Brenner v. Manson

• Decision Date: 21 March 1966
• Docket Number: No. 58,58
• Citation: 86 S.Ct. 1033,16 L.Ed.2d 69,148 U.S.P.Q. 689,383 U.S. 519
• Parties: Edward J. BRENNER, Commissioner of Patents, Petitioner, v. Andrew John MANSON
• Court: U.S. Supreme Court

383 U.S. 519

86 S.Ct. 1033

16 L.Ed.2d 69

Edward J. BRENNER, Commissioner of Patents, Petitioner,

v Andrew John MANSON.

No. 58.

Argued Nov. 17, 1965.

Decided March 21, 1966.

Paul Bender, Washington, D.C., for petitioner, pro hac vice, by special leave of Court.

Dean Laurence, Washington, D.C., for respondent.

Mr. Justice FORTAS delivered the 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.¹ 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.²

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 homologue³ 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,⁴ as well as to answer the question concerning our certiorari jurisdiction.

I.

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 Government⁵ 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.⁶ 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.⁷ 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.⁸ 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.⁹ 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.¹⁰

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.¹¹ 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...