Warren E. Burger: After lunch, we will take up argument in 71-315, Deepsouth Packing Co. against the Laitram Corporation. Mr. Birch, you may proceed whenever you are ready.
Harold J. Birch: Mr. Chief Justice, may it please the Court. The question before this Court this afternoon is relatively easy to state, simply it is a combination claim of the United States patent, infringed by one who manufactures and sells the separate parts in the United States, when all assembly end use takes place in a foreign country. I suppose even more simply the question could be stated, does a combination claim of the United States patent, reach separate, unassembled parts or is it limited to the combination, the assembled combination. It is petitioner's view here that there is no infringement on the facts of this case, that a combination claim reaches only the assembled combination and that it does not reach the separate parts. As far as our considerations here are concerned, the ship which took Deepsouth's parts from the peer in and New Orleans might as well have sunk five miles offshore, the question is whether or not a combination claim means what this Court consistently has held it means and what the statute says it means. Now, perhaps prior to getting into the facts, that is the claim, it would be well for the Court to review or for me to review for the Court briefly what got us here. This case began as an infringement case in the District Court in Louisiana. The respondent, Laitram Corporation brought suit against petitioner Deepsouth, for infringement of two patents. Now one of those patents we call the slitter patent. Its number is 2694218; the other is called the Tumbler or Deveiner patent and its number is 2825927. I would like to invite the Court's attention if I may, to the large buff colored Appendix and more particularly to Page 114.
William O. Douglas: Counsel, is there any issue of validity here at all?
Harold J. Birch: This Court has refused certiorari Mr. Justice Douglas, with respect to the questions presented on validity.
William O. Douglas: It is purely infringement.
Harold J. Birch: It's purely the infringement question as posed in my opening statement. You will note on Page 114, in figure 1, there is a device shown, that's the only device disclosed in this patent and the Court will see that it consists of an inclined trough razor blades there only one set, zigzagging down the trough and water sprays downward upon the top of the blades can shrimp if they could be there in a right angle direction. Now, if you will then turn to Page 443 of the Index, which is in the supplement, you will find a picture of Laitram's commercial device, which shows a plurality of blades on the trough. The only other difference being that the water sprays are omitted in the commercial device, omitted because they didn't work to devein. Now if Your Honors, then we will turn to the large Appendix book to Page 120, you will see figure 1 of the patent there which discloses the commercial embodiment of the Laitram Deveiner, which is a drum, a cylindrical drum to which the slit shrimp are fed and as they go through the drum with a residence time of between one and two minutes, the veins which have been exposed by the slitting procedure with the previous apparatus are either pulled out if they are hanging free or dug out if they are not.
William O. Douglas: On what page is that?
Harold J. Birch: That's on page 122 Mr. Justice Douglas, or 120, essentially the same picture shows in both. If you again will look at the small Appendix on Pages 445 and 446, you will see a picture of the Laitram.
William O. Douglas: I have to have a copy of Appendix, part of which is printed in one way, another is in upside down.
Harold J. Birch: Oh, I am terribly sorry, Mr. Justice Douglas. We tried to correct that with the clerk, may I give you mine or --
William O. Douglas: Get me another one. Justice Marshall's?
Potter Stewart: Could I get a patent on that?
Harold J. Birch: Well, I think so. I don't think there's any constitutional prohibition on that.
Warren E. Burger: While you are stopped, it will help me, if you would explain why this is relevant to the problem of assembly versus non-assembly?
Harold J. Birch: The reason being Mr. Chief Justice that this court has been very explicit in saying that a combination of old elements presents a particular problem and all of the elements here are old. The court has said that when you are looking to the issue of infringement, you therefore look very carefully at the elements whether or not they are new and whether or not there is a co-action, the synergism which the opinion of Mr. Justice Douglas in Anderson's Black Rock pointed out so clearly. And I really wanted the Court to see what the device was like.
Warren E. Burger: We are all clear.
Harold J. Birch: Now if I may invite to court's attention to Page 7 of our Blue brief, petitioner's Blue brief. You will see reaching that page the very concise three element combination claim that is involved. And since it is very short, I would like to examine with you the three elements. An inclined trough down which shrimp are induced to slide, secondly a knife in said trough positioned to be encountered by shrimp to cut the membrane confining the vein, and third a water spray to the trough directed upon the shrimp for sliding them down to the trough and flushing out the vein, as indicated the flushing didn't occur and that necessitated the second patent. If Your Honors will then look at Page 9 of the Blue brief you will see the three element combination claim which is involved in the second or 927 patent. Very briefly one, a support member, two a lip protruding at an acute angle from the support member, and then three means operatively associated with the support for relatively moving the shrimp with respect to said member to cause separation of the vein. Now in the 1972 --
Warren E. Burger: If you will help me again counsel, if you would tell me why is this basic problem any different from what it would be, if it were a typewriter involved with the same issues you have here namely the assembly problem or an automobile or dishwasher?
Harold J. Birch: Probably no different if I understood Mr. Chief Justice, that the typewriter's parts were all old. I am assuming that they are not and they are all old here, but going from this question to the law, I think whatever the combination is, the decisions of this court foreclose in our view, an affirmance of the court below and so does 35 U.S. Code 271 Subsections (a) and (c). Now --
Byron R. White: (Inaudible) that's the end of this whole defense?
Harold J. Birch: No I wouldn't take that position at all Mr. Justice White, if the bolt is a resided element this court's decisions and particularly that in the (Inaudible) case, say clearly that all resided elements in a combination claim are critical. If that is so and the bolt is resided as an element our law says, that that would not result in an infringement.
Byron R. White: So the but as long as one set, but one resided element is not assembled?
Harold J. Birch: That is the law of this Court as I understand it. And the Aro case clearly says that the law of this court has been carried forward without change in Section 271 (a). Of course, here we don't simply have one bolt or one screw, what we have are the three elements in each of the combinations and no one of those elements with the exception of the fingernail belt in the deveiner patent; ever were joined to the other, they were separately manufactured, separately shipped and never joined together in the United States or United States patents are affected. Now, going to 271 (a) the Congress has made it abundantly clear that direct infringement which again this court has held 271 (a) embodies the law of this court. Says, that whoever without authority makes uses or sells any patented invention within the United States infringes the patent. What that provision is clearly telling us is not that someone who makes a machine or sells a machine shall be an infringer. It says whoever shall make use or sell any patented invention, and I underscore that, shall infringe the patent. When we get down to Subsection (c), we there have the provision which Congress enacted specifically to take care of the person who made the parts, but did not directly infringe by assembling the combination. And as this court knows, C resulted from an effort by Congress to resuscitate in part, the contributory infringement doctrine, which I think was given the (Inaudible) by this court in the Mercoid decisions. Now, turning to the decisions of this court, which are very pertinent and many of them squarely in the point. In point not to the foreign shipment, but in point to the question of what infringes a combination claim. I would like the Court just to consider with me briefly a few of them which are very germane. The first of those starting out early indeed in 1840, was the Prouty v. Ruggles decision, where the same three elements we are dealing with here, that is the three element combination claim was involved. There, this court held that the union of all the parts arranged and combined together in the manner described, is the thing patented. In other words, in the words of the section 271 (a), the patented invention is the parts combined together is the thing patented, and that case appears on 19 of our main brief. Then some years later, this Court in the leads cases which have been very widely, widely cited and which relate to a phonograph, and a record in combination held with respect to the parts that no one part of a resided combination is the combination. Indeed says this court, all of the elements are not, they must be united by the same operation of law, that same decision repeated in the companion case. I would like the Court at this point to consider two cases which appear later in our blue brief at Pages 33 and 34, which I suggest are squarely in point and controlling with respect to the law of this Court on the infringement of combination claims. The first of those decisions both being written by Mr. Justice Hughes is the case of Woodward v. Hurd, the second Seim v. Hurd, both decided in 1914. Now these two cases present the classic situations, as decided in the decisions of this Court with respect to what constitutes direct and what constitutes contributory infringement. Here the patented device was again a three element combination, a rim, a wheel, a rim of the wheel, a tyre and wires which tighten the rubber tyre in the rim. The two cases were brought, one against the man who sold all the parts, and the other against the man who bought the parts and assembled them for the first time and Woodward --
Warren E. Burger: I am sorry to interrupt you right there but would it make any difference, if it were not assembled for the first time, if it had been assembled and then disassembled?
Harold J. Birch: If it were first assembled Mr. Chief Justice, and then disassembled, the first assembly would concededly constitute an infringement, because the invention would be made within the United States. If they are never put together in accordance the with these decisions, we are considering the invention is never made. Therefore, any subsequent assembly outside of the country results in no invention of the combination claim ever being made.
Warren E. Burger: This is what the Fifth Circuit thought was the artificiality in part.
Harold J. Birch: That is correct and of course, we differ with Fifth Circuit very vigorously. There is nothing artificial about granting a patent, and then restricting the patentee to the claim he solicited from the Patent Office.
Warren E. Burger: But do you see no artificiality in a different rule, applied to a situation where they would assemble a typewriter or the washing machine to see if it would function and run it through quality control tests, and then disassemble it and go through the process?
Harold J. Birch: No I do not, because those are the rules of our game, and I don't think they are artificial. The statute says makes, that's the making of the invention.
Warren E. Burger: I guess that's what the Fifth Circuit disagreed with you, or they didn't regard this as a matter of rules of the game. They wanted something more concrete apparently.
Harold J. Birch: Well, they went in not to the decisions of this Court, they were not even looked at, they were ignored. They really didn't look at the statute at all, they based their decision on a theory of economic injustice. But where as we ask is economic injustice involved? Where that which is being done is right, and not a wrong.
William H. Rehnquist: Well Mr. -- Mr. Birch, I think the Fifth Circuit regarded this thing as a subterfuge, and you can cite 20 cases and the impression remains in my mind that it still is a subterfuge. Now, granted if it's a subterfuge permitted by law, and probably the Fifth Circuit should be reversed but it seems we’ve got to address ourself more than you do to the justice or the equity of it rather than just citing a bunch of cases.
Harold J. Birch: We are coming to that. All I wanted to establish Mr. Justice Rehnquist is what the law was in this court and I think it's clear and there is no dissenting voice in any decision of the Court. Now when we get to the policy decisions, several of them have been set forth in respondent's brief and also by the court below. In the first place, they say that you should protect a foreign market for a domestic patentee. I see no policy that requires or even suggests that a foreign market should be protected by a domestic patent, that patent is to protect the patentee in the United States. 271(a) clearly says that, if there is making, using or selling within the United States, it doesn't say Brazil.
Byron R. White: Why don't you exempt sales abroad of the assembled merchandise.
Harold J. Birch: I don't think -- I think they are exempt. That's the very point of the argument.
Byron R. White: Right.
Harold J. Birch: If they blew -- you mean, if they’re assembled in the United States--
Byron R. White: They’re assembled, but they are assembled when everybody agrees they are assembled to be sold only abroad.
Harold J. Birch: Yes.
Byron R. White: No entry in the United States market.
Harold J. Birch: Because our law which as Mr. Justice Rehnquist has pointed out, if it's there, we have to content with it or reverse it. Our law says there is no infringement unless it is made within the United States. And if it is not, then there is no wrong to be enjoined. That I think is the answer to the question. Now, our understanding of the purpose of the patent, as very clearly pointed out again by Mr. Justice Douglas in the first Mercoid decision is that we have the public interest being paramount. The right to freely compete being paramount. And the only thing you subtract from that with the limited monopoly, that's given by a patent for a very limited purpose is that which is clearly within the scope of the grant and if a combination claim is awarded only because the combination is the invention, there is no infringement, there is nothing that should properly be taken away from the public, when that combination does not come into being, within the United States. Perhaps --
Byron R. White: I understand your latest argument that you would relegate the patentee to foreign patents to protect himself?
Harold J. Birch: I think that is his responsibility. If he is going to employ the economy of the foreign country to make his money, if he is going to do his merchandising there, in accordance with the rules of the difference between our own state courts. If someone is going to come in and use the economy of the state, they should go to that State Court for their redress, I think the same is true in the foreign country and the answer is yes.
Byron R. White: Well except the juror that the impelling rule is your clients, not the patentee, is it not? Your client was shipping these parts abroad.
Harold J. Birch: Well there is no reason for our client to do anything in the absence of a Brazilian patent. Now there is a Brazilian patent and these parties are now involved in litigation, the customer that brought about this suit here is involved in litigation with Laitram in Brazil because they bought the parts.
Byron R. White: That was my next question.
Harold J. Birch: Yes.
Byron R. White: Whether there was a Brazilian patent.
Harold J. Birch: There is, and I have the complaint here in both Spanish and English, I cannot read the Spanish.
Byron R. White: Of course, the only way for the patentee to protect themselves would be to get a patent in every country in the world?
Harold J. Birch: Well not necessarily, because shrimp show up in relatively few countries around the world. I would answer you yes, whether our shrimp yes, but that's where he is making his money. And I see no fair reason why he shouldn't be expected to use the patent system in the Courts of that country where he is making his money, in order to protect his invention there. United States patents by definition do not have extraterritoriality. Now there are some statements made in respondent's brief with respect to copyrights. If the Court will examine those cases you will find that there are two copyrights that's in Appendix A, Mr. Chief Justice. Copyrights also have no extraterritoriality. The reason being that the copyright and the patent arose under the Patent clause of the constitution. Trademarks and antitrust prosecution arose under the Commerce Clause and that's a whole different ball game. But with regard to both patents and its copyrights, it's clear they are to have by the decisions to this Court and the lower Federal courts, no extraterritorial effect. Now, the second policy consideration raised is that affirmance of Court below would prevent evasion of combination patents. Our answer to that is that under the law of this Court and the law that has existed for 180 years and gone through a codification in 1952 reportedly without change, there is no evasion. You have a right to operate outside the scope of claims and that's all that petitioner and people in the same position here did. It's urged that there is discrimination between manufacturers of large devices and small devices. The manufacturer of the small device has every opportunity to sell his device in parts as the manufacturer of the large device. And notice that in the three conflicting cases, in the Second, Third and the Seventh Circuits all sorts of devices are involved. In Andrea where the decision was against that of the Fifth Circuit, a radio was involved and it was a question of of whether the tools could or could not be put in with or without infringement. In the Cold Metal case there was a three-element combination again of rolls, journals and bearings. Then in the Hewitt-Robins case in 1965 and 1966 in the Seventh Circuit, there was a huge machine involved which were shipped in parts, a bridge, a reclaimer wheel and supporting structure. But the small man has every bit as big an opportunity to send his equipment overseas unassembled as the large one. Then the point is raised that unless the court below is affirmed, there will be a multiplicity of lawsuits. That one escapes me completely. As of the law now, with the three conflicting decisions squarely in point and the law of this Court stating that there is no infringement of a combination claim without assembling, there is no action that can be properly brought against the person who sells only the parts. If the Fifth Circuit is affirmed on the other hand, you not only have direct infringement against the manufacturer of the parts, you have direct infringement against a factor who goes out as the man in Woodward v. Hurd did and buys all the parts, collects them together and resells them. And then you will have an action for contributory infringement against every vendor who supplies a part that isn't a stable article of commerce if that part is especially adapted to go into the combination. So as far as litigation is concerned, I think you are opening Pandora's box. There will be a great multiplicity of lawsuits resulting from an affirmance of the court below.
Potter Stewart: Mr. Birch, as I was reading the briefs in this case, I was hearkened back to the earlier days of my fatherhood when I used to spend the Christmas eve, sometimes a ball night and end up with a lot of bruised thumbs having purchased what I thought was a coaster wagon and come in a box, and instead of a coaster wagon there will be a lot of parts, that was up to mother and father to assemble. Now let's assume that there was a good firm patent by somebody else on that particular kind of coaster wagon, would your argument go so far as to claim that the big box of disassembled parts to be put together at home by the buyer that that would not be an infringing?
Harold J. Birch: Not at all. If the box was shipped outside of the United States and there was no assembling.
Potter Stewart: Well, I might be infringing, when I put it together, but how about the person who sold the box of the disassembled parts to me?
Harold J. Birch: The Statute is specifically designed to take care of precisely that.
Potter Stewart: He would be a contributory infringer.
Harold J. Birch: He would be a contributory infringer under 271 (c)
Potter Stewart: C, but he would not be an infringer in your submission, is that correct?
Harold J. Birch: It would not be a -- but the same remedy would lie and the same recovery against the same defendant would be obtainable. The fact that you are calling a contributory infringer in Section C.
Byron R. White: Difference between a direct and contributory.
Harold J. Birch: Yes, the difference between direct and contributory is semantic as long as what occurs --.
Potter Stewart: I would be the infringer assuming that I could ever get the thing assembled which --
Harold J. Birch: Yes, you too would be an infringer.
Potter Stewart: And I would be the only direct infringer on the --
Harold J. Birch: That is correct but as has been pointed out in respondent's brief there is a rather strong policy in this country not to go around suing and the courts do not favor suits against individuals who would be in your position with the bruised fingers. But --
Potter Stewart: But the seller or the manufacturer of those disassembled parts would be contributory infringer --
Harold J. Birch: He would be a contributory.
Potter Stewart: He would be in the United States and that's the only difference between my typical case and yours.
Harold J. Birch: That is correct and he could be sued and full recovery got from the man who manufactured and/or sold the parts. It is only when you don't assemble in the United States that this question comes up. And as the Andrea case had said this really isn't the technicality that it is accused of being, because no wrong is done and no wrong is done because no infringement occurs. And if no infringement occurs, no liability and that is the firm policy behind those three decisions and I think that the decisions of this court backed that up completely. I have --
Potter Stewart: Does Deepsouth have in the United States?
Harold J. Birch: Deepsouth has one very small factory.
Potter Stewart: That it assembled in that factory, all of these devices that are sold in the United States market.
Harold J. Birch: Everything that is sold by Deepsouth is made in one small building and I believe there is a total workforce of four or five.
Potter Stewart: Four or five individuals?
Harold J. Birch: Individuals, that is correct.
Potter Stewart: But for the United States market the three elements you mentioned are assembled, put together in that factory for all sales in the United States?
Harold J. Birch: No the completed device is not put together. Two of the elements are. The water header, the trough which is a reciprocating trough in the Deepsouth design are put together. The razor blades, the long blades that go to full length of the trough are always supplied separately, perhaps for the reasons suggested before cut fingers and the like. They are put together by the customer. Deepsouth was held however to be an infringer under those circumstances and Laitram has full recourse against them under that decision just as if it had been manufactured entirely. Now the belt conveyor or the deveiner has in fact, always been manufactured completely by Deepsouth. I have just a few minutes Mr. Chief Justice, may I reserve them for rebuttal.
Warren E. Burger: You may. Very well, Mr. Birch. Mr. Shoup.
Guy W. Shoup: Mr. Chief Justice, may it please the Court. First in direct answer to Mr. Birch, there is no controlling precedent on this matter before the court at all. There is not one Supreme Court decision that relates this issue, it has been decided since this country was organized. This is the first time it has come to this Court. So you might say that what we are talking about here is the Fifth Circuit decision. And possibly Andrea too.
William O. Douglas: That's a second decision.
Guy W. Shoup: That was the second decision in the Radio case.
William O. Douglas: And are the Fifth and the Second Circuit judge all to this --
Guy W. Shoup: Yes the Fifth, the Fifth Circuit put it very concisely saying that the District Judge followed the Second, Third and Seventh Circuits and then he said in the next sentence what he did not know was that we would refuse to follow and went on from there. I would also like to put in perspective the word combination.
Byron R. White: Do you think there's something in our case that within the case that if there are three elements making up the combination, two of them are manufactured here and one of them abroad, that there was no infringement, if the two that are made here are sold in this country or shipped abroad?
Guy W. Shoup: There is no Supreme Court case on that particular point, Your Honor.
Byron R. White: Not even relevant to what a combination of patents do?
Guy W. Shoup: Well, there are cases interpreting combination patents but always in terms of the technical question of whether or not the claim for the patent read on the machine and operation or read on the substance.
Byron R. White: Well in the event like this there would be no infringement --.
Guy W. Shoup: Well, there might possibly be contributory infringement but the facts of this case are fully not developed to answer that question. 271 (a) says whoever makes, uses, or sells. Now what is it that is made, used, or sold? Let's go to 35, to Section 101 of the Patent Law which defines patentable invention. Patentable invention is the thing that the person can't make, use, or sell.
Byron R. White: And that's here with the combination.
Guy W. Shoup: Well, in this case it would be a machine, Your Honor, because there are four types of things which are patentable inventions and that is set forth not in any of the parties briefs that are at Page 94 of the Appendix, the statute is set forth. And there are four types of things that are patentable; machines, manufactures, compositions of matter, and processes. Here we are talking about a machine, really two machines, but a machine and in this case, the seller calls it a machine, the buyer calls it a machine, the foreign government calls it a machine, the foreign customers private bank calls it a machine, the United States private bank for its letter of credit calls it a machine, a machine. So I submit that a machine has been made and sold within the United States.
Byron R. White: But it has to a patentable invention come up with --
Guy W. Shoup: A patentable invention, that's correct Your Honor, and but the invention, the word combination does not appear in the portion of the Patent Statute that defines patentable invention.
Byron R. White: But these three elements alone wouldn't be a patentable invention?
Guy W. Shoup: If they had never been put forth -- Together.
Guy W. Shoup: Put together before.
Byron R. White: Would they?
Guy W. Shoup: They would, if the man had in his mind, the idea of putting --
Byron R. White: This couldn't file the patent obviously --describe these three items.
Guy W. Shoup: No, you cannot.
Byron R. White: Never say anything about how they are going together and what they are going to --
Guy W. Shoup: You have to describe a cooperative relationship among the elements in order to obtain the patent.
Byron R. White: If the elements are old?
Guy W. Shoup: If the elements are old or new, as a matter of fact, you got to describe some sort of relationship at any time. The word old elements is almost not relevant to this case at all. Let me go to something that Mr. Justice Blackmun said when he inquired about foreign patents which is quite relevant. There are an excess of 100 jurisdictions in the world that have foreign patents and when a man has an idea that he thinks is commercially valuable, a clock starts running against them and that clock starts at different times in different parts of the world. For example, in the United States, he puts his device on sale, he has one year to file. Somewhere, in some other country in world, the minute he has to file before he tries to market his device. So in the United States, he files his application in the United States and he put his device on the market before them, he is precluded from getting a patent in the foreign country. I also might say that the litigation result was not commenced by the respondent, it was commenced by the customer petitioner and the extent of it has been the filling of a complaint and there was no summons ever served, the case as far as I know is completely defunct.
Speaker: (Inaudible)
Guy W. Shoup: No, back to Andrea, in Andrea 2, in Andrea 1, a statement was made, “No wrong was done the patentee until the combination is formed.” What that clerk was saying is that the patentee did not have a cause of action. They were stating a result and the sentence before that, that says, nor is this so highly technical as it might seem, seems to vindicate it. A small amount of defensiveness on the part of the Court in handling that problem. They come back to Andrea 2, they put the tubes in the radio. They pull them apart and the Court says, it doesn't matter whether the parts are disconnected at the time of sale and Judge Swan says, aha, we have overruled Andrea 1 because we don't have to have final assembly at the time of sale, and I submit that Judge Swan viewed Andrea 2 correctly. So what is before this Court is Andrea 2 and the case below. Let's go to the perhaps most difficult case, the Hewitt-Robins case, the last case that considered this question, the ore reclaimer, the patent on the ore reclaimer issues in the United States. I go to the Patent Office, I see the patent, it's an enormous device. If I go to a manufacturer, we copy the exact pictures in the patent. It's a huge thing, we sell it to the man in Turkey. We never put the things together. We just copy the patent. That's the result of Hewitt-Robins. The result is that any large device, or any device at all, large or small, can be copied exactly so long as there isn't some sort of an evanescent mechanical connection or electrical connection within the confines of United States.
Potter Stewart: Well it's like the (Inaudible), if we come over here and copy, go back and make it.
Guy W. Shoup: That's right. It's perfectly infringing. I think in Hewitt-Robins however there were two or three points involved. One of them was domestic, it's probably not relevant. Now as to the economic run, Section 284 of the Patent Act provides for monetary recovery when someone infringes your patent. Section 284 talks in terms of use of the invention. In this case, use of the patented invention, and this use can encompass any one of the three acts of making, using, or selling. So the patentee is entitled to a monetary recovery regardless of whether the man has made, used, or sold the invention. Those acts are mutually exclusive. In other words, you don't have to use if you make, you don't have to sell if you make, they are completely exclusive one from another. And the economic (Inaudible) is the inability of the patentee in this case to collect from the person that has infringed his patent by making the patented machine. Back to Andrea 2, and the majority opinion which says, infringement may not be avoided by a separation or division of courts which leaves to the purchaser a simple task of integration. Reflecting on Andrea 1 which allows the hypothetical that I put of the man going to the Patent Office and copying and making all the parts in the United States selling in FOB in New York, San Francisco, New Orleans, wherever, and off they go. Now, to answer petitioner's reply brief, they've made some remarks about freedom to copy right up to the extent of the claims of a patent and practically every time a patent is litigated in the United States, the scope of the claims is at issue and there are a number of doctrines that operate in favor of the patentee, there are a number of the doctrines that operate against the patentee, when these claims are put at issue. So a narrow technical construction of makes or sells would be out of step with the judicial doctrine that is has developed over the last 150 years. Examples of these, and they all occur in this case, as a matter of fact, are equivalence which allows the patentee to go, it doesn't hold them to the exact literal words of this claim. Two examples, one of which was -- both of which were asserted, one of which was applied in this case, are file-wrapper estoppel or statements he makes to the Patent Office restrict him within the literal words of his claim. Another example is a doctrine called negative equivalence even where the claim reads right on the machine, the patentee has to prove that the machine is even more an exact copy than the claim might indicate.
Potter Stewart: We have no problem with equivalence here, do we?
Guy W. Shoup: Not whatsoever, but I was merely pointing out to the Court that there are a number of equitable doctrines that have developed to both limit and expand the patentee's rights during this Court interpretation of the patent system, and the Fifth Circuit correctly realized, I submit the lack of necessity for a legalistic construction of the word makes or sells. The multiplicity of lawsuit argument that Mr. Birch made, it seems to me that you want to settle all disputes between the two parties who are really having a war in the same place, if at all possible. Mr. Birch's suggestion would -- we must assume that the patentee is going to try and sell his machine wherever there is a market for it, whether it's in the United States, Brazil, Japan, wherever, under the result we urge, this dispute can be resolved in the United States Court and the patentee is not forced to go overseas and sue its customer or sue his perspective customer. It could be settled, let's say, in one forum. In this case -- in this situation, the result that we urge is a little bit analogous, for example, to the Blonder-Tongue case a year or so ago in this court where the patentee in effect cannot go around the United States and bring 11 lawsuits and get 11 cracks in having this patent help valid. The affirmance of the case below, the decision below is completely concerned with the U.S. constitution because the quid pro quo in the Patent Clause of the constitution, is you get something for your disclosure. In this case, with respect to the export market, you get nothing for your disclosure. If this court reverses the court below, the result will be the complete exemption of exported patentable inventions namely machines from coverage of the United States patent or stated differently, the total emasculation of the United States patent system as it's applied to exported machines and articles of manufacture. Now regardless of where those articles were destined for in any --
Warren E. Burger: Would that be true if patent had been obtained on the same machine in another country?
Guy W. Shoup: Excuse me, Your Honor, I don't understand your question.
Warren E. Burger: Suppose the patent had been obtained in Brazil or whatever other countries, would your conclusion follow or were you just addressing yourself to the coverage of the United States patent?
Guy W. Shoup: I was addressing myself to the coverage of the United States patent, yes. Yes. In a country where there would be manufacturing resources present and there might be a manufacturing competitor, it might be necessary to obtain a patent, patent in terms of patent? I have nothing further to say other than this is a classic case of the substance in form and in recent decision substance is a preferred victor over forms and form should not triumphed here. Thank you.
Warren E. Burger: Thank you, Mr. Shoup. Mr. Birch, you have two minutes left.
Harold J. Birch: Thank you, Your Honor. The brief of respondent has gone at great lengths and the same argument has been made here about the meaning of the word machine. That is a red hearing. What we are talking about here is the patented invention. I think that was made clear by the questions from the bench. You don't make a machine with an invoice or a letter or a letter of credit, you make it with nuts and bolts and wrenches and this was what was done only in Brazil. Now there is no total emasculation of a man's rights, if he doesn't get a patent which covers him in the United States, whatever it is he's sold, if he can go into the foreign country and get it, he is protected. Again, that's where he makes his profit, that's where his market is. Now all of these equitable doctrines of doctrine of equivalence, doctrine of negative equivalence and the like, all depend upon something that Mr. Shoup has not mentioned and that is the making of an invention in the first place. Unless an invention is made, there is no equivalent to worry about. The point here is that an invention is not made in the combination sentence, and I believe it is most material as Mr. Justice Rehnquist brought up, that if the law is that you must assemble the combination in order to have something patentable, you must reverse. That is the law of this Court. It is no subterfuge, that is what the man got his patent for, a combination, unless the defendant makes it, there is no infringement. That is a technicality, that's just giving the man what he has coming to him.
Potter Stewart: And unless somebody makes it in the United States you say there can be no contributory infringement.
Harold J. Birch: That is correct, that is clear from Aro (ph). Unless there is a direct infringement, there can be no contributory infringement and there is no direct infringement as we've pointed out in the Supreme Court cases before, are squarely on target, it didn't correct to say there is no authority, there is authority. Thank you.
Warren E. Burger: Thank you Mr. Birch, thank you Mr. Shoup. The case is submitted.


Warren E. Burger: We’ll hear arguments next in number 71-1456, Salyer Land Company against Tulare Lake District. Mr. Greer.
Thomas Keister Greer: Mr. Chief Justice and may it please the Court. This case is here on appeal from the United States District Court for the Eastern District of California. Like the case which the Court just heard, it also involves the question of the franchise in a water district. The Tulare Lake Basin Water Storage District comprehends approximately 193,000 acres, almost entirely in Kings County California in the Southern San Joaquin Valley. There are nine water storage districts in California. There is no magic in the word storage in the title. It functions like an ordinary water or ordinary irrigation district. The thing which sets a water storage district apart and the reason that these appellants are here today are two California statutes governing a suffrage in a water storage district. The first is Section 41000 the Water Code. It’s very short and clear into the point “Only the holders of title to land are entitled to vote at a general election” and the statute immediately following Section 4100, “Each voter may vote in each precinct in which any of the land owned by him is situated and may cast one vote for each $100 or fraction thereof, worth of land.” The appellants, plaintiffs below include a large land owner. A Salyer Land Company Farms approximately 28,000 acres of land in the district and about another 28,000 immediately outside. It includes a small landowner Harold Shawl has one-half interest in 65 acres in the district. It includes a nonlandowning resident, Lawrence Allison who is 67 years of old, has resided, has worked in the district. It’s stipulated in the record that he is actively interested in water matters, subscribes the water publications. Interested in water as is any normal human being in this part of California can’t vote.
Warren E. Burger: What’s the high and the low of these two large and small voters that you mentioned on the $100?
Thomas Keister Greer: The J. G. Boswell Company, Mr. Chief Justice, owns some 61,000 acres in the district. I think it leases an additional 8 or 10,000 acres. It farms approximately 40% of the district and has about 40% of its water. The -- there are some landholdings that are down to lessen -- to less than 20 acres. I think there are 189 landowners in the district who own about 2.34% of the acreage. They own up to 80 acres of piece. So there is a pattern of a good many small landowners and four large landowners. One of which is that the appellant Salyer Land Company.
Warren E. Burger: Then who -- how many votes did they get under this farm?
Thomas Keister Greer: The J. G. Boswell Company gets 37,835 votes. There is an exhibit in the record, the voting list of the last election that was held in the district. The only election has been held in the district in 25 years. A special election is called import by my client and that voting list is a source that information 37,825 votes for that one company. Now, these appellants attack these statutes in the court below and they were both sustained. The majority sustained each statute, Circuit Judge Browning concurred in the exclusion of residence. He didn’t think there was enough governmental impact to justify giving the ballot to residents but he dissented on the waiting of the franchise. Circuit Judge Browning wrote a good and lengthy opinion. He couldn’t go along with a notion of granting one vote for each $100. Mr. Chief Justice and members of the Court, to gain a notion of what this country looks like, there is an aerial photograph which is exhibit 1 following page 66 in the appendix. This district is divided into 11 divisions which brings up what is to me most -- one of the most interesting facets of the case and in its present posture. Each division is represented by a director. The directors are supposed to be chosen at these biennial elections which are held. Now, the plaintiffs below, when they filed their suit, of course the complainant set forth in the appendix, also attacked the manner in which the divisions had been created. The manner, I should say, in which they have been maintained because the assessed valuation in one of the divisions was as low as $600,000 in assessed valuation of one of my clients, Reid Sawyer was $2 million. And we said that among the other things we said at any rate, there are to be some equity in the way these are setup according to assessed valuation. And we got a unanimous ruling of the court below on that. The all three judges said that these divisions would have to be withdrawn so that they represented the same number of dollars. The decisions may be considered unique in that extent and would seem to enunciate a doctrine which I might call, one dollar one vote. Now --
Harry A. Blackmun: That issue is not here?
Thomas Keister Greer: No, sir. Mr. Justice Blackmun, while the district -- while insisting in the court below vigorously insisted that it wasn’t a governmental unit and are continuing to insist that in the briefs before this Court did not file a cross-appeal. Now, I don’t mean to belabor the point but the court below relied on the Equal Protection Clause and said that those unequal divisions didn’t consist with equal protection. It had defined, it’s a necessary credit to the decision, that the district had to be a governmental unit for to invoke the Equal Protection Clause as in the other decisions of this Court involving a disparity in the size of districts like the Hadley case or the first case in which this Court met the local governmental issue, the Avery case, Midland County, Texas and we think that since there has, since the Court did rule that way, and since there has been an appeal that the issue of a governmental nature of this district, I can establish it to you without this but we respectfully submit that it maybe the law the case.
Byron R. White: Well, isn’t your opponent’s brief stand the judges below on any ground he wants to even if it was rejected in the lower court?
Thomas Keister Greer: Well, I think my point Mr. Justice White is that the court below had to say that this is a governmental district in [Voice Overlap].
Byron R. White: I know, but he says it isn’t. His position was rejected below.
Thomas Keister Greer: To that extent, yes sir.
Byron R. White: Yes, but can he sustain?
Thomas Keister Greer: I wouldn’t want to foreclose him from any argument you might wish to make but I just say that it occurs to me that the governmental, the nature of district below maybe -- may have been adjudicated without appeal. Mr. Chief Justice, members of the Court, there are 77 residents unless they be landowners, they can’t vote. I have mentioned Lawrence Allison. I said a little bit about the landowners, they are 307 all of them together. I have mentioned that there are 11 divisions; six of those 11 divisions are controlled by the J. G. Boswell Company with those 37,825 votes. Two of the divisions are controlled by the Appellant Salyer Land Company. Two are controlled by another corporation, West Lake Farms and one by South Lake Farms. Now, the rigidity of that control is made very express in this record. The Frist (Inaudible) of the district based on 1967, based on my guess 25 years is still present today. Mr. Louis T. Robinson told the California District Securities Commission in 1967, “I know you shouldn’t forecast elections and that causes me a little hesitancy to say what I’m going to say.” The 11 divisions in this large farming operation are completely controlled. You are going to have the same 11 directors on Tuesday that you got today with one exception. One of the directors is having some health trouble, he is going to be replaced but other than that they are going to be the same 11 directors and he continued (Inaudible). I have no concern about the election. Suddenly, if a new board of directors would come in, why then I have nothing but opinion but I have no concern about the election. The 11 divisions are controlled by people with enough votes, put back the same electors, they have the same directors they have now including the two Sawyers had been sitting at this time, they’ll be returned, the other nine will be returned. Now, what Mr. Robinson says about an election requires some explanation and I opt to say in the response to a question asked by Mr. Justice Marshall in the preceding argument that the California Water Code provides these elections shall be conducted in all respects as our elections governed by the Elections Code, that’s Section 41367 of the Water Code. These are supposed to be bona fide public elections without curtaining, without secret ballot upholding and everything else. And the legislature intended that there would be one every other year. Section 41300 of the Water Code says an election known as the General Water Storage District Election shall be held in each district on the first Tuesday in February in each odd numbered year, that which a successor shall be chosen to each officer whose term expires in March next thereafter. Mr. Chief Justice, the last election, the last general election this district presented 1947.
William H. Rehnquist: We have a remedy under state law if you object to that.
Thomas Keister Greer: There is a provision that 15% of the land owners can call a special election, that election which we called in 1967.
William H. Rehnquist: Does Salyer have that 15%?
Thomas Keister Greer: No. Well, I beg your pardon. Yes, just about 15.9% but we were joined in certainly any other -- of the other people out there joined with us. West Lake Farms, I think joined us. And that is the only election and this has made manifest in the record. That’s the only election which has taken place since 1947. There is no motive for an election. Votes already been counted. An election --
Warren E. Burger: Are you telling us that that’s the reason no election is held is because anyone knowing all the facts, will know the outcome of the election?
Thomas Keister Greer: I suspect Mr. Chief Justice, that that is true. I read my good friend and the opponent’s brief in this case. And he said in defending this system, he said that I’m quoting from him on page 27 “one good test” he said “of an electoral system is artwork’s natural operation. In the way this one works in actual operation as there hasn’t been a general election for a quarter of a century.”
Warren E. Burger: We’ll resume there after lunch.
Thomas Keister Greer: Thank you sir.[Noon Recess]
Warren E. Burger: You may resume Mr. Greer. Excuse me.
Thomas Keister Greer: Mr. Chief Justice, may it please the Court. This case and the case which the Court just heard, deal with special districts. The view of these appellants is that in determining whether or not the voting rights cases should apply to a special district. The crucial question is, but what is the district concern? Tulare Lake Basin Water Storage District is concerned with water. And the control of the water in an agriculture -- in an agricultural area is the control of everything. I seem to recall that the Ancient Greeks spoke of the four basic elements of among others as earth, water and fire. This one is water. Now there are myriad of special districts in California, I suppose in most states. For example, California has Mosquito Abatement Districts. We wouldn’t have brought this case here from California to determine a question, the franchise in the Mosquito Abatement District. But to show the enormous impact of this district, the enormous governmental impact. Consider first at the very beginning Section 43158 of the California Water Code. Now a question was asked in the preceding argument, does this district -- the district then involved acquire any rights just by the virtue of being formed? This one does, and I quote the statute “All waters and water rights belonging for the state within the district are given dedicated and set apart for the uses and purposes of a district.” The --
William H. Rehnquist: What typically, what water rights would belong to the state in a district such as this so they come within the definition?
Thomas Keister Greer: There would probably be a number of filings of the Director of Finance on the four streams going into Tulare Lake, the Kings, the Kern, the Tule, and the Kaweah Rivers. Some of them might be in court on a number of might be vested rights if there would be a large number of potential on proscriptive, appropriative, and riparian rights.
William H. Rehnquist: And the state in effect says that the district takes over for the state in that instance?
Thomas Keister Greer: Yes. The language was given, dedicated, and set apart for the uses of the district. Now, the Attorney General of California was asked in 69, what the nature was of this particular district. The district did have a major flood and it was getting ready to apply for some federal funds and it requested an official Attorney General opinion to submit to the Federal Government on the nature of the district. The opinion of the California Attorney General is set forth on pages 17 and 18 of the district -- of the appendix and as referred to again on page 61 and the crucial part is this. This is an answer to your quest for an opinion -- for our opinion on the status of the Tulare Lake Basin Water Storage District as a political subdivision of the State of California. I have concluded that water storage districts are considered political subdivisions of the state. The Attorney General cited the leading case, Glenn-Colusa Irrigation District against Ohrt, 31 Cal. App. 2d 619. And that case contains a very explicit statement of the governmental nature of these districts and also sets forth a very clear distinction between this district on the kind of district that was involved in the case which the Court just heard. As I read the decision of the Wyoming Supreme Court in the Towtek (ph) case. The case went off only proprietary nature of the district. The court used the proprietary and said that that was a proprietary type district. The Glenn-Colusa case cited as I say by the Attorney General of California and the leading case says this, “State agencies such as irrigation or reclamation districts are agencies of the state whose functions are considered exclusively governmental. Their property is state-owned, held only for governmental purposes, they own no land in the proprietary sense.” Now this district has the problem in domain. It has it, not at exercises. Its assessments are lands on all land of district. It’s covered by the special statutes in California governing the immunity of governmental agencies. There is a special system in California whereby governmental agency can validate its actions to follow suit, to validate a contractor, devote in anything else it does, to get an interim judgment against the world and its -- when its final, its transactions can never be questioned. A very useful procedure and when it’s a great deal used. This district has the privilege of using that procedure, Section 860 and following Sections of the California Code of Civil procedure. This district in a lawsuit filed in Federal Court and for us to know the same court that we’re here today from, the Eastern District California intervened parens patriae in a case which was filed on the issue of acreage limitations. And said that it had the right to appear parens patriae in behalf of the entire Tulare Lake Basin and we submit that if there is anything which is of a governmental nature, it’s appearing parens patriae. Mr. Justice Douglas in the case of Georgia against Pennsylvania Railroad back in 1945, who did Mr. Justice Holmes in the case of Georgia against Tennessee Copper Company, saying that that was quasi-sovereign. This district owned its application to the Federal Government in closing that opinion from the Attorney General that $234,000 in federal funds. We are told in the briefs of this gentleman opposing us and the amici curiae have insisted on this, all the bills are plead by the landowners. The landowners didn’t pay that bill. The -- every citizen in that district had an equal interest in that federal money $234,000 and the rest is nevertheless have not the right to vote.
William H. Rehnquist: Well, counsel on the last case observed it lucky. He’s gotten a lot of federal money too. And that presumably that didn’t give the right of every resident in the lucky board of directors. Are you saying that receipt of federal money is determinative in this case?
Thomas Keister Greer: No, I say Mr. Justice Rehnquist that it indicates the governmental nature of the district and it also refused the notion that all the financing comes from the lands, that’s all I say.
William H. Rehnquist: Well but the Federal Government does give up money on occasion or a loan money to non-governmental entities, doesn’t it?
Thomas Keister Greer: Well, if in this particular instance, a statute under which it proceeded was a statute limiting grants to governmental agencies for road repair, dam repairing and that sort of thing fallen by disaster. This was under the Office of Emergency Preparedness for relief of governmental agencies which had suffered disasters. Now, the power of this district that I think is the most important is flood control. The gentleman opposing me and the amici have said, well this district concerns property. It doesn’t concern people at all. It exists to serve property. It doesn’t do anything of interest to people and one of the briefs said none of the residents are interested in or affected by anything that this district does. Second, the -- this matter of flood control jurisdiction is the immediate reason why the appellant Salyer Land Company determined to attack the weighted voting system. And I would like to speak very briefly about the legal history of flood control and water storage districts. The Act was passed in 1921. The declarations of policy are in Section 58 of the Act, Stat. 1921, c. 914 at page 1766. The expression of prevention of flood is found twice in the paragraph and spoken off as a purpose necessary to the accomplishment of a purpose that is indispensable to the public interest. Now, the water storage district law was codified in 1951 based on the Water Code and those declarations of policy were omitted to superfluous. But flood control is still specifically referred to in Section 44001 and telling the purposes which the district may operate that they cooperate in contract with the districts with the state of California or the Federal Government. It says, for the following purposes, construction, acquisition, purchase, extension, operational maintenance of works through irrigation, drainage, storage, and flood control. The leading case in California on water storage districts is Tarpey against McClure. The statute was passed 1921. A suit was immediately filed to try to get the legislation declared invalid. The California Supreme Court in Tarpey which was decided two years later in 23 held that the Act was valid. One of the reasons urged for its invalidity was that contrary to the California Constitution, it embrace more than one subject and the California Supreme Court which deals with water all the time were told that it has decided over 3,000 cases dealing with water law said this. What they said was, they said the flood control and irrigation are two sides of the same point. They said that that’s all one subject. The actual language of the Court is as follows. The conservation of water by means of flood control work is to restrain flood waters which otherwise, it overflow the land and go to waste. And incident there to, the reclaiming of the lands which otherwise reveal were floated rendered useless, the storage and distribution of such water purposes, irrigation all seems to us to be so legitimately and eminently connected one with another as not to constitute different subjects within purview of the Constitution. It may be said that in these respects, the Act Test with a single object to wit, the better control and utilization of water. Now, this district drew out its career until one time carried out extensive flood control jurisdiction. Exhibit 5 is a 1953 Report from the present district that goes on for 20 or 30 pages on all the flood control things that it is done. And I have excerpt it and then printed in a trial -- a printed trial brief re-filed below. All the matters that pertained to flood control are not in the appendix but they are in a readily accessible form, should the Court wish to see it. Finally, my learned friend, opposing Counsel Mr. Newell stated in his trial brief, a printed trial brief filed in the court below, that this district he represents is “an agency authorized by the North California to engage in a reclamation of water to reflect protection, drainage and irrigation works.” And I therefore take it that the flood control jurisdiction of this district is no longer a matter that’s open to question. That brings me to the major floods of the last 20 years which have led to this litigation. Tulare Lake Basin Water Storage District occupies a dry lake. It’s dry in normal years, their dams on all four, all four the streams, the Kings, the Kern, the Tule, and the Kaweah. But in an extraordinary year, in a flood year, water comes into the district. Water overflows this rich farmland and in 1906, 1917, 1938 -- 1937, 1938, 1952 and 1969, some more or greater portions of the district were flooded. 1906 was a legendary year and so was 1969. 88,000 acres of the district land is flooded in 1969. Well now, they can tell when it’s going to be a flood year. The -- they can see the snow packed up on the mountains and the engineer say that water content is very high and snow pack is much ever unusual, we are going to have a flood. Buena Vista Lake has a capacity of 235,000 acre feet. It’s on Kerr County on the Kerr River south of Tulare Lake. The relation between them is shown on exhibit 4 which is printed in the appendix. Always, when it’s evident that there is going to be a flood on the Kern River, Tulare, the people of Tulare Lake and the people in this district have notified the governing powers of Buena Vista Lake take your flood water before you turn it down on us. The record is clearly made on that. In the appendix, there is -- there’s excerpt from the minutes showing that in 1952 --
Warren E. Burger: What page if --
Thomas Keister Greer: Beginning at page 41 Mr. Chief Justice.
Warren E. Burger: Thank you.
Thomas Keister Greer: There is a reference to consulting Engineer Hardy who was a professor, a very eminent professor and his eminence was stipulated too in the record, a leading authority on water matters in the San Joaquin Valley who told this district in effect your about to have a major flood. Now, Buena Vista Lake should fill the flood water of the Kern River before it comes down here to Tulare Lake. Tulare Lake is still going to take flood water from three rivers. And so in 1952, they passed a resolution and it carried unanimously. It says so right here on the merits which are in the appendix. To have put those people on notice in the name of this district and the president was authorized to write a letter in the name of Tulare Basin Water Storage District to tell Buena Vista Lake to take that Kern River flood water before they turn it down on us. Take 235,000 acre feet of it. The notice was given on 1952. Incidentally that was another example of the district exercising its flood control jurisdiction. Well now, the notice was given on 52 and it was acquiesced. They couldn’t have done anything else. The geology of the San Joaquin Valley as such no one would claim that Kern River water should go anywhere other than into Buena Vista Lake first as higher up on the River. Well 17 years went by. Another major flood was on its way in 1969. The same situation exactly obtained except with one difference. One crucial difference in that 17-year-period to wit in the year 1956, the J. G. Boswell Company had at lease all the Buena Vista Lake. Well now, that wasn’t the legal difference. That wasn’t the geological difference. That wasn’t any difference at all as far as the law is concerned but it made an enormous difference in the 1969 flood, and that’s why I’m here today. The appendix gives the whole story. Three reclamation districts, smaller units which are shown on the exhibit 3 printed in the appendix, petition this district. “Please put Buena Vista Lake on notice again.” A 1,100,000 acre feet of water was on its way to Tulare Lake. A 1,100,000 acre feet of water, I think actually another 69,000 came to Tulare Lake in the year 1969 and the district was formally petitioned by resolutions drawn by other public bodies notified Buena Vista Lake as you did before. Those 1952 notices have been effective and they have not been ignored. There was a meeting of this district on March 4, 1969. The entire minutes are in evidence as exhibit 6 and portions to the minutes are excerpted in the appendix. There were 10 directors present, normally 11 but one of them had just died and there had have been a time enough yet to fill his vacancy. Six of them were associated with the J. G. Boswell Company. A motion was made fully set forth in the appendix to again give Buena Vista Lake interest notice, a motion -- the motion was made and it was immediately moved that that be tabled. One Boswell Director moved that it be table in another second, and at that point, counsel appeared for the Boswell Company and what he said is in the minutes. It’s -- the excerpt is given on page 48 of the appendix. That is a remarkable statement. Able counsel for the Boswell Company was Mr. Clauster and the minute state as follows. Attorney Clauster at this point made disclosure for the record as the association of six of the directors of the J. G. Boswell Company indicating in some detail their stock ownerships and employee affiliations. And then he gives the six directors and he said stated further that he advised these directors, they were not disqualified to vote on the Buena Vista matter. The motion to a table carried 6-4, Buena Vista Lake was given no notice in 1969. One-fifth of the water that came into that lake -- into Tulare Lake in 1969 should have been at Buena Vista. The crest to the water was 192.5, the residences, most of them, you can see from the topographical map which is exhibit 2 and 3 are both topographical maps, are around 177. The level of that water was 15-1/2 feet over the homes. Had a levee broken, those homes had been flooded.
Warren E. Burger: Thank you Mr. Counsel, this is an important, to flush that out this will enlarge your friend’s time.
Thomas Keister Greer: Oh, thank you sir. The level of the water was 15-1/2 feet higher than the homes in the district. Had a levee broken and it was just a nip or tuck matter as to where the north central levee have been held. There are 60 some persons who would have been an imminent danger of dying from a wall of water, 15-1/2 feet over the heads and these appellants respectively submit that those persons would have been interested in and affected by such a development.
Warren E. Burger: Now that you mentioned that in an emergent terms was this wall that would come suddenly or gradual rising of the water?
Thomas Keister Greer: It would depend on whether a levee have reached. Now, typically when a levee goes, the pressure behind it is so great that there is no -- it happens all at once.
Warren E. Burger: Nothing gradual about it?
Thomas Keister Greer: Sir?
Warren E. Burger: Nothing gradual about it?
Thomas Keister Greer: No sir not at all. The water is there and it’s at a very high level.
William H. Rehnquist: Is the district suable at tort in -- under California law?
Thomas Keister Greer: There is a very complex system relating to governmental immunity in California. We filed an action which there is exhibit dealing with it to remove the six Boswell directors. We wanted to get some relief definitely and I’m -- I have to say to the Court that I did not have much success with that case. It has been pending on the merits since October of 1969 and has become moot by virtue of the election of these directors over again, the reason that we follow the present proceedings.
William H. Rehnquist: Supposing any of these homes had been washed out as a result of claimed, negligence, or misconduct on the part of the directors. Would the district have been liable for a suit in tort?
Thomas Keister Greer: I think yes. I think the tort cause of action could have been stated. I mentioned that though to show the interests of the residents in the authorities of the district because that water was higher than it otherwise it would have been because of the Boswell records preventing us from giving notice to Buena Vista Lake. Thank you sir.
Warren E. Burger: Thank you Mr. Greer. Mr. Newell we’ll enlarge your time if you need it.
Robert M. Newell: Mr. Chief Justice, thank you. May it please the Court. Let me take the last point of the first because that seems to be the motivating force behind this litigation. The fact that the Buena Vista Lake is subject to a flood servitude is disputed. That is not a fact that this Court can take for granted. Indeed, the most learned treaties I ever read on the subject was written by Mr. Greer when he represented the interest who preceded the J. G. Boswell Company and leasing Buena Vista Lake which includes there is no flood servitude. That’s not a matter that this Court can take for granted. It can take for granted however what’s in the record. And in their brief, it’s just a footnote but the Court should note that this famous meeting in 1969 as indicated on page 28 of the appellant’s reply brief. The general counsel of the district advised the district it did not have the power to bring the lawsuit. The request was not to put Buena Vista Lake on notice. It was a request to bring an action for an injunction which will represent a potential liability to this district as several million dollars that they lost. Now this district can function over through the device of a district project. It’s important to understand its limited capacity. It isn’t the public district that can wheel and deal on governmental matters anytime it wants to. It can only act so that device of a district project. There is no district project that would born up the expenditure of that much money and that general counsel of the district advised the district of that fact on that day. Both Mr. Greer and I were present at the meeting. Maybe that can be disputed but the matter of flood servitude in Buena Vista Lake is not something that involves the constitutional question in this Court, in my judgment. We’re dealing here with a district that operates to its district projects, four of which have been enacted in this district. That’s the important election and then to enact the district project requires the majority of the value of the land and a majority of the landowners voting. And in our -- in the appendix, we have put for the Court, placed for the Court defendants exhibit R and S which are the ballots for the election on Project 4 which was a project to construct two laterals from the State Aqueduct to the west of Tulare Lake to the lake at a cost $2,500,000 and you vote twice, ballot A and ballot B, and to answer Justice Harlan’s questions to the prior case, these are formal elections conducted by board of election judges, secret ballot with all the formalities of any California election. And the ballots are twofold, you cast one for the number of votes you have in relation to assess values and one as a landowner so that Tomas J. Amos whose land is assessed at $10 value for Project four has just as many votes on the second ballot as does the J. G. Boswell Company. It’s not what a 38,715 to 1, its one to one, in that regard. So the California legislature has provided adequate protection for the small landowner. Now that doesn’t answer the matter of lessees and residents, we’ll get to that in a moment. But I object and ask the Court to examine the simplistic and syllogistic reasoning by which counsel for the appellants would suggest this case be reversed as this. (a) In Avery versus Midland County, Justice White’s opinion, it stated on effect that any time a state exercises power to a local instrumentality of government and whether a popular elections, the one man, one vote rule applies. (b) The Tulare Lake Basin Water Storage District is a governmental entity, whatever that is. Therefore, that the one man, one vote rule applies and that’s just not the case. In the one man, one vote cases, this Court has decided involving local elections. The elections of concerned matters of interest to all of the populist, schools, sewers, police stations, libraries in Kolodziejski versus Phoenix, matters of general interest to the populist, to the electorate. And the Court has emphasized that. I don’t know why I’m lecturing this Court as a decision but that does obtain. And then secondly there is a statement that where the lien maybe is only on land but in fact the obligation is going to be paid by all of the citizens. Now the Tulare Lake Basin Water Storage District is not that kind of an entity. It is an entity created by a petition of land owners who can conduct projects for the benefit of the landowners and they pay for it exclusively.
Byron R. White: Well, do you think the district has validly hold an election under a law that said that, half of the landowners may vote and half may not?
Robert M. Newell: No, I would not think so. That would be an invidious discrimination against landowners.
Byron R. White: And it has -- is that anything to do with the reinforcement cases, does it?
Robert M. Newell: I don’t think so.
Byron R. White: Or one man, one vote?
Robert M. Newell: I do not --
Byron R. White: The question is whether somebody has invidiously precluded from voting?
Robert M. Newell: No, I think there is a -- the preliminary question.
Byron R. White: Well now how about my example.
Robert M. Newell: Well, can I ask the first question. I would suggest this that the question is, is it a satisfactory classification to say that landowners can vote?
Byron R. White: I got perfectly good question. So it really isn’t a question to one man one vote, is it?
Robert M. Newell: I don’t think this case is.
Byron R. White: Well, no it isn’t. So it’s -- but it is a question whether somebody is validly or invidiously excluded from voting.
Robert M. Newell: No.
Byron R. White: Well, you just asked me that question.
Robert M. Newell: I --
Byron R. White: Is it a valid classification? That’s the same question isn’t it?
Robert M. Newell: But there are two answers of the question and let me put to the -- the simple answer is, you look at the legislation to see if the classification is reasonable if anybody is invidiously excluded.
Byron R. White: Alright and if it isn’t reasonable, it’s invidiously excluded.
Robert M. Newell: It’s a tautology if you say that.
Byron R. White: And that so your question is, which is here as whether the vote maybe limited to landowner.
Robert M. Newell: That’s right but I think there is a preliminary question on the Equal Protection Clause and it’s this. Whether State of California or any state permits a group of people, any segment of the population to bond together to accomplish a purpose that will concern them all? Does the federal constitution and the Equal Protection Clause reach that kind of a determination.
Byron R. White: Well, what if the vote here was limited -- every other landowner could vote.
Robert M. Newell: I would think you wouldn’t have the other landowners joining in the petition to form the district. They’re not going to be in it. This is the State of California, Justice White, has taken this device to induce landowners to form these districts. A large landowner wouldn’t join in the petition unless he could be in it.
Byron R. White: Well, I suppose the -- I suppose the district could be set up in a way that it didn’t accumulate votes based on acreage?
Robert M. Newell: I don’t think it could. They petitioned to have their land formed and be in the district. It’s a fairly complex procedure and you can petition have your land excluded. I would think one of the easiest ways to be excluded was you are going to vote.
Byron R. White: But you are automatically going -- can you automatically get out if you want it?
Robert M. Newell: Well, I would assume you would have petitioned to be in, in the first instance. You would have joined with your neighbors to form the district.
Warren E. Burger: Are you suggesting a contractual type of obligation?
Robert M. Newell: No but they bond together under the statute to try to accomplish water -- improving their water system but it’s a voluntary thing. The state doesn’t thrust this classification on them. The land owners choose to do this.
William H. Rehnquist: But an individual landowner can be involuntary included within the district?
Robert M. Newell: I don’t think so.
Byron R. White: Well, in that case should go away then.
Robert M. Newell: It’s not a matter, that’s a matter of state law I think.
Byron R. White: You mean if somebody petitions for a water improvement district to cover certain area that everybody within that area is not included if there is the right kind of a vote in the election.
Robert M. Newell: That everyone could be included but as a procedure they have the land excluded.
William H. Rehnquist: But that’s discretionary with the board of directors of the district, isn’t it?
Robert M. Newell: Well, actually I think it’s heard by others than the board of director.
William H. Rehnquist: But you don’t have a matter. You cannot be excluded as a matter of right. That’s the reason I feel fairly accomplished Arizona where I tried, has adopted California’s system in this and at least under our law, you could petition for exclusion but it was discretionary with the people who passed on that petition whether or not you would be excluded.
Robert M. Newell: I’m sure that’s true but I think it would be unusual that some dissident landowner would be included in and certainly was every other landowner that they wouldn’t form the district. I don’t think. But you misunderstand the California’s motivation in passing this law is to induce landowner, large landowners to form this kinds of districts.
William H. Rehnquist: But if it’s just voluntary landowners, you don’t need a district. You could do it by contract.
Robert M. Newell: No, you wouldn’t have the power of eminent domain. For example they had to condemn the lands for the laterals to the State Aqueduct. I mean, they have certain rights that are important in that regard. But the district’s function is limited to projects that they are going to benefit the people in the district. It would be --
Byron R. White: You mean the landowner?
Robert M. Newell: The landowners, yes. That was a Freudian slip. The landowners, anytime I seen in the landowners have drawn. Landowners in the district benefit the land. It doesn’t engage in activities that are of general concern to the populous, to the voting public, to the electorate, whatever term you want to use for the public in a --
Byron R. White: How about the lessees?
Robert M. Newell: The lessees of course, you’re interested at. But the State of California has the right to determine how much of a unit of land will carry a vote. And the relationship of the lessee to the land is contractual with the lessor. It eased the negotiating power, he can get a proxy. If he doesn’t, he can’t but that’s for the State of California to determine. There’s nothing invidious about excluding them because the state may conclude in its wisdom that a lessees interest is --
Byron R. White: Oh! I agree if you -- I mean you certainly have solved the case if you start with the premise that you can tie the power to the land.
Robert M. Newell: That’s right.
Byron R. White: Of course, this is over then.
Robert M. Newell: While we thought it was over in the court below.
Byron R. White: Yes, I know.
Robert M. Newell: No, that’s right. But I think that’s a matter of state court determination. If you concede, in other words, when you say a lessee should be able to vote, you are conceding the validity of landowner voting and if that concession is made, I think it’s up to the state legislature if it exercise a sound discretion, and say we’ll know we’ll tie a vote to $100 of assessed valuation of land. However, that land may be divided up between different people.
Byron R. White: What is the -- what’s at issue here as to -- is the voting rights are at issue here?
Robert M. Newell: The challenge is, that lessees and residents, nonlandowning residents --
Byron R. White: Both are at issue here?
Robert M. Newell: Yes, lessees and residents, nonlandowning residents, qualified voters who reside in the district. Now let’s talk about that. There are 77 people that live in this district, men, women and children. Maybe, I don’t know how many of them if they are citizens. We know Lawrence Allison is registered to vote. He is the only one, the plaintiff, Lawrence Allison but as a matter of record as a registered voter. In the appendix, there is a list where this people live. 66 of them are employed by one corporate farm, West Lake Farms. You got 11 people spread it over and what you might say, well 165,000 acres. I mean having the residence vote is if it will accomplish nothing. Unless, you are going to tell the J. G. Boswell Company, “well now look, don’t worry, we’ll let this fellow up here in the corner cast a vote as much as yours and they can cost you $817,000.” Well, that’s the democratic way. It doesn’t make sense. If you are going to accomplish the objective that the California Legislature has in mind and I think I can emphasize that too much that the legislature wants to encourage this type of arrangement to finance water improvements and it’s done it. It’s done successfully in Tulare Lake Basin but they’ve only have four projects in its whole history which is 50 years now.
Warren E. Burger: It might help me. I’m not sure, if I were to ask this hypothetical question. If you have no such law as this at all, how would the authority be exercised which be up to the private individuals to form a cooperative on the one hand --
Robert M. Newell: Yes.
Warren E. Burger: -- or up to the state to move in and do it as a public works?
Robert M. Newell: It -- it have to be -- the individuals will just have to agree to do it as a matter of private contract but --
Warren E. Burger: In the state as a whole, it doesn’t have that much interest?
Robert M. Newell: Well, that the state has an interest in the improvement of the availability of water for irrigation purposes in California and has used lots of devices to do this. Now, this is one way of encouraging people to bond together to take certain steps for this type of thing. The concept storage by way of explanation, the Water Storage District Act was really passed for Tulare Lake in the first instance and the original Project One which is in the appendix was to – part of it was to acquire 18 sections of land and store this water that routinely flooded.
Byron R. White: What was it? It was a flood control project.
Robert M. Newell: No. Well, in part, there was also -- that that would create a reservoir.
Byron R. White: Yes.
Robert M. Newell: For the water to be used on the land.
Byron R. White: But if there was private -- But it was partly flood control?
Robert M. Newell: Yes.
Byron R. White: Which was an interest to, with good many people I suppose? Other than landowners?
Robert M. Newell: Well there’s nobody there but landowners, Justice White.
Byron R. White: Only 77 people.
Robert M. Newell: But 66 of them live on the high ground to the west. They don’t get flooded. 11 of them live down the bottom and they get out. They all live in --
Byron R. White: I know but how about as an -- how about in the decision as to whether the former flood control project. What about people -- just ordinary people nonlandowners who might get flooded.
Robert M. Newell: Well, I repeat there are no people like that in the district. The 11 people who are -- not the 66 are all employed by Corporate Farms and live in corporate-own houses. Those corporations on a calculated --
Byron R. White: I know but I suppose they are likelihood -- their right is their own at least.
Robert M. Newell: Well the floods aren’t quite as --
Byron R. White: Is there houses?
Robert M. Newell: This is not like the Johnson flood. These floods are as Mr. Greer indicated. They know when they are going to happen. Usually the levees are cut rationally. Cut in a certain given areas flooded and it takes a 15-foot wall of water doesn’t come dashing down the side like it starts and spreads gradually and builds up. But usually the levees are cut. Now, it gets competitive. At the picture you will notice, plaintiffs -- I mean defendants exhibit R and S and the appendix shows the 88,000 acres of flood. Exhibit Q, pardon me. And you’ll notice there’s a sharp line on the east and the west. Well on north and south levee held. The El Rico levee held in part to the east and if either -- if there were going to be more flooding, the people that are east of El Rico levee would hope that it held and that the other one went. But there are no people involved really in this type of flood activity. It’s dramatic but it just doesn’t exist as a matter of fact. It’s mainly a district designed for this development of water sources but which is a -- which is amounted to really three things. The Project One was aborted. They didn’t buy the 18 Sections, depression came, there was a lot of dry years so it just went by the board. The next projects involved buying storage space behind the reservoir on the flood control dams build after the lower and another one involved participating in flood control concerned with those dams and then there is Project Four to get the laterals to the district. But the point -- I think the best analogy would be if you took the analogy of the school district case where the school was built solely for the use of the landowners. No one else could use it. And they used it and paid for in proportion to their land. I -- it occurred to me in reading that decision that the Court might have reached the different conclusion were those the facts, which is the fact in a water storage district. I repeat that when the state takes a group of people and says now you may voluntarily bond together to accomplish this specific purpose which the state legislature deems in the interest of that objective in this case of agricultural water development. I don’t think that that gets to a point where there is an equal protection problem. I don’t think it’s a classification. It’s imposed by the state that gives the group of people an opportunity to do something much as you could form a private corporation.
Speaker: What if the law said a flood control district maybe formed by vote of the registered voters of this district and excluded and didn’t permit landowners to vote as landowners. It’s just that they are registered voters they got to vote or not. Would you think there would be an equal protection problem posed?
Robert M. Newell: I think that would be an unrealistic approach by a governmental -- by the legislature to solve a governmental problem. There aren’t enough registered voters in the district to make any difference. There aren’t anybody, there’s nobody there. I mean, you’re not going to get people bonding together to form a cooperative venture if you have registered voters vote. There aren’t enough, five or six people? You take it you have each landowner cast one ballot and you do away with the weighted ballot. As the appendix points out, there was an oil venture some years ago and what’s called the Homeland District which is the southeastern quadrant of the Basin Storage District and they saw a lot of participating interest in an oil well and they’ve got small acre which is there. Two acres, ten acres only from an oil speculating deal, that group of people if you have one vote per landowner would effectively control the election.
Speaker: Well if that had been the scheme of the statute, would there be an equal protection problem?
Robert M. Newell: You mean, if landowners could vote one for one, you wouldn’t have had the district formed. The large landowners would not join in that. They wouldn’t participate.
Speaker: It might -- they might have voted in.
Robert M. Newell: Well, --
Speaker: They might get voted in and somebody might refused to let --
Robert M. Newell: Well, see it’s hypothetical in this instance but the California state legislature protected them from that, might arranging this very rational scheme. They didn’t place that power and in the handful of small landowners. In other words, we stand here stating frankly take a look at Project Four. The question is posed in the brief. They talked about Thomas J. Amos. He only got one vote on ballot A. The J. G. Boswell Company got something over 38,000 votes on ballot A on Project Four. Both Thomas J. Amos and the J. G. Boswell Company had one vote on ballot B. They give the small landowner that negative protection but the assessment of the J. G. Boswell Company will pay it for Project Four as $817,000 and Thomas J. Amos paid $3.32. I mean, we are dealing with a practical situation where the statutory scheme is designed to encourage landowners to expand substantial sums of money to improve their water rights. Their water for agricultural purposes and it seems to me that it’s obvious as an original proposition that the state legislature could encourage this type of participation only with unlike little scheme such as the type they have here. It’s a limited purpose district. It doesn’t affect the public. It affects these landowners and that’s all and the fact that someone might be a resident out there or an employee has very little to do with his participation in these complex projects. All of this has been stated before and unless there is question, I have no --
Warren E. Burger: Would it be fair to analogize this to a cooperative which has been given by the legislature a special status for public funding purposes.
Robert M. Newell: I think so. I think it could be analogized also to a private corporation in terms of voting responsibility. It’s like that. These people paid for all themselves for the devices that are limited. They alone used this. I again repeat, if suppose only this segment of the population used the school, a school would it be constitutional to limit voting on that particular device.
Thurgood Marshall: But it does have eminent domain power.
Robert M. Newell: Yes, so does a privately owned public utility in California Justice Marshall. That’s not any great indicia status. It does have eminent domain but it cannot exercise that right of eminent domain except to the implementing power of the district project. The directors, the failure to have routine elections of which are just a matter of some comment here exercise no significant governmental power. They can’t do anything. Now, there should have been election in 1969 but as the transcript shows, the appendix shows, three of the deviations were wholly flooded, 100% flooded. One was 56% under water and one was 28% under water and I can assure the Court at this perilous time, these people were not interested in the niceties of taking a polling booth on a style up there to have an election. They have a polling booth in each precinct, each division. It couldn’t be too serious. Now there suppose to be an election in 1973, there has been no petition filed by anybody seeking one of these directorships. No doubt because as Mr. Greer has indicated you don’t have campaigning in the political sense. It’s different but there is no petition filed to have any election this year so the incumbent directors will continue on in accordance with the statute, California statute on the subject.
Warren E. Burger: In what respect could it be said that the 66 people on the one high ground farm area and the 11 people in the low lands pay or contribute to this?
Robert M. Newell: Well, they don’t pay at all.
Warren E. Burger: Only landowners are assessed to cost.
Robert M. Newell: Only landowners, that’s all and they’re assessed in accordance with the benefit conferred by a project. It so happened that the projects that have been enacted have the board of assessment, I forget what they called them, but the commissioners have judged that it applied uniformly throughout the district. So the assessment was equal for each taker of land. There were no differentials but it’s possible that there could be but only land --
Warren E. Burger: You said, for each acre on the value of each acre?
Robert M. Newell: No.
Warren E. Burger: Is this one straight geographical?
Robert M. Newell: Yes, sir. Project Four was $2,500,000 and there it was determined that there are 188,000 plus acres that were benefited by their project and that was assessed $13.32 per acre irrespective of the assess value of a particular acre. You have variations and the assess value of acres as I indicated. But this particular project was assessed uniformly.
Warren E. Burger: So if a man has a good many acres that are simply piles rocks with nothing growing on them he is still paying for it.
Robert M. Newell: If that had been the case, it so happens that the land in the district however, most of it is [Voice Overlap] except land if for roads or dikes or things from that kind.
William H. Rehnquist: But the man with the pile of rocks being obligated to pay would be dependent upon a finding by the assessors but though that land did in fact benefit.
Robert M. Newell: That is correct. There would be that and we assume that on that hypothesis, the board of commissioners which -- by the way none of them can own land in the district. They are appointed. They cannot own land in the district at all and I think one must be an engineer. I forgot what the statute requires but they would make that determination and there’s a right of sort of an appeal on that where if there’s a dispute, one of the commissioners appoints two outside people and they set in a sort of a board of assessment review. Presumably, a fair-minded assessment board would determine that there was no benefit to the pile of rock that he would pay nothing.
Warren E. Burger: But as the piles of rocks were in scattered about in the midst of rich bearable land, I take it that the assessors would downgrade the value. Downgrade that benefit rather.
Robert M. Newell: Yes.
Warren E. Burger: I assumed in that situation, that sense it would reflect the value.
Robert M. Newell: Right. And you’ll notice that in the appendix, we refer to the assess or in the brief we refer to the fact that like one acre has got a $60 or 8/10 of an acre is assessed at $60 and I think one acre is assessed at $10. There are differentials in the assessment depending on the worth of the land but that would be different for the project. The benefit is fixed there and determined. Thank you very much.
Warren E. Burger: Very well, thank you gentleman. The case is submitted.