Warren E. Burger: Arguments next in Number 70-5388, Loper against Beto. Mr. Cabaniss you may proceed.
John T. Cabaniss: Mr. Chief Justice and may it please the Court. This case involves the constitutional rights of a criminal defendant in circumstances where he has been affected by a collateral use of prior convictions, presumably void under Gideon. In this case, the collateral use was impeachment of testimonial credibility. Loper was convicted in November of 1947 in Harris County Texas of the offense of statutory rape of his eight year old stepdaughter. At his State Court trial, the prosecution's witness, the only one to identify Loper as the violator was Betty Fay Dorothy and she indicated he was guilty, he did it. Otis Loper took the stand to testify in his own defense. He denied complicity, denied guilt of the offense and on cross-examination, the State was allowed by the Court to elicit from him details regarding prior convictions that he had suffered in the States of Mississippi and Tennessee. There were four prior felony convictions in all and the State brought out the details as to the term of those offenses, where they occurred, that they were all for burglary. In the District Court the hearing below, evidence was introduced regarding these prior convictions. This evidence consisted both of the testimony of Loper as for circumstances surrounding those convictions and also consisted of certified records that have been obtained from the Courts in those proceedings which reflected in most instances that the defendant had appeared in the person or he appeared in his own proper person or otherwise silent regarding the presence or absence of counsel. It is Loper’s contention that the evidence thus introduced, un-contradicted by the State renders those convictions presumably void under the mandate of this Court in Gideon.
William H. Rehnquist: Mr. Cabaniss, Judge Connelly found as a fact in the District Court that he refused to believe Loper’s testimony that he had not been previously represented?
John T. Cabaniss: He certainly did Your Honor.
William H. Rehnquist: In the Fifth Circuit?
John T. Cabaniss: And he refused to believe anything Mr. Loper said, there is no question about that.
William H. Rehnquist: So you are asking us to offset that factual determination?
John T. Cabaniss: I am, Your Honor on this basis. Other Courts have indicated in similar circumstances that it seems where the defendant, the one who is convicted introduces testimony to the fact that he did not have counsel, was not represented by a counsel and then he introduces evidence to corroborate that testimony, in this case, certified records of the State Court proceeding, we would contend that those records are sufficient to carry his presumption that he in fact was not represented by a counsel and he had not waived his right to counsel. And that the Trial Court’s action in disregarding that, the fact that the burden then shifted to the State to prove that he had waived counsel, we believe that cannot be upheld, that is out contention.
Potter Stewart: We have granted certiorari on this case that we give it a limited grant of certiorari?
John T. Cabaniss: Yes sir. You did, Your Honor. There were seven points, in all there were six points I believe, raised in the petition for cert. This is the only one upon of which the petition was granted. The --
Potter Stewart: Right and do you say this is the only one. What is the -- specifically as to the question on which we granted?
John T. Cabaniss: The issue presented Your Honor is whether on the facts presented by this record.
Potter Stewart: Are you reading this now from the petition for certiorari?
John T. Cabaniss: No I am not.
Potter Stewart: I am asking you to be quite specific, if you will.
John T. Cabaniss: The -- does the use of prior void convictions for impeachment purposes deprive a criminal defendant a due process of law where their use might well have influenced the outcome of the case.
Potter Stewart: Under that question, it is not open to us to decide whether not the prior convictions were void, is it?
John T. Cabaniss: Well Your Honor, I had believed that why --
Potter Stewart: I have got to be of help to you not --
John T. Cabaniss: It seems to me Your Honor that again we are proceeding in this case, we have throughout from the beginning proceeded on the basis --
Potter Stewart: Much the way decided it -- Taken case to grant certiorari on was whether not the use of prior void convictions for impeachment purposes violated the rule against Burgett against Texas, is that it?
John T. Cabaniss: I will proceed to that question Your Honor. Mr. Justice, excuse me.
Potter Stewart: We did not decide the Taken case of whether or not the issue or to consider the issues of whether or not these prior convictions were void. We limited the grant of certiorari, did we not?
John T. Cabaniss: I am sorry I did not understand your question Mr. Justice.
Potter Stewart: I see.
John T. Cabaniss: I will proceed to the question of Burgett. We have – we had utilized Burgett in the District Court and in the Fifth Circuit without success. We had contended throughout that the Burgett rationale applies to Mr. Loper’s circumstances and that the use against him of the prior void convictions to impeach his testimonial credibility was a violation of that rationale. Now, the State contends and the Fifth Circuit has held that we go too far, that impeachment, that Burgett itself involved enhancement of punishment and that impeachment of testimonial credibility is not -- it goes only to credibility. It is not merely so serious as enhancement which may add years of imprisonment to the sentence of a defendant. But there are number of factors we have relied upon in asserting that Burgett is not so limited. Most importantly, although Burgett did involve convictions of alleged in recidivist counts, it involved four prior convictions alleged and a Texas indictment. The fact of the matter is that Burgett itself involved no enhanced punishment. The evidence introduced indicated that the Texas conviction was void on its face. It was -- as our (Inaudible) was never introduced, the Tennessee conviction, it was introduced in evidence, was held to be presumptively void. The Court withdrew all evidence of those and instructed the jury not to consider the prior convictions for any purpose. The defendant Burgett was convicted and he was sentenced to ten years imprisonment, the maximum for the offense involved was 25 years. So we submit that the constitutional precept that was established was on the facts of Burgett, not one that was limited to a situation where enhancement occurred as the State and the Fifth Circuit would have us believe.
Warren E. Burger: Well, in the Burgett case what was the purpose of the introduction of the prior convections, let us forget the consequence for the moment, what was the purpose of their introduction?
John T. Cabaniss: The purpose Your Honor was under recidivist counts.
Warren E. Burger: Yes, to enhance the punishment.
John T. Cabaniss: That is correct.
Warren E. Burger: Now, whether the jury did or did not apply it that way is as you suggest is really not the issue, is it?
John T. Cabaniss: The point, I would make Your Honor though is it seems to me that in the absence of enhancement, the result in Burgett was that the jury was aware in its deliberations upon the primary substantive issue of guilt of four prior void convictions. Now, what difference does it make if that was done under enhancement counts or if it was done to impeach the credibility of a witness who took the stand to testify in his own defense. If the convictions were void and the jury is made aware of those convictions then rationale applies to permit a conviction obtained in violation of Gideon against Wainwright to be used against a person either to support guilt or enhance punishment for another offense is to erode the principle of that case.
Potter Stewart: The petitioner was the only defense witness, was he not?
John T. Cabaniss: That is correct Your Honor.
Potter Stewart: And daughter or stepdaughter was the only prosecution witness as to the --
John T. Cabaniss: No, Mr. Justice. The prosecution also put on medical testimony from a Doctor Weber (ph) which simply established that apparently an offense had occurred and he stated it was appeared to be relatively recent.
Potter Stewart: And the -- did the jury set the sentence here?
John T. Cabaniss: I believe so Your Honor, 50 years.
Potter Stewart: That might be of some importance.
John T. Cabaniss: I believe the jury did make the sentence, Mr. Justice.
Potter Stewart: But within what bounds of discretions, do you know?
John T. Cabaniss: Two years to death.
Potter Stewart: Two years to death and the jury said 50 years and then on the text of procedures the trial judge, the sentencing judge obligated to take the jury’s assessment of the sentence.
John T. Cabaniss: Mr. Justice, I am not aware of the answer to that question.
Potter Stewart: This case did.
John T. Cabaniss: I believe that is the answer. I think he was convicted by the jury and sentenced.
Potter Stewart: The jury could have sentenced him to his -- even on fact finding ability to a short term as two years?
John T. Cabaniss: I believe that is the minimum in Texas for that offense.
Potter Stewart: So it is your submission that both branches of Burgett are involved here and those -- the finding of guilt and the imposition of the sentence, the enhancements of --
John T. Cabaniss: The fact that it was harmful, that's what Your Honor. To proceed with the fact of impeachment, Mr. Chief Justice has raised the point that they were in an enhancement context, but we have tried to pull it out that we have a criminal defender who takes the stand in his own behalf. His credibility is a material factor to his guilt or innocence. If his credibility is attacked by evidence of prior convictions that are void under Gideon, such that the guilt was not there reliably determined, the argument must be made that any conclusion of untruthfulness by a jury of the impeached witness is equally unreliable. So it seems to us to follow that the impeachment evidence of that nature tends directly or indirectly to support guilt by causing the jury to disbelieve the testimony of Loper and then proceed along the lines where the prior void conviction is used for that purpose then the defendant clearly under Burgett suffers anew from the deprivation of that Sixth Amendment right. Now we are supported in our conclusion as to the meaning of Burgett by a number of cases. They are cited in the brief and they are applicable to impeachment not just enhancement situations, I note in particular Gilday against Scafati which one of the first to the First Circuit, was one of the first to -- its opinion is particularly lucid. Also the Ninth Circuit in Tucker against United States, I note that this Court on Monday of this week, disposed of that case by remanding in a situation where the sentence had been, I wouldn't say enhanced, it was the maximum sentence, they had reversed because of the possibility of prejudice resulting from prior convictions there involved. We are not disparaged by that case at all.
Potter Stewart: Well, I should not think you would be.
John T. Cabaniss: We are not.[Laughter Attempt] The State --
Potter Stewart: Do you think that case bears on this probability?
John T. Cabaniss: No, Your Honor, except from the standpoint that I would certainly -- I like the language about the sentence being based upon this information of the constitutional magnitude, I would like to utilize that one concept.
Potter Stewart: Well, is not -- in that case the Court of Appeals for the Ninth Circuit as you have just told us disagreed with the Court of Appeals for the Fifth Circuit in the present case.
John T. Cabaniss: That is correct Your Honor.
Potter Stewart: We did not indicate any disapproval that we have the Ninth Circuit’s view then went on to find it was harmless error in that case.
John T. Cabaniss: The Ninth Circuit specifically decided that Burgett included impeachment, but did on the facts presented by that record to go on to determine that it was there harmless error.
Potter Stewart: And we have affirmed the judgment?
John T. Cabaniss: That is correct. The State in its brief cites two cases that I must mention. These cases are Harris against Nelson and Walder against United States. These were impeachment cases and the State asserts that these can be relied upon as limiting the application of Burgett. It should be kept in mind that this is not a case where the defense counsel is part of its trial strategy, interviews the invalid prior or interviews the prior convictions to soften the blow so to speak, that is often done nor is this a case for the record will show that Loper, to boast for his credibility denied that he had never been convicted of crime on direct examination. The first time these convictions were brought out was by the State in its cross-examination and it is then on this basis that neither Harris nor Walder would conclude that Burgett would not apply to the impeachment context situation -- Harris and Walder were both concerned with situation of perjury.
Warren E. Burger: But there was no occasion in 1947, when this man was tried, I suppose for him to have any reason to challenge the nature of the convictions, was there?
John T. Cabaniss: Not at all Your Honor. The right was not yet decided and that is of course the reason why it would be fruitless to search the record for an objection on the constitutional basis here involved. The District Court pointed that out.
Warren E. Burger: But your contention is that when you are in the District Court now in 1970 or 1971, 1970 when you were there on the habeas corpus proceeding.
John T. Cabaniss: 1969, Your Honor, Mr. Chief Justice.
Warren E. Burger: 1969 was it, that at that time you do not have the burden of proving that the convictions were obtained without counsel, that you merely establish it by his testimony that he did no have counsel.
John T. Cabaniss: Mr. Chief Justice, I did not mean to imply that the testimony of the defendant as to those facts is all that is needed, I do not believe that is the case. I am saying that in this instance, that was not all that was introduced. The testimony that Loper gave which Judge Connelly discredited was, we would like to -- collaborated by the certified records introduced at the trial reflecting --
Warren E. Burger: Yes, I have heard what you had to say about them would you -- are you telling us that that strong collaboration or solid collaboration of that testimony?
John T. Cabaniss: No, Your Honor, well it is -- I am saying that it is corroboration. The aspect is that we are not -- we do not have a record like Burgett had, one in which there were two versions of a conviction in Tennessee which were cited in one of them that the defendant -- the candidate's prosecutor and the defendant in person and without counsel and the second version being simply the defendant in person. We do not have two entries involved here, but all of the entries involved, none of them recite that he appeared with counsel and it can be fairly inferred from at least one and perhaps others that the wording used reflects that he did not have counsel. For example in the 1940 conviction the entry that would appear was -- came the district attorney who prosecutes for the State and came also the defendant in his own proper person, both of whom announced ready for trial.
Warren E. Burger: Well, is it possible that if we agreed, if we decided to the single question presented here in your favor, namely that a prior conviction now void under Gideon may not be used for impeachment? Suppose that rule was established, could we decide this case, resolve this case without sending it back to have a determination of the status of those convictions, four prior convictions
John T. Cabaniss: Your Honor, under the principle that I have put forth a little bit earlier, I would admonish the Court that perhaps it could. What I am suggesting is, is that although Judge Connelly discredited his testimony the rights involved here were spoken about in Burgett in no uncertain terms. The records in this case are similar to the record that was introduced in trial in Burgett insofar as the in person aspect. The records do not state one way or the other whether there was or was not counsel. The Court might determine that in circumstances where the defendant has suffered this conviction has suffered impeachment or enhancement contrary to the dictates of Burgett and where he introduces in addition to his testimony records that are silent concerning either the existence of counsel being there or any waiver of counsel, if that is sufficient under the circumstances to shift to burden. I was speaking about Harris and Walder. I only pointed out that it seems to me they are distinguishable clearly as Mr. Chief Justice said in Harris, it does not follow from Miranda that evidence inadmissible on the prosecutions’ straight case in chief for all purposes provided of course that the trustworthiness of the evidence satisfies legal standards. We would suggest that the Miranda violations there involved in the illegal search and seizure in Walder are different from the Sixth Amendment rights here involved with respect to the prior convictions which are inherently unreliable. They are not trustworthy. In addition the other basis of course is the fact that both of those cases, this is not one where Loper sought to commit perjury or he testified to try to boast his credibility of never having been convicted prior to that time, so that does not furnish a basis that no perjury was involved. The State at one point has pointed out that this case should not be reversed for the -- from the standpoint that there was no prosecutorial misconduct involved here. I was simply note in passing that I believe this issue is disposed of by Chief Justice Warren in his concurrence in Burgett in which he noted that it is not simply errors based upon misconduct that can be reviewed by this Court. It is the effect of those errors whether well intention or not on the constitutionally protected the rights of the criminal defendant which is all we are concerned with here. I would like to speak to the issue of the harmless of the error that was involved. As I previously pointed out there were two and this is for the prosecution in this case, but the only testimony relied upon to establish Loper as the violator of this offense was that of the 8-year old child, Betty Faye Dorothy. Loper took the stand --
Warren E. Burger: Are we concerned that the factual issue on that score now under the question, limited question of this grant?
John T. Cabaniss: It seems to me Your Honor that the last part of that question whether use might well have influenced the outcome of the case, it occurred to me that that might indicate that the Court would consider whether or not in the circumstances here presented, the prior convictions introduced did in fact influenced the jury in its determination. I am suggesting most certainly that they did. It was a -- in essence it was a case that was built upon a credibility determination. If the jury had believed Loper’s verdict of the facts that occurred that morning, they would have been compelled to acquitting. They did not believe that they would have convicted him and in that background, the prejudice, the influence that resulted from introduction of the invalid priors before the jury that refers to the details of the offenses in that posture on cross-examination at that time, it seems to me that there is no way to conclude that the error involved was harmless error, that it was not harmless beyond a reasonable doubt.
Byron R. White: Well, was each one of the priors attacked?
John T. Cabaniss: No, Your Honor.
Byron R. White: And how about in the -- how about in this record? Is there evidence of the invalidity of the prior?
John T. Cabaniss: There was one prior --
Byron R. White: Was not one other --
John T. Cabaniss: -- prior conviction, 1932 conviction on the name of Milton Cummings as to which there is no evidence in the record at all.
Byron R. White: No evidence and for what was that conviction?
John T. Cabaniss: The conviction was for burglary, Mr. Justice.
Byron R. White: And the five year penalty?
John T. Cabaniss: No sir. Two years.
Byron R. White: Two years, so that -- there is not attack on that?
John T. Cabaniss: No. There is no challenge in the record. No record at this time.
Byron R. White: And he was impeached on that as well as three other?
John T. Cabaniss: Yes, he was.
Byron R. White: And in connection of one of the others, the record is silent as to whether he was (Voice Overlap) --
John T. Cabaniss: That is of 1931 conviction in (Inaudible) Mississippi at which time he was 17 years of age, the sentence was six months. That was the earliest conviction.
Byron R. White: That is the record is silent. On the other two he said he appeared in his own person.
John T. Cabaniss: That is correct. One said in person and one said in his own proper person, that is correct. The State apparently in its brief as to this latter point, the harmfulness of the error would argue that the State was only obligated to establish a prima facie case and it did so and that therefore there was no harmful error. But in doing so it would also place the burden upon Loper to show that the error was harmless error or that is that was -- where burden proof is issued upon Otis Loper. That as I construe the cases it is certainly not the case. The State benefited from the transgression and accordingly, it has to prove to show that the tainted evidence that was introduced to the jury did not effect or influence the jury’s verdict. We do not believe that it here can. May I save time?
Warren E. Burger: Very well Mr. Cabaniss. Mr. Darden.
Robert Darden: Mr. Chief Justice and may it please the Court. The petitioner has misrepresented the question and issue presented to the Court now for review. In the 1947 trial for rape, the State on cross-examination had Otis Loper to testify about four prior convictions. Three in the State of Mississippi, one in the State of Tennessee and this was for impeachment purposes. Now all four of these convictions have become final and there has never been any effort to set any of these cases aside. These convictions were valid for all purposes and will remain valid until set aside by the proper closed conviction of state or federal proceedings.
Byron R. White: Well, why is this not a proper proceeding in which to set them aside?
Robert Darden: Your Honor, the -- getting to this in the District Court in 1969, the writ of habeas corpus that was filed was just to get relief from the 1947 Texas conviction.
Byron R. White: And -- but underlying that claim was invalid prior?
Robert Darden: In this, he asserted that the four prior convictions were void.
Byron R. White: Were here that -- excuse me -- was that not -- excuse me and he introduced evidence to -- as much as he had to prove that, namely about two of them, the transcript to the proceedings or the docket entries, about three of them, he did that?
Robert Darden: Yes.
Byron R. White: And nothing about the fourth?
Robert Darden: That is right, Mr. Justice.
Potter Stewart: Was that not true in Burgett that they have not been officially set aside by some other and conclusively set aside by some other Court before the proceedings begin in Burgett, is that not true?
Robert Darden: Yes, Mr. Justice. However, in our position --
Byron R. White: So again, why could not the Court here have said, well, these -- we find or the Court finds that these priors were -- prior convictions were invalid since he pleaded guilty or was convicted without counsel?
Robert Darden: Well, as was held by the District Court, the District Court's said that the convictions were valid.
Potter Stewart: Alright.
Robert Darden: Fifth Circuit pointed out in their opinion that since the passing of Gideon versus, I mean, the handing down of the Gideon versus Wainwright which was six years prior to his going to trial in 1969, he had done nothing towards getting this removed from his record.
Potter Stewart: But under Burgett, he did not have to? In Burgett he had done nothing either?
Robert Darden: That is true and we are saying Burgett does not apply.
Potter Stewart: Well it bears on the point you are now making, does it not? Maybe the overall decision does not apply, but in Burgett there - he had done nothing independently until he initiated the Burgett litigation to assert that the priors were invalid, is that not true or am I mistaken?
Robert Darden: Yes sir. You are correct.
Potter Stewart: Yes.
Robert Darden: In that particular case, what I understand, this was used for enhancement and in order for them to bring in the original indictment, they also alleged the two or three priors which was a part of this proceeding. In our case this was for impeachment purposes alone and it was not necessary to show, although that these were valid convictions. And in the State of Texas, at that time it was permissible to impeach any witness that took the stand on prior convictions or indictment, information or complaint. So in this particular case if they had only brought in the prior indictments which he would not have had an attorney either, we could have been impeached him in Texas in 1947. This law was not changed until 1951.
William H. Rehnquist: In Texas then you do not have to show a final judgment of conviction or at least you did not at that time to use for impeachment?
Robert Darden: In 1947, no, Mr. Justice.
Thurgood Marshall: So in 1947, if a man was indicted and acquitted, he has to show to indictment?
Robert Darden: Yes, Mr. Justice.
Speaker: And there they got to it first?
Potter Stewart: But whatever -- whatever you could have shown, the fact is here, you did purport to show previous convictions, is that -- not as just indictment, you did not say they indicted for this, actually you said you have been convicted out of you -- through cross-examination, is that not correct?
Robert Darden: Yes, Mr. Justice.
Thurgood Marshall: And you say the difference between doing it in this case and when it is solely for enhancement, is that right?
Robert Darden: Yes, Mr. Justice.
Thurgood Marshall: What is the difference when a jury thinks the time of sentence, what would that be?
Robert Darden: Well, this is -- our contention --
Thurgood Marshall: In a case, is it true from two to life, two years or life in this case?
Robert Darden: Two to death.
Thurgood Marshall: Two to death?
Robert Darden: Yes, Your Honor.
Thurgood Marshall: And the jury can fix him two to death and if they got different from where the jury can enhance the sentence?
Robert Darden: It is amended to enhancement. If they find that prior convictions, rather it is mandatory.
Thurgood Marshall: Mandatory, but this is permissible?
Robert Darden: Yes, Your Honor.
Thurgood Marshall: And he did get 50 years?
Robert Darden: Yes, Your Honor.
Potter Stewart: Are you familiar with the Tucker case decided this week?
Robert Darden: No, not the decision, I think I have read this prior to this.
Potter Stewart: Well, if you read the Court of Appeals decision that was affirmed here this week by this Court and that held that the -- that decision of the Court of Appeals affirmed here, required that the case go back for re-sentencing because the sentencing body in that case, the judge had -- he gave consideration to prior convictions that were invalid under Gideon against Wainwright. Now, here the sentencing body was the jury and it certainly had before it these prior convictions, did it not?
Robert Darden: This is true, Your Honor.
Potter Stewart: So that assuming what I say is correct description of the Court of Appeal’s decision in Tucker and this Court’s decision, would you not think that at least this should go back for re-sentencing and under Texas procedure I suppose that means a new trial because the guilt, the jury does -- performs both functions in Texas, is that right?
Robert Darden: Yes, Your Honor.
Warren E. Burger: Does it -- the jury still perform the function of the sentencing as it did in 1947 when this case was tried?
Robert Darden: Well, the statute has been changed to permit the petitioner or the defendant to make a request to have a dual trial or to have the judge sentence him depending on what he wants to do.
Warren E. Burger: Oh! If it were sent back for re-sentencing now, what would be the mechanism of re-sentencing under present Texas law?
Robert Darden: In essence, probably he would be given another trial or permitted to plead for any sentence less than 50 years.
Warren E. Burger: He would have the option of a trial on penalty only?
Robert Darden: Of the -- yes sir. What we are saying that Loper is trying to accomplish both from the lower courts and in this Court, well in the lower court is that this Court being petitioned to set aside the Texas conviction and the three Mississippi convictions and the one Tennessee conviction. Respondent submits that this Court in considering this question presented by the petitioner must assume or they must void the Mississippi convictions, the Tennessee convictions and in order to reach the question presented. The question presented and that which the Court has been requested to consider is purely hypothetical, there is no case in controversy involving the prior void convictions for impeachment purposes, the prior convictions involved were valid and remain so until set aside the proper proceeding. Under the argument of appointment of counsel prior to Gideon versus Wainwright which was decided in 1963, the State of Tennessee and the State of Mississippi required appointment of counsel for indigents upon request and the record is silent in this case as to whether or not Loper was indigent and that the Court had knowledge of this and the record is silent as to whether or not he had made a request and that this request had been denied. On the point of impeachment, Otis Loper took the stand to deny the assault. He also denied that anything was wrong with the complaining witness, when he left for town and that if anything had happened to the complaining witness, this was done by the Maggie boy (ph). In this, we feel that Harris versus New York is applicable in that when a defendant takes the stand to testify, he is to stay with the truth and be accurate. Not only did Loper deny the assault, but it also gave an alibi that nothing was wrong with the complaining witness which we found not to be true on the testimony of Dr. Weber and also that if anything had happened such as the assault, it was the Maggie boy.
Warren E. Burger: Well, here in this case there was no challenge to the impeaching material. The Harris case was one in which the very material used to impeach him was being challenged and was at issue. I have difficulty seeing how this is like Harris.
Robert Darden: Well --
Warren E. Burger: They both happen to involve impeachment?
Robert Darden: One was using the statement, prior statements that did not come under Miranda.
Warren E. Burger: That is right.
Robert Darden: And if we used the same logic here, we are talking about un-counseled convictions introduced to impeach a witness at the State -- in the stand.
William J. Brennan, Jr.: Mr. Darden, I wonder if I correctly understood your answer to the Chief Justice when he asked you if this went back for re-sentence, what the procedure is that now would be applied, what did you say was --?
Robert Darden: It would depend on what the defendant wanted to do. Whether or not he wanted to plea for a lesser sentence or wanted a new trial.
William J. Brennan, Jr.: Your mean that if -- it is proper to say it had to go back for a re-sentence, the petitioner would have the option to say, I want a new trial rather than (Voice Overlap)
Robert Darden: Well this would be -- Your Honor I think --Mr. Justice this would be worked out with his attorney, him and the prosecutor.
William J. Brennan, Jr.: But he has a choice, although we send it back only for re-sentencing, he has the choice of having a new trial, is that right?
Robert Darden: I think this is right based on the agreement between counsels.
Byron R. White: Well, yes, let us assume that we said that constitutionally his sentence cannot stand, but the verdict of guilty may and all Texas has to do is to is to re-sentence him?
Robert Darden: And this would be a nunc pro tunc judgment in it.
Byron R. White: Well, the sentence would be invalid, but with conviction would not be. Let us assume the Court held that. Would Texas -- under Texas law, would he have to have a new trial under --
Robert Darden: No.
Byron R. White: -- procedures just for re-sentencing?
Robert Darden: No. This could Your Honor, could come under nunc pro tunc judgment.
Speaker: An appearance before a judge, the sentence was up in this (Inaudible)?
Robert Darden: Yes sir.
Warren E. Burger: He has been paroled now in this?
Robert Darden: As of September, yes, Your Honor.
Lewis F. Powell, Jr.: Mr. Darden, do I understand you to say that one or more of prior convictions (Inaudible) in the record in this has not shown whether or not disposition of -- waived the right of counsel?
Robert Darden: This is correct, Your Honor. There is nothing in the record that show that he even made the request as required in the State of Tennessee and in the State of Mississippi at that time or that he was indigent and that the Court had knowledge of it.
Lewis F. Powell, Jr.: That is not (Inaudible)?
Robert Darden: Well, he came in, in the hearing in 1969 in Houston in the District Court and said that he could not afford an attorney, but the cases in the statute in Tennessee and Mississippi which is pointed out in my brief, states that they have -- have knowledge of his indigents and that he makes a request for counsel, this the record is silent on.
Lewis F. Powell, Jr.: There was no evidence that as to whether or not he was offered counsel and intelligently annoying they waived the right to counsel?
Robert Darden: The record is silent.
Lewis F. Powell, Jr.: Is silent on that?
Robert Darden: Yes, Your Honor.
Potter Stewart: Well, what did he say? Did he say anything about that at the habeas corpus?
Robert Darden: The only think, as I remember Mr. Justice that he did not waive counsel, he did not have funds to employ a counsel.
Potter Stewart: So that record does contain?
Robert Darden: Well, this is just a statement in the District Court from that standpoint.
Potter Stewart: Right, under oath, I assume?
Robert Darden: Yes. But the District Judge did not believe any of his testimony and held that these convictions were valid.
Potter Stewart: Of course the Court of Appeals did not -- it's a little ambiguous, the Court of Appeal’s opinion, but the Court of Appeals did proceed to decide the legal question, did it not? It just said we are not -- and we did -- we hold that these prior convictions even if invalid can be used for impeachment purposes?
Robert Darden: Yes.
Potter Stewart: Did it not?
Robert Darden: We might add under the impeachment, any time a witness takes the stand, his character is an issue. The federal rule as I have said permitted prior convictions for impeachment purposes in Texas in 1947, permitted much further.
Warren E. Burger: But Mr. Cabaniss though is raising perhaps some alternatively a narrower question and that is that in a case such as in Texas in 1947 where the jury imposes the sentence rather than the judge has in most of the jurisdictions, but in Texas in those circumstances, then the evidence of impeachment falls within the reach of what the Courts have said is not permitted, that it goes to enhance the punishment or at least he argues that no one can say that it did not increase the punishment?
Robert Darden: We take the position that it did not, Mr. Chief Justice, based on the facts. In their brief, they point out that only the eight-year old is the only one that implicated Otis Loper, the defendant. Unfortunately, in these type of sex crimes there is only two people around, but she also testified that this is the same thing that he had done the year before when she was living with her grand parents in Alabama and that he threatened her and she did not tell them what had happened and finally told them that she had fallen on stick to hurt herself. This is the testimony came out and with this along with the fact that he was not be, the jury has now that a prior offense had happened which could justify the 50 years. Only thing he did was “no I did not do it,” but if it happened, the Maggie boy did it. There is nothing in the record that shows that the Maggie boy was even present at that house on August of 1947 or that the boy was present that Friday before. It is our position that he has not attacked or removed these convictions in the proper court by going back to the convicting court. Therefore, the ruling in the State, I mean, in the Federal District Court and the Fifth Circuit should be upheld.
Warren E. Burger: Thank you, Mr. Darden. Mr. Cabaniss do you have anything further?
John T. Cabaniss: One thing, Mr. Chief Justice. I want to correct what may have been a misimpression or maybe I am not reading the Court correctly. You have spoken about sending the matter back for re-sentencing which appears to me to be an indication of limiting the concept to Burgett to one which in fact is restricted to the situation of enhanced or increased punishment. As I have tried to indicate, I read Burgett more broadly than that and it appears to me that re-sentencing would not be satisfactory in a circumstance where the invalid tainted evidence introduced might have affect to not only the sentencing of Otis Loper, but also his conviction of guilt on the primary offense. It seems to me in that posture that the required relief is not re-sentencing, but avoidance of the conviction and I simply wanted to bring that - -that point forward in case I have not made myself clear.
Thurgood Marshall: On the retrial, do you have any idea where this complainant witness might be as of now?
John T. Cabaniss: No, Mr. Justice, I do not. I am not even sure where Mr. Loper is now.
Thurgood Marshall: She was eight-years old in 1947, right?
John T. Cabaniss: That is correct.
Speaker: Mr. Cabaniss, do I understand that he is now on parole?
John T. Cabaniss: Yes Mr. Justice he was paroled and it is my understanding he is now working in Galveston, Texas.
Speaker: Have you anything to say about what procedure might be on re-sentencing if that were the limitation upon which it was sent back?
John T. Cabaniss: No Mr. Justice, I do not. I am not -- but would be used. I would assume though -- I would believe that Texas does have procedure in a case like this for re-sentencing without --
Speaker: Without a new trial on the --?
John T. Cabaniss: That plenary hearing without full consideration of the matter. Does the Court have further questions?
Warren E. Burger: Mr. Cabaniss, you acted at the request of the Courts and by appointment of the Court in this case.
John T. Cabaniss: Yes Your Honor.
Warren E. Burger: And we want to thank you for your assistance for the Court and of course your assistance for the client you represented here.
John T. Cabaniss: Thank you.
Warren E. Burger: The case is submitted.


Earl Warren: Number 55, United States, Petitioner, versus Bert N. Adams, et al. Mr. Douglas.
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 --
Byron R. White: (Inaudible) all of the -- that was in that anode?
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.
Potter Stewart: Which findings are these which you tell us?
John W. Douglas: The findings of the Court on the contributions of Adams of the unique nature I believe are finding 22 and 23.
Speaker: What page?
John W. Douglas: Page 704 of the printed record.
Potter Stewart: Page 31 and 32 of your petition for certiorari?
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.
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?
John W. Douglas: I'll agree with that.
Potter Stewart: You think the newness or lack of it of the result has -- is basically irrelevant to the quality of invention?
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 --
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?
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 --
Byron R. White: Moving aside from the electrolyte or anything else?
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.
Earl Warren: Mr. Reilly.
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 --
Speaker: This is not Skrivanoff?
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).
Speaker: The water is difficult.
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.
Speaker: (Inaudible)
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 --
Byron R. White: So this battery actually works, the one he brought to the army?
John A. Reilly: Oh yes!
Byron R. White: I thought somebody had to give him a little -- had to inclose a little bit.
John A. Reilly: I beg your pardon Mr. --
Byron R. White: To the one he actually brought in worked, right then and there.
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.
Speaker: Excuse me.
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 --
Byron R. White: Now, are these results still unexplained?
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.
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?
John A. Reilly: That's correct. Mr. --
Potter Stewart: (Inaudible)
John A. Reilly: (Inaudible)
Potter Stewart: Is it still accepted that magnesium is not soluble in water?
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.
Earl Warren: Mr. Douglas
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.


Earl Warren: Number 35, Lloyd Barenblatt, Petitioner, versus United States of America. Mr. Ennis, you may proceed.
Edward J. Ennis: Mr. Chief Justice, Associate Justices of the Court. This case comes here on a writ of certiorari through the Court of Appeals for the District of Columbia Circuit to review a conviction in affirmance of the conviction of a witness for refusal to answer questions before a -- before the House of Representatives Un-American Activities Committee. The Court of Appeals heard this case the first time by one division of the Court and this Court grants certiorari but returned the case for further consideration of the Court in the light of the decision in the Watkins case. The Court upon the remand, all of the judges heard the case en banc, and in an opinion by Judge Bastian of which Judges Prettyman, Miller, Danaher and Burger confers. The majority of the Court held in the light of Watkins that the conviction should stand. Chief Judge Edgerton and Judge Bazelon wrote a dissenting opinion in which they said that they read the opinion of this Court in the Watkins case as a ruling that the mandate, the charter, the resolution of Congress to this Committee conferred no power to investigate any subject. And the second ground of the decision was if the resolution could be construed as conferring power to investigate some subject, it could not be construed as conferring power to investigate the subject of communism in education. Circuit Judges Fahy and Washington wrote a very short separate dissent in which they relied wholly on the proposition that in the light of both Watkins and Sweezy, the mandate of the Committee did not authorize an investigation of communism in education. Judge Washington who had -- who had agreed with the original decision, he in the light of the Sweezy and Watkins cases joined the dissenting opinion of Judge Fahy. Now as to the facts of this case -- of this case which I can state very simply, Lloyd Barenblatt is not as perhaps the two prior cases, a man active in current affairs in which a committee of government by subpoena chooses to learn about those activities. Lloyd Barenblatt in the spring of 1954 was drawn out of the obscurity of his -- his private employment as an instructor of psychology in Vassar College in New York by the searchlight of the Un-American Activity Committee subpoena which brought him to Washington, a private citizen to testify about his beliefs and activities while he was a graduate student and an instructor -- a graduate student and a -- and a fellow instructing in the University of Michigan some four years before that in 1950. When he received the subpoena in May of -- in -- in May of 1954, he was employed as an instructor in Vassar College. The school term ended about May 15th, after he received the subpoena but before he was called to Washington to testify on June 28th. He had the subpoena, his position as an instructor in Vassar College was not renewed and when he testified on June 28th, he was unemployed. Now when he came to the committee hearing to testify, he found there to testify before him a man even younger than himself, he was 31 years of age in 1954, a man by the name of Francis Xavier Thomas Crowley whom he had known in the University of Michigan. Mr. Crowley's testimony, which begins on page 173 of this -- of this record, he opened the testimony by a statement -- a statement from the Chairman pointing out that Mr. Crowley had been before the Committee on a former occasion. And he had refused to answer any questions, not claiming the Fifth Amendment, he just refused to answer any questions about his activities or affiliations while an undergraduate student at the University of Michigan. And he was unanimously cited for contempt by the House. And his case was then pending when he was called in June, 1954 -- he was pending in the United States Attorney's office, apparently, just prior to indictment. Now Mr. Crowley began his testimony by saying by -- and I might -- it becomes relevant at the top of page 175, the Chairman of the Committee said that “The field to be covered in this investigation which Barenblatt was to be called as a witness, the field to be covered will be in the main communism in education and the experiences and background in the Party by Francis X.T. Crowley. Now Mr. Crowley testified that his experiences and background in the Party were very simply that in his first year in Columbia College --
Earl Warren: We'll recess now Mr. Ennis.