Cases by Issue - Appeal Jurisdiction

Federal Election Commission v. Nra Political Victory Fund - Oral Argument

Fri, 09 Jan 2009 14:49:55 +0000

Case:

Federal Election Commission v. Nra Political Victory Fund

Media File:

93-1151_19941011-argument.mp3

Related Transcript:

transcript.xml

Transcript:

Argument of Lawrence M. Noble

Chief Justice Rehnquist: We'll hear argument this morning in Number 93-1151, Federal Election Commission v. NRA Political Victory Fund, et al.--

Mr. Noble.

Mr. Noble: Mr. Chief Justice, and may it please the Court:

This case presents two issues: first, whether Congress violated the Constitution's requirement of separation of powers when it appointed the Secretary of the Senate and the Clerk of the House as nonvoting ex officio members of the Federal Election Commission where all the decisions of the Commission are made by six voting members who are appointed by the President and confirmed by the Senate, pursuant to Article II.

The second issue is whether, if the FEC is unconstitutional, whether the actions taken prior to the Court's decision should be afforded the fact of validity as was done some 18 years ago in Buckley v. Valeo.

The United States Court of Appeals for the D.C. Circuit applied a bright line rule to the separation of powers analysis and effectively said that the mere presence of nonvoting, ex officio agents of Congress on an independent agency of the executive branch was a violation of the separation of powers.

After doing so, the court declined to apply the precedent of Buckley v. Valeo, and felt that because this was a defense to an enforcement action it must give the National Rifle Association some relief, and therefore reversed the district court's finding of a violation of the Federal Election Campaign Act.

We believe that the court of appeals erred on both issues.

The court's--

Unknown Speaker: Are you also going to address whether you have authority to represent the FEC here?

Mr. Noble: --If the Court wishes, I can address that issue.

The Federal Election Commission was created in the wake of Watergate to be independent of the Department of Justice.

The statute itself talks in terms of the Federal Election Commission having independent authority to institute actions and to conduct appeals of cases under title II.

The Solicitor General's position on this relies on a narrow reading of the word appeal to not include petitions for writ of certiorari.

Unknown Speaker: Well, I suppose you could read 28 U.S. Code 518(a), giving the Solicitor General authority, as not being inconsistent with the statute 437d that you rely on.

In other words, the Commission can appeal every place except here, and when coming here, it has to be the Solicitor General.

I suppose you could give effect to both those statutes.

Mr. Noble: You could give effect to both those statutes, though I think that would not be giving full effect to the intent of Congress in establishing the Federal Election Commission.

First, I would note that 518(a) also talks about the Solicitor General's authority to appeal, and does not specifically mention petitions for writ of certiorari, and this Court has recognized that's a congressional grant of authority, and that Congress can limit that authority in specific instances.

Here, where you have--

Unknown Speaker: You don't think the word suits in that statute helps the Attorney, the S.G.?

Mr. Noble: --As a general proposition, absent some other declaration by Congress that litigation authority should reside in another agency, yes, I think that does cover it.

But in our instance, we have a situation where Congress clearly intended the Federal Election Commission to be independent of the Department of Justice.

Unknown Speaker: Well, you're saying that appeals in 518 indicates that it comprehends writs of certiorari.

I thought that was your argument.

Mr. Noble: The word appeal generally comprehends writs of certiorari.

The word appeal is also used in our statute in title II authorizing the Commission to conduct appeals.

Unknown Speaker: But in 518 it says, suits and appeals.

Mr. Noble: Yes, but while that's a general grant of authority to the Solicitor General, we don't believe that it overrides the congressional... the words of the statute and also the congressional intent to afford the Commission its own litigation authority.

Unknown Speaker: Well, it doesn't override, it, but the point is, the mere fact that your statute says appeals is not contradicted by, or a limited reading of that statute is not contradicted by 518(a), which goes out of its way to say, not just appeals, but the Attorney General represents the United States in suits and appeals.

Mr. Noble: Yes, Justice Scalia, but again I think if you look at the intent of Congress, the way the statute's constructed, also--

Unknown Speaker: I'm looking at it.

I'm reading 518(a), and I'm reading 9010, and what do you do about 9040, which was enacted at the same time as the statute you're relying upon, which does say the Commission is authorized on behalf of the United States to appeal from and to petition the Supreme Court for certiorari to review judgments or decrees entered with respect to actions in which it is presumed to be provided in this section, which is not the present section.

There it goes out of its way to say, not only appeal, but to petition for certiorari.

Mr. Noble: --That provision was not enacted at the same time as the Federal Election Campaign Act.

In fact, that provision came into being in 1971, prior to the Commission even being created, and then what happened in 1974 when the Commission was created, that statute was just modified to substitute the Commission for the Comptroller General, and we don't think that Congress had any intent in doing that.

Unknown Speaker: It was not passed at that time?

It was not reenacted?

Mr. Noble: It was reenacted, but there was no--

Unknown Speaker: I see.

It was originally reenacted, just reenacted.

Mr. Noble: --And it was not... it was not in any way substantially redrafted.

They just substituted, effectively, the FEC for the Comptroller General, so in effect what you have is two statutes created at two different times, and they were originally created for two different agencies, and so we think that the looking at title 26 as a proscription on title 2 authority is inappropriate in this situation.

Also, though--

Unknown Speaker: How many other agencies have the authority to petition here without the S.G.?

Mr. Noble: --Excuse me, I'm--

Unknown Speaker: How many other agencies, or how many agencies, perhaps I should say, have the authority to petition here without the S.G.?

Mr. Noble: --I'm aware of... there... I'm not specifically sure.

I think there are a couple of other agencies, and there are situations where agencies have voluntarily given, or ceded authority to the S.G. to petition this Court.

Unknown Speaker: Do you know what the other agencies are that you think have that authority?

Mr. Noble: I think the International Trade Commission has that authority.

Beyond that, I'm not sure.

Unknown Speaker: Doesn't the FTC have the same, a similar statute to yours?

Mr. Noble: I don't know that it has the same exact language, and it clearly does not have the same legislative history with regard to the intent of the Federal Election Commission to be independent of the Department of Justice.

If I can address for a moment the question of title 26, and how... the reading that title 26 gives the FEC authority while title 2 does not would result in what we consider a conflicting scheme, because under title 26 and under title 2, the Federal Election Commission can bring suits for injunctive relief for violations of the public financing statutes.

And under the Solicitor General's position, we would have a situation that if the FEC cited title 2, the Solicitor General would have authority in the Supreme Court, if the FEC cited title 26 as its authority, the FEC would have authority in the Supreme Court, and if the SEC... if the FEC, as is probably most likely, would cite both statutory sections, then you would have conflicting authority in the Supreme Court, and we suggest that that is not the scheme that Congress intended.

The... what runs throughout our statute, the creation of our statute, was the idea that the Federal Election Commission confined itself in litigation involved with a sitting President, or a sitting President's opponent, and that there should be independence from the Department of Justice, from the Attorney General.

Unknown Speaker: Well, the statute in title 26 expressly gives the FEC authority.

I suppose that all these statutes could be read so as to say the FEC does not have authority to petition this Court in this case today.

If we were to say that, do you think that the subsequent permission given by the Solicitor General could possibly cure the jurisdictional problem?

Mr. Noble: Yes.

Unknown Speaker: Because the consent wasn't given until long after the petition was filed.

Mr. Noble: Yes.

The petition was clearly filed within time.

There is nothing that we read in 518(a) that puts a time limit on when the Solicitor General can authorize a petition to be filed, and I think the Solicitor General would be in a better position to speak to that issue, but we don't see anything, and nothing's been cited that would limit the Solicitor General's authority to authorize the petition.

Unknown Speaker: So 2 years can go by, and we really don't know whether the case is here or not until the Attorney General chooses to retroactively give life to the suit?

That doesn't seem... it's very strange to me.

Mr. Noble: Well, I don't think you would have a situation, because the Court would rule on the petition, presumably, before that point, but I don't think that's a situation--

Unknown Speaker: Oh, at least there's that deadline.

After we've ruled on the petition, and we rule that the agency is not properly represented, the Attorney General at that point cannot give life to the suit, right, but any time up to then, we really don't know until he speaks whether the suit is properly here or not?

Mr. Noble: --I... that is a possibility.

That is not the situation you have in this case.

Unknown Speaker: Well, maybe the Clerk should just refuse to accept the filing in the first instance, if it comes in here without the Solicitor General's participation, and that ends it.

Mr. Noble: Well, I... that would end it.

I think one of the problems you have in this case is that for approximately 18 years the Federal Election Commission has exercised what I think many presumed was its own independent litigating authority, so there was no question in this case earlier on that... whether we had the authority, and no previous Solicitor General has ever raised an objection, so I think everybody just assumed that the Federal Election Commission did, in fact, have the authority.

Unknown Speaker: Sort of a de facto authority doctrine, you might say.

[Laughter]

Mr. Noble: Yes.

If I may move on to the first substantive issue in the case, the court's application of the bright line test is contrary to the functional analysis that this Court has used with regard to separation of powers cases, and that functional analysis requires the Court to look at whether or not there has been aggrandizement of power by one branch, or interference with the exercise of power by another branch.

In this case, we have a threshold question: do the ex officios exercise any power?

The statute itself provides that the ex officio members of the Commission have no vote on the Commission.

All decisions are made by the six voting members of the Commission, so as a threshold matter you have no direct exercise of power.

But moving on to see what else the ex officios can do, the statute provides that they can neither be Chair nor Vice Chair of the Commission and, moving beyond that, the Commission's rules of procedure provide that they cannot serve for purposes of a quorum, they cannot vote to adjourn, they cannot select the presiding officer--

Unknown Speaker: Well, they can certainly sit in on all the discussions of the Commission, can't they?

Mr. Noble: --Yes.

Unknown Speaker: And might not those discussions be less than full and frank in the presence of those two congressional representatives?

Mr. Noble: Whatever influence they would have to chill the discussions would be very minimal, considering the fact that this agency, as all agencies, works under the Freedom of Information Act, the Sunshine Act, the Federal Advisory Committee Act, so the Commissioners do not sit at a meeting with an understanding that what they say will forever be secret.

Unknown Speaker: You mean the Freedom of Information Act would authorize the release of the private deliberations of the Commission?

Mr. Noble: Not until an enforcement action is over.

By statute, within our statute, there is a provision that makes enforcement actions confidential during their pendency.

That provision applies to the ex officio members as well as it applies to the Commissioners and the staff.

Unknown Speaker: But do they keep transcripts of these deliberations that are later made public?

Mr. Noble: Yes.

They're taped.

Unknown Speaker: Verbatim transcripts?

Mr. Noble: They are taped.

The tapes are then made public and are then released, with few exceptions dealing mainly with settlement discussions.

They are then publicly released upon request.

Unknown Speaker: These members do participate in the discussion, though, and they say... I mean, they can say, well, you're making a good point but it seems to me that point is refuted by thus-and-such, don't they?

Mr. Noble: Yes, Justice Scalia, they do participate in the discussion, but that's all they can do.

Unknown Speaker: Yes, well, my... you know, judges, when they are recused from a case, consider themselves recused not just from voting in the decision, but from participating in the discussion, because that is... that is part of the action of any body, the discussion which leads to the decision, and when you're out of the case, you're out of it for the discussion, not only for the vote.

Why isn't a similar rule an appropriate one for deliberations of an executive agency?

If you ought to be out, you ought to be out.

You shouldn't influence the decision.

Not just not vote on it, you shouldn't influence it.

Mr. Noble: The rules regarding recusal are different rules, and the ex officio members may very well end up recusing themselves from specific cases, but here you're not dealing with a question of interest in the case that would require recusal.

Rather, what you're dealing with is a question of, is it some leverage or some coercion of power that they're exercising on the Commission?

Unknown Speaker: But if you're right, your opponent suggests that Congress could put ex officio members on this Court to sit in our conference, and under your theory, that's okay, because all they can do is discuss it with us.

That's all right.

Mr. Noble: No, Justice O'Connor, we think that that proposition is really based on an untenable proposition by the respondents, which is that what is good for an independent agency created by Congress and placed in the executive branch by necessity is good for this Court or the President.

Unknown Speaker: Well, do you think it would be a violation of separation of powers if Congress were to send some ex officio members to this Court's conference?

Mr. Noble: Yes.

Yes, I think it would interfere... it would also directly interfere with this Court's Article III powers.

It is the same analysis, the same function--

Unknown Speaker: Why?

Why?

Mr. Noble: --Because--

Unknown Speaker: Why does it interfere with us any more than the ex officios are interfering with the FEC?

Mr. Noble: --Because the same rights that attach to either the President or this Court do not necessarily attach to independent agencies.

I think--

Unknown Speaker: So it's the textual difference, it's the independent textually established constitutional status of this Court?

Mr. Noble: --Yes, in large part.

Unknown Speaker: Then on that reasoning there could be ex officio listeners in the court of appeals.

Mr. Noble: No.

I would say all, it would apply to all--

Unknown Speaker: Why not?

They don't have any textual basis in the Constitution, apart from the provision for creation of all the Federal courts.

Mr. Noble: --But you would still have to look at whether or not it interfered with the courts' Article III powers.

Unknown Speaker: In what sense would it interfere, any more than this interferes with the FEC?

Mr. Noble: In the sense that the Constitution gives Article III courts strong protection against partisan or political influence.

You have lifetime tenure, without diminution in pay... those are not the same type--

Unknown Speaker: But it seems to me you are arguing just the other way.

We can tell them to go to the devil, but the people on the FEC do not have lifetime tenure.

Mr. Noble: --But still the... it is not the... the Court derives its power directly from Article III.

We are a creature of Congress.

We are an agency that was created by Congress for a specific purpose.

The analysis that would say that--

Unknown Speaker: Well, you keep telling me about textual bases or nontextual bases.

You use the word interfere, which I think has a factual connotation.

What is the interference in our case that does not exist, or would exist in our case that does not exist in the FEC?

Mr. Noble: --Clearly, the one mentioned before about the potential of a chill, because this Court's deliberations are not subject to the Freedom of Information Act, are not subject to the Sunshine--

Unknown Speaker: Well, but a statute creating the listener simply subjects the listener to exactly the same confidentiality requirements that the Court imposes upon itself, so there's no... we assume people will follow the law in good faith.

There's no practical risk of our reading of the deliberations in the paper next week.

Why wouldn't that satisfy your problem?

Mr. Noble: --Because I think it would still be considered a direct interference with the Court's Article III powers.

It is not... again, the Freedom of Information Act--

Unknown Speaker: Well, I think... I agree with you, but I don't see how you're drawing the line between the two cases.

Mr. Noble: --Well, I... if you cannot draw the line, then I think there would also be a problem with the application of the Freedom of Information Act and the Sunshine Act to independent agencies, because clearly the courts have gone out of their way to not apply, for example, the Federal Advisory Committee Act to the Office of the President, saying that to do so would raise serious constitutional doubts about the Federal Advisory Committee Act, but when you get to applying it to independent agencies, there is little doubt that the act can be applied, because--

Unknown Speaker: Well, now, wait a minute.

Now you've confused me.

You've been talking up to now about independent agencies.

I thought you were using that to mean the fourth branch of Government, the headless fourth branch, just those agencies that are not subject to the President.

Is that what you mean?

Mr. Noble: --Yes.

Unknown Speaker: But now your example about the Advisory Committee Act, that applies to all agencies, not just independent agencies.

Mr. Noble: Correct, but it would not apply to the Office of the President.

All I'm suggesting there is that--

Unknown Speaker: But that's a quite different line, the line between the Office of the President and the rest of the Government.

Is that the line you're relying on?

Mr. Noble: --I'm... I'm relying on several lines, yes.

That is one clear line.

The difference between the Office of the President and also with this Court, or Article III courts.

Unknown Speaker: I think I agree with you.

We wouldn't have to worry about Congress putting listeners into the Office of the President, but what about their putting listeners into all other agencies, including the Defense Department, Interior, whatever?

Mr. Noble: Each one would have to be analyzed on a functional approach, and I would start with the proposition that there is a distinction with the Federal Election Commission that may not exist with other agencies, and that is that the Federal Election Commission deals in an area of law that directly interrelates with how Congress acts.

Unknown Speaker: So we really wouldn't know until they try them one-by-one, agency-by-agency, right?

Mr. Noble: Well, I think each one--

Unknown Speaker: And then when they get here, you urge that we not apply the rule in the first case, anyway.

Mr. Noble: --I'm only urging it with regard to the Federal Election Commission.

As you approach each case, I think you'd have to look at it with a functional analysis.

Unknown Speaker: May I ask you two very brief questions?

Do these Commissioners get paid?

Mr. Noble: The ex officio members?

Unknown Speaker: Yes.

Mr. Noble: Yes.

Unknown Speaker: For their duty, in addition to their salaries with Congress?

Mr. Noble: No.

My understanding is that they get paid by Congress, and that is what... well, the... what we have is designees.

Unknown Speaker: Are they paid for their services on the Commission?

Mr. Noble: Not that I'm aware of separately from their other services.

Unknown Speaker: And what are their responsibilities, if any?

Mr. Noble: The responsibilities do not appear in the statute, but pursuant to the legislative history the responsibilities were to act as an advisory and liaison function for the Commission.

I would also note that, even today, the Clerk of the House and the Secretary of the Senate have... receive all reports for candidates for those bodies, and then have to submit those reports to the FEC, so there is a clear overlap between the authority of the FEC and, while the FEC has to independently exercise that authority, Congress believed that the FEC would be served by the advice of the ex officio members.

So I think that is... also in partial response to Justice Scalia, I think that is a distinction that may very well exist.

I think while the Court did not specifically reach the question of the Attorney General as ex officio member on the Sentencing Commission, I think the same type of analysis would apply there.

There is no power, direct power, and the Attorney General brings a certain amount of expertise to the Sentencing Commission, so I think that you may very well have the same type of analysis in that situation.

If I may briefly turn to the--

Unknown Speaker: You leave me defenseless when you talk about the Sentencing Commission.

[Laughter]

I just wanted to get specific with the question that's been asked down there a couple of times.

Forgetting the law for a second, just thinking totally practically, I can imagine how having a Congressman sitting up at the bench here might cause a little problem.

I mean, you'd be a little nervous about it, and in the conference it would be tougher to carry out our job.

I can understand that.

Thinking in those practical terms, what happens when the FEC makes the prosecutorial decision, we will prosecute X, or we won't.

Is the congressional representative sitting in the room?

Is, are there other members of the public in the room?

Is the congressional representative formally or informally... I mean, what happens?

Is he interfering in some way, as a practical matter, with the ability of the regular members to make up their own minds independently about whom to prosecute?

Is he interfering in a way that's different from what the ordinary citizen might interfere?

Does he only appear at public meetings?

Are there private meetings where he appears but the others don't?

That's what I'm trying to get a sense of.

Mr. Noble: --The ex officio members are able to appear to participate in the executive sessions where administrative investigations are discussed, and members of the public are not allowed to appear in those sessions.

However, as a practical matter, their influence is really limited to the ability to give advice.

The statute puts no burden on the agency to follow that advice, to explain why it's not following that advice; it doesn't require the agency to delay a decision if the Commissioners, voting Commissioners disagree with the ex officio members.

Unlike some other statutes that the lower court have upheld, there is no leverage that the ex officios have, other than the leverage that exists with this agency and every agency, which is the leverage of oversight.

Unknown Speaker: Is it correct to say they're part of the decisional process?

Mr. Noble: They are part of the deliberative process.

I would not say they're part of the decisional process in the same sense that when the time comes to make that decision, what is very, what is as a practical matter very clear to everybody is that they have no vote, because when the motion is called... and they cannot make the motion.

When the motion is called, they are silent at that point.

They cannot vote, and I would say whatever weight is carried by the ex officio members having the right to speak is overridden by the fact that they have absolutely no vote, and also the fact that we are subject, as the court of appeals below noted, to normal oversight, and the... which can include hearings, can include private meetings with Commissioners, and all of that is much more... has much more weight on an agency, on every agency, than just the sitting of the ex officio members.

Unknown Speaker: Is there any rule of the Commission or any rule generally that would prohibit one of these members from speaking to one of the voting members on the way down the hall before the meeting starts?

Mr. Noble: No.

Unknown Speaker: So there wouldn't be anything that would prevent such a member from saying, you know, 37 Senators are going to be furious if you go after so-and-so, on the way into the meeting?

Mr. Noble: No, but... but that doesn't really... is not necessarily a function of sitting at the table.

Unknown Speaker: Well, but it's also a function that the general public doesn't get to perform, either.

They don't walk down the hall from their offices to the meeting rooms with the Commissioners, so that there are opportunities, even within the technical rules there are opportunities to influence which members of the general public wouldn't have.

Mr. Noble: Yes.

There is that opportunity, but again, I think that opportunity pales in comparison to the opportunity, when the tapes are made public, for Congress in oversight functions to see what the agency has done.

As a practical matter, all they can do is say what they think, and that's where it stops.

What I'd like to just briefly say is that in terms of the remedy involved in this case, make two very quick points.

One is that what we're asking for is the application of Buckley v. Valeo, and to find that the agency was, in fact... all the actions of the agency were, in fact, de facto valid, and second, that we wanted to point out that contrary to the NRA's position, there is a remedy in this case.

Unknown Speaker: Thank you, Mr. Noble.

Mr. Bender, we'll hear now from you.

Perhaps you might touch briefly on the de facto matter which you, I believe you argue in your brief.

Argument of Paul Bender

Mr. Bender: Yes.

Thank you, Mr. Chief Justice, and may it please the Court:

First of all, with regard to the question of the Commission's independent litigating authority, we take the position, as you know from the brief we filed in response to the Court's invitation, that the Commission does not have independent litigating authority.

The right procedure, I think, would be for the Clerk to reject the brief or petition filed by an agency without such authority, and ask the Solicitor General whether the Solicitor General in fact authorizes the petition.

In this case, we did, in response to the Court's question, authorize the petition.

I think that authorization is valid.

Unknown Speaker: I guess we have accepted petitions from the FEC in the past that weren't authorized.

Mr. Bender: Yeah, and I think that's--

Unknown Speaker: There seems to be kind of a practice of it, so it's quite understandable that the Clerk accepted this one, I suppose.

Mr. Bender: --Right, and I think it's also understandable that the FEC did not ask us for authority before filing its petition.

They notified us, I believe, the day before they filed it as a matter of courtesy.

Unknown Speaker: Well, how would the subsequent consent or authorization relate back?

I mean, if the thing isn't properly filed, isn't that the end of the matter?

Mr. Bender: It... no, I don't think so.

It's similar to the practice that's followed throughout the appellate courts of the United States with regard to notices of appeal.

Agencies of the United States often file protective notices of appeal without first getting the Solicitor General's authorization because time does not permit that, and after the notice of appeal is filed, the Solicitor General often authorizes the appeal and it goes ahead.

Unknown Speaker: But now, is that the same sort of statutory situation that you have in petitions to this Court?

2--

Mr. Bender: I think it is.

The Solicitor General has the same authority to authorize appeals by the United States as it does to authorize participation in this Court.

Unknown Speaker: --So a U.S. Attorney filing a notice of appeal from the district court to the court of appeals, you say that notice of appeal would be, not be any good so far as the court was concerned, unless the S.G. approved it?

Mr. Bender: I think the appeal would not be any good, unless the Solicitor General approved, authorized the going forward with the appeal, but I think the approval does not have to be given before the time for the notice of appeal to be filed, because of the time pressure.

Unknown Speaker: In the courts of appeals you're saying that they are invalid?

Mr. Bender: No, no.

I'm saying that they are valid, even though the authorization comes after the filing of the notice of appeal.

Unknown Speaker: They are valid because the U.S. Attorneys have authorization to proceed immediately, without the prior consent of the Solicitor General, so they have authorization.

You're saying the practice of the Justice Department is to give them authorization to file appeals.

Mr. Bender: Right.

It's an acquiescence practice.

Unknown Speaker: Now, have you given the FEC authorization to file petitions for certiorari?

Mr. Bender: I think no.

Unknown Speaker: --Then it's not a parallel situation.

Mr. Bender: In light... I agree it's not an entirely parallel situation, but in light of what Justice O'Connor mentioned, that is the general understanding that they were reasonable in having that they could file this petition without our authorization, the petition should not be deemed to be out of time because they did that and we only authorize it after--

Unknown Speaker: Is it the case that--

Mr. Bender: --the petition is filed.

Unknown Speaker: --when a person reasonably believes he is an agent, he is an agent?

Mr. Bender: I think it's... I wouldn't analyze it as a technical question of the law of agency.

I would analyze it as a question of whether the jurisdictional limits on the filing of the petition were met in this case, and I think that since an agency of the United States did file a petition and signify their intention to go forward with the case, and since we relatively promptly authorized that petition after the Court noticed the problem, it should be deemed to relate back, and you shouldn't apply technical concepts of the law of agency to the question.

There's no unfairness here to the respondents.

They had notice that the petition was being filed at the time.

Unknown Speaker: You can say that about any agency coming here without the approval, that there was no unfairness because the respondent knew that the agency was filing a petition for certiorari, but that doesn't get you over the hurdle.

Mr. Bender: I think, Chief Justice Rehnquist, in a case where it was clear that the agency did not have the authority, a case might be made that the petition should be deemed out of time, but I think it's important to take into account here the reality that this Court had in the past--

Unknown Speaker: Well, but I--

Mr. Bender: --accepted those petitions.

Excuse me.

Unknown Speaker: --I thought it was clear here, according to your brief, that the agency does not have that authority.

Mr. Bender: It was... it is clear to us that they do not, but the agency might very reasonably have thought that they did, because in the past they have filed petitions without authorizations from the Solicitor General and the Court has gone ahead and granted the petitions and heard the cases on the merits.

Unknown Speaker: So is there an agency theory that if you reasonably think you have authority you're more likely to have it than if you don't, is that the--

Mr. Bender: I don't think you should analyze this as a matter of agency theory.

I think you should analyze it as the correct interpretation of the Court's jurisdictional limits on the time of filing a petition, and I think if it is unclear whether the agency has the authority, and the agency reasonably believes it has the authority, and the Solicitor General's authorization is given relatively promptly afterwards, that there's nothing that prevents you from having that authorization relate back.

Unknown Speaker: --Mr. Bender, you agree... you disagree with FEC on the merits and say that this is a violation of separation of powers.

Mr. Bender: Yes.

Unknown Speaker: Do these members have to be appointed by the President?

Are they officers of the United States?

Mr. Bender: I think all members of the Commission would have to be appointed by the President.

I think they are officers.

Unknown Speaker: So you think they're covered by the Appointments Clause--

Mr. Bender: Yes.

I think--

Unknown Speaker: --and that ends it as far as you're concerned.

Mr. Bender: --the Appointments Clause is a simple way to decide this case on the merits, and for the reason the Court has given in its questions, we think that the fact that they don't have the vote is not determinative.

They can participate in discussions, they can put items on the agenda, they can make motions as far as we know, they can supervise the staff, they can participate in private discussions between petitioners, they are colleagues of the other commissioners.

I would like to spend the rest of my time on the question of remedy, which the FEC did not have a chance to explore at length in its argument.

Our view is similar to theirs.

We agree with the FEC with regard to the remedy, that the Court should follow the same practice it followed in Buckley and Valeo.

In Buckley and Valeo the Court went out of its way, even though it held that the structure of the Commission was unconstitutional, to delay its mandate for 30 days in order not to interrupt enforcement of the provisions, the substantive provisions that the Court sustains.

Unknown Speaker: Of course, in Buckley, the thing was just a declaratory judgment, so the mandate was really meaningless anyway.

Mr. Bender: Right, and this challenge should also have been a declaratory judgment, and if it had been a declaratory judgment, then I think Buckley would be directly on point, and you would follow that procedure.

I don't think you ought to change--

Unknown Speaker: Why should this have been a declaratory judgment?

I thought... I thought that this respondent was prosecuted for a violation.

Mr. Bender: --Right, but the structural defect that the respondent points to was never alleged by the respondent to be prejudicial at all to the respondent, and in fact the respondent did not make the claim, as it could have before the Federal Election Commission when they were considering the bringing of the enforcement action against them.

And so a structural challenge like this, especially in light of Buckley, which says that enforcement can go forward even though the structure is unconstitutional, I think Buckley holds that that kind of challenge should be made not in an enforcement proceeding but in a declaratory judgment proceeding.

Unknown Speaker: Buckley holds that if it's made in a declaratory judgment proceeding you don't issue an immediate... but it... I don't know that Buckley holds that it should be brought, it must be brought in a declaratory judgment proceeding.

Mr. Bender: No, but... although Buckley holds that if made in a declaratory judgment proceeding, it operates only prospectively.

Buckley further holds that pending enforcement proceedings, indeed, enforcement proceedings that weren't even pending at the time but that might be initiated within 30 days after the decision in Buckley, should not be interfered with.

That's a holding of Buckley, also, and I think if you read that in connection with this case, the conclusion is inevitable that you cannot raise this as a defense in the pending enforcement proceeding.

Now, one technical difficulty with that, I should point out, is that there is a declaratory judgment proceeding in the FEC statute, section 437h, and it is... the procedures are very similar to the procedures that happened in this case, but there is a technical difference.

Under the declaratory judgment procedure in the statute, the district court is not to decide the constitutional question.

It is to refer it immediately to the court of appeals en banc.

That didn't happen here.

Unknown Speaker: Why do you refer to it as a technical difference?

Mr. Bender: It's a difference in the... it's a difference in the procedures that take place.

I don't think it affects the ability of this Court to consider the issues.

In this case, it's true that the court of appeals did not consider the question en banc, but the court of appeals did consider the questions extensively.

The questions are being argued to you here.

I think that it would have been--

Unknown Speaker: Well, are you saying that this is not a proper defense to an enforcement action?

Mr. Bender: --Yes, right.

I think Buckley holds that, that this is not a proper defense in an enforcement action, because Buckley holds that--

Unknown Speaker: So if there's a constitutionally defective structure, constitutionally defective entity that brings an enforcement action against you, that constitutional defect is not a defense?

Mr. Bender: --Right.

I think that's the holding of Buckley, and also the holding of Northern Pipeline with regard to similar-type structural defects in the bankruptcy courts.

Unknown Speaker: Well, that really seems quite a weird result, that you can be proceeded against by an agency that is totally improperly constituted but you can't raise that as a defense to the proceeding.

Mr. Bender: I think that's what Buckley holds, and I don't think it's that weird, because... I think that should not apply in a case where there is demonstrated prejudice from the structural defect, but I think the basis for Buckley's holding that, and I think it is sensible, is that when there isn't any prejudice from it, it makes sense not to disrupt, cancel, invalidate hundreds of pending proceedings, throwing the whole scheme of the Federal statute into disruption.

Unknown Speaker: Well, I can see how you'd say that, some sort of de facto theory that these six people who are concededly present and functioning, and properly so, would have done exactly the same thing, but it seems to me when you say the... you can't even make the argument in an enforcement proceeding, that that's rather extreme.

Mr. Bender: I think you can make it if you can show prejudice.

Thank you, Mr. Chief Justice.

Unknown Speaker: Thank you, Mr. Bender.

Mr. Cooper, we'll hear now from you.

Argument of Charles J. Cooper

Mr. Cooper: Mr. Chief Justice, and may it please the Court:

I should like to speak only for a moment on the jurisdictional question that the Court has discussed.

Our position is this case is JOT and, Mr. Justice Scalia, I think your point regarding this issue going away if the Court rules on the cert petition is not the case, because in this case the Court ruled on the cert petition and granted it, and obviously the issue is still here.

The issue is a jurisdictional one.

The Solicitor General says that he can retroactively approve a cert petition filed by the Federal Election Commission, says that is like a protective notice of appeal.

I think, Justice Scalia, your points were right on target in that regard.

My own experience is there's never been a protective notice of appeal filed without the Solicitor General's approval.

The point, Your Honor, again is this case is jurisdictionally out of time.

Unknown Speaker: Was it... it was filed within 90 days by the FEC, and then there's, I gather a justice for good cause can extend it for 60 days in addition under the statute, at least as I read that.

Is that right, and if that is right, was the approval given by the S.G. within that 60 days or outside of that 60 days, too?

Mr. Cooper: Justice Breyer, it was given outside of the 60-day period of time, so there's no understanding of the time limits of this Court, of which I am aware anyway, that would bring the authorized petition within the time limits of this Court, so if it is... if the Court has jurisdiction, it must be because the Solicitor General is empowered after the fact to authorize the petition.

And of course if... in this case it would mean that the Solicitor General has the power to decide not to authorize it and to pull this case from this Court's docket by his own unilateral action.

We don't think that is within the Solicitor General's authority.

Moving now to the merits of the ex officio point, Your Honor, I think that counsel for the Commission's concession that ex officio members on this Court disposes of this case, the--

Unknown Speaker: There is a difference, Mr. Cooper.

I suppose that ex officio members on this Court would invade our independent authority, but your theory is a little different, I think.

Your theory is one of aggrandizement, that the Congress is aggrandizing itself or enhancing its own powers by putting its people on another branch.

It seems to me the theory is different in the two cases.

Mr. Cooper: --Well, Your Honor, I think actually our theory is both that Congress is invading the executive's domain, and it is doing so in a way that aggrandizes its own, so I believe we have the benefit of all of this Court's separation of powers jurisprudence.

Unknown Speaker: As to the invasion point, it seems to me rather clear that we would react rather promptly if somebody said somebody's going to sit on our conferences, and it's interesting to me that for some 20 years or so, the FEC doesn't seem to have been bothered at all by the presence of these members.

Nobody ever complained about it, did they?

Mr. Cooper: Well, Your Honor, they were certainly forewarned by the Ford administration that, were the ex officio's retained in the statute, that that would be an unconstitutional invasion of the executive branch.

Unknown Speaker: Well, they're not really the executive branch, is the reason for that, isn't it?

I mean, they are the fourth branch.

Mr. Cooper: Your Honor--

Unknown Speaker: It isn't as though, if the President objected to it they would stand up and assert the Chief Executive's prerogatives, would they?

Mr. Cooper: --Excuse me?

Unknown Speaker: It is not as though, if the President objected to it, the members of the Federal Election Commission would stand up and assert the President's prerogatives on his behalf.

Mr. Cooper: Your Honor, it is not at all like that, and in fact that brings this ex officio issue into a very sharp focus.

This... placing ex officio members on an independent agency, so-called, is doubly unconstitutional.

It goes beyond just placing them, for example, at the President's Cabinet table.

Counsel for the Election Commission throughout their briefs have made clear that not only is the Commission statutorily independent from the control of the President, but the Commission is even free from its so-called partisan influence, the President's partisan influence.

In the next breath, they quite frankly admit that the congressional agents are on the Commission for the purpose of representing the Congress, and for the purpose of influencing the Commission through their sound advice, so not only has the Congress stripped the President of a purely Article II function, enforcement of law, and placed it in a Commission, if the Commission is right, that is free from the President's control, but it has also installed on that agency two agents of its own for the purpose of influencing the Commission in its Article II functions.

This is more unconstitutional, Your Honor, than if Congress had simply said, we'll place an ex officio tenth justice on this Court.

Unknown Speaker: But the members of the... the voting members of the Commission are appointed by the President, aren't they?

Mr. Cooper: Yes, Your Honor, they are, as a result of Buckley, so--

Unknown Speaker: So why would one say this is out of the control of the President?

Mr. Cooper: --Your Honor, the President has got influence to the extent that the appoints the members.

He has no influence beyond that, according to the Commission, and I think according to a fair reading of everything we know about Congress' intentions for this Commission.

He has no... our position is he has no removal authority at all, let alone the at-will removal authority that it is our submission the President must have if this Commission is to exercise the purely executive function of law enforcement.

Unknown Speaker: What about the FTC?

I mean, there you have to have removal for cause--

Mr. Cooper: Yes, Your Honor.

Unknown Speaker: --as I recall, and yet surely the FTC enforces... is a law enforcement agency.

Mr. Cooper: Yes, it is, Your Honor, and it is our submission that if Congress is going to place authority in the FTC or the FEC to, as the exclusive civil enforcement authority over an entire regulatory statute, then it must ensure that that authority is subject to the at-will removal control of the President.

Unknown Speaker: Well, what about Humphrey's Executor, the case that held that FDR could not remove a member of the FTC at will?

Mr. Cooper: Well, Your Honor, the FTC at the time the Court made that ruling, according to the Court, did not participate at all in the executive authority.

Its powers were judicial.

Its powers were legislative.

It did not at that time have civil enforcement authority such as the Commission here has, and in fact the Commission's authority--

Unknown Speaker: You don't have to go this... you're not fighting the lost battle of the headless fourth branch.

I gather your point just is that it's worse to have Congress install some of its agents in an independent agency than it is to have Congress install some of its agents in an agency that the President at least has control over.

That's the only point you're making--

Mr. Cooper: --I think it's doubly unconstitutional for that reason, yes, Your Honor.

I'm making three separation of powers arguments: the presence of the ex officios as participating members on the Commission, with full rights to advise and in fact to influence through their sound advice the Commission, is an unconstitutional invasion of the executive's powers because the Commission itself exercises exclusively Article II powers.

Secondly, we believe that in fact the removal, the lack of removal power is a constitutional dimension problem, and not Humphrey's Executor, not Morrison v. Olson, none of this Court's cases dealing with the headless fourth branch, Justice Scalia, have ever foreclosed the proposition we advance here, which is that when you have principal officers who control a Commission charged with purely Article II powers, the civil enforcement of a Federal regulatory statute, including the ability to get penalties as the Commission did in this very case, and you cannot divorce the President from the control of that activity, and none of this Court's cases have held otherwise.

Finally, we think that the... I'm sorry, Justice Stevens.

Unknown Speaker: --I was going to ask you if you would take the same view if the two individuals were not actually agents of Congress but rather the statute in effect had designated a public member to sit in on all meetings for information purposes and periodically report to Congress.

Would that be subject to the same attack?

Mr. Cooper: Your Honor, I think that would be a tougher case for me to win, largely for the point you mentioned earlier, the aggrandizement--

Unknown Speaker: Right.

That would--

Mr. Cooper: --of Congress, but I don't... I think that if... if Mr. Bender is correct, and I think he probably is, that the exercise of this authority, this participatory authority as a member of the Commission, is an authority that only an officer of the United States can hold, then--

Unknown Speaker: --So you'd say that would violate the Appointments Clause.

Mr. Cooper: --It would.

Unknown Speaker: But supposing you let the President appoint that public member, a member to be appointed by the President to perform this function of advising Congress and passing messages from Congress to the Commission.

Mr. Cooper: Oh, well, under those circumstances I think the objectionable features would be drawn out very thin.

Unknown Speaker: So it's the fact that the two individuals are actual officials of Congress that are critical to your case.

Mr. Cooper: I don't think it's necessarily... I don't think I would lose your first hypothetical, necessarily.

I think my case would be weaker.

I think the fact that Congress has installed two plainly congressional agents makes my case very strong, Your Honor.

Unknown Speaker: Isn't part of your argument, too, that Congress has selected A and B and said you're going to do this, rather than speaking for a general class, say, a public member, and saying the President may appoint a member of the public?

That would be better for the constitutionality, I take it, of your... than for the Congress to say XY is going to be the public member?

Mr. Cooper: Yes, Mr. Chief Justice.

The President gets to appoint six members from the public, so long as they are three Democrats and three Republicans, a feature which we also think is an invasion of his nomination authority.

Unknown Speaker: A case that runs through my mind is the problem Congress might have, say, with the CIA, some agency that doesn't make its deliberations public, but nevertheless Congress wants to know what goes on.

Does Congress have the power to appoint either a public member, or maybe one of its agents, to sit in on all policy discussions of the CIA as a method of keeping itself informed about sensitive national security matters?

Mr. Cooper: Your Honor, I think that would fall afoul of the very points we're making here.

It seems to me that the CIA is engaged in an executive function, probably a purely executive function.

The Congress has at its disposal a range of constitutional means to keep itself informed.

It can subpoena the CIA, and except for executive privilege matters it can learn whatever it needs to learn about what is going on at the CIA.

What it can't do is invade the CIA with an agent there for the purpose of influencing--

Unknown Speaker: Say it's just for the purpose of informing.

Of course, they could perform some influence.

One of the things that puzzles me about this case is, I don't know what these two people really do that has that much significance to it.

Mr. Cooper: --Well, Your Honor, they do everything--

Unknown Speaker: Nobody seems to have complained for 20 years.

That's the puzzling thing.

I would think somebody would have been unhappy with them if it was a serious problem.

Mr. Cooper: --Well, Your Honor, I think they do everything that the other members, the other six members do, except vote, and in fact--

Unknown Speaker: And except paid, I guess, to.

Mr. Cooper: --Well, no, they just don't get paid--

Unknown Speaker: For what they do.

Mr. Cooper: --Well, I'm not--

Unknown Speaker: They get paid for being agents of Congress, which is what they are in this capacity.

Mr. Cooper: --What they are in this capacity--

Unknown Speaker: Mr. Cooper--

Mr. Cooper: --Yes, sir.

Unknown Speaker: --are you going to address retroactivity?

Mr. Cooper: Yes, Your Honor, I would like to do that.

Unknown Speaker: Mr. Cooper, before you go into retroactivity, just explain to me, if you would, how it is that the Attorney General can be a member of the Sentencing Commission, and that's not a problem.

Mr. Cooper: Your Honor, the Sentencing Commission... it may well be a problem, Your Honor.

I'm not sure it isn't a problem, but I think the case against the Attorney General's ex officio membership on the Sentencing Commission is probably weaker, because the activities that the Sentencing Commission performs are themselves not activities that the executive branch can't perform.

They are executive, quasi judicial, quasi legislative, the kind of activities that the Justice Department performs, so the fact that the Attorney General is a part of that ex officio is not necessarily the investing in the Attorney General powers that the Constitution doesn't allow him to have.

These ex officio congressional agents have powers of an executive nature, the enforcement of a regulatory statute, the participation in the decision-making for that enforcement.

That is a power they cannot have.

Now, if Mr. Bender is right, however, and that is also a power that requires an officer appointed under the Appointments Clause, then the Attorney General is clearly unconstitutional as far as the Sentencing Commission is concerned.

Unknown Speaker: On the retroactivity point, would we have held that if there are certain deficiencies in the grand jury's structure, if the case proceeds and there's a conviction, the grand jury deficiency is essentially harmless error in some contexts.

Why isn't that true here?

Wasn't there an enforcement proceeding that went ahead in the district court?

There was an adjudication of liability?

Why doesn't that cure any defect that occurred in the investigative stage of the case?

Mr. Cooper: As opposed to the actions that took place from the filing of the complaint in our--

Unknown Speaker: Yes.

Mr. Cooper: --Well, Your Honor, I think the case against the presence of the ex officios with respect to investigation is weaker in the sense that this Court in Buckley recognized that Congress itself can perform investigatory powers, and that the Federal Election Commission, even with members, voting members appointed by the Speaker of the House, for example, can have those powers.

Unknown Speaker: Was the case prosecuted in the district court by attorneys for the Commission, or by the Justice Department?

Mr. Cooper: By attorneys for the Commission.

Unknown Speaker: So that you say that... would you say that there's an ongoing violation of the structural nature because those attorneys are under the supervision of the Commission which has these ex officio members on it?

Is that your theory?

Mr. Cooper: Oh, yes.

Yes, Your Honor.

I think that however murky it may be regarding the ex officio, the participation of the ex officios in investigatory activities, it's not murky at all that a complaint filed for the purpose... by a Government agency for the purpose of effecting a civil penalty for a violation of the Federal regulatory statute is an executive action, and so that is what this Commission was disqualified by the Constitution from doing, because--

Unknown Speaker: Why would this disqualify it?

I mean, you've got six people, and they were the only six people who could vote, and they're clearly all right.

Mr. Cooper: --They are, Your Honor, but this Court's decisions have always recognized that the... that in raising a defense to a regulatory action of this kind the defendant doesn't have to show that a different decision would have been made.

That's an impossible burden on a defendant raising a constitutional challenge to the structure, to the composition of the enforcement authority, and that would be an impossible burden to place on the respondent.

Unknown Speaker: What case are you relying on for that proposition?

Mr. Cooper: Well, Buckley, for example, I think Morrison v. Olson.

If... and this really gets into this retroactivity point.

Unknown Speaker: May I ask you another question before you get to retroactivity?

Why isn't the proper way to characterize the case something like this.

There's an automatic severance provision in effect in the statute for this agency.

Therefore, the clear unconstitutionality is the activity, the presence of the ex officio members.

The way to cure that unconstitutionality is, in fact, to declare it and, if there were need, to enjoin any further participation by them.

The only remaining question is whether those who were properly constituted, the six voting members, were influenced either in the instigation of the prosecution or its continuance by the two who had a potential for improper influence.

Therefore, the question is, find out whether in fact that happened and, if it didn't happen, or perhaps in the alternative if the six now wish to proceed, period, that is enough remedy for you.

The constitutionality is cured, the remedy is prospective, and that's the end of the case.

Mr. Cooper: Your Honor, it wouldn't because, at least it is our submission that the Commission was constituted such that it was disqualified from enforcing this statute.

It was disqualified from bringing this--

Unknown Speaker: You'd have a stronger argument if you didn't have a severance provision, wouldn't you?

Mr. Cooper: --Your Honor, I don't think so.

I think that the severance provision allows for the correction of this statute and it to go forward without further involvement of the Congress, but it does seem to me that those acts it has taken which were invalid, which were void, can't just be somehow deemed valid, and that--

Unknown Speaker: That's a way of characterizing the case.

Mr. Cooper: --Yes.

Unknown Speaker: But it's clear from the severance provision that the acts of the six are not, per se, facially unconstitutional merely from the... because of the presence of the two.

Mr. Cooper: Your Honor--

Unknown Speaker: That's one distinction from a... a non... a statutory severance case from a nonstatutory severance case, isn't it?

Mr. Cooper: --Their acts were not invalid, but the acts of the Commission itself were invalid because of the presence--

Unknown Speaker: Does it have anything to do with whether their acts are invalid?

I thought it simply had to do with whether the statute continues to subsist as an operational statute.

Mr. Cooper: --That's what the severance point I think has to do with it, Your Honor, but--

Unknown Speaker: So you can cut out a piece of the statute and let the rest continue to operate, as opposed to saying the whole statute's null and void.

Mr. Cooper: --Well, that's true, but you can't--

Unknown Speaker: It doesn't speak to operational... operations at all.

Mr. Cooper: --You're right, Your Honor, and my point on the operation, Justice Souter, is that if this, if these ex officios had had voting power, but only two out of eight, they couldn't have coerced or compelled the Commission, and it may well have been that they voted against this action, but in my opinion, that would clearly make it, the Commission itself, void.

Unknown Speaker: Well, it would make it, because your argument would still be an influence argument, just as it is here.

Mr. Cooper: Your Honor, my argument is a facial challenge.

Unknown Speaker: You can't compel with... two out of six does not compel, nonvoting two out of six does not compel, but your argument would be essentially the same, wouldn't it?

Mr. Cooper: My argument is not an as-applied argument, it is a facial challenge based upon the membership of the ex officios, not upon whether or not they actually influenced this case in a way against my clients.

If the statute had said all of the Federal Election Commission members will be white, then that would be an invalid Commission, and the acts taken against me, even if they would have been taken by a perfectly constitutional Commission, would be void, in my opinion, and I would have a valid defense.

If in--

Unknown Speaker: Well, you think of a facial attack as being associated with the First Amendment.

Other than that, to talk about something being void or invalid and something like that, it's not always that clear that it's totally across the board.

Mr. Cooper: --Well, Your Honor, if... let's take the Morrison case, for example.

If this Court had thrown out the independent counsel instead of upholding it, then surely it would follow, I would submit, that the criminal prosecution of the defendants in that case would have had to be dismissed.

It couldn't have just been continued by that void independent counsel, or even by an independent counsel at that point somehow constitutionally repaired to go forward.

The same would be true in the Buckley case.

Mr. Bender suggested that Buckley held that we can't raise a separation of powers defense in response to an enforcement action against us.

Well, Buckley wasn't... did not arise in the context of a defense for an enforcement action.

It was, as the Chief Justice pointed out, a declaratory judgment seeking only one thing, prospective relief.

That's what they got.

But if the Buckley case had indeed arisen in the same context that this one is, with Mr. Buckley and others suffering under not only what we submit is unconstitutional prosecution in a civil enforcement action, but the actual imposition of civil penalties against them, then surely this Court's invalidation of the Commission for the constitutional violations in that case would mean that those civil penalties in that prosecution under the Federal Election Campaign Act go away.

And that's what our submission is here, that the Court really, if we are correct on the merits, and the Commission itself is an unconstitutionally constituted body and therefore disqualified, we would submit, from enforcing a Federal regulatory statute in court, then the court can't just, I think in the words of the Harper case, disregard current law and allow the Commission to just go forward without interruption as the Commission would suggest.

Unknown Speaker: If you prevail on the merits, can Congress act quickly and ratify all existing enforcement actions?

Mr. Cooper: Your Honor, I don't believe that it can.

My time is up.

Unknown Speaker: No, you can answer the question, Mr.--

[Laughter]

Mr. Cooper: Your Honor, I don't think Congress has any greater authority to validate, or somehow deem valid, an unconstitutional civil prosecution than I believe this Court has.

Thank you very much.

Chief Justice Rehnquist: Thank you, Mr. Cooper.

The case is submitted.

Attribution:

The OYEZ Project

Featured:

School Bd. Of Nassau County v. Arline - Oral Argument

Fri, 09 Jan 2009 14:48:31 +0000

Case:

School Board of Nassau County v. Arline

Media File:

85-1277_19861203-argument.mp3

Related Transcript:

1986_85_1277_argument.xml

Transcript:

Argument of Brian T. Hayes

Chief Justice Rehnquist: We will hear arguments first this morning in No. 85-1277, the School Board of Nassau County, Florida versus Gene H. Arline.

Mr. Hayes, you may proceed whenever you're ready.

Mr. Hayes: Mr. Chief Justice, and may it please the Court:

Today this Court considers whether the contagious, infectious disease of tuberculosis is a handicap under the Rehabilitation Act of 1973.

Additionally, a second question is presented as to one so infected is otherwise qualified.

Because of the split argument with the Solicitor General, I will address the facts and point two; the Solicitor General will address his remarks to point one in the brief.

The facts, we submit, in this case are extremely significant.

And the nondisputed facts are as follows.

In 1977 Gene Arline was a tenured teacher with the Nassau County School system, teaching in the South Side Elementary School.

The School Board had no knowledge... none... that she had in fact suffered from TB since age 14.

In 1977 she had a relapse, that is, she became infectious, had a positive culture.

She was suspended briefly.

In 19... in the spring of 1978, she again suffered a relapse, and at that time, Mr. Marsh, the superintendent, was contacted by the State Health Department, the local unit there in Fernandina Beach, which is in Nassau County.

And they, that is, the State Health Department, recommended that this teacher is an unacceptable risk; please take her out of the classroom.

She was not dismissed.

She was removed with pay for the balance of the 1978 year; that is, it was in May, so there was only perhaps a month to go.

The next fall, in November, she again tested positively, making the third positive test within an 18-month period.

At this point, once again... now Dr. McEuen enters the case, Dr. McEuen being a superior to Dr. Lund.

And Dr. McEuen, who was assistant director for the State Tuberculosis Center, came to the school board, initiated the process, and said to Mr. Marsh: This woman poses an unacceptable risk.

She was again suspended with pay.

And in the spring, late spring of 1979, the school board conducted the administrative procedure to commence her dismissal.

This procedure was eventually affirmed by the state court, the First District Court of Appeals in Florida.

In 1982 she filed her complaint in the District Court in Jacksonville, and a trial was set, alleging for the first time, of course, that she was discriminated against because of her handicap.

There was actually two counts in the complaint, but the only count we're concerned with is count one.

Unknown Speaker: Mr. Hayes?

Mr. Hayes: Yes.

Unknown Speaker: Was she at any time hospitalized?

Mr. Hayes: In 19... our... the transcript of testimony indicates that in 1957 she was hospitalized.

Unknown Speaker: I mean, during this period.

Mr. Hayes: No, during this... well, yes--

Unknown Speaker: Well, aren't infectious people hospitalized in Florida usually?

Mr. Hayes: --They are oftentimes, Justice Marshall.

Unknown Speaker: Compulsory, if necessary?

Mr. Hayes: Yes, that's correct.

Unknown Speaker: Why wasn't it done in this case?

Mr. Hayes: It was not in this case, as we understand, largely because through Dr. McEuen's testimony, that it's no longer necessary with the new drugs since 1950.

They can give heavy doses of this medication, which can immediately reduce, or have an effect to attempt to reduce, the infectiousness.

Unknown Speaker: That's uncontradicted?

Mr. Hayes: That's uncontradicted, that she was not... now, she was hospitalized, she testified at page 77 of the transcript in the trial, about her being hospitalized at age 14, at Sunland Center in Tallahassee.

She she had a history of being hospitalized, although we didn't know it.

In any event, as I was indicating, after the... the trial court in this case then went on and found, in an alternative type judgment, he found first of all that tuberculosis such as she suffered, and those are his words, and I'm quoting, it's the court's opinion that an infectious disease such as the plaintiff in this case had does not qualify as a handicap.

But then he went on to say, if it does, assuming, arguendo, that it does, then the court must consider whether she's otherwise qualified.

This goes into our second point.

If she's not otherwise qualified, she has not met her burden.

The burden is clear in a handicap discrimination case, or in a case under the rehabilitation act.

As Justice Marshall said, as recently as Choate v. Alexander, the plaintiff must establish that she has a qualifying handicap.

She must establish that she is otherwise qualified.

She must establish, if she's alleging discrimination, that she was discriminated solely because of her handicap.

Now, if she fails in any of those particulars, the case is not made out.

This Court has stated in Southeastern Community College v. Davis, which is the benchmark case on "otherwise qualified", that simply means that with the handicap, or notwithstanding the handicap, he or she can meet all the of the requisite requirements, the legitimate requirements, of the job.

We suggest on point two that an infectious disease, where a doctor... and this is not a doctor employed by the school board; this is the state health professional... where that doctor says, Nassau County School Board and Mr. Marsh, don't put this teacher in a classroom with young children, for two reasons.

First of all, they're highly susceptible, and number two, it's an enclosed, confined room.

And TB, as we know... TB may be unique.

I'm not a medical expert, but we know it's communicated by breathing, by sneezing, by coughing.

So it's our position on point two that how can she be qualified as an elementary school teacher when she can't get down over Johnny's desk and help him with his penmanship and arithmetic without breathing, and thus creating a risk.

But this isn't our opinion.

This is an opinion of a state health professional.

So as a matter of law, we suggest, the record amply supports the trial judge's finding that if it's not a handicap, then she's not otherwise qualified.

Unknown Speaker: Did the school board consider whether she would be qualified to teach in the high school?

Mr. Hayes: Yes.

As the testimony of Superintendent Marsh says in this case, that she did not have a certificate.

In our reply brief, we've addressed that, Justice Powell.

She was certified K through... K through 6, which is the basic elementary certification.

That's our next question under otherwise qualified.

Could we have accommodated her... that's the next inquiry... by letting her teach high school?

Well, there's two factors there.

Number one, she wasn't certified to teach high school.

Unknown Speaker: She did not have a certification to teach beyond the elementary level?

Mr. Hayes: Absolutely, and she did not seek to get it.

On page 77 of the transcript, I asked her at the trial... this is not in the Joint Appendix... on a full page, Mrs. Arline, did you consider during the intervening four years going and taking the nine or twelve hours in French or... whatever you need?

She said she did not.

But that's only the first part of that question.

We would have a different inquiry, and it's not before the Court, had she been certified.

And then we'd be faced with Dr. McEuen's testimony that the risk is real as to all persons, but it's certainly an unacceptable risk as to elementary school teachers.

So in a way, we have not reached that question of, had she been certified because she has not.

We simply suggest that the regulation is quite clear, under the duty to accommodate.

There have been no cases of this Court... there have been some lower court cases... but in referring to the duty to accommodate, the regulations specifically refer, and I'm talking about 45, the code of Federal regulations, 84.4 KL.

And it says: The duty to accommodate a handicapped person, who with reasonable accommodation can perform the essential functions of the job in question.

Now the job in question, we suggest, is an elementary school teacher, in an elementary school setting.

So it's our position, therefore, that she is not otherwise qualified for the position.

Unknown Speaker: Mr. Hayes?

Mr. Hayes: Yes, sir, Justice Scalia.

Unknown Speaker: On your point that she is not a handicapped individual, you're not merely arguing that she was discriminated against by reason of her handicap, but you're also asserting that she is not a handicapped individual.

Mr. Hayes: Yes, sir.

Unknown Speaker: Yet you say that she has been, by reason of a disability produced by the tuberculosis, hospitalized on several occasions.

Mr. Hayes: In... the evidence was, and the Solicitor General will speak to that extensively, sometime in the past, in 1957, which we didn't know about, as it turns out, until the trial... so that goes to the question of solely by reason of: did we use that as a basis.

Unknown Speaker: Okay, but I'm not concerned about "solely by reason of" right now.

Mr. Hayes: Okay.

Unknown Speaker: I'm concerned about whether she's handicapped.

Mr. Hayes: Well, that goes to the question, the definitions of impaired.

If a person was hospitalized sometime in the past, and then we get into the question of whether or not she had a--

Unknown Speaker: Had a record of such impairment.

Mr. Hayes: --That's correct.

Or a record of such impairment.

Unknown Speaker: Well, now, what does it take to establish a record of such impairment, beyond being in the hospital?

Mr. Hayes: Well, the impairment... the question there would be whether or not the impairment related to the contagiousness, or to the disease of tuberculosis.

We think that's a difference.

And Mr. Fried will--

Unknown Speaker: Well, that goes to whether she was dismissed because of it.

It doesn't go to whether she was a handicapped individual or not.

Mr. Hayes: --Well, there is a question... there's no question in the record that as a child she was hospitalized for this disease.

And that's undisputed.

It's also in the record--

Unknown Speaker: So you have to say she was a handicapped individual, don't you?

Mr. Hayes: --We... we... as the trial judge--

Unknown Speaker: Or else you tell me what else that phrase, has a record of such... right now she wasn't impaired.

She was teaching, she was doing fine.

Mr. Hayes: --That's correct.

Unknown Speaker: But she had a record of being so debilitated by tuberculosis that she had to be hospitalized.

Mr. Hayes: Correct.

Unknown Speaker: Now, what does that language mean if it doesn't cover that?

Mr. Hayes: We would, at this time, at least for point two, suggest that we would accept, as the trial judge did, that if she was indeed... if she was indeed impaired or had a record of such impairment by hospitalization, for the purposes of point two, we suggest it's not important, because she would be not otherwise qualified.

Mr. Fried will now address the Court on that issue.

Thank you.

Argument of Charles Fried

Chief Justice Rehnquist: Thank you, Mr. Hayes.

General Fried.

Mr. Fried: Thank you, Mr. Chief Justice, and may it please the Court:

The United States is concerned that handicapped persons get the full measure of protection intended for them by Congress in enacting and amending Section 504.

There is also concern that Section 504 be kept within manageable bounds.

And that means that it not be invoked to deal with all manner of social problems which were no in Congress' mind when it enacted that statute.

In particular, we think it is important that Congress had no intention to displace the web of local, state, and Federal responses to the very different and the very difficult problem of contagiousness and epidemic.

That problem, and that difficulty, is well illustrated by this case.

In this case, the school board, acting at the instance, indeed, at the insistence, of county, state... county and state health authorities, removed from a third grade classroom the respondent, Ms. Arline.

Having complied with these state directives, the school board now faces a suit under Section 504 for handicapped discrimination.

We maintain that this cannot be what Congress had in mind when it passed Section 504 and amended it.

When Congress amended Section 504 in 1974, it extended the coverage to cover not only persons who are presently handicapped, but persons who have a record of handicap, and also persons who are believed to be handicapped.

Further, Congress expanded the definition of handicapped to include any, quotes, impairment which substantially limits one or more major life activities.

But in the original enactment, as well as in the amendment, one feature remained constant: that to come within the statute at all, to count as handicapped discrimination or exclusion at all, the exclusion must be, quotes, solely by reason of handicap.

And this phrase is what keeps the statute within manageable bounds.

This phrase is what keeps it from covering exclusion on all manner of other kinds of grounds, good or bad.

And it's this phrase which demonstrates why respondent's suit was properly dismissed in the trial court.

Unknown Speaker: Mr. Fried, what is the handicap of someone who's diseased?

Is it the disease, or is it the manifestations of the disease, or what?

Mr. Fried: The statute couldn't be clearer, Justice O'Connor.

The handicap is defined as any impairment which substantially limits one or more major life activities.

Unknown Speaker: Is employment a major life activity?

Or association with other people?

Mr. Fried: Those are all major life activities.

But it would be to argue in a circle to say that if one is excluded, for instance, by reason of contagiousness, from associating with others, then that exclusion constitutes an impairment, when the question you're asking is, whether the exclusion itself is by reason of handicap.

That's a totally circular argument which lifts itself by its bootstraps.

The impairment has got to be in respect to an activity which is defined and considered apart from the exclusionary action which is the subject of the lawsuit, of the complaint.

Now, contagiousness and handicap are obvious different things.

Some people are contagious without being handicapped; others are handicapped without being contagious.

They often go together; but not always.

Other characteristics, as well, may often go together with handicapped.

For instance, age; occupation; poverty; lifestyle.

Exclusion on the basis of any of these was not intended by Congress to count as exclusion solely by reason of handicap.

In this case, nothing could be clearer than that the exclusion which took place was solely on the basis of contagion.

The school board did not know that there was any impairment in Ms. Arline whatsoever.

They had no reason to think that she had... was unable to perform her duties; there was no absenteeism; there was no deficiency in her work.

The first they heard of this matter was when they were contacted by the local health authorities and told--

Unknown Speaker: Mr. General, how do you respond to Justice Scalia's question?

How about her record of hospitalization?

Mr. Fried: --Well, she's plainly a handicapped person.

Unknown Speaker: Oh, you do--

Mr. Fried: Oh, plainly a handicapped person; no question of that.

The point that we insist on is that the exclusion can't possibly be viewed as having been solely by reason of handicap.

Indeed, it wasn't by reason of handicap at all.

Unknown Speaker: --Well, Mister--

--If you had... if you had removed the handicaps, she wouldn't have been excluded.

If there had been no history of tuberculosis, she would have still had her job, wouldn't she?

Mr. Fried: Oh, indeed not.

Indeed not.

Because, so long as she was contagious... and it's quite clear that it's possible--

Unknown Speaker: She wouldn't be contagious if she didn't have tuberculosis.

Mr. Fried: --Oh, yes.

But you can have a contagious... you can be in a contagious condition with tuberculosis, and if not tuberculosis, with a number of other diseases, without being in the least bit impaired.

Indeed, the American Medical Association, at page 6 of their brief, recognizes the phenomenon of the asymptomatic carrier, that is to say, the person who is infectious, who can spread the disease to others, but is in now way impaired himself.

And in that case, if the action is taken on the basis of that contagiousness, the fact that the person is or is not handicapped is simply irrelevant to the lawsuit under Section 504.

So if Ms. Arline had been an immune carrier, a sort of a medical phenomenon which is well recognized, and she had been removed because she was an immune carrier, a Typhoid Mary, as it were, that would plainly not be exclusion on the grounds of handicap.

It would be exclusion on the grounds of contagiousness.

The fact that she was also a handicapped person does not mean that the exclusion, which plainly was on the basis of the contagiousness, all of a sudden becomes exclusion on the basis of a handicap.

Unknown Speaker: And you would say... you would say that she would not have been a... the only reason you acknowledge that she's a handicapped person is because of the prior history of hospitalization.

And she had not been hospitalized and been functioning perfectly well, although she had tuberculosis, then you would say she was not a handicapped person?

Mr. Fried: So far as the record indicates, there is no other basis for concluding that she's handicapped.

But another basis might exist.

She may have had shortness of breath.

She may have had night sweats.

She may have had some of the other symptoms of tuberculosis.

But the school board knew nothing of this.

The school board did not act in response to any of this.

And therefore, whether she was handicapped or not was irrelevant to the school board's action, and should be irrelevant to this action.

Unknown Speaker: General Fried, wasn't she otherwise qualified, within the words of the statute?

Mr. Fried: We believe she was not, Justice Marshall.

Unknown Speaker: Why not?

Mr. Fried: She was not otherwise qualified, because a person who poses a risk--

Unknown Speaker: You did rehire her twice.

And you rehired her because she was no longer contagious.

Mr. Fried: --At the time she was terminated, she was contagious.

And she had been--

Unknown Speaker: But before that, she had taken time off, and had been rehired twice.

Mr. Fried: --I believe so, Justice Marshall, that's correct.

Unknown Speaker: Well, then, wasn't she otherwise qualified?

Mr. Fried: Not at the time her... not at the time she was excluded from the classroom.

Unknown Speaker: Why not?

Mr. Fried: At the time she was excluded from the classroom, she was in a contagious condition.

And a person in a--

Unknown Speaker: Well, wasn't she in a contagious condition that first time?

Mr. Fried: --Not to the knowledge of the school board.

Unknown Speaker: Well, I thought that your opponent said that twice she was released on full salary.

Mr. Fried: Oh, she was released on full--

Unknown Speaker: And why was she released?

3--

Mr. Fried: --She was released--

Unknown Speaker: --Because she was contagious.

Mr. Fried: --She was released from the classroom, Justice Marshall.

Unknown Speaker: Because she was contagious.

Mr. Fried: Yes, Your Honor.

Unknown Speaker: So she was otherwise qualified.

Mr. Fried: I don't believe so, Your Honor.

Unknown Speaker: Why not?

Mr. Fried: Because the exclusion was the exclusion from the classroom.

And she was--

Unknown Speaker: Well, what other reason was she excluded from the classroom?

Mr. Fried: --Because of her contagiousness.

No other reason.

Unknown Speaker: That's what I... well, that makes her otherwise qualified.

Or we're talking about something I don't understand.

Mr. Fried: Forgive me, I think I misunderstood.

She was qualified in other respects, except her contagiousness: quite correct.

That is so.

But in respect to her contagiousness, this was a properly disqualifying characteristic.

Unknown Speaker: Mr. Fried, suppose someone has an accident, is burned, and becomes hideously disfigured.

And the employer does not want to have anyone disfigured in the office and lets them go.

Now, the act just doesn't cover that.

Because the exclusion in your view is on the basis of the employer's dislike of the disfigurement.

Mr. Fried: I believe that is correct, Justice O'Connor.

The regulations appear to cover that case.

Unknown Speaker: Well, they do.

And so it's very hard to understand where your argument would take us with regard to irrational reasons for excluding handicapped people.

Mr. Fried: In regard to irrational reasons for excluded, handicapped reasons, I hope that our argument would say that those are not sufficient reasons, and they constitute discrimination.

But--

Unknown Speaker: Well, what about the person who's just disfigured as a result of a previous injury?

Mr. Fried: --In our view, that person is not handicapped because, to quote the statute, that person is not impaired in respect to a major life activity, except by virtue of the exclusion.

But that's that circular argument again.

Unknown Speaker: What do we do about the regulations, then?

Just ignore them, or what?

Mr. Fried: That particular phrase in the regulation, in our view, exceeds the purpose and the language of the statute, Your Honor.

Unknown Speaker: You don't even think it's a reasonable reading of the statute?

Mr. Fried: We think it's an incorrect reading of the statute.

It's an incorrect reading, which once again causes the statute to burst those manageable bounds, and to start dealing with a whole lot of other subjects which were not in Congress' contemplation at the time.

Unknown Speaker: Mr. Fried, what about a person who loses one arm.

I have a friend who's lost an arm and who's able to do everything I can do.

He can do every major life activity you can think of.

Is that person handicapped or not?

Mr. Fried: Such a person is... would clearly be considered handicapped.

Unknown Speaker: Why?

Mr. Fried: Because there are some life activities, if I may traverse the assumption--

Unknown Speaker: Some of these people do magnificent achievement, and are able to do things that everyone else can do.

But that... if they achieve the level of skill that the average person has, would they not cease to be handicapped?

Mr. Fried: --I don't believe so.

I think there would still be some activities which a one-armed person could not perform in the same way that a two-armed person could.

Unknown Speaker: Major life activities?

Mr. Fried: I believe so.

I believe so.

Unknown Speaker: But employment is not one of them?

Mr. Fried: Well, employment certainly is one of them.

But if the question is, are you able to carry out the employment?

Ms. Arline was able to carry out the employment but for the exclusion.

The only reason she couldn't teach third grade was that they wouldn't let her.

Now, that kind of inability surely can't be what the statute referred to, because that is your circular argument.

Unknown Speaker: Well, what if the parents of the children wouldn't let the children enter the classroom because they were afraid of contracting the disease?

Would that impair her ability to teach?

Mr. Fried: Well, that... it would certainly interfere with it.

But it would not impair her ability--

Unknown Speaker: You would have to have some pupils in order to be able to teach, I suppose.

Mr. Fried: --If I may, I'd wish to reserve the balance of the time for Mr. Hayes' rebuttal.

Unknown Speaker: Mr. Fried, may I inquire before you sit down about the last part of the section defining handicapped individual, which says someone, a person with an impairment, who is regarded as having an impairment is a handicapped person.

How broadly does that sweep, do you say?

Mr. Fried: That sweeps no more broadly than the term, impairment.

You have the definition of an impairment, and that is something that restricts you in a major life activity, your ability to perform a major life activity.

And if you are regarded--

Unknown Speaker: Or who is regarded as having such.

Mr. Fried: --Then you are regarded as not being able to engage in a major life activity.

So if the school board had thought that by reason of her tuberculosis Ms. Arline was unable to teach third graders... not that they wouldn't let her teach third graders, but that she was unable to do so... then she would be regarded as having--

Unknown Speaker: And you don't think that if the school board thought that one manifestation of tuberculosis was contagiousness, and because of the tuberculosis, which they regarded as her impairment, that that puts her under the act?

Mr. Fried: --No, I don't think so, Justice O'Connor, because tuberculosis is not the impairment.

The impairment is whatever prevents you, the very condition, the shortness of breath, the hospitalization, whatever, which prevents you from engaging in the activity.

The word, tuberculosis, is perfectly ambiguous.

It can cover the condition of being contagiousness without any impairment, or it can cover the impairment as well.

And I think we musn't get caught up in that ambiguity.

Argument of George K. Rahdert

Chief Justice Rehnquist: Thank you, General Fried.

We'll hear new from you, Mr. Rahdert.

Mr. Rahdert: Thank you.

Mr. Chief Justice, and may it please the Court:

Both issues presented on this case are narrowly drawn, and present the Court with the identical choice.

The petitioners, as they have framed the issue in their cert petition, would have this Court enact a per se rule which categorically excludes people with infectious, contagious tuberculosis from coverage under the Rehabilitation Act.

The second question--

Unknown Speaker: That's not quite true.

That's not quite true.

They couldn't be... they couldn't be dismissed by reason of their disability.

Mr. Rahdert: --Justice Scalia--

Unknown Speaker: As I understood both arguments, if the reason for the firing is that the person is not able to teach because they're ill now and then, or something of that sort, a person with tuberculosis would be covered, just as a person with any other disease that causes impairment would be covered.

What they're arguing is simply that dismissing that person because of the threat of contagion would not be covered.

That's quite different from saying that a person with tuberculosis is not covered at all, isn't it?

Mr. Rahdert: --Justice Scalia, if I can refer to the first question presented on review, which was presented in the cert petition of the school board: Whether the contagious, infectious disease of tuberculosis constitutes a handicap within the meaning of Section 504.

The issue that was initially briefed by the petitioners was a per se issue.

The petitioners analyzed legislative history to suggest that since contagious diseases were not specifically included, they are excluded from the coverage of the Act.

Unknown Speaker: Well, I think everybody agrees on the point, as you've... as you've just put it.

Unless that question means whether the contagiousness is covered by the handicapped act.

That's the only point that's being argued here.

Mr. Rahdert: The question as originally presented was a per se question.

If the petitioners are receding at the per se question, and we are looking at contagiousness, it is our contention that contagiousness goes to the second question presented, which is whether Mrs. Arline was qualified.

Essentially, the questions framed in this... in this appeal pose first the question of coverage, and second, the question of whether there is a remedy, whether Mrs. Arline is qualified.

We would argue that the contagiousness goes to the second question, is very properly part of the analysis of whether Mrs. Arline is qualified to remain as a teacher in the Nassau County School System, but it doesn't go to the question of coverage and whether she is excluded.

If that first issue has been conceded in oral argument, I think the focus should be on whether she is otherwise qualified.

Unknown Speaker: Well, Mr. Rahdert, on that first point for a moment, as I understand it, the Eleventh Circuit held that all people with tuberculosis are handicapped.

Do you support that holding of the Eleventh Circuit?

Mr. Rahdert: Justice O'Connor, as I read the Eleventh Circuit opinion, and I will concede that there are... there are some loose dicta preceding their actual holding... they are saying that someone who is afflicted with infectious, contagious tuberculosis, such as Mrs. Arline, can be covered because that--

Unknown Speaker: Well, let me phrase it another way.

Do you agree with me, then, that not all people with tuberculosis are handicapped?

Mr. Rahdert: --I certainly agree with that proposition.

And I would refer to the AMA brief.

Unknown Speaker: And if the Eleventh Circuit meant something broader than that, they were wrong.

Mr. Rahdert: If that's the reading of the Eleventh Circuit opinion, it certainly stands to be clarified.

Our position is that someone with infectious, contagious tuberculosis, certainly someone such as Mrs. Arline, who as the Eleventh Circuit observed, has a condition that fits neatly within all three categories of the definition of a handicapped person, should be considered covered, and should be allowed the analysis of the second issue, whether she's also qualified.

Whether her contagion prevents her from being qualified, and as the--

Unknown Speaker: Mr. Rahdert, maybe there's not as much agreement on the first question as I thought.

The question reads, whether the contagious, infectious disease of tuberculosis constitutes a handicap.

Now, does that ask whether it always constitutes a handicap, or whether it can ever constitute a handicap?

Mr. Rahdert: --I interpret it... and if you will read the petitioners' initial brief, the petitioner initially argues that it can never constitute a handicap, because Congress meant to exclude all contagious diseases from the coverage of 504.

What has happened is that I think the Justice Department position, their gloss on the rehabilitation act, takes an effect from the cause, contagion caused by tuberculosis; analyzes that in a vacuum, somehow segregated, separated from the underlying impairment, and argues that contagion alone, discrimination against contagion alone, and in their words, whether reasonable or not, constitutes discrimination that is not covered by the act.

We would suggest that contagion should be analyzed in terms of the qualified question.

If someone who has a contagious impairment can have medical management of that impairment and be qualified.

Justice O'Connor asked the question of preceding counsel whether irrational reasons could be reached under this contagion analysis.

And I quote page 23 of the Government's brief, suggesting that if the reasons... if the discrimination is focussed solely on contagion, whether reasonable or not, in the Government's language, that would elude coverage.

I know that the AID's memo has been lodged with the Court.

That is the genesis of the Government's position.

And in that document the Government has written, Section 504 simply does not reach decisions based on fear of contagion, whether reasonable or not.

That... Justice O'Connor asked where this question would carry us, this theory of justice would carry us.

And I submit, it would carry us to exactly that point, where irrational fear eludes the act.

And Mrs. Arline argues that that is completely contrary to the legislative history and intent.

Unknown Speaker: Suppose somebody, an employer, is superstitious, and thinks that left handed people are unlucky, and chooses not to hire left handed people.

Is that covered by the act?

Mr. Rahdert: As a matter of fact, left handedness has been ruled in the lower courts not to be a handicap.

Unknown Speaker: Now, that's pretty irrational, isn't it?

Mr. Rahdert: It's an irrational consideration, but it's not a consideration of a condition of impairment.

Unknown Speaker: Ah, that's exactly what's being argued here.

That the fact that it's irrational has nothing to do with whether it's covered by the act.

You can make some very irrational and unfair decisions as an employer, you would acknowledge, and not be covered by the act.

Mr. Rahdert: Justice Scalia, certainly the act does not reach all irrational decisions.

But we contend that irrational decisions which are related to an impairment, a handicapping condition such as tuberculosis, should and would be reached.

And the error in Justice's position is that it is taking a condition of an impairment, isolating that condition, and suggesting that discrimination can be addressed to that condition in the abstract.

We contend that a consideration of contagion necessarily is a consideration of the impairment of the... impairing conditions as defined.

Unknown Speaker: Mr. Rahdert, the Government, as I understand it, contends that the handicapped act, one way or the other, was not intended to reach what they describe as the web of local and state regulations governing communicable diseases.

Don't we have something of the same kind of question here that was involved in our Penhurst decision of a few years ago?

Congress grants money to state and local governments, and says, you take it on these conditions.

And then all of a sudden it turns out, ten years later, that maybe the conditions are construed far more broadly than the governments thought they were at the time they took the money.

Mr. Rahdert: I think the act is clear.

And as the Court has analyzed, I believe in the Choate case, that there is a quid pro quo; that the receipt of Federal monies requires some accommodation of the handicapped.

With respect to the web of state and local regulations of communicable diseases, we suggest that far from impairing that process, the question of whether Mrs. Arline or someone with tuberculosis is fact specific, those are medical facts which should be considered.

And it would be a very important part of the qualification issue.

Unknown Speaker: But does that bring each individual person who is perhaps quarantined in some way by the local governments, does that bring her into Federal court for a case-by-case determination under this act?

Mr. Rahdert: If there were discrimination, it would be subject to review in the courts.

If that person... if that person were handicapped as defined, they would have coverage under 504.

Unknown Speaker: Well, supposing someone had scarlet fever, if people still get scarlet fever anymore, and they're quarantined for three weeks or something like that.

When they have scarlet fever, are they handicapped?

Mr. Rahdert: Your Honor, that would depend on the medical facts pertaining to that impairment, whether it fits within the three-part criteria.

I don't know that much about scarlet fever.

Unknown Speaker: The mere fact that it's contagious would not cause it to be a handicap?

Mr. Rahdert: Contagion alone is not a self-defining, an automatic definition of handicapped.

A handicapped person is someone who has an impairment which substantially limits major life activities, such as working and breathing, under the regs.

Or whether that person has a history of such an impairment, or whether that person is regarded as having such an impairment.

So it would be a fact question in the first instance to determine coverage.

And no, not all contagiousness is a handicap.

But certainly--

Unknown Speaker: Well, if a discharge or termination is by reason of the contagion, which isn't itself a handicap, why... why is there coverage?

Mr. Rahdert: --Justice White, we suggest that a decision based on contagion is not going to be made abstractly, or isolated from the underlying impairment.

As in this case, with any medical analysis of contagion, assuming that decisions will be made on medical facts, there will be an evaluation of the medical history of the particular person, part two of the definition.

Each case depends on whether... what is in the minds.

If there are irrational assumptions being made, stereotypes--

Unknown Speaker: Well, I take it, if you find the person who has tuberculosis, but there's no... the person is just a carrier.

Let's assume there's no impairment--

Mr. Rahdert: --If I can--

Unknown Speaker: --but she's contagious, or he's contagious.

Mr. Rahdert: --If I can respond to that on the specifics of tuberculosis.

My understanding of tuberculosis, and it's detailed in the AMA and the American Public Health Association briefs, is that to be contagious, you must have pulmonary tuberculosis.

It has to be in and around the lungs.

You have to have an impairment.

Unknown Speaker: Yes.

But what is the impairment?

Mr. Rahdert: The impairment would be a respiratory system dysfunction, which is specifically defined under the regulations.

Unknown Speaker: So anyone who has... any contagious person who can transmit person, you say, is a handicapped person?

Mr. Rahdert: It's a serious impairment when it reaches the contagiousness stage.

There have been 15 million Americans who have been exposed to tuberculosis who have been infected by it and who are not active carriers.

I would draw a distinction between those people and the few who have pulmonary dysfunction as a result of tuberculosis.

Incidentally, pulmonary dysfunction is defined elsewhere in the Act, for other purposes, as a severe handicap, specifically.

Unknown Speaker: Well, what about a different disease where the person is not handicapped, not impaired, but is a carrier?

Mr. Rahdert: With respect to a different disease, it would depend on the medical facts of that disease, as well as how that person is regarded.

Unknown Speaker: Yes, assuming the person is not physically impaired.

Mr. Rahdert: It still is a fact question, first as to coverage, whether the person is regarded in some manner as being impaired.

It's a case-by-case question, simply one that doesn't admit to per se rules.

With respect to that hypothetical person, there would be a further question, which would be a medical fact question of whether that person is otherwise qualified; whether than condition would require some job modification or accommodation, or whether it could not be reasonably accommodated.

I would make the point that the AMA has made in their brief.

Contagion is simply not a monolithic concept.

It varies in degree.

Unknown Speaker: 0 xxx.

Mr. Rahdert: Justice White--

Unknown Speaker: Which I thought you said awhile ago.

Mr. Rahdert: --I would suggest that contagion itself is not a handicap, but the underlying impairment to which it is inextricably bound, could be a handicap.

Unknown Speaker: What's the impairment?

Is the impairment tuberculosis?

Mr. Rahdert: Yes, Your Honor.

Unknown Speaker: Why isn't the impairment the consequences of tuberculosis?

Mr. Rahdert: The impairment is defined in terms of--

Unknown Speaker: In other words, you have three things.

You have a disease, tuberculosis.

One consequence, impairment.

And another consequence, contagion.

And what the statute prohibits is dismissing a person or affecting a person because of the former consequence, impairment; and not because of the latter consequence, contagion.

I think that's what the other side is arguing here.

Now, why is that wrong?

Mr. Rahdert: --The point... I agree with you that impairment has consequences.

In fact, under part one of the definition, under the statute, the consequences are looked to to define whether it is a covered impairment, whether it substantially affects major life activities.

But are argument is that there is no such thing in the real world as discrimination, whether reasonable or not, based solely on contagion.

It's going to be based on... if it's based on any kind of a reasonable and factual analysis, it will be based on the medical history, which any doctor would take; and more importantly, the fearful response to contagion is a fearful response to the underlying impairment.

I would--

Unknown Speaker: Is the impairment due to the difficulty in breathing or to whatever other--

Mr. Rahdert: --Certainly.

Unknown Speaker: --physical difficulty there is?

No.

It's a response to tuberculosis.

Now, tuberculosis is the disease--

Mr. Rahdert: That's right.

Unknown Speaker: --which produces impairment and also produces contagion.

Now, you could be afraid of it or treat someone adversely because of it for either of those two reasons, either because of the impairment that it produces, or because of the contagion that it produces, couldn't you?

Mr. Rahdert: I would--

Unknown Speaker: And it can produce contagion without impairment, or impairment without contagion.

Mr. Rahdert: --I would submit that the impairment is tuberculosis.

And the fearful reaction to contagiousness is a fearful reaction to tuberculosis and what it can do; that we really have a very clear case of coverage when there's a severe case of tuberculosis as here.

Unknown Speaker: Well, what about if it's in remission?

Mr. Rahdert: If the tuberculosis were in remission and not contagiousness, coverage would depend on part two, which is history, and part three, how that person is regarded.

And that's very important.

Congress meant broad coverage in the instances of irrational fear, of stereotype, of assumption.

And so coverage would be defined by the act of discrimination of the act of assumption.

As Choate notes, very often... very often discrimination is not invidicus animus, but indifference, assumption; and the legislative history suggests discrimination is often based on stereotype and fear.

To allow contagion to be separated out and be the basis of discrimination would be to completely eviscerate the Act in its purpose of preventing stereotype discrimination.

Justice Marshall, in your opinion in Choate, you talked... you analyzed the Tennessee Medicare rules in that case in terms of whether they were facially neutral, or whether they had an exclusionary effect on the handicapped.

And you looked to whether they were based on criteria that were a test, judgment or trait... and the Court used the word trait... of handicapped to determine the propriety of the rules and whether they were violative of the Act.

Contagion is exactly the same question.

Contagion is a trait of the underlying impairment.

And we contend that there is no reality in the real world of someone acting irrationally but parsing it down so finely that it is directed to contagion in the abstract.

Unknown Speaker: Mr. Rahdert, do you intend to explain how someone who is actively contagious with an impairment of tuberculosis can be otherwise qualified to teach small children?

Mr. Rahdert: I intend to present that to the District Court, Justice O'Connor.

The question is a fact-bound question, as has been universally recognized.

If you look at the regulations on otherwise qualified, they deal in facts.

Medical facts are obviously the key issue in this particular case and in many handicapped cases.

And so--

Unknown Speaker: If someone is actively contagious with tuberculosis, how can that person be otherwise qualified to teach small children?

Mr. Rahdert: --We would not contend for a moment, Justice O'Connor, that an actively contagious person... tuberculosis sufferer should be in a classroom.

And I want to correct one misstatement of the record by the Solicitor General.

There was no record evidence in this case to indicate that at the time of termination she was contagious.

What happened in this case was, as soon as they found out about the recurrence, she was... she was put on leave and was discharged several months later through administrative proceedings.

At that time, there was no specific evaluation of her current condition.

The only evidence we have in this very sparse record concerning Mrs. Arline and her contagiousness was that at the time of trial she had been free of contagion for quite some time.

And the medical expert testified that she had not received reports of positive tests indicating current contagion since 1979.

Unknown Speaker: When was the trial?

Mr. Rahdert: The trial was in 1983.

Unknown Speaker: And when was Mrs. Arline discharged or suspended?

Mr. Rahdert: At the end of the school year, 1979, I believe.

Unknown Speaker: Well, do you think that's terribly relevant that she was found not contagious in 1983 when the question is whether it was a discriminatory discharge in 1979?

Mr. Rahdert: I think the relevant question would be, was her contagion revealed in I believe November of 1978 under control at the time that her future in her career as a teacher was being weighed and determined.

And we suggest that there should be accommodation that should be considered.

We suggest that in this case, on this record, it appears there was no consideration of accommodation during the termination process.

There was a judgment made--

Unknown Speaker: Well, do you think accommodation requires finding another job for the person?

Or doesn't it relate to the job the person has?

Mr. Rahdert: --I think accommodation primarily refers... and whether she's otherwise qualified, it's essentially the same question... refers to medical condition primarily.

With respect to other jobs, we're not suggesting that affirmative action, simply that evidently in this case, as the District Court seems to have found, there were job transfer options that were policies of this school.

And we merely ask that she be considered, just like a nonhandicapped person would be, for the usual and routine policies of the school board.

But our point on whether she is otherwise qualified is that if you look at the standards of this Court, in fact, which suggest, for example, in Choate, a balancing test; in Davis, locked at very detailed efforts to evaluate and see if the person could fit into the program and whether the program would be--

Unknown Speaker: Well, are you suggesting that one form of accommodation that the statute might require was that even if she were contagious, she could continue to teach elementary school children?

Mr. Rahdert: --Not at all.

Not at all.

If she were continuously contagious, I would conceded she's not otherwise qualified.

We're suggesting that tuberculosis is a condition that medical science has made great progress in, and as the AMA has pointed out, 95 percent of the cases of active contagion, pulmonary tuberculosis, can be rendered noncontagious within two weeks of proper chemotherapy.

That possibility certainly should be explored in Mrs. Arline's case, and was not.

But no, as a... a person actively contagious could not teach at that time.

Perhaps the school board's normal leave policies would allow an accommodation to return this woman to productive participation in her career, which is the underlying objective of the statute.

The question Justice O'Connor raised about cosmetic disfigurement is a very--

Unknown Speaker: Excuse me, before you go on, Mr. Rahdert, that fact-bound question would become a Federal question in every cases, if your argument's right, correct?

And all state health measures of quarantine or dismissal because of contagion would be in the Federal courts?

Mr. Rahdert: --Justice Scalia, I don't think it would be that severe, because if proper medical procedures were followed... we don't have a record of that precision in this case... I would suggest that following state health guidelines, as the state health guidelines are constituted would not in any manner constitute discrimination.

Unknown Speaker: Well, I can think of a lot of, you know, nice questions that can be raised about the remedies you suggest.

For example, you say, within two weeks of chemotherapy.

But how quickly can she be analyzed as having become contagious again and what not?

It would be necessary to do a test everyday or whatever.

I don't know what the answers are.

I don't care.

I'm just saying, it raises a lot of fact-bound issues which would all be dumped into the Federal courts.

Mr. Rahdert: Justice Scalia, the questions you raise, first of all, there are instantaneous testing methods for tuberculosis.

The frequency of those methods, those testings, would be established by disease control standards.

The Center for Disease Control, cited in the APHA brief, talks about getting people... treating tubercular patients on an individualized basis, getting them back into work as quickly as possible.

That's Florida law.

That's Arizona law.

So I would suggest as a practical matter, if the public health standards were followed, and followed consistently, there just simply wouldn't be a floodgate of litigation; that that would be an appropriate means of accommodating an impaired person.

We very much endorse a medical determination of Mrs. Arline; a medical determination of all tuberculosis patients.

And by extending coverage, and by allowing a remedy under this broad remedial Federal legislation, we would encourage exactly this process of not reacting to public sentiment; not reaction to parents; not reacting to members of the school system personnel, which occurred in this case and is part of the record; but evaluating specifically on medical considerations.

Unknown Speaker: Well, Mr. Rahdert, that is what was asserted to have happened here with the State public health officer, who said she wasn't... she shouldn't be allowed in the classroom.

Mr. Rahdert: Justice O'Connor, it's not clear on this record whether the state officer said, at this time; whether she said, this lady should be terminated completely for all times.

That simply... that analysis which should be done was not done; is not evident on the record.

Moreover, and more importantly, the District Court assumed, based on his... the Judge's assumption of Congressional intent, which is really not... to which no citations were given... that there was a per se exclusion.

And I think if the Court reads the District Court's opinion, it will read it to be a very broad exclusion of contagious people from the Act; and a further assumption that contagious people can never be... or people who have at some point a contagious impairment, can never be qualified.

So there were no findings of fact by the District Court of a sufficient nature to decide this highly fact-bound question.

And we contend that the Eleventh Circuit Judge Vance appropriate remanded, based on that kind of record, and based on a decision that went off much like an order on a motion to dismiss on erroneous legal points.

Justice O'Connor asks about cosmetic disfigurement.

That has been in the regs since 1977.

It is a clear example of discrimination, stereotyped, or in the government's terms, whether rational or not, a reaction to a condition of handicap.

And the reaction to the condition simply cannot be parsed out and separated and segregated from the reaction to the condition itself.

Justice described that, in their initial brief, as anomalous, and suggested that cosmetic disfigurement discrimination could come under the Act if there was a perceived or actual nexus to the impairment.

Unknown Speaker: What about just substantial ugliness?

I mean the person is not just disfigured, but just not a handsome person?

And an airline, let's say, you know, said we would prefer to hire good looking stewards and stewardesses.

We don't want any ugly people.

Now would that... if... if it is enough that people associate with you less readily, if that is enough to constitute a disability, why wouldn't... why wouldn't just homeliness be a disability?

Mr. Rahdert: The regulations answer that question in terms of... defining an impairment as a medical deficiency.

And so ugliness would not, but someone with facial burns who suffered an anatomical loss, would.

Unknown Speaker: Now how do you get that from the statute?

Mr. Rahdert: From the regulations, Your Honor.

Unknown Speaker: Well, where do the regulations get it from the statute?

Mr. Rahdert: The regulations get it from a substantial impairment of a major life activity, of--

Unknown Speaker: But if a major life activity is associating with other people, and people shun you because... I don't know why--

Mr. Rahdert: --It would have to be--

Unknown Speaker: --ugliness produced by burns is any different from people shunning you just because of run-of-the-mill homeliness.

Mr. Rahdert: --To just answer this question, it would be an impairment.

An impairment is the handicapping condition.

And impairment is not just not fitting the norm cosmetically, but having something physiologically go wrong in your life which, in turn, substantially limits major life activities.

I would suggest that cosmetic disfigurement from a cause such as a facial... severe facial burn would be such an impairment and have the limitation on life activities that ugliness would not.

Rebuttal of Brian T. Hayes

Chief Justice Rehnquist: Thank you, Mr. Rahdert.

Mr. Hayes, do you have something more?

You have five minutes remaining.

Mr. Hayes: Yes, sir, if I may, Mr. Chief Justice.

To answer some questions that were raised during direct, or the argument of the respondent, we would like to remind the Court on page 18 of our brief, we did make the statement, Justice Scalia, I'm quoting:

In short, it is evident that while certain of the individuals having tuberculosis may be obviously impaired by the disease, others may not.

We have not made a per se statement that everybody in the world who has tuberculosis will never be impaired.

I want to also go into some of the medical problems that have--

Unknown Speaker: What about the person in this case?

Mr. Hayes: --Well, this is a situation--

Unknown Speaker: Did this person have a handicap?

Mr. Hayes: --If she had a handicap, Justice White, it would only be on the basis of a past record--

Unknown Speaker: Well, then, you... I take it the Solicitor General said that this person was a handicapped person.

Mr. Hayes: --Yes.

Unknown Speaker: You don't agree with that?

Mr. Hayes: Yes.

We suggest--

Unknown Speaker: Yes what?

Mr. Hayes: --We suggest, Justice White, that she can be... for purposes of this argument, she can be considered handicapped, that is, get by the threshold question, so we can explore then the question of, solely by reason of, and the question of, otherwise qualified.

Unknown Speaker: I know she can be, but is she?

Mr. Hayes: No.

Unknown Speaker: Is she handicapped?

Mr. Hayes: I don't think, as a matter of fact, there's any record that she was impaired in any way.

She taught for 13 years.

There's no evidence that she missed a day of class.

Unknown Speaker: The statute doesn't require--

Mr. Hayes: I understand that.

Unknown Speaker: --It just requires that she have a record.

She was not able to teach for some period of time.

She was hospitalized, right?

Mr. Hayes: I concur, the petitioners concur 100 percent with the Solicitor General, who says, those regulations, to that extent--

Unknown Speaker: Why don't you give it away, Mr. Hayes?

She's handicapped, isn't she?

She had a record--

Mr. Hayes: --She had a record of handicap; there's no question about it, Justice Scalia.

But we want to address that, on the tuberculosis questions, the American Medical Association stated very clearly in their brief, they said the same thing essentially that we did, they said the disease of tuberculosis manifests itself through a variety of symptoms.

Some diseased people have no symptoms at all.

One of the real problems in this case... the actual question raised by Mr. Rahdert as to why the doctor recommended, I think Justice Marshall, that she be removed, not just suspended again and again and again, was this.

The question was asked at page 13 of Dr. McEuen, and she said... you know, the attorney for Ms. Arline asked her, and Dr. McEuen said, quote: Because small children are considered highly susceptible to tuberculosis, and because the pattern of relapse suggested that there may be a possibility of further relapses.

This gets into the other testimony about one of the difficulties in diagnosing when a person is infectious.

That is the test where they take a sputum test.

It often is six or eight weeks.

And so you're diagnosed, if you will, in arrears, in arrears of the judgment.

Thank you.

Chief Justice Rehnquist: Thank you, Mr. Hayes.

The case is submitted.

Attribution:

The OYEZ Project

Featured:

Brenner v. Manson - Oral Argument

Wed, 22 Aug 2012 16:56:12 +0000

Case:

Brenner v. Manson

Media File:

58_19651117-argument.mp3

Related Transcript:

58_19651117-argument

Transcript:

Argument of J. William Doolittle

Chief Justice Earl Warren: Number 58, Edward J. Brenner, Commissioner of Patents, Petitioner, versus Andrew John Manson.

Mr. Doolittle.

Mr. J. William Doolittle: Mr. Chief Justice, and may it please the Court.

I move the admission of Mr. Paul Bender of the District of Columbia Bar for the purposes of arguing this case, Number 58.

Chief Justice Earl Warren: Motion is granted.

Mr. Bender.

Argument of Paul Bender

Mr. Paul Bender: Mr. Chief Justice, and may it please the Court.

This case raises two important questions in the administration of the patent system, one substantive and one procedural.

The question on the merits is whether a patent may be obtained on a process whose only function is to produce a useless product.

The Court of Customs and Patent Appeals has held that such a process is patentable regardless of the total lack of utility of the sole product of the process.

That is the court has held that a process to produce, for example, garbage or sewage, which has no utility whatsoever, would be a valid patent.

It's also held that a process could produce some material which just is an in dirt lump of material, you can't do anything, you don't know what to do with it would be a patentable process because produces a product.

In our view --

Justice William O. Douglas: I've read the other day that they're making wonderful things out of garbage these days.

Mr. Paul Bender: If you can make wonderful things out of garbage, then that would be a useful process.

I was using garbage as a -- a generic term to things that have no use.

To the extent, Mr. Justice Douglas, that you assume that everything is useful, then the issue in this case doesn't arise, the Court of Customs and Patent Appeals assumed that the product of the this process was in fact useless and held that nevertheless the process to produce the product was a patentable useful process.

Now, this apparently is true in, for example, the industry in which this case arises, the drug industry and chemical industry, compounds that produce constantly, which have no known utility and lots of them never have any utility.

Justice Potter Stewart: But last time, as Mr. Justice Douglas just pointed out, eventually do.

Mr. Paul Bender: That's true.

Justice Potter Stewart: We've all read about the days when they used to dump gasoline -- as a -- as a waste byproduct when they were making the kerosene --

Mr. Paul Bender: That's true.

Well, our submission is that if there is any present capability of utility, if you can show that the process is useful or if you can show that there are some real substantial basis to believe that it will become useful --

Justice William J. Brennan: (Voice Overlap) Mr. Bender is that maybe you can't now.Yes.

Justice Potter Stewart: But who is to say that it is not going to be anything that you might mention that can be very useful.

Mr. Paul Bender: That's true.

You may say hypothetically that any product may someday be useful.

Therefore, you might say that any product for example ought to be patentable.

That is not true.

It is conceded in this case by the court below, conceded by the respondents that used things which are presently useless are not patentable regardless of the speculative fact that someday they may be useful.

That's clearly true as the products -- it's clearly true as to machines.

We see no reason to have a different view as to processes.

And Mr. Justice Stewart, the reason for that I think is that there's a lot of harm in giving patents on presently useless things because patents have a preclusive effect.

You can use a patent if you get it to stop other people from finding the use.

Now, if you balance those things together, it seems as you clearly come out with the judgment that it ought to be not patentable, even though of course there's a possibility that it may be useful but you've got to balance that against the harm.

In any case --

Justice Potter Stewart: Your thought is that -- that in order to find out or to have any hope of someday ascertaining whether Product A is useful, you should not have a patent on them.

Mr. Paul Bender: Right, just on the hope that it may be useful.

You've got to show more than that.

And that's been the clear -- that's been the clear course of decision in the Patent Office.

That's what the Court of Customs and Patent Appeals held in 1950 in words which couldn't be any more explicit, and it's only recently that they have -- that they have retreated from that.

Before reaching the merits, however, if I may, there is a jurisdictional question in this case, namely whether the court has jurisdiction on writ of certiorari to review decisions such as this one of the Court of Customs and Patent Appeals in patent and also in trademark cases.

This question was touched upon in this Court's decision three years ago in Glidden against Zdanok where the Court held that the Court of Customs and Patent Appeals is an Article III court exercising the judicial power.

In that case, however, the Court explicitly left open the precise question involved here that is whether 28 U.S.C. 1256, which is the relevant jurisdictional statute, does indeed confer jurisdiction on this Court to review patent or trademark cases in the Court of Customs and Patent Appeals.

We believe this --

Justice John M. Harlan: Glidden disposed of the constitutional aspect of the --

Mr. Paul Bender: Yes, Glidden disposed of the constitutional question, held the Court of Customs and Patent Appeals to be an Article III court.

The statute is unqualified.

It's says all cases in the Court of Customs and Patent Appeals.

We believe that the statute 1256 does confer jurisdiction and that the Court, in fact, therefore, can resolve the issue on the merits in this case.

I would like now, as I've said, to address myself to the jurisdictional question before coming to the -- to the merits.

So the purpose of doing this, I'd like to give some background in the way Patent Office decisions are reviewable because I think that's necessary to see the importance of the jurisdictional question.

When a patent is denied by the Patent Office, there are two methods of judicial review of that Patent Office denial, which are provided by the statute.

In the first place, there's what's a called a civil action.

It used to be called an action in equity against the Commission of Patents in the District Court for the District of Columbia, that's provided by 35 U.S.C. Section 145 in the Patent Act.

The District Court's decision is of course reviewable by the Court of Appeals.

The District Court's decision as I say called a civil action.

No one's ever had any doubt that that civil action is within the judicial power.

It is therefore reviewable by the Court of Appeals and the Court of Appeals' decision is in turn clearly reviewable and was always been recognized to be reviewable by this Court on certiorari.

And as our brief points out, several of such decisions have been reviewed here without noticing any difficulty, and I think there's no question that that route of review, District Court civil action, Court of Appeals review of the District Court is reviewable here on certiorari.

The other mode of review is the one that's involved in this case.

If the patent's denied, instead of going to the District Court, you can take what's called an appeal to the Court of Customs and Patent Appeals.

That's provided by Sections 141 to 144 of the Patent Act and also 28 U.S.C. Section 1542.

These two routes are alternative.

That is, each statute provides that if you take the other one, you can't use the one involved in the statute.

You can't go to the District Court if you've appealed to the Court of Customs and Patent Appeals and an appeal to the Court of Customs and Patent Appeals is clearly provided to constitute a waiver of the right to go to the District Court, that's in Section 141 of the Patent Act.

Now, as I stated before, if you go to the District Court, there's no question that certiorari jurisdiction is in this Court to review the decision of the Court of Appeals' reviewing decision of the District Court.

We urge that the same result should apply if the route you take is through the Court of Customs and Patent Appeals.

Now, that that court has been clearly recognized to be a court exercising the judicial power just like the Court of Appeals for the District of Columbia is.

As I say, the statute, if that's all one looked to, is clear that that would lead you clearly to that result.

It provides that cases in the Court of Customs and Patent Appeals may be reviewed by the Supreme Court by writ of certiorari.

In addition, any policy reason you can think of regarding the issue of jurisdiction here, it seem to us to favor review of the Court of Customs and Patent Appeals on the same terms as review of the Court of Appeals.

The two courts occupies, I think I've shown, very similar positions in the scheme of review of the Patent Office, and, as in fact happened in this case, conflicts of principle may arise between them.

You may have the Court of Appeals for the District of Columbia adopting one rule as to patentability.

For example, they have clearly accepted our position on the merits of this case and you may have the Court of Customs and Patent Appeals taking the opposite position.

In that circumstance, it seems to us, that all the policies of the judicial code in the certiorari jurisdiction clearly favor giving this Court the ability to resolve that conflict.

Without it, you put the Patent Office in the terrible dilemma.

They've got one of the courts to which their decisions can be taken holding one thing, another court holding another.

The choice as to which route of review to take is in the patent applicant is unsuccessful.

I take it that would coerce the Patent Office to accept the rule, which is most favorable to the patent applicant because if they reject that rule, and accept the least favored one, they'll always be reviewed in the court that accepts the other rule, the more favorable one.

And if that court is the Court of Customs and Patent Appeals as it is in this case, there's no review here unless there is certiorari jurisdiction and the Patent Office, as I say, has put in clearly on untenable position.

Also, I think you can look to the term of the Patent Act here.

There is a great public interest in eliminating patents which are in fact invalid even before an infringement proceeding.

It can always be even if the Court of Customs and Patent Appeals erroneously grants the patent, that issue can later be tested in an infringement proceeding.

But what you have meanwhile is this patent which is in fact invalid in existence and it will obviously act to some discouragement to other people.

They may never want to raise the issue.

So again, it seems to us that that policy, the policy of the Patent Act clearly militates in favor of giving this Court the power to review an erroneous decision of the Court of Customs and Patent Appeals.

One would expect that not too many occasions would arise when a decision of Court of Customs and Patent Appeals will properly invoke the certiorari jurisdiction.

It doesn't happen very often.

This case is quite rare.

But when -- with the consistency of the system, I should think would call for that jurisdiction's existence.

Now, as Mr. Justice Harlan's plurality opinion in the Glidden case points out however, despite the unqualified language of the section and despite what I think I've shown to be the clear policies of the judicial code favoring certiorari jurisdiction, the doubts do exist regarding where the Section 1256 should be read as written to confer jurisdiction.

And I take it that is what led the Court to put in the expressed disclaimer in Glidden.

But we have reexamined these doubts and we think that they don't stand in the way.

The doubts are entirely historical and they flow entirely from this Court's decision in the Postum Cereal Company case against the California Fig Nut Company in 272 U.S.

The case was decided in 1927.

At that time, this appeal jurisdiction, which is now on the Court of Customs and Patent Appeals, was in the Court of Appeals for the District of Columbia.

That is, if that time you could either go to the District Court for the civil action or you could go directly to the Court of Appeals on appeal.

The difference is you have a right to make something of a new record in the District Court, whereas in the Court of Appeals on the appeal, as now in the Court of Customs and Patent Appeals, you've got to use the record made before the Patent Office.

Now --

Justice William J. Brennan: Excuse me, Mr. Bender.

Mr. Paul Bender: Yes sir.

Justice William J. Brennan: When you say Court of Appeals of District of Columbia, which one are you speaking of?

Mr. Paul Bender: I mean the circuit court of the --

Justice William J. Brennan: Yes.

Mr. Paul Bender: This -- the jurisdiction of the circuit court was transferred to the Court of Customs and Patent Appeals in 1929, two years after the Postum decision.

Now, in Postum, this Court held that it had, this Court, had no jurisdiction over the appeal's jurisdiction of the Court of Appeals for the District of Columbia, because it deemed such decisions that is reviewing the Patent Office, in its words, not a judicial judgment but a mere administrative decision.

It viewed them and these are again its words, as merely an instruction to the Commissioner of patent by a court which is made part of the machinery of the Patent Office for administrative purposes.

Now, as I've said, in 1929, that jurisdiction, the appeal jurisdiction, was transferred to the Court of Customs and Patent Appeals.

And at that time, in transferring the jurisdiction, Congress made no affirmative provision in the statutes for review of Court of Customs and Patent Appeals, patent decisions here.

There was a provision for review of the custom's decisions but not the patent decision.

Subsequently, and this is I think what really gives rise to the doubts which now as I say subsequently, in 1931 and 1940, in two cases in denying certiorari which was attempted to be taken here from the Court of Customs and Patent Appeals.

The Court denied certiorari and noted expressly its reliance on Postum and on the absence of any affirmative provision for review.

Now it was in -- against this background that the 1948 Judicial Code literally in terms confers jurisdiction over cases, all cases in the Court of Customs and Patent Appeals.

Now, it seems to us that insofar as the decisions after the transfer to the Court of Customs and Patent Appeals, the decision's holding that this Court has no jurisdiction over the Court of Customs and Patent Appeals, insofar as they rely as the first one of them expressly relied in part on the lack of any affirmative statutory provision for review, because none did exist at that time.

The 1948 addition to the statute providing for review in terms would seem to fill a void and confer review here of its own force of decisions of the Court of Customs and Patent Appeals.

Justice William J. Brennan: That's 1256, is it?

Mr. Paul Bender: That's 1256, yes.

In Glidden in fact, Mr. Justice Harlan's plurality opinion, does seem to indicate that it was indeed the lack of affirmative provision at that time which must have been responsible for the Court's decisions after the transfer jurisdiction of the Court of Customs and Patent Appeals.

Glidden held that the Postum decision must be taken to be limited to the statutory scheme in existence before the transfer of patent and trademark litigation to the Court of Customs and Patent Appeals.

What Glidden had in mind was that before the transfer, in fact just at the time of the Postum case, this appeal to jurisdiction was not an alternative as I described it before as being now.

That is, you didn't have to choose between the appeal jurisdiction and the civil action jurisdiction.

You could take -- you could do both.

You could try the appeal.

If you lost then you could come in as civil action.

And as Mr. Justice Harlan's opinion in Glidden pointed out that it must have been quite likely that feature of the review at that time which led the Court in Postum to hold that it was merely advisory, part of the administrative process not a judicial function.

That was eliminated.

The cumulative effect was eliminated in 1927 shortly before the jurisdiction was transferred to the Court of Customs and Patent Appeals.

So that when the jurisdiction was transferred there, it was an alternative.

It wasn't cumulative.

It didn't have that administrative effect as Glidden pointed out.

And it seems to us that therefore, it may very well be that the decisions after that time, as I say in 1931 and 1940, denying certiorari for lack of jurisdiction citing Postum probably were based upon at that time the lack of any affirmative provision.

If there had been one, they would've come out the other way.

One was supplied in 1948 and there's no reason if that's what the historical analysis is.

There's no reason now not to hear these cases, the statute in ‘48 in fact conferred to jurisdiction, but even if you assumed that, the reasons in 1930 and 1941 after the transfer of the Court of Customs and Patent Appeals were constitutional reasons.

That the Court at that time thought as the court in Postum thought despite the changes in statutory scheme that it was not a judicial thing that the Court of Customs and Patent Appeals was doing and it was not judicial jurisdiction.

That is no longer true.

Glidden clearly held, no question about it that the Court of Customs and Patent Appeals thus exercise Article III business and that everything it does is Article III business and that includes this appeal review of decisions of the Patent Office.

Now, as Justice Harlan's opinion stated all the business of the court is fully within the category of cases of controversies.

Now, with that constitutional bar removed, even if it did exist after the transfer to the Court of Customs and Patent Appeals, I say with the constitutional bar removed, we see no reason not to read Section 1256 to mean what it says, that is that all court cases in the Court of Customs and Patent Appeals they're reviewable here.

This is, as I say, consistent with the general jurisdiction of this Court with a general purpose to resolve conflicts, with a full conferring of jurisdiction over the Courts of Appeals, for example, the Court of Claims.

To maintain the restriction that would be wholly anomalous.

There's nothing Congress could say now which would be any broader than what it has already said in the 1948 Code.

Even if there was a constitutional obstacle in '48, we think it's the sound of you to attribute to Congress at that time the purpose to confer on this Court, all the constitutional jurisdiction which this Court can exercise, that's what its language said.

So even if there was a constitutional bar to the exercise of the jurisdiction then when the bar was removed, we see no reason now not to say that the jurisdiction goes up to the constitutional limit which would clearly permit review in these cases.

Now, we recognize that in the past, United States has in briefs in opposition in petitions attempted that we filed from the Court of Customs and Patent Appeals, submitted to the court that no jurisdiction did exist in this Court.

Now, that view originated before Glidden and Zdanok had made it clear either that Postum was very narrowly based so that there weren't any constitutional doubts, no constitutional bar in any way.

Contemporaneously with Glidden, we said to the court that we thought the issue now had become quite doubtful.

And since Glidden in briefs in opposition, we have submitted to the Court that the question should be reexamined in light of the doubts raised by Glidden.

We, as I say, reexamined it and I think that I've shown that reexamination in light of Glidden leads you with some confidence to conclude that Section 1256 does indeed confer jurisdiction here now in accordance with its plain language.

It's our understanding that respondents here agree generally with our conclusion that jurisdiction exists.

They seem to argue, however, that the jurisdiction which exists may only be invoked by one party.

That is the patent applicant.

If he happens to be unsuccessful in the Court of Customs and Patent Appeals as he was unsuccessful before the Patent Office.

But they argue that the jurisdiction may not be invoked by the Commissioner if his refusal to grant a patent is overruled by the Court of Customs and Patent Appeals.

We see little sense in this distinction.

No sense at all, as a matter of fact, and it is also totally unjustified by the statute which just these cases shall be reviewed.

All of the reasons for resolving conflicts, all of the reasons for giving the Patent Office a clear guide as to what to do would be frustrated if you say that when the Commissioner lost in the Court of Customs and Patent Appeals, he couldn't go to the Supreme Court even though the patent applicant could.

Again, the Court of Customs and Patent Appeals could, as it did in this case, adopt a more liberal view against the Commissioner and there'd be no way he could resolve this dispute, even though he may very well be right and even though the Court of Appeals for the District of Columbia was on his side.

Justice Byron R. White: Mr. Bender, is the Board of Appeals in the Patent Office, say, under the control of the Commissioner or not?

Mr. Paul Bender: I don't know what control means --

Justice Byron R. White: Well I mean that --

Mr. Paul Bender: -- the statute says the Commissioner is in charge of the whole Patent Office.

Justice Byron R. White: Yes.

Mr. Paul Bender: The Board of Appeals is part of the Patent Office.

Justice Byron R. White: He can't go up from there, can he?

Mr. Paul Bender: No he is part of the Board of Appeals.

Justice Byron R. White: Yes.

Mr. Paul Bender: It would be wholly anomalous after they --

Justice Byron R. White: It would, that's what I wanted to know.

Mr. Paul Bender: Yes, there's no question that he cannot go.

The statute provides --

Justice Byron R. White: But he's part of the Board.

Mr. Paul Bender: Yes, he's a member of the Board.

And I take it the reason is that he's not only a member of the Board but the Board is under his jurisdiction, he is the head of the Patent Office, it would make any sense.

The only reason to which they give is indeed what Mr. Justice White just mentioned.

Namely, that the Commissioner is the -- cannot go to the Court of Customs and Patent Appeals, and so they say therefore the Commissioner shouldn't be able to go to the Supreme Court.

Well, the reason the Commissioner can't go to the Court of Customs and Patent Appeals is what we've just said.

It's his own decision.

He couldn't challenge the decision he have just rendered, but the Court of Customs and Patent Appeals can as it has here decide against him.

And in view of that, I see no reason why he shouldn't then be able to go to invoke the jurisdiction of this Court.

Justice Hugo L. Black: What is the effect of a judgment of the Court of Customs and Patent Appeals sustaining the validity of a patent that's issued in this one?

Mr. Paul Bender: The effect of the judgment?

Justice Hugo L. Black: Yes.

Mr. Paul Bender: Unless reviewed --

Justice Hugo L. Black: Oh, it's not appealed then, not reviewed by the --

Mr. Paul Bender: It forces the Commissioner to issue the patent.

Justice Hugo L. Black: Yes, but then supposed that question to that validity is raised when it gets into the District Court.

Mr. Paul Bender: That can be reexamined --

Justice Hugo L. Black: (Voice Overlap)

Mr. Paul Bender: -- by people who were not parties to that decision.

That is, in the District Court, that probably would be an infringement action.

Justice Hugo L. Black: So that the so-called court does not render binding judgment and cannot as to the validity of a patent, can it?

Mr. Paul Bender: Not on people who aren't parties before it.

And in fact, it means that it's not really binding.

In other words, the Court of Customs and Patent Appeals may say this patent is valid.

Now, that may bind the Commissioner and thus to issue the patent and the applicant of course is in balance in his favor, he gets the patent.

But then suppose he asserts that someone else who wasn't a party to that decision in the Court of Customs and Patent Appeals, someone else has infringed the patent, that someone else can raise the invalidity of the patent because he was not a party in the Court of Customs and Patent Appeals.

It would be --

Justice Hugo L. Black: You never get a final, unless free on the validity of a patent until it goes to a District Court and comes up to us.

Mr. Paul Bender: No, he wouldn't get it as opposed -- as concerns other parties, but realistically, Mr. Justice Black, it --

Justice Hugo L. Black: Realistically, the question is whether the patent is valid.

Mr. Paul Bender: If this Court held the patent valid, it would be hard to imagine that any District Court would hold the patent invalid after that in an infringement --

Justice Hugo L. Black: But suppose -- suppose that we would've taken a case where they held valid or invalid under the procedures then, and we reversed it, would that settle the controversy?

Mr. Paul Bender: I think in a practical matter, it would.

Justice Hugo L. Black: But would it under the law where it is now written?

Mr. Paul Bender: No, there's no compulsive force upon a District Court in a later infringement suit.

That is the force of res judicata doesn't compel it to hold the patent valid, but it wouldn't make any sense to hold other than this Court had held it because this decision would be --

Justice Hugo L. Black: Well, it doesn't make much sense to have a -- have a review then of these orders of the patent Court of Customs and Appeals when it doesn't settle in the --

Mr. Paul Bender: Well, the same thing is true, Mr. Justice Black, of the other mode of direct review in the Patent Office to the Court of Appeals for the District of Columbia.

Its decision holding, upholding or reversing the decision to grant the patent has no more binding effect in an infringement action in the Court of Customs and Patent Appeals.

Those decisions have been reviewed by this Court since the -- since the jurisdiction in the Court of Custom -- in the Court of Appeals existed and the court has never had any difficulty with it.

If those are, and it seems clearly to be Congress had desired that they be, there's no reason in the world not to have the Court of Customs and Patent Appeals.

And there also as I said before Mr. Justice Black, there is this policy reason concerning with the Patent Act which supports that, because if the Court of Customs and Patent Appeals adopts too liberal a view or the Court of Appeals and grants too many patents which shouldn't be granted, those patents is kind of a clog on commerce.

And I think the reason for this Court's jurisdiction is to permit it to remove those.

To remove the principles of --

Justice Hugo L. Black: But it can't remove it, can it?

Mr. Paul Bender: Yes you can remove it, surely.

If you hold as we want you to hold in this case that the patent should not be issued that's the end of it.

Justice Hugo L. Black: In this particular case, I'm not --

Mr. Paul Bender: Well, in any case where -- where we ask --

Justice Hugo L. Black: What about in determining the validity of the patent?

Mr. Paul Bender: Well, if your determination in this Court is that the patent is invalid, it won't be issued, that's the end of the case.

Justice Hugo L. Black: Yes, the patent wouldn't be issued then.

Mr. Paul Bender: Yes, so in that sense it's far and the only sense of non-finality applies when the patent is issued.

As I try to say, that non-finality occurs because it's not fair to buy a non-party, there's no way you can get around with that.

Justice Hugo L. Black: What's then the reason for the Government taking a different view through the years?

Has it?

I understood you said it had been.

Mr. Paul Bender: Yes, it had.

I don't know what was in the mind of the people who took the view.

I think the brief said that the reason was the Postum case had held that the jurisdiction to review on appeal the decisions of the Patent Office was not judicial.

And the briefs in opposition said that in view of the Court's previous decision that the jurisdiction is not judicial, this Court has no jurisdiction.

Now, as I say that reason was removed, that reason was compelled by the Postum case.

That reason was removed in Glidden and Zdanok just three years ago when the Court held that there was no constitutional bar and in fact it was a judicial jurisdiction of the Court of Customs and Patent Appeals is exercising.

Since that time, we have not said to the court flatly, do not take this issue, except we have said to the court that the issue is a doubtful one and should be resolved in an appropriate case where it seems that there's also an issue on the merits appropriate for resolution.

This case is the first one since that time where we believe that there is a substantial issue on the merits coming from the Court of Customs and Patent Appeals and therefore we ask the Court to resolve it in this case, since there are too many cases in the Court of Customs and Patent Appeals which raise broad issues of law which this Court ought to resolve.

Now, with the Court's permission and I'd like to turn to the merits of the case.

That is the correctness of the decision of the Court of Customs and Patent Appeals that I processed to produce a useless substance is nevertheless a patentable process.

The factual context out of which the case arises is quite complex, but I think the relevant facts are fairly simple and I'll try to state them as simply as possible.

The case involved an application for patent on a chemical process to produce a class of organic compounds with what I find to be an unpronounceable name.

The name is on page 3 of the record near the bottom in the -- in the patent application.

As I understand it the class, the broad class of compounds known as dihydrotestosterones, they're an organic compound.

I'll call them “the compound”, if I may.

Respondent Manson is the patent applicant for the process to produce this class of compounds.

His affidavit on page 33 of the record shows that he's employed by the Sterling-Winthrop Research Institute, which I assume is adjunct of the Sterling Drug Company, and that he's occupied in doing this very thing, producing new organic compounds and processes to produce new organic compounds.

And in fact he says that he's produced about 80 of them in the last five years.

These things are turned out with great abundance by chemical research companies.

Now, Manson applied for patent on his process, in January 1960.

Manson, however, was not the first person to apply for a patent on the process to produce on this particular process, the one involved in this case, to produce this compound.

In fact, in 1956, two other inventors whose names are Ringold and Rosenkranz, applied for patent on the same process and that patent was issued to them in 1959 even before Manson's application was filed.

They got a patent on the very same process to produce the very same compounds which is involved in this case.

In doing so, they did allege some utility at that time for their process which is the same process and that can be found on page 57 of the record where their patent is set out.

Justice William J. Brennan: I don't follow this Mr. Bender.

Mr. Paul Bender: Yes?

Justice William J. Brennan: How'd this fellow get a patent if he's already one?

Mr. Paul Bender: Manson has not gotten a patent yet.

Justice William J. Brennan: Oh!

Mr. Paul Bender: But it is possible Mr. Justice Brennan to get a patent even though somebody else already has a patent on the very same invention.

This is called what's known an interference proceeding in the patent law.

The fact that someone else already has the patent on the invention doesn't necessarily preclude you if you can show that you invented it first.

Justice William J. Brennan: Yes.

Mr. Paul Bender: Now, there are some restrictions on that.

I think it's 102 (b) which says that you got to come in within a year of the issuance of his patent.

If you don't do that you may waive your rights.

But the overall or general principle of the patent law is that the first inventor gets the patent, and he gets it even if the second inventor managed to get a patent first.

Or for example in the co-pending situation that you just heard.

They might both be pending in the Patent Office at the same time.

In either case, the Act has a provision what's called an interference proceeding and that's what's involved in this case.

Manson by applying for a patent after Ringold had gotten it was really invoking an interference proceeding and which he wanted it determined who invented the process first, and that's never been determined yet.

This case has really decided on the pleadings.

The reason it's never been determined yet is that the Patent Office said that Manson has not made sufficient allegations in his application and the affidavits accompanying it, the affidavits being filed according to the Patent Office procedure.

He hadn't made sufficient allegations to entitle him to the patent over Ringold even if everything in his allegations were true.

And the reason they said that is that they said that Manson has not alleged in the affidavit he filed that the product of the process was useful.

Nor had he alleged that he knew it was useful or that it was useful before Ringold got -- filed his application.

Now, it's common ground that you don't get a patentable invention unless it's a useful invention, although there's a serious dispute of what useful means.

They said, the Patent Office said to Manson, “You have not sufficiently alleged that your invention was useful before Ringold's invention was useful, or at the time that you invented it, it was useful that you knew the use.”

Now, therefore they said, you have -- you can't show, since you haven't alleged that you can't show that you were the prior inventor of this invention accomplishes utility.

And therefore, they denied the application and the Board of Appeals affirmed.

Now, Manson had argued to them two things.

One, he said “Oh, I have alleged that the compound -- the product is useful.”

They said, “That's not true.”

They didn't deem his affidavit as sufficient allegation.

Second, he said, “Even if my affidavit doesn't sufficiently allege that the compound is useful, that's not necessary.

All I have to allege is that the process produces a compound.

You don't have to worry about what the compound is for or what it's not for, so long as it's not harmful, positively evil.

But you can assume that the compound just sits there and does nothing.

It's just a substance which clutters up the world.

That doesn't matter.”

He said.

The process to produce it is useful because processes are something special.

The process is so useful if they work, even though they work to produced something that isn't useful.

Those were his twin arguments.

As I say, the Patent Office denied them.On appeal to the Court of Customs and Patent Appeals, they just addressed themselves to the second argument.

They didn't go into to the question of whether he had a sufficiently alleged the use for the product.

They said, “You don't have to.”

All you have to allege is what he undeniably did allege and that is that the process works to produce the product.

And they said, “If you do that, if you allege the process works to produce a product, then you've alleged enough to entitle you a patent if you can prove it.”

Now, this decision applies not only to interference cases, it applies to all patent applications.

And although that Manson came in forgetting about Ringold with exactly the same patent application just alleging that the process worked to produce Product X, but saying nothing about what Product X could be used for and not used for.

The Patent Office said, “Well you got to say what the use of the product is.”

This decision of the Court of Customs and Patent Appeals would hold that he didn't have to say that.

That that's enough that he could get a patent on any of these processes which he invents.

Justice John M. Harlan: Has this been the position from the information is taken now?

Has that always been his position?

Mr. Paul Bender: I understand it, it is generally always been the Commissioner's position, yes.

And in fact Mr. Justice Harlan, it was the -- it was the Court of Customs and Patent Appeals position in 1950 in the case called In re Bremner where the court said it was never intended that a patent be granted upon a product or a process producing a product unless such product be useful.

This was the Court of Customs and Patent Appeals in 1950, and as I understand that that reflect what the Commissioner then did.

I'm not absolutely sure of that, but that's my understanding.

Since then, the Commissioner has adhered to that and if the Court of Customs and Patent Appeals which is slowly retreated from in it in a series of decisions which we set out in a long footnote in the brief until they finally reached the position they taken this case, and that is a process is something different from a product.

They say the Bremner case is right as to products.

A product, you can't get a patent on a product unless the product was useful.

Well, they say that's not true as to processes.

With processes, it's enough to show that the process produces a product.

You don't have to show that the product was useful.

Now, we -- it's clear that no one contested the fact that the Constitution requires in so many words, and the Patent Act has always required in the same route that a patentable invention be useful and we simply don't believe that you can say with any reason or logic that a process is useful even though its sole use is to produce a product which is entirely useless.

That just doesn't make sense.

And as I say, that was the view of the Court of Customs and Patent Appeals, clear in 1950 and until this case.

Justice John M. Harlan: Take these large companies that are engaged in what is called pure research, experimental research spending vast amounts of money without knowing whether the results of the research is going to be commercially used or not.

Mr. Paul Bender: Alright.

Justice John M. Harlan: They don't file an application, patent application, to the -- at the experimental stage?

Mr. Paul Bender: Well, they seem to in this case.

Justice John M. Harlan: I thought they accept them all?

Mr. Paul Bender: Well, they certainly don't get them for the products Mr. Justice Harlan, there's no question about that.

Justice John M. Harlan: They don't get them for the process, do you?

Mr. Paul Bender: Well, this case would give them -- to them for the process.

Justice John M. Harlan: But hasn't they been doing that before?

Mr. Paul Bender: The Court of -- the Patent Office would not give it to them for the process unless they show utility for the product, yes that's the very issue that's involved here, and that's exactly what happened.

They produce enumerable products.

They can't get the patent on the product if it's useless.

What they're now trying to do is to patent the process to produce the product and in that way foreclose access to the -- to the product.

They then may never investigate the use of the process.

They just get the patent and use it for a negative reason.

Now, that is inconsistent with the purpose of the Patent Act, the constitutional purpose of the Patent Act, which is --

Justice John M. Harlan: If they keep the process secret and not dispose it at all.

Mr. Paul Bender: Then they don't get a patent, Your Honor, but they're perfectly entitled to keep it a secret.

Justice John M. Harlan: Well, how does anybody knows about it?

Mr. Paul Bender: Well, other people may arrive at it independently Mr. Justice Harlan.

This has in fact happened in this case.

That's one -- you see that's one of the great dangers of patent.

If A comes in and gets a patent on something, he can foreclose B from using it even though B arrives at it independently one day later.

A patent unlike its copyright prevents somebody else from using it even though the second person doesn't copy it.

It's a total monopoly.

And so they can keep it secret, but that is no assurance that the world won't learn about it because other people, as in fact happened in this case, may arrive at it.

In any -- that by the way, Mr. Justice Harlan, seems to be the principal reason set forth by respondents for giving patents for these useless things.

They -- they say, “Well it's true that they're useless” and they don't say, they don't make the argument too strong and if there's a speculative usefulness which may eventually come about.

Well then you say that it's the dissemination of information.

You'd give us a patent we'd tell everybody about this useless thing and then there'll be other people will find use of it.

Well, the fact is that that's not what patents are for.

Patents are to give a monopoly to people who will use the monopoly to benefit society.

The patent gives you a monopoly so that you can guard and market your product free from competition for 17 years.

If you didn't have that, you might never market your product because you might not be able to get financing from people who wouldn't invest in you.

If other people can steal the thing as soon as you hit the market with it, your investment may go down the drain.

They don't have all the research expenses and the opening up of the market expenses which you have as soon as you hit the market they steal it from you.

It would clearly act as a suppression of new products being given to society.

There's that that you suppose to use the patent for and the second thing you suppose -- the second way in which you'd benefit the public is that at the end of the patent period, when the 17 years is up, the public gets something useful.

The patent isn't given, as Mr. Doolittle said in the previous case, to reward an inventor as such, you do that lots of other ways.

You give him scholarships and grants and things like that.

The patent is to give the public the benefit of the invention, and it's clear that if the beneficial used to the public that is what useful means.

That's what this Court has always said in general terms ever since the Patent Act was enacted.

Justice Byron R. White: Mr. Bender, --

Mr. Paul Bender: And --

Justice Byron R. White: -- I suppose that you could be right and -- and Manson could still win.

Mr. Paul Bender: Absolutely.

Justice Byron R. White: Because, as a matter of fact, he did invent a useful product.

Mr. Paul Bender: Yes, the question in this case was whether he knew of the use before Ringold knew of the use.

And he said --

Justice Byron R. White: But it wouldn't make any difference whether he did or not, would it?

Mr. Paul Bender: Oh, yes.

I think it would because it's the time -- time is very important.

Justice Byron R. White: Well, let's assume that I invent something except that I don't know what the use is and I don't know any use for it.

And the next day, you invent the same thing independently and you do know a use for it.

Now, as a matter of fact, although I don't know that I did invent a useful product.

Mr. Paul Bender: Well, what's that --

Justice Byron R. White: And why shouldn't I -- why shouldn't I -- and -- and if we get into a fight in the Patent Office, why shouldn't I win?

Mr. Paul Bender: Oh no!

I think he should win, because he --

Justice Byron R. White: You mean -- you mean -- you mean the utility is part of invent -- is part of invention?

Mr. Paul Bender: Oh surely.

That -- that's precisely the issue involved here, utility (Voice Overlap)

Justice Byron R. White: Well it's not, no it isn't, the question -- no the questions is whether something is useful -- it has to be useful but I don't have to invent it.

I mean I don't have to invent the use or --

Mr. Paul Bender: Let's -- let's change our semantics a little bit.

Utility is part of patentability, there's no question about that.

Justice Byron R. White: Alright, exactly.

Mr. Paul Bender: That's all I'd like to talk about.

Justice Byron R. White: It's not part of invention.

Mr. Paul Bender: Alright, but I'd like to talk about patentability.

You can't get a patent without a use.

Justice Byron R. White: Alright.

Mr. Paul Bender: That's clear.

Suppose you invent a product, Mr. Justice White --

Justice Byron R. White: I agree with you, but the time -- but in my example, by the time it gets around in the Patent Office there is a use for it.

Mr. Paul Bender: Right, but -- well, let me give you an example to which I think illustrates the problem in a case where there's not too much controversy.

Suppose you invent a product, you know no use for it, if you apply for patent it would be denied.

Justice Byron R. White: Right.

Mr. Paul Bender: Suppose someone else at the same time was applying for patent on the same product but he showed that it had a use, he would be entitled to the patent not --

Justice Byron R. White: Let's just assume that I thought of the product the day before but not the use.

Mr. Paul Bender: He would be entitled to the patent because he thought of the patentable invention before he used it.

You see, the patentable invention involves the use also.

Take it back one step and I think you'll see it more clearly.

Suppose you think of the idea of producing -- well you remember the Adams Battery case that you heard last -- last month involving magnesium-cuprous chloride battery?

Suppose you thought of the idea of having magnesium-cuprous chloride battery on day one, right?

You tried it out on day two and it exploded, as the Skrivanoff battery which we cited as prior on as alleged to have done.

On day three, your opponent thought of the idea two days after you did.

When he tried it out on day four, he made some little change in the thing which made it not explode.

Now, he's entitled to the patent, not you.

That's clear, nobody would dispute that.

If you came in and ask for a patent on yours which exploded, you couldn't get it even though you thought of the idea first.

And that it also seems to me is relevant on this other question which is probably --

Justice Byron R. White: Well, you changed the facts because I will agree with you.

Mr. Paul Bender: Fine.

This is my facts that were involved in this case.

Justice Byron R. White: I doubt it.

Mr. Paul Bender: If I -- I'm really, Mr. Justice White, not aware of how I've changed the facts relevantly.

Justice Byron R. White: Well, you will have to find out.

Mr. Paul Bender: Okay.

This, the example I just given, it seems to me, is illustrative of the principle point that I want to make and that's the patents aren't used and aren't properly used.

It's never have been used to encourage the dissemination of information, pure scientific ideas or techniques.

What they are used to was to encourage the dissemination of useful invention, because everyone concedes Mr. Justice White that that battery if it exploded when you tried to use it, wouldn't be patentable even though he was the first one to think of the idea of combining magnesium-cuprous chloride.

And so he could come forward and say, as respondent say in this case, “Well give us a patent on the idea.

We put it together, other people may figure out how to do it without it exploding and then it will be a wonderful thing.”

But you don't get a patent on that, everyone concedes that.

A machine that explodes --

Justice Byron R. White: Including names.

Mr. Paul Bender: What?

Justice Byron R. White: Including names.

Mr. Paul Bender: I wouldn't say everyone otherwise.

You can't get a patent on a machine that explodes.

You can't get a patent on a battery that doesn't work even though you've got a very noble idea which other people may seize upon and make into something useful.

In addition, you can't get a patent on a product which has no use, even though if you got the patent you might say, the respondent say here, “Well we would publicize it and then other people might find the use for our product.”

There's no question that you can't get a patent on that basis of the dissemination of information.

The Court of Customs and Patent Appeals as I say held that squarely in 1950, it's consistent with everything that's ever been held and they explicitly in this case haven't retreated from that.

They say it's the product.

The argument is right.

You cannot get a patent on a useless product even though it's a new product, and we say the same thing clearly ought to apply to useless processes.

There's just no reason to make something different out of processes.

I would -- finally, I'd like briefly to talk about the negative aspects of this which I've mentioned in response to Justice Stewart's question before.

It's not only that the patent system was never designed to give patents to encourage the development of useless things of ideas in the abstract.

It's that also that if patents were given in cases like this, they would constitute a substantial deterrent to pure research which respondents say they're trying to encourage.

If you let drug companies make lots of these products, invent lots of these processes without knowing any use for it and get patents, the only thing they're going to do with those if they don't find the use is to use them to block other people from arriving and using the similar process of product.

They'll be used as a way of stopping their competitors from engaging in competition with them with these processes, because the in -- the competitors may very well find a use.

If you give Manson -- if you gave Manson, give a patent in this case on the process which was useless, Rosenkranz and Ringold who later find the use won't be able to use their useful process when they know the use for it without the permission of the prior patentee.

He can use that patent to block off their attempts to give society something useful.

Justice Potter Stewart: It seems to me, Mr. Bender that this policy argument that you're now making, and I understand that's what it is, was implicitly answered in Mr. Justice Harlan's question to you a moment ago, and that is if a process which does not produce a useful product is not patentable as you maintain, then all the incentive will be to -- instead of applying for a patent to keep the whole process secret and that would inhibit I should think further research by others, competitive research by others to find out if the -- if the end product is useful.

Mr. Paul Bender: That's a possibility, Mr. Justice Stewart.

We don't dispute that.

You may speculate that it might inhibit.

Personally, it seems to me, I'm doubtful of that.

I doubt if people engaged in pure research are going to hide what they think is technically scientifically significant discoveries, because they can't get patents for it.

And I shoul think (Voice Overlap)

Justice Potter Stewart: Companies research -- companies do it all the time as you know --

Mr. Paul Bender: Big companies market --

Justice Potter Stewart: -- they have option.

They choose to keep the secret rather than to apply for a patent.

Mr. Paul Bender: I agree.

Justice Potter Stewart: They've done every day and hundreds of times.

Mr. Paul Bender: But on the other hand, there's also the possibility that although they keep it secret, other people will arrive at it, and if you give them the patent on it, if other people then do independently arrive at it and arrive at it with the use, the first patentee, the one who has the patent can stop them from exploiting it to the public's benefit.

Now, I agree there are arguments on both sides.

It seems to me that putting that light, the arguments clearly don't favor giving a patent because there are all these arguments and all these reasons why the patent might act as a depressant upon scientific research.

The fact is, however, that you just shouldn't make the distinction between process patents in this regards and product patents in this regard.

You could make the same arguments with regard to product patents.

They're clearly not accepted, and I take it the reason that this balance has been struck there in favor of say, let them keep it secret.

Let other people find the product, and also Mr. Justice Stewart by not giving the patent at the time when they just find the product to the process, you encourage them to continue to look for a use, not to stop with a product but to go and find out what to do with it, because it's only then that they can get the patent.

Now there, it seems to me, you've got an encouragement which will substantially help society by asking them to look for the use and by not giving them the patent and the monopoly until they do get the use.

In some, the patent system is designed to give society things that are useful to society and you don't give patents unless you have some assurance at the time you give some reason to believe at the time you're given.

That's the thing you're giving a patent on that will be useful to society, otherwise, you're just floating a negative monopoly.

Something that the patent holder can use to stop other people but that he has no incentive particularly the use to -- to give society something especially in an area like this where he may -- his sole interest may be in stopping his competitors since he has a -- since he has a related product.

Justice John M. Harlan: Is this the decision we're revealing on our -- is this the only decision in appeal?

Mr. Paul Bender: On this precise question, yes.

Justice John M. Harlan: First time this has been decided?

Mr. Paul Bender: In the Court of Customs and Patent Appeals.

The Court of Appeals for the District of Columbia has held the way we submit in a case called Petrocarbon against Watson several years ago.

Justice John M. Harlan: Process patent.

Mr. Paul Bender: Process patent, yes and they -- and also the Bremner case, as I said previously in the Court of Customs and Patent Appeals held the same thing with regard to a process patent that you can't get a patent on a process unless the product is useful.

That was held by the Court of Customs and Patent Appeals.

Is the rule presently in effect in the Court of Appeals for the District of Columbia Circuit, it is the Court of Customs and Patent Appeals which has now departed from.

So in that sense, I think there are decisions on this previous decision, two of them going precisely our way, the Bremner case and the case in the Court of Appeals which creates the conflict.

There's no decision in this Court on the issue, but in the lower courts, there are these previous decisions.

But, whatever time I have remaining, I will use for rebuttal.

Justice John M. Harlan: Can I ask you one other question?

It's a matter isn't it that a construction of statute this case could go either way, isn't it?

Mr. Paul Bender: It's a verbal matter, if you just look at the word useful, I suppose you could.

Justice John M. Harlan: Interpreting the statute.

Mr. Paul Bender: You could verbally say that a process is useful if it produces a product but I think -- when you interpret the Constitution, you can't amount that way, Mr. Justice Harlan, because the Constitution talks about promoting the progress of useful arts.

When you get in that notion of the progress of useful art, there it seems to me that you can't just look at the abstract question that the process is useful even though it's useful to reach a product which is a dead end.

Justice John M. Harlan: I don't see why the Constitution should interpret it against you than the statute.

Mr. Paul Bender: Well, because as I say I think it has in mind the notion of useful to society, beneficially useful.

Justice John M. Harlan: And making the processes is useful.

Mr. Paul Bender: Not if the end result of the process isn't useful.

Justice John M. Harlan: That's what you say.

Mr. Paul Bender: Right.

Chief Justice Earl Warren: We'll recess now.

Argument of Dean Laurence

Mr. Dean Laurence: -- questions and I trust the same situation will prevail this afternoon.

I should like to address myself firstly to the matter of the merits and to straighten out some of the situation with regard to just what we are arguing about here.

Firstly, it is clear that the subject matter which is defined by the claims of the patent application of Manson here on appeal is a process.

It's not a product.

It's very important to understand that it is only a process.

It is further important to understand that it is not the first process ever invented for making the compound, which we will call the two alpha compounds here that it is supposed to make.

This is on the record the second process invented for making that compound.

In other words --

Justice William J. Brennan: It's the only compound that makes this (Inaudible)

Mr. Dean Laurence: It makes a class of compounds.

There is a specific claim to the making of one compound and there is a slightly broader claim to the making of a narrow class of compounds, Mr. Justice Brennan.

But for purposes --

Justice William J. Brennan: Are all of them or whatever the claims are, I gather Bremner's completion is through all the use.

Mr. Dean Laurence: That is the position of the Government.

Chief Justice Earl Warren: Is that conceded?

Mr. Dean Laurence: No, Your Honor, that is not conceded.

Chief Justice Earl Warren: I thought I understood Mr. Bender to say that there was no disagreement on who's to -- as to whether the product was useful or not.

Mr. Dean Laurence: I think, he so stated, Mr. Chief Justice but we do not concede that.

We simply do not concede that the process is useless and we do not concede that the product which will be obtained if you conduct the process is useless.

And we further say that in this specific case, however, it wouldn't make any difference if it was.

Justice Hugo L. Black: Was it accidentally discovered or did you set out to discover that particular kind.

Mr. Dean Laurence: In answer to your question Mr. Justice Black, there was an article published in a journal, antecedent, anything that occurred here involving Manson or involving the Ringold patent which we're trying to get into interference with.

Before, either Ringold patent it -- filed their patent application or Manson filed his.

In other words, there was a journal article back in 1956 which showed a way of making the two alpha compound and which described the compound by identifying characteristics, melting point and so on, gave a structural formula whereby it could be identified and said that that compound was of a class of compounds which were being tested as tumor inhibitors and some members of the class had already been tested and found to be useful for that purpose.

That's at record 61.

The Court will refer to record 61.

Justice Hugo L. Black: You mean the article showed that it would have a use?

Mr. Dean Laurence: Yes, that is why we say --

Justice Hugo L. Black: What field?

I've heard so much that may not have anything to do with the legal point, but I've got an interest on it.

Mr. Dean Laurence: It very definitely has something to do with the legal point, Mr. Justice Black.

If I may read from page 61, the last sentence of the Ringold, et al. article is this.

After having described, the very compound produced by the process here in issue, but by a different process, the article says, “While anti-tumor screening of the above described 2-methyl hormones is still in progress, 1A and 2A which are other members of this class of hormones to which the 2-methyl hormones belong have already been shown to be very effective tumor inhibitors.

Now, that is the starting point, the takeoff in this case.

There was a journal article, and in that journal article, it told us a way of making the compound which the process here in issue makes.

So we have an alternative and second way of making the compounds described in that journal article.

Now, after the journal article was published, Ringold filed a patent application and got a patent, and they claimed a different process from that of the journal article involving only one-step method.

The first, the journal article shows about I think a three or four-step method.

After Ringold got his patent, Manson filed an application, timely, there's been no argument about that and in full compliance with all of the rules of practice and the statutes relating to the proper filing of an application, copied a claim, two claims out of the Ringold patent, the process claims which are here in issue.

And said, “I think I invented that process, that single step process not the process of the article but the single step process before Ringold, the patentee, invented it and I want a chance to contest priority.”

And when that occurs, the Patent Office rules provide Rule 204 (b) as it then stood provided that one must file an affidavit which makes a prima facie case of having invented the subject matter.

That is when you copy a claim out of a patent application, out of an issued patent, you must file this kind of affidavit that shows on its face that you completed the invention of the subject matter defined by the claim before the filing date of the patentee.

Otherwise, if you couldn't make such an affidavit it would be nonsense to have any interference because you couldn't back of his filing date.

Manson here filed such affidavits, and that is all what this case is about.

Whether the affidavits he filed were sufficient under Patent Office Rule 204 (b).

And now I have to tell the Court that Rule 204 (b) was amended after this case was decided to bring it into conformity with the point that we are going to make in this case that the affidavits could not be judged, their sufficiency could not be adjudged by a primary examiner.

Justice John M. Harlan: By what?

Mr. Dean Laurence: A primary examiner.

And at this point, let me very quickly describe, because I think Mr. Justice White asked a question whether Board of Appeals was under control of the Commissioner.

Let's look at the Patent Office for a moment.

We have -- when an application is filed, a group of people called examiners and there is of course in the hierarchy a primary examiner.

Now, the primary examiner and all of his helpers are arms of the Commissioner.

The Commissioner is charged with examining the patent.

So as far as we are concerned here, a primary examiner is the Commissioner.

Now, if the examiner by the Commissioner says, “I won't allow that patent for any reason at all because it's not in compliance with the Section 112 which says you must fully describe how to make and how to use the claimed invention.”

Or any other reason, then the applicant has recourse to a Board of Appeals.

Now the Board of Appeals is not under the control of the Commissioner.

The Board of Appeals is a separate body.

The members of the board are nominated by the president confirmed of the vice senator of Senate and they sit as a board.

The Commissioner of Patents is a member of the Board of Appeals but he does not control the Board of Appeals and cannot reverse a decision of the Board of Appeals.

Insofar as I'm aware, it's never been done.

I do not believe it can be done.

Justice Tom C. Clark: How large the Board is it?

Mr. Dean Laurence: There are I think currently nine members, a sit in banks of three and from time to time other people are appointed when they get a heavy case load to the statutes provide that they may be, but it's a --

Justice Tom C. Clark: What's the approximate number on the staff of the Patent Office, the whole office?

Mr. Dean Laurence: The whole staff is I think on the order, examining core, is on the order of 1100.

There is of course a big administrating clerical staff.

I do not know the number of those people.

Justice Tom C. Clark: Do you have any idea how many patents come out of there a month?

Mr. Dean Laurence: A month?

Currently the load is about 800 to 1200.

It varies in that range.

The reason for it is of course the fee bill, has made everybody pay up their fees to get their patens out.

Normally, I think the number of patents issued for a week in the whole category of arts is something like 700.

Justice Tom C. Clark: A week?

Mr. Dean Laurence: Yes, Your Honor.

Justice Tom C. Clark: 700?

Mr. Dean Laurence: Yes.

Justice Tom C. Clark: You've been asked a little higher.

Mr. Dean Laurence: It's a little higher because we have a surge in the office right now due to the -- there was -- you had to pay your fees before a certain time in order to avoid a higher fee.

Justice Tom C. Clark: Well, how many applications?

Mr. Dean Laurence: About two-and-one-half times, that number of applications are filed.

It takes roughly two and one half applications to get a patent.

In other words, a patent always knocks down about one-and-a-half and they led through about one.

Justice Tom C. Clark: (Inaudible)

Mr. Dean Laurence: Yes.

Justice Hugo L. Black: (Inaudible)

Mr. Dean Laurence: I think is about correct, Your Honor, those statistics are available in Senate reports.

Now, the primary examiner decided the affidavits were insufficient, and that's all we're talking about on the merits in this case is whether those little old Rule 204 (b) affidavits were sufficient.

The primary examiner decided the affidavits were insufficient only because, and I quote record 48 and 50, “No utility for the final product produced by the process is alleged in the affidavits.”

Now, I want to make it very clear right at this point, this is not a Section 112 case.

Section 112 has to do with what you put in your patent application when you file it.

This case has only to do with a Rule 204 (b) affidavit, and when the examiner said at that point, “No utility for the final product produced by the process is alleged,” he meant alleged in the affidavits.

There didn't have to be a utility of any sort alleged in the patent specification, and there wasn't and the examiner specifically ruled on that point saying that that had nothing to do with it.

Manson argued the prime -- yes?

Justice William J. Brennan: What you're telling us I gather is that this problem of the patent in the form of his affidavit that is used as a part of it only because you took two claims out of the --

Mr. Dean Laurence: Issued Ringold patent.

Justice William J. Brennan: -- issued Ringold patent.

Mr. Dean Laurence: Yes.

Justice William J. Brennan: That what triggered this particular pursuit?

Mr. Dean Laurence: That is correct Your Honor.

Keep in mind that the process here involved is already patented.

We aren't up here asking that this Court determine whether the subject matter is patentable.

That isn't an issue here at all.

It's already been patented to Ringold.

What Manson sought and what the CCPA granted him was the right to contest priority to see who first invented the patented process.

In other words, can Manson take it away from Ringold, et al.

Justice Tom C. Clark: Ringold did not have to make an affidavit when he filed his patent.

Mr. Dean Laurence: That is correct, Mr. Justice Clark, simply because he's not involved until the Patent Office says there is an interference.

Justice Byron R. White: But to get a -- but to get a patent, Ringold had to show use or no?

Mr. Dean Laurence: Ringold, in filing his application did not have to show use because the compound was already known, but he did in fact show a use for the product made by the process which is patented.

Justice Byron R. White: I see.

Justice Hugo L. Black: When the hearing examiner has said that allegation was not contained, did -- was there an amendment made to the -- for the affidavit or effort made to do it or did they -- your client agreed to do it or declined to do it?

Mr. Dean Laurence: Mr. Justice Black, there are five affidavits in this case and the last one is at record 47.

In that specific affidavit, what was said was this.

That prior, I'm reading from the bottom of record 47.

Prior to December 16, 1957, that's the filing date of Ringold, the utility of the process of claim three of my application was obvious to me -- that's a claimed copy out of the patent -- was obvious to me and that it would produce, what I call a two alpha compound here, the utility of which as a hormone analogue was described in the article by Ringold which is the early journal article.

Now, in other words, what the applicant here said --

Justice Hugo L. Black: That's the one that says was for to be used as a tumor inhibitor?

Mr. Dean Laurence: The article said that.

Justice Hugo L. Black: Yes.

Mr. Dean Laurence: Yes.

Justice Hugo L. Black: Is that the part to which it referred?

Mr. Dean Laurence: Yes.

The utility of which is a hormone analogue that is as a tumor inhibitor.

Now, we say that when Manson averred that the process of the claim was obvious that it would produce what it was supposed to, the two alpha compound, and then that the utility of that thing which was produced, but is not here claimed was obvious to him, he made a prima facie case and that's all that's required by the rule under viable precedents which have not been overruled.

And which are found at record 45 -- at page 45 of respondent's brief which hold that an invention may be completed and the thing which is made -- made its utility may be so obvious that no test is necessary.

Now, there is a class of cases in which the courts are or several of the lower courts has so held that you can complete an invention.

And mind you, Rule 204 (b) is designed to inquire into whether an applicant completed his invention, i.e. conceived and reduced to practice prior to the filing date of the patentee from whom he seeks to take claims.

So here, we say that under the viable precedence of the cases which we cite at page 45 of our brief, Manson did in fact make out a prima facie case because all he had to say was that the utility of this process was obvious to him and that it would make a known product.

Justice Hugo L. Black: But is it your position that that's enough?

Mr. Dean Laurence: It is our position that that would be --

Justice Hugo L. Black: I quite have -- yes, suppose -- are you saying that it's not necessary to show or for an action to exist any utility at all in the product of a process to which patent is designed?

Does your case depend on that point that far?

Mr. Dean Laurence: Our case does not depend on this Court going that far, but we say if the Court should decide to go that far, then a claim directed to a chemical process which is shown to be operative and a full disclosure given of how to make a particular product and that product is known in the art, it's all in the art per se, it makes no difference whether any utility be known for it or not, that the utility of the process is proven and established when the process is conducted by the chemist and shown to produce the thing it is supposed to produce --

Justice Hugo L. Black: A product, as I understand you're saying, shown to be able to produce a product which is no known --

Mr. Dean Laurence: Known.

Justice Hugo L. Black: -- possible utility that anybody can think about?

Mr. Dean Laurence: That is correct, Your Honor.

But the product must be known in the art.

The product per se must be known.

Justice Hugo L. Black: What?

It might be known like some object that everybody hopes that it would be few all in the world?

Mr. Dean Laurence: That is entirely possible, but the cold fact --

Justice Hugo L. Black: It doesn't make any difference, does it?

Mr. Dean Laurence: The cold --

Justice Hugo L. Black: They can get a patent even though it has no possible utility and might actually injurious to the public?

Mr. Dean Laurence: We couldn't get a patent on the product, Your Honor.

Justice Hugo L. Black: Well I'm talking about the process of producing this product that nobody wants and as a matter of fact everybody's afraid of, dangerous -- dangerous to be produced.

Mr. Dean Laurence: Dangerous to produce?

Justice Hugo L. Black: Dangerous for it to exist.

Let's imagine one that is dangerous to exist.

Mr. Dean Laurence: In that case Your Honor I think it would be quite contrary to what Mr. Justice Story said in Bedford v. Hunt, it would be there contrary to good morals mischievous or wholly undesirable then I agree with Mr. Justice Black that there could be no question in such a process.

Justice Hugo L. Black: You're not agreeing but I'm just asking if that was the --

Mr. Dean Laurence: Oh, I wouldn't -- I would say no.

If you have something which was something to good morals, Mr. Justice Story I think would --

Justice Hugo L. Black: It wouldn't have to get into good morals any further.

Mr. Dean Laurence: No, I wouldn't necessarily have to get into that but as Mr. Justice Story did --

Justice Hugo L. Black: Subject to one of controversy.

Mr. Dean Laurence: He said, “Injurious to the morals, the health of the good order of society.”

If it's any of those, then it is not patentable, otherwise it is not necessary to establish the invention is of such general utility as to supersede other inventions now in practice to accomplish the same purpose.

It is --

Justice Hugo L. Black: Well, that's general utility, wasn't it?

Mr. Dean Laurence: Right.

And the justice went on to say, it is sufficient that it has no obnoxious or mischievous tendency that makes it sufficient.

Justice Hugo L. Black: That's a line you would draw.

Mr. Dean Laurence: That's a line I would draw, Your Honor, and here is why.

As a matter of fact, no one can name a chemical compound.

We're not dealing with sort of amorphous masses here.

We're dealing with chemical compounds which are things which have definite fixed structures known to chemist.

No one can name a chemical compound which is not useful because any chemical compound can be used by a chemist by obvious reactions to make something else.

It is useful per se, any organic chemical compound.

There are type reactions known in organic chemistry.

If the thing is an alcohol it is known that it can be esterified with an acid to make an ester so you can make an ester from it, it is a research tool.

Every org --

Justice Hugo L. Black: What you're saying now is set on the premise that it is useful, any of them, any one is useful.

Now, that's -- that's a different proposition, isn't it?

Mr. Dean Laurence: We are here dealing with a process which makes an organic compound and I have asserted that any organic compound is useful because something else can be made from it.

Justice Hugo L. Black: Well, of course, if that's the case and that has been shown, I appear to decide that that's wrong then.

That would be a question of fact, wouldn't it?

Mr. Dean Laurence: In a specific case, yes.

Justice Hugo L. Black: Yes, in your case.

Mr. Dean Laurence: In our case, we are not dependent upon that, because here, our compound, I should not use the expression, our compound.

The compound produced by the process was known to be of a class of compounds where a utility was set forth in a prior publication.

Justice William J. Brennan: Well, in addition to that, to get this, Mr. Laurance, Ringold got a patent on a process to produce this very compound, wasn't it?

Mr. Dean Laurence: Correct, Mr. Justice Brennan.

Justice William J. Brennan: How can we get this to test the utility for that compound?

Mr. Dean Laurence: Well, he asserted the utility in his specification and that's all its necessary.

Justice William J. Brennan: And what you're trying to do, picking out to a complaint and say no, whatever he's got belongs to me and that includes any drug that he gets out of those assertions that that compound has utility.

Mr. Dean Laurence: I'm saying his process belongs to Manson, because Manson, we think, was earlier and we want a chance to prove that.

Justice William J. Brennan: And you want the benefit of this whole patent in proving whatever flows on the assertion in this claim that the compounds have a utility.

Mr. Dean Laurence: There is no assertion in the claims that the compound had a utility.

The claims themselves define merely a process.

There is an assertion in the specification.

Justice William J. Brennan: Well, whatever that is --

Mr. Dean Laurence: That --

Justice William J. Brennan: (Inaudible)

Mr. Dean Laurence: That is not quite accurate, Mr. Justice Brennan.

I do not want to leave you with --

Justice William J. Brennan: -- the statement about everyone?

Mr. Dean Laurence: I do not want to leave you with a misapprehension.

We do not seek to obtain the benefit of any use disclosed in the Ringold, et al. patent.

We do seek to get the benefit for Manson of the use disclosed -- the utility disclosed in the prior journal article which was ahead of the filing date of the Ringold patent.

We think we're entitled to that.

That was in the entire art.

Justice William J. Brennan: -- application claimed anymore?

Mr. Dean Laurence: Anymore?

Justice William J. Brennan: In the way of utility?

Mr. Dean Laurence: The specifications defined other utilities perhaps more specific.

We're dealing in the field of hormonal, which means that affects the endocrine glands, and there they can be androgenic or estrogenic and the specification of the Ringold, et al. patent did go farther than.

Justice William J. Brennan: And those you do not claim.

Mr. Dean Laurence: We do not claim.

The claims here are concerned in no way with a product or with any particular use of a product.

Justice William J. Brennan: (Voice Overlap) on this issue of utility of product, not of process, did what Ringold included in his specification the utility of product, is that why he got the patent?

Mr. Dean Laurence: No, Your Honor.

He got the patent because the process sufficiently creatively ingenious, vis-à-vis, the prior art the examiner thought it was patentable subject matter.

Justice Hugo L. Black: And also there was a statement there that it's useful, isn't it?

Mr. Dean Laurence: That the product was useful.

Justice Hugo L. Black: The product, yes.

Mr. Dean Laurence: Yes, but he did not claim the product.

Justice Hugo L. Black: Well, I asked you these questions because I'm a little confused, it seems to me you are, maybe I'm wrong about it.

That you're undertaking a little more than you need to undertake because of the arguments you're making to us, because you are saying as I understand it abstractly that it doesn't make any difference whether this ever had a utility or not.

You didn't have to allege it nor not to prove it and yet you say, your main argument has been devoted for the fact, supported to some extent by the record, I'd say, that this really did show that it was a useful argument.

Mr. Dean Laurence: I have gone beyond the facts necessary to decide this case in arguing of the point because it was my understanding the Court raised the question of how I would feel, or how I would argue in the event that.

And so I went beyond what is necessary to decide this case.

We feel that all it's necessary to decide this case on the merits question would be just this.

If the Court would look at the affidavit and observe that it avers the process had in fact been conducted and the compound made, and that's uncontroverted.

And then, that the utility of the product was obvious to Manson and that under applicable case precedence which are still viable, that makes out a prima facie case for priority that would indicate --

Justice Hugo L. Black: But didn't you leave that one thing though?

Didn't you also point to the fact that in this affidavit they referred to a document which had shown the utility of the -- for the product?

Mr. Dean Laurence: We could fall back upon that, Your Honor.

If we had to fall back beyond what I have said, we could go on and say yes.

In the journal article, there was a utility showing for the compound.

Justice Abe Fortas: It seems to me that it has been as simple as that, Mr. Manson in his affidavit would've said, “Why, this is good as an impact tumor business” or whatever it is.

Now, what's happened is, I have read the record, is that the examiner and the Board said that you just hadn't made that sort of a statement.

You just had not claimed that this process has any utility in terms of being able to produce a product or in terms of being an intermediate stage in the production of the compound which would be useful.

Now, that's a simple matter that the language, why didn't you amend the affidavit.

Frankly, I can't read the -- I want you to help me on this.

I can't read this record without the feeling that perhaps there's a little more to it than that.

Why didn't he use the same language that was used in the article, in the journal article?

Mr. Dean Laurence: We -- Mr. Justice Fortas, we submit he did.

At record 47, the last allegation at the bottom of the page beginning from line four from the bottom of record 47, where Manson averred that prior to this filing date of Ringold, the utility of the process of claim three, that's the copied claim, was obvious to me and that it would produce the two alpha compounds.

And then it goes on.

The utility of which compound as a hormone analogue was described in the Ringold article, and I say that that is not the same Ringold patentee, that's the journal article I've been mentioning, and that was obvious to me.

And he had previously said, if you'll refer to record 46, about the middle of the page just above the type signature of Andrew John Manson, Ringold -- I'm sorry, Manson averred that prior to that same date, December 16, '57, “I had read the article by Ringold.”

So that he was in possession of the knowledge of the -- of the journal article and he had made the necessary averment.

Justice Abe Fortas: But that isn't the point which I'm trying to get your help.

After he filed that, you had a great to do about what -- if your statement just made is correct, it turns out to be nothing more than semantics.

And it's hard for it to me to believe that if this is just a quarrel about the choice of words that the affidavit could not and would not have been corrected.

Now, both the examiner and the reviewing board, as I read it, say that the statement made by Mr. Manson is not synonymous with claiming any specific utility.

And that was reiterated by the Board of Appeals.

And as I read it, I must say in light of this, it seemed to me that Mr. Manson's affidavit rather carefully avoided making any claim of specific utility rather than what he was saying was that if the process described in the journal article was useful, and I believe -- I believe mine is going to be useful to, which it seems for me could reasonably be said to fall short of a claim of utility.

That's the way I read what he said in light of the subsequent statements of the examiner.

Mr. Dean Laurence: Mr. Justice Fortas, let me see if I can clarify it.

Firstly, the Manson article described the process not here in issue.

It described a product which is the same as that made by the process here in issue.

That product was a member of a class of compounds which the journal article described as having certain utilities.

What Manson was required to aver in his affidavit was that the process which he had invented and copied the claims from the Ringold patent had a utility.

The process with what he was claiming and he had to make his affidavit with respect to the subject matter which he claimed it was of the statutory class of subject matter known as processes.

It was not the composition of the matter or the article, no.

When he made his affidavit, he had to make an averment, “I aver that the utility of what I invented, the process is useful.”

And that is why he said, “My process was useful because it would make the desired product.”

Now --

Justice Abe Fortas: No, but he didn't -- he is said that he didn't make a product like the product described in the journal article.

Mr. Dean Laurence: The product.

Justice Abe Fortas: But he didn't say -- but he didn't say that it was a -- would result in a useful product.

Now, apart from that, I might directly read this record as indicating that both the examiner and the board of review or whatever it's called, held that he -- his affidavit did not aver that the process did not adequately aver, sufficiently aver that the process is useful.

Is that what they held?

Mr. Dean Laurence: I think so, Your Honor.

Justice Abe Fortas: -- page 53, last line in the first full paragraph.

Justice Hugo L. Black: I'd like to add to that, because I can't understand why this case should come all the way up here if you had believed that this was a useful product, you would've had amended your pleadings so to call it, whatever they were called, affidavit here.

Why was that not done?

Mr. Dean Laurence: There were five affidavits filed and I think that represented a conscious effort on the part of the patent agent who prosecuted the application to comply.

And you say why this case came all the way up here (Voice Overlap)

Justice Hugo L. Black: I don't see why.

Mr. Dean Laurence: We didn't bring it here.

Justice Hugo L. Black: (Voice Overlap) if it gets down to us now.

You say it is useful, they said you didn't allege it was useful in the language that was clear enough to make it and bring it up into issue.

That's what they held on the pleading and instead of amending it so as to show that it's useful, as I can well see that it might be useful, it just stopped it and wouldn't allege it.

Justice William O. Douglas: I suppose your answer is that it's a process claim not a product claim.

Mr. Dean Laurence: That is the simple answer that we give.

There is a further answer procedurally.

Justice Hugo L. Black: Well, how can there be a useful process claim if it produced something if nobody want it, nobody need it, nobody buy it wouldn't advance the cause of science, or arts or business.

Mr. Dean Laurence: The thought that the product is something no one wanted is quite contrary to the record, I submit, Mr. Justice Black.

Justice Hugo L. Black: Well that gets me back to why you didn't quite want to plead it.

Mr. Dean Laurence: It seems to us that it was pleaded but procedurally, let me explain how this occurs.

The examiner, acting for the Commissioner, looks over a patent application and after he rejects the application the record is completed.

Now, in case that as finally rejects it, now in case that the applicant wants to -- he can try to put in some more affidavits at that point and that was done here, then it goes to the Board of Appeals.

Now, once the Board of Appeals has made its decision which is the portion from which Mr. Justice Fortas was reading, there can be no further change made in the record.

It goes at that point to the courts -- to the CCPA on the record as is made.

There can -- after you hear what the Board of Appeals had to say and after it doesn't have the chance to go back and fix up his record in order to accord.

Justice William J. Brennan: For example, Mr. Laurence, I notice that article pointed us out to this earlier that I gather one of these compounds has already been shown to be very effective tumor inhibitors.

Now, you didn't say that in the affidavit.

I gather because all you had to do -- your theory was all you had to show was that it did have a use.

You didn't know whether it actually was a tumor inhibitor but you could rely on the fact this article had indicated that it was?

Mr. Dean Laurence: We think so.

Justice William J. Brennan: And what -- so that that's as far as this is probably at page 47 was intended to take you, was it?

Mr. Dean Laurence: Correct, Mr. Justice.

Justice William J. Brennan: Someone else has said that it was a tumor inhibitor and for your purpose, your theory was that was enough, is that it?

Mr. Dean Laurence: Correct, Your Honor and were at (Voice Overlap)

Justice Byron R. White: And your client Manson couldn't cite an affidavit as -- as to that use because he really didn't know that was true, did he?

Mr. Dean Laurence: He had not -- we concede that he had not made any test of the compound as --

Justice Byron R. White: So he couldn't make an affidavit to that effect.

Mr. Dean Laurence: He could not do more than say --

Justice Byron R. White: But he could say, “I read the article which says so and so.”

Mr. Dean Laurence: That is correct, Mr. Justice White.

Justice Hugo L. Black: Could he have made one on information and belief?

Mr. Dean Laurence: That, we submit, is what he did when he said that since the article has been published and reflects this, we think that the use of the compound would be obvious in view of what's in the publication.

It was obvious to us that it would have that result.

Justice William O. Douglas: Well, I understand your argument if I come up with a patent that the process is a sudden mysterious way so as to isolate a new either two unknown element, let's say the atom, and that is useful because it does isolate it, and because the isolation is a new end result even though the -- there's no present use or prospective use for the particular element that has been isolated.

That's your argument as I understand it.

Mr. Dean Laurence: That is my argument in its broadest sense Mr. Justice Douglas, and I would put it this way.

You recall that in Corona v. Dovan, this Court said, “The criterion as to processes and their reduction to practice, which means completion of the invention.

A process is reduced to practice when it is successfully performed.”

It doesn't say anything about having to go on and determine some utility for what's made, and coming now to this specific point made by you Mr. Justice Douglas.

The court below said clearly, a process which operates as disclosed to produce a known product is useful within the meaning of the statute.

Now, how can it be said the contribution to the store of chemical knowledge of a second process, as we have here, second process in the art for making a known compound does not add to our useful knowledge and contribute to the progress of science and useful arts.

How can it be said that it doesn't?

It adds something to our knowledge of chemical processing which is very desirable.

Justice Abe Fortas: Yes, but as I read the Board's statement, they say that your process may be such, you say it's a different process, it's a new process.

They say your process may be such so that it does not in fact produce the same identical compound, for example, and it's referred to in this article.

And it's your burden, according to what the Board says, to show that your process will not produce something that has some utility and that's a position that they have taken and it's a position from what you're appealing here, as I understand it or what you're attacking here.

Mr. Dean Laurence: Mr. Justice Fortas, I think I still have not made it clear that the process of the article and the process of the claims here involved are two different processes for making the same identical thing, and there's no question about that.

Justice Abe Fortas: Well, perhaps I misread the Board's statement, but as I read the statement, there is a suggestion that they may have a different effect.

At the bottom of page 52, the fourth paragraph at the bottom of page 52.

And their conclusion is that it's our view that statutory affirming of usefulness of the product cannot be presumed really because it happens to be closely related to another compound which is known to be useful.

Mr. Dean Laurence: Yes, I think that arises in this context.

The process of the claims here in issue makes a compound disposed as being made by another process in the journal article and that is not disputed.

What is raising the question, I believe is this.

That the compounds which were tested and reported upon in the journal article are what we call homologues, next to adjacent homologues of the compound made by the process here in issue.

The -- and those compounds were reported as being effective tumor inhibitors in certain screening tests, and the compound of the exact process here in issue was in the progress of being tested at that time.

So that we had a classic compound some members of which had been tested and some had not.

Justice Abe Fortas: Well, what you're saying now is that you aren't in any position to make a claim of utility for this precise process, if I'm mistaken.

Mr. Dean Laurence: If it be said that it's necessary to make a claim for the utility of the product made by the process.

We were in a position to make a claim for the utility of the process and that it would produce a desired product.

Justice Abe Fortas: Product, though, yes.

Justice Hugo L. Black: A desired process but not a desire to make it.

Mr. Dean Laurence: The fact that money was being spent on the process indicates that there were some desirability both in the process and what it would make.

Justice Hugo L. Black: Is this -- has this been in a dispute so that somebody's wanted to get decided the abstract question whether or not you can get a patent on a process which produces a thoroughly useless product?

Mr. Dean Laurence: I'm not aware that it has, Mr. Justice Black.

Justice Hugo L. Black: What's that?

Mr. Dean Laurence: I'm not aware that that abstract question is presented.

Justice Hugo L. Black: This is not a test case to decide -- to get that question decided.

Mr. Dean Laurence: It certainly is not.

We have no desire to be in this Court on this case.

Justice John M. Harlan: Well, you're not claiming, are you, that the Government's position here, is not probably before us?

Mr. Dean Laurence: That takes us to the jurisdictional question.

Justice John M. Harlan: No, I'm not talking about the jurisdictional question.

You are saying that the question which the Government tenders here really isn't presented by this record?

Mr. Dean Laurence: That is our position, Mr. Justice Harlan.

We think that the question presented by the Government is not properly brought on the record before this Court.

Justice John M. Harlan: But you got a flat holding by the Court of Customs the Patent Appeals, you don't have to allege what the Government -- you don't have to show what the Government says that must be showed namely that the new process results in a useful end product.

Now, that's the Court of Customs Appeals certainly held that, is that right?

Mr. Dean Laurence: The court -- if I understand you correctly, you're saying the court below held that a process which operates to produce a known product is useful.

And that is what the court below did hold in fact.

Justice John M. Harlan: Well then, why is it a question that the Government raises here?

Mr. Dean Laurence: Because the Government record -- the Government says even though the product is known and known to be a member of a class of compounds having an established utility, still that doesn't make any difference.

Justice Hugo L. Black: I don't understand them to present that question in the question presented.

Mr. Dean Laurence: No, in the question presented --

Justice Hugo L. Black: What you're saying is that the Government states the question wrong.

Mr. Dean Laurence: Correct, the Government fails to state the question.

Justice Hugo L. Black: That's not (Voice Overlap).

Mr. Dean Laurence: The question as stated by the Government, we submit, is not before you because they have omitted the word known before product on page 2 of their brief in stating their question.

And in any event, if the utility can be alleged under a Rule 204 (b) affidavit to be obvious, that makes out a prima facie case.

Justice William J. Brennan: But Mr. Laurence, am I wrong about this?

The examiner said your affidavits were inadequate and the review board, whatever this thing, agreed, true?

Mr. Dean Laurence: Correct.

Justice William J. Brennan: Now, the Court of Customs and Patent Appeals did not find in your favor on the basis that they found your affidavit adequate, did it?

Mr. Dean Laurence: Yes, Your Honor.

Justice William J. Brennan: It did?

Mr. Dean Laurence: Yes.

Justice William J. Brennan: I mean but adequate only on the premise that it was unnecessary to have any allegation of utility.

I meant really I should've put the question -- they didn't find they were adequate on the premise that indeed you had alleged a utility for the product, did they?

Mr. Dean Laurence: The court held that it was only necessary to allege in the affidavit that he utility was obvious to the applicant and that we have so done and that made our affidavit sufficient then the court went beyond that and --

Justice William J. Brennan: Where is that?

Would you show me that?

Mr. Dean Laurence: Yes, in --

Justice William J. Brennan: In the Court of Appeals' opinion?

Mr. Dean Laurence: Yes, when they discussed In re Dickinson and Zenith which was a predecessor case.

Justice William J. Brennan: Yes.

Mr. Dean Laurence: Record page 65 and the Court will find it necessary to refer to Dickinson and Zenith in reviewing on this point.

In the Dickinson and Zenith case which they quote from at length here, the Board said -- sorry the Court said that the question of the operability and the statement that such utility was obvious.

I'm reading now from the bottom of page 66.

It is our opinion that if the requirement of a prima facie showing of utility of a claimed compound, and that was in the Dickinson and Zenith case, by the way there was a compound involved, may be satisfied by the statement that such utility was obvious at the time the invention was made than a fortiori the requirement, half of page 67, is satisfied where no question is raised as to the operability of the claimed chemical process to produce a known compound.

So there, they decided this question which we think is the only question in this case, the completeness of the rule --

Justice William J. Brennan: I see, is that what you're suggesting now Mr. Laurence is that they said on the premise that there has to be an allegation of utility of the compound that is the product of the process.

On that premise, you're saying the Court of Customs of Patent Appeals said you satisfied that requirement?

Mr. Dean Laurence: Yes, Mr. Justice Brennan.

Justice William J. Brennan: And then everything else is what, just dictum?

Mr. Dean Laurence: It's -- it would be dictum.

The statement to the effect that it clearly a process which operates to produce a known product is useful without going any further would be dictum.

Justice Tom C. Clark: You're right on the first half of the page.

(Inaudible) utility of the compound.

Mr. Dean Laurence: That was the statement of the issue by the court below.

I have only a few moments and I do want to touch on the jurisdictional question.

I regret that I've gotten to that before.

We say -- we do agree with the petitioner that this Court now has clearly the jurisdiction to review cases coming on from the lower court where they originated in the Patent Office Board of Appeals, but we say that that is true only when the appellant losses below and not when the Commissioner is reversed below.

And I will try to boil this down into five minutes.

We have to go back to 1839 and remember that from that time on, there have been alternative routes provided for review of an adverse decision by the Commissioner of Patents on a patent application.

The alternative routes have taken various forms.

They've gone through Chief Justice of the old District Court of the United States for the District of Columbia from 1839 to 1852.

They went through the old Supreme Court of the District of Columbia and there was a court called the Court of Appeals for the District of Columbia for a while.

And all of this time, there was the one alternative route which went up and was cumulative between 1839 and 1927 in this respect, and a defeated applicant could elect to go one way.

And when he got beaten up there, he could come back and have his bill in equity remedy all the way through and take the normal course of a bill in equity.

However, between those years of 1836 to 1948, the Commissioner never had any right by statute to go any further if the applicant/appellant, was successful in his alternative route.

Now, when it comes down to a matter of statutory construction and when Congress puts in a statute saying that there shall be, as it did in 1948, a petition for certiorari, then we have to look.

I should've added something else.

In 1927, the routes were no longer alternative and cumulative.

They were split.

And the applicant had to elect which way he'd go, and if he elected the so-called alternative route as opposed to bill in equity route that was the end of the road for him.

If he got locked there, he couldn't come back and have his bill in equity.

Now, when we look at a statute to determine the purpose of 1256 which is the certiorari statute here, what was Congress trying to do.

Were they trying to effect a change in policy or to formulate a new plan of judicial review?

We submit that what occurred here is simply that Congress realized all at once or there used to be, and there was for 112 years, an alternative and cumulative route.

Go one way you get a week, come back, go by bill in equity.

And we took that away in 1927.

Now, when we put in this Section 1256 we restore, there's no change in policy, we restore the historic right of an applicant/appellant who was defeated in the Court of Customs and Patent Appeals to have a try for petition to this Court, and that it was not the intention of the court to change the situation as to the Commissioner of Patents who had never had any right for 112 years to go beyond the decision of the alternative court if he got leaked there.

And the reason we say that is specifically is this.

The legislative history of the first four drafts of Section 1256 contained the words, cases in the CCPA may be reviewed by the Supreme Court by certiorari granted on petition of any party.

Those words ‘of any party' were taken out before the bill was enacted.

Now, if you will look at Section 1244, you will observe -- 1254, that's the statute coming up by the bill in equity, you'll observe the words that of any party are there.

And 1255 which deals with a review of cases in the Court of Claims have the word petition of the United States or the claimant.

We submit the omission of that language of any party was deliberate.

The significance of the omission of the ‘any party' language is further brought out by looking at the legislative history and the parallel as here of Section 1255 which started with the words ‘of any party' and those words were changed to read of the United States or the claimant.

Now, we think when they took the words out of any party, the reason for it was this that it was deliberate and the reason was this.Looking at Section 1244 -- I'm sorry 244, I'll get it straight.

Section 144 of 35 U.S.C, if you go back in the history of that action, here's what that provides.

It provides that upon the determination of the Court of Customs and Patent Appeals, they shall return to the Commissioner a certificate of its proceedings and decision which shall be entered the record of the patent laws and govern the further proceedings in the case.

We think it governs the Commissioner.

And I'll go all the way back to the Patent Act of 1836 where the statute was a little more specific at that time and said that there shall be a decision by the appellant or in a route tribunal and their opinion being certified to the Commissioner.

He shall be governed thereby in the further proceedings that we have any application.

And that language is persisted right down to the present time that the Patent Office gets -- the Commissioner gets back a certificate and the Patent Office shall be governed.

And therefore, if it's governed, it doesn't have any right to appeal and it never had a right of appeal historically for a 100 -- appeal or petition to go beyond if the appellant elected the alternative route, the Commissioner never having a right to go any farther if he got leaked.

And we submit therefore that historically, he should not have that right now and it was not the intent or purpose of Congress to restore that right.

And they so indicated when they took out those words of any party from the legislative history.

Justice John M. Harlan: Could I ask you a question?

There are some things in your brief and something which you started to say here before we got on other questions.

That may you think that you were also making a claim that the court -- the case was never properly in the Court of Customs and Patent Appeals because of the failure to follow the administrative route to its conclusion.

Am I mistaken about that?

Mr. Dean Laurence: Mr. Justice Harlan, you're precisely correct.

I did not discuss it because at that time (Voice Overlap)

Justice John M. Harlan: Well I thought I saw it in your brief and I didn't find any answer in the Governments brief or supplemental brief and I didn't hear you argue it, but I just wanted to know whether --

Mr. Dean Laurence: May I answer that question in this way?

We say there is a preliminary question here which must be decided before the Court gets even to the merits question at all, and that was that the primary examiner who decided the affidavits could not comply had no authority to make that decision because under Section 135 of Title 35, only the Board of Patent and Interferences can make any determination of priority.

And what the examiner was doing was making a determination of priority here in this case when he said, “Your affidavits are not sufficient to entitle you to get into the interference.”

He effectively made that determination of priority.

He thereby usurped the function of the board of patent interference.

And I mentioned this earlier that Rule 204 (b) has been amended so that the primary examiner no longer makes the kind of determinations which he made here.

This case is moot as far as Rule 204 (b) is concerned.

That rule has been amended so that now all the primary examiner does is look at the affidavit to see that there's a date in there before filing date of the patentee, then he declares the interference and fires it over to the Board of Patent and Interferences where it belongs to be determined.

Justice John M. Harlan: Did you contend before the Court of Customs and Patent Appeals that they shouldn't entertain the appeals --

Mr. Dean Laurence: Yes, Your Honor.

We started our contention by a petition to the Commissioner on the point.

We petitioned the Commissioner, the Commissioner said that that was at record 36, is our petition to the Commissioner, the Commissioner said, “Not me, I think it's an appellate matter.”

And then we went to the appeal on the jurisdictional point -- jurisdictional sense of whether the primary examiner had a right to make this decision.

We also raise the question in the CCPA, so we have argued it all the way through.

Justice Hugo L. Black: In connection of just what you said, if it's moot our usual course of course is to vacate the judgment -- vacate it and remand it to be dismissed as moot, is that what you want done?

Mr. Dean Laurence: The principle involved perhaps is not a moot principle here and it -- the Court inquired, I think it was Mr. Justice Black who asked whether this case had any far reaching effect.

Let me say, and it's covered in our brief that it does have in one respect, it's not a test case here.

This isn't a $2 or $36 case like Your Honors had yesterday.

It's not a test case.

It goes only to the point if you'll have to look at the TVA Act, the NASA Act, the AEC Act because what you're deciding here is when is a process invention completed?

And those acts generally speaking provide that a man working for the Government completes his invention, if he completes his invention, it belongs to the Government.

If he doesn't complete his invention until after he's gone off the Government payroll, then it doesn't belong to the Government.

Now, suppose that a man conceives his invention, he thinks of a process and he thinks of a way of carrying it out, he even carries it out but he doesn't thrust with the product which he makes while he is in the Government employee or working on a NASA or AEC contract.

Then he leaves the Government.

So after he's left the Government, he remembers what he was doing and he repeats the process, which he probably entitled to unless it's a secret matter and he makes a product.

And he then fusses with a product and finds some use for it, and so he goes in patents of process that he has no right to --

Justice Hugo L. Black: Well, let me ask you one other question.

I see the light is on but I want to ask you this.

On looking at the record put in the opinion of the Board, I'm satisfied this time that the board did decide the abstract question which the Government raises and that's what they based it on, on the cases they've had before.

Suppose one should be of the opinion that they did hold, that there had to be no utility or usefulness to the product, which is the result of the process, suppose one should believe that, and also believe from the record and from what you said that you'd be might be greatly injured if you were not given the chance to try to prove the utility of your product.

What would be the proper course then?

Mr. Dean Laurence: As I understand your question, Mr. Justice Black, it would be whether you would remand --

Justice Hugo L. Black: What would be the proper disposition of the case on the lower circuits?

Do you want a chance to prove it if in case it would be held that it is wrong?

Mr. Dean Laurence: I think we would have to do it this way.

If there was a remand to make a different affidavit perhaps that could be done, otherwise of course the real purpose here is to get the interference, and if we get the interference we'll have to prove this utility.

Justice Hugo L. Black: It's a matter, it seems to me, of great importance to you.

But if one should be of the opinion that there must be some utility shown of the product and they've held now that you didn't do it, didn't -- they say it's prima facie but if they decide that on the abstract question what would be the proper disposition?

Something to send you back to the Board or what?

How could your right be protected in other words?

Mr. Dean Laurence: It could be sent back to -- for a determination as to whether Manson could make an affidavit which was in better form, I suppose, in compliance.

But I think actually here --

Justice John M. Harlan: But you didn't make any application to amend your affidavit, did you?

Mr. Dean Laurence: It's not possible after the Board of Appeals has made its decision.

Justice John M. Harlan: Well, whether it is or -- well, I mean even before the Board, even before the -- at any stage, did you ask to leave to amend?

Mr. Dean Laurence: The record does not so reflect, Your Honor.

Justice John M. Harlan: What is the fact?

Mr. Dean Laurence: I was not in the case until after the case was through the Board of Appeals, so I cannot say.

But I think I've seen the complete record and I think I can say that there is no request.

There were five attempts to put in a satisfactory affidavit.

Justice John M. Harlan: I got the impression, perhaps rightly or wrongly that's why you and the Government lock horns in what should be the proper resolution that you prefer to stand on the broad proposition that you're talking about, namely that you don't have to allege the utility of an end product, or rather than have the case go back or leave to amend and try to show something that at least the -- as the proceedings worked out below was not accepted as a sufficient showing to meet that original gap to the Board.

Mr. Dean Laurence: I would submit, Mr. Justice Harlan, for the benefit of the chemical industry.

It would be desirable to have a decision on the abstract principle presented here --

Justice John M. Harlan: If it's the abstract then we ought to decide if it's presented by this case.

It's a different thing.

Mr. Dean Laurence: We -- we question whether it is presented by this case, but if it is we think it ought be decided here rather than remanded.

Justice Hugo L. Black: Did you argue to the Board that your product was useful?

Mr. Dean Laurence: To the Board of Appeals?

Justice Hugo L. Black: Yes.

Mr. Dean Laurence: I'm sorry sir, I did not argue to the Board of Appeals.

I was not in the case but I --

Justice Hugo L. Black: Was it argued?

Do you know whether or not it's --

Mr. Dean Laurence: I think it was argued to the Board that the product was useful as shown by the journal article.

Thank you, Your Honor.

Chief Justice Earl Warren: Mr. Bender.

Rebuttal of Paul Bender

Mr. Paul Bender: In light of the confusion which seems to exist of what the issue is before the Court, I'd like to respond to any question if the Court still has on that.

It's our position that the broad issue that is whether process is useful simply because it produces a product is clearly before the Court because that's what the Court of Customs and Patent Appeals decided.

They did not decide these narrower questions.

That is, they didn't decide whether the affidavit was properly rejected by the right arm of the Patent Office and they didn't decide whether the affidavit in fact properly alleged that the product had utility.

I don't know whether those questions were presented to the Court of Customs and Patent Appeals or not, but surely the question they did decide before the court and the court ought to decide it.

Justice Potter Stewart: Well, do you think they proceeded on the hypothesis that the product was useless because they -- even on that hypothesis they held that the process patent was still valid.

Mr. Paul Bender: Yes, it makes sense in terms of the rule of law they were adopted not to get into these allegations.

Justice Potter Stewart: Right, and so assuming this Court might agree -- disagree with them on the rule of law should not be responded have the opportunity of litigating the fact of whether or not the product was useful.

Mr. Paul Bender: Well, certainly he should only have it if he raised that issue before the Court of Customs and Patent Appeals.

Justice Potter Stewart: Well do you say you don't know the answer?

Mr. Paul Bender: I don't know the answer to that.

If he did raise it, however, I suggest that a remand probably may well not be necessary.

In our view, the decision of the Patent Office that there was no sufficient allegation of utility of the product, it was quite clearly correct.

The -- the journal article which was mentioned which did suggest that there would be tumor inhibiting properties was not this compound.

It was a different one.

It was a homologue or an analogue, and it's -- and the basis of the Patent Office as a rejection of the reference to the journal article was that in this area of organic compounds, very slight differences in the compound can entirely change the use.

And it was in light of that that the affidavit stood and it was in light of that that the Patent Office decided the case.

And I think that was clearly correct.

Also, it seems to me that under the rule surely as it then existed.

Now, I don't think any meaningful changes made, but surely as the rule then existed the Board of Appeals properly rejected the affidavit.

They had that function.

It said that the affidavit had to show prima facie priority and they held since there was no allegation of utility that the product.

It didn't show prima facie the priority.

Justice William J. Brennan: But Mr. Bender, suppose it's not this case, so I get the Government's argument.

Suppose Manson had been first here and his patent had been denied a patent on the ground that it didn't show utility of the product.

Then Ringold comes along and he applies for patent.

Identical at all these facts for the application of Manson except that his specifications was as they did here alleged and say, the utility of the product.

Now, Manson would be denied, as I understand it on your view, a patent that the court did not allege utility of the product.

Now, the question is, would Ringold then be denied on the basis of prior art or that --

Mr. Paul Bender: That would depend upon whether Manson was in the prior art.

If Manson's had been kept completely secret, as it is, while it's pending in the Patent Office and if Manson didn't make his invention public after the rejection, then the process might not be in the prior art.

The process wasn't in the --

Justice William J. Brennan: Well, suppose it was?

Mr. Paul Bender: Then --

Justice William J. Brennan: Neither of them get a patent.

Mr. Paul Bender: Then neither of them would get a patent.

Justice William J. Brennan: What this earlier case that we heard argued this morning it's co-pending patents, is that right?

Mr. Paul Bender: Yes.

Justice Byron R. White: You've just given that one away --

Mr. Paul Bender: Which, that one?

Justice Hugo L. Black: I thought you did.

Mr. Paul Bender: I don't understand which --

Justice Byron R. White: If you win the co-pending patent case automatically in Justice Brennan's example, neither one of them can get a patent.

Justice William J. Brennan: In this case, on the hypothetical example.

Mr. Paul Bender: Oh no!

Justice William J. Brennan: Who gets the patent?

Mr. Paul Bender: Because as I said in the -- if Manson's application was denied, and Manson did not publish his findings because he has no obligation to publish.

I mean the application for patent does not constitute a public --

Justice William J. Brennan: Isn't it a pending -- it's just like the earlier case.

Mr. Paul Bender: Yes.

Justice William J. Brennan: Manson's application is a co-pending application.

Mr. Paul Bender: No, Mr. Justice Brennan.

The section of the statute which deals with co-pending patents and which suggest that they're in the prior art only deals with co-pending patents which are ultimately issued, and that is our argument in Hazeltine, it only applies to co-pending patents which are ultimately issued.

It does not apply to co-pending patents which are not ultimately issued.

The reason is as in Hazeltine, we say, you should look at the law.

As of the time, the patents are going to be issued and if the co-pending one is going to be issued you shouldn't issue another one which is just an insignificant advance on, because then you have these overlapping patents and the public wouldn't get any benefits from the second one.

That's why the argument is --

Justice William J. Brennan: -- may I ask this question?

Mr. Paul Bender: Yes.

Justice John M. Harlan: I just had one other question.

You said you didn't know just what was argued in the Court of Customs and Patent Appeals.

Are the briefs in that court printed?

Mr. Paul Bender: I don't know.

Yes, Mr. Justice Harlan.

I assume that can be found in --

Justice John M. Harlan: I would suppose that that would disclose whether or not the premise on which the case was argued.

Mr. Paul Bender: I should think so.

I should undertake to send copies of the briefs to the Court and file if they're already in the printed record.

Chief Justice Earl Warren: I assume there'd been some difference with opinion between as to what the court of Patent Appeals actually held.

Will you state this please briefly as you can just what the opinion of the Government the Court of Patent Appeals did hold?

Mr. Paul Bender: I believe that they held that on the assumption that a -- the product was not useful, the process was still useful.

And therefore, if it produced the product, and therefore there was no need to investigate the utility of the product and that the Patent Office had been in error in requiring affidavits which swore to the utility of the product.

Justice William O. Douglas: Has the Patent Office take the position that all processes that really enlarge scientific knowledge are not patentable?

Mr. Paul Bender: Well --

Justice William O. Douglas: Does it require commercial, is this --

Mr. Paul Bender: No, it doesn't require commercial utility.

In fact, it's a --

Justice William O. Douglas: Well, utility smacks commercial --

Mr. Paul Bender: There some of that element in there, but they have never -- they have never said that the commercial that is profitable utility need be shown at the time.

Justice William O. Douglas: I'm not speaking of profit now.

I'm just speaking of --

Mr. Paul Bender: No, I don't think they require commercial utility.

I'm not quite sure what that means.

Justice William O. Douglas: Well does -- does the Patent Office deny a patent that merely enlarges our scientific knowledge, a process that enlarges our scientific knowledge?

Mr. Paul Bender: If all it does is enlarge scientific knowledge --

Justice William O. Douglas: Then there's no patent.

Mr. Paul Bender: -- then -- it's right.

I think their position clearly as simply as it you don't give patents on knowledge.

You give patents on useful dimensions.

Justice William O. Douglas: No, no this is a process.

Mr. Paul Bender: Well, a process -- if you're asking me for a patent on a process and all the process constitutes knowledge then you don't --

Justice William O. Douglas: No, no the process shows you how, as I've said to Mr. Laurence, how you identify this new hitherto to undiscovered element like the atom.

Mr. Paul Bender: Well, I think the Patent Office's view is that the process is useful only if it eventuates any useful product.

Justice William O. Douglas: Whether of utilitarian worth.

Mr. Paul Bender: So far as patents are concerned, yes.

Justice William J. Brennan: So Mr. Bender, I gather on that question I put to you earlier, as you said if Manson had published this in an article then that would've been a prior art to defeat Ringold?

Mr. Paul Bender: Yes, unless Ringold came in and I think there's a provision that if you come in within a year of the publication, but yes.

Justice William J. Brennan: It be --

Mr. Paul Bender: Generally speaking.

Justice William J. Brennan: But you say that if it's merely a co-pending application.

Mr. Paul Bender: Right.

Justice William J. Brennan: The section doesn't apply because that relates only to patents which ultimately issued.

Mr. Paul Bender: Right, that's our argument in Hazeltine and that's what 102 (e) clearly provides.

Justice William J. Brennan: What section is that?

Mr. Paul Bender: Well, 102 (e) which is the --

Justice William J. Brennan: (e)?

Mr. Paul Bender: I think it's (e) --

Justice William J. Brennan: 2 (e)?

Mr. Paul Bender: 102 (e) which --

Justice William J. Brennan: Yes.

Mr. Paul Bender: -- is the co-pending section applies in terms only to ones which are ultimately granted.

And our argument at Hazeltine follows that under 103.

Featured:

United States v. Adams - Oral Argument

Wed, 22 Aug 2012 16:56:10 +0000

Case:

United States v. Adams

Media File:

55_19651014-argument.mp3

Related Transcript:

55_19651014-argument

Transcript:

Argument of John W. Douglas

Chief Justice Earl Warren: Number 55, United States, Petitioner, versus Bert N. Adams, et al.

Mr. Douglas.

Mr. John W. Douglas: Mr. Chief Justice, may it please the Court.

This case is here on certiorari to the Court of Claims, the complaint charged United States for having infringed the Adams battery patent held by the respondents.

A Commissioner of the Court of Claims after an evidentiary hearing issued proposed findings and conclusions holding that the patent was valid and that some batteries of United States had infringed that patent.

The full Court of Claims in the brief, one paragraph per curiam opinion adopted all of the findings and conclusions of its Commissioner on these two points.

The Government sought certiorari and only one aspect to the case.

It left unchallenged that part of the decision below holding that there had been an infringement if the patent were valid.

We brought to this part only the question whether the Adams' patent was valid patent.

The basic principles involved in batteries of this general type are fairly easy to grasp.

What's involved in this type of a battery are three elements, two electrodes, and an electrolyte.

The electrodes are metallic stripes or cylinders or rods.

The electrolyte is a liquid solution and the electrodes are suspended in this liquid solution and if the electrodes have a sufficiently different electro-motor force then small particles of matter known as ions will move from the positive electrode to the negative electrode.

And that movement will take place through the liquid solution in which the two electrodes are inserted.

An electrical charge can be recorded and measured by touching wires to the terminals of the electrodes.

The lower court found that the Adams invention consisted of a combination of electrodes and a combination of electrodes only.

This is set forth, we believe in finding 12th.

The Commissioner's proposed finding which was subsequently adopted by the full court.

And as said forth in those findings what the Adams' invention purported to teach was anode which is the positive electrode composed of magnesium and the cathode which is the negative electrode composed primarily of a copper salt known as “Cuprous Chloride”.

It did not Court -- did not hold that the invention consisted of a combination of these electrodes with any particular electrolyte.

Now, this brings us to the statutory standards of utility, novelty, and nonobviousness.

We conceived that the Adams' patent was useful.

We raise no contention on that point.

We contend, however, that it meets neither the test of novelty nor the test of obviousness as set forth by the Congress in Sections 102 and 103.

So far as novelty is concern, we believe that Skrivanoff, a British patent English issued in 1880 is as dispositive.

It was a combination patent.

It was not a carbon copy of Adams.

Adams was not a carbon copy of it in all respects but in our view the differences are sufficiently mind and trivial that the two, after all intense and purposes the same.

Skrivanoff called for a magnesium anode.

Adams called for the same.

Skrivanoff called for a cathode composed of cuprous chloride.

Adams called for a cathode composed of cuprous chloride.

Skrivanoff --

Justice Byron R. White: (Inaudible) all of the -- that was in that anode?

Mr. John W. Douglas: No.

I'm going to continue Mr. Justice White.

In addition, Skrivanoff called for the addition cuprous chloride of carbon.

Adams called for the addition of carbon with a cuprous chloride cathode.

And finally, Skrivanoff however, did add other materials to carbon and to the cuprous chloride.

But in each cuprous chloride was the primary element in the cathode and there was no finding, indeed, no showing that this omission from Adams of these extra elements in Skrivanoff was significant.

Now, the Court sought to distinguish Skrivanoff on the basis of its non-operability and there was testimony to that effect and the Court found that it was inoperable.

Accepting that finding, we would say that operability in itself does not establish the novelty of a present invention over a prior art, or an element in that art because operability can stand from a number of different changes.

It might have stemmed from pure materials from a different type of container or from a larger electrode.

There's no inherent reason why operability should stem from a patentable change.

In this case, there were no findings of the operability of Adams was caused by the differences between the Skrivanoff and Adams cathode.

And only if a cause and effect can be shown between the differences in the two cathodes, in our view, can the differences which are minor on their face be shown to be significant.

Indeed, the record suggests that Skrivanoff did not work because of the nature of electrolyte it employed.

And there was testimony that the electrolyte in Skrivanoff was too strong and it had water being used, the battery probably would have worked.

There was no finding to this effect.

We're not resting our case, our novelty on this point but I'm merely saying is that unless there are some findings that a difference on operability stems from a difference in the make up of the two patents then there's no basis for distinguishing the prior art for reasons of novelty.

And of course, Your Honors, it is true that a presumption of validity normally attaches to the patent, when issued by the patent office.

No such presumption in our view should attach here.

The file wrapper in this case which discloses the proceedings in the patent office is Title Exhibit 11.

Unfortunately, we did not include that in the printed record.

It is a part of the original record file with the clerk and the parties have stipulated that it can be referred to and cited by the parties.

But an examination of that file wrapper indicates no mention of the Skrivanoff patent.

And since the most important element in the prior art at least in our view was not mentioned.

It's difficult to see how the patent should be assumed to be valid merely because of its issuance.

At a minimum, it suggests that no presumption of validity should attach so far as Skrivanoff is concern.

This brings us to the requirement that a patent not be obvious to a person skilled in the art.

First, if a patent is found to be old, that's the end of it, can't be valid.

If it's new, it must still get over the test of non obviousness.

Here, the Commissioner in the Court found that each of individual components comprising the Adams invention was known and had long been known in the art.

And the respondents have frankly conceded in their brief that this was so.

As a matter of fact the court below found that each of the individual elements have been available for 50 years.

Magnesium is used as an electrode had been anticipated by four sources cuprous chloride had been anticipated by three so that the question in terms of obviousness is whether or not the combination of these individually known electrodes can be said not to have been obvious to a person skilled in the art.

And I would suggest that on its face an argument to this effect cannot be maintained.

An electrode does not exist in the vacuum.

It does not generate electricity by itself.

It generates electricity only in combination with another electrode.

When your composing a battery of this type, you're looking for possible combinations of electrodes and your looking for a difference in the electromotor force.

If you have used magnesium in a battery, you know in general what's its electromotor force is in relation to other elements.

Same thing is true if you have used cuprous chloride.

So anyone in our view who knew that magnesium and cuprous chloride had been individually used as electrodes would have occurred to him to at least try combining the two and discover whether or not a practical battery could be developed.

And it isn't a matter of just abstract reasoning.

There were suggestions or at least strong hints in the prior literature and the prior patents, to the combination to this effect was feasible.

The Codd Treatise in 1929 called for a magnesium anode and a copper electrode -- copper cathode, Juno which is a patent, 1934, called for the union of magnesium on the one hand, a lead chloride on the other.

If one looks at the electromotor rating contained in Codd which describes the various elements in terms of their rating whether they're positive or negative one would see that lead and copper are very close.

Just as one would see that magnesium comes near the top of the scale and chlorine comes near the bottom of the scale, and the important thing in an electrode or one of the important things in choosing an electrode is to choose one where there is a substantial difference between the two electrodes to be employed in the battery itself.

And finally so far as obviousness is concern, Skrivanoff -- even if it didn't completely anticipate the Adams battery, surely suggested the possibility of combining magnesium and copper chloride.

It is true that there are other elements not present in Adams but the possibility of omitting some of these other elements but not have been difficult, indeed, would have been the most natural thing in the world for someone skilled in the art to consider.

So all we have in our view is a selection of known battery elements from a known and finite list of possible components and a battery of known design with no change in the respective functions of the elements, that is to say, the electrodes comprising the invention.

Now, the Court in the respondents seek to avoid what we consider to be the obvious thrust of the prior art by pointing to some unique characteristics and results found by the Court to have been developed by the Adams batteries.

These findings are set forth and the Court's finding 23 and there are two a number.

A constant current, sometimes referred to as a linear potential and the ability to operate under low temperatures.

And on this basis, the respondents in the lower court contend that the requirement of nonobviousness was satisfied.

But this approach in our view misconceives the basic nature of the obviousness test.

Justice Potter Stewart: Which findings are these which you tell us?

Mr. John W. Douglas: The findings of the Court on the contributions of Adams of the unique nature I believe are finding 22 and 23.

Unknown Speaker: What page?

Mr. John W. Douglas: Page 704 of the printed record.

Justice Potter Stewart: Page 31 and 32 of your petition for certiorari?

Mr. John W. Douglas: This approach Your Honors in our view doesn't do justice to the standard laid down by the Congress in Section 103.

What Congress wanted in that Section was a comparison between the alleged teachings of the patent and the claims in the patent and the prior art.

And one looks to secondary evidence such as results or commercial success only where the evidence in the prior art is ambiguous.

If only there some kind of equivocation in the prior art.

When there is no ambiguity.

When the prior art is clear in terms of obviousness then one may look at this secondary element.

It's a sort of best evidence rule which the Courts have developed and makes the great deal of sense because what the Congress was seeking to protect in accordance with the constitutional provisions was the enhancement of scientific advances and the encouragements are the same.

Here, the obviousness in our view is so strong that you don't look for outside elements or outside matters such as commercial success or new results.

And I might say that even if and we would dispute this most vigorly but -- vigorously but even if this were said to be a close question in terms of the prior art the new results asserted here would not have established patentability.

There were no findings in this Court of a long search for these particular qualities.

It's true that there was a statement that the individual elements have been available for 50 years, that doesn't establish a long search.

It's true that the Court found that there was a long standing need that in itself doesn't establish the search.

And maybe any number of reasons why scientists devote their attention to one thing rather than to another.

Priorities, problems with the prior art, the point is, what were looking at is whether or not someone did in fact searched for these qualities for a long time and there's no finding in the Court's record that this was so.

That being so the long felt need referred to by the Court would not have been important even if these were a close question on the prior art.

We don't believe that it was a close question.

So the respondent seems to be saying in our view that the standard of invention is met if new results are achieved.

But this Court had said as far back as in Nap against Morris, 150 U.S. 221, that one can't get a patent on new results.

Patents are given on devices, on processes, on embodiments, they're not given on results anymore than there given on ideas.

Justice Potter Stewart: Today, you think the other side of the coin is equally valid that if there's not a new result, this doesn't necessarily mean that there's not an invention?

Mr. John W. Douglas: I'll agree with that.

Justice Potter Stewart: You think the newness or lack of it of the result has -- is basically irrelevant to the quality of invention?

Mr. John W. Douglas: Yes, I do.

I would say that it comes into play only when the prior art is equivocal and ambiguous.

So in conclusion Your Honors, I would suggest the two basic elements in the decision of the lower court present this Court with significant and important questions which should be resolved.

The first is according to the lower court that operability will distinguish one patent from its prior reference.

We disagree with that.

We think there has to be a finding with the operability in fact stemmed from the difference between the two patents themselves.

The second paragraph which the lower court committed was that it seemed to be precluding that new results in and of themselves was sufficiently to get over the test of nonobviousness set forth in Section 103.

And I think it important in preserving the delicate balance which this Court has long monitored between competitive enterprise on the one hand and patent monopoly on the other that these two doctrines be as -- made clear that they're not applicable --

Justice Byron R. White: What was the patented item here?

What was the claim?

Was it a -- was it anything in the electrolyte that was used or was it just cuprous chloride and magnesium, is that all there is?

Mr. John W. Douglas: The claims themselves Mr. White included a reference to electrolyte but the lower court found that the essence of the invention consisted of claims one and ten.

And there's a statement in the opinion of the same effect on the Record 646.

There is no mention of the electrolyte in the specifications which are quoted in the Court's findings and accordingly taking the Court's findings we contend if the invention has been confined to a combination of the electrodes.

Now, I can understand if I --

Justice Byron R. White: Moving aside from the electrolyte or anything else?

Mr. John W. Douglas: Quite aside from the electrolyte, I would say that I think -- I could understand why the Court didn't reach the conclusion that the electrolyte was part of the invention.

There was substantial prior art on the electrolyte and Juno had a electrolyte in 1934 of the similar nature, that's at Record 572.

Niaudet who was a treaty's writer had a water electrolyte suggested, that's at Record 505 and accordingly, I think that may have been the reason why the Court did not find electrolyte to be part of the invention.

The significant fact is, they did so find.

Chief Justice Earl Warren: Mr. Reilly.

Argument of John A. Reilly

Mr. John A. Reilly: Mr. Chief Justice, may it please this Court.

As my Brother Douglas has said, the claims of the patent that are involved in suit, the entire 11 and we have relied primarily upon claims one and ten as being exemplary.

Claim one of the Adams' patents reads, a battery comprising a liquid container, a magnesium electropositive electrode inside the container and having an exterior terminal.

A fused cuprous chloride electronegative electrode and a terminal connector with said electronegative electrode.

Claim ten calls in a battery, the combination of a magnesium electropositive electrode and an electronegative electrode comprising cuprous chloride fused with the carbon catalytic agent.

These elements had all been available in the art for more than 50 years prior to Adams had -- went on the scene.

Magnesium was isolated in 1854, became commercially available in 1870, was suggested by Skrivanoff in 1888.

Cuprous chloride came into the art about the same time and was mentioned by Skrivanoff the proto-chloride of copper means cuprous chloride as a Government contends.

In the Skrivanoff recipe -- in Skrivanoff disclosure which Mr. Justice White asked the question about.

We had cathode which comprised carbon or copper paste with the paste of phosphoric acid, amorphous phosphorous, metallic copper, and cuprous chloride, mixed together with sulfuric acid and applied hot to the carbon and covered with blotting paper impregnated with zinc chloride and sulfuric acid.

And when our expert put that together with the pure materials that he had available in 1960 and I don't know that the materials in 1888 were any purer.

He had two files.

That was the use of cuprous chloride.

I asked the Government's expert when he testified as to Skrivanoff whether when the mixture of the cathode was put together.

Did it still contain cuprous chloride?

And he said, I don't know?

All I have is the information concerned contained in the patent and beyond that I had no information whatsoever.

Following that, our expert attempted to put the entire Skrivanoff battery together including the magnesium anode and the electrolytes specified by Skrivanoff and he had an explosion which blew out the vent of his laboratory which is the device for exhausting air.

And at that point, he stopped working on Skrivanoff.

Now, the interesting thing about this battery and I would really like to show it to you.

I've taken the trouble or the effort here of putting together the parts of it because it's so very simple.

This is a piece of magnesium which I have bent over.

Started out like this, it's now bent this way and this is a cuprous chloride electrode which has been combined with a bit of carbon and it takes about five minutes to make it.

You take a piece of cuprous screening such as you use the mosquito netting and you draw it through a crucible of cuprous chloride and you get this sort of plating out on the wire.

And I connected the two electrodes together to a bowl and I might say that I'm going to put this together using the method taught by Alessandro Volta in 1880 --

Unknown Speaker: This is not Skrivanoff?

Mr. John A. Reilly: I beg your pardon?

I hope not.

But this is a very, very simple thing.

You just take a piece of Kleenex and wrap it around the cathode so as to prevent a short circuit between the cathode and the anode.

Then you put the cathode inside the anode and hopefully it'll work.

Now, actually since 1800 everyone has known that this combination really can't work.

Batteries were invented by the great Italian scientist, Alessandro Volta in 1880 -- 1800 and at that time, he determined by a very simple experiment.

He used a sheet of silver, a piece of silver and a piece of copper, between them he put a little piece of cardboard.

And he took that battery and soaked it in water.

First water-activated battery and the first one that didn't worked.

And immediately determined that since it didn't worked he had add substances such as salts or basic materials or acids to the water in order to produce the ions that my Brother Douglas has mentioned so that electricity can be conducted by the water.

Pure water is an insulator.

It will not conduct electricity.

Magnesium is insoluble than water.

So is cuprous chloride.

So is cuprous chloride with carbon, insoluble in water so when you put the two substances into water neither one can dissolve in the water.

You can't get a chemical reaction to form a conductive electrolyte and the water remaining can conduct electricity, so on the basis of conventional voltaic theory, this battery cannot operate.

And that's the very good reason why nobody bought it with these things together.

As the expert the trial testified, in 1939 it was ridiculous for Adams to take two insoluble substances like magnesium and cuprous chloride and put them in an insulator like water and expect to have a battery.

Now, if I have some water which of course (Inaudible).

Unknown Speaker: The water is difficult.

Mr. John A. Reilly: Now specifically, the Government's position is that the battery is not new, it is useful and it's obvious.

There is a very short answer to this and the answer is this.

If the components of Adams had been put together before, the battery would have had the characteristics of the Adams battery.

Chemicals are chemicals.

They work the same way every time if you have the same chemicals.

But the fact of the matter is that there has never been a battery prior to Adams that had its characteristics.

The Adams battery characteristics are opposite in most cases to every prior art battery, a 140 years of battery research.

This is the first different battery since Volta invented the battery of 1800.

Secondly, the Government says it's obvious but when Adams took his battery a month after Pearl Harbor and went to Fort Monmouth as he was directed to do and displayed it to the assembled battery experts including Dr. Fishback and Dr. Mendel, who later on filed their owned patent on the same battery, they looked at the battery working in front of them with a steam coming out of it and told Adams it can't work.

That's the battery the Government say's is obvious.

Now, I'll put in the water.

Now, I'm using warm water here, hopefully so that this battery may activate before my 30 minutes are up.

The Government relies upon two additional references, the Niaudet text and the Hayes -- and the Hayes patent.

Both, well, I think Niaudet with 1880 and Hayes is 1883.

The Niaudet text teaches the second water-activated battery.

My Brother Just -- my Brother Douglas is correct on this and in the same text if you read it and you'll find it at page -- Record 515 on the same or the next page it says that the Niaudet battery which was actually the Marie Davy battery did not work and it didn't work until another scientist named De la Rue came along and put salts or sal ammoniac in the water and then the battery worked.

So the art had it's understanding of the battery theory reinforced by Niaudet.

You have to take all of the Government's references put together because when you take the totality of the Government's references in conjunction with the ones that Adams put in, you arrive at the inescapable conclusion that what the Government and Adams combined to prove was that no one in the battery art believed that water could possibly function in a battery.

Everybody in the battery art knew that you couldn't use magnesium in a battery and the cuprous chloride had never been successfully used in any practical battery and that's the totality of the Government's art and ours.

Unknown Speaker: (Inaudible)

Mr. John A. Reilly: I don't know whether you can see that small light that I have there, it's only a one and a half volt lamp.

That's all that this battery will produce itself.

What you say Mr. Justice White is quite correct.

Bert Adams was not a scientist.

He didn't know that what he was doing was impossible.

He didn't know that the combination he put together was ridiculous.

But as a matter of fact to be fair to Adams, Adams is a natural genius and he disbelieved these theories that I've been talking about.

He said that magnesium is soluble in water.

And he believed that cuprous chloride could be solublized in water.

And he believed that water could carry a conductive electrolyte in combination with the magnesium and he is the only one who is right.

So untutored or not, he is a bona fide natural genius and understand the conditions under which this man worked.

He had no laboratory.

He made his experimental batteries that he delivered to the army by the dozens on his kitchen stove.

These were the people watching this untutored man come in and you can understand why they had difficulty believing him.

He just didn't looked prepossessing, he didn't appear to be the type that you would think could be a great scientist but the fact of the matter is, that if you go back to battery science you have to say that since Volta, there has been Edison, Adams -- now, the 18 --

Justice Byron R. White: So this battery actually works, the one he brought to the army?

Mr. John A. Reilly: Oh yes!

Justice Byron R. White: I thought somebody had to give him a little -- had to inclose a little bit.

Mr. John A. Reilly: I beg your pardon Mr. --

Justice Byron R. White: To the one he actually brought in worked, right then and there.

Mr. John A. Reilly: Oh, quite correct.

That's proven by the article Dr. Fishback wrote in 1952 where he said, “When we looked at this battery originally we thought that because of its self-initiation and exothermic reaction was inoperative but now we realized that those two characteristics give it two of his most important advantages and that's why it files this patent on it.

And my Brother Douglas finds both with the claims of Adams, but if you read the claims of Fishback, you will find that Fishback is claiming a battery with a magnesium anode and a cuprous chloride cathode with carbon in it except he said that my battery is porous.

He didn't tell the United States patent office which the Department of Justice sometime excoriates that the Adams' patent taught how to make the cathode porous by the use of carbon.

And the 1880 Niaudet reference which has just been referred to taught the exact method that Fishback used to make his electrode.

So that the invention of Fishback is anticipated by the art that is cited by the Government today, yet the Government has not disclaimed that patent, it is still viable, it could be asserted against anyone.

Indeed, it could be asserted against Adams.

Now the third reference, the fourth reference presently relied on by the Government is Codd.

And the Codd textbook I think is the most devastating answer to the Government's case.

It's a textbook published in 1928.

It's fairly extensive in three places, widely separate.

It mentions one, magnesium, and teaches that if you put magnesium into a sulfuric acid opposed to copper you can measure its electromotive force.

Two other or three other references put in by the Government teach that if you put magnesium and sulfuric acid it will be destroyed in a matter of minutes.

Other references put in by the Government teach, teach no one knew how to use magnesium in a primary battery as of 1928.

So it was perfectly obvious that what Codd was teaching was merely an electrical measurement method, it was not a battery.

The second substance mentioned by Codd is silver chloride 40 pages away from the mention of magnesium.

The third being mentioned by Codd is that the arts was trying to make water-activated batteries and it gave several examples.

And these water-activated batteries were made by putting the salts which you need to make the water conductive into the interstices between the electrodes.

Then you pour the water in, the salts are melted by the water and the battery becomes conductive and operative.

So there in Codd mind you, is magnesium, silver chloride, and water.

No one suggested that they could ever be put together.

Codd didn't suggest that.

The closest the Government comes to anticipating Adams is defined that almost all of the substances used by Adams which were cuprous chloride magnesium activate the battery with water were combined in a book, not in a battery, 1928 ten years before Adams.

Now, actually all of the references are distinguished because of the ref -- several references cited by my Brother Douglas.

He mentioned Jiu Mao, and Jiu Mao was a patent in 1937, just two years before Adams and Jiu Mao said, “Here is the way you make magnesium work in a battery.”

Jiu Mao doesn't work.

The testimony shows Adams' expert, faithfully reproduced Jiu Mao tested it.

It does not function.

That's Jiu Mao.

The second one is that silver chloride is cited by the Government and may refer to the Hayes and Niaudet, those patents.

Now, at the trial, Adams insisted that cuprous chloride which he disclosed in his patent and silver chloride which is not disclosed in his patent but which he told the army about in 1942 were equivalent.

You said they'll both work in my battery.

We put in eight requested findings of fact to the Commissioner requesting the Commissioner to find that cuprous chloride and silver chloride were equivalents.

The Government opposed them all.

The Commissioner in his decision stated that he refused to find that cuprous chloride and silver chloride were equivalent, he therefore held that the Government's procurement of silver chloride, magnesium, water-activated batteries was not an infringement.

We acquiesced the Government with no exceptions.

Now the Government comes to you and says in its petition for the reason for granting certiorari.

Cuprous chloride and silver chloride are equivalence and you should reverse the Commissioner because he didn't in fact find that.

In other words, they ask you to reverse the Commissioner on a finding of fact -- for filing to find or for making a decision that they themselves induced the Commissioner to make.

And as you know we have a motion pending on that.

Now, to get to the point about the battery being unobvious, the reason the Adams battery could -- the reason the scientist couldn't believe the Adam's battery when saw it operating is because in fact it does not operate like any other battery.

I have here a draft which is a copy of plaintiff's Exhibit 38 with the exception of the two ledgers.

And this graph was made by a battery scientist at Fort Monmouth named Shore.

Now, Shore was not one of the men that Adams talked to.

Shore was the man who was given a -- just simply a copy of the Adams' patent and asks to do some experimentation.

And the experimentation he did was to follow that art and make several batteries.

This is one of them.

And if you see this curve, this flat line going out about three-quarters away across the graph that is the curve of the battery he made following simply the instructions in the Adams' patent.

Now, he had some other duties that were not fully explained but at any event he took each of the elements in the Adam's patent such as magnesium and he tried all kinds of other chlorides with it.

And then he would take cuprous chloride and find all kinds of different metals with it.

And then he experimented with different types of electrolytes and he found out that the only combination that worked was the one that Adams thought.

All the others were failures.

At the same time he ran some tests on two commercial Colesman's (ph) batteries which at that time and this is 1944 were being procured by the Government for high altitude meteorological research and he plotted the curves of the voltage delivery of those two batteries and here you see that they go down.

Now this is an experimental Adams battery, built by a man who built two or three of them against the best commercial procurements of batteries that the Government could manage in the middle of the war.

Your Honors, this is the real prior arts.

This is what's Skrivanoff pays Niaudet, Codd and all of the rest of them taught the battery art.

You couldn't make a battery that would give you any constant current on continuous service.

You couldn't make a battery that didn't show an early failure.

This battery of Adams is the first battery that would give continuous power efficiently.

Every other battery when you put it on in continuous service declines so fast that it reached the point of an operativenss -- even operativeness in a very short period of time.

This is the first battery that will give a level power like a generator.

And practically every electrical device, radio sending or receiving sets, whatever it may be requires level electrical power to work efficiently.

It cannot work efficiently on declining (Inaudible) fading radios and various other patents.

The third thing about this battery and the reason why the battery scientists at Fort Monmouth had so much trouble understanding how it could work is that when Adams demonstrated it and I don't think you can see that here there's too much water but the battery heats up and as a matter of fact it will boil.

The water in the Adams battery will actually come to a boil, steam will come out of it.

Now, every prior art voltaic battery, when it begin to heat up it was polarizing, losing power and destroying itself.

In the Adams battery the heating reaction is pure side reaction, it does not affect the level -- continuous production of electrical power whatsoever.

But, because of the boiling phenomenon the Government felt and these experts felt that this was a battery that was running away and destroying itself.

In fact it is the boiling of the Adams battery that permits the battery to operate at -960 degrees below zero.

Almost a 100 degrees below the freezing temperature of the water it's filled with and this is the battery that has licked the age old problem in the battery art of low temperature performance.

There is no other battery that will work well at 60 degrees below zero.

There's just isn't.

And the Adams battery today is used by the Government for more unusual and usual uses than any other battery.

This battery for example is used in meteorological research.

Its sent up to a 100,000 feet in the stratosphere where the temperature goes down to 60 degrees below zero and this is the only battery that will work under those conditions effectively.

Unknown Speaker: Excuse me.

Mr. John A. Reilly: Now, there were other reasons why the Government experts could not believe that it worked.

And these are the reasons why the battery is not really obvious.

You can't start this battery when you want to.

It isn't like everyone of the prior art batteries which -- they are both experts at the trial called a bell ringer, when they pushed the button, the battery delivers current and the bell rings, when you take your finger off the button it stops.

The Adams battery won't do that.

It takes a half hour to start the Adams battery if you put it together unless you use special methods such as hot water to energize it rapidly and if you don't do that the bat -- and another thing about the battery is that you can't stop it.

I can des --I can take that bulb out and break the external circuit, that battery will go right on boiling and generating and using itself up.

That's what the Government experts called a self-destructive feature.

The other thing about it of course is the fact that it boils over and conventionally all the experts know that a battery that heats up was destroying itself.

Now, we say that the Government takes the position that the Adams battery is simply not new and simply obvious because it doesn't wish to address itself, so the real question for which possibly this Court granted certiorari.

We feel that if you apply the test which were set forth in the A & P case and in Cuno and in Ray-O-Vac and when I refer to the ANP case I refer to both the majority in the concurring opinions.

We feel that when you apply the facts of records to those criteria, you'll find that Adams meets the criteria of ANP completely.

For example, in ANP it was stated that as a result of the combination there had to be something unusual, the whole had to be greater that the sum of the parts.

Now what does that mean?

Supposing a battery that the whole were just equal to the sum of the parts, you're using a better anode, a better cathode, possibly energize it in some better way.

You would get a better conventional battery.

These carriers might have come out a little further.

But it would still be a bell ringer.

It would still give you only intermittent as opposed to continuous power.

It would still give you only declining power as opposed to leveled power and it wouldn't work at low temperatures.

In the Adams battery you put together an anode and a cathode and what do you get?

You get a battery that's not like any other battery, indeed it's more like a heat engine than a battery.

And it develops power in a way that it's none like a battery but indeed is like a generator.

The whole is greater than the sum of its parts.

The second point made I believe in ANP was that it is necessary that the useful arts in majority opinion or the particular science involved had to be greatly advanced.

In this case it would be the science of electrochemistry.

I don't think the Government disputes that the science of electrochemistry has been greatly advanced by Adams.

Here we have the first unexplained experimental results since Volta.

The voltaic theory no longer fits all observed experimental phenomena in the battery field.

The next point is --

Justice Byron R. White: Now, are these results still unexplained?

Mr. John A. Reilly: Yes Your Honor.

No one really understands this.

There are three things that are unexplained about the Adams battery.

First of all, no one understands why this combination does generate current.

Secondly, no one understands why this delivery curve of voltage remains leveled.

This is a primary battery.

You put the parts in it with all the electrical energy when you put it together.

And then as it grows older and is used there's less and less material and you would expect and indeed all prior art batteries decline as you have less material, less magnesium, whatever it may be working in the battery.

This does not and no one can understand why it doesn't go down.

Almost every curve that you see in nature are natural phenomenon has a curve to it.

That's why they're called curves.

This is the first straight line curve and when it comes to the end of it's life it falls right off the cliff, this peculiar little zigzag in this graph is due to the fact that Mr. Shore lets its battery run out of water.

So you put some water in it, gaining back the life and decline.

Justice Byron R. White: So to this day, these phenomena that you described are unexplained in the -- in -- like in the area of electrochemistry or whatever it's called?

Mr. John A. Reilly: That's correct.

That's correct.

Mr. --

Justice Potter Stewart: (Inaudible)

Mr. John A. Reilly: (Inaudible)

Justice Potter Stewart: Is it still accepted that magnesium is not soluble in water?

Mr. John A. Reilly: Yes.

Yes, magnesium is not soluble in water.

To any substantial degree I might say that magnesium is soluble in boiling water.

So I suppose if you want to make a battery out of magnesium all you have to do is create one that will boil and if that's the answer this is the only boiling battery, that's true though.

The second point or the last point and this particularly applied to the concurring opinion in ANP with the requirement that masters in the field of electrochemistry should have recognized the contribution to be an important scientific advance.

And in that connection I would like to just mention briefly what the masters in the field of electrochemistry have said about the Adams battery.

Dr. Fishback, magnesium, cuprous chloride batteries have obtained considerable importance particularly as meteorological batteries.

Dr. Chove (ph) in 1952, the exact nature of the complex chemical current producing reactions of this type of cell is not known in any substantial detail.

Morse, the water-activated battery systems are among the relatively new power sources which have become extremely important to the military during the past decade.

Morse, the definite trend to water-activated batteries for high altitude and seawater applications indicates they are unsurpassed as one shot power packs for low temperature use and for underwater operations.

Morse, there can be no doubt that the addition of water-activated batteries to the family of power sources has brought about developments which would otherwise have been technically or economically impractical.

Recognition by outstanding experts in the field of electrochemistry that this untutored simple man has made an important advance in the science of electrochemistry and I think the requirements that this Court enunciated in ANP for invention have been fully met by Adams and beyond that I think the statement in Cuno has been met.

I think this is surely a work of creative genius not merely the skill of the calling.

Thank you.

Chief Justice Earl Warren: Mr. Douglas

Rebuttal of John W. Douglas

Mr. John W. Douglas: If the Court please, so far as constant current is concerned, that had been suggested in a number of prior references, Wensky, Niaudet, Hayes, and Jiu-Mao all contained in the record and the suggestion in those prior references was that a metallic chloride would do the trick.

When this battery was taken up to Fort Monmouth, difficulty was that it boiled over and that's what put the army scientist off.

But I think the significant point about my res -- distinguished opponents argument is that it was devoted almost entirely to results.

There was no detailed effort to justify the scientific events in terms of the prior art except to say that one was operable and the other wasn't and that something else achieve certain results whereas others had not.

Even if what he said was absolutely correct, this would still not established patentability because the test under Section 103 is, had this been apparent to someone skilled in the field in the prior art and there's no findings that there was any such seach in this case and in fact the comparison of the Skrivanoff and Adams' bat -- patents saw that they're virtually congruent.

And for these two reasons we believe that patentability should not be sustained.

Featured:

El Paso v. Simmons - Oral Argument

Fri, 09 Jan 2009 14:46:10 +0000

Case:

El Paso v. Simmons

Media File:

38_19641117-argument.mp3

Related Transcript:

1964_38_argument.xml

Attribution:

The Oyez Project

Featured: