Piper v. Atomic Energy Commission

502 F.2d 1393, 183 U.S.P.Q. (BNA) 235, 1974 CCPA LEXIS 122

• Court: Court of Customs and Patent Appeals
• Decided: September 26, 1974
• Docket: Patent Appeal No. 9071
• Status: Published

Opinions

MILLER, Judge.

This is an appeal from the final order of the Patent Office Board of Patent Interferences in a proceeding to determine the right of the Atomic Energy Commission (AEC) to have a patent issued to it instead of to the inventors or their as-signee, under section 152 of the Atomic Energy Act of 1954, as amended (42 U. S.C. § 2182). The board held that the AEC was entitled to direct the Commissioner of Patents to issue the patent to it. We reverse.

Section 152 provides, in part, as follows:

Any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission, shall be vested in, and be the property of, the Commission, except that the Commission may waive its claim to any such invention or discovery under such circumstances as the Commission may deem appropriate, consistent with the policy of this section. No patent for any invention if on discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application ... a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery . ... The Commissioner of Patents shall as soon as the application is otherwise in condition for allowance forward copies of the application and the statement to the Commission.

The Commissioner of Patents may proceed with the application and issue the patent to the applicant (if the invention or discovery is otherwise patentable) unless the Commission, within 90 days after receipt of copies of the application and statement, directs the Commissioner of Patents to issue the patent to the Commission

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In our view, the decisive question is whether the language in section 152, “useful in the production or utilization of special nuclear material or atomic energy,” reaches appellants’ invention, which is described below.

The Invention

Involved here is the patent application of Piper et al., serial No. 784,231, filed December 16, 1968, for “Antiradiation Agents.” The application claims certain chemical compounds stated to be useful as antiradiation agents, the disclosure of utility being as follows :

Such compounds are potentially useful in several different areas. Thus, for example, in X-ray therapy it is desirable to provide a drug which can be administered to a subject and which will then provide protection against the harmful effects of X-ray radiation. Antiradiation agents may also be useful in providing protection against other sources of harmful radiation such as may be encountered by personnel in the fringe areas of a nuclear explosion or by space travelers.

The application discloses that the claimed compounds were tested on mice by peritoneal injection of solutions or suspensions of the drugs and then exposing the mice so treated to “lethal radiation, i. e., 825 roentgens of X-rays or 950 to 1050 roentgens of gamma rays.” It is stated that no uninjected control mice survived for 30 days, whereas various percentages of the treated mice survived for 30 days according to the drugs administered and the size of the doses. It is assumed that the disclosure of utility of the claimed compounds as antira-diation agents was found sufficient inasmuch as that is the only utility disclosed and the application was allowed. The invention was developed in the course of a contract between appellants’ employer and the U. S. Army Medical Research and Development Command. That the contract was for the benefit of the AEC for purposes of section 152 is not at issue.

Proceedings Below

Subsequent events were in accordance with procedures under section 152. The Patent Office first called on the applicants to file a statement under oath or a declaration disclosing the circumstances under which the invention was made, because it appeared to be “useful in the production or utilization of special nuclear material or atomic energy.” Applicants filed such a declaration, which showed that the invention was made by them as employees of Southern Research Institute under a contract it had with the U. S. Army Medical Research and Development Command, No. DA-49-193-MD-2028, for the synthesis of potential antiradiation drugs. At the same time, applicants’ attorneys argued that the compounds claimed in the application are not “useful in the production or utilization of special nuclear material or atomic energy” within the meaning of section 152 and that the AEC should, therefore, have no interest in the patent application.

Pursuant to section 152, the AEC thereafter directed the Commissioner of Patents to issue a patent on the invention to it as the agent of the United States of America; applicants then requested a hearing before the Board of Patent Interferences, which docketed the proceeding, Case No. 245/71, on May 20, 1971.

On May 28, 1971, applicants filed with the board a motion for summary judgment, supported by argument, reciting the following (emphasis supplied);

This proceeding has been instituted under Section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182) to determine whether the Atomic Energy Commission is entitled to the title to the Piper at [sic] al application involved in this proceeding and to the patent which will issue thereon. It is believed that there is no question as to the facts involved in this proceeding and that the sole issue involved relates to statutory interpretation.

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It is believed that a proper interpretation of the language used in Section 152 of the Atomic Energy Act of 1952 [sic, 1954] (42 U.S.C. 2182) will be dispositive of this proceeding.

Section 152 of the Atomic Energy Act of 1954 applies only to an “invention or discovery, useful in the production or utilization of special nuclear material or atomic energy.” Therefore, if the invention disclosed in the Piper et al application is not “useful in the production or utilization of special nuclear material or atomic energy,” then the Atomic Energy Commission has no rights in the application.

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For the foregoing reasons, it is respectfully submitted that there is no genuine issue in this proceeding as to any material fact and that upon the facts before the Board of Patent Interferences, a summary judgment should be granted as a matter of law in favor of petitioners, James R. Piper et al.

The AEC filed an opposition to this motion and itself moved for summary judgment. Both its motion and its opposition were predicated, inter alia, on the proposition that the applicants’ compounds are “useful in the production or utilization of special nuclear material or atomic energy,” within the meaning of section 152. Thus the issue was joined on the single question of statutory construction.

The Board Decision

The board’s statements and holdings of significance to this appeal were as follows:

The parties having raised no issue of fact, these motions, plus other papers relating to the matter, raise before us a single dispositive issue as to which oral arguments were presented on behalf of both parties at a hearing on September 16, 1971.

The issue is whether the new compounds (antiradiation drugs) claimed in this application are or are not useful in the production or utilization of special nuclear material or atomic energy, within the purview of the Atomic Energy Act of 1954.

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. Whether the contract was for the benefit of the Atomic Energy Commission is not an issue here.

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It is apparent in view of the arguments presented by the parties that the breadth of the language of 42 USC 2182 under consideration is anything but clearly delimited.

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[W]e hold that under the facts of this case, where the efficacy of the drugs is so proximately related to the actual production or utilization of special nuclear material or atomic energy as a protective agent for those involved in such activity, the invention is useful in the production or utilization of special nuclear material or atomic energy within the purview of 42 USC 2182. Therefore, petitioners’ motion for summary judgment is denied and respondent’s motion for summary judgment is granted.

Accordingly, we hold in this case the Atomic Energy Commission is entitled to the direction [to the Commissioner of Patents to issue the patent to it] here in issue.

Opinion

The words in section 152 of the Act, “useful in the production or utilization of special nuclear material or atomic energy,” are by no means clear. Obviously, they could be so broadly construed as to include inventions relating to nuts and bolts on general purpose machinery used in the production of atomic energy —an absurd result which is not to be attributed to the Congress. See United States v. American Trucking Associations, Inc., 310 U.S. 534, 543, 60 S.Ct. 1059, 84 L.Ed. 1345 (1940); United States v. Ryan, 284 U.S. 167, 175, 52 S.Ct. 65, 76 L.Ed. 224 (1931). They could be interpreted to encompass inventions which, like that of appellants, appear to have a use predominantly in the nongovernmental sector.¹ And they could be interpreted to exclude such inventions. As the board well said, the breadth of the statutory language “is anything but clearly delimited.”

A statute must be construed to achieve its clear objective, and if two constructions are possible, one achieving and the other defeating that objective, the former prevails. See Shapiro v. United States, 335 U.S.. 1, 31, 68 S.Ct. 1375, 92 L.Ed. 1787 (1048). The objective of the Atomic Energy Act of 1954 was recommended by the President in his message to the Congress on February 17, 1954,² as follows:

5. Liberalize the patent provisions of the Atomic Energy Act, principally by expanding the area in which private patents can be obtained to include the production as well as utilization of fissionable material . [Emphasis supplied.]

That Congress adopted this recommendation is shown by the statement in the reports of both the Senate and House of Representatives that:

It [The Atomic Energy Act of 1954] accomplishes the purposes, set forth in the President’s February 17 message to the Congress.³

The board’s approach, giving “useful in” a broad meaning in favor of the government, would narrow rather than expand the area in which private patents can be obtained — contrary to the objective of the Act. In contrast, that objective is achieved by giving “useful in” a narrower meaning to expand the area for private patents to include appellants’ invention.

Our conclusion is reinforced by the apparent lack of an essential or fundamental relationship which appellants’ invention bears to the production or utilization of special nuclear material or atomic energy. Nowhere in appellants’ application is there any suggestion that the compounds, per se, are essential or fundamental to such production or utilization. At most, the application merely states that:

Antiradiation agents may also be useful in providing protection against other sources of harmful radiation such as may be encountered by personnel in the fringe areas of a nuclear explosion or by space travelers. [Emphasis supplied.]

Indeed, counsel for appellee candidly admitted during oral argument that production of atomic energy is exactly the same, whether people in the area have the compound in them or not. And ap-pellee’s brief states:

Thus, if the invention of this application will provide protection against the harmful effects of radiation as the application states, . . . personnel engaged in the acts of making, refining or separating plutonium could use this drug as a radioprotective agent against the harmful effects of the radiation from the plutonium. It might conceivably be used in lieu of, or supplemental to, radiation shielding in carrying out these acts of plutonium production. [Emphasis supplied.]

Section 153 of the Act (42 U.S.C. § 2183)⁴ relating to “nonmilitary utilization” and compulsory licensing, effectively limits the “public interest” in patents, issued pursuant to section 152, to inventions or discoveries of primary importance in the production or utilization of special nuclear material or atomic energy,⁵ thus :

(a) The Commission may, after giving the patent owner an opportunity for a hearing, declare any patent to be affected with the public interest if (1) the invention or discovery covered by the patent is of primary importance in the production or utilization of special nuclear material or atomic energy; and (2) the licensing of such invention or discovery under this section is of primary importance to effectuate the policies and purposes of this chapter. [Emphasis supplied.]

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Similarly, section 158 (42 U.S.C. § 2188), another “public interest” section, limits special relief in antitrust law violations to patents or discoveries “of primary use” in the utilization or production of special nuclear material or atomic energy. See Helvering v. N. Y. Trust Co., 292 U.S. 455, 464-465, 54 S.Ct. 806, 78 L.Ed. 1361 (1934).

The board held that appellants’ invention is “useful in the production or utilization of special nuclear material or atomic energy,” because it is “proximately related” thereto as a protective agent for personnel engaged in such activities. However, we can find no basis in the legislative history or in the statute itself for such an interpretation, and no presumption of correctness attaches to such interpretation. See Fitch v. Atomic Energy Commission, 491 F.2d 1392 (Cust. & Pat.App.1974).

Appellee argues that the board was correct in holding that there is nothing in the statute that limits its application to. inventions which are solely useful in the production or utilization of special nuclear material or atomic energy, and we would agree. It then cites the board’s reference to the authority .vested in the Atomic Energy Commission by section 31 (42 U.S.C. § 2051) to conduct research and development activities relating to the protection of health and the promotion of safety during research and production activities; also the board’s conclusion that inventions or discoveries falling within the areas of health and safety would fall within the authorized activities of the Commission and thus were intended to be covered by section 152 as well.

The fatal defect in this conclusion is that the 1954 Act struck out section 11(b) of the 1946 Act, which provided:

No patent hereafter granted shall confer any rights with respect to any invention or discovery to the extent that such invention or discovery is used in the conduct of research or development activities in the fields specified in section 3. .

Section 3 of the 1946 Act was the predecessor of section 31 of the 1954 Act. No replacement provision for section 11(b) was included in the 1954 Act to exclude the private sector from patents involving research and development in the protection of health and the promotion of safety during research and production activities.

In view of the foregoing, we hold that appellants’ invention is not “useful in the production or utilization of special nuclear material or atomic energy,” within the meaning of section 152 of the Atomic Energy Act of 1954.

The decision of the board is reversed. Reversed.

1 . At oral hearing, counsel for appellee suggested, as “the most vivid example,” the use of appellants’ invention for personnel in areas around nuclear power generating plants.

2 . H.R.Doc.No.328, 83d Cong., 2d Sess. 7 (1954).

3 . S.Rep.1699, 83d Cong., 2d Sess. 6 (1954) ; H.R.Rep.2181, 83rd Cong., 2d Sess. 6 (1954). It is to be noted that the statement refers to the Act as a whole — not to any particular section or sections, and nowhere in the committee reports is there to be found any statement indicating that “liberalization” was confined to any particular section or sections.

4 . Sections 151 through 160 comprise Subchap-ter XII, “PATENTS AND INVENTIONS,” of the Act.

5 . It is noted that section 11(e) of the 1946 Act, the predecessor to section 153(a), provided: “(1) It shall be the duty of the Commission to declare any patent to be affected with the public interest if (A) the invention or discovery covered by the patent utilizes or is essential in the utilization of fissionable material or atomic energy; . . ..” (Emphasis supplied.) The 1954 Act replaced “essential” with the words “of primary importance.” See Consolidated Engineering Corp. v. United States, 127 F.Supp. 558, 130 Ct.Cl. 504 (1955), cert. den., 349 U.S. 939, 75 S.Ct. 783, 99 L.Ed. 1267 (1955).