The Supreme Court continues tomorrow its recent study of laws that protect “intellectual property” – creative inventions of the mind or the laboratory. This time, the Court will be applying in a modern setting a legal principle it spelled out in 1888, when it upheld the patents on Alexander Graham Bell’s invention of the telephone.
A second hearing on Monday will switch the Court’s attention. That case will focus on the constitutionality of a law making it a crime to entice foreigners to enter the U.S. illegally.
The Court will broadcast “live” the audio (no video) of the hearings on its homepage, supremecourt.gov To listen, click on “Live Audio” and follow the prompt when the courtroom scene appears lower on the page. The audio also will be available, under the title of each case, on C-Span TV at this link: cspan.org/supremecourt
First case Monday: Amgen Inc. v. Sanofi, Aventisub LLB and Regeneron Pharmaceuticals, Inc. The hearing will start at 10 a.m. and is scheduled for 70 minutes.
Background: The Constitution’s guarantee of legal protection for those who invent something new has two goals. Article I promises inventors, authors and composers a monopoly in exploiting their creations and the chance to make money on them – for a period of time, not forever. Separately, rewarding new creativity benefits everybody; those rights encourage more creativity – they “promote the progress of science and useful arts,” in the words of Article I.
Once a patent, copyright or trademark expires, the invention is open to all who have the skill to use it, and then they, too, can reap the rewards.
It seems obvious, but it is worth emphasizing that the most important test that a creator must meet at the outset to obtain legal protection is that the creation is, in fact, new. But patent law also seeks to make sure that the monopoly is limited solely to what is actually new – what has been invented.
This allows others to create something new themselves, building on the inventor’s creation if they can come up with something different enough to avoid infringing on the original. Others thus need clear notice, from the inventor, of just what it claims is included in the original so they know its outer limits.
The Supreme Court’s telephone patents ruling in 1888 provides a guide to the inventor’s disclosure duty. The Court ruled that Alexander Graham Bell had – as a scientific fact – invented the telephone. It had to deal with arguments against Bell’s claim that he had not actually done what he claimed he could do – transmit the sounds of the human voice by electricity from one place to another.
The Court decided that he did not need to go that far. This is what it said: “The law does not require that a discoverer or inventor, in order to get a patent, must have succeeded in bringing his art to the highest degree of perfection. It is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation. This Bell did.”
That idea is written into the Patent Act, and lawyers and judges refer to it as the “enablement” requirement – that is, enabling others to know the scope of the novelty claimed.
Just what that standard now requires is the central dispute in the case the Justices will hear on Monday.
Facts of this case: One major pharmaceutical company, Amgen, Inc., has created a complex drug that it claims works to lower “bad” cholesterol (“LDL”) in the bloodstream, thus significantly reducing the risk of a heart attack. It won two patents on the invention, but those were nullified by the specialized federal appeals court in Washington that handles appeals in patent cases – the Federal Circuit Court.
Amgen had what are technically called “genus patents” – that is, patents that cover a group of technical characteristics, defining how they work together – in this instance, to attack LDL clogging. (The word “genus” is often credited to a 17th Century French botanist, Joseph Pitton de Tournefort, who in 1694 classified 7,000 species of plants into 700 genera. Others give the credit to a Swedish botanist, Carl Linnaeus, who did something like that in 1753.)
Some patent lawyers now complain that a “genus patent” almost never survives a challenge in the Federal Circuit Court because it lately is applying more rigorously the “enablement” requirement. That is the point Amgen makes in this appeal to the Supreme Court.
It sued two other pharmaceutical companies (the Sanofi group and Regeneron Pharmaceuticals), claiming that they infringed its two patents. The rivals replied that they had not infringed the patents because those grants were not valid; they asserted that Amgen had not adequately disclosed enough to enable others to make the drug without a great deal more experimentation – basically, duplicating the trial-and-error process that Amgen had done itself.
After Amgen appealed, the Court asked the Justice Department for its views on the case. The Department replied that the Justices should deny review. Amgen’s claims, it told the Court, “resemble the broad product claims this Court has found invalid under the enablement requirement.” According to the Department, Amgen had disclosed only a partial “road map” to the claimed invention, and thus the Federal Circuit Court had properly invalidated the patents.
The Supreme Court, apparently sensing that a larger issue was at stake, granted review anyway.
The questions before the Court: Must an inventor seeking a patent disclose all possible methods that its creation could be imitated by another skilled person or entity in that field? More broadly, has the Federal Circuit Court essentially made it legally impossible to get a genus patent?
Significance: Because the Federal Circuit Court often has the last word on the scope of patent law (the Supreme Court, of course, can have the last word, but it is very selective in reviewing patent cases), the rulings by that appeals court shape the Patent Act in major ways.
This case, though, takes on a special significance because the outcome could be a make-or-break decision for “genus patents,” which are especially important to pharmaceutical, chemical and biotechnology inventions.
A group of professors of patent law, in a legal brief filed in this case, summed up what they see as its wider importance: “The Federal Circuit now rejects claims as invalid because the genus contains thousands or millions of possible chemicals – unless the patent itself identifies exactly which of these myriad species will work. That is an impossible burden.” The brief went on to say that rival inventors, unless deterred by broad claims, will simply tweak the idea a little and thus avoid infringing on the original.
Monday’s second case: United States v. Hansen The hearing will begin after the patent case finishes; this one is scheduled for one hour.
Background: For more than two centuries – since 1801 – it has been understood as a legal norm that one commits a crime by inducing or soliciting someone else to break the law. This case provides a basic test of whether, because encouraging a crime involves speech or communications, it is protected by the First Amendment.
Although the First Amendment has long been accepted as a legal shield for robust and even harmful expression, there is a separate, long-standing legal tradition that it does not protect the act of enlisting someone else to engage in crime.
In this case, the Justice Department is asking the Court to rescue a 71-year-old criminal law that bans smuggling of foreign individuals into the U.S., which has been ruled unconstitutional twice by a federal appeals court, based on the First Amendment.
First passed in 1952, the law makes it a crime for anyone to “encourage or induce” a person from another country to come to this country illegally – or, to urge a foreigner already in the U.S. to remain illegally. The penalty upon conviction is greater if the crime is done for commercial gain.
The Supreme Court had agreed three years ago to review a prior appeals court decision nullifying that provision, but that case ended because of a procedural flaw. The Court agreed again in the current term to consider the constitutionality issue after the same appeals court took that position in a new case.
Facts of this case: This case involves a Californian, Helaman Hansen, who operated a Sacramento organization named Americans Helping America Chamber of Commerce. He was charged with two counts of violating the 1952 law, based on government claims that he tried to encourage 471 foreign nationals to come to or remain in the U.S. illegally, in the hopes of becoming U.S. citizens – which they did not achieve.
Hansen was accused of charging individuals as much as $10,000 to take part in a plan to obtain adult sponsorship for them so they could enter or remain and become citizens.
In striking down his conviction, the federal appeals court applied what is called the “doctrine of overbreadth” – a First Amendment principle that a law that has a negative impact on free speech is invalid, if that impact is broader than necessary to protect the government’s policy goal – in this case, preventing alien smuggling.
The question before the Court: Is the 1952 law against alien smuggling unconstitutional because it punishes the use of speech or communication to encourage illegal entry or residence in the U.S.?
Significance: Although the outcome of this case will be important to government efforts to deal with alien smuggling, the constitutional principle at stake is considerably broader. Many laws, federal and state, make it a crime to encourage others to commit crimes – for example, a whole series of crimes against group conspiracies and many crimes of “aiding and abetting” others in criminal conduct. Perhaps most of those could be affected by what the Supreme Court decides here.
When the Court ended its review of the earlier case, because of a procedural defect, it did comment that the doctrine applied by the appeals court to strike down the smuggling law was “strong medicine” that should not be used casually.
The outcome of this case is probably predictable – overturning the lower court and saving the law. The defense lawyers for the man involved have attempted to head that off, by focusing on the fact that the doctrine was applied in this case only in the specific situation in which the punishment was significantly harsher because he allegedly took his actions for commercial gain. That, they contend, meant a significantly greater harm to his First Amendment rights.
On Tuesday, the Court will hold two hearings on issues of criminal law: one will attempt to clarify where federal trials may be held, and the other is a test of when multiple prison sentences may be stacked on top of each other – that is, to be served consecutively rather than joined for serving together.