d)'(2), this amount bore interest at 6% per annum from the date of sale.

III.

As previously stated, Equity made payments to Mutual prior to the Equity foreclosure in order to forestall foreclosure by Mutual. Equity has made additional payments to Mutual since foreclosure, again to prevent Mutual from foreclosing its superior lien with the possibility of extinguishing Equity’s interest, and one of these was made after foreclosure and prior to redemption. We think that Equity should be reimbursed for payments both before and after foreclosure, less any adjustments required to be made by § 2410(d)(3).

Section 2410(d)(3) requires, as an element of the tender price to effect redemption, the payment of “the expenses necessarily incurred in connection with such property.” Of course, in the ordinary case, we think that the statute refers to expenses incurred by the purchaser at foreclosure during the 120-day period after foreclosure before the government exercises its option to redeem for ordinary maintenance of the property, i. e., painting, roof repairs, plumbing repairs, etc. But if the statute covers ordinary physical maintenance to prevent physical destruction of the property, in whole or in part, we disagree with the government that it should not also be read to include expenses to prevent destruction of the title. Thus, as we read the statute, it includes the single payment to Mutual within this period. But we do not think it unreasonable to read the statute to include more under the facts of this case.

It is certain that if Equity had not paid Mutual the installments on Mutual’s debt which became due and were in default prior to Equity’s foreclosure, Mutual may well have foreclosed with the possibility that the liens of Equity and the government might have been extinguished. In a very real sense, the payments to Mutual were, to a junior lien holder such as Equity, who buys in at its own foreclosure sale, expenses “necessarily incurred in connection with such property.” They were essential to the continued viability of Equity’s junior lien, and they had the effect of giving continued life to other liens junior to it. It is true that, as set forth in S.Rept. No.1708, the legislative intent of § 2410 (d) was to permit the purchaser at foreclosure to recover “any expenses incurred after the foreclosure sale in maintaining the property.” 1966 [3] U.S.Code Cong. & Admin.News, at 3756. (Emphasis added.) In the case of a third party purchaser or a purchase by a foreclosing senior lienor, “after the foreclosure sale” obviously means after title has been obtained. But in the case of a purchase by a foreclosing junior lienor, the principle against unjust enrichment requires that the statute be given a broader reading where the junior lienor has been required to make payments, prior to acquiring title, necessary to preserve its lien. Preservation of the junior lien has, as a necessary consequence, the preservation of the government’s ability, through exercise of its right of redemption, to acquire the interest that the junior lienor acquires when he purchases the property at his own foreclosure. The injustice of allowing the government to retain this benefit without compensating Equity is apparent when one considers that Equity, had it been successful in obtaining Mutual’s forbearance from pressing for collection until after Equity obtained title, could have brought such payments within the literal scope of § 2410(d)(3).

Accordingly, we think that the amount tendered by the government in exercise of its right of redemption should have included Equity’s payments of the installments on Mutual’s debt which became due and were in default prior to Equity’s obtaining title by foreclosure, but without interest, since the statute allows interest only on the actual amount paid by Equity at the sale.

Although we hold that the $1,-866.47 paid to Mutual prior to the foreclosure sale and the $563.80 paid to Mutual after such sale and prior to the government’s attempted redemption should be taken into account in computing the amount includable in the redemption price under § 2410(d)(3), it does not follow that Equity is entitled to a decree quieting title in it. First, § 2410(d) (3) also provides that expenses incurred by the purchaser are to be offset by any income derived from the property by the purchaser during its holding period. Since the district court has made no findings concerning the amount of income, if any, that Equity derived from the property during the period between the foreclosure sale and the government’s attempted redemption, a remand is necessary in order to determine what the correct redemption price should have been.

More importantly, even if the district court ultimately finds that the price tendered by the government was inadequate due to its failure to include the amounts specified above, we do not think that the district court should thereupon quiet title in Equity. The government made its original tender under the good faith belief that the statute did not require it to reimburse Equity for amounts paid to Mutual. Under such circumstances the government should be given a reasonable period of time after the district court’s decision upon remand to perfect its original tender, notwithstanding the fact that the statutory period in which a full tender must be made has long since passed. First National Bank & Trust Co. v. MacGarvie, 22 N.J. 539, 547-48, 126 A.2d 880, 885 (1956); Bain v. U. S., 74-1 USTC If 9114 (E.D.Tex. Sept. 25, 1973). Should the government perfect its tender, it will acquire title to the property in issue subject to certain equitable claims of Equity discussed below.

Similarly, we think that the government should reimburse Equity for amounts paid by Equity to Mutual while this litigation has been pending, even though strictly speaking they are not covered by the statute, since the government purported to exercise its right of redemption, albeit imperfectly, before these payments were made. Reimbursement must be without interest because of the familiar rule that the government is not liable for interest except by statute or contract. U. S. v. N. Y. Rayon Importing Co., 329 U.S. 654, 67 S.Ct. 601, 108 Ct.Cl. 763, 91 L.Ed. 577 (1957). The precise question decided in this appeal is a novel one. Although we decide against Equity, we do not deem its contentions frivolous. While the litigation has been pending, it has been certain that Mutual must be paid by someone, or else it would foreclose its superior lien and wipe out whatever interests Equity and the government might have. If, during the period, Equity had not contested the government’s title and, for reasons of its own, the government had not sold its interest in the property, the government would have been required to keep the debt to Mutual current or it might have lost its title to the property. Accordingly, we think that principles of fairness and equity, and the strong policy to avoid unjust enrichment, require that the government reimburse Equity for the amounts it paid to Mutual after the government purportedly exercised its right of redemption, if it acquires title to the property by perfecting its tender in conformity with the district court’s decision upon remand. Ordinarily, a court of equity will impose- an equitable lien upon the interest acquired by a person redeeming from a foreclosing junior lienor in the amount of payments made by such junior lienor to prevent foreclosure of a senior lien in order to prevent unjust enrichment. Graham v. Alcoves, 148 Colo. 379, 366 P.2d 375 (1961). This principle is applicable to the United States and it applies in the circumstances of this case. However, it will not be necessary to encumber the title that the government acquires when it perfects its original tender. The interests of Equity will be fully protected if the district court simply orders that Equity recover of the United States the amounts that it paid Mutual after the purported redemption by the United States, less, of course, any income that Equity derived from the property during such period, if, and when, the district court finally decrees that title vests in the United States as the result of perfection of its tender. The doctrine of sovereign immunity does not foreclose such an action by the district court. The United States, as intervenor, brought an affirmative claim in this action to quiet its title in the land. Equity’s claim for amounts paid to Mutual during this litigation, less any corresponding income derived from the property, is in the nature of a set-off against the government’s claim to the property. Such set-offs against an affirmative claim brought by the government have traditionally been considered exceptions to the sovereign’s immunity to suit. U.S. v. Ringgold, 33 U.S. 150, 8 Pet. 150, 163, 8 L.Ed. 889 (1834).

IV.

Before us, Equity contends that § 2410(d)(1) is unconstitutional because it denies procedural due process of law. In essence, the claim is that in accordance with Fuentes v. Shevin, 407 U.S. 67, 92 S.Ct. 1983, 32 L.Ed.2d 556 (1972), Equity should have been afforded a hearing before the government was permitted to exercise its right of redemption.

We reject the contention. We are unable to fathom what would be the subject matter of the hearing that Equity desires. The statute fixing the amount of money the government must tender to effect a redemption is self-explanatory and self-executing. To the extent that it requires interpretation as, for example, in the instant case, the courts are open and available, in a suit to remove a cloud on title, to pass on the adequacy of the tender. In case of any real dispute, Equity, or another lienor similarly situated, is not deprived of procedural due process of law.

Nor do we see any denial of substantive due process. Of course § 2410(d)(1) modifies state law, in cases in which the United States has an interest, as to what a lienor acquires when he purchases real property at his own foreclosure by giving the United States the right to redeem when its junior tax lien has been extinguished. In Virginia, the foreclosing-purchasing lienor is charged with knowledge that under the federal statute he risks being left with the right to become a judgment creditor of the debtor as his sole recourse on the secured obligation unless he bids the price at foreclosure up to the amount of the secured obligation. But since this option is available to avoid what may seem to the foreclosing lienor to be an unacceptable result, we cannot see where he has been deprived of property without due process of law.

For the reasons set forth above, the decision of the district court is reversed and the case is remanded for further proceedings in accordance with this opinion.

Reversed and remanded.


source: Caselaw Access Project

author: DYER, Circuit Judge:

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Sterling Keith ROGERS, Defendant-Appellant.
    No. 74-1252.
    United States Court of Appeals, Fifth Circuit.
    Nov. 27, 1974.
    Rehearing and Rehearing En Banc Denied Feb. 21, 1975.

      Malcolm McGregor, Philip T. Cole, El Paso, Tex., for defendant-appellant.
    William S. Sessions, U. S. Atty., Ronald Ederer, Asst. U. S. Atty., San Antonio, Tex., William B. Hardie, Jr., Asst. U. S. Atty., El Paso, Tex., for plaintiff-appellee.
    Before BROWN, Chief Judge, and AINSWORTH and DYER, Circuit Judges.
   DYER, Circuit Judge:

Rogers appeals from his jury conviction for (1) conspiracy to possess marijuana with intent to distribute in violation of 21 U.S.C.A. § 846, (2) possession with intent to distribute in violation of 21 U.S.C.A. § 841(a)(1), (3) using a communication facility in violation of 21 U.S.C.A. § 843, and (4) conspiracy to import marijuana in violation of 21 U. S.C.A. § 903. His arguable contentions on appeal are that there was an illegal search and seizure; that admissions used against him at trial were taken in violation of Miranda-, that it was error to deny his motion for acquittal on Courts 1, 3 and 4; that his requested instructions should have been granted; and finally that the sentence imposed was based upon impermissible standards. We are unpersuaded that Rogers’ trial was infected by reversible error, but because his sentence may have been based upon improper considerations, we vacate it and remand for resentencing.

At six-thirty on a Sunday morning as dawn was breaking, border patrolman Thompson of the Immigration Service was driving his marked vehicle in a sparsely settled area on a gravel road parallel with and about 300 yards from the Rio Grande River, which was then either dry or fordable. He observed a pickup truck with a shell camper approaching him without lights. Thompson pulled over and stopped on the side of the road because the camper was coming from a known river crossing. It was extremely unusual for such a vehicle to be in this vicinity at such an early time on Sunday morning. Thompson was also aware that similar vehicles were often used to smuggle aliens, who were picked up at the river in the early morning or late evening hours. As the camper came closer and the driver apparently realized that the parked auto was a patrol car (Thompson’s vehicle had a light bar and red lights on top and “United States Border Patrol” lettering on the sides), the driver of the camper turned on his headlights and accelerated. As Thompson turned the patrol car around the camper left him at a high rate of speed trying to get away. Thompson turned on his headlights, red lights and siren and pursued the camper at speeds over 100 miles per hour. After some distance the camper left the road, traversed a cotton field, broke through a barbed wire fence, continued on at a high rate of speed through another cotton field and then came out on a road again. During this rough ride large clear plastic sacks, believed to contain marijuana, bounced up in the back of the camper and were clearly visible to Thompson.

Having gained the narrow paved road Thompson made several attempts to pass the camper to stop it but each time the camper was caused to fishtail across the road to prevent Thompson from coming alongside. Finally Thompson discharged his firearm in the air and the camper immediately made an abrupt turn off the road. A second shot was fired and the camper stopped between two labor houses on a farm. Rogers hastily fled the vehicle and ran into a cotton field. He was apprehended lying face down between rows of cotton. Thompson handcuffed Rogers and explained his Miranda rights to him. Rogers was noncommunicative. They walked back to the camper, where Thompson read Miranda warnings to Rogers from a card and then searched him. Rogers indicated that he understood his rights but that he would not waive them.

A search of the camper disclosed a scanner hooked up to run off a plug in the cigarette lighter, a walkie-talkie, battery pack, an extra antenna, and 427 pounds of marijuana.

THE SEARCH AND SEIZURE

The thrust of Rogers’ argument that the marijuana was the fruit of an illegal search is that the search was neither a border search nor its functional equivalent, Almeida-Sanchez v. United States, 1973, 413 U.S. 266, 93 S.Ct. 2535, 37 L.Ed.2d 596, and was made without a warrant, consent, or probable cause. We disagree. In United States v. Steinkoenig, 5 Cir. 1973, 487 F.2d 225, 227, we pointed out that:

It is true that the vehicle searched had not crossed a border, but this Circuit has decided that a border crossing is not the sine qua non of a valid border search. In United States v. Hill, 5 Cir. 1970, 430 F.2d 129, the court adopted the Second Circuit rule that “. . . when an individual has direct contact with a border area, or an individual’s movements are reasonably related to the border area, that individual is a member of the class of persons that a customs officer may, if his suspicions are aroused, stop and search while the individual is still within the border area. 430 F.2d 129 at 131.”

The search does not lose its border status because Rogers refused to stop 300 yards from the Rio Grande and had to be pursued for some miles from the border. Here the search occurred immediately after Rogers' vehicle was brought to a stop after a wild chase that followed the border area contact. We entertain no doubt that these circumstances create a nexus with the border that is sufficient to make this a border search. This being so probable cause is not required. It suffices if the customs agent entertained a reasonable suspicion. Steinkoenig, supra, 487 F.2d at 228. Without recanvassing in detail what transpired from the initial contact on a gravel road close to the river, in a desolate area, at dawn on a Sunday morning, through the chase, to the capture, we conclude that the agent had reasonable suspicion to search the camper. As we observed in Steinkoenig, and in like circumstances in United States v. Henriquez, 5 Cir. 1973, 483 F.2d 65, cert. denied sub nom. Buckholz v. United States, 414 U.S. 1095, 94 S.Ct. 728, 38 L.Ed.2d 553, Almeida-Sanchez is inapposite because of the strong nexus with the border and the agent’s reasonable suspicion of wrongdoing in this case.

ROGERS’ ADMISSIONS

When Special Agent Baden arrived upon the scene where the chase had concluded he instructed another agent to take the camper to the Drug Enforcement office. Rogers spontaneously remarked that the vehicle would not run because he had burned out the engine. Baden then told Rogers that he knew that agent Thompson had explained his rights to him but he nevertheless repeated them to Rogers. During the drive to El Paso, Rogers admitted that he had purchased the radio and had asked for police crystals for the area. Rogers also admitted that the other walkie-talkie was in the area but that “they must have gotten paranoid and split.” During the conversation Rogers said he owned the camper and had driven it down to the levee where some Mexicans whom he did not know loaded it with marijuana. When Rogers was asked who else was involved with him he refused to say any more.

Later, at the Drug Enforcement office, when agent Compton weighed the marijuana and found that it totaled 427 pounds, Rogers was again warned of his rights and stated that he wasn’t supposed to have gotten any marijuana, that he was stupid for picking it up, but that he did obtain it.

At trial, objection was made to these statements on the ground that Rogers had not knowingly and intelligently waived the constitutional rights of which he had been warned. The objections were overruled and the statements were admitted.

We find no merit in the contention that the voluntary waiver requirements of Miranda were not met. It is undisputed that before Rogers made the statements during the drive to El Paso, he had been given Miranda warnings on three separate occasions; twice by Patrolman Thompson, when he was first taken into custody in the cotton field and again after he had been taken back to the camper, and a third time by Agent Baden before he drove Rogers to El Paso. Before Rogers said anything at the Drug Enforcement office he was, for the fourth time, advised of his rights. It is also undisputed that Rogers acknowledged that he understood his rights.

In United States v. Montos, 5 Cir. 1970, 421 F.2d 215, 224, cert. denied, 397 U.S. 1022, 90 S.Ct. 1262, 25 L.Ed.2d 532, we elaborated on the proper construction of Miranda in these circumstances:

When a defendant warned of his rights makes statements without a lawyer present, the prosecution may use these statements at trial only if it sustains its “heavy burden” of demonstrating that the defendant “knowingly and intelligently waived his privilege against self-incrimination and his right to retained or appointed counsel.” . . . All that the prosecution must show is that the defendant was effectively advised of his rights and that he then intelligently and understandingly declined to exercise them. See Carnley v. Cochran, 369 U.S. 506, 516, 82 S.Ct. 884, 890, 8 L.Ed.2d 70 (1962).

With this guideline, we found in United States v. Guzman-Guzman, 5 Cir. 1974, 488 F.2d 965, that

the Government met its “heavy burden” by producing three witnesses who testified that the defendant was twice advised of his rights and that he twice acknowledged that he understood them. . . as in Montos, the [four] sets of warnings, admittedly understood, “effectively advised [the defendant] of his rights and . he then intelligently and understandingly declined to exercise them,” ... In these circumstances, the admission of such a statement constitutes no affront to Miranda.

Id. at 966.

MOTION FOR ACQUITTAL ON COUNTS 1, 3 and 4

We need not tarry long to dispose of Rogers’ argument that there was insufficient evidence to establish his guilt of the offenses charged in Count 1, a conspiracy to possess marijuana with intent to distribute; Count 3, the use of communications equipment to facilitate the importation of marijuana; and Count 4, a conspiracy to import marijuana. Rogers asserts that there was no extrinsic evidence to corroborate the corpus delecti, and, in any event, the statements were insufficient to prove a conspiracy.

It would be inutile to recapitulate the evidence we have recited in extenso. It is enough to say there was an abundance of evidence to corroborate Rogers’ admissions and to establish their trustworthiness. Opper v. United States, 1954, 348 U.S. 84, 75 S.Ct. 158, 99 L.Ed. 101; Hoover v. Beto, 5 Cir. 1972, 467 F.2d 516, cert. denied, 409 U.S. 1086, 93 S.Ct. 703, 34 L.Ed.2d 673; United States v. Allen, 9 Cir. 1972, 455 F.2d 509. Taking the view most favorable to the Government, Glasser v. United States, 1942, 315 U.S. 60, 62 S.Ct. 457, 86 L.Ed. 680, on a motion for judgment of acquittal “the test is whether ... a reasonably-minded jury might accept the relevant evidence as adequate to support a conclusion of the defendant’s guilt beyond a reasonable doubt.” United States v. Knox, 5 Cir. 1972, 458 F.2d 612, 615, cert. denied, 409 U.S. 845, 93 S.Ct. 48, 34 L.Ed.2d 85. Under this standard the trial court properly submitted the case to the jury on all counts.

DEFENDANT’S REQUESTED INSTRUCTIONS

Rogers’ complaint that probable cause to conduct a search of his camper was a fact issue to be determined by the jury, and that it was error to deny his requested charge posing such an issue, is frivolous. Probable cause and reasonable suspicion are legal issues to be determined by the court for the purpose of admitting or suppressing evidence. Obviously they are not issues to be determined by a jury at the conclusion of a trial for the purpose of sorting out evidence to determine what evidence was admissible.

Equally without merit is Rogers’ contention that the district court erred in refusing to charge, as requested in connection with Count 2, that he could be found guilty of simple possession of marijuana, a lesser included offense of possession with intent to distribute. At the time of his arrest Rogers had in his possession 427 pounds of marijuana, worth somewhere between $30,000 and $60,000 on the street. The vast amount of marijuana here involved, the sale of which would have been enormously profitable, strongly supports an inference that Rogers did not intend to use it himself but intended to sell it. United States v. Nocerino, 2 Cir. 1973, 474 F.2d 993, cert. denied, 412 U.S. 942, 93 S.Ct. 2785, 37 L.Ed.2d 402; United States v. Ortiz, 10 Cir. 1971, 445 F.2d 1100, cert. denied, 404 U.S. 993, 92 S.Ct. 541, 30 L.Ed.2d 545; see also United States v. Fonseca, 5 Cir. 1974, 490 F.2d 464; United States v. Polite, 5 Cir. 1974, 489 F.2d 679. In any event the Court’s refusal to instruct on simple possession was not error since “[a] lesser-included offense instruction is only proper where the charged greater offense requires the jury to find a disputed factual element which is not required for conviction of the lesser-in-eluded offense.” Sansone v. United States, 1965, 380 U.S. 343, 350, 85 S.Ct. 1004, 1009, 13 L.Ed.2d 882. (emphasis supplied). Absent some evidence to counter the strong inference of intent to distribute, the issue is not elevated to a truly disputed one.

SENTENCING

The court made an express finding in the record that Rogers would not benefit from treatment under the Youth Correction Act, 18 U.S.C.A. § 5010(b) or (c), and imposed an aggregate sentence of 15 years’ imprisonment, followed by a 9 years’ special parole term. At the time of sentence the court clearly indicated its distaste for Rogers’ lack of cooperation in identifying his confederates, especially in the face of the jury’s finding that a conspiracy existed. It gave Rogers to understand that the first step towards rehabilitation, in its opinion, was to cooperate with the authorities in bringing others involved in the conspiracy to justice, and unless and until Rogers indicated “substantial, material, productive cooperation” the court would not consider a lesser sentence.

Rogers urges us to review the sentences meted out since, although they are within the statutory limits, they are harsher than would have been otherwise imposed simply because he insisted upon his constitutional right to remain silent. We, of course, cannot modify the sentence, but if indeed Rogers “paid a judicially imposed penalty for exercising his constitutionally guaranteed rights,” we are called upon to exercise our supervisory powers. Thomas v. United States, 5 Cir. 1966, 368 F.2d 941, 946. As we recently explained in United States v. Hartford, 5 Cir. 1974, 489 F.2d 652, 654:

Appellate modification of a statutorily-authorized sentence . . . is an entirely different matter than the careful scrutiny of the judicial process by which the particular punishment was determined. Rather than an unjustified incursion into the province of the sentencing judge, this latter responsibility is, on the contrary, a necessary incident of what has always been appropriate appellate review of criminal cases. See e. g., Townsend v. Burke, 1948, 334 U.S. 736, 741, 68 S.Ct. 1252, 92 L.Ed. 1690; Williams v. New York, 1949, 337 U.S. 241, 69 S.Ct. 1079, 93 L.Ed. 1337.

When it has been made to appear that longer sentences have been imposed by the courts because the defendants refused to confess their guilt and persisted in their claims of innocence we have vacated the sentences. United States v. Rodriguez, 5 Cir. 1974, 498 F.2d 302; Bertrand v. United States, 5 Cir. 1972, 467 F.2d 901; Cf. United States v. Moore, 5 Cir. 1970, 427 F.2d 38, cert. denied, 400 U.S. 965, 91 S.Ct. 367, 27 L.Ed.2d 384; Thomas, supra. Until now we have had no occasion to address ourselves to the situation sub judice, where the trial court did not ask Rogers to directly confess his guilt, but rather to “sing” about others involved in the conspiracy. But we view this as a distinction without a difference. In United States v. Acosta, 5 Cir. 1974, 501 F.2d 1330, 1337-1338, the sentencing procedure employed by the district court was reviewed.

Two sentencing hearings were held. At the first of these, the court gave Acosta to understand that if he would cooperate with the authorities by revealing his drug sources this would redound to his credit, recessing to permit him to do so. At the second hearing the Court, noting that the “Probation officer doesn’t think you have shown any desire to co-operate,” passed a heavy, though not a maximum, sentence.
While I can only sympathize with the court’s efforts to reach the drug heirarchy [sic] through Acosta, the record suggests the possibility that the court may actually have taken Acosta’s refusal to cooperate into account in sentencing. If so, under such authorities as Thomas v. United States, 368 F.2d 941 (5th Cir. 1966) and United States v. Rodriguez, 498 F.2d 302 (5th Cir. 1974), the sentence should be vacated and a new sentence imposed without consideration of this refusal.
* * * *X* * *
True it is that in both cases the court was urging the convicted defendant to acknowledge only his own guilt, but I am unable to see how Acosta could have implicated others without, at least tacitly, admitting his own complicity.

[Dissenting opinion, Gee, Circuit Judge. This point was not' reached or considered by the majority of the panel.

We think that this result is mandated by Fifth Amendment considerations and we therefore decline to align ourselves with the differing views expressed in United States v. Vermeulen, 2 Cir. 1970, 436 F.2d 72, cert. denied, 1971, 402 U.S. 911, 91 S.Ct. 1390, 28 L.Ed.2d 653; United States v. Chaidez-Castro, 7 Cir. 1970, 430 F.2d 766, and Gollaher v. United States, 9 Cir. 1969, 419 F.2d 520, cert. denied 396 U.S. 960, 90 S.Ct. 434, 24 L.Ed.2d 424.

The judgment of conviction is affirmed. The sentence is vacated and the case remanded to the district court for further proceedings not inconsistent with this opinion.

      . Rogers was found not guilty of importing marijuana in violation of 21 U.S.C.A. §§ 952(a) and 960(a) (1).

      . Despite Rogers’ contentions to the contrary, the district court’s express finding satisfied the requirements of § 5010(d) of the Act, Dorszynski v. United States, 1974, 418 U.S. 424, 94 S.Ct. 3042, 41 L.Ed.2d 855.


author: CUMMINGS, Circuit Judge.

text:
    CRANE COMPANY, Plaintiff-Appellant, v. AEROQUIP CORPORATION, Defendant-Appellee.
    Nos. 73-2109 and 73-2110.
    United States Court of Appeals, Seventh Circuit.
    Argued Sept. 12, 1974.
    Decided Oct. 29, 1974.
    Rehearing Denied Nov. 15, 1974.

      Don K. Harness, Birmingham, Mich., William J. Stellman, Chicago, 111., for Aeroquip.
    Henry L. Brinks, Chicago, 111., for Crane.
    Before SWYGERT, Chief Judge, and CUMMINGS and PELL, Circuit Judges.
   CUMMINGS, Circuit Judge.

In these consolidated actions, plaintiff charged defendant with breach of a 1968 patent license agreement and with patent infringement. The basic questions are whether plaintiff’s Bredtschneider patent No. 2,933,333 is valid and, if it is, whether defendant’s accused coupling infringes the patent. Both parties appeal from the judgment below.

In its memorandum opinion, the district court upheld the Bredtschneider patent as to the nine claims in issue but ruled that defendant’s modified device did not infringe them. Nevertheless, since defendant marked its modified couplings with the Bredtschneider patent number until some time after November 1, 1972, it was adjudged liable for unpaid royalties on those couplings until the expiration of the license agreement on April 19, 1977. 364 F.Supp. 547 (N.D.Ill.1973). In addition, the trial court made rulings, which are challenged by either party in this Court, on the issues of marking estoppel, termination of the licensing agreement, costs and attorneys’ fees.

The patent-in-suit covers a pipe coupling used in installing split air-conditioning systems. Such a system usually employs a condenser unit outside the building and a cooling coil or evaporator unit inside the building, with the two units connected at the time of installation by connecting piping. Split air-conditioning systems are commonly used for residential, central air conditioning. Since both air and moisture are harmful contaminants in closed fluid air-conditioners, a means of connecting and charging the split system without contamination, without loss of refrigerant and without the expense of hiring skilled technicians was sought. The patented invention satisfied this need because it permits the condenser unit, the cooling coil unit and the connecting tubing to be precharged with refrigerant at the factory and connected without contamination or loss of refrigerant by unskilled installers at the job site.

Both the male and female halves of the patented coupling contain thin metallic diaphragms that restrain the fluid while the halves are unconnected. As the two halves are joined by the rotation of a union nut, both diaphragms are pierced by a cutter located within the male part, thus permitting the pre-charged fluid to flow freely through the coupling. Ordinarily four coupling halves, two male and two female, are used. One is located on the condenser, one on the cooling coil or evaporator and one at each end of the precharged connecting pipe or hose. By simply tightening the union nut on the two couplings the unskilled installer can make the closed fluid system operational in just a few minutes. The patent on this coupling issued on April 19, 1960.

Plaintiff filed an earlier lawsuit against defendant in 1967 charging that this patent was infringed by defendant’s original, stainless steel gasket coupling, denominated the 5700 Series. A consent decree was entered after the parties negotiated an exclusive license agreement under which defendant agreed to pay plaintiff royalties under the Bredt-schneider patent on sales of its original couplings. Defendant has paid or tendered all royalties due plaintiff under the license agreement on defendant’s sales of the original 5700 Series coupling.

In 1969, however, defendant commenced the manufacture of a modified 5700 Series coupling and has not paid any royalties to plaintiff on sales of it, thus precipitating the present litigation. The modified coupling eliminates a stainless steel gasket in the male part and provides for a brass-to-brass final static seal, rather than the stainless steel to brass seal of the original version. The male half remains the same.

As exclusive licensee under the patent, defendant has become the only company making and selling a coupling for fully precharged residential air-conditioning systems. By 1971-1972, defendant’s yearly sales of couplings exceeded $5,000,000 per year. While the original coupling outsold the modified one by a x’atio of fifteen or more to one in the first few quarters after the latter’s 1969 introduction, the ratio had reversed by March 1972.

Validity of Bredtschneider Patent

The nine claims presently in issue can be divided into two groups. Claims 1-4 emphasize the dynamic and static sealing means of the coupling while the remaining claims (6, 9, 11, 14 and 15) emphasize the relationship among the diaphragms in the male and female parts and the piercing means which opens the passage by penetrating the diaphragms as the two parts are connected. Claim 1 is illustrative of the first four claims and reads as follows:

“A coupling for a closed fluid system, comprising
(1) a pair of coupling parts movable relatively toward each other each having a passage therethrough,
(2) means for moving said parts toward each other in passage-aligning relation,
(3) a relatively thin metallic diaphragm in each part closing the passage therein,
(4) passaged cutting means disposed interiorly of the parts disrupting said diaphragms upon movement of the parts toward each other to open the passages to each other and defining a portion of the passage through the coupled parts,
(5) means sealing against leakage during movement of the parts to final position after diaphragm disruption, and
(6) gasket means sealing between the parts in final position thereof” (numbering added).

After examining the file wrapper history of these claims, the district judge, relying on the expertise of the Patent Office and the presumption of validity, held that Claims 1-4 were not anticipated by prior art invention within the meaning of 35 U.S.C. § 102(b). 364 F.Supp. at 552-554.

Next, the district court rejected the defense of obviousness under 35 U.S.C. § 103 as to all nine of the patent claims in suit. 364 F.Supp. at 554-556. For the reasons given below, we concur in those rulings upholding the nine claims at issue. In this connection, it is interesting to note that at oral argument in this Court, defendant’s counsel conceded that the last five claims (6, 9, 11, 14 and 15) were valid.

Infringement of Claims 1-U

In considering the file wrapper, the district court determined that “the combination dynamic and static seal by a gasket means was intended to be a material inventive distinction over the prior art” (emphasis added). 364 F.Supp. at 558. The court concluded that the gasket means was clearly a material and essential element of plaintiff’s amended claims. Defendant’s modified device omits the gasket means of achieving the final, static seal; thus it avoids literal infringement and causes plaintiff to rely on the doctrine of equivalents. However, the district court held that file wrapper estoppel prevented plaintiff from expanding its claims to cover defendant’s gasketless device.

Since a gasket sealing means was crucial to plaintiff in distinguishing the prior art and securing its patent, the doctrine of equivalents was clearly superseded here by the doctrine of file wrapper estoppel. Therefore, we agree that the modified coupling does not infringe Claims 1-4. See 364 F.Supp. at 556-558.

Infringement of Claims 6, 9, 11, H and 15

At the close of its case, plaintiff withdrew its Claim 5 infringement issue in order to “shorten the trial” and with the reservation that its admission that it failed to meet its burden of proof as to Claim 5 did not apply to the remaining claims. Thus plaintiff did not withdraw its complaint that Claims 6, 9, 11, 14 and 15 were infringed by the accused coupling.

Claim 5 reads as follows:

“A coupling for a closed fluid-circulating system, comprising—
(1) a pair of passaged coupling parts relatively movable toward each other,
(2) means for moving the parts relatively toward each other in passage-aligning relation,
(3) a thin metallic diaphragm in each part closing the passage therein,
(4) said diaphragms engaging upon said movement of the parts and the diaphragm in one of the parts having separable securement therein for detachment therefrom and movement therein by the other diaphragm, and
(5) a tubular member secured in said one part inwardly of the diaphragm extending toward the other part having its end adjacent said other part extending obliquely to the longitudinal axis of the member and forming a cutting portion of the member penetrating said engaged diaphragms upon said movement thereof to place said passages in communication” (numbering and emphasis added).

Claim 9 is illustrative of the remaining claims, all of which use broader language with regard to what element forces the male diaphragm rearward than that used in Claim 5. Claim 9 reads as follows:

“A coupling for a closed fluid-circulating system, comprising
(1) a pair of passaged coupling parts relatively movable toward each other,
(2) means for moving said parts relatively toward each other in passage-aligning relation,
(3) means in each part closing the passage therein,
(4) said closing means engaging against each other upon said movement of the parts and the closing means of one of the parts having separable securement therein for detachment and movement by the other closing means, and
(5) piercing means secured in said one part adjacent and inwardly of the closing means thereof engaging and penetrating said engaged closing means upon said movement thereof to open the passages to each other,
(6) said piercing means including means bearing against and displacing the penetrated closing means toward the wall of the passages to prevent flow obstruction thereby” (numbering and emphasis added).

Plaintiff apparently abandoned its contention that Claim 5 was infringed because its expert could not establish that the female diaphragm in defendant’s device was the sole object that forced the male diaphragm over the cutter (see element (4) of Claim 5). Plaintiff’s expert acknowledged that the nose of the female member itself might also play a role in pushing the male diaphragm back. Despite their broader language (see, e. g., element (4) of Claim 9) and plaintiff’s express reservation of its remaining claims upon withdrawal of Claim 5, the district court held Claims 6, 9, 11, 14 and 15 had not been infringed, reasoning as follows:

“Claim 5 was withdrawn for failure to prove that the accused coupling infringed the requirements of the claim, namely that the female diaphragm move the male diaphragm over the cutter. The other claims remained in suit. The only relevant distinction between Claim 5 and the other claims in issue is that Claims 6 and 9 employ the term ‘closing means’, Claims 11 and 14 employ the term ‘disruptable members’ and Claim 15 uses the term ‘penetrable means’. Plaintiff’s own claim charts show that there is no distinction between any of the terms used for purposes of distinguishing the diaphragm or hermetic seal from the rest of the coupling part. Accordingly, for the same reasons Claim 5 was withdrawn, proof of infringement of Claims 6, 9, 11, 14 and 15 failed.” 364 F.Supp. at 558.

To avoid this holding, plaintiff argues that its patent specification describes, as an alternative to the one-piece closing means, a two-piece closing means like that employed in defendant’s female coupling part. In this respect, the plaintiff relies on the following language from its specification:

“It will be clear that if desired both diaphragms 23 and 25 may be substantially identical, the part 12 [the female body part] in such case being formed with a sleeve portion for telescoping within the body portion 13 of part 11 [the male body part] and carrying the diaphragm 25.”

Plaintiff’s admission that it could not prove infringement of Claim 5 does not preclude plaintiff with respect to Claims 6, 9, 11, 14 and 15, because Claim 5 was drawn to a one-piece female closing means, described therein as “a thin metallic diaphragm,” and could not, therefore, cover the alternative two-piece sleeve and diaphragm closing means. On the other hand, the remaining five claims contain sufficiently broad language to cover the alternative two-piece female closing means described in the patent specification and used by defendant. For example, Claim 9 employs the term “means in each part closing the passages therein,” which reads literally on both of the disclosed one-piece and two-piece devices.

35 U.S.C. § 112 provides in pertinent part:

“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claims shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Under this statute, the district court was required to construe these five claims with reference to the patent specification. As seen, defendant’s two-piece closing means in its female coupling part is an alternative described in the specification of the suit patent, and it was improper to construe these five broad claims as if they contained the limitation expressed in the narrower Claim 5. Smith v. Snow, 294 U.S. 1, 16, 55 S.Ct. 279, 79 L.Ed. 721. Defendant’s device, therefore, is literally covered by Claims 6, 9, 11, 14 and 15 as they apply to the alternative design set forth in the patent specification.

The inked-in lines on all of plaintiff’s claim chart photographs indicate the same one-piece structure as the closing means, whatever the precise language of each claim. The district court relied on this similarity between Claim 5 and the remaining claims to justify treating the latter as equivalent to the former (364 F.Supp. at 558). We think that the language of the claims, which we have already held specifically cover defendant’s device, should control the indicators on the charts, especially since the charts were drawn simply to aid the trial court’s understanding. Therefore, the district court’s reliance on the similarity of the claim charts was misplaced. In addition, we note that plaintiff’s expert, Mr. Magos, explained that he colored the female closing means of defendant’s device green in several of the exhibits before the court, and the green coloring extends to both the sleeve portion and the diaphragm. It is clear from this second set of exhibits and the expert testimony that plaintiff contended at trial, as here, that both pieces of defendant’s female part constituted the closing means.

Furthermore, aside from the literal infringement, the district court here, as in Laser Alignment, Inc. v. Woodruff & Sons, 491 F.2d 866, 872 (7th Cir. 1974), should have applied the doctrine of equivalents. Its application is proper here because there is neither file wrapper estoppel nor restrictive prior art that bears upon the area of emphasis in these five claims. Our study of the record shows that defendant’s coupling and the suit patent do the same work in substantially the same way, with substantially the same result, so that infringement was made out. Graver Tank & Manufacturing Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608-609, 70 S.Ct. 854, 94 L.Ed. 1097. The doctrine of equivalents forbids the use of two pieces that perform the same function as one in order to avoid infringement. See Zysset v. Popeil Bros., Inc., 276 F.2d 354, 357-358 (7th Cir. 1960), certiorari denied, 364 U.S. 826, 81 S.Ct. 62, 5 L.Ed.2d 54.

Defendant relies on dye tests which it performed on its accused coupling to show that its female diaphragm does not force the male diaphragm over the cutter. However, those tests were not taken during movement of the parts, whereas three of plaintiff’s exhibits reveal that the male diaphragm of defendant’s coupling was engaged and moved by both parts of the two-piece female closing means, again showing infringement both literally and under the doctrine of equivalents.

To avoid infringement, defendant also relies on the phrase in these five claims that the male closing means have “separable securement therein for detachment.” This phrase is explained in the patent specification as follows:

“For convenience of securement, the diaphragm 23 has an integral flange lying against'the passage wall and is secured thereto by a ring of solder 24 or the like which may be fractured upon application of sufficient pressure so that the securement of the diaphragm is separable.
* * * * * *
“As the parts move relatively toward each other * * * continued relative movement of the parts causes the solder 24 to give way so that the diaphragm 23 may move within the part 11 with the diaphragm 25.”

It is thus apparent that the “securement” separates when the solder connection fractures and gives way, so that the male and female closing means can move together within the male part during coupling. The district court held with respect to separable securement that infringement had not been proved, except as to defendant’s size-12 coupling. 364 F.Supp. at 558.

In support of that holding, defendant argues that its male diaphragm does not completely separate. Defendant’s male closing means is mounted in the same manner as described in the suit patent specification. Its chief product engineer admitted that in all of its couplings the solder connection fractures and the male closing means peels away from the male coupling part upon coupling. In the light of the suit patent specification, it is immaterial whether defendant’s male closing means moves completely away or partially away from its solder connection. Therefore, defendant’s device literally infringes plaintiff’s five claims.

Furthermore, the plaintiff’s claimed movement of the male closing means occurs in any event, and under the doctrine of equivalents and Graver, supra, there is infringement since the elements in defendant’s device perform the same work, in substantially the same way, with substantially the same result.

Plaintiff’s witness Magos agreed that one illustration in plaintiff’s patent drawings showed complete separation, but he immediately thereafter testified that “separable securement” does not “necessarily mean that you have a complete separation.” He gave such examples as a partially detached retina and a half-way peeled banana. Since the claim language did not call for a completely separable securement, the district court erroneously held that infringement was not proved.

Termination of the License Agreement

The court below held that defendant’s failure to pay royalties on the accused couplings was not a sufficient basis for allowing plaintiff to terminate the license agreement, as it wished, particularly since there was “an honest dispute as to the coverage of the patent license.” 364 F.Supp. at 561. This decision was correct and was more fully explained in an earlier phase of the litigation. 356 F.Supp. 733, 737-740.

Defendant’s refusal to pay royalties on these couplings was given on the ground that they are outside the scope of the licensed patent. Even plaintiff concedes that defendant’s failure to make back royalty payments was not by itself cause for termination. The court below properly applied the public policy concerns of Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610, in its earlier opinion, noting:

“Crane has asked this court to adjudicate the license as terminated essentially because the licensee has raised the validity defense. Yet, just as the imposition of the doctrine of licensee estoppel would have a chilling effect on meritorious challenges to patents, as well as ultimate competition with the licensee, so would the threat of termination of the license have a similar effect.” 356 F.Supp. at 738-739.

As we held in Beckman Instruments, Inc. v. Technical Development Corp., 433 F.2d 55, 58-59 (7th Cir. 1970), certiorari denied, 401 U.S. 976, 91 S.Ct. 1199, 28 L.Ed.2d 326, the fact that defendant marked its products with plaintiff’s patent number is insufficient to make the Lear case and its policy rationale inapplicable. Defendant was within its rights to test validity after entering into the consent judgment of validity. Business Forms Finishing Service, Inc. v. Carson, 452 F.2d 70, 75 (7th Cir. 1971); Kraly v. National Distillers and Chemical Corp., 502 F.2d 1366 (7th Cir. 1974). Accordingly, we approve the district court’s refusal to declare the license agreement terminated; consequently, defendant’s obligations to pay royalties on these couplings are governed by the terms of the license agreement.

Marking Estoppel

The district court found that defendant had “a specific intent to mark the accused devices and represent them as protected by a patent.” 364 F.Supp. at 560. Despite its holding of non-infringement by defendant, the court held that defendant’s marking of its modified couplings with plaintiff’s patent number estopped it from denying that it was liable for royalties on the modified couplings. Because of our decision that the modified couplings do infringe Claims 6, 9, 11, 14 and 15 of the suit patent, it is unnecessary for us to decide the question whether the court was right in holding defendant liable by reason of marking. We express no opinion on that phase of the decision below.

Plaintiff’s Attorneys’ Fees and Costs

Relying on 35 U.S.C. § 285 permitting a district court to award reasonable attorneys’ fees to the prevailing party in exceptional patent cases, plaintiff insists that defendant’s conduct was sufficiently vexatious to justify awarding plaintiff’s attorneys’ fees. While we cannot condone defendant’s marking conduct, the statute does not require that attorneys’ fees be granted to the prevailing party. Nor do plaintiff’s authorities compel the award of attorneys’ fees where, as here, no showing has been made that the district court abused its discretion. By the same token, the district court’s discretion in awarding costs to plaintiff will not be disturbed where, as here, defendant has likewise not shown an abuse of discretion. Sarkes Tarzian, Inc. v. Philco Corporation, 351 F.2d 557, 561 (7th Cir. 1965). Therefore, the district court’s decisions to award costs to plaintiff and to deny it attorneys’ fees are affirmed.

Plaintiff’s Motion to Strike

A fortnight before the oral argument, plaintiff filed a motion to strike a paragraph of defendant’s reply brief requesting us to vacate paragraph 6 of the judgment below insofar as it may adjudge that defendant’s original 5700 Series couplings infringed Claims 6, 9, 11, 14 and 15 of the patent in suit. Paragraph 6 of the judgment below reads:

“Defendant’s STAINLESS STEEL SEAL COUPLINGS [the original 5700 Series] are covered by the claims of said Suit Patent, and said STAINLESS STEEL SEAL COUPLINGS infringe said Suit Patent.”

Because this matter was raised for the first time in plaintiff’s own reply brief and since the notice of appeal by defendant did embrace this matter, it was appropriate for defendant’s later reply brief to urge that paragraph 6 of the judgment was incorrect.

Since the original model is identical to the modified in all respects relevant to the area of emphasis in Claims 6, 9, 11, 14 and 15 and since we held that the modified version infringes those claims, it seems obvious that an expansive reading of paragraph 6 of the judgment below would be legally correct. Nevertheless, no issue was presented to the district court by the pleadings or tried by it as to whether the original couplings infringed Claims 6, 9, 11, 14 and 15. Furthermore, to read paragraph 6 to embrace the latter claims would be inconsistent with the holdings of the district court. It appears, therefore, that the infringement spoken of in paragraph 6 should be limited to Claims 1-4, which were fully litigated before the trial court. Defendant admits that its original model infringed Claims 1-4 if they were held valid, and it is only this admission that the district court should have encompassed in its final order. The original couplings have a stainless steel gasket to effect the final static seal and that sealing means was at the center of much of the case below. Only Claims 1-4 have any relation to gasket sealing means; consequently, plaintiff’s motion to strike is denied, and on remand paragraph 6 of the judgment below should be restricted to apply only to claims 1-4 of the suit patent.

The judgment below is affirmed insofar as it holds Claims 1-4 to be valid and enforceable but not infringed by the defendant’s modified couplings, insofar as it refuses to hold the license agreement terminated, and insofar as it awards costs to plaintiff and denies plaintiff’s request for attorneys’ fees and special damages.

The judgment below is reversed insofar as it holds Claims 6, 9, 11, 14 and 15 not infringed by the defendant’s modified couplings and is vacated and modified in order to confine paragraph 6 of the judgment to Claims 1-4.

The cause is remanded to the same district judge for further proceedings in order to assess the royalties due and for other appropriate relief in accordance with this opinion. Costs on appeal will be taxed against defendant.

      . It should be noted that the area of emphasis in this set of claims was not affected by defendant’s modification of its original coupling.

      . As to “separable securement” as used in Claims 6, 9, 11, 14 and 15, the court held that infringement was not proved on any of the manufactured sizes of the accused coupling except size-12. See discussion, infra at pp. 1091-1092.

      . Except in the conclusion of its reply brief, plaintiff no longer claims entitlement to special damages under 35 U.S.C. § 284. In any event, plaintiff has failed to show that the district court abused its discretion in denying plaintiff special damages.


author: PER CURIAM:

text:
    Richard and Deloris BOWLES et al., Plaintiffs-Appellees, v. BLUE LAKE DEVELOPMENT CORPORATION, Blue Lake Mobile Home Ranch, Inc., and Rapee Realty Company, Inc., Defendants-Appellants.
    No. 71-2077.
    United States Court of Appeals, Fifth Circuit.
    Nov. 22, 1974.

      Paul E. Gifford, Miami, Fla., for defendants-appellants.
    Neil Chonin, Alfred Feinberg, Legal Service of Greater Miami, Miami, Fla., for plaintiffs-appellees.
    Before TUTTLE, THORNBERRY and SIMPSON, Circuit Judges.
   PER CURIAM:

This appeal was taken from a final judgment and permanent injunction issued by the district court, enjoining appellants from bringing state court actions for eviction against the plaintiffs-appellees, seventeen tenants of appellants’ trailer park. The complaint alleged that all of the plaintiffs had received Notices to Quit their rented lots sent out by appellants’s agents. The complaint alleged further that appellants operated their mobile home park in violation of various county and state zoning, health and safety codes, and that appellees had complained of conditions and violations in the trailer park to various governmental agencies, and additionally that many or all the appellees had picketed the mobile home park, exhibiting signs setting forth their grievances.

Temporary and permanent injunctions were granted because of a showing satisfactory to the trial judge that the threatened evictions were undertaken in retaliation for the conduct of the plaintiffs-appellees in exercising their First and Fourteenth Amendment rights. This appeal, taken April 19, 1971, followed entry of the Final Judgment and denial of motions for new trial and for amendment of the Final Judgment.

The principal and related issues on the appeal were whether proof of retaliation is a valid defense to eviction proceedings in Florida courts, and whether a federal court has jurisdiction to enjoin prospective state court eviction proceedings under the teachings of the Younger v. Harris sextet of decisions of the Supreme Court.

Some time after oral argument of the appeal before another panel of this court in March 1972, the Supreme Court granted its writ of certiorari to review this court’s decision in Becker v. Thompson, 459 F.2d 919, wherein we undertook to interpret and apply the Younger v. Harris decision. The grant of the writ prompted the original panel to notify counsel that decision of this appeal would be withheld pending the Supreme Court’s action in Steffel v. Thompson. That decision, 415 U.S. 452, 94 S.Ct. 1209, 39 L.Ed.2d 505, reversed and remanded our decision in Becker v. Thompson.

Thereafter this appeal was recalen-dared for oral argument and argued upon supplemental briefs before this panel. We learn from the supplemental briefs of the parties that while these proceedings were thus held in abeyance, the Florida Legislature passed legislation which had the effect, in our judgment, of mooting the issues on this appeal.

In 1973, the Florida Legislature enacted Secs. 83.69 and 83.60 of the Florida Statutes.

Sec. 83.69 severely limits the grounds upon which the owner of a mobile home park may evict tenants. Had this section been in effect when the injunction was issued by the trial court in 1971, the injunction would have been unnecessary. The appellant landlords could not have proceeded to evict the tenant appel-lees in the absence of a violation of an ordinance or rule of the park or for non-payment of rent. Retaliatory eviction because of the tenants informing governmental agencies as to deficiencies in the trailer park could not have taken place.

F.S. 83.60 clarifies the Florida law by providing that in an action for possession of premises, the tenant “may raise any other defense, whether legal or equitable, that he may have.” This determines the issue raised in the original briefs as to whether or not a defense of retaliatory eviction may be raised in a Florida summary possession suit. Clearly, it may.

Additionally, during its 1974 session, the Florida Legislature also adopted F.S. 83.695, which provides that no tenancy may be enforceable or terminated by a landlord of a mobile home park unless prior to the occupancy the tenant has been offered a bona fide lease. Absent such a written lease, tenancy may be terminated only in accordance with F.S. 83.69 [Note 4; supra] for non-payment of rent or violation of ordinances or park regulations.

F.S. 83.695(3) limits enforceable regulations to those reasonable under the circumstances, giving additional protection to the tenant by making reasonableness of regulations a fact issue triable before the court or jury trying the pos-sessory action.

Finally the parties agree that retaliatory eviction is now a criminal offense under Florida law. It is declared to be an unfair or deceptive practice under the Florida Deceptive and Unfair Trade Practices Act, effective October 1, 1973, F.S. Sec. 501.201 et seq. Sec. 501.204 makes unfair trade practices unlawful. Rule 2-11.07, Rules of the Florida Department of Legal Affairs [authorized under Sec. 501.205(1)] declares retaliatory eviction to be an unfair trade practice. The threat of criminal sanction is an added and effective deterrent to these appellants or any other landlords’ engaging in such practices in the future.

We do not reach the merits of this appeal. The district court’s injunctive decree, regardless of the grounds existing for its issuance in 1971, is no longer warranted. The three original plaintiffs-appellees the parties advise remain as tenants (of an original number of seventeen tenants) of the mobile home park operated by appellants do not need the protection of the decree. Appellants should no longer be stigmatized by the existence of the injunction.

Accordingly this appeal is dismissed as moot, with directions to the district court to vacate its Permanent Injunction and Final Decree, and dismiss the complaint. The costs of this appeal shall be taxed to the appellants.

Dismissed as moot and remanded with directions.

      . The prerequisite, under Florida law F.S. § 83.03, to actions for eviction of month to month tenants. F.S. § 83.241 provides mobile home tenants an additional 30 days after filing of suit before they may be removed.

      , Younger v. Harris, 1971, 401 U.S. 37, 91 S.Ct. 746, 27 L.Ed.2d 669; Samuels v. Mackell and Fernandez v. Mackell, 1971, 401 U.S. 66, 91 S.Ct. 764, 27 L.Ed.2d 688; Boyle v. Landry, 1971, 401 U.S. 77, 91 S.Ct. 758, 27 L.Ed.2d 696; Dyson v. Stein, 1971, 401 U.S. 200, 91 S.Ct; 769, 27 L.Ed.2d 781; Byrne v. Karalexis, 1971, 401 U.S. 216, 91 S.Ct. 777, 27 L.Ed.2d 792.

      . Becker v. Thompson, N.D.Ga.1971, 334 F.Supp. 1386, aff’d 5 Cir. 1972, 459 F.2d 919, rehearing and rehearing en banc denied, 5 Cir. 1972, 463 F.2d 1338, reversed sub nom. Steffel v. Thompson, 1974, 415 U.S. 452, 94 S.Ct. 1209, 39 L.Ed.2d 505.

      . F.S. 83.69. Mobile home parks; evictioii, grounds, proceedings.—
      (1) A mobile home park owner or operator may not evict a mobile home dweller other than for the following reasons :
      (a) Nonpayment of rent.
      (b) Conviction of a violation of some federal or state law or local ordinance, which (violation) may be deemed detrimental to the health, safety, [or] welfare of other dwellers in the mobile home park.
      (e) Violation of any reasonable rule or regulation established by the park owner or operator, provided the mobile home owner received written notice of the grounds upon which he is to be evicted at least thirty days prior to the date he is required to vacate. A copy of all rules and regulations shall be delivered by the park owner or operator to the mobile home owner prior to his signing the lease or entering into a rental agreement. A copy of the rules and regulations shall also be posted in the recreation hall, if any, or some other conspicuous place in the park. A mobile home park rule or regulation shall be presumed to be reasonable if it is similar to rules and regulations customarily established in other mobile home parks located in this state or if the rule or regulation is not immoderate or excessive.
      (d) Change in use of land comprising the mobile home park or a portion thereof on which a mobile home to be evicted is located from mobile home lot rentals to some other use, provided all tenants affected are given at least ninety (90) days’ notice, or longer if provided for in a valid lease, of the projected change of use and of their need to secure other accommodations.
      (2) Cumulative eviction proceedings may be established in a written lease agreement between the park owner or operator and a mobile home dweller in addition to those established by law.
      (3) This section shall not preclude summary eviction proceedings, and if the park operator or owner does not have one of the above grounds available, the park tenant may raise the same by affirmative defense.
      The constitutionality of See. 83.69 has been recently upheld by the Florida Supreme Court. See Stewart v. Green, S.Ct.Fla.1974, 300 So.2d 889 [decided July 10, 1974] Addendum at 16a; and Palm Beach Mobile Homes, Inc. v. Strong, S.Ct.Fla.1974, 300 So.2d 881 [decided July 10, 1974], Addendum at 4a.

      . F.S. 83.60. Remedies; defenses to action for- rent or possession ; procedure.
      (1) In an action by the landlord for possession of a dwelling unit based upon nonpayment of rent or in an action by the landlord under § 83.55 seeking to recover unpaid rent, the tenant may defend upon the ground of a material noncomplianee with § 83.51(1) (F.S.1973), or may raise any other defense, whether legal or equitable, that he may have. The defense of a material noncompliance with § 83.51(1) (F.S.1973) may only be raised by the tenant if seven days have elapsed after the delivery of written notice by the tenant to the landlord as prescribed in § 83.56(4) (F.S.1973), specifying the noncompliance and indicating the intention of the tenant not to pay rent by reason thereof. A material noncompliance with § 83.51(1) (F. S.1973) by the landlord is a complete defense to an action for possession based upon nonpayment of rent, and upon hearing, the court or the jury, as the case may be, shall determine the qmount, if any, by which the rent is to be reduced to reflect the diminution in value of the dwelling unit during the period of noncompliance with § 83.51(1) (F.S.1973). After consideration of all other relevant issues, the court shall enter appropriate judgment.
      (2) In an action by the landlord for possession of a dwelling unit based upon nonpayment of rent, if the tenant interposes any defense other than jiayment, the tenant shall pay into the registry of the court the accrued rent as alleged in the complaint or as determined by the court and the rent which accrues during the jjendency of the proceeding, when due. Failure of the tenant to pay the rent into the registry of the court as provided herein constitutes an absolute waiver of the tenant’s defenses other than payment, and the landlord is entitled to an immediate default.

      . F.S. 83.695.
      (1) No tenancy, except one of transient occupancy, of any person owning a mobile home who hereafter rents, leases or occupies real property in a mobile home park for a valuable consideration shall be enforceable or be terminated by the landlord unless, prior to occupancy, the tenant has been offered a written lease as herein provided. In the event a tenant does not enter into a written lease or upon the expiration of a written lease the tenancy may only be terminated in accordance with the xirovi-sions of section 83.69, which section is cumulative of all other sections in this part and shall be deemed to supercede any provisions in conflict therewith.
      (2) No such tenancy existing uxion the effective date of this act may thereafter be terminated unless the tenant has been offered a written lease and has, after the expiration of sixty (60) days from the time of delivery to him, refused or failed, without cause, to execute same. The leases so offered by any landlord must be bona fide offers to lease for a specified term upon the same terms and conditions as leases Offered to all other tenants in the park, excepting only rent variations based upon lot location and size.
      (3) Only such park rules or regulations as are reasonable under the circumstances and are specifically incorporated by reference in the written leases, shall be enforceable. The lease shall contain a provision that sections 83.68, 83.69, 83.70, 83.71, 83.72 and 83.73, Florida Statutes, govern mobile home park tenancies. The lease shall contain the amount of the rent, any security deposit, installation charges, fees, assessments, and any other financial obligations of the tenant. This provision, however, shall not be construed to prevent any mobile home park owner from passing on to the mobile home park tenant any costs which are incurred due to the actions of any state or local government.
      (4) No agency of any municipal, local or county government shall approve any application for rezoning or take any official action which would result in the removal or relocation of mobile home i>ark tenants without first investigating as to the adequacy of mobile home parks or other suitable facilities for the relocation of tenants.
      ' (5) This act shall not apx>ly in those instances where rental space is offered for occupancy by recreational vehicle-type units primarily designed as temporary living quarters for recreational, cami>ing, or travel use, which either have their own motive i>ower or are mounted on or drawn by another vehicle.
      (6) No provision of this section shall ap-I>ly to a mobile home park which contains ten (10) or less mobile home lots.


text:
    UNITED STATES of America, Plaintiff-Appellant, v. 114.64 ACRES OF LAND, MORE OR LESS situate IN the COUNTY OF CUSTER, STATE OF IDAHO, et al., Defendants-Appellees.
    No. 73-1453.
    United States Court of Appeals, Ninth Circuit.
    Oct. 18, 1974.

      John Zimmerman, Atty., Dept, of Justice (argued), Washington, D. C., for plaintiff-appellant.
    Louis F. Racine, Jr. (argued), of Racine, Huntley, Herzog & Olson, Pocatel-lo, Idaho, for defendants-appellees.
    Before DUNIWAY and TRASK, Circuit Judges, and SMITH, District Judge.

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

   OPINION

PER CURIAM:

This appeal was taken by the United States from a judgment of the District Court granting condemnation of a parcel of real property in Custer County, Idaho, and awarding just compensation therefor. The appeal challenges a ruling of the court which held that the United States by filing the complaint in condemnation waived any right it may have had to rely upon a Land Purchase Option and Contract in which the appellees, as owners, agreed upon the value of the land with the Government. The option price agreed upon was $20,000; the amount awarded upon condemnation at a jury-waived trial was $35,000.

On May 20, 1971, the Government filed a complaint in the United States District Court for the District of Idaho asking a taking of property under the power of eminent domain and requesting the ascertainment and award of just compensation to the owners. Paragraph nine of the complaint recited that the United States had entered into a Land Purchase Option and Contract with the appellee owners for the purchase of the land for the sum of $20,000. A copy of this agreement was attached. The prayer was for condemnation and an ascertainment and award of just compensation. On the same date the Government deposited the sum of $20,000 in the registry of the court under a Declaration of Taking stating that this sum was estimated by the Government as just compensation.

The appellee owners answered denying the allegations of paragraph nine and requesting an award in an amount not less than $35,000. Subsequently appel-lees filed a motion to strike paragraph nine. After hearing, the court entered a formal order granting the motion. In the course of its order it stated:

“In striking paragraph 9 from the complaint at this time, the court does not indicate or hold that the Option and Contract, as alleged in paragraph 9, may not be admissible or competent as evidence on the question of just compensation for the land taken by the plaintiff. If the Option and Contract is offered as evidence at the time of trial of this case, the admissibility of the same may then be determined.” C.T. at 52.

Upon trial before a different judge, the court held that the United States by filing its complaint “as duly authorized by the Acts of Congress” had waived any right it may or may not have had to proceed in a judicial proceeding to enforce the option contract regardless of its validity or enforceability, and was estopped by the condemnation proceeding to assert the value to be the sum of $20,000 as agreed upon in the contract. The Government stipulated with the landowners that the latter if called would testify that the value of the land was $35,000, and such was the award.

In the posture upon which the case comes before us we assume that the Government by its offer of proof of an executed Land Purchase Option and Contract for $20,000, which was timely accepted according to its terms, has made a prima facie showing of a valid and enforceable contract. It appears clear to us that such a contract represents a stipulation of value binding upon the parties in a condemnation action. United States v. 93.970 Acres of Land, 360 U.S. 328, 79 S.Ct. 1193, 3 L.Ed.2d 1275 (1959); Albrecht v. United States, 329 U.S. 599, 67 S.Ct. 606, 91 L.Ed. 532 (1947); Danforth v. United States, 308 U.S. 271, 60 S.Ct. 231, 84 L.Ed. 240 (1939). The stipulation here specifically provided that it could be introduced in evidence in a judicial proceeding to acquire the land, and the amount of the payment stated therein to be made would be accepted “as full settlement for all damages” to vendor by reason of a taking.

The argument of appellees appears to be grounded upon the fact that the Government did not properly allege the theory of its case in order to render the stipulation admissible. We do not agree. The stipulation was pleaded in the original complaint but stricken over objection with the pointed observation that the order on the motion was not to be taken as holding that it might not “be admissible or competent” on the question of just compensation. At the trial an offer of proof was made of the option contract but was rejected upon the ground of waiver or estoppel because the Government had filed its action in statutory condemnation rather than on the contract. The offer should have been admitted subject to any defenses as to its validity or enforceability. We therefore reverse and remand for a new trial consistent with the views expressed herein.

Reversed and remanded.

      . Paragraph seven of the Option and Contract provided:
      “It is agreed that, if the vendor cannot convey satisfactory title to the land herein described, or if the vendor does not promptly convey said land to the United States when requested to do so by an authorized representative of the Secretary, the land may be acquired by judicial proceedings, and, if so acquired, payment at the rate per acre hereinbefore set forth for so much of the acreage as is found to be vested in the vendor, will be accepted as full settlement for all damages caused to said vendor by reason of the taking of said lands. The vendor also agrees that this instrument may be introduced in such proceedings as the stipulation of the parties hereto with regard to all matters contained herein.” Brief of Appellant at 7.

      . Even if invalid for lack of consideration or unenforceable because not properly exercised it would be admissible as an admission of a party on the issue of value. See Danforth v. United States, 308 U.S. 271, 282, 60 S.Ct. 231, 84 L.Ed. 240 (1939) ; United States v 2,974.49 Acres of Land, 308 F.2d 641, 643-644 (4th Cir. 1962).


author: PER CURIAM.

text:
    Ernest BACH, Plaintiff-Appellant, v. PEOPLE OF the STATE OF ILLINOIS and Peter B. Bensinger et al., Defendants-Appellees.
    No. 73-1290.
    United States Court of Appeals, Seventh Circuit.
    Argued Jan. 21, 1974.
    Decided Feb. 15, 1974.
    Certiorari Denied July 8, 1974.
    See 94 S.Ct. 3202.

      Ernest Bach, Ivan E. Bodensteiner, Valparaiso University, School of Law, Valparaiso, Ind., for plaintiff-appellant.
    Frank S. Merritt and Howard M. Rubin, Chicago, 111., for amicus.
    William J. Scott, Atty. Gen., James B. Zagel, Asst. Atty. Gen., Chicago, 111., for def endants-appellees.
    Before SWYGERT, Chief Judge, HASTINGS, Senior Circuit Judge, and CUMMINGS, Circuit Judge.
   PER CURIAM.

Plaintiff Ernest Bach brought a civil rights action seeking declaratory and in-junctive relief along with monetary damages against' various state prison officials. In his pro se complaint, plaintiff alleges certain irregularities in the handling of his mail while being incarcerated in a state penitentiary. The district court granted defendants’ motion to dismiss for failure to state a claim upon which relief could be granted. Plaintiff has appealed. We reverse.

The facts as alleged by plaintiff are summarized as follows. In May 1972 plaintiff, after receiving authority from the appropriate prison personnel, wrote two letters “containing very confidential and embarrassing information about family problems” to his mother and father-in-law and his sister-in-law. The letters were not delivered as addressed but rather forwarded to the Chicago law firm of Downs, Haddix and Schwab along with a cover letter from a prison official directing the lawyers to do with them what they thought appropriate. About a month later, during an interview with a member of the law firm, plaintiff learned that his two letters had been misdirected. According to plaintiff the delay caused in the eventual delivery of the letters “nullified any effect they may have had in preventing future trouble and deterioration of an already delicate family relationship.” In July 1972 plaintiff desired to send another letter to a Chicago attorney concerning a civil matter. This letter was returned after prison officials had misaddressed the same. After correspondence with various prison and elected officials about these instances, the present action was commenced.

Plaintiff contends that the district court erred in dismissing his complaint. Plaintiff’s challenge is predicated upon his alleged deprivation of free expression, redress of grievances, access to counsel, and confidentiality of his correspondence caused by the prison officials’ interference with and misdelivery of his outgoing mail and by his inability to be present during the inspection of his incoming “legal mail.”

We must decide whether plaintiff has succeeded in alleging facts which, if proven, would entitle him to relief, taking into consideration the liberal construction which must be given to a prisoner’s pro se complaint. We are convinced that plaintiff has alleged facts sufficient to withstand a motion to dismiss.

The district court in dismissing plaintiff’s complaint observed that “[i]n order to be actionable under § 1983, more than an isolated instance of failure to protect a prisoner’s rights must be alleged.” While this might be true as a general proposition, we think it wholly inapplicable here. Plaintiff’s complaint alleges more than an occasional mistake or single isolated incident regarding the mishandling of his mail. The allegations reflect that the acts complained of were a continuing form of harassment by prison officials. Plaintiff clearly states in his complaint that this “. . .is not an isolated incident but typical of harassment given inmates. . . . ” (Emphasis supplied.) Assuming as we must that plaintiff’s allegations are true, this interference with mail as a continuing form of harassment raises serious questions of infringement of constitutionally protected rights which deserve consideration.

Next we address ourselves to the issue of plaintiff’s allegation that he was deprived of constitutionally protected rights because he was not allowed to be present during the inspection of his incoming “legal mail.” On that we must balance the interest of prison officials in inspecting incoming mail outside the presence of an inmate with the extent to which this practice infringes upon an inmate’s constitutionally protected rights.

We note, at the outset, that it is not the opening of mail for inspection that is questioned, but the right of an inmate to be present at that time. It is undisputed that prison officials have a legitimate interest in opening incoming mail for the purpose of cheeking for weapons, drugs, or other items which might endanger the safety and security of the prison. We know of no valid reason, however, why an inmate should not be present during the inspection of his incoming legal mail. The plaintiff is not asking that his mail be forwarded directly to him.

An inmate’s need for confidentiality in his communications with attorneys through whom he is attempting to redress his grievances is particularly important. We think that contact with an attorney and the opportunity to communicate privately is a vital ingredient to the effective assistance of counsel and access to the courts. Adams v. Carlson, 488 F.2d 619 (7th Cir. 1973). The potential for diluting privacy in communication between attorney and client is particularly acute in the facts before us. The prison officials in inspecting incoming mail outside the presence of an inmate are provided with an opportunity to obtain advanced warning of potential litigation which might involve the prison and more significantly could become privy to stratagems being formulated between attorney and client with regard to pending litigation. Therefore, we hold that plaintiff is entitled to be present during the opening of legal mail addressed to him in prison. Smith v. Robbins, 454 F.2d 696 (1st Cir. 1972)

The judgment of the district court dismissing plaintiff’s complaint is reversed and the cause remanded for further proceedings.

      . The defendants raise the following as potential problems which would arise in the event prisoners were permitted to be present during the inspection of their legal mail: (1) delay in the mail process; (2) increased security rules; and (3) further litigation involving endless credibility conflicts between inmates and prison officials.

      . See also the cases collected in Adams v. Carlson, supra, 488 F.2d at 631.

      . We think it appropriate on remand to appoint counsel for pro se plaintiff.