597 F.

2d 826
203 U.S.P.Q. 561

Eugene Emerson CLIFT, Appellant,

v.
UNITED STATES of America, Appellee.
No. 565, Docket 78-6163.

United States Court of Appeals,

Second Circuit.
Argued March 7, 1979.
Decided April 10, 1979.

Eugene Emerson Clift, pro se.

Bruce G. Forrest, Dept. of Justice, Washington, D.C. (Barbara Allen
Babcock, Asst. Atty. Gen., Washington, D.C., Richard Blumenthal, U. S.
Atty., New Haven, Conn., and Ronald R. Glancz, App. Staff, Civ. Div.,
Dept. of Justice, Washington, D.C., of counsel), for appellee.
Before FRIENDLY, SMITH and MANSFIELD, Circuit Judges.
FRIENDLY, Circuit Judge:

Eugene Emerson Clift, plaintiff in this action to recover compensation from the
United States under the Invention Secrecy Act, 35 U.S.C. 181-88, is the
inventor of a cryptographic system now the subject of U.S. Patent 3,495,038.
He appeals from orders of the District Court for Connecticut which denied his
motion under F.R.Civ.P. 37 to compel the production of documents requested
under F.R.Civ.P. 34, largely on the basis of the privilege with respect to secrets
of state, and then dismissed the complaint because of his inability to proceed
without the production that had been denied. We affirm the order denying the
motion for production without prejudice to further consideration, but believe
the judge acted too precipitately in dismissing the complaint and accordingly
vacate that order.

The history of the controversy is as follows:

Clift filed an application for a patent for a cryptographic device on March 21,
1968. On November 6 he was informed that a secrecy order, see 35 U.S.C.
181, had been issued with respect to the application. In February 1969 he filed
an administrative claim for compensation under 35 U.S.C. 183 for damages
caused by the secrecy order and for use of the invention. The secrecy order was
rescinded on June 12, 1969, and the patent issued on February 10, 1970. On
January 23, 1970 the administrative claim was denied on the grounds that the
Government had never used the invention and Clift had not submitted any
evidence of damages from the secrecy order.

Six years later, Clift brought suit against the United States under 35 U.S.C.
183, claiming damages from the secrecy order and from the Government's use
of the invention. In an effort to show that the Government had used his
invention, he moved under F.R.Civ.P. 37 for enforcement of a previous request
under F.R.Civ.P. 34 for the production of seven categories of documents
including contracts for the manufacture of various Government crypto devices,
whose existence he claimed to have discovered through articles in newspapers
and magazines. The Government responded that the requests were for items
that either did not exist or constituted classified cryptographic information
whose disclosure to unauthorized persons was made a criminal offense by 18
U.S.C. 798. An affidavit from Admiral Inman, Director of the National
Security Agency, confirmed that insofar as plaintiff requested production of
contracts, these included the design, construction, maintenance or repair of
cryptographic systems being developed by the Government, which have been
and are properly classified as containing highly secret information and include
military secrets of the United States, disclosure of which would seriously
jeopardize the communications security mission of the National Security
Agency and the interests of the United States.1 Without ruling expressly on the
Government's contention that items 1, 6 and 7 did not exist, the judge sustained
its claim that the documents sought to be discovered were privileged within
F.R.Civ.P. 34 and denied the motion for discovery. She then added, apparently
Sua sponte :

5 public policy forbids the maintenance of any suit, the trial of which would
As
inevitably lead to the disclosure of matters which the law itself regards as
confidential, and respecting which it will not allow the confidence to be violated,
(Totten v. United States, 92 U.S. (105,) 107, 23 L.Ed. 605 (1875)) and since, in any
case, plaintiff cannot proceed further without the information he seeks, the Court in
the exercise of its inherent power to control process hereby dismisses this suit.
6

Plaintiff, appearing Pro se, appeals from these determinations. Although orders
refusing to compel the production of documents "are usually routine, non-

appealable interlocutory orders", 9 Moore, Federal Practice P 110.13(2) at 157

(1975), in this case plaintiff is appealing from the dismissal of his action and
"the appellate court will determine all matters appropriately raised without
regard to the interlocutory decree below." Id. P 110.25 at 273-74 and cases
cited in note 3 thereto. Here the denial of the motion for discovery was the very
basis for the order of dismissal and is thus reviewable.
7

Plaintiff makes two principal objections to the refusal of discovery on the basis
of the secret nature of the information. The first is grounded on the statement in
United States v. Reynolds, 345 U.S. 1, 7-8, 73 S.Ct. 528, 532, 97 L.Ed. 727
(1953), also dealing with a claim of military secrecy:

8
There
must be a formal claim of privilege, lodged by the head of the department
which has control over the matter, after actual personal consideration by that officer.
(footnote omitted)
9

The Government answers that there was no need for a claim by the Secretary of
Defense since the claim was made by Congress in 1951, when it enacted 18
U.S.C. 798, making knowing and willful disclosure of classified
cryptographic information to unauthorized persons a crime, and Admiral
Inman's affidavit sufficiently showed that the requested items were within the
statute. This answer is not so fully satisfying as the Government would have it.
While the statute and Admiral Inman's affidavit may suffice to show that the
claim of state privilege Could be invoked with respect to the requested items,
there remains the question whether it Should be. The Court warned in Reynolds
that the state secret privilege "is not to be lightly invoked", 345 U.S. at 7, 73
S.Ct. at 532, and quoted with approval, Id. at 8 n. 20, 73 S.Ct. at 532 n. 20 the
statement in Duncan v. Cammell, Laird & Co. (1942) A.C. 624, 638:

10 essential matter is that the decision to object should be taken by the minister
The
who is the political head of the department, and that he should have seen and
considered the contents of the documents and himself have formed the view that on
grounds of public interest they ought not to be produced. . . ."
11

The argument that the Court in Reynolds could not have meant to require
invocation of the privilege by the head of the department when disclosure
would be a crime overlooks that disclosure compelled by an officer by order of
a federal court would not be a crime, since the officer would not have had the
required criminal intent. On the other hand, the fact that Congress made
disclosure of information covered by 798 criminal without requiring, as in
793, that the disclosure be done with intent or reason to believe that the
information be used to the injury of the United States, while not decisive,

reinforces our recognition of the peculiarly sensitive nature of cryptographic

information. Under the circumstances presented here a requirement of the
personal involvement of the Secretary of Defense would, as was said of the
Secretary of HEW in Association for Women in Science v. Califano, 185
U.S.App.D.C. 19, 28, 566 F.2d 339, 348 (1977), "be of little or no benefit"
although even as to that there are conflicting considerations, as developed
below. While we thus reject Mr. Clift's argument on the special facts here
presented, the Government would be wiser not to put courts to this test in the
future.
12

Mr. Clift's other objection is that the district court should have directed the
documents to be produced to it In camera a position he claims to be supported
by Halpern v. United States, 258 F.2d 36 (2 Cir. 1958). Judge Waterman's
perceptive opinion in that case indeed sets the framework within which this
appeal must be viewed. As there stated, the Invention Secrecy Act sets forth
procedures "with a majestic simplicity that disregards the manifold problems
engendered by the creation of the remedy", 258 F.2d at 37. Recognizing the
conflicting objectives of the Act on the one hand, to preserve secrecy and, on
the other, "a strong concern that inventors be encouraged to discover inventions
having military value and to submit them to the United States," 258 F.2d at 39,
this court concluded, 258 F.2d at 43:

13
Congress
must have foreseen that a public trial was an impossibility in cases of this
kind, and in vesting jurisdiction in the district court to entertain such an action it
implicitly empowered the district court to tailor the procedure within reasonable
limits to meet individual situations.
14

Indicating that some of the Government's objections to an In camera trial in that

case may have been exaggerated,2 we directed the district court to conduct such
a trial "if in its opinion such a proceeding can be held without running any
serious risk of divulgence of military secrets." Id.

15

Halpern Is claimed to be distinguishable on the basis that in effect use by the

Government was there conceded, that Halpern knew what his invention was,
that the dangers of an In camera trial were thus minimal, and that we left it to
the district court to determine whether such a trial could safely be conducted.
Except for the last, the distinctions are not overwhelming. Mr. Clift also knows
what his invention is; indeed the world knows it as a result of the lifting of the
secrecy order and subsequent issuance of the patent. While Halpern knew his
own invention and apparently had some knowledge of the modifications, he did
not know how extensively it was used, and these facts were state secrets. There
may be more importance in the Government's tacit admission of use in Halpern

and its strong denial here a denial whose validity is reinforced by the lifting of
the secrecy order only eight months after its issuance. On the other hand while
we sympathize with the judge's admission that she would be unable to
understand the significance of the documents without the aid of an independent
expert, efforts could be made to locate such an expert with appropriate
clearances.
16

We nevertheless sustain the judge's exercise of discretion in denying discovery

at this time. In camera discovery would do no good unless any favorable results
could be communicated to Mr. Clift, who admittedly no longer holds
clearances. Moreover, we find merit in Chief Judge Haynsworth's statement in
Alfred A. Knopf, Inc. v. Colby, 509 F.2d 1362, 1369 (4 Cir.), Cert. denied, 421
U.S. 992, 95 S.Ct. 1999, 44 L.Ed.2d 482 (1975):

17is not to slight judges, lawyers or anyone else to suggest that any such disclosure
It
carries with it serious risk that highly sensitive information may be compromised. In
our own chambers, we are ill equipped to provide the kind of security highly
sensitive information should have.
18

Without any motion by the Government requesting such relief, the Court
dismissed the complaint for the reasons stated above. The cited case, Totten v.
United States, 92 U.S. 105, 23 L.Ed. 605 (1875), affords no support for this.
The Court there held that an action could not be maintained against the
Government on a contract for secret services during the Civil War since the
contract must be deemed to include an implied agreement of both parties "that
the lips of the other were to be for ever sealed respecting the relation of either
to the matter." 92 U.S. at 106. Mr. Clift entered into no contract; it was the
Government that imposed secrecy on his patent application. Mr. Justice Field's
statement "that public policy forbids the maintenance of any suit in a court of
justice, the trial of which would inevitably lead to the disclosure of matters
which the law itself regards as confidential, and respecting which it will not
allow the confidence to be violated," must be read in context, and also in light
of the Invention Secrecy Act as explicated in Halpern, supra, particularly 258
F.2d at 43. Moreover, Mr. Clift has not conceded that without the requested
documents he would be unable to proceed, however difficult it might be to do
so. More likely he would be better advised to wait and see whether
improvements in the art or other developments might make it feasible for the
Government to produce some documents under some safeguards. In time the
cryptographic systems now considered so secret may be as obsolete as the giant
computer that broke the German code in World War II. We therefore remand
the case to the district court for further proceedings, including, if the court finds
this desirable, the entry of an appropriate stay. Beyond this we suggest that the

Government, in obedience to the desire of Congress manifested in the Invention

Secrecy Act, should be as forthcoming as it can be without risk to the national
interest and that in this difficult case Mr. Clift would benefit from the
assistance of counsel, which he once had.
19

The order denying the motion for discovery is affirmed without prejudice to
further consideration; the order dismissing the complaint is vacated and the
cause is remanded for proceedings consistent with this opinion. No costs.

Although Admiral Inman's affidavit was limited to items 2, 3, 4 and 5 of

plaintiff's request, the court evidently treated it as applicable to the other items
if these in fact existed. On the remand we are directing the court should make
express findings on the claim of non-existence of items 1, 5 and 6, and if she
should rule against the Government on any item, afford it an opportunity to
supplement the Inman affidavit

It should not be difficult to obtain a court reporter and other essential court
personnel with the necessary security clearance. If necessary, the stenographers
who are now writing letters concerning this invention for the Department of the
Navy can be utilized to record the testimony
It would seem quite possible to have an In camera production in this case in a
secured area at Fort Meade, where the documents are.