422 F.

2d 326

Theodore ZIMMERMAN, Appellant,

v.
The UNITED STATES GOVERNMENT, United States
Department of Commerce, Patent Office, Washington, D. C.;
Edwin L. Reynolds, First Assistant Commissioner; Mr. L. H.
Baer, United States Civil Service Commission Regional
Director; Picatinny Arsenal; Isadore G. Nadel; Sidney
Bernstein; and Joseph Fillipone.
No. 18002.

United States Court of Appeals, Third Circuit.

Argued January 8, 1970.
Decided February 19, 1970.

Theodore Zimmerman, pro se.

Ronald R. Glancz, Department of Justice-Civil Division, Washington, D.
C., (William D. Ruckelshaus, Asst. Atty. Gen., Frederick B. Lacey, U. S.
Atty., Morton Hollander, Attorney, Department of Justice, Washington, D.
C., on the brief), for appellee.
Before BIGGS, VAN DUSEN and ALDISERT, Circuit Judges.
OPINION OF THE COURT
ALDISERT, Circuit Judge.

Presented here is the question whether the district court had jurisdiction to
review a determination by the Commissioner of Patents that the government is
entitled to a royalty-free license in appellant's invention. The district court
answered this question in the negative and dismissed for want of jurisdiction.
We affirm.

Appellant is a federal civil service employee assigned as a chemical engineer to

the Department of the Army. Following his invention of a waterproof

combustible cartridge case, the Army determined that "pursuant to paragraph

1(b) of Executive Order 10096, * * * the entire right, title and interest in the
invention be left with the inventor, subject to a non-exclusive, irrevocable,
royalty-free license to the Government with power to grant licenses for all
Government purposes." The Commissioner of Patents affirmed this decision on
June 8, 1967, and twice denied reconsideration. Appellant then filed his
Complaint in the court below "demand[ing] that he alone be assigned exclusive
rights" in the invention, and seeking declaratory and injunctive relief. Prior to
the institution of this action, appellant filed an application for a patent which is
still pending.
3

We think it necessary to observe at the outset that the district court's

characterization of this action does not control our disposition of the case. At
the hearing on the government's motion to dismiss, the trial judge expressed his
understanding that the claim was essentially for money damages rather than
equitable relief.1 Taking this view of the case, we would certainly agree that
the Court of Claims would be the appropriate forum for a properly timed action.
28 U.S.C. 1498(a) provides that once a patent has issued on an invention
which is thereafter "used or manufactured by or for the United States without
license * * * or lawful right * * *, the owner's remedy shall be by action against
the United States in the Court of Claims for the recovery of his reasonable and
entire compensation for such use and manufacture."2 And in certain
circumstances, "[a] Government employee shall have the right to bring suit
against the Government [in the Court of Claims] under this section." By brief
and argument to this court, however, the government has acknowledged that
appellant is not directly or obliquely seeking "compensation" from the United
States.

That appellant is asking for equitable relief does not, however, remove from
our consideration the impact of section 1498. Prior to the 1952 amendment to
this section, Congress had provided that "[t]his section shall not confer a right
of action on any patentee who, when he makes * * * a claim [for
compensation], is in the employment or service of the United States, * * * and
shall not apply to any device discovered or invented by an employee during the
time of such employment or service." Thus, until the 1952 revision, an
employee of the government could not maintain a suit against the United States
for a determination of rights in an employee invention. Myers v. United States,
177 F.Supp. 952, 953 (Ct.Cl.1959). See Moore v. United States, 249 U.S. 487,
39 S.Ct. 322, 63 L.Ed. 721 (1919). Moreover, the legislative history of the
revision confirms the Congressional view that government employeespatentees did not have a cause of action against the government prior to 1952.
The House Judiciary Report stated: "Section 1498 of title 28 was written into

the act of June 25, 1910, * * * to prevent a Government employee who made an
invention in the course of his official duties from maintaining a claim for the
use of the invention by the Government."3 And the Report makes it clear that
the amendment was specifically designed to permit suits against the United
States in the Court of Claims: "[The 1952 amendment] will * * * permit a
Government employee who makes an invention completely outside of his
official function to maintain a suit against the Government."4
5

In sum, the revision to section 1498 conferred upon government employeespatentees a right of action against the United States that previously had been
nonexistent. Congress thereby relinquished governmental immunity and
consented to suit in the Court of Claims in carefully circumscribed situations
where the invention was not related to the official functions of the employee, or
where government time, facilities, or materials were not used.5

We believe that this remedy was intended to be exclusive. First, it is the only
remedy created in an area in which the government traditionally has been
completely immune from suit. Second, closely related cases in which nongovernment employees have sought compensation from the United States
through patent infringement suits in district courts have held that section 1498
establishes the sole avenue for relief. Stelma, Inc. v. Bridge Electronics Co.,
300 F.2d 761 (3 Cir.1962); Identification Devices, Inc. v. United States, 74
App. D.C. 26, 121 F.2d 895 (1941); John J. McMullen Assoc. v. State Board of
Higher Educ., 268 F.Supp. 735 (D.Ore. 1967); Dearborn Chemical Co. v.
Arvey Corp., 114 F.Supp. 369 (N.D.Ill.1953). In Indentification Devices, supra,
121 F.2d at 896, Mr. Justice Rutledge, sitting as a circuit judge, held:

The suit is for unlicensed use of a patent. It is against the United States. Its
consent to be sued is essential to jurisdiction. The statute [28 U.S.C. 1498]
has given consent to suit in the Court of Claims. It is "for the recovery of his
reasonable and entire compensation for such use * * *." (Italics supplied.) This
clearly shows that the remedy is exclusive. Consequently the District Court was
without jurisdiction.

8* * * * * *
9

Nor does it matter that the present suit seeks injunctive relief. Crozier v. Fried.
Krupp Aktiengesellschaft, [224 U.S. 290, 32 S.Ct. 488, 56 L.Ed. 771 (1912)],
clearly rules this point, and also holds that suit in the Court of Claims affords an
adequate remedy for ascertaining and giving compensation for the property
taken by the Government.

10

(Emphasis supplied.)

11

We conclude that except for the section 1498 action to which the government
has consented, the doctrine of sovereign immunity applies with full force.

12

Appellant contends, however, that sovereign immunity is no bar to his action

for the reasons that: (1) the individual defendants can be held personally liable;
(2) absent a judicial determination that the government is entitled to a license in
the invention, "the government would not be giving up money or anything else
with a money value from the public treasury or domain. The United States * *
* is being asked to cease and desist from seizing patent rights which do not
belong to the Government." (3) the finality provision of Executive Order
10096(4) (d) authorizes the "tak[ing of] property * * * in violation of due
process guaranteed under the Fifth and Fourteenth Amendments" and is void
for vagueness.6

13

The short answer to appellant's first contention is simply that he is not seeking
to hold the individually named defendants personally liable for their actions. He
is not asking that they respond in damages, see Larson v. Domestic & Foreign
Corp., 337 U.S. 682, 688, 69 S.Ct. 1457, 93 L.Ed. 1628 (1949), and his own
pleadings conclusively reveal that the request for equitable relief is directed
against the government. The essential nature and effect of this suit would not be
altered even if it is true that the individual defendants could be held personally
accountable to appellant.

14

In Dugan v. Rank, 372 U.S. 609, 620, 83 S.Ct. 999, 1006, 10 L.Ed.2d 15
(1963), the Supreme Court set forth the general rule that an action is against the
sovereign if "`the judgment sought would expend itself on the public treasury
or domain, or interfere with the public administration,' Land v. Dollar, 330 U.S.
731, 738 [67 S.Ct. 1009, 1012, 91 L.Ed. 1209] (1947), or if the effect of the
judgment would be `to restrain the government from acting, or to compel it to
act.' Larson v. Domestic & Foreign Corp., supra, at 704 [69 S.Ct. at 1468, 93
L.Ed. 1628]." Exceptions to this rule would involve "(1) action by officers
beyond their statutory powers and (2) even though within the scope of their
authority, the powers themselves or the manner in which they are exercised are
constitutionally void. Malone v. Bowdoin [369 U.S. 643, at 647, 82 S.Ct. 980,
at 983, 8 L.Ed.2d 168 (1962)]." Id. at 621-622, 83 S.Ct. at 1007.

15

Appellant's statement that the government "would not be giving up money * * *

from the public treasury or domain," Land v. Dollar, supra, is specious in light
of his continued insistence that his suit is for equitable relief rather than money

damages. His acknowledgment that the "United States * * * is being asked to

cease and desist" is, however, pertinent, for, to be sure, the effect of a
declaratory judgment and injunction in appellant's favor would be to "restrain
the government from acting." Larson v. Domestic & Foreign Corp., supra. And
appellant's whimsical, albeit sincere, assertion that the government is not
entitled to any interest in the invention is the precise substantive issue that
would be resolved by a timely action in the Court of Claims, pursuant to 28
U.S. C. 1498.
16

Moreover, the stark assertion that the government is endeavoring to take

property without due process of law is insufficient to bring this case within the
Malone v. Bowdoin, supra, exceptions to the general rule. There is no claim
that the actions of the individual defendants were ultra vires, and the attack on
the finality provision of Executive Order 10096(4) (d) cannot succeed. As
Professor Jaffe has observed: "A statute, for example, may expressly or by
implication provide that an administrative determination shall be `final',"
although "a court * * * may hold that it should not be interpreted to exclude
judicial question of the agency's `jurisdiction' or of its alleged failure to observe
procedural regularity." But, "[a] statute may indeed exclude all occasions of
judicial intervention." Jaffe, Judicial Control of Administrative Actions 153-54
(Abridged Student Ed. 1965). Appellant has not challenged the jurisdiction of
the Commissioner of Patents to review agency determinations. And, although
he states that he was denied a hearing to which he was entitled by 37 C.F.R.
300.7(c), 27 Fed.Reg. 3289 (April 6, 1962), no timely request for such hearing
was submitted. Beyond this, appellant does not argue that he was the victim of
procedural irregularities. But more importantly, the Congressional provision in
section 1498 for actions in the Court of Claims undercuts the contention that
the Commissioner's decision is in fact "final". The respective rights of the
government and inventor may be judicially determined, not on review, but de
novo in that court in an action for compensation after a patent has issued.
Finally, appellant's allegation that the Executive Order is void for vagueness is
too insubstantial to require discussion.

17

Although appellant has not invited our attention to the possible jurisdictional
impact of the Administrative Procedure Act, 5 U.S.C. 701 et seq., we think it
appropriate to mention that the Act cannot serve as an independent basis for
jurisdiction here. In our recent case of Charlton v. United States, 412 F.2d 390
(3 Cir.1969), Judge Stahl noted in his concurring opinion: "There continues to
be a dispute in the courts and in academic circles as to whether the
Administrative Procedure Act is jurisdictional, i. e., whether the Act itself is an
affirmative grant of jurisdiction to the district courts to review agency action
according to its terms absent any other basis for jurisdiction." Id. at 396. In an

earlier case, however, this court characterized the A.P.A. as being "clearly
remedial and not jurisdictional" and stated that there "is nothing in * * * the Act
which extends the jurisdiction of either the district courts or the appellate courts
to cases not otherwise within their competence." Local 542, International Union
of Operating Engineers v. N.L.R.B., 328 F.2d 850, 854 (3 Cir.1964), cert.
denied, 379 U.S. 826, 85 S.Ct. 52, 13 L.Ed.2d 35 (1964). Other circuits have
reached the same conclusion. E. g., Pan American World Airways, Inc. v.
C.A.B., 129 U.S.App.D.C. 159, 392 F.2d 483, 494 (1968); Twin Cities
Chippewa Tribal Council v. Minnesota Chippewa Tribe, 370 F.2d 529, 532 (8
Cir.1967); Ove Gustavsson Contracting Co. v. Floete, 278 F.2d 912, 914 (2
Cir.), cert. denied, 364 U.S. 894, 81 S.Ct. 225, 5 L.Ed.2d 188 (1960). But see
Toilet Goods Ass'n v. Gardner, 360 F.2d 677 n. 1 (2 Cir.1966), aff'd., 387 U.S.
158, 87 S.Ct. 1520, 18 L.Ed.2d 697 (1967). No Supreme Court decision holds
that section 10 of the A.P.A. is a grant of jurisdiction.7 We therefore adhere to
this court's reasoning in Local 542, International Operating Engineers, supra.
18

We are acutely aware of the disquiet generated by the concept of sovereign

immunity.8 What Mr. Justice Douglas said in 1962 can surely be no less
apposite today: "Sovereign immunity has become more and more out of date, as
the powers of the Government and its vast bureaucracy have increased."
Malone v. Bowdoin, supra, 369 U.S. at 652, 82 S.Ct. at 986 (dissenting
opinion). One need not be possessed of great perspicacity to appreciate that the
pervasiveness of the state has dramatically magnified the potential for conflicts
between the government and its citizens. Recognizing that the doctrine of
governmental immunity has some continuing conceptual validity, some
nonlogical nerve still jangles at the discordance of that Sovereign anthem when
played to a citizen who is aggrieved and yet remedyless.

19

As we have stated earlier, however, appellant is not without a remedy. He is not

being told that he must forego his day in court. By virtue of section 1498 of title
28 of the United States Code, Congress has created the opportunity for
appellant to challenge, by a suit for compensation, the interest of the
government in his invention. That this action must await a determination of the
invention's patentability is eminently sensible, for until that time appellant
simply has no claim to royalties for the use of the invention.9

20

Still, appellant urges that the government, by never using the invention, can cut
off a resort to the Court of Claims, and that in the absence of a determination of
respective rights, no commercial contractor will be willing to purchase
appellant's rights in the invention. This reasoning says too much. An assignee
of rights in an invention can never be certain even after a patent issues
that the rights he purchased are exclusive. The myriad patent infringement

cases successfully defended by counter-claims of patent invalidity eloquently

attest to the absence of complete assurance of exclusivity. And if the
government chooses not to use the invention, neither appellant nor any assignee
would have any complaint on that score.
21

The present action is against the United States and is a suit to which the
Government has not consented. Congress has provided an exclusive and
adequate remedy in the Court of Claims. The district court was therefore
without jurisdiction.

22

The judgment of the district court will be affirmed.

Notes:
1

The Court: You are not suing on an equitable claim; you are suing for money.
Money is what you want
Mr. Zimmerman: On the outside, but not from the government.
The Court: Money.

The Court of Claims has no jurisdiction to award equitable relief. United States
v. King, 395 U.S. 1, 89 S.Ct. 1501, 23 L.Ed.2d 52 (1968)

Report of House Committee on the Judiciary, House Report No. 1726, 82nd
Cong., 2nd Sess., 1952 U.S.Code Cong. and Admin.News, pp. 2322, 2323

Id. at p. 2324.

This section shall not confer a right of action on any patentee * * * with respect
to any invention discovered or invented by a person while in the employment or
service of the United States, where the invention was related to the official
functions of the employee, in cases in which such functions included research
and development, or in the making of which Government time, materials or
facilities were used

Executive Order 10096 provides, in relevant part:

The following basic policy is established for all Governmental agencies with
respect to inventions hereafter made by any Government employee:

(a) The Government shall obtain the entire right, title and interest in and to all
inventions made by any Government employee (1) during working hours, or
(2) with a contribution by the Government of facilities, equipment, materials,
funds, or information, or of time or services of other Government employees on
official duty, or (3) which bear a direct relation to or are made in consequence
of the official duties of the inventor.
(b) In any case where the contribution of the Government, as measured by any
one or more of the criteria set forth in paragraph (a) last above, to the invention
is insufficient equitably to justify a requirement of assignment to the
Government of the entire right, title and interest to such invention, or in any
case where the Government has insufficient interest in an invention to obtain
entire right, title and interest therein * * *, the Government agency concerned,
subject to the approval of [the Commissioner of Patents] * * *, shall leave title
to such invention in the employee, subject, however, to the reservation to the
Government of a non-exclusive, irrevocable, royalty-free license in the
invention * * *.
*****
4

With a view to obtaining uniform application of the policies set out in this order
and uniform operations thereunder, the [Commissioner of Patents] is authorized
and directed:
*****
(d) To determine with finality any controversies or disputes between any
Government agency and its employees, to the extent submitted by any party to
the dispute, concerning the ownership of inventions made by such employee or
rights therein * * *.

Byse and Fiocca, Section 1361 of the Mandamus and Venue Act of 1962 and
"Nonstatutory" Judicial Review of Federal Administrative Action, 81 Harv.L.
Rev. 308, 329 (1967), point out, citing Rusk v. Cort, 369 U.S. 367, 371-372, 82
S.Ct. 787, 7 L.Ed.2d 809 (1962), that the Supreme Court has on occasion
seemed to assume that section 10 of the A.P.A. is jurisdictional. However, Mr.
Justice Brennan's reference in his concurring opinion in that case to section 10
and the Declaratory Judgment Act as "general grants of jurisdiction",id. at 380,
82 S.Ct. at 795, "may have intended another nuance of the term `jurisdiction,'
for it is well established that the Declaratory Judgment Act is not a grant of
jurisdiction. Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667 [70 S. Ct.
876, 94 L.Ed. 1194] (1950)."

The Administrative Conference of the United States recently considered a

proposal to abolish the federal defense of sovereign immunity in actions
seeking relief other than money damages and stating a claim challenging
official action or non-action. The proposed amendment to the Administrative
Procedure Act, 5 U. S.C. 702-703, would apply only to agencies, in a
manner consistent with other provisions of the Act. Significantly, "[w]here
Congress has statutorily consented to suit and the remedy provided is intended
to be the exclusive remedy, the defense of sovereign immunity would remain
available." 38 Law Week 2242 (Oct. 28, 1969)

Appellant's contention that "this suit is not premature because * * * no private

contractor will invest funds or enter into any negotiations until ownership
ofpatent rights are [sic] determined," is self-defeating. Manifestly, this action
against the government will not determine ownership of patent rights.