author: BENSON, Chief Judge.

text:
    UNITED STATES of America, Plaintiff, v. John D. WARNER and Frances Warner, Defendants.
    Cr. No. C2-84-51.
    United States District Court, D. North Dakota, Northeastern Division.
    Sept. 27, 1984.

      Rodney S. Webb, U.S. Atty., Fargo, N.D., for plaintiff.
    David C. Thompson, Fargo, N.D., Amy M. Silberberg, Judd Golden, American Civil Liberties Union, Denver, Colo., for defendants.
   MEMORANDUM AND ORDER

BENSON, Chief Judge.

Defendants John and Frances Warner have moved to dismiss the indictment against them in the above-entitled case. Defendants have also filed a motion to compel discovery.

I. MOTIONS TO DISMISS

The indictment charges Defendants with distribution and possession with intent to distribute peyote, a Schedule I, nonnarcotic controlled substance, in violation of 21 U.S.C. § 841(a)(1) and 18 U.S.C. § 2.

Defendants, neither of whom are of American Indian blood, contend they are members of the Native American Church (NAC), and as such, they are exempt from prosecution, under 21 C.F.R. § 1307.31, for the acts charged in the indictment. The government contends Defendants are not members of the NAC, and thus, the exemption in 21 C.F.R. § 1307.31 does not apply.

The exemption in 21 C.F.R. § 1307.31 provides:

SECTION 1307.31. NATIVE AMERICAN CHURCH. The listing of peyote as a controlled substance in Schedule I does not apply to the nondrug use of peyote in bona fide religious ceremonies of the Native American Church, and members of the Native American Church so using peyote are exempt from registration. Any person who manufactures peyote for or distributes peyote to the Native American Church, however, is required to obtain registration annually and to comply with all other requirements of law.

21 C.F.R. § 1307.31.

Defendants contend the indictment must be dismissed because the government’s prosecution of them violates the free exercise and establishment clauses of the first amendment and the due process and equal protection clauses of the fifth amendment.

A. Free Exercise Claim

Defendants contend their possession and use of peyote in conjunction with bona fide religious ceremonies of the NAC is an activity protected under the free exercise clause of the first amendment. The freedom to act upon religious beliefs is not absolute in nature, but “only those interests of the highest order and those not otherwise served can overbalance legitimate claims to the free exercise of religion.” Wisconsin v. Yoder, 406 U.S. 205, 215, 92 S.Ct. 1526, 1533, 32 L.Ed.2d 15 (1972). The state may justify an inroad on religious liberty by showing it is the least restrictive means of achieving some compelling state interest. Thomas v. Review Board of the Indiana Employment Security Division, 450 U.S. 707, 718, 101 S.Ct. 1425, 1432, 67 L.Ed.2d 624 (1980).

The Sixth Circuit has established a two-step analysis for free exercise claims. Sequoyah v. Tennessee Valley Authority, 620 F.2d 1159, 1163 (6th Cir.1980), cert. denied, 449 U.S. 953, 101 S.Ct. 357, 66 L.Ed.2d 216. First, the court must determine whether the government action does in fact create a burden on the exercise of the defendants’ religion. If a burden is found, it must be balanced against the governmental interest, with the government being required to show an overriding or compelling reason for its action. Sequoyah, 620 F.2d at 1163, citing Sherbert v. Vemer, 374 U.S. 398, 402-03, 83 S.Ct. 1790, 1792-93, 10 L.Ed.2d 965 (1963), and Wisconsin v. Yoder, 406 U.S. at 214-15, 92 S.Ct. at 1532-33.

In considering the first step of the analysis, the government concedes that the NAC is an established religion with a significant history of sacramental peyote use. In addition, the government concedes that the use of peyote is central to, and the cornerstone of, the religious practices of the NAC. Therefore, prosecution for the use of peyote in the bona fide religious practices of the NAC would create a burden on the free exercise of the religion of NAC members. The court notes, however, that there is an issue of fact in this case as to whether Defendants used peyote in bona fide religious ceremonies and whether they were members of the NAC.

Assuming for purposes of Defendants’ free exercise claim that the present prosecution burdens the free exercise of Defendants’ religion, the burden must be balanced against the governmental interest, with the government being required to show it has used the least restrictive means of achieving some compelling interest. 450 U.S. at 718. The conduct or actions in accord with religious convictions that have been regulated have invariably posed some substantial threat to public safety, peace, or order. Sherbert, 374 U.S. at 402-03, 83 S.Ct. at 1792-93.

The governmental interests served by the prosecution of the Warners under 21 U.S.C. § 841(a)(1) must be examined. The government asserts three specific “possible interests” served by controlling the use of peyote, which include: (1) the interest in preventing abuse of peyote by nonreligious persons who falsely claim to be religious; (2) the interest in preventing harm to the NAC member resulting from peyote use in religious ceremonies; and (3) the interest in encouraging compliance with the law by persons who do not claim an exemption based on religion, but who might doubt the public health justification if certain groups were exempted.

The legislative history leading up to the promulgation of 21 C.F.R. § 1307.31 does not support a finding that Congress was interested in a broad exemption for the religious use of peyote by non-NAC members or non-Indians. Officials of the Bureau of Narcotics and Dangerous Drugs (BNDD) informed Congress of the fact that the administrative exemption in effect at the time the Controlled Substances Act was passed applied only to the NAC and that they were about to deny an exemption to a non-Indian church. The BNDD distinguished the non-Indian church from the NAC because the unique history and tradition of the NAC was such that there was no question that the NAC regarded peyote as a diety. Hearings on H.R. 11701 and H.R. 13743 before the Subcomm. on Interstate and Foreign Commerce 117-18 (1970).

The legislative history of the Controlled Substances Act of 1970 discloses the general ultimate objective to deal in a comprehensive fashion with the growing menace of drug abuse in the United States. See H.R.Rep. No. 91-1444, 91st Cong., 2d Sess., reprinted in 1970 U.S. Code Cong. & Admin. News 4566, 4567. Congress has strongly and clearly expressed its intent to protect the public from the obvious danger of drugs and drug traffic. See 21 U.S.C. § 801(2). Congress has determined that the illegal distribution, possession, and improper use of controlled substances has a substantial and detrimental effect on the health and general welfare of the American people. Id. Peyote is a. Schedule I drug, and as such, Congress has found it has a high potential for abuse, it has no currently accepted medical use, and there is a lack of accepted safety for use of the drug under medical supervision. 21 U.S.C. § 841(a). Therefore, governmental interests in prohibiting the possession and distribution of peyote are of the highest order, in that peyote use poses a substantial threat to public health, safety, and welfare.

Courts have recognized that Congress has a compelling interest in controlling the use of drugs that it determines to be dangerous, such as peyote, and that Congress can constitutionally control the use of such drugs even if those drugs are to be used for religious purposes. United States v. Middleton, 690 F.2d 820, 825 (11th Cir. 1982), cert. denied, 460 U.S. 1051, 103 S.Ct. 1497, 75 L.Ed.2d 929 (1983), citing United States v. Hudson, 431 F.2d 468, 469 (5th Cir.1970), cert. denied, 400 U.S. 1011, 91 S.Ct. 577, 27 L.Ed.2d 577 (1971) (the use of drugs as part of religious practice is not constitutionally privileged).

Even though the government has a compelling interest in controlling the use of peyote, it can be prohibited only if the restriction is the least restrictive means of achieving the government’s purpose, or if the governmental interests cannot be otherwise served. This court holds that the compelling governmental interest is not otherwise served by allowing unlimited exemptions for the bona fide religious use of peyote. Furthermore, the regulatory exemption given the NAC is not required by the free exercise clause of the first amendment.

Based on the foregoing, the government’s interest in prohibiting the use of peyote is compelling and overrides Defendants’ first amendment rights to the free exercise of religion.

B. Establishment Clause Claim

Defendants contend the determination by the United States that they may not take advantage of the exemption in 21 C.F.R. § 1307.31 constitutes governmental preference of some members of the NAC over other members, in violation of the establishment clause of the first amendment. By placing the constructive condition upon 21 C.F.R. § 1307.31 to the effect that members of the NAC need to be of American Indian blood to come within its purview, Defendants contend the United States is impermissibly interjecting itself into internal matters of a religious group, favoring some NAC members and disadvantaging others by subjecting them to criminal prosecution. The government contends that its basis for instituting the present prosecution is that neither John nor Frances Warner is an American Indian and neither John nor Frances Warner is a member of the NAC.

Under the establishment clause government aid or preference to religion passes constitutional muster only if it satisfies each part of a three-prong test, which includes: (1) the governmental preference must have a secular purpose; (2) its primary effect must be one that neither advances nor inhibits religion; and (3) its application must not result in excessive entanglement of government with religion. Stone v. Graham, 449 U.S. 39, 40, 101 S.Ct. 192, 193, 66 L.Ed.2d 199 (1980) (per curiam).

For the framers of the Constitution, the “establishment” of a religion connoted sponsorship, financial support, and active involvement of the sovereign in religious activity. Walz v. Tax Commission, 397 U.S. 664, 668, 90 S.Ct. 1409, 1411, 25 L.Ed.2d 697 (1970). Neither governmentally established religion nor governmental interference with religion will be tolerated. Id. at 669, 90 S.Ct. at 1411. There is room, however, for “play in the joints productive of a benevolent neutrality which will permit religious exercise to exist without sponsorship and without interference.” Id. The court in Walz further stated, “The limits of permissible state accommodation to religion are by no means co-extensive with the non-interference mandated by the Free Exercise Clause.” Id. at 673, 90 S.Ct. at 1473. Therefore, the government enjoys a permissible zone of accommodation to religion.

In applying the three-prong test, the exemption allowed for members of the NAC in 21 C.F.R. § 1307.31 does not have a religious purpose. The purpose of the regulation was not to further the interests of the NAC or any other religion, but to meet possible free exercise claims by removing affirmative barriers to religious practices. Nor does the exemption in effect sponsor the religion of the NAC; it merely allows the free exercise of the traditional NAC religion. There is no sponsorship, financial support, or active involvement of the sovereign in religious activity here, as contemplated by the framers of the Constitution. Finally, there is no excessive governmental entanglement with the religious affairs of the NAC by the government’s prosecution of Defendants, given the government’s reliance on the history of the American Indians’ religious beliefs and use of peyote in religious ceremonies and the governmental duty to preserve the Indian culture and religion. Therefore, the establishment clause is not violated by the exemption given to the NAC and the prosecution of Defendants for distribution and possession with intent to distribute peyote.

C. Equal Protection Claim

Defendants contend the determination by the United States that they are not within the class of persons within the scope of 21 C.F.R. § 1307.31 denies them equal protection as guaranteed by the fifth amendment. Defendants contend they have been prosecuted on the basis that neither of them is of American Indian blood. Defendants contend this is a classification based on race, and as such, is suspect and constitutionally defective under the equal protection clause, because there is no compelling governmental interest to justify the classification.

The government contends they are prosecuting Defendants because they are not members of the NAC within the meaning of 21 C.F.R. § 1307.31. The government points to the bylaws of the Native American Church of North America, which require members to be at least one-quarter Native American blood. The government further contends Defendants must prove to the trier of fact that they are members of the NAC and are entitled to the exemption under 21 C.F.R. § 1307.31.

The preference given to Indian “members” of the NAC is not racial in nature but political in nature. Peyote Way Church of God, Inc. v. Smith, 556 F.Supp. 632, 638 (N.D.Tex.1983). Congress has a power or duty to the Indians to preserve their dependent nations as a cohesive culture until such time as they become so assimilated in the mainstream of American culture so as not to be “a people apart.” Id. at 639. In the American Indian Religious Freedom Act, 42 U.S.C. § 1996, Congress has recognized this duty. Id. The government furthers this policy with the exemption for the use of peyote in the rituals of the NAC. Id.

The Supreme Court has recognized that the plenary power of Congress to deal with the special problems of Indians is drawn both explicitly and implicitly from the Constitution. Morton v. Mancari, 417 U.S. 535, 94 S.Ct. 2474, 41 L.Ed.2d 290 (1974). Indians have a unique legal status under federal law and the plenary power of Congress, based on a history of treaties and the assumption of a “guardian-ward” status. Id. at 551-52, 94 S.Ct. at 2483-84. Literally every piece of legislation dealing with Indian tribes and reservations single out for special treatment a constituency of tribal Indians living on or near reservations. If these laws, derived from historical relationships and explicitly designed to help only Indians were deemed invidious racial discrimination, the entire Title 25 of the United States Code would be effectively erased, and the solemn commitment of the United States toward the Indians would be jeopardized. Id. at 552, 94 S.Ct. at 2483. Based on the foregoing, the Supreme Court has held that preferences given to Indians do not constitute racial preferences or discrimination. Id.

In Morton v. Mancari the Court held that employment preference for qualified Indians in the Bureau of Indian Affairs did not constitute invidious racial discrimination in violation of the due process clause of the fifth amendment, but was “reasonable and rationally designed to further Indian self-government.” 417 U.S. 535, 551-55, 94 S.Ct. 2474, 2483-85. The Court stated:

On numerous occasions this Court specifically has upheld legislation that singles out Indians for particular and special treatment. (Citations omitted.) As long as the special treatment can be tied rationally to the fulfillment of Congress’ unique obligation toward the Indians, such legislative judgments will not be disturbed. Here, where the preference is reasonable and rationally designed to further Indian self-government, we cannot say that Congress’ classification violates due process.

Id. at 554-55, 94 S.Ct. at 2484-85.

Applying the same rational basis test to the Warners’ equal protection claim, it is clear from legislative history that religion is an integral part of the Indian culture and use of peyote is necessary to the survival of Indian religion. Peyote Way, 556 F.Supp. at 637, citing 1978 U.S. Code Cong. & Ad. News 1262 (the legislative history of the American Religious Freedom Act, 42 U.S.C. § 1996). The United States is following the policy of preserving the Indians’ dependent nation and culture by granting an exemption to Indians for the use of peyote in the religious ceremonies of the NAC. See 556 F.Supp. at 639. Therefore, the preference given to Indians in the application of 21 C.F.R. § 1307.31 is tied rationally to the fulfillment of the government’s unique obligation toward the Indians and does not violate Defendants’ rights to equal protection.

D. Due Process Claims

Defendants contend the failure of the United States to apply the exemption in 21 C.F.R. § 1307.31 to them violates their due process rights under the fifth amendment. Defendants’ due process claims are based on substantive due process and the void-for-vagueness doctrine.

The court’s ruling on Defendants’ substantive due process claim does not differ from the ruling on the equal protection claim, because the test to be applied is the same. The exemption would only violate substantive due process if it created an arbitrary classification that could not be tied rationally to the fulfillment of the government’s unique obligation toward the Indians. See Morton v. Mancari, 417 U.S. at 554-55, 94 S.Ct. at 2484-85; Kennedy v. Bureau of Narcotics and Dangerous Drugs, 459 F.2d 415 (9th Cir.1972), cert. denied, 409 U.S. 1115, 93 S.Ct. 901, 34 L.Ed.2d 699 (1973), reh’g denied, 410 U.S. 959, 93 S.Ct. 1414, 35 L.Ed.2d 694. As discussed above, the preference given to Indians in the application of 21 C.F.R. § 1307.31 is tied rationally to this obligation. Therefore, Defendants’ substantive due process claim fails.

Defendants’ other due process argument is based on the established principle that a penal statute must define a criminal offense “with sufficient definiteness that ordinary people can understand what conduct is prohibited and in a manner that does not encourage arbitrary and discriminatory enforcement.” Kolender v. Lawson, 461 U.S. 352, 103 S.Ct. 1855, 1858, 75 L.Ed.2d 903 (1983). Defendants contend the government’s constructive condition that one must be of American Indian blood to be exempted under 21 C.F.R. § 1307.31, despite the clarity of the language of the regulation that members of the NAC are exempt from prosecution, violates their due process right to be given notice of prohibited conduct.

During oral argument the government alleged Defendants knew the NAC was an Indian Church and they were warned that legal peyote use was for Indians only. In addition, the government contends the jury must decide whether Defendants were members of the NAC and whether they were using peyote in bona fide religious ceremonies of the NAC.

Defendants cite an Arizona case that recognized the NAC as “primarily an ‘Indian religion’ by reason of its origins and in the context that substantially all of its members are American Indians.” State v. Whittingham, 19 Ariz.App. 27, 504 P.2d 950, 951 (1973), cert. denied, 417 U.S. 946, 94 S.Ct. 3071, 41 L.Ed.2d 667. The court noted, however, that membership to non-Indians is usually not refused. Id. at 951. The government has filed the by-laws of the Native American Church of North America, which require members to have at least one-quarter Native American blood. Even though the NAC may not be a centralized religion, ordinary people would be on notice that an exemption to the NAC may only be an exemption for Indians, given the origin of the NAC and the fact that substantially all of its members are American Indians.

The language of the exemption is not so indefinite as to encourage arbitrary and discriminatory enforcement. The government is merely prosecuting individuals who they contend are not members of the NAC. This decision to prosecute non-Indians is not arbitrary and discriminatory, in light of the special governmental obligation to preserve the Indians’ religion and culture. Therefore, Defendants’ void-for-vagueness claim must also fail.

II. DISCOVERY MOTION

At the hearing on September 21, 1984, in this matter, Defendants’ attorney stated that he was satisfied with the materials received from the United States Attorney, with the exception that Defendants have not received taped conversations between Jim Eagle and agents of the North Dakota Drug Enforcement Unit (N.D. DEU). The United States contends the N.D. DEU is not party to this prosecution. Defendants contend the N.D. DEU agents were acting as agents of the United States and the United States has control of this information. Since there has been no showing of need, Defendants will not be allowed to discover the tapes involving the N.D. DEU agents at this time. The United States must only provide Defendant with exculpatory material regarding Defendants that is in the United States’ file and statements of government witnesses after the government witnesses testify at trial. The government need not provide Defendants with a list of government witnesses, absent a showing of particularized need. The remainder of Defendants’ requests in the motion for discovery are apparently moot, in light of the government’s open file in this case.

IT IS ORDERED Defendants’ motions to dismiss the indictment on the basis of the free exercise clause, the establishment clause, the equal protection clause, and the due process clause are denied.

IT IS FURTHER ORDERED Defendants’ motion for compelled discovery is denied in part and moot in part.


source: Caselaw Access Project

author: ASPEN, District Judge:

license: Public Domain

text:
    Reuben TAYLOR, Plaintiff, v. A. TAYLOR, Corrine Franklin, Ethel Gingold, and Paul Klincar, Defendants.
    No. 83 C 5026.
    United States District Court, N.D. Illinois, E.D.
    Sept. 27, 1984.

      Reuben Taylor, for plaintiff.
    Mike Hayes, Chicago, 111., for defendants.
   MEMORANDUM OPINION AND ORDER

ASPEN, District Judge:

Plaintiff Reuben Taylor, a prisoner at Graham Correctional Center, brings this pro se action pursuant to 42 U.S.C. § 1983 seeking declaratory and injunctive relief. He charges the defendants, members of the Illinois Prisoner Review Board, with violation of his constitutional rights in the denial of his application for parole. Defendants have moved for summary judgment on the ground that there is no genuine issue as to any material fact and that they are entitled to judgment as a matter of law. For the reasons set forth below, the Court grants defendants’ motion.

The material facts are not in dispute. Plaintiff states that in 1972 he committed the crimes for which he is currently incarcerated. He received concurrent sentences of 150 to 200 years for murder and 20 to 60 years for armed robbery. On June 6, 1983, plaintiff appeared before the Illinois Prisoner Review Board (“Board”), which denied him parole, stating its rationale as follows:

The Prisoner Review Board in considering your particular case for the possibility of parole noted many factors including but not limited to your face to face interview, the documents in your file, the fact that you are serving sentences of 150-200 years for murder, 20-60 years for armed robbery (5cc).

Your “A” grade status is noted, as well as your academic achievements while incarcerated.

However, the Board feels that more time in a structured environment is necessary to ensure your successful reentry into the free society.

Accordingly, we deny.

The Board also indicated that it would next consider plaintiff’s application for parole in June, 1984.

Plaintiff challenges the Board’s ruling on essentially two grounds. Plaintiff’s first argument rests upon the Seventh Circuit’s decision in Welsh v. Mizell, 668 F.2d 328 (7th Cir.), cert. denied, 459 U.S. 923, 103 S.Ct. 235, 74 L.Ed.2d 186 (1982), rev’d, Heirens v. Mizell, 729 F.2d 449 (7th Cir. 1984). The Welsh court held that application of retributive justice and general deterrence criteria to parole applicants who committed their offenses prior to January 1, 1973, violated the ex post facto clause of the Constitution. In the instant case, plaintiff, who committed the crimes for which he is incarcerated prior to January 1, 1973, argues that the Board violated the dictates of Welsh by impermissibly relying on general deterrence criteria to deny him parole.

Assuming arguendo that the Board considered general deterrence to reach its decision, plaintiff’s ex post facto argument fails in light of the Seventh Circuit’s recent holding in Heirens v. Mizell, 729 F.2d 449 (7th Cir.1984). There, the court overruled Welsh and held that no ex post facto violation occurs where the Illinois Prisoner Review Board applies retributive justice and general deterrence criteria to parole applicants who committed their crimes before 1973.

Plaintiffs second contention is that the Board denied him due process by failing to articulate a sufficient statement of reasons for denying him parole. At the outset, we note that the scope of judicial review of the Board’s decision is very narrow. Heirens, 729 F.2d at 467. “If the Parole Board cites to facts upon which its reasons for denial of parole can be justified, due process is met.” Id. In Walker v. Prisoner Review Board, 694 F.2d 499 (7th Cir.1982), the court held that an enunciation of the prisoner’s three offenses with an indication of the extreme length of the sentences (indicating that the sentencing judge considered the criminal conduct to be particularly heinous) was sufficient to support the Board’s conclusion that it would deprecate the seriousness of the offense or cause disrespect for the law to parole the prisoner after thirteen years.

Following the Walker court’s analysis, approved in Heirens, 729 F.2d at 467, we consider the Board’s rationale for denying plaintiff parole in the ease at bar. The Board’s statement refers to plaintiff's conviction of two serious crimes, murder and armed robbery. The sentence of 150 to 200 years for murder together with the 20 to 60 years for armed robbery demonstrate the trial judge’s determination that plaintiff’s specific conduct was especially heinous and that lengthy incarceration was necessary. Under these circumstances, we believe that the Board was justified in concluding that more than eleven years of confinement was necessary to ensure plaintiff’s successful return to the free community. Thus, the Board’s rationale for denying plaintiff parole comported with due process requirements.

For the reasons stated herein, the Court grants defendants’ motion for summary judgment. It is so ordered.


author: ASPEN, District Judge.

text:
    UNITED STATES of America ex rel. Shajdon BISHOP, a/k/a Earl Wilson, Plaintiff, v. James A. CHRANS, Warden and Attorney General of Illinois, Defendants.
    No. 83 C 9197.
    United States District Court, N.D. Illinois, E.D.
    Sept. 27, 1984.

      Shajdon Bishop, a/k/a Earl Wilson, pro se.
    James E. Fitzgerald, Chicago, 111., for defendants.
   MEMORANDUM OPINION AND ORDER

ASPEN, District Judge.

Petitioner, Shajdon Bishop, a/k/a Earl Wilson (“Wilson”) has filed a habeas corpus petition pursuant to 28 U.S.C. § 2254. Wilson is currently serving two concurrent terms of twenty-two years for rape and deviate sexual assault at the Pontiac Correctional Institution. On appeal, the Illinois Appellate Court affirmed the convictions, People v. Wilson, 87 Ill.App.3d 693, 42 Ill.Dec. 729, 409 N.E.2d 344 (1st Dist. 1980), and the Illinois Supreme Court denied leave to appeal.

Wilson challenges his convictions on the following grounds:

1. The identification procedure used by the police was unduly suggestive.
2. He was denied his constitutional right to counsel during that identification procedure.
3. He was denied his right to a preliminary hearing.
4. His trial counsel was ineffective.
5. His appellate counsel was ineffective.
6. The State’s proof was insufficient to convict him beyond a reasonable doubt.

Presently before the Court is a motion to dismiss by respondents, James A. Chrans, et al. For reasons set forth below, the motion to dismiss is granted.

Review of the Record

After a jury trial, Earl Wilson was convicted of rape and deviate sexual assault, acquitted of armed robbery, and given concurrent sentences of twenty-two years for each conviction. Wilson appealed his conviction to the Illinois Appellate Court, raising four issues: (1) he did not receive a fair trial because of the State’s presentation of a prejudicial “theme of flight and escape” throughout the trial; (2) the denial of a preliminary hearing deprived him of equal protection of the laws; (3) certain hearsay evidence was improperly admitted; and (4) he was prejudiced by comments made in the State’s closing argument. People v. Wilson, 87 Ill.App.3d 693, 695, 42 Ill.Dec. 729, 731, 409 N.E.2d 344, 346 (1st Dist. 1980). The appellate court affirmed the convictions. A pro se petition for rehearing was denied.

Wilson next filed a pro se petition for post-conviction relief pursuant to Ill.Rev. Stat., ch. 38, ¶ 122 et seq., 1983, in which he alleged that the identification procedure employed by the police was unduly suggestive, in that one of the police officers pointed his finger at Wilson and asked the victim if Wilson was her assailant. Additionally, Wilson alleged that he was denied his constitutional right to counsel during that identification procedure. A public defender was then appointed, and he filed a supplemental petition raising Wilson’s first two claims and also a claim of ineffective assistance of trial counsel. The State moved to dismiss both petitions because the issues raised in the post-conviction relief petition were taken from the trial record and therefore res judicata. The trial court granted the State’s motion. On appeal, Wilson again acting pro se offered the same issues submitted in the previous petitions, and also raised the issue that the victim failed to give the arresting officers a detailed description of her assailant prior to Wilson’s arrest. The appellate court held that the issues presented by Wilson in his petitions for post-conviction relief should have been presented in his direct appeal and were therefore waived. Further, the court held that the trial court properly imposed the doctrine of res judicata as to all issues previously presented to the trial and appellate courts. People v. Wilson, 109 Ill. App.3d 1213, 71 Ill.Dec. 887, 451 N.E.2d 1041 (1st Dist.1982).

After careful review of the record in this case, we hold that since Wilson has failed to follow Illinois’ procedural rules, he has waived the issues presented by the instant petition. Respondents are therefore entitled to prevail as a matter of law.

General Principles of Habeas Corpus

Although the writ of habeas corpus has been, and continues to be, the “symbol and guardian of individual liberty,” Peyton v. Rowe, 391 U.S. 54, 59, 88 S.Ct. 1549, 1552, 20 L.Ed.2d 426 (1968), its application has long been governed by two doctrines: (1) the principle of waiver, which directs a federal judge to deny habeas corpus relief if the ground upon which that relief is sought has not been raised at the appropriate time by the petitioner; and (2) the principle of exhaustion, which requires dismissal of the habeas petition if' the state remedies available to the petitioner have not been pursued to the fullest extent. United, States ex rel. Broadnax v. DeRobertis, 565 F.Supp. 327, 330 (N.D.Ill.1983). We consider each doctrine in turn.

Exhaustion

The language of the federal habeas corpus statute, 28 U.S.C. §§ 2254(b) and (c) makes it clear that federal habeas corpus relief is not available until a state prisoner has attempted to cure his alleged constitutional injury by pursuing all possible state remedies. Comity requires the federal courts to defer to the state court system and allow it the first opportunity to correct its alleged constitutional violations. If some avenue of state relief is still open to a habeas petitioner, the federal court must dismiss the petition and allow the petitioner to pursue his claims at the state level. Only when all state remedies have been exhausted should the federal court step in and render federal habeas corpus relief. See Picard v. Connor, 404 U.S. 270, 275-76, 92 S.Ct. 509, 512-13, 30 L.Ed.2d 438 (1971).

Wilson raises six claims in his habeas petition and we must decide if these claims have been exhausted. At trial he raised none of the alleged constitutional injuries of which he now complains. One claim was brought on direct appeal (denial of a preliminary hearing deprived Wilson of equal protection of the law). Under Illinois law, an issue not presented to or considered by the trial court cannot be raised on review and is waived, People v. Wilson, 87 Ill.App.3d at 703, 42 Ill.Dec. at 733, 409 N.E.2d at 348. Thus, a state court will not hear such a claim in a subsequent proceeding. Wilson has, therefore, “exhausted” his preliminary hearing claim.

Wilson alleged three claims in the post-conviction petition (the identification procedure was unduly suggestive; he was denied counsel during the identification; he had ineffective assistance of trial counsel). Under state law, the failure to present claims on direct appeal prevents the petitioner from raising them in any post-conviction proceeding, Ill.Rev.Stat., ch. 110A, ¶ 341(e)(7), 1983; People v. Smith, 91 Ill. App.3d 438, 453, 47 Ill.Dec. 165, 179, 414 N.E.2d 1281, 1295 (2d Dist.1980); People v. Fink, 91 Ill.2d 237, 62 Ill.Dec. 935, 437 N.E.2d 623 (1982); People v. Adams, 113 Ill.App.2d 276, 252 N.E.2d 65 (1st Dist. 1969). As a result, we could not require that Wilson raise the above claims in a post-conviction proceeding before concluding, as we do now, that he has exhausted the state remedies as to the identification, right to counsel and ineffective assistance of counsel claims.

Wilson’s final two claims (he was not convicted beyond a reasonable doubt; he had ineffective assistance of appellate counsel) have not been raised in any Illinois court previously. Since the reasonable doubt claim was neither raised at trial nor on appeal, it has been waived. This claim would not now be heard in a state court and is therefore exhausted. Wilson’s ineffective assistance of appellate counsel was only first cognizable in the post-conviction proceedings, People v. Frank, 48 Ill.2d 500, 272 N.E.2d 25 (1971), however, issues that could have been raised in an initial post-conviction petition are waived for purposes of the Illinois post-conviction remedy. See Ill.Rev.Stat., ch. 38, ¶ 122-3 (1983). We will not therefore .require Wilson to return to the state courts to litigate an issue raised for the first time on habeas review that could have been raised in a prior post-conviction petition. Further recourse to the state courts would be futile, thus the requirement that Wilson exhaust all available state remedies is met as none are now available. 28 U.S.C.A. § 2254(b).

Waiver

The remaining question is whether by failing to previously present the above-mentioned issues, Wilson has waived his claims for purposes of federal habeas corpus relief. In analyzing the waiver doetrine, this circuit has applied the “cause and prejudice” standard of Wainwright v. Sykes, 433 U.S. 72, 97 S.Ct. 2497, 53 L.Ed.2d 594 (1977), to virtually all types of procedural defaults. In Wainwright, the habeas petitioner failed to comply with a Florida “contemporaneous objection” rule which required a defendant to move to suppress evidence prior to trial or else waive the objection for purposes of a state appeal. The Court held that the habeas petitioner must demonstrate “cause” for his failure to object and actual “prejudice” from the claimed violation of his constitutional rights. The preference for the cause and prejudice standard in cases involving procedural defaults during trial was later reinforced by the Supreme Court in Engle v. Isaac, 456 U.S. 107, 102 S.Ct. 1558, 71 L.Ed.2d 783 (1982) and United States v. Frady, 456 U.S. 152, 102 S.Ct. 1584, 71 L.Ed.2d 816 (1982). The Court applied this standard to both cases, where the petitioners challenged in habeas corpus proceedings jury instructions to which they had not objected at trial.

Since Wilson has shown neither cause for his initial default, failing to raise certain issues at trial and thereby waiving them for purposes of his state appeal, nor actual prejudice resulting therefrom, Wilson has waived the following issues for federal habeas purposes: that the identification procedure employed by the police was unduly suggestive; that he was denied his constitutional right to counsel during that identification procedure; and that he was denied his right to a preliminary hearing.

The next two claims raised by Wilson were not properly brought up by him on direct appeal. The Supreme Court has never made it clear whether the cause and prejudice standard applies to “failure to appeal” cases as well as those involving failure to contemporaneously object. In Wainwright, the Court did not explicitly overturn its previous decision in Fay v. Noia, 372 U.S. 391, 83 S.Ct. 822, 9 L.Ed.2d 837 (1963). In Fay, the defendant was convicted of murder on the basis of a confession. He chose not to appeal his conviction for fear of receiving the death penalty but later sought federal relief by way of a habeas corpus petition. The Fay Court held that the federal judge may deny relief to an applicant who has deliberately bypassed the state courts thus forfeiting his state remedies. Id. at 438, 83 S.Ct. at 848. Although the Court in Fay phrased its holding in terms of all procedural defaults, the Wainwright decision narrowed the “deliberate bypass” rule by refusing to apply it in a case that did not involve a failure to appeal. The Wainwright Court left open the question of the viability of the cause and prejudice standard for failures to appeal:

[w]hether the Francis (see note 2, supra ) rule should preclude federal habeas review of claims not made in accordance with state procedure where the criminal defendant has surrendered, other than for reasons of tactical advantage, the right to have all of his claims of trial error considered by a state appellate court, we leave for another day.

433 U.S. at 88 n. 12, 97 S.Ct. at 2507 n. 12.

Despite the language of the Supreme Court, this circuit has clearly applied the cause and prejudice test to failures to appeal. The Seventh Circuit in Norris v. United States, 687 F.2d 899 (7th Cir.1982) applied the Wainwright standard to failures to appeal by federal prisoners and extended Norris to failures to appeal by federal prisoners in United States ex rel. Spurlark v. Wolff, 699 F.2d 354 (7th Cir. 1983) . Thus, since the petitioner has not shown cause excusing his failure to bring up issues on appeal and actual prejudice from the errors he alleges took place at trial, he has waived the following issues: ineffectiveness of his trial counsel and that the State’s proof was insufficient to convict him beyond a reasonable doubt.

The last claim advanced by the petitioner, that his appellate counsel was ineffective, was not asserted in his post-conviction petition. The court in Williams v. Duckworth, 724 F.2d 1439, 1442 (7th Cir. 1984) had occasion to consider whether the cause and prejudice standard would apply in a case where a state prisoner failed to pursue an issue in a post-conviction proceeding that could not have been raised on direct appeal. The court held that this standard did apply, and that therefore petitioner had waived his right to a federal forum for his claim of ineffective assistance of appellate counsel. Similarly, in the present case, petitioner offers no cause for his failure to raise the claim of ineffective appellate counsel in his post-conviction petition. Petitioner has therefore waived this contention.

We therefore conclude that petitioner Wilson has waived all of the claims set forth in his habeas petition and has not established any cause for his failure to raise the claims at the appropriate time. Further, although it seems unlikely that the petitioner could make a showing of actual prejudice resulting from these omissions, this Court need not consider “prejudice” since petitioner has not satisfied the “cause” requirement of the Wainwright standard. United States ex rel. Hudson v. Brierton, 699 F.2d 917, 922 (7th Cir.1983).

Conclusion

For the foregoing reasons, Wilson’s petition for habeas corpus relief is denied, and respondents’ motion to dismiss is granted. It is so ordered.

      . Title 28 U.S.C. § 2254 provides in pertinent part:

        (b) An application for a writ of habeas corpus in behalf of a person in custody pursuant to the judgment of a State court shall not be granted unless it appears that the applicant has exhausted the remedies available in the courts of the State, or that there is either an absence of available State corrective process or the existence of circumstances rendering such process ineffective to protect the rights of the prisoner.
      (c) An applicant shall not be deemed to have exhausted the remedies available in the courts of the State, within the meaning of this section, if he has the right under the law of the State to raise, by any available procedure, the question presented.

      . The cause and prejudice test was originally enunciated in the earlier cases, Davis v. United States, 411 U.S. 233, 93 S.Ct. 1577, 36 L.Ed.2d 216 (1973) and Francis v. Henderson, 425 U.S. 536, 96 S.Ct. 1708, 48 L.Ed.2d 149 (1976).

      . The Wainwright cause and prejudice standard shifts the burden of proof to the petitioner, and he must make a showing that the failure to raise an issue or to appeal is excused by good "cause".

      . It appears from Wilson’s petition that the only argument he would advance to show cause for his failure to raise any of these issues at trial would be ineffective assistance of his trial counsel. Although the Supreme Court has left open the question of what constitutes "cause” in the waiver context, Wainwright v. Sykes, supra, 433 U.S. at 87, 90-91, 97 S.Ct. at 2506-07, 2508-09, this circuit has implied that ineffective representation might amount to cause for a petitioner’s inability to apprise the state courts of his claim. Gray v. Greer, 707 F.2d 965, 968 n. 4, 969 n. 5 (7th Cir.1983).
      When a convicted defendant complains of the ineffectiveness of counsel’s assistance, the defendant must show that counsel's representation fell below an objective standard of reasonableness. Strickland v. Washington, — U.S.-, 104 S.Ct. 2052, 80 L.Ed.2d 674 (1984). Counsel has a duty to bring to bear such skill and knowledge as will render the trial a reliable adversarial testing process. Wilson has not specifically alleged any errors on the part of his trial attorney. Further, after reading all of the pleadings and the trial transcript, it is apparent that Wilson's trial counsel’s conduct was reasonable considering all the circumstances.

      . Wilson’s sole excuse for failing to raise these issues on appeal would be ineffective assistance of appellate counsel. This contention, however, was not raised in Wilson’s post-conviction petitions. Rather, the claim of ineffective appellate counsel is first brought up in this habeas petition. Wilson’s petition is filled with conclusory allegations regarding his appellate attorney’s decision not to brief a particular issue (suggestive identification) on appeal. It appears that in the attorney’s opinion, the issue was frivolous. In light of all the circumstances, it is appropriate to conclude that Wilson’s counsel was not ineffective, and the attorney’s professional judgment was reasonable and within the standards set forth by the Supreme Court in Strickland v. Washington, see note 4 supra.


text:
    UNITED STATES of America ex rel. Andrew HOWARD, Petitioner, v. Richard DeROBERTIS, Warden of the Stateville Correction Center, Box 112, Joliet, Ill., Respondent.
    No. 84 C 1153.
    United States District Court, N.D. Illinois, E.D.
    Sept. 27, 1984.

      Andrew Howard, pro se.
    James Fitzgerald, Chicago, III, for respondent.
   MEMORANDUM OPINION AND ORDER

ASPEN, District Judge:

Andrew Howard (“Howard”) filed a petition for habeas corpus pursuant to 28 U.S.C. § 2254, asserting that the Illinois Prisoner Review Board (“the Board”) denied him parole in violation of his rights under the Fifth and Fourteenth Amendments. Howard further claims that the Board failed to comply with a previous order of this Court dated October 17, 1983. Presently before the Court is respondent’s motion to dismiss Howard’s petition. For reasons set forth below, respondent’s motion to dismiss is granted.

Howard was convicted of gang related murder in December 1973 and is now serving a sentence of 150-200 years at Stateville Correctional Center. On February 2, 1983, pursuant to an application for rehearing, the Board denied Howard’s third application for parole. Thereafter, Howard filed a petition for writ of habeas corpus in this Court, asserting violations of his constitutional rights and requesting immediate release. In a prior action, this Court entered a summary judgment in favor of Howard and remanded the case to the Board for a rehearing consistent with our opinion. In response to that order, the Board held a rehearing on November 2, 1983, and issued an order and rationale denying Howard’s release on parole. The present petition for habeas corpus follows that denial.

Howard asserts several grounds for relief. First, he argues that the reasons given by the Board for denial of parole violated his constitutional rights. Second, Howard contends that the Board denied him due process in that it failed to comply with Ill.Rev.Stat. ch. 38, § 1003-5-1(b), which requires that an inmate be advised of factual information relied on whenever the Board makes a decision “which affects the length of the period of confinement or commitment.” Finally, Howard claims that the Board violated his due process rights by its failure to comply with this Court’s October 17, 1983 Opinion and Order.

I. Exhaustion

Howard did not petition the Illinois courts for a writ of mandamus. As a result, respondent moves to dismiss Howard’s petition on the ground that he has failed to exhaust his available state remedies as required by 28 U.S.C. § 2254(b) and (c). The federal habeas corpus statute requires that the district court dismiss a petition continuing any claims that have not been exhausted in the state courts. U.S. ex rel. Johnson v. McGinnis, 734 F.2d 1193 (7th Cir.1984), citing Rose v. Lundy, 455 U.S. 509, 102 S.Ct. 1198, 71 L.Ed.2d 379 (1982). The exhaustion requirement of section 2254, however, refers only to state remedies still available at the time the federal petition is filed. Engle v. Isaac, 456 U.S. 107, 125 n. 28, 102 S.Ct. 1558, 1570 n. 28, 71 L.Ed.2d 783 (1982). The exhaustion doctrine applies to a mandamus petition in state court where that proceeding could protect the rights asserted in the federal habeas corpus petition. Toney v. Franzen, 687 F.2d 1016, 1021 (7th Cir.1982) (citations omitted). Accordingly, we must determine whether a state mandamus remedy is available to Howard.

In United States ex rel. Johnson v. McGinnis, 734 F.2d 1193 (7th Cir.1984), the Court of Appeals for the Seventh Circuit held that before a state prisoner may obtain federal habeas corpus relief on the grounds that reasons given for his denial of parole violate the due process clause, he must first present that claim to the state courts by way of writ of mandamus. As the court observed,

Although Illinois mandamus is an unusual and extraordinary remedy, there do not appear to be any doctrinal or procedural bars that would prevent the Illinois courts from considering issues concerning the adequacy of reasons for a parole denial in a petition for a writ of mandamus. In fact, there is Illinois authority suggesting that mandamus is available in situations similar to the present case.

Id. at 1198.

The Johnson court examined Illinois law and concluded that a petition for writ of mandamus could be the proper procedure to compel the Board to provide a constitutionally adequate statement of reasons for a parole denial. Id. at 13. As a result, Howard should have petitioned the Illinois courts for a writ of mandamus. By not doing so, he has failed to exhaust all available state remedies.

II. The Ex Post Facto Clause Claim

While we have concluded that Howard has failed to exhaust available state remedies, examination of the merits of his petition further supports our conclusion that it should be dismissed. Howard argues that the Board erroneously considered the nature and seriousness of his offense in denying his request for parole, thus violating his constitutional rights.

In Heirens v. Mizell, 729 F.2d 449 (7th Cir.1984), an Illinois prisoner who had been denied parole release because of the seriousness of his offense sought federal habeas corpus relief. The court held that consideration of the nature and seriousness of the offense in making parole decisions was not a departure from prior practice of the Board, and thus did not result in an Ex Post Facto change in the law. Heirens v. Mizell, 729 F.2d at 463. Heirens thus reversed the earlier decision in Welsh v. Mizell, 668 F.2d 328 (7th Cir.), cert. denied, 459 U.S. 923, 103 S.Ct. 235, 74 L.Ed.2d 186 (1982). According to the Seventh Circuit, considerations of the seriousness of the offense committed by an inmate prior to 1973 no longer violates the Ex Post Facto clause of the U.S. Constitution.

In light of Heirens, Howard’s claim must fail. The Board properly considered the seriousness of his offense in denying his request for parole. Moreover, we agree with respondent that Howard was not denied parole solely on the basis of his crime. Rather, the Board’s decision noted Howard’s long arrest record and the court-imposed probation and supervision, both of which were drug related. Therefore, the denial of Howard’s parole request did not violate his constitutional rights.

III. Due Process Claims

Howard challenges the Board’s denial of parole with two procedural due process arguments. He first asserts that the decision was an arbitrary and capricious one as the Board’s denial points to no specific facts, circumstances or risks and thus is so vague as to violate due process. Second, Howard claims that the Board’s failure to comply with our previous opinion and order denied him due process. We find Howard’s first argument unpersuasive, and we need not address Howard’s second argument.

Illinois law creates “a legitimate expectation of parole entitled to some measure of constitutional protection.” United States ex rel. Scott v. Illinois Parole and Pardon Board, 669 F.2d 1185, 1190 (7th Cir.), cert. denied, 459 U.S. 1048, 103 S.Ct. 468, 74 L.Ed.2d 617 (1982). To determine whether a statement of reasons for denial of parole was constitutionally adequate, the court in Scott reaffirmed the test it had previously adopted in United States ex rel. Richerson v. Wolff, 525 F.2d 797 (7th Cir. 1975), cert. denied, 425 U.S. 914, 96 S.Ct. 1511, 47 L.Ed.2d 764 (1976). That test, taken from the court’s opinion in United States ex rel. Johnson v. Chairman of New York State Board of Parole, 500 F.2d 925 (2nd Cir.), vacated as moot, 419 U.S. 1015, 95 S.Ct. 488, 42 L.Ed.2d 289 (1974), was described as follows:

[t]o satisfy minimum due process requirements a statement of reasons should be sufficient to enable a reviewing body to determine whether parole has been denied for an impermissible reason or for no reason at all. For this essential purpose, detailed findings of fact are not required, provided the Board’s decision is based upon consideration of all relevant factors and it furnishes to the inmate both the grounds for the decision ... and the essential facts upon which the Board’s inferences are based.

Scott, 669 F.2d at 1191 (quoting Johnson). To this standard the court added:

Johnson ... requires only that the inmate be told why his request for parole has been denied. This can be accomplished simply by informing him of what in his record was felt by the Board to warrant his denial any way.

Scott, 669 F.2d at 1191.

Applying these rules to the instant case, we find that the Board’s rationale for denying Howard parole satisfies due process. The Board stated:

On November 2, 1983, a court ordered rehearing of the February 2, 1983 (Scott) rehearing was conducted at Stateville. The Board again considered your institutional adjustment which appears to be satisfactory having acquired both academic and vocational training.
The Board also considered your personal presentation which included your parole plan, with further consideration of the circumstances surrounding the crime for which you were sentenced to 150-200 years for murder.
The Board also noted your rather long arrest record that included court imposed probation and supervision, both of which being drug related. It was further noted that the instant offense was a drug related gang style murder.
In view of the above factors coupled with the severity of your criminal conduct, it is the Board’s continued opinion that there would be a substantial risk that you would not comply with the conditions required of parole.

The Board’s statement, while succinct, details the important facts of Howard’s crime and indicates that the Board considered this specific drug related conduct as grounds for the conclusion that the risk of further nonconforming behavior was too great for release at this time. The Board provided both the essential facts and the grounds for its determination, thus satisfying the requirements of Scott.

Accordingly, respondent’s motion to dismiss is granted, and Howard’s petition for a writ of habeas corpus is denied. It is so ordered.

      . Howard’s conviction was affirmed on appeal. People v. Howard, 34 Ill.App.3d 145, 340 N.E.2d 53 (1975).

      . Our October 17, 1983 Opinion and Order held that since the Court could not discern which of the several considerations listed by the Board constituted the reason Howard was denied parole, the Court could not determine, as mandated by United States ex rel. Scott v. Illinois Parole and Pardon Board, 669 F.2d 1185 (7th Cir.), cert. denied, 459 U.S. 1048, 103 S.Ct. 468, 74 L.Ed.2d 617 (1982), whether parole was denied for an impermissible reason or for no reason at all. Accordingly, the Court ordered the Board to conduct a new hearing. Howard v. DeRobertis, No. 83 C 2314 (Oct. 17, 1983).

      . Howard actually asserted that the use of the inappropriate criteria amounted to a violation of his Fifth and Fourteenth Amendment rights. Traditionally, however, the use of such criteria was considered as a violation of the Ex Post Facto Clause, and we will discuss the issue in the framework of the Ex Post Facto Clause.

      . Due to our conclusion that the Board’s statement met the due process requirements as set forth in Scott and Heirens, we need not address Howard’s second and final due process argument in which he claims that the Board violated his due process rights by its failure to comply with this Court’s Opinion and Order of October 17, 1983.

      . See also Heirens v. Mizell, 729 F.2d 449 (1984), where the court stated that the extent of judicial review of the Board’s decision is very narrow and that if the Board cites to facts upon which its reasons for denial of parole can be justified, due process is met. Id. at 467.


author: JAMES HARVEY, District Judge.

text:
    Richard F. CARELLA, Plaintiff, v. STARLIGHT ARCHERY, and Pro Line Company, Defendants.
    Civ. A. No. 81-30037.
    United States District Court, E.D. Michigan, S.D.
    Sept. 27, 1984.

      James A. Kushman and Ernie L. Brooks, Southfield, Mich., for plaintiff.
    Randall G. Litton and Thomas M. McKinley, Grand Rapids, Mich., for defendants.
   MEMORANDUM OPINION AND ORDER

JAMES HARVEY, District Judge.

Plaintiff brought this action claiming an infringement of U.S. Patent No. 3,365,800. Defendant Pro Line counterclaimed seeking a declaration of patent invalidity and noninfringement. Defendant Pro Line also counterclaimed for damages and injunctive relief, asserting that plaintiff had engaged in patent misuse, unfair competition, and antitrust violations. In an opinion dated February 4, 1982, the Court ordered two separate trials in this case, with the first trial to address the questions of patent validity and infringement, and the second trial to resolve the issues of patent misuse, unfair competition, and antitrust violations. The Court then halted all discovery related to the issues of patent misuse, unfair competition, and antitrust violations until the Court decided the issues of patent validity and infringement.

Commencing on June 1, 1983, the Court conducted four days of hearings on the questions of patent validity and infringement. The Court heard final arguments on these two issues on January 26, 1984. The Court has reviewed the entire record along with the briefs and proposed Findings of Fact and Conclusions of Law submitted by counsel. Therefore, pursuant to F.R.Civ.P. 52(a), the Court hereby sets forth its Findings of Fact and Conclusions of Law.

FINDINGS OF FACT

A. Background of the Litigants

1. ) Plaintiff, Richard F. Carella, is an individual residing at 35572 Strathcona Drive, Mount Clemens, Michigan. Plaintiff does business at that address under the name of Range-O-Matic.

2. ) At the time this suit was filed, defendant Starlight Archery was a proprietorship of Mr. Charles Nicholas, and was located at 21570 Groesbeck Highway, Warren, Michigan.

3. ) Subsequent to the filing of this suit, Starlight Archery incorporated. Defendant Starlight Archery presently has four outlets, which are located in Warren, Royal Oak and Kalamazoo, Michigan; and Cleveland, Ohio.

4. ) During the course of its operating history, defendant Starlight Archery has engaged in the business of retail sales of archery products. In addition, defendant Starlight Archery has continuously operated as a service center for archery equipment, as well as providing archery shooting lanes at its places of business.

5. ) Defendant Starlight Archery is a customer of defendant Pro Line Company, and also has been a customer of plaintiff.

6. ) Defendant Pro Line Company is a Michigan corporation having a principal place of business at 1675 Gun Lake Road, Hastings, Michigan. Pro Line Company is engaged in the business of the manufacture, distribution and sale of archery related products, including bow sights.

7. ) This action was commenced on May 6, 1981, when Richard F. Carella filed a complaint against defendant Starlight Archery. The complaint alleged in a single count that Starlight Archery was infringing U.S. Patent No. 3,365,800 by selling a sight designated as Model M-525 RF and sight pins designated Model M-506 RF. Both of the allegedly infringing products are manufactured by defendant Pro Line Corporation.

B. The Invention of the Carella Patent

8. ) The Carella Patent concerns a bow sight which provides for simultaneous range finding and aiming.

9. ) The impetus for Corella’s invention was his misfortune in bow hunting in 1965, when he missed a shot at a deer. As a result of this experience, plaintiff concluded that an archery sight combining range finding and aiming would be a helpful advance in the bow sight field.

10. ) A significant step in the Carella patent occurred at an “archery shoot” on January 1, 1966, when Carella correlated the aperture defined by a sight pin hood with a circular target comparable in size to a deer’s chest.

11. ) Carella worked steadily on his sight, which would combine range-finding and aiming. His progress is reflected in the following exhibits: PX-4A, PX-4B, PX-4C, PX-4D, PX-4E, PX-4F, PX-4G, PX-11A, PX-11B, PX-11D, PX-11E, PX-11F, PX-11G, PX-11H, and PX-11I.

12. ) Carella met with his patent attorney, Harold W. Milton, Jr. on September 24, 1966, to discuss applying for a patent.

13. ) An application for a patent was filed August 7, 1967 in Carella’s name, and the Carella Patent issued to him on January 30, 1968.

C. The Claims of the Carella Patent

14. ) The following claims of the Carella Patent particularly point out and distinctly claim that invention:

1. An archery bow sight assembly comprising: support means adapted for attachment generally parallel to the length of an archery bow, and a plurality of independent sights respectively connected to and each independently adjustable longitudinally along said support means, each of said sights defining a longitudinal distance different from the longitudinal distance defined by any one of the other sights so that said assembly may be attached to an archery bow and each sight independently positioned relative to said support means for properly aiming the bow by moving the bow to view a target at a distance from the bow through the respective sights until the apparent vertical height of the target equal the longitudinal distance defined by one of said sights, thereby properly aiming the bow for the particular target.
2. An archery bow sight assembly as set forth in claim 1 wherein at least two of said sights are disposed in overlapping relationship with one another.
3. An archery bow sight assembly as set forth in claim 1 wherein each of said sights includes a support shaft and means supported thereby and defining said vertical distance.
4. An archery bow sight assembly as set forth in claim 3 wherein said means defining said vertical distance presents an aperture having an endless periphery.
5. An archery bow sight assembly as set forth in claim 4 wherein said means defining said vertical distance comprises a circular ring with the ring of each respective sight being of a different diameter than the others.
6. An archery bow sight assembly as set forth in claim 5 wherein at least two of said rings are disposed in vertically overlapping relationship with one another.
7. An archery bow sight assembly as set forth in claim 6 wherein said sights are attached to said support means in a plurality of spaced vertical rows.
8. An archery bow sight assembly as set forth in claim 6 including adjustment means for allowing the adjustment of the vertical position of each support shaft relative to said support means.
9. An archery bow sight assembly as set forth in claim 8 wherein said adjustment means comprises threads on each support shaft with a pair of nuts threaded thereonto and clampingly engaging said support means.
10. An archery bow sight assembly as set forth in claim 9 wherein said support means comprises a bracket having two spaced vertical slots, said support shafts being disposed through one of said slots.

D. The Operation of the Carella Patent

15. ) The operation of Carella’s sight was described at trial, and is also described on the packages which contain Carella’s patented Range-O-Matic sight. The physical principle underlying plaintiff’s sight is that the further an object is away from the viewer, the smaller the object appears.

16. ) Thus, in setting the Carella sight, one uses the same size target at each step of the process. Carella himself would use a 12 inch target that would approximate a deer’s chest, but other size targets could also be used. The key step is to first “sight in” with the largest ring to fix your sight for close range, and then sight in each smaller ring to fix the sight for longer ranges. Four rings are necessary to make the sight useful for bow hunting.

17. ) Because each ring is independently adjustable, and because the double slotted mount permits overlapping, the Carella sight can be used by any archer to obtain simultaneous range finding and aiming.

E. The Scope and Content of the Prior Art

18. ) At trial, Carella introduced sixty-six patents relating to archery bow sights generally, many of which relate to range finding bow sights specifically.

19. ) The art relevant to the Carella Patent is a crowded art, where narrow advances are granted patent protection. Nevertheless, it is incumbent on the Court to review the prior art cited by the examiner, and the uncited art produced by the defendants as a challenge to the validity of the Carella Patent.

i. The Cited Art

20. ) The examiner cited three patents during the prosecution of the Carella Patent: U.S. Patent No. 2,574,599 (hereinafter called the “Steiber Patent”); U.S. Patent No. 2,991,556 (hereinafter called the “Wilchek Patent”); and U.S. Patent No. 3,120,-222 (hereinafter called the “Bear Patent”).

21. ) The Stieber Patent discloses several embodiments of a range finder gauge for use on a bow. Each of the embodiments includes a rigid plate which is affixed to the bow and is adjustable vertically or longitudinally on the bow. In one embodiment, the plate defines a plurality of vertically spaced sighting slots, with each of the slots having a different vertical height. However, the individual slots are not independently adjustable with respect to one another.

22. ) The Wilchek Patent discloses a sight assembly including a bracket, and a plurality of independently adjustable and vertically or longitudinally movable sight pins. The sight pins are what archers term “standard beaded sights.” These sight pins do mot include circular rings. The sight pins are independently adjustable with respect to each other on the bracket to permit them to be “sighted in” at different distances from a target. How this “sighting in” may be done is discussed at Finding of Fact No. 39.

23. ) The Bear Patent discloses a sight assembly in combination with a bow. The sight assembly has a single sight, which is mounted in a vertically slotted bracket so that the archer may adjust it.

ii. The Uncited Art

24. ) The defendants contend that the plaintiff failed to disclose to the Patent and Trademark Office certain critical prior art references. Specifically, defendants place great reliance on U.S. Patent No. 3,056,206 (hereinafter the Moore Patent); U.S. Patent No. 2,332,080 (hereinafter the Howe Patent); the “Adjusta” sight; the “Vee” sight; and the Schneider Rite-Flite sight.

25. ) The Moore Patent discloses a bow sight in which two independently adjustable rings of different sizes are mounted on a slot. The articulated purpose of the Moore sight is to allow an archer to use the sight for both field and target anchors, and to provide for the adjustment of sights when bow strings are replaced, arrows of differing weights are used, or when other circumstances arise, such as those described in DX-U. There is no express teaching in the Moore Patent concerning range finding. Moreover, the Moore Patent was never commercially developed, and is thus a paper patent.

26. ) The Court has also examined the file wrapper of the Perkins Patent (DX-Q). The Court finds that the patent examiner in Perkins did not read the Moore Patent as teaching range finding when he rejected Perkins’ claims.

27. ) The use of the Moore sight as a range finding mechanism depends on hindsight developed in light of the teachings of the Carella Patent.

28. ) The Howe Patent discloses the concept of multiple spaced rows of sights. The sights used in Howe are pin sights, and the language of the patent teaches that the pins “are given distinguishing colors to represent different ranges.” The stated shooting procedure for the Howe sight requires the archer to estimate the distance to the target, and then sight along appropriate pin. (PX-G).

29. ) The Adjusta-Sight (DX-BZ) uses the same physical principle as the Carella sight, but its structure is entirely different. Furthermore, it does not provide a capacity to aim and rangefind simultaneously. Rather, the archer is required to adjust the aptly named Adjusta-Sight.

30. ) Like the Adjusta-Sight, the VeeSight uses the same physical principle as the Carella Patent, but uses a different structure, and does not provide for simultaneous range finding and aiming.

31. ) On August 5, 1968, David J. Perkins instituted a declaratory judgment action in the Eastern District of Michigan, seeking a declaration that the Carella Patent, U.S. Patent No. 3,365,800 was invalid. Perkins v. Carella, Civil No. 31581 (E.D.Mich., Aug. 5, 1968).

32. ) The lawsuit of Perkins v. Carella was ultimately settled, but during the course of the discovery proceedings the parties took the deposition of a Mr. Burnett Schneider, the developer of the Rite-Flite bow sight.

33. ) At the trial of the instant case, the Court admitted the deposition of Mr. Schneider taken during the Perkins v. Carella proceedings. The Court admitted this deposition pursuant to F.R.Civ.P. 32(a)(3)(D), and F.R.E. 804(b)(1).

34. ) Although the Court admitted Mr. Schneider’s deposition into evidence, the Court still has the responsibility to assess the credibility of Schneider’s testimony. Having reviewed the deposition, the Court is struck by Schneider’s unclear testimony concerning the development of the RiteFlite sight. Specifically, the Court notes the contradictions between the time claimed for the development of the physical models of the Rite-Flite sight, and the dates which appear on sketches and drawings. In sum, the Court finds only three relevant facts established by the Schneider deposition. First, an advertisement for the Rite-Flite sight appeared in a Wisconsin Bow Hunter Association mailer that was mailed on August 17, 1966. No evidence was produced showing when that mailer was received by the public. Second, Mr. Schneider began to sell to the public his Rite-Flite sight after the mailing. Third, an advertisement for the Rite-Flite sight appeared in the July/August, 1967 issue of Bow & Arrow Magazine.

F. The Differences Between the Carella Patent and the Prior Art

35. ) The use of apparent vertical height for rangefinding was well known in prior art (the Stieber Patent), as was the use of multiple elements on a sight (the Wilchek Patent and the Moore Patent), and the use of circular hoods (the Bear Patent and the Moore Patent).

36. ) The prior art, however, lacked any teaching or suggestion of the use of circular apertures for simultaneous range finding and aiming; a teaching which eliminates all the shifts required of an archer when using the separate range finding gauges and aiming sights taught by the prior art.

37. ) Accordingly, the differences between the Carella Patent and the prior art are:

(a) The broad concept of simultaneous range finding and aiming taught by the Carella Patent was unknown to the'prior art.
(b) The specific implementation of Carella’s concept through thin rings adjustable to overlap for maximum effectiveness was neither appreciated nor disclosed.
(c) The use of a double slotted sight bracket to enhance overlap as claimed in the Carella Patent was also never appreciated or disclosed.

G. The Level of Ordinary Skill in the Art

38. ) The ordinary level of skill in the relevant art is low, for the designers of archery sights usually do not have advanced degrees or formal technical training. Rather, the designers of archery sights are generally practicing archers, who have only a high school education.

39. ) It was within the ordinary level of skill in the relevant art to use a pin sight to gauge distance. Specifically, the archer used the open space between two pins to gauge distance, and then put the relevant pin on the bullseye. This method of using pin sights does not have the feature of the Carella sight, which provides for simultaneous range finding and aiming.

H. The Development of the Pro Line Sight

40. ) In 1973, defendant Pro Line approached Carella for a license to produce the Patented Range-O-Matic sight. This initiative was rejected by Carella.

41. ) Defendant Pro Line renewed its initiative with Carella after Mr. Ploot joined Pro Line in 1978. Again, Carella refused to license Pro Line.

42. ) Defendant Pro Line sought advice from patent counsel in 1978 and in 1980 on the validity of the Carella Patent.

43. ) Notwithstanding nearly a decade of deference to the Carella Patent, and the absence of any competitive range finder from Pro Line’s catalog, Pro Line copied the Carella sight and introduced that product copy in 1981.

44.) The evidence supporting this finding of copying consists of the testimony in Mr. Ploot’s deposition, the similar structure of the Pro Line product, and the similar claims used in advertising the Pro Line product.

I. Defendants’ Infringement of the Pro Line Patent

i. The M-525 RF Range Finder Hunting Sight

45.) Pro Line manufactures and sells the M-525 RF range finder hunting sight.

46. ) Starlight sells the M-525 RF range finder hunting sight.

47. ) Richard Carella and Theodore Brooks both testified that Claims 1 through 6 of the Carella Patent read directly on the M-525 RF range finder hunting sight.

48. ) Richard Carella and Theodore Brooks further testified that the M-525 RF range finder hunting sight and Carella’s commercial embodiment of the invention of the Carella Patent perform the same sighting and range finding functions in the same way, when used by the hunter in the field.

49. ) The M-525 RF range finder hunting sight infringes the Carella Patent both literally and under the Doctrine of Equivalence.

ii. The M-506 RF Range Finder Pins

50. ) The Court finds the M-506 Range Finder pins can be used in the permissible repair of the range finding sight, and are also suitable for non-infringing uses. Thus, these pins do not infringe on the Carella Patent.

J. Damages or Attorney Fees

51. ) Richard Carella and Dorothy Carella testified that the minimum profit made on the sale by Carella of his complete range finding bow sight assembly is Seven Dollars ($7.00).

52. ) Defendants submitted evidence at trial of a number of devices which may be utilized to gauge the range of the target from the archer, but defendants did not provide any evidence of commercially available devices which combine the range finding and aiming functions in a single element for instantaneous shooting as do the Carella and Pro Line range finding hunting sights.

53. ) Carella testified that his sight is unique, and Pro Line found no substitute for its catalog from the time of its initial interest in 1973 until it offered a copy in 1981.

54.) Since there are no non-infringing, commercially available substitutes for the Carella range finding bow sight, purchasers of the Pro Line M-525 RF hunting sight would have purchased Carella’s range finding bow sight had the Pro Line range finding hunting sight been unavailable.

55.) The number of M-525 RF range finder hunting sights sold by Pro Line and the corresponding lost profit to Carella as a result of those sales as of the time of trial are as follows:

Year Unit Sales Lost Profits

1981 4,576 $ 32,032.00

1982 3,422 23,954.00

1983 640 4,480.00

Total $ 60,466.00

56.) The Court finds that the defendants had a reasonable doubt as to whether the Carella Patent was valid. Thus, defendants did not willfully infringe on that patent, even though they copied the Carella bow sight.

CONCLUSIONS OF LAW

1.) The defendants raise several contentions which dictate the issues in this case. In particular, the defendants claim that the Carella Patent is invalid because it was anticipated by the prior art, it was obvious, and the subject matter was in public use or for sale for more than one year before the patent application was filed. The defendants also contend that the Carella Patent is unenforceable because of the plaintiffs failure to cite certain relevant prior art to the patent office, and to file a copy of the settlement in the Perkins v. Carella lawsuit. Finally, the defendants argue that even if the patent is enforceable, defendants did not infringe on the patent, and if they did infringe, treble damages and attorney fees are not warranted.

2.) Before addressing each of defendants’ contentions, the Court will discuss the burden of proof in this case and the presumption of patent validity. After establishing the guidelines governing the burden of proof, the Court will dispose of defendants’ contentions.

A. Burden of Proof and the Presumption of Validity

3.) The statutory presumption of patent validity imposes the burden of persuasion on one who attacks the validity of a patent. 35 U.S.C. § 282.

4. ) In the Sixth Circuit Court of Appeals, the rule was that this presumption may be weakened or wholly vitiated if the Patent Office failed to consider all pertinent art. American Seating Co. v. National Seating Co., 586 F.2d 611 (6th Cir.1978).

5. ) The Court of Appeals for the Federal Circuit has rejected the Sixth Circuit’s approach, for the Federal Circuit has held that the burden of persuasion of invalidity must, under the statute, remain at all times on the party asserting invalidity, although that burden may be carried more easily by evidence consisting of more pertinent prior art than that considered by the examiner. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440 (Fed.Cir.1984); American Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350 (Fed.Cir.1984). Further, the facts establishing anticipation or obviousness must be proven by clear and convincing evidence. RCA Corp. v. Applied Digital Data Systems, Inc., supra; Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506 (Fed.Cir.1984).

B. Anticipation

6.) Although anticipation is a factual determination, the Court articulates its ruling at this point in the opinion because a statement of the proper standard is necessary before ruling.

7.) Anticipation requires the presence in a single prior art reference disclosure of each and every element of the claimed invention arranged as in the claim. Lindemann Maschinenfabrik v. American Hoist and Derrick, 730 F.2d 1452 (Fed.Cir.1984).

8. ) Finding of Fact 14 sets forth the claims of the Carella Patent. A comparison of these claims with the prior art discussed in Section E of the Findings of Fact leads the Court to conclude that the Carella Patent was not anticipated, since no prior art reference discloses each and every element of the claimed invention.

C. Obviousness

9. ) The test for obviousness has been well established since Graham v. John Deere, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1965), where the Supreme Court stated:

While the ultimate question of patent validity is one of law, A & P Tea Co. v. Supermarket Corp., supra, 340 U.S. [147], at 155 [71 S.Ct. 127 at 131], 95 L.Ed. [162] at 168, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at-issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

Id. at 17-18, 86 S.Ct. at 694.

10.) The Court has made the factual determinations directed by the Graham decision and finds that the Carella Patent is not invalid due to obviousness. Of particular significance to this decision is the low level of ordinary skill in the pertinent art, and the simultaneous range finding and aiming which is provided only by the Carella Patent. In addition, the Court believes that the decision of defendant Pro Line to copy the Carella sight, and not any other, shows how the Carella sight has met a long felt need.

D. Prior Public Use or Sale

11.) An inventor is not entitled to a patent if the invention was in public use or on sale in this country more than one year prior to the date of the application for patent in the United States. 35 U.S.C. § 102(b).

12. ) As reflected in Finding of Fact 13, plaintiff filed for the instant patent on August 7, 1967. The critical dates for comparison are those involving the Schneider Rite-Flite sight. The contradictions in the Schneider deposition lead the Court to mistrust much of the information provided by Schneider, and the Court, therefore, found only limited facts established by that deposition. None of the facts set forth in Finding of Fact 34 make the Carella Patent invalid, especially when the rule is that a magazine takes effect as a printed publication under 35 U.S.C. 102 as of the date it reaches the addressee. Protein Foundation Inc. v. Brenner, 260 F.Supp. 519 (D.C. D. C.1966). The defendants offered no proof as to the date the Wisconsin Bow Hunters Association magazine reached its various addressees, and 35 U.S.C. § 102(b) will not invalidate the patent.

E. Defendants’Allegations of Fraud

13. ) Defendants argue that the plaintiff worked a fraud on the patent office because plaintiff breached his duty of candor to the Patent and Trademark Office, and because plaintiff did not file a copy of the settlement in the Perkins v. Carella lawsuit.

14.) Although a patent applicant has an “uncompromising duty” to disclose material prior art during the prosecution stage before the patent office, the failure to disclose prior art will not result in an unenforceable patent unless unclean hands or fraud are shown by “clear, unequivocal, and convincing” evidence. Schnadig Corp. v. Gaines Manufacturing Co. Inc., 494 F.2d 383 (6th Cir.1974). The Court’s Findings of Fact concerning both the disclosed and undisclosed prior art show that the undisclosed art adds little to what was considered by the Patent Office. Thus, the Court finds no fraud or unclean hands on this basis.

15.) Defendants’ other fraud theory is that the patent-in-suit is void and unenforceable because of the settlement in the Perkins v. Carella lawsuit. Defendants’ argument is based on an analogy to 35 U.S.C. § 135(c). 35 U.S.C. § 135(c) provides in essence that if there is an agreement between parties to an interference, and that agreement works to terminate the interference, then a true copy of that agreement is to be filed in the Patent Office. Failure to file the true copy will render the agreement unenforceable, as well as rendering unenforceable any patent of the parties involved in the interference. The terms of 35 U.S.C. § 135(c) limit that section to patent interferences, and thus it would be inapplicable to the private settlement of a lawsuit, such as the suit in Perkins v. Carella. The Court will not hold plaintiff’s patent void on this failure to file theory.

F. Infringement and Damages

16.) As detailed in the Findings of Fact, the Court found that defendants infringed on the Carella Patent by manufacturing and selling the M-525 RF sight, but there was no infringement in the manufacture and sale of the M-506 RF range finder pins.

17.) The Court computed damages on the basis of lost profits because given the nature of the market for plaintiffs archery sight, this method of computing damages furthers the purposes of the patent laws. Lam, Inc. v. Johns-Manville Corporation, 718 F.2d 1056 (Fed.Cir.1983).

18. ) The Court did not award treble damages or attorney fees because the Court found that although there was copying, it was not done in bad faith, but rather was done as the basis of a reasonable belief in the invalidity of the Carella Patent. See generally, Lam, Inc. v. Johns-Manville Corp., 668 F.2d 462 (10th Cir.1982), cert. denied, 456 U.S. 1007, 102 S.Ct. 2298, 73 L.Ed.2d 1302 (1982).

Conclusion

19. ) For the reasons stated above, the Court holds that defendants infringed on the Carella Patent, U.S. Patent No. 3,365,800, and are liable for damages in the amount of $60,466.00. Because this case involves several unresolved counterclaims, the Court cannot automatically enter judgment. F.R.Civ.P. 54(b). The parties have ten days from the date of this order to submit memorandum on whether the Court should enter judgment at this time. The parties should also submit proposed judgments along with their respective memorandum.

IT IS SO ORDERED.


author: LATCHUM, Senior District Judge.

text:
    H.B. FULLER COMPANY, Plaintiff, v. NATIONAL STARCH & CHEMICAL CORPORATION, Defendant.
    Civ. A. No. 80-454-JLL.
    United States District Court, D. Delaware.
    Sept. 27, 1984.
    Paul E. Crawford of Connolly, Bove, Lodge & Hutz, Wilmington, Del., Alan G. Carlson of Merchant, Gould, Smith, Edell, Welter & Schmidt, P.A., Minneapolis, Minn., and Susan F. Marrinan of H.B. Fuller Co., St. Paul, Minn., of counsel, for plaintiff.
    Peter M. Sieglaff of Potter Anderson & Corroon, Wilmington, Del., and Herbert F. Schwartz, David J. Lee, and Richard A. Inz of Fish & Neave, New York City, of counsel, for defendant.
   OPINION

LATCHUM, Senior District Judge.

This patent case is before the Court on the defendant’s motion for summary judgment and, in the alternative, for a separate trial on the two issues discussed in its summary judgment brief. (Docket Item [“D.I.”] 157.) Because there are unresolved factual issues in the case and because there appears to be little merit in bifurcating trial, the defendant’s alternative motion will be denied.

I. FACTS

The patent in suit is for an adhesive composition and the use of that composition in combination with sanitary napkins. (D.I. 158 at 6; D.I. 171 at 8-9.) During the 1970s, the production of new adhesives made it possible for manufacturers to make sanitary napkins which could be affixed directly to the inside of a woman’s undergarment. This development became a genuine commercial success and hence the focus of this litigation.

The plaintiff, H.B. Fuller Company (“Fuller”), is the assignee of the challenged patent. The application upon which the patent issued (“the CIP application”) was filed in January 1977 and was a continuation in part of a June 1975 application (“the patent application”). The defendant, National Starch & Chemical Corporation (“National”), is one of Fuller’s competitors in the production and marketing of adhesives.

In the mid-1970s both parties were vying for the business of the Kimberly-Clark Corporation (“Kimberly-Clark”), a manufacturer of sanitary napkins. (D.I. 171 at 7-8.) Fuller succeeded in producing the adhesive that Kimberly-Clark preferred. (D.I. 172 at affidavit I, appendix 8.) National, however, after a sustained period of frustration in its own research and development efforts, determined in 1976 that the “[b]est chance for immediate business [with Kimberly-Clark] is [to produce an] exact match for current Fuller [adhesive], flaws and all ____” (Id. at affidavit I, appendix 16.) National made the duplication and submitted it to Kimberly-Clark. (Id.) Some three years later, Fuller’s power to control the use of its adhesive formula became more formidable with the issuance of a patent on its CIP application. (D.I. 158 at appendix B.) In 1980, Fuller filed this suit against National for continuing infringement of that patent. (D.I. 1.)

II. MOTION FOR SUMMARY JUDGMENT

Before turning to National’s two grounds for summary judgment, the legal standard governing summary judgment should be noted. Rule 56(c) of the Federal Rules of Civil Procedure provides that, upon motion of a party, summary judgment shall be rendered if the record before the court shows that there is no issue as to any material fact and that the moving party is entitled to judgment as a matter of law. The burden of proving that this standard has been met is upon the moving party. Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970).

A. National’s First Argument

National contends (D.I. 158 at 30), and Fuller does not deny, that sanitary napkins making use of the now patented adhesive were “on sale,” within the meaning of 35 U.S.C. § 102(b), more than a year before the 1977 filing of Fuller’s CIP application. This being the case, the “on sale” statutory bar would make Fuller’s patent invalid unless the patent can be credited with the earlier filing date of the parent application. Whether the patent can be so credited is a question governed by 85 U.S.C. § 120.

Section 120 states that a patent application will be credited with the filing date of a prior application if the following five criteria are met: (1) the disclosure in the later application contains in clear, concise, and exact terms a full description of the invention and the manner or process of making and using it, the description being such that it both sets forth the best mode contemplated by the inventor for carrying out his invention and enables any person skilled in the art to which the invention is most nearly connected to make and use the invention, see 35 U.S.C. § 112; (2) the patent sought in the later application is on the same invention as that on which the prior application is based; (3) the later application is by the same inventor who filed the prior application; (4) the later application is filed before the patenting, abandonment, or other termination of proceedings on the prior application; and (5) the later application makes specific reference to the prior application.

National’s argument addresses only the first of these criteria. National contends that the parent application does not disclose the invention which is claimed in the CIP application and which has been given patent protection. (D.I. 158 at 32-33.) National also asserts that Fuller has the burden of proof on this issue. (Id. at 32.)

Contrary to National’s contention, the burden of proof on all aspects of the validity of the patent rests on National, as the challenger of the patent. 35 U.S.C. § 282; see, e.g. SSIH Equip. S.A. v. United States Internat’l Trade Comm’n, 718 F.2d 365, 375 (Fed.Cir.1983); General Motors Corp. v. United States Internat’l Trade Comm’n, 687 F.2d 476, 482 (C.C.P.A.1982), cert. denied, 459 U.S. 1105, 103 S.Ct. 729, 74 L.Ed.2d 953 (1983); Solder Removal Co. v. United States Internat’l Trade Comm’n, 582 F.2d 628, 632 (C.C.P. A.1978). To prevail on this first summary judgment argument, then, National must demonstrate that there is no factual dispute about the disclosure and the manner in which the invention works and that as a matter of law the disclosure in the parent application is inadequate to support the patent granted on the CIP application. National has failed to meet its burden in this respect.

Without going into the complexities which characterize the applications and invention, it is sufficient for disposition of this argument to note that the matter in controversy is highly technical and subject to competing interpretations. (See D.I. 158 at 32-39; D.I. 171 at 17-25.) In other words, there are key factual issues yet to be resolved by the fact finder after a full consideration of the evidence and summary judgment must thus be denied.

B. National’s Second Argument

National proposes a second argument for summarily disposing of the Fuller patent: fraud on the Patent and Trademark Office (“PTO”) in prosecuting the patent applications. According to National, Fuller withheld from the PTO certain test results which would have had a bearing on the patent examiner’s decision to grant the patent. (D.I. 158 at 43-46.) National proceeds to cite a series of cases discussing the standards of practice before the PTO. (Id. at 46-50.)

What National fails to cite is the relatively new rule for determining whether fraud on the PTO has been committed. The United States Court of Appeals for the Federal Circuit has held, “[e]stablishing that a patent was procured by fraud or with such egregious conduct as to render it unenforceable requires clear, unequivocal, and convincing evidence of an intentional misrepresentation or withholding of a material fact from the PTO.” Orthopedic Equip. Co. v. All Orthopedic Appliances, 707 F.2d 1376, 1383 (Fed.Cir.1983). As the same court later remarked, this is a heavy burden. Environmental Designs v. Union Oil Co. of Cal., 713 F.2d 693, 698 (Fed.Cir.1983), cert. denied, — U.S.-, 104 S.Ct. 709, 79 L.Ed.2d 173 (1984). It is one that, not surprisingly, National has failed to carry. A question of intent is always a question of fact, and, because Fuller denies any intent to deceive the PTO (D.I. 171 at 26-29), it is in this case a genuinely disputed question of fact. Summary judgment is obviously inappropriate under these circumstances. See, e.g., Prochaska v. Marcoux, 632 F.2d 848, 851 (10th Cir.1980), cert. denied, 451 U.S. 984, 101 S.Ct. 2316, 68 L.Ed.2d 841 (1981); Charbonnages de France v. Smith, 597 F.2d 406, 414 (4th Cir.1979); Sterling Nat’l Bank & Trust Co. of N.Y. v. Fidelity Mortgage Investors, 510 F.2d 870, 875 (2d Cir.1975).

III. MOTION FOR BIFURCATION OF TRIAL

National’s motion, in the alternative, includes the request that should summary judgment be denied, a separate trial be conducted on the two defenses of invalidity and unenforceability of the patent raised in its summary judgment motion. (D.I. 157 at 2.) In its brief filed in support of that request, National argues that judicial economy will be furthered by a separate trial on its two defenses that the Fuller patent is invalid because of the “on sale” bar of 35 U.S.C. § 102(b) or because of Fuller’s alleged fraud on the PTO. (D.I. 156 at 3-4.)

It is true of any case that a separate trial on a dispositive issue might save some time and energy; however, that fact has not led to the routine bifurcation of trial for the simple reason that judicial economy is not the be all and end all of the administration of justice. Justice includes, as Federal Rule of Civil Procedure 42(b) suggests, a consideration of the potential prejudice to the parties in determining whether separate trials should be conducted on the issues in a single case. As indicated by this Court’s denial (D.I. 36) of National’s previous motion for separate trials on liability and damages (D.I. 28), the Court believes that the overall equities of this case will be better considered and prejudice to Fuller will thus be avoided if the entire case is considered in a single trial. National’s request for a separate trial on its two defenses would in this Court’s opinion unduly extend the final disposition of this case to Fuller’s prejudice and therefore the alternative motion for separate trials on the two issues of invalidity and unenforceability will be denied.

An order will be entered giving effect to the conclusions set forth above.

      . U.S. Patent No. 4,136,699 entitled "Absorbent Article With Adhesive Strip” and, for convenience, the patent and the applications it is based on will be referred to as Fuller’s.

      . Section 102(b) provides, in pertinent part, "A person shall be entitled to a patent unless ... the invention was ... on sale in this country, more than one year prior to the date of the application for patent in the United States.” (emphasis added)

      . Id.

        . The authority for this proposition cited by National is one 1972 case from the United States Court of Appeals for the Seventh Circuit. Frantz Mfg. Co. v. Phenix Mfg. Co., 457 F.2d 314, 323-24. The cited passage is somewhat ambiguous, but even if the meaning of it were what National claims, the passage is of no consequence in light of subsequent pronouncements of the United States Court of Appeals for the Federal Circuit which say with great plainness that "a patent shall be presumed valid and the burden of persuasion is and always will remain on the party asserting invalidity." General Motors Corp. v. United States Internat'l Trade Comm’n, 687 F.2d 476, 482 (1982) (citations omitted).

      . Rule 42(b) reads, in part: "The court in furtherance of convenience or to avoid prejudice, or when separate trials will be conducive to expedition and economy, may order a separate trial of any claim, cross-claim, counterclaim, or third-party claim, or of any separate issue____”