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August 1, 1977

U.S. ENERGY RESEARCH & DEVELOPMENT AGENCY, Robert C. Seeman, Jr. (Administrator), James Denney (Ass't. Gen'l Counsel of ERDA), Robert M. Poteat (Deputy Ass't. Gen'l Counsel for Patents of ERDA), Suzuki Metal Ind. Co., Ltd, Tokiko Mfg. Co., Furukawa Electric Co., Ltd., and Sumitomo Electric Co., Defendants

The opinion of the court was delivered by: BIUNNO

 Isothermics, Inc. (ISO) filed a complaint against the U.S. Energy Research & Development Agency, its Administrator, its Assistant General Counsel and its Deputy Assistant General Counsel for Patents (collectively, ERDA). Jurisdiction is claimed under § 10(d) of the Administrative Procedure Act, 5 U.S.C.A. § 705, and venue is claimed under 28 U.S.C. § 1391(e)(4).

 The complaint says that ERDA is the owner of a Japanese patent, No. 482,141, "Heat Transfer Device", and that ISO is the holder of a non-exclusive license to use that patent, effective December 19, 1975. It says that ISO has attempted to persuade ERDA that (a) ISO is entitled to greater rights than were included in the license, and (b) that ERDA cannot license foreign entities. Whether the proceedings in which the effort so to persuade ERDA were formal or informal is not disclosed; but in any event it is said that on March 16, 1977, the Deputy Assistant General Counsel for Patents ruled, for ERDA, that there was no intention to grant ISO an exclusive license, and that additional non-exclusive licenses were intended to be granted to Japanese companies who compete with ISO.

 Under ERDA regulations, a notice of an administrative appeal was filed with ERDA. ISO says that despite the appeal, it is concerned that ERDA will grant licenses to foreign competitors before disposition of the appeal.

 The only demand in the complaint is for a preliminary injunction, with temporary restraining order, to prevent the grant of further licenses until the ERDA appeal has been heard and decided. Finally, the complaint reserves the right to request plenary review of any final action of ERDA, and to request a trial by jury.

 The former Atomic Energy Commission was abolished and all its functions were transferred to the Administrator of ERDA, 42 U.S.C. § 5814. The reorganization law also contained transitional provisions. One of these directs that final orders and actions in the performance of functions transferred shall be subject to judicial review to the same extent and in the same manner as if such orders or actions had been made or taken immediately before the effective date of the reorganization law.

 In the intervening period, Congress evidently has not gotten around to amending either 42 U.S.C. § 2239, which creates the right to have judicial review, or 28 U.S.C. § 2342(4), which places the exclusive jurisdiction thereof in the Court of Appeals.

 At the hearing of April 15, 1977, the court raised the further question whether the Japanese companies under consideration for grants of non-exclusive licenses ought not to be joined as necessary, if not indispensible parties. It seemed that they would likely be the actual adversaries, the real parties in interest, to whatever proceeding was before ERDA. Also, absent their joinder, they might obtain both legal rights and intervening equities superior to ISO's. It was also pointed out that complaints may be amended "as of course" if filed before a responsive pleading is served, F.R.Civ.P. 15(a) (this is limited to one amended pleading; more than that requires consent or leave of court).

 On April 20, 1977, ISO filed a First Amended Complaint, adding as defendants Suzuki Metal Ind. Co. Ltd. (Suzuki), Tokiko Mfg. Co. (Tokiko), Furukawa Electric Co., Ltd. (Furukawa), and Sumitomo Electric Co. (Sumitomo). All that is added about these defendants in the First Amended Complaint (other than naming them in the caption) is that they are "alleged infringers of Japanese patent rights" of ISO. Both the original and the First Amended Complaint had named Suzuki as a potential additional licensee of ERDA.

 The returns on the summons indicate that Sumitomo was served at 345 Park Avenue, New York, N.Y., on the president of a company known as Sumitomo Electric USA Inc. Suzuki, Tokiko and Furukawa were served by mail by the clerk, return receipt requested, addressed to them at addresses in Tokyo. Presumably, the mail service was made under F.R.Civ.P. 4(i)(1)(D) and the return receipts are on file with the clerk.

 Furukawa returned the summons to the clerk with a letter stating that:

"However, since it was not served together with a certified translation and in accordance with the formal procedure as set forth by the Hague Convention on Service Abroad of Judicial and Extra-Judicial Documents, TIAS 6638, 20 U.S.T. 361, to which both the United States and Japan are signatories we feel it is our duty to send it back to your office,"

 On May 12, 1977, without leave of court, ISO filed a Second Amended Complaint. In this version jurisdiction is asserted under 5 U.S.C. §§ 701 through 706, in combination with 28 U.S.C. § 1331(a). Another change is that par. 9 alleges, that the decision to grant non-exclusive licenses to others, made March 16, 1977, is arbitrary, capricious, unsupported by substantial evidence, and unwarranted by the facts. Otherwise, the Second Amended Complaint does not appear to vary from the earlier versions. The proof of service of the Second Amended Complaint is that it was sent ...

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