Spevack v. Strauss

PETITIONER:Spevack
RESPONDENT:Strauss
LOCATION:Fargo, North Dakota

DOCKET NO.: 339
DECIDED BY: Warren Court (1958-1962)
LOWER COURT: United States Court of Appeals for the District of Columbia Circuit

CITATION: 359 US 115 (1959)
ARGUED: Mar 05, 1959
DECIDED: Mar 23, 1959

Facts of the case

Question

Audio Transcription for Oral Argument – March 05, 1959 in Spevack v. Strauss

Earl Warren:

Number 339, Jerome S. Spevack, petitioner versus Lewis L. Strauss et al.

Mr. Houghton you may proceed.

Joseph Y. Houghton:

Mr. Chief Justice and members of the Court.

I would like at first to introduce Mr. Calvin Cobb who is a counsel for the American Chemical Society, amicus in this case.

Mr. Cobb is not asking to address the Court, but has offered to answer any questions that might come up about the amicus brief if Your Honors should have any.

William J. Brennan, Jr.:

(Inaudible)

Joseph Y. Houghton:

No, Your Honor.

The application stands allowed in the patent office and will issue when the final fee is paid.

(Inaudible)

Joseph Y. Houghton:

That time limit is, at the present time under the statute expires May 25th.

William O. Douglas:

Well now would you explain what expires on May 25th.

Joseph Y. Houghton:

The six months statutory period for payment of the final fee in the case.

Under the law the issuance of the patent can be deferred another three months after the payment of the final fee, but the patent must issue within three months after the payment of the final fee.

William O. Douglas:

So the last date is May 25th, that’s the latest it could issue?

Joseph Y. Houghton:

No that’s the last date for payment of the final fee.

There would be three months after that date, the last Tuesday, within the three months period, when we run — the patent would have to issue under the statute.

William J. Brennan, Jr.:

That would be August?

Joseph Y. Houghton:

That would be in August.

Charles E. Whittaker:

(Inaudible)

Joseph Y. Houghton:

That is patent would be allowed?

The first indication of that of course was the allowance of the claims.

Now the claims were allowed and at that time there were several other matters which had to be attended to.

There were requirements for correction of the drawings.

There were certain other procedural matters which had to be attended to and those matters were taken care of and finally a notice of allowance was issued in the case.

The first notice of allowance which was issued was defective.

We called that properly to the attention of the patent office, and in response to that in due course they issued the corrected notice of allowance under which the final fee is due as I have reported to Mr. Justice Douglas.

Earl Warren:

Does anything remain now except the payment of the fee as a requirement for the issuance of the patent?

Joseph Y. Houghton:

Not so far as the US Patent Office is concerned, Your Honor.

We have a peculiar situation which is that one foreign country in which we have filed has issued a secrecy order.

We are strenuously endeavoring to have this secrecy order rescinded and that there is a problem as to whether the payment of the fee in the US case by the inventor which under the law would require that the patent issue within three months, whether that could be a violation of this secrecy order in the other country.

Joseph Y. Houghton:

Now I should mention that the statute also does provide that if the final fee is not paid within the six months period, which expires May 25th, then the Commissioner of Patents in his discretion on a showing of good reason why, may accept it anytime within the next year after the expiration of that period.

We know of no precedent as to whether the existence of a secrecy order aboard would be recognized as a good reason under this Act.

However, we have asked the Commissioner of Patents to, if possible, give us some sort of a ruling on that with the understanding of course that he certainly would not take any longer to May 29th then we absolutely had to, if the secrecy order could not be disposed off before that time.

Tom C. Clark:

(Inaudible)

Joseph Y. Houghton:

Well we certainly hope to have this case decided before we pay the final fee.

Also the applicant has a right to file a divisional application before the issuance of this presently allowed application on certain subject matter of claims that were not — that are not in the allowed claims here.

Felix Frankfurter:

(Inaudible) what’s the relation between getting this case decided and getting your patent?

Are you really (Inaudible) decision of this case (Inaudible)

Joseph Y. Houghton:

Well number one the District Court here issued certain or made certain findings which we consider very damaging to the interests of the inventor, particularly with respect to his foreign rights in certain countries.

We feel it’s our duty to try to get this ruling which we consider improper by the District Court reversed.

We further feel that as a matter of public interest and as a matter of not letting down the party’s amici curiae, we certainly should make every effort to have what we consider an unconstitutional interpretation of this statute reversed.

Felix Frankfurter:

And I still don’t see, what — how the findings of the District Court, whatever they were, can effect the validity or scope of a patent which we have?

Joseph Y. Houghton:

It will not affect the US patent, that is correct Your Honor.

What we are worried about there is that we have applied for patents in certain foreign countries.

Now in some of those foreign countries the issuance, I mean, the occurrence of a publication anywhere in the world before you file your application would constitute a bar to obtain you a valid patent.

In others of the foreign countries the issuance of patent would only be a bar, I mean, the issuance of a publication, would only be a bar to the grant of a valid patent if the publication occurred in the country concerned.

Now the —

William O. Douglas:

Those are risks that a person applying for the patent case?

Joseph Y. Houghton:

Those are the risks that a person applying for a patent who has not been impeded by government edict, ordinarily does take in this instance, and of course the international convention usually provides and most people operate under it, that you will have the same priority right in the foreign country as you would in the home country if you filed in the foreign country within a year.

Felix Frankfurter:

If you got your patent this afternoon, what effect would that have on this litigation?

Joseph Y. Houghton:

I would say that if the patent issued this afternoon, that would be a publication by the petitioner, as such it would substitute the protection of the patent grant for the protection of the trade secret, at least so far as what’s in the patent grant is concerned.

Felix Frankfurter:

But that would — would the litigation survive?

Joseph Y. Houghton:

I could visualize that there would be a very strong representation by the opposing counsel that it had become moot.

Felix Frankfurter:

So does your reporting, getting a patent is what you want, in order to get some rulings on things, it otherwise wouldn’t be before the Court, is that right?

Joseph Y. Houghton:

That is one of the purposes we feel that we need to attempt to get this and here is what is consider unconscionable decisions below reversed.

Also of course as I have mentioned there is this pending secrecy order and we have not yet been able to obtain assurance that the petitioner would not make himself liable to civil and criminal penalties in the country concerned if you want to have him pay the final fee in the United States and cause this patent to be published.

It’s very — the law in the country concerned is quite similar to the US secrecy law in that respect.

Charles E. Whittaker:

Mr. Houghton (Inaudible) may I ask you (Inaudible)

Joseph Y. Houghton:

Yes.

Charles E. Whittaker:

Therefore, it has to be (Inaudible)

Joseph Y. Houghton:

As I thought — as I was trying to make clear Your Honor, the claims of the application were initially allowed before the formal notice of allowance was issued in the application.

This formal notice of allowance is a printed paper which calls for the payment of the final fee within the six months period provided, and says that on the payment of the fee the patent will issue approximately six weeks to two months thereafter.

Now, the claims had been allowed by the examiner, but in the action which allowed them, if you called attention to the fact that there were requirements for correction of the drawings which had been made early in the prosecution of the case, that had been differed until claims should be allowed and also that there were other requirements for illustration of certain subject matter which had been described, but had not been illustrated in the drawings.

Now those were formal matters, the claims were allowed but these formal matters had to be corrected before the examiner would issue the formal notice of allowance which calls for the payment of the final fee.

Have I now made that clear?

(Inaudible)

Joseph Y. Houghton:

Yes Justice Harlan —

(Inaudible)

Joseph Y. Houghton:

We would of course feel much happier about the matter if the Court here decided that it was wrong.

[Attempt to Laughter]

Earl Warren:

You may proceed now.

Joseph Y. Houghton:

Of course I think it seems quite evident that the Court fully understands that this is a suit to restraint the respondents from exceeding their statutory authority by publishing the petitioner’s trade secret without his consent.

Felix Frankfurter:

(Inaudible)

Joseph Y. Houghton:

I would say as to everything disclosed in the patent, it would be a publication.

Felix Frankfurter:

(Inaudible) injunction, a prior determination if you were (Inaudible) patent, is that it?

Joseph Y. Houghton:

That is correct Your Honors.

Now we feel that the issues which are presented, can be stated more — which are — I will tend to state more fully following the brief statement of the facts, because the primary issues comprised these, that’s whether the Atomic Energy Act authorizes the respondents to destroy the petitioner’s trade secret by publishing his invention which forms the subject matter of a pending patent application.

Now that is a matter of destroying the trade secret.

Second is whether if the Act is construed to so authorize, it should be held to that extent to be unconstitutional.

Now the facts briefly are as follows.

In 1942, the plaintiff made a basic or a prior invention and this dual temperature process which is covered by an issued patent and that earlier invention, the respondents have perfect liberty to publish and that’s not involved in this case at all.

It was after June 1946, while he was self employed that the petitioner made the invention, which is involved in the present controversy and in referring to it I will try to refer to it as the new invention so as to distinguish it from the earlier one.

This new invention, the petitioner offered to disclose to the Atomic Energy Commission in confidence in 1948 and the letter by which that offer was made is attached as appendix I to the brief — to the reply brief for the petitioner which was just filed yesterday.

This confidential disclosure was of course made I should say pursuant to this offer in 1948, the confidential disclosure was made in 1949 and of course the purpose of it was to enable the Atomic Energy Commission to determine whether it wished to use the process for the production of heavy water.

No rights in the invention being transferred as part of this submission.

The Atomic Energy Commission then did decide to use the new invention for the production of heavy water.

And from 1950 to 1953, the petitioner rendered services to the Atomic Energy Commission under special contracts which reserved his rights to the invention in controversy, and which provided that he would file a patent application for the invention, which he did.

Now that application was put under a secrecy order by the patent office at the instance of the Atomic Energy Commission.

And the Atomic Energy Commission also refused to allow the secrecy order to be modified, so that the inventor could file corresponding applications abroad.

That situation adhered until February 1, 1957.

Joseph Y. Houghton:

On February 1, 1957 the secrecy order was rescinded and at the same time the Atomic Energy Commission threatened to publish the subject matter.

We maintain that this subject matter is petitioner’s trade secret up until the time that patent issues.

The petitioner at once sought assurances that the publication would not be made, but he could not obtain such assurances.

He filed this suit to prevent the respondents from destroying his property by publishing his trade secret.

The District Court in proceedings on the motion for preliminary injunction overruled respondent’s contention that this was an unconsented suit against the government.

However, based on affidavits of certain alleged disseminations which are produced by the respondents, the District Court did deny the motion for preliminary injunction on the ground of mootness.

On appeal, the Court of Appeals did not reach the point of mootness.

It ruled that the Atomic Energy Act authorized the respondents to make this publication and that therefore the contract did not — and it also mentioned that the complaint had not set out in its opinion the statutory limitations which denied such authority and on that basis it ordered the case to be dismissed for lack of jurisdiction.

The petitioner moved to amend the complaint to specify statutory limitations and also to specify the presence of a constitutional issue.

Now this motion was denied and we came up for the first time to this Court.

In the per curiam in December 1957 this Court granted certiorari, vacated the judgment and orders below and remanded the case with instructions to enter the amendments and decide the issues raised by the petitioners appeal.

On remand, the Court of Appeals again held that the Atomic Energy Act authorized the publication and further held that the Constitution didn’t forbid this, and then directed that the amended complaint be dismissed for failure to state a cause of action on which relief could be granted.

Now we maintain that the instant certiorari was granted to review these rulings and also the ruling of the District Court which was not reached by the Court below.

The petitioner’s first contention, which I will discuss after I mention the others, is that the respondents do not have the statutory authority to publish the plaintiff’s trade secret without his consent.

There are three points on that which I will not enumerate until I get to that part of the discussion.

Our second contention, which Mr. Edwards will discuss, is that the District Court ruling of mootness was improper and was not established by the evidence.

These above issues of course are raised by the questions presented in the petition as granted and hence are in our opinion properly before the Court.

It appears to us from the respondents’ brief that the respondents have abandoned the position that they have statutory authority to publish this subject matter with or without the petitioner’s consent, which they urged always previously heretofore and now are attempting to rely or attempting to raise a new issue on the proposition that somehow they are trying to find an implied consent to this publication.

Of course they have tried to rely on an implied contract, of course there was an implied contract, that they could use this matter, subject to compensation as far as the use was concerned, but that’s a different thing from destroying the trade secret which is the subject of the contract up to the time when a patent they issue.

Felix Frankfurter:

Since you say there was an implied contract, I take it it’s not on paper.

Is there a written agreement between the inventor and (Inaudible)?

Joseph Y. Houghton:

There is, I possibly shouldn’t have used the word implied contract Your Honor, there is a contract, some of the provisions of which are express and from which other provisions might be implied.

Felix Frankfurter:

I take it that that’s in the record.

Joseph Y. Houghton:

Yes and that’s a part of the case which we maintain is a — the contracts were not in the record, no Your Honor.

These contracts some of them have been lodged with the clerk by the respondents since —

Felix Frankfurter:

How can we tell whether there was an implication authorizing the commission to make public the utilization is made, I don’t know, how do we know what was authorized to be made public if any, unless we have the contract, how can I tell?

Joseph Y. Houghton:

The situation as we see it is this.

First, we believe that under the rules of this Court, this whole new contention, this whole new issue that the respondents are attempting to raise is not properly here.

Now Mr. Edwards is prepared to go into that at considerable length and I think that if it’s agreeable with Your Honor maybe he could answer that question better than I can.

(Inaudible) an interpretation of the relationship, which was never tried out below, no findings of fact, and we’re being asked to pass on it (Inaudible) —

Joseph Y. Houghton:

That is correct sir.

— and almost is an original suit, isn’t that it?

Joseph Y. Houghton:

That’s correct Your Honor.

Felix Frankfurter:

You say that question isn’t here or isn’t in the case, which?

Joseph Y. Houghton:

We say the question is not in the case.

I presume that under the rules that this Court considered that it was a matter of plain error.

The Court could pay attention to it.

We do not feel that this sort of thing, producing new documents or documents which could have been produced below and never were produced for the edification of the trial judge, we think that this wholly improper and contrary to the rules and that it should be fully — completely disregarded.

Felix Frankfurter:

But if your enjoining — seeking to enjoin the commission from making public certain information arising out of the relationship between an employee or an expert of the commission in regard to the improvement of patent above, improvements suggested by (Inaudible) and the employer of the commission, I don’t see why the burden is on the government to show that, that relationship did not imply, did not imply the exercise of government powers by the AEC to make public whenever it (Inaudible), what it has done.

Joseph Y. Houghton:

I believe —

Felix Frankfurter:

It’s not the government to disprove that they can make public that as part of a thing that they make public working with the commission.

Joseph Y. Houghton:

Well, the situation seems to me, I don’t want to infringe on what Mr. Edwards is prepared to discuss in more detail from a legalistic standpoint, but the situation seems to me to be this.

There are three ways in which the government or government official can get information in confidence.

One way is from the inspection of a patent application under the Secrecy Act.

When that’s done, the respondents now come along here and they say we don’t claim now and they pretend that they never claimed before, that they would have any right to publish it if they got it that way.

Another way is if the Act, the Atomic Energy Act or other appropriate act called for a report to be made of the invention.

The respondents in their brief now come along and they say, we don’t say that we have any right to publish under those circumstances, yes we would get it under confidence then and then they pretend that they never heard to the contrary below, well we contend that they did urge to the contrary below and even up before this Court, that is pretty fully set forth in our reply brief.

Now the third way they can get the subject matter and it will be noted that also in connection with getting it from inspection of a patent application, but that law sort of — that secrecy law rather adds to the old patent infringement so called jurisdiction or patent eminent may license jurisdiction of the Court of Claims, which adhered only when one the subject matter was used by or for the government after the patent issued.

Now under the Secrecy Act it carries the time when the government may look upon the — and then it may look to the government for compensation for use, back to the time when the government got access to this application and got it that way as a trade secret.

And I believe there are cases, one of them is the Smith case cited in our reply brief, which have held that a patent — that an invention remains a trade secret throughout the pendency of the application for patent on it.

Now the third way that it can be gotten is for the inventor who or owner of the trade secret to disclose it under some sort of a contract to the recipient of the disclosure.

In this case the disclosure was to be made for the purpose of enabling the trade secret to be used by the Atomic Energy Commission for the prevention of heavy water.

And certainly didn’t contemplate destruction of the trade secret, because if you destroy — it wouldn’t be any point to making a contract with respect to subject matter which was convey immediately the right to destroy the subject matter under which the contract was made.

Recall that until a pattern issues to take the place of your trade secret the only rights that an inventor has are his rights of secrecy, in this country.

And it seems to us that whether those — whether the right to use this as obtained under the Patent Act Secrecy Provisions, or whether it’s obtained under a reporting provision of the Atomic Energy Act, or whether its obtained through a patriotic presentation of the subject matter with a reservation of full patent or full rights in the subject matter by a citizen is completely immaterial so far as any right to publish and destroy the race of the contract is concerned, do I make that point clear?

Felix Frankfurter:

You prefer to have your self intuition with this?

Joseph Y. Houghton:

Now I would prefer to have and go forward beyond that with the authorities and so forth.

Felix Frankfurter:

You offered him on dependency during this (Inaudible), but I do know really of having read opinions over the years, that the relationship between an employee of the government maybe contributed to the government while an attempt for his employment.

Those relationships now of course are subtle and difficult legal questions, what rights he has if any et cetera, et cetera.

There’s a good deal of litigation over the years in this Court and what you’re asking is an injunction, an injunction on the assumption that the contract in this case barred the Atomic Energy Commission, which has usually not been accused of accepting dissemination of his (Inaudible), barring it from making public within its power, everything pertaining to it, to conduct it’s affairs, which the public interest authorizes, by the public interest, I mean the national interest.

Joseph Y. Houghton:

Well now —

Felix Frankfurter:

And I should think the burden is on you and not on them.

Joseph Y. Houghton:

Well now in the first place these contracts never called this inventor an employee.

This inventor —

Felix Frankfurter:

(Inaudible)

Joseph Y. Houghton:

This inventor in the early contracts was an independent contractor and was so identified and his things he was supposed to do were very carefully identified and the early contracts and particularly the res gestae surrounding them showed that he had reserved all of his rights in his invention.

Now the right to preserve his foreign rights by not having a premature publication is one of those rights.

The right to preserve his freedom to negotiate for the use or for the commercial use of his trade secret is another one of the important and valuable assets that attach to making this intellectual property contribution.

So that was the first thing.

Now secondly the idea was that this would be used subject to a reservation of all his rights, and then this contract was entered into which called him a contractor not an employee, and similarly the later contracts after the government had decided that they did wish to use the subject matter of this application, this trade secret, in the production of heavy water, the later ones each carefully reserved all the rights, had the usual clause that if the inventor makes new inventions during the course of this contract as a part of his assigned duties, those along to the government, but that as to all of the earlier inventions which he has made any rights that he had with respect to them and that’s any rights with respect to them are reserved.

Felix Frankfurter:

Is the commission purporting or is not restrained from publishing specifically that which would be contained in the specifications of the patent or are they publishing things which impliedly would make public in that they don’t want to publish Mr. Spevack’s potential patent?

Joseph Y. Houghton:

They wish to publish certain manuals as to the system used in the class.

Now this system embodies the invention of the present, that’s now in controversy here.

This original — the original, what I call the earlier invention, wasn’t economically too attractive.

It was operable.

It showed how to apply principals in a different way to obtain a different result, but it wasn’t economically very attractive and it was not enough, not attractive enough to awake any very great interest by the Atomic Energy Commission, although it was assigned to the Office Scientific Research and Development.

Now, after 1946, when Mr. Spevack was no longer employed by the government, he got thinking about this problem and he had, had some faith in this thing and he made — he finally figured out how to make this thing really economically attractive.

And at that time he came back to the AEC as shown by the letter printed in our — at the end of our reply brief, he came back to the Atomic Energy Commission and he says look, this thing is going to be much better than any of the other ways you have available to make heavy water.

Now I would like to be compensated some for my time in preparing full analysis of this thing for you, but it seems to — but I will do it, I’ll do it on my time if you don’t feel like compensating me for my time, but it’s understood that nothing is — nothing that I disclose to you, I’m not giving up any rights, you know.

And on the basis of that sort of arrangement, he did demonstrate to the government that this system, this new system, did make this economically very much superior to any other way of doing the job, and on the basis of that it was adopted for the government plans.

And as long as the trade secret is maintained, as long as it was used in confidence in those plans we have no objection because we have reserved rights to compensation for that.

Felix Frankfurter:

Would we have decide in this case to what extent these reservations that speak you of, cut across the such responsibility, that the Atomic Energy Commission has, vis-à-vis the other countries, for instance namely the Vienna organization, the atomic — for treaty which is printed in (Inaudible)

Joseph Y. Houghton:

The Euratom?

Felix Frankfurter:

Euratom.

Joseph Y. Houghton:

It is that the Euratom treaty?

Felix Frankfurter:

Now do we have to decide that whether the reservations of a single inventor (Inaudible) whose product the government wants to use and agrees to pay for, cuts across international responsibility?

Joseph Y. Houghton:

Well the — I don’t think so, Your Honor because the —

Felix Frankfurter:

They do have some responsibility under Euratom, don’t they?

Joseph Y. Houghton:

Well our treaties, as I pointed out in our main brief I believe it is, our treaties with these various other countries, most of which in this particular field were negotiated by the Atomic Energy Commission, specifically say that it is not required that anything be disclosed to the other country which the government has no right to disclose because it is privately owned.

Felix Frankfurter:

So we have gone back on what is and what is not right?

Felix Frankfurter:

What is the nature of a withheld private interest, that’s where it is?

Joseph Y. Houghton:

Well that’s the substantially, yes Your Honor.

Now I think the Court has seemed to be so very familiar with the whole circumstances here and the question seemed to be going more toward this or seem to have gone toward this point of new issue and I believe in order to allow time for my other counsel here to treat that I should close at this point.

Hugo L. Black:

The point that the Court of Appeals discussed as denying the injunction, because they (Inaudible) remedy of this man’s property (Inaudible).

Joseph Y. Houghton:

The question of this adequate remedy at law as I see it comes down to two things.

If you have a contract and there is a breach of that contract or if you have a contract and there is a provision for a promise to pay in that contract, on the part of the government agent who is authorized by the statute to do the act in question, then or if he is authorized by an eminent domain statute, then you of course have a cause of action in the Court of Claims as long as the act done does not sound in tort.

Now if the act done is not authorized by statute or an eminent, that is an eminent to main statute or by a contract consent then of course it would sound in tort, and it wouldn’t be actionable.

Now it comes of the other fact that we have the Tort Claims Act in which for certain times in torts the government says yes it will be liable and consent to be sued, but that isn’t this sort of a situation.

Now also here we have the further fact that an invention like a copyright, like a writing, this is an intellectual property, you have rights as long as you keep it secret to get patents, in various places for it.

It’s unique, once it’s disclosed the trade secret is gone.

Once it’s disclosed your right to get patents in certain countries is gone, once it’s disclosed in certain countries your right — certain other countries your right to get patents there is gone.

So this is a very unique thing, this trade secret and none of the cases which have been cited, we haven’t found a single case where there has ever been a ruling that the — that there is any statutory — any eminent domain — contemplation of any eminent domain taking for example of the right to destroy the very thing taken, the trade secret.

Felix Frankfurter:

And if yet if you got the patent you would destroy (Inaudible)

Joseph Y. Houghton:

But that’s the prerogative of the inventor.

He at that time has negotiated you might say with the patent office on behalf of the government, on this basis that if you will give up your trade secret by issuing your patent, we will then give you 17 years exclusive monopoly in exchange for it.

Felix Frankfurter:

Well you can get that anyhow, just have to do it for 17 years.

Your trouble is with foreign countries about your rights —

Joseph Y. Houghton:

Also in foreign (Inaudible)

Felix Frankfurter:

(Inaudible)

Joseph Y. Houghton:

That is correct.

Felix Frankfurter:

Now how will that be protected if you get the patent on your own in August?

Joseph Y. Houghton:

It will no longer be protected as far as foreign countries are concerned after that.

Felix Frankfurter:

If that’s the basis of your suit?

Joseph Y. Houghton:

That’s not the whole basis Your Honor, because —

Felix Frankfurter:

I thought the gravmen of your agreements was that this will adversely affect (Inaudible) foreign patents, so this would involvement a publication and therefore run the (Inaudible) of foreign patents.

Joseph Y. Houghton:

That is one of the results.

The other result would be this, that as long as the US application remains pending, as long as we haven’t published this subject matter, the inventor has trade secret property which he can sell to somebody, which he can negotiate for the promotion of.

Now as soon as he issues —

Felix Frankfurter:

If the government takes that away from you or destroys —

Joseph Y. Houghton:

If the government —

Felix Frankfurter:

Assuming you have it, you can get compensation for that destruction in this country, can’t you?

You believe that you have something, which the permission for publication destroys, would violate the agreement (Inaudible) cause of action in the courts of law, either under the federal tort action, yes under the Federal Tort Act of the Court of Claims.

Joseph Y. Houghton:

Well now the agreements between the parties never said anything about foreign rights whatsoever.

The agreements merely said that Mr. Spevack reserved all of his rights which were the right of secrecy until his patent should issue at his own volition.

He pays the final fee which causes it to issue it, as I think was brought out earlier in the argument.

Felix Frankfurter:

Well I think (Inaudible) if you want to enjoin them, because it will do damage to him abroad.

Joseph Y. Houghton:

Well it will do damage abroad, but it will also do damage with respect to Mr. Spevack’s ability to negotiate for the promotion of his trade secret and the trade secret remember maybe broader.

The trade secret maybe broader, the things that people would like to learn about this, maybe broader than what is determined or covered by the claims of the first issued patent.

Hugo L. Black:

Haven’t many cases decided a right to negotiate, a property right which could be protected can’t be taken away, can give rise to cause of action?

Joseph Y. Houghton:

I believe that’s a correct proposition Your Honor which would be the necessary or ancillary result to this matter that we have here in the controversy.

Hugo L. Black:

Why (Inaudible)

Joseph Y. Houghton:

Well that is —

Hugo L. Black:

Need not be liable under the law?

Joseph Y. Houghton:

Now we consider that, that does comes, that is one of the unique rights which once lost can never be recovered and that’s why we have taken the position that the right to damages for alleged breach of contract or something is adequate.

There is not an adequate remedy of law for the loss of a unique right.

Hugo L. Black:

So that’s the basis of it.

Joseph Y. Houghton:

Yes Your Honor.

Hugo L. Black:

You couldn’t get then —

Joseph Y. Houghton:

That is correct Your Honor.

Well I thank you very kindly and will allow Mr. Edwards to go.

Earl Warren:

Mr. Edwards.

Carleton U. Edwards II:

If it please the Court, I would just propose to discuss the question of the new issue which the respondents have sought to raise in this case.

They have always previously relied on statutory authority to do the act which we seek to enjoin.

I can cite instances in their previous briefs on many occasions.

As Mr. Houghton has indicated they have now abandoned this and they now seek to find a consent which they content they obtained from the petitioner by way of some agreements which are not even before this Court.

They were forwarded to the clerk by counsel with the suggestion that they were available to the Court, if the Court desired to consider them.

William O. Douglas:

(Inaudible)

Carleton U. Edwards II:

The contracts Your Honor, prefer not to call them employment, they were strictly a contractor basis and a consultant basis.

They are in the possession of the clerk.

We contend first of all that those contracts in this issue are not even before this Court.

Carleton U. Edwards II:

Secondly, that even if they are before this Court, they do not convey the rights which the respondents content they convey.

The initial contracts, the first three or four merely said that in substance that the petitioner was going to tell them what this process was.

Then as Mr. Houghton has indicated, after they had revealed the process to them and they had decided to use it, he was hired to advise them on how it could be handled.

In those contracts, there is a specific reservation in each of the four, either right in there or by reference, there is a reservation of the right, all rights that he has under the Atomic Energy Act or otherwise.

Now as regards whether this issue which they now seek to raise, in other words if they have the consent to make this publication, is before this Court.

I direct the Court’s attention to Rules 41 d2 and 40.3.

Those rules specify what issues are before this Court.

This case has been in litigation for sometime now and this on the petitioner’s brief filed about a month ago was the very first time they ever raised this issue of consent.

It maybe that under 18 of the US Code it is a crime for a government officer to reveal a secret process revealed to him in confidence and now they have to find some other means as they have apparently conceded that they do not have the statutory authority.

Felix Frankfurter:

Well why do you and your associates say they have abandoned everything except this new trial?

(Inaudible)

Carleton U. Edwards II:

Well —

Felix Frankfurter:

I’ve just looked at (Inaudible), don’t they?

Carleton U. Edwards II:

Well, I think it all comes down to this.

It all comes down to one thing, did they have the authority to do, to publish this information or didn’t they?

If they didn’t have the authority, then they are acting beyond the scope of their authority and they are seeking to destroy a unique property right and therefore, I mean the destruction of this right, the damages would be incalculable and it is — if they have the authority then there is nothing we can about do it and we wouldn’t try it.

If they don’t have the authority then there is no adequate remedy of law.

It’s just as if I would —

Felix Frankfurter:

I can understand your disagreeing with the government, namely that there is an adequate, that damages are incalculable, therefore (Inaudible)

Carleton U. Edwards II:

Well that’s true to that extent Your Honor.

However, the principle issue in the case to date and throughout I think it’s conceded that was the question of whether they had the authority and they have always contended they had statutory authority.

Now they have shifted and say they have authority by consent of the petitioner.

In addition —

Hugo L. Black:

You mean they are denying now that they have governmental authority to do this (Inaudible)

Carleton U. Edwards II:

Well, they just aren’t arguing that they do have the statutory authority.

They claim that they never have asserted that they had the authority to publish under the circumstances.

Hugo L. Black:

Now suppose they agree that they are acting under governmental authority and not going beyond (Inaudible) by the government as they should act as government, what is your position with reference to the Court of Appeals’ judgment passed?

You have (Inaudible) remedy at law (Inaudible)

Carleton U. Edwards II:

Well, I’m afraid I don’t quite understand the question Your Honor.

Hugo L. Black:

Now the Courts of Appeals has held that yes they destroyed the value of the property (Inaudible)

Carleton U. Edwards II:

Well, I say that the Court of Appeals is wrong that they didn’t have the authority and that’s what I say.

Hugo L. Black:

Suppose they do have the authority and suppose it’s held that they do have the authority what (Inaudible)

Carleton U. Edwards II:

Well, then I say we can’t determine where our damages are — it may — what they have done may have destroyed Mr Spevack’s right to obtain patents in many places where he has applied for them, which maybe in calculable as to what the damage would be.

I don’t know if I answered the question —

Hugo L. Black:

Well I understand that argument, but I do not understand that the government – if you say the government is now denying the (Inaudible) I can understand.

That is reasonable to say that you could compensation?

Carleton U. Edwards II:

Well, Your Honor I don’t actually say they are denying it, I just say they have abandoned their old view that they had the statutory authority to do what they are trying to do and now they are shifting over to something else which is brand new and —

Hugo L. Black:

(Inaudible)

Carleton U. Edwards II:

Just this one case sir.

As I’ve indicated in the rules, I think this action is prohibited by the rules and also in the case of Wiener against United States decided last June 30th, the facts briefly were President Truman had point the plaintiff as a — to the War Claims Commission, after President Eisenhower came to office, he asked the man to resign, he didn’t do so and he was discharged.

The man then filed a suit in the Court of Claims for his compensation that he lost.

The Court of Claims dismissed the case and this Court granted certiorari and the issue raised in the briefs in the petition for certiorari was whether or not the President in this discretion may remove a member of the War Claims Commission.

As they are after the respondents in their brief, as they have done in this case, sought to raise a brand new issue of — they raised the issue of defense of res judicata which had never previously been raised in a case and Mr. Justice Frankfurter in a footnote said that this contention was not properly before the Court, was not raised in the brief in opposition and it was not considered.

So in summarizing on this new issue and on these contracts we say the issue is not before the Court both under the rules of this Court and under the decisions of this Court, and that also the contracts which they have sought to present to this Court are not properly before the Court but that the —

Felix Frankfurter:

— before the district, where they in the proceedings below?

Carleton U. Edwards II:

No they weren’t Your Honor, no they weren’t, although there was every reason — in fact counsel statements on the motion for preliminary injunction revel that he knew of the contracts, in fact they were discussed, the very fact that throughout this litigation this issue was never previously raised, I believe there is telltale that there really is no basis for it.

This is a clever theory that has been developed after many, many months in these litigations.

I think that’s as much I will say on the question of your consent.

I will save that the remainder time for rebuttal.

Earl Warren:

Mr. Sands.

Leonard B. Sand:

Mr. Chief Justice may it please the Court.

The government has learned for the first time in the past hour when it is that the date — when it is that the petitioner must pay his patent fee.

The dates of allowance are confidential as between the patent office and the applicant.

And so we have not known the precise date until this time, although we did know that at the time the petition for certiorari was filed there was a statement that all the claims had been allowed.

It’s perfectly clear that once the patent is issued this case becomes moot.

The compliant sought an injunction only until such time as a patent would issue.

The petitioner is seeking injunctive relief.

He must therefore show that he has a need for that extraordinary remedy.

Yet far from showing such need, he has — it has been stated to this Court that the patent fee is not being paid for the very purpose of preserving this litigation.

Felix Frankfurter:

Has he that choice?

Leonard B. Sand:

I think not Mr. Justice Frankfurter because he is seeking to enjoin the Atomic Energy Commission from fulfilling its statutory obligations to disseminate to the free world and to the scientific community the technology with respect to atomic —

Felix Frankfurter:

You’ve introduced — you’ve introduced a statement which takes care of most of the case.

Leonard B. Sand:

I think that’s correct, I think that’s correct.

Felix Frankfurter:

(Inaudible)

Leonard B. Sand:

Well I think that it’s true, that under the Atomic Energy Act there is an obligation imposed upon the commission to declassify data, to disseminate it to the world.

I think that it is clear, it has in fact happened as a result of temporary restraining orders issued in this case that the United States has not been able to participate fully with other countries, pursuant to President Eisenhower’s Atoms for Peace program, pursuant to the OEC program, because of the restraint which has been imposed as a result of this litigation.

Felix Frankfurter:

What about the qualification (Inaudible)

Leonard B. Sand:

This —

Felix Frankfurter:

Some provision (Inaudible)

Leonard B. Sand:

I know of no such provision, no such provision in the statute.

As a matter of fact there is a specific provision in the statute with respect —

Felix Frankfurter:

You mean to say after we (Inaudible) that the Atomic Energy Commission would have make everything public that is known.

Leonard B. Sand:

Oh no, there are provisions in our treaties with foreign countries which — in which we reserve the right not to divulge certain information, but —

Felix Frankfurter:

For that — suggest that under those reservations, they withholding that you are under obligation by our law not make public, anything in that?

Leonard B. Sand:

Well I think not, because our contention is that, that as between Mr. Spevack and the Atomic Energy Commission, there is no such obligation.

Felix Frankfurter:

Because of the arrangement you mean you do?

Leonard B. Sand:

Because of the arrangement between us, because we learned of his secret not by virtue of any patent application, not by virtue of any statutory reporting provisions, we learned of his invention because we paid him to tell it to us.

And we paid him to tell it to us for the very purpose of incorporating his improvement along with the basic commission owned process in government plans which cost over $100 million to build.

William J. Brennan, Jr.:

Well now you say that, have there been any findings in this effect (Inaudible)

Leonard B. Sand:

The findings, well the findings of the District Court —

William J. Brennan, Jr.:

Do we have those?

Leonard B. Sand:

Pardon, they appear on page 18 of the joint appendix.

It’s which is — can I help you?

(Inaudible)

Leonard B. Sand:

It’s part of the record I’m told by counsel for the petitioner that it is impounded, it contains no statement that is not in our brief which is not impounded and so I see no reason why I can’t read it to the Court.

Three, is material covered in the patent application, was reported to the Atomic Energy Commission by the plaintiff in a report dated October 25, 1949 and the contract between plaintiffs and the defendant.

So there is a finding by the District Court that we learned of his process, of the in-truth process by virtue of a contract —

William J. Brennan, Jr.:

What all that means, under contract, is that all it says, is that there is?

Leonard B. Sand:

Well that’s all that appears in the formal findings with respect to that.

William J. Brennan, Jr.:

I thought made (Inaudible) statements than that.

Leonard B. Sand:

Well I — one need only look to the compliant and in the complaint itself petitioner concedes that he disclose the improvement to the Atomic Energy Commission pursuant to these contracts.

I think that’s undisputed.

Hugo L. Black:

(Inaudible)

Leonard B. Sand:

No.

In the complaint he alleges that he reserved rights and that is all.

It is merely that conclusory allegation that he reserved rights.

Hugo L. Black:

I understood you to say that (Inaudible) the government had a right (Inaudible)

Leonard B. Sand:

What appears in the record is as follows.

William J. Brennan, Jr.:

Well where is the finding to that affect?

Leonard B. Sand:

The finding — well, I think there is no finding more specific than the one to which I have called the attention of the Court and that is that there was a disclosure pursuant to the contract of the —

Felix Frankfurter:

But is it true that the contract itself was not before the District Court?

Leonard B. Sand:

The contract itself was not before the District Court.

In the preliminary hearing the contents of the contracts were summarized to the Court.

The Court was told about them.

It’s been no surprise in this litigation that these contracts exist.

The precise terms of the contract, the precise contracts themselves were not made part of the record.

William J. Brennan, Jr.:

Well, you answer (Inaudible)

Leonard B. Sand:

No Mr. Justice Brennan.

The government’s argument that it has been authorized to make this publication, that petitioner has not reserved to himself the right to control the dissemination of this information, we base on matters which appear in the formal record, the record which is before this Court and is before the lower courts and our brief is predicated solely upon material which appears in the formal record.

Felix Frankfurter:

Could he have reserved the right that you should not make it public, assuming there was no statutory duty to make public, could he have reserved that right?

Could he have?

Leonard B. Sand:

He could have.

Felix Frankfurter:

Now how can I tell whether he did or didn’t without seeing the contract?

Leonard B. Sand:

The burden is on him, Mr. Justice Frankfurter.

He is seeking the extraordinary remedy of injunctive relief which has these serious public consequences.

He concedes in his complaint and elsewhere, that he disclosed this improvement to the United States under contract.

It is undisputed that the United States with his participation as a consultant, embodied this improvement in the government plants, which the government itself constructed as I say of course with several hundred million dollars.

He is (Inaudible), I have reserved the power to say to the Atomic Energy Commission that it cannot tell our allies how heavy water is made in these commission owned plants, because I have reserved that power, it’s true I told you about this improvement.

I assisted you and participated with you in the commingling of this improvement with the basic commission owned process, but I reserve the power to control the dissemination of information with respect thereto and we say, if I may Mr. Justice Frankfurter, we say that the burden is on him as the party seeking to invoke the equity powers of the Court and an injunction to show where he has reserved that power and that the mere conclusory allegation, I reserved my rights, which is a matter of patent law as construed to mean reserved rights to monetary compensation and no more, is not sufficient.

Hugo L. Black:

Did the government deny that (Inaudible)

Leonard B. Sand:

We concede Mr. Justice Black in this Court as we have in the Court below, that petitioner has reserved to himself and that we will be obligated to him for just compensation, if in fact he has a patentable improvement which we have used, we concede that.

We conceded that below and we say when he said in his complaint and when he said in his contracts I reserved my rights, what he is talking about is his right to compensation and if it is something more, if it’s this extraordinary power to say to the Atomic Energy Commission, you can’t even let anybody into this plant, certainly so extraordinary a reservation of power which flies so much in the face of the statutory obligations imposed upon the Atomic Energy Commission to disseminate technology, it must be spelled out, there must be something more than I reserved my rights.

Felix Frankfurter:

(Inaudible) whether government can describe what you call its plant, can it describe its plant, and at the same time not be authorized or not describe what’s going on inside this plant, if it’s making a (Inaudible), water, heavy water (Inaudible), is that part of what — is that part of the plant (Inaudible)

Leonard B. Sand:

Yes.

Felix Frankfurter:

Or is the plant, it could be a building in which things are done inside, which is it?

Leonard B. Sand:

Well, the plants, the building in which —

Felix Frankfurter:

(Inaudible)

Leonard B. Sand:

In the plant, heavy water is made.

It is made under a basic process which is owned by the commission.

It is made also — in the process there is utilized an improvement which is the subject matter of this dispute, we cannot tell OBC, although they’ve asked us, we cannot tell them how we make heavy water, as long as we are subject —

Felix Frankfurter:

(Inaudible) your choice because that involves what he feels, is that right?

Leonard B. Sand:

We cannot tell how we presently make heavy water without telling what —

Could I ask you a question?

As I understand (Inaudible) the while issue in this litigation (Inaudible) whether they are entitled to injunction which the (Inaudible), is that right?

Leonard B. Sand:

Between now and May 25, would now and the time the patent issues, I wish to direct myself that because —

Well, so long (Inaudible) now I would suppose that if you can show that the equities, granted everything that they say, you can show that the equities are against them because of whatever you want to argue that we can assume that everything (Inaudible) relief?

Leonard B. Sand:

I think that’s right.

Well now why don’t you direct yourself (Inaudible)

Leonard B. Sand:

Well I thought —

Because then we are dealing with things that we don’t have to speculate about whether (Inaudible)

Hugo L. Black:

(Inaudible) I would like to ask you one question (Inaudible) that if he has a patentable invention you take the position that the government (Inaudible) would be taking it (Inaudible)

Leonard B. Sand:

If he has a patentable improvement and he has not given us the right to disseminate –

Hugo L. Black:

(Inaudible)

Leonard B. Sand:

If he has preserved that right and we in fact, as we want to do, disseminate it, that this would give him a cause of action in a Court of Claims, either for breach of contract or for a taking or for a contract implied in fact.

Hugo L. Black:

(Inaudible)

Leonard B. Sand:

Yes we — another complete answer to this case —

Felix Frankfurter:

Except that he says – except that he says that his right not to have it published and his right to postpone getting a patent as long as possible, gives him opportunity to make arrangement regarding (Inaudible) abroad, which is not (Inaudible)

Leonard B. Sand:

Well, he has that statutory right, but he is a plaintiff in a court of equity asking for an injunction.

Felix Frankfurter:

(Inaudible)

Leonard B. Sand:

That brings me to what — but I agree —

I wish you would (Inaudible) particularly what has been done to the (Inaudible)

Leonard B. Sand:

I had intended to devout the major portion of my argument to just that point and because I think a chronology will indicate what in fact are the issues of this case?

As counsel for petitioner has stated, the basic process which he invented is owned by the commission, there is not question as to that.

In December 1956, the Atomic Energy Commission announced that it wanted to declassify information with respect to heavy water, so that all persons interested in this field knew from that time on, that the opportunity to apply for foreign patents would soon be on hand.

On February 1, 1957, the secrecy orders which theretofore had applied to these patent applications were rescinded and so petitioner has had over two years since February 1, 1957, to apply for his foreign patent rights.

Indeed shortly after the lifting of the secrecy order on March 30, 1957, counsel for petitioner wrote to the Atomic Energy Commission and asked that there be a delay in the dissemination, and that letter is attached to the complaint.

The basic complaint that was made, the basic plea that was made to the Atomic Energy Commission was, that had there never been any secrecy restrictions, petitioner would have had one year after he filed his domestic patent application, within which he could apply in foreign countries and be subject to certain priorities and protections under the International Convention.

We don’t hear, and this was the basic theory of the complaint, I’m entitled to one year after I file my patent application, under the treaties you have prevented me from availing myself that right.

William J. Brennan, Jr.:

(Inaudible)

Leonard B. Sand:

That patent application was filed on September 29, 1950.

On October 30, 1950 the secrecy order went into effect and the secrecy order precluded the filing of foreign patent applications.

February 1, 1957 the secrecy order was lifted, from that time on petitioner has been free to file in the foreign countries.

We hear no more or we hear little about the one year period under the convention now for simple reason that petitioner has had over two years, which I submit is also a fact of which in and of itself is dispositive of this case.

In this letter which is attached to complaint, counsel for petitioner stated to the Atomic Energy Commission that the patent would issue within the next few months.

This is in March 1957.

William J. Brennan, Jr.:

(Inaudible) longer mentioning the one year period?

Leonard B. Sand:

The whole theory as reflected in the complaint was this.

Had there been no secrecy order, and I file my domestic patent application, under the convention for the protection of industrial property which is in the appendix to the government’s brief, there is a period of one year in which he may file in foreign countries and not be subject to the objection of a prior publication.

William J. Brennan, Jr.:

Yes, now that one year period was —

Leonard B. Sand:

He lost.

William J. Brennan, Jr.:

— it was one year after 1950.

Leonard B. Sand:

Is one — that’s right, it would be one year that from September 29, 1950 when he filed his domestic patent.

William J. Brennan, Jr.:

But now he was — he could not do that because of the intervening secrecy order.

Leonard B. Sand:

That’s right.

William J. Brennan, Jr.:

Now when the secrecy order was lifted –

Leonard B. Sand:

He said –

William J. Brennan, Jr.:

— any longer, any significance to the one year?

Leonard B. Sand:

His plea for equity or his plea restraint on the part of the Atomic Energy Commission was, by your action in imposing the secrecy order, you have deprived me of the one year which I would have under —

William J. Brennan, Jr.:

So now you should keep this stuff to yourself until I can go ahead and —

Leonard B. Sand:

Well, in that letter he said, it’s only a matter of a few months.

Leonard B. Sand:

In June 1957 when petitioner was before the Court of Appeals, and the case was submitted to the Court of Appeals but there was some colloquy prior to that time, Judge Berger asked the counsel for petitioner how long do you want and counsel stated one year would be preferred or required.

William J. Brennan, Jr.:

Or required?

Leonard B. Sand:

Would be preferred or required.

This was what was said to the Court.

Well, it’s now March of 1959.

In response to this request for a delay, in which it was said that the patent would issue in a few months, the Atomic Energy Commission grant – they said that they would grant perhaps 30 days, they said, it appears at page 74 of the record that we assume that you will immediately take steps to obtain the foreign patents and that an additional delay of perhaps 30 days would be adequate to protect Mr. Spevack’s interest.

This was in response to the representation that was made in the letter to the Atomic Energy Commission, that it was just a matter of a few months before the patent would issue.

On April 10, 1957 the complaint for injunctive relief was filed and as I say the basic theory was that he had been deprived of the one year.

And in that compliant, petitioner alleges that since February 1, 1957, plaintiff has taken definite steps as rapidly as he is able to do so towards making applications for foreign patents, and the injunction that was sought was until such time as their patent would issue, which brings us to March of 1959 and before this Court.

The information has been declassified for a period of 27 months.

The one year period of the convention has long since expired.

Potter Stewart:

(Inaudible) did the one year begin again on the secrecy order that (Inaudible) was talking about?

Leonard B. Sand:

No.

Potter Stewart:

It did not?

Leonard B. Sand:

It did not and Congress when it passed the Invention Secrecy Act specifically recognized that as a result of the passage of that Act, inventors would be deprived of the benefits of the convention and other provisions were made in the statue to compensate persons for that loss, it does not happen to apply to — let me finish —

William J. Brennan, Jr.:

Let me see if I get this, and is it — are you telling us this that, his only complaint really was that he had been deprived of that year by reasons of the original secrecy order, within which to make his applications overseas.

And that all he wanted was a fair break in that all he need would be the year again after the secrecy order was lifted, and that in fact he had not merely that year after the secrecy order was lifted, but two years now, so he no longer has any complaint, is that what you are telling me?

Leonard B. Sand:

He does not have a claim for equitable relief.

Now —

William J. Brennan, Jr.:

On that theory of his that all he lost was a year’s opportunity and he wanted another year, is that it?

Leonard B. Sand:

That’s correct.

Now I don’t want to overstate.

He phrased his request, his prayer, that he be granted such time as he may file his patent applications in so many of the 104 patent issuing countries of the world as he deems it feasible.

And —

William J. Brennan, Jr.:

You said earlier that it was told at least to the Court of Appeals on one occasion, that the time required or necessary would be a year.

Leonard B. Sand:

He told that to the Court of Appeals in June of 1957, that is correct, and now he says that well my day for paying the fee is May 25, he does not say to this Court I am going to pay the fee on May 25.

William J. Brennan, Jr.:

Actually doesn’t he suggest that he may make an application to get a year’s extension (Inaudible)

Leonard B. Sand:

Well, there is a suggestion that he will not the pay fee on May 25th, that he will seek to engage in further (Inaudible).

Does the patent office have authority to issue the patents without paying the fees?

Leonard B. Sand:

No.

It does not?

Leonard B. Sand:

No.

I didn’t suppose it did.

William J. Brennan, Jr.:

And it does have a —

Leonard B. Sand:

No do we have authority to pay it before.

No I understand.

William J. Brennan, Jr.:

But it does have authority, is this correct, to extend the year?

Leonard B. Sand:

It does have authority to extent the year.

It has —

Hugo L. Black:

How much it would be?

Leonard B. Sand:

$30 and this appears on —

Hugo L. Black:

(Inaudible)

Leonard B. Sand:

And $ 1 for each claim in excess of 20.

The answer to your question Mr. Justice Brennan is under 35 USC 151, the fee is payable not later than six months after allowance.

William J. Brennan, Jr.:

Which would be May 25?

Leonard B. Sand:

Which would be May 25, now the Commissioner of Patents may accept for good cause shown a late filing up until one year after that.

William J. Brennan, Jr.:

Up to one year after that.

Leonard B. Sand:

After — up to one year late, which would be one year from the allowance, one year from the date of allowance.

William J. Brennan, Jr.:

Which would be May 25?

Leonard B. Sand:

The date of allowance is November 25.

William J. Brennan, Jr.:

Well which date is it now, I see your colleague (Inaudible)

Leonard B. Sand:

Mr. Anderson (Inaudible)

William J. Brennan, Jr.:

May 25, one year from May 25?

Hugo L. Black:

(Inaudible)

Leonard B. Sand:

No, of course, for six years.

Hugo L. Black:

But that’s been over two years.

Leonard B. Sand:

That’s been over two years since that’s been lifted.

Hugo L. Black:

(Inaudible)

Leonard B. Sand:

During that time to the extent that we have been using his patentable improvement, if it is such, we have been using it and we agree and concede without qualification that if he has a patentable improvement and we’ve been using it, he is entitled to just compensation.

Hugo L. Black:

But during that time could he have applied aboard?

Leonard B. Sand:

He had been able to apply abroad since February 1, 1957.

Hugo L. Black:

I know that, but could he have been — was he able to apply abroad during the time you had been (Inaudible)

Leonard B. Sand:

No.

Hugo L. Black:

But you did take it (Inaudible) right to negotiate, try to get it abroad, you took that from him during that time.

Leonard B. Sand:

I have to bring some additional facts into the case because the answer is no Mr. Justice Black, but not because of anything that the respondents have done.

Under the Invention Secrecy Act, which is in 35 U.S.C., an inventor is entitled to compensation, if he is precluded from filing foreign patent applications as a result of the secrecy order.

That cause of action accrues as of the time his patent is allowed, as of the time the patent office says to him you have an allowable patent.

Even though the secrecy order was imposed, the patent office continues to process the patent application.

Well now what happens in this case and this case is the sport in this respect, when petitioner filed his patent application in September 1950, the patent office denied it.

They did not allow it and in fact it was not allowed by the patent office until sometime subsequent to the lifting of the secrecy order.

And so we did not prevent him from — the secrecy order did not prevent him from getting his patent up until the time the patent office allowed it.

That’s something peculiar to this case.

It does not affect the general rights of inventors.

The fact is that Congress has recognized in the Secrecy Act that inventors may lose certain rights as a result of the imposition of a secrecy, of the secrecy order and Congress has provided a mechanism for providing just compensation.

Earl Warren:

Did the patent office deny his patent because it didn’t think he had anything patentable or denied because it had been put under the secrecy order by the —

Leonard B. Sand:

Oh well no, I don’t know the exact grounds.

Earl Warren:

Anything to do with it.

Leonard B. Sand:

The secrecy order had nothing to do with allowance, the patent office goes ahead and processes the patent application as if there had been no secrecy order.

The secrecy order is not —

Felix Frankfurter:

Disallowed on the merits?

Leonard B. Sand:

I beg your pardon?

Felix Frankfurter:

Disallowed on the merits?

Leonard B. Sand:

Oh disallowed under merits, there was an appeal, currently it has been allowed.

Earl Warren:

And then they finally allowed it.

Leonard B. Sand:

They finally allowed it.

Felix Frankfurter:

Mr. Sand I’d like to know whether the (Inaudible)

Leonard B. Sand:

A bill for the release of —

Felix Frankfurter:

Did he ever ask them to pay for the use of the patent not for any damages but (Inaudible)

Leonard B. Sand:

No.

I say then on behalf of respondents that petitioner is not entailed to injunctive relief because one, at this juncture he needs the — the injunction he seeks solely for the purposes of keeping alive this litigation.

But to go to the other side of it, how is the government going to be hurt?

Leonard B. Sand:

Well, the other side of it is that the restraint imposed upon the government has been very severe.

One example —

Felix Frankfurter:

Has been

Leonard B. Sand:

Has been and is.

Felix Frankfurter:

Yes.

Leonard B. Sand:

And is.

Felix Frankfurter:

(Inaudible)

Leonard B. Sand:

Well with respect to that Mr. Justice Frankfurter, respondents would have no objection to an order of this Court which read if I may somewhat as follows.

The judgments below are affirmed, unless by a certain date and I suggest April 1, petitioner pays his patent fee without requesting a suspension of the issuance of the patent, and if by April 1, petitioner does pay the patent fee, and does not request a suspension, the judgments below are vacated as moot.

Earl Warren:

Why do you the – why do you think that they (Inaudible)?

Leonard B. Sand:

Well there is — once the fee is paid there is a period of six to eight weeks before the patent issues.

April 1 is an arbitrary date Mr. Chief Justice.

If the order of this Court were to read that judgments below are affirmed unless by May 25, 1959; petitioner pays his patent fee.

Felix Frankfurter:

Has paid?

Leonard B. Sand:

Has paid his patent fee, without requesting suspension of the issuance of the patent and if by April 1, 1959 he has paid the fee has not requested a suspension, the judgments below are vacated as moot.

Felix Frankfurter:

That means you don’t care about but you do care about fourteen months.

That is a short of gist?

Leonard B. Sand:

Yes.

I —

William J. Brennan, Jr.:

What is the significance of without requesting a suspension?

Leonard B. Sand:

The significance of that is — I want to clear that there will be no more dilatory tactics.

There will be no resort to the law of India, if the Court please, but that this be over and done with.

In all respect to the amici in this case, there are no — the great test issues are not in fact presented by the facts in this case.

William J. Brennan, Jr.:

Well it’s language though (Inaudible)

Leonard B. Sand:

Well the vacation of the judgments below as moot will — as this Court did only recently in the Midwestern Gas case, it fits that case.

Earl Warren:

I want you to send us copies, present copies of that court order.

Leonard B. Sand:

I will be —

William O. Douglas:

Why do you suggest that (Inaudible)

Leonard B. Sand:

The judgment below denied injunctive relief.

Leonard B. Sand:

I think that if unless the petitioner pays his fee on the date set by this Court, he is not entitled to injunctive relief.

Therefore the judgment below would be affirmed.

The result of the Court below which was to dismiss the complaints for injunctive relief would be affirmed.

Felix Frankfurter:

In other words, your real proposal, your real suggestion to the Court is a contingent moot order, which it is within its own power to get what you want wants or not get or if he doesn’t get it, he is entitled to get his injunction.

William O. Douglas:

That’s what this (Inaudible)

Leonard B. Sand:

I think not, I think sitting as a court of equity, the Court would be in effect continuing the temporary stay order which now exists, subject to these conditions.

Perhaps this should read the temporary restraining order is continued until such and such a date.

William O. Douglas:

(Inaudible) when you say its affirmed, because that expresses the view from the merits of this —

Leonard B. Sand:

Well that, I think Mr. Justice Douglas is a point that could be disposed of in the wording of the order because the thought that I mean to express is that the result which is the denial of injunctive relief.

Felix Frankfurter:

We could (Inaudible)

Tom C. Clark:

(Inaudible)

Leonard B. Sand:

How long it would take to disseminate, well I think there are some steps that would be taken immediately.

This would stop when the temporary restraining order was imposed, and as soon as the judgments below were affirmed and the temporary restraining order vacated, which I hope it would — this Court would do in the same order and on the same time, the dissemination would proceed with this batch.

Tom C. Clark:

(Inaudible)

Leonard B. Sand:

Well —

Tom C. Clark:

(Inaudible)

Leonard B. Sand:

Your point, I think the point is Mr. Justice Clark is that that this case is dying in any event.

Tom C. Clark:

No but (Inaudible)

Leonard B. Sand:

Well I think that’s right and I don’t — I think that’s something which —

Tom C. Clark:

(Inaudible)

Leonard B. Sand:

I think that that’s a misuse of this Court, I think it’s a misuse of the powers of court of equity, I think it has been a — I think it hasn’t been good faith.

If the Court should wish to indicate —

Felix Frankfurter:

If you get an injunction out of the court, the court held –

Earl Warren:

Mr. Sand just the fact that he has a statutory right to do this (Inaudible) whether he has the right to wait until the end of that time (Inaudible)

Leonard B. Sand:

I think it bears on it.

I think he has a statutory right to do that perhaps I —

William J. Brennan, Jr.:

Will there be any different positions (Inaudible)

Leonard B. Sand:

Well I withdraw any aspersion I may have cast, perhaps I was carried away.

But the fact that that he had the statutory right and has —

Earl Warren:

Still on for a purpose.

Leonard B. Sand:

I think, I think his insistence on waiting till the last moment is something which is relevant in terms of determining his, whether he is entitled to injunctive relief in view of the fact that he has had two years.

Earl Warren:

Well it seemed to me he was very frank about that.

He told us that he was holding that for that very reason and he could file his patent so he told us that there was another, it was one of the countries that wouldn’t issue a pattern and he did it before.

And furthermore he said the — he wanted to use the time for the purpose of enabling him to finance these things that every inventor doesn’t have the money to finance and I don’t — I don’t see that any aspersion is cast upon him or –.

Leonard B. Sand:

My remarks were solely directed to the consideration that the, delaying payment of the fee was to have a decision by this Court.

I think that that —

Earl Warren:

It was misusing the court.

Leonard B. Sand:

I think, I think that that is an improper use of — that would be an improper use of injunctive relief.

Earl Warren:

Mr. Edwards.

Carleton U. Edwards II:

Id it please the court, I should like to say at the outset at this time that unfortunately this litigation has consumed a great portion of the petitioner’s effort and that of his counsel dealing over the period of these months.

This case as I have said before, I think the sole issue in this case is whether the respondents have the power and authority to make this publication, I think that’s the one big issue in this case.

If they don’t there is no adequate remedy here.

If they do, then we are out of court.

There isn’t any middle ground, I don’t believe.

Now there is tremendous public interest in this case as evidenced by the brief filed by the amici in this case.

The Engineers Joint Council has amongst its membership and membership and the associations which it — which composes 250,000 scientists and engineers, the American Chemical Society has 80,000 chemists.

The American Chemical Society in their brief said the importance of these questions of the members of the American Chemical Society cannot be overstated in their brief.

And they are talking about the authority whether or not the respondents have the authority to do what they are trying to do, something they have gotten confidence and now they propose to give it away and destroying his rights.

The Engineers Joint Council said in their brief since the Engineers Joint Council represents such a vast number of our nations’ engineers and the case at bar present a serious threat to the fundamental rights of our country’s engineers and scientist.

Consent was obtained to file this brief.

This case involves a very important issue.

Our government agents and particular the respondents here are going to be able to get something from somebody incompetent such as has done here and then over his objection destroy it.

Now Mr. Sand’s contends that they had a statutory duty to make this public.

That statute says encourage, permit and encourage publication.

That statute is talking about information that they own, not information owned by someone else such as in this case.

Mr. Sands contends that they paid him to tell them how to incorporate this process into his plan.

They paid him what in amounts was to time for — I mean payment for the time that he devoted to this or informing them of what this was.

And he didn’t pay them — I mean, he wasn’t paid for the destruction of this right, this trade secret which is a valuable trade secret.

Mr. Sands contends that all he reserved was his right to compensation.

They, the respondents themselves in their brief, in opposition to the petition, admitted, it says petitioner reserve, however any invention rights in his alleged new process.

Carleton U. Edwards II:

In the brief that they filed, the latest brief they said it is agreed that in the course of his employment petitioner reserved any invention rights which he may have in the improvement.

Now when he, he reserved any rights, one of the principal rights in a trade secret is the right to secrecy and it is not their right and they cannot show anywhere, where they contracted, negotiated and obtained the right to make this publication.

Mr. Sand speaks of serious public consequences.

Actually there’s very little evidence in the record as to all these claims of what, how terribly they have been affected.

Their own pleadings show they don’t, in forty out of a thousand documents is this process involved.

And I would like to also point out the Court in this case had — no answer has been filed.

There has been a verified compliant filed in this case and a verified amended complaint and for the purposes of this action I think all of those contentions have to be taken as admitted.

And further in connection with the reservation of rights in all of the four contracts as I said Mr. Spevack had with the respondent, it stated, “it is understood and agreed that neither this agreement nor any compensation paid here under, nor any other provision of Article 5 above shall apply with respect to or affect any rights under the Atomic Energy Act of 1946 as amended or otherwise and that the contractor may now or hereafter have in and to such improvement made between aforesaid dates.

He reserved all rights.

All he did was to tell them how this thing worked and then help them to incorporate it.

Now —

If this case becomes moot Mr. Edwards, none of these issues have been adjudicated.

Certainly as far as I am concerned I think they are terribly important issues, no question about that but that isn’t the posture of this case and if we are confronted as long as long as we don’t leave on the books a precedent that does adjudicate these issues by a lower court.

Carleton U. Edwards II:

Well —

What’s your answer to that, and that’s what puzzles me?

Carleton U. Edwards II:

Well I am sorry, I don’t quite understand the —

Well if this case ends up as apparently both of you recognize it would end up, as soon as this would be terminated, as soon as this patent issues, in other words your rights to file abroad are then destroyed, not because of any decision in the litigation, because of the action of patent office and that moots the issuance of the injunction, the thing you are fighting for here, and that action of the court results in clearing the record below of any adjudication as to whether the government had the right to do, what you say they didn’t have.

I don’t see why if there is any issue of consequence that’s been adjudicated.

Carleton U. Edwards II:

Your Honor unless the, the decisions below are reversed, whether if this case —

If they are vacated and stricken up the records as just as if they have never been issued as far as the precedents —

Carleton U. Edwards II:

Well if they are, I agree with that, but if this case becomes moot before they are — this is going to leave them out to do — I will say in this case this petitioner has been mistreated from the very beginning when he filed his suit, I mean for about two months period there his counsel was pleading with them don’t please, don’t do this in substance he says.

And all the time they, they weren’t making saying yes or no and then we get into court and they come in and say, show that they’ve been doing all these things, ignoring it.

Now if that’s the way inventors and scientists are going to be treated, then I think it is a sorry commentary and I don’t think it is going to promote our scientific development, that’s what the interest of these amici are.

Hugo L. Black:

Which one of the opinions is it that you think is so bad?

Carleton U. Edwards II:

Well, both of them Your Honor, I mean they are —

Hugo L. Black:

You mean the Court of Appeals.

Carleton U. Edwards II:

The Court of Appeals, well principally the District Court decision held the case it was moot, I wasn’t able argue that because we didn’t have the time, it was pretty well briefed I think.

Hugo L. Black:

Well I’m trying to find which one do you think is established (Inaudible) such important consequence that it could be wiped off?

Carleton U. Edwards II:

Well both Court of Appeals opinions say in substance that the defendants or the respondents have a statutory authority to publish the information belonging to the petitioner under the circumstances of this case, they both say that.

Hugo L. Black:

So wouldn’t, if the government decided it needed something from — by this property, why wouldn’t it have a right to take it if he pays?

Carleton U. Edwards II:

Well they have right to acquire it.

They have a right to acquire —

Hugo L. Black:

They don’t have to wait until they could buy it, they wouldn’t have to do if it is a piece of real estate.

Carleton U. Edwards II:

Well they have to go through certain procedures, they could have gone through them in this case, but they haven’t.

Hugo L. Black:

Well they could go down on the street and take a man’s piece of property and they can (Inaudible) and get compensation, what’s the difference in taking one kind of property and another?

Carleton U. Edwards II:

Well, I don’t say that they can’t do it.

Hugo L. Black:

I just don’t quite get it.

Carleton U. Edwards II:

I don’t say they can’t do it, they can, but they haven’t.

They haven’t taken it or they haven’t gotten the right to publish.

All they got in this case was a right to use this, but —

Hugo L. Black:

(Inaudible) well suppose they didn’t get it by contract, but they take it.

Carleton U. Edwards II:

Well they can — they have a proper and procedure which is outlined in the Atomic Energy Act, how they can acquire this, but they’ve never gone through the trouble of doing it.

Charles E. Whittaker:

Well, but that’s why the statutory procedure, and I believe what Mr. Justice Black is talking about is the physical taking as a common law (Inaudible).

This physically taking which would be a taking and thus (Inaudible) liable to just compensation.

Carleton U. Edwards II:

Well they can take it for public use, but in this case taking it and just throwing it out to the world, we don’t contend —

Hugo L. Black:

Well that might be the best public use (Inaudible).

Carleton U. Edwards II:

Well —

Hugo L. Black:

(Inaudible) dissemination of information.

If in other words, if — I just don’t quite understand, if the government has taken something which is public, be considered public, right to negotiate, right to publish, right to (Inaudible) and it’s liable to pay for it, what is then the opinion that Court rendered below that is bad?

I don’t find that —

Carleton U. Edwards II:

Well I don’t think that they contend that they have taken it here.

Hugo L. Black:

Well, I understood this.

Carleton U. Edwards II:

They contend they got it by means of an agreement which we say they didn’t get by means of said agreement.

Felix Frankfurter:

But that also happens when there is a controversy between private owners (Inaudible) and governmental authority and that’s what brings the case into the Court of Claims and eventually here.

The government, people say it isn’t the taking, because the property (Inaudible) or in this case they say they have a right to take, that’s why they don’t do the statutory provisions of condemnation.

You say they didn’t have a right to take it.

If they are wrong then there is an implied contract under the constitution to recover monies worth in the Court of Claims, isn’t that right?

Carleton U. Edwards II:

Well I say they had a right to take but they never exercised it.

Felix Frankfurter:

Well that’s because they didn’t think they were taking anything, that’s what.

Hugo L. Black:

They didn’t excise it formally, but it would be taking of it, taking it away from him, if they did that, which destroyed your company.

Carleton U. Edwards II:

They contend they got it by a contract, but that has never been tried, that’s an issues for a trial court and I don’t believe that —

Hugo L. Black:

If they took it by contract and you could recover it in the Court of Claims, but if they took it without contract, and took it for public use, they didn’t have to pay.

Carleton U. Edwards II:

Well, that’s an issue that has never been decided and I think it’s an issue for —

Hugo L. Black:

It can’t be decided until it comes up.

What I’m getting at is, if you take real estate, the government can go down and take real estate, and it doesn’t have to pay for it in advance, but if it doesn’t pay for it a suit can be filed.

Carleton U. Edwards II:

Yes, a man has right to go to court and contest the amount they want to give to him.

Hugo L. Black:

That’s right, well they would have here.

Carleton U. Edwards II:

Well, they have a right under Atomic Energy Act to take — get this, but they’ve never exercised and I don’t know all the details of it, but they have not exercised.

I just want to say once —

Earl Warren:

May I ask you this question, what would you get actually from a judgment, the judgment that you seek here, that you could not get if you are given until the 25th of May, to pay, make your payment to the patent office and thereafter the case was mooted by vacating the judgments below.

Carleton U. Edwards II:

Well, I don’t think we can get any money.

Earl Warren:

You get no financial advantage by going through the rest of this litigation.

Carleton U. Edwards II:

Only in case Mr. Spevack is enable to apply for further patents before the case does become moot, that’s the only one I can —

Earl Warren:

Another law suit, isn’t that something else?

Carleton U. Edwards II:

No, he could apply for patents, he still has a right to apply for patents in certain foreign countries and he could continue to do that until it definitely becomes moot, but we frankly feel that this case involves a tremendous question as to whether or not these government agents have a right to override as we feel they have done in this case.

Earl Warren:

But if we vacate the judgments below, there will be no decision against you anyway, will they?

Carleton U. Edwards II:

That’s right.

Earl Warren:

And the only thing you would be losing would be an affirmative statement of principles by this Court for future cases.

Carleton U. Edwards II:

I think that’s correct.

I just like to say this, there are certain affidavits and things in the District Court which if made generally public might be very detrimental to his rights in foreign countries involving whether or not he can get his foreign tax, he applied for patents after some of the instance which related therein occurred and they could be very damaging and it could be raised.

Earl Warren:

Well, I suppose the government wouldn’t want to prejudice you in that respect would it, it wouldn’t be any advantage to them to do that?

Carleton U. Edwards II:

No, I don’t think they would.

I would be very happy if they would agree not to.

I would just like to say this one further thing if I might, I realize my time is up, but Mr. Sand’s contents that the basic theory of the complaint was that he wanted — the petitioner wanted one year, that is not true.

I mean that’s not correct.

Our paragraph 12 of the complaint states that the defendants have no right to publish the same or any reports dealing with such confidentially disclosed subject matter and we sought an injunction.

The only point on this one-year period is that among this group of countries which are members of this convention, if you file a patent in one of those countries, well I’ll give an example, for instance say England and the United States are members, if Mr. Spevack filed a patent in the United States, he would have a right to file a patent in England anytime during the following year and the date of the patent would relate back to the date he filed in the United States.

He was prevented for six years.

Mr. Sand may have erroneously given the impression that he wasn’t prevented, but he was prevented for six years or whatever the period was from applying for patents anywhere.

In fact as I admit — noted, he sought a waiver so he could apply in one country, but that was denied and —

William J. Brennan, Jr.:

Mr. Edwards may I ask one question (Inaudible), how long would you have this injunction (Inaudible), you want a permanent injunction?

Carleton U. Edwards II:

MNo, we don’t want a permanent injunction.

William J. Brennan, Jr.:

Well how long?

Carleton U. Edwards II:

Well, we just want one until the patent issues.

I think the law is that nobody forfeits any right by asserting his rights.

He has a right to keep this secret and he has a right to negotiate with people and license them to use it if he wants to up into — as a trade secret up until the time that it issues.

Felix Frankfurter:

(Inaudible)

Carleton U. Edwards II:

Well, that’s a possibility.

I don’t say that that’s what we are going to do or anything else.

Felix Frankfurter:

(Inaudible)

Carleton U. Edwards II:

The whole point is, they could have gotten this, they had a right to take it in a proper way and in a nutshell I say that what they have done, they asked for it, I mean that’s a vernacular way of putting it, they could have handled this thing right and they could have done everything they wanted.

William J. Brennan, Jr.:

(Inaudible) Mr. Justice Stewart, you want a restraint only until the patent issues, is that it?

Carleton U. Edwards II:

That’s correct.

William J. Brennan, Jr.:

Well, that’s substantially what Mr. Sand is just talking.

Carleton U. Edwards II:

Well I mean we can’t get one I mean longer than that, I don’t think, I, I didn’t —

William J. Brennan, Jr.:

Well except for the — the condition related to the application for a suspension didn’t Mr. Sand’s offer continuing — continuous in the present restraint until the patent issues (Inaudible) and then the matter to be declared moot, vacating the opinions below and the judgment would seem to concern (Inaudible), is that it?

Carleton U. Edwards II:

I guess that was the substance of what he said, I want additional —

William J. Brennan, Jr.:

Why isn’t that acceptable?

From what you’ve said to Mr. Justice Stewart sounds to me that you’ll be getting just as much that you ask?

There is one additional thing too and as far as the issue which I — you stated a few times and I agree with you.

It’s the issue that you started out, and it is an important issue, the chemical, that is generally but that issue is wiped of the books as a result of mootness and you are still left free of it if it becomes material without any precedence against you.

If the government resists paying you compensation you are still free in that litigation to litigate that thing to the court, then the precedent could be established.

Felix Frankfurter:

(Inaudible)

Carleton U. Edwards II:

Well we, as I’ve said these decisions are very harmful to our position in foreign countries.

William J. Brennan, Jr.:

It wipes them out.

Carleton U. Edwards II:

Well —

Tom C. Clark:

In our opinion though that’s been made to you or the opinion being that this claim must be right, should be right to the court —

Carleton U. Edwards II:

I’d say he did —

Tom C. Clark:

Important issue and you want that to be done.

Carleton U. Edwards II:

I say that they didn’t have the right, and he did and —

Tom C. Clark:

(Inaudible) isn’t that right?

Carleton U. Edwards II:

Not exactly Your Honor just that the government agents have to abide the law like everybody else.

Earl Warren:

Now does Mr. Spevack want the results of this lawsuit because he wanted principles for the future established, quickly what are you arguing for now?

Carleton U. Edwards II:

Well I think we are fighting for a principle.

Earl Warren:

And I think I understand that, I wonder if — I might ask without calling for any argument from counsel for the American Chemical Society because he represents so many sides, if any, if the vacation of this, of this suit as being — the vacation of the decision below is being moot would it adversely affect the interest of the scientists?

Carleton U. Edwards II:

Mr. Chief Justice and members of court, let me answer that by calling your attention to the language of the first opinion of the court of September 1957 where the Court of Appeals made it clear that that in its view, and we think its view was extremely erroneous, that the act authorized the commission to act as it did.

We think that it had no such authority and we think that principal should be eradicated from the books.

Earl Warren:

As conceded that now, has it not?

Carleton U. Edwards II:

Well I didn’t hear Mr. Sand’s concede that they were acting erroneously but –

William O. Douglas:

When you issue – we should, in order to move this, we vacate — so that it would be the same as if the opinions that they have been written.

Carleton U. Edwards II:

Well in response to the Chief Justice’s question as to whether this was a battle about principle or about results the chemical society is not participially interested in the results of this particular litigation except insofar as principle as concerned.

We don’t know anything about the record below, we have not seen it.

But from what we do see in the briefs and in the opinions of the court below, we are extremely dissatisfied with the decision of that court.

Earl Warren:

But I suppose if those decisions were wiped out by being vacated, you would have no —

Carleton U. Edwards II:

Naturally we would prefer to see them wiped out by being told they were wrong rather than to be wiped out for mootness.

Earl Warren:

Yes.

Carleton U. Edwards II:

Thank you, Your Honor.