Brenner v. Manson/Opinion of the Court

This case presents two questions of importance to the administration of the patent laws: First, whether this Court has certiorari jurisdiction, upon petition of the Commissioner of Patents, to review decisions of the Court of Customs and Patent Appeals; and second, whether the practical utility of the compound produced by a chemical process is an essential element in establishing a prima facie case for the patentability of the process. The facts are as follows:

In December 1957, Howard Ringold and George Rosenkranz applied for a patent on an allegedly novel process for making certain known steroids. They claimed priority as of December 17, 1956, the date on which they had filed for a Mexican patent. United States Patent No. 2,908,693 issued late in 1959.

In January 1960, respondent Manson, a chemist engaged in steroid research, filed an application to patent precisely the same process described by Ringold and Rosenkranz. He asserted that it was he who had discovered the process, and that he had done so before December 17, 1956. Accordingly, he requested that an 'interference' be declared in order to try out the issue of priority between his claim and that of Ringold and Rosenkranz.

A Patent Office examiner denied Manson's application, and the denial was affirmed by the Board of Appeals within the Patent Office. The ground for rejection was the failure 'to disclose any utility for' the chemical compound produced by the process. Letter of Examiner, dated May 24, 1960. This omission was not cured, in the opinion of the Patent Office, by Manson's reference to an article in the November 1956 issue of the Journal of Organic Chemistry, 21 J.Org.Chem. 1333-1335, which revealed that steroids of a class which included the compound in question were undergoing screening for possible tumor-in-hibiting effects in mice, and that a homologue adjacent to Manson's steroid had proven effective in that role. Said the Board of Appeals, 'It is our view that the statutory requirement of usefulness of a product cannot be presumed merely because it happens to be closely related to another compound which is known to be useful.'

The Court of Customs and Patent Appeals (hereinafter CCPA) reversed, Chief Judge Worley dissenting. 52 C.C.P.A. (Pat.) 739, 745, 333 F.2d 234, 237-238. The court held that Manson was entitled to a declaration of interference since 'where a claimed process produces a known product it is not necessary to show utility for the product,' so long as the product 'is not alleged to be detrimental to the public interest.' Certiorari was granted, 380 U.S. 971, 85 S.Ct. 1334, 14 L.Ed.2d 267, to resolve this running dispute over what constitutes 'utility' in chemical process claims, as well as to answer the question concerning our certiorari jurisdiction.

Section 1256 of Title 28 U.S.C. (1964 ed.), enacted in 1948, provides that 'Cases in the Court of Customs and Patent Appeals may be reviewed by the Supreme Court by writ of certiorari.' This unqualified language would seem to foreclose any challenge to our jurisdiction in the present case. Both the Government and the respondent urge that we have certiorari jurisdiction over patent decisions of the CCPA, although the latter would confine our jurisdiction to those petitions filed by dissatisfied applicants and would deny the Commissioner of Patents the right to seek certiorari. This concert of opinion does not settle the basic question because jurisdiction cannot be conferred by consent of the parties. The doubt that does exist stems from a decision of this Court, rendered in January 1927, in Postum Cereal Co. v. California Fig Nut Co., 272 U.S. 693, 47 S.Ct. 284, 71 L.Ed. 478, which has been widely interpreted as precluding certiorari jurisdiction over patent and trademark decisions of the CCPA.

Postum, however, was based upon a statutory scheme materially different from the present one. Postum involved a proceeding in the Patent Office to cancel a trademark. The Commissioner of Patents rejected the application. An appeal was taken to the then Court of Appeals for the District of Columbia, which in 1927 exercised the jurisdiction later transferred to the CCPA. Under the statutory arrangement in effect at the time, the judgment of the Court of Appeals was not definitive because it was not an order to the Patent Office determinative of the controversy. A subsequent bill in equity could be brought in the District Court and it was possible that a conflicting adjudication could thus be obtained. On this basis, the Court held that it could not review the decision of the Court of Appeals. It held that the conclusion of the Court of Appeals was an 'administrative decision' rather than a 'judicial judgment': 'merely an instruction to the Commissioner of Patents by a court which is made part of the machinery of the Patent Office for administrative purposes.' 272 U.S., at 698-699, 47 S.Ct. at 285. Therefore, this Court concluded, the proceeding in the Court of Appeals-essentially administrative in nature-was neither case nor controversy within the meaning of Article III of the Constitution. Congress might confer such 'administrative' tasks upon the courts of the District of Columbia, wrote Chief Justice Taft, but it could not empower this Court to participate therein.

Congress soon amended the statutory scheme. In March of 1927 it provided that an action in the District Court was to be alternative and not cumulative to appellate review, that it could not be maintained to overcome an adjudication in the Court of Appeals. In 1929 Congress transferred appellate jurisdiction over the Commissioner's decisions from the Court of Appeals to what had been the Court of Customs Appeals and was now styled the Court of Customs and Patent Appeals. Whereas the Court of Appeals had been empowered to take additional evidence and to substitute its judgment for that of the Commissioner, the CCPA was confined to the record made in the Patent Office. Compare Federal Communications Comm'n v. Pottsville Broadcasting Co., 309 U.S. 134, 144-145, 60 S.Ct. 437, 442, 84 L.Ed. 656. Despite these changes, however, Postum had acquired a life of its own. It continued to stand in the way of attempts to secure review here of CCPA decisions respecting the Commissioner of Patents. See, e.g., McBride v. Teeple, 311 U.S. 649, 61 S.Ct. 8, 85 L.Ed. 415, denying certiorari for 'want of jurisdiction' on the authority of Postum.

This was the background against which Congress, in its 1948 codification of statutes pertaining to the judiciary, enacted § 1256, blandly providing in unqualified language for review on certiorari of '(c)ases in the Court of Customs and Patent Appeals.' Nothing in the legislative materials relating to the statute, except its language, is of assistance to us in the resolution of the present problem: Did the statutory changes which followed Postum mean that a patent decision by the CCPA was a 'judicial' determination reviewable by this Court under Article III? And, if so, was § 1256 intended to create such jurisdiction?

Assistance came with the 1958 revision of the Judicial Code. Congress there declared the CCPA 'a court established under article III * *  * ,' that is, a constitutional court exercising judicial rather than administrative power. 28 U.S.C. § 211 (1964 ed.). In 1962 this Court addressed itself to the nature and status of the CCPA. Glidden Co. v. Zdanok, 370 U.S. 530, 82 S.Ct. 1459, 8 L.Ed.2d 671, raised the question whether a judge of the CCPA was an Article III judge, capable of exercising federal judicial power. In answering that question in the affirmative, Mr. Justice Harlan's opinion, for three of the seven Justices participating, expressly left open the question whether § 1256 conferred certiorari jurisdiction over patent and trademark cases decided in the CCPA, 370 U.S., at 578 n. 49, 82 S.Ct. at 1487. It suggested, however, that Postum might be nothing more than a museum piece. The opinion noted that Postum 'must be taken to be limited to the statutory scheme in existence before' 1929. 370 U.S., at 579, 82 S.Ct. at 1488. The concurring opinion of Mr. Justice Clark, in which The Chief Justice joined, did not reflect any difference on this point.

Thus, the decision sought to be reviewed is that of an Article III court. It is 'judicial' in character. It is not merely an instruction to the Commissioner or part of the 'administrative machinery' of the Patent Office. It is final and binding in the usual sense. In sum, Postum has no vitality in the present setting, and there remains no constitutional bar to our jurisdiction.

Having arrived at this conclusion, we have no difficulty in giving full force and effect to the generality of the language in § 1256. It would be entirely arbitrary for us to assume, despite the statutory language, that Congress in 1948 intended to enshrine Postum-dependent as it was upon a statutory scheme fundamentally altered in 1927 and 1929-as a hidden exception to the sweep of § 1256. The contrary is more plausible: that by using broad and unqualified language, Congress intended our certiorari jurisdiction over CCPA cases to be as broad as the Constitution permits.

This conclusion is reinforced by reference to the anomalous consequences which would result were we to adopt a contrary view of § 1256. Determinations of the Patent Office may be challenged either by appeal to the CCPA or by suit instituted in the United States District Court for the District of Columbia. 35 U.S.C. § 145, 28 U.S.C. § 1542 (1964 ed.). Where the latter route is elected, the decision obtained may be reviewed in the Court of Appeals for the District of Columbia Circuit, and ultimately in this Court upon writ of certiorari. Hoover Co. v. Coe, 325 U.S. 79, 65 S.Ct. 955, 89 L.Ed. 1488. It would be strange indeed if corresponding certiorari jurisdiction did not exist where the alternative route was elected. Were that so, in the event of conflict between the CCPA and the courts of the District of Columbia, resolution by this Court would be achievable only if the litigants chose to proceed through the latter. Obviously, the orderly administration both of our certiorari jurisdiction and of the patent laws requires that ultimate review be available in this Court, regardless of the route chosen by the litigants.

We therefore conclude that § 1256 authorizes the grant of certiorari in the present case. We now turn to the merits.

Our starting point is the proposition, neither disputed nor disputable, that one may patent only that which is 'useful.' In Graham v. John Deere Co., 383 U.S. 1, at 5-10, 86 S.Ct. 684, at 687-690, we have reviewed the history of the requisites of patentability, and it need not be repeated here. Suffice it to say that the concept of utility has maintained a central place in all of our patent legislation, beginning with the first patent law in 1790 and culminating in the present law's provision that

'Whoever invents or discovers any new and useful process,     machine, manufacture, or composition of matter, or any new      and useful improvement thereof, may obtain a patent therefor,      subject to the conditions and requirements of this title.'

As is so often the case, however, a simple, everyday word can be pregnant with ambiguity when applied to the facts of life. That this is so is demonstrated by the present conflict between the Patent Office and the CCPA over how the test is to be applied to a chemical process which yields an already known product whose utility-other than as a possible object of scientific inquiry-has not yet been evidenced. It was not long ago that agency and court seemed of one mind on the question. In Application of Bremner, 182 F.2d 216, 217, 37 C.C.P.A. (Pat.) 1032, 1034, the court affirmed rejection by the Patent Office of both process and product claims. It noted that 'no use for the products claimed to be developed by the processes had been shown in the specification.' It held that 'It was never intended that a patent be granted upon a product, or a process producing a product, unless such product be useful.' Nor was this new doctrine in the court. See Thomas v. Michael, 166 F.2d 944, 946-947, 35 C.C.P.A. (Pat.) 1036, 1038-1039.

The Patent Office has remained stead-fast in this view. The CCPA, however, has moved sharply away from Bremner. The trend began in Application of Nelson, 280 F.2d 172, 47 C.C.P.A. (Pat.) 1031. There, the court reversed the Patent Office's rejection of a claim on a process yielding chemical intermediates 'useful to chemists doing research on steroids,' despite the absence of evidence that any of the steroids thus ultimately produced were themselves 'useful.' The trend has accelerated, culminating in the present case where the court held it sufficient that a process produces the result intended and is not 'detrimental to the public interest.' 333 F.2d at 238, 52 C.C.P.A. (Pat.), at 745.

It is not remarkable that differences arise as to how the test of usefulness is to be applied to chemical processes. Even if we knew precisely what Congress meant in 1790 when it devised the 'new and useful' phraseology and in subsequent re-enactments of the test, we should have difficulty in applying it in the context of contemporary chemistry where research is as comprehensive as man's grasp and where little or nothing is wholly beyond the pale of 'utility'-if that word is given its broadest reach.

Respondent does not-at least in the first instance-rest upon the extreme proposition, advanced by the court below, that a novel chemical process is patentable so long as it yields the intended product and so long as the product is not itself 'detrimental.' Nor does he commit the outcome of his claim to the slightly more conventional proposition that any process is 'useful' within the meaning of § 101 if it produces a compound whose potential usefulness is under investigation by serious scientific researchers, although he urges this position, too, as an alternative basis for affirming the decision of the CCPA. Rather, he begins with the much more orthodox argument that his process has a specific utility which would entitle him to a declaration of interference even under the Patent Office's reading of § 101. The claim is that the supporting affidavits filed pursuant to Rule 204(b), by reference to Ringold's 1956 article, reveal that an adjacent homologue of the steroid yielded by his process has been demonstrated to have tumor-inhibiting effects in mice, and that this discloses the requisite utility. We do not accept any of these theories as an adequate basis for overriding the determination of the Patent Office that the 'utility' requirement has not been met.

Even on the assumption that the process would be patentable were respondent to show that the steroid produced had a tumor-inhibiting effect in mice, we would not overrule the Patent Office finding that respondent has not made such a showing. The Patent Office held that, despite the reference to the adjacent homologue, respondent's papers did not disclose a sufficient likelihood that the steroid yielded by his process would have similar tumor-inhibiting characteristics. Indeed, respondent himself recognized that the presumption that adjacent homologues have the same utility has been challenged in the steroid field because of 'a greater known unpredictability of compounds in that field.' In these circumstances and in this technical area, we would not overturn the finding of the Primary Examiner, affirmed by the Board of Appeals and not challenged by the CCPA.

The second and third points of respondent's argument present issues of much importance. Is a chemical process 'useful' within the meaning of § 101 either (1) because it works-i.e., produces the intended product? or (2) because the compound yielded belongs to a class of compounds now the subject of serious scientific investigation? These contentions present the basic problem for our adjudication. Since we find no specific assistance in the legislative materials underlying § 101, we are remitted to an analysis of the problem in light of the general intent of Congress, the purposes of the patent system, and the implications of a decision one way or the other.

In support of his plea that we attenuate the requirement of 'utility,' respondent relies upon Justice Story's well-known statement that a 'useful' invention is one 'which may be applied to a beneficial use in society, in contradistinction to an invention injurious to the morals, health, or good order of society, or frivolous and insignificant' -and upon the assertion that to do so would encourage inventors of new processes to publicize the event for the benefit of the entire scientific community, thus widening the search for uses and increasing the fund of scientific knowledge. Justice Story's language sheds little light on our subject. Narrowly read, it does no more than compel us to decide whether the invention in question is 'frivolous and insignificant'-a query no easier of application than the one built into the statute. Read more broadly, so as to allow the patenting of any invention not positively harmful to society, it places such a special meaning on the word 'useful' that we cannot accept it in the absence of evidence that Congress so intended. There are, after all, many things in this world which may not be considered 'useful' but which, nevertheless are totally without a capacity for harm.

It is true, of course, that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. And it may be that inability to patent a process to some extent discourages disclosure and leads to greater secrecy than would otherwise be the case. The inventor of the process, or the corporate organization by which he is employed, has some incentive to keep the invention secret while uses for the product are searched out. However, in light of the highly developed art of drafting patent claims so that they disclose as little useful information as possible-while broadening the scope of the claim as widely as possible-the argument based upon the virtue of disclosure must be warily evaluated. Moreover, the pressure for secrecy is easily exaggerated, for if the inventor of a process cannot himself ascertain a 'use' for that which his process yields, he has every incentive to make his invention known to those able to do so. Finally, how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put? To the extent that the patentee has power to enforce his patent, there is little incentive for others to undertake a search for uses.

Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy, we believe a more compelling consideration is that a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute. Until the process claim has been reduced to production of a product shown to be useful, the metes and bounds of that monopoly are not capable of precise delineation. It may engross a vast, unknown, and perhaps unknowable area. Such a patent may confer power to block off whole areas of scientific development, without compensating benefit to the public. The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point-where specific benefit exists in currently available form-there is insufficient justification for permitting an applicant to engross what may prove to be a broad field.

These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process. Respondent appears to concede that with respect to a product, as opposed to a process, Congress has struck the balance on the side of nonpatentability unless 'utility' is shown. Indeed, the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case. We find absolutely no warrant for the proposition that although Congress intended that no patent be granted on a chemical compound whose sole 'utility' consists of its potential role as an object of use-testing, a different set of rules was meant to apply to the process which yielded the unpatentable product. That proposition seems to us little more than an attempt to evade the impact of the rules which concededly govern patentability of the product itself.

This is not to say that we mean to disparage the importance of contributions to the fund of scientific information short of the invention of something 'useful,' or that we are blind to the prospect that what now seems without 'use' may tomorrow command the grateful attention of the public. But a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. '(A) patent system must be related to the world of commerce rather than to the realm of philosophy. * *  * '

The judgment of the CCPA is reversed.

Reversed.

Mr. Justice DOUGLAS, while acquiescing in Part I of the Court's opinion, dissents on the merits of the controversy for substantially the reasons stated by Mr. Justice HARLAN.