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JOHN J. McMULLEN ASSOC. v. ST. BD., HIGHER ED

United States Court of Appeals, Ninth Circuit
Jun 9, 1969
406 F.2d 497 (9th Cir. 1969)

Summary

holding that § 1498 applied where the Government gave implied consent to infringement as part of a Government research grant involving "work of vital importance to the government"

Summary of this case from Madey v. Duke University

Opinion

No. 22225.

January 23, 1969. Certiorari Denied June 9, 1969. See 89 S.Ct. 2016.

Martin Fleit and Harvey B. Jacobson, Jr., of Stevens, Davis, Miller Mosher, Washington, D.C., Erskine B. Wood, of Wood, Wood, Tatum, Mosser Brooke, Portland, Or., for appellants.

Joseph B. Sparkman, Spec. Asst. Atty. Gen., of Buckhorn, Blore, Klarquist Sparkman, Wm. B. Shively, Portland, Or., Robert Y. Thornton, Atty. Gen., Wolf Von Otterstedt, Eugene, Or., for appellees.

Before HAMLEY, HAMLIN and HUFSTEDLER, Circuit Judges.


On this appeal, the principal issue is whether the district court had jurisdiction to entertain this suit for patent infringement. It did not have jurisdiction, and the case must be taken to the Court of Claims, if the patented devises, used in research financed in part by National Science Foundation grants, were "used or manufactured by or for the United States" within the meaning of 28 U.S.C. § 1498 (1964).

For reasons stated in the opinion of the district court, reported in 268 F. Supp. 735, we hold that, in this particular case, the patented articles involved were made for or were being used by the United States, and that the claims of infringement must therefore be dismissed. However, we do not necessarily endorse the district court's general statement that an interpretation of section 1498 which includes all research grants is "required."

Rather than pass upon this general proposition, we restrict the holding to the facts of this case. Here, the patented articles were used in work of vital importance to the government. Additionally, the National Science Foundation grant appears to have been primarily a financing device for work of special interest to the United States Navy. Moreover, the ship employing the devices was used only for research approved and financed by the government.

While the above holding does not, in terms, dispose of plaintiff's trademark claim, we regard that claim as frivolous and properly dismissed for that reason. The record indicates that the United States Navy and the National Science Foundation knew with whom they were dealing and that there was no confusion or palming off by reason of the use, by defendants, of a name similar to plaintiff's trademark.

Affirmed.


Summaries of

JOHN J. McMULLEN ASSOC. v. ST. BD., HIGHER ED

United States Court of Appeals, Ninth Circuit
Jun 9, 1969
406 F.2d 497 (9th Cir. 1969)

holding that § 1498 applied where the Government gave implied consent to infringement as part of a Government research grant involving "work of vital importance to the government"

Summary of this case from Madey v. Duke University

limiting its holding to the facts of the particular case and refusing to hold that all government research grants are covered by § 1498

Summary of this case from Advanced Software Design v. Fed. Res. Bank of St. Louis
Case details for

JOHN J. McMULLEN ASSOC. v. ST. BD., HIGHER ED

Case Details

Full title:JOHN J. McMULLEN ASSOCIATES, INC., a New York Corporation, Appellants, v…

Court:United States Court of Appeals, Ninth Circuit

Date published: Jun 9, 1969

Citations

406 F.2d 497 (9th Cir. 1969)

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