John Paul Stevens: Mr. Franklin, whenever you're ready, you may proceed.
Jonathan S. Franklin: Justice Stevens, and may it please the court, the patent claim at issue in this case was held to be infringed whenever any doctor looks at a homocysteine test result and reflexively thinks about a basic natural correlation. The result has been multimillion dollar damages and an injunction prohibiting a testing company from conducting important homocysteine tests by any method and for any reason whatsoever. As broadly construed by the Federal Circuit, this claim is invalid as a matter of law for two closely related reasons. It contravenes both of this court's settled proscription against effectively patenting laws of nature or natural phenomena as well as the requirement that a patent must fully and clearly describe, disclose and enable an actual invention and must not sweep so far as to encompass more than what was actually invented.
Anthony M. Kennedy: Is that second point... is that second point definiteness?
Jonathan S. Franklin: The second point is definiteness, it's enablement.
Anthony M. Kennedy: Does definiteness describe this second aspect that you've just--
Jonathan S. Franklin: It describes part of it, Your Honor.
Anthony M. Kennedy: --Just part of it.
Jonathan S. Franklin: There is definiteness, there is enablement, there is written description. We think all of those are contravened here.
Antonin Scalia: Let's examine them. What if it definitely goes so far as to allow no other use of this natural law that it's discovered? It definitely goes that far, isn't definiteness fully satisfied?
Jonathan S. Franklin: I think not, Your Honor, because--
Antonin Scalia: No?
Jonathan S. Franklin: --definiteness would still require that you distinctly claim an invention here and that's one of the things that's absent in this case. But even moving beyond that, Your Honor--
Anthony M. Kennedy: It's indefinite because we don't know where our thoughts will take us? Suppose there a patent which requires looking at the clouds in the sky for 10 minutes. I mean, that's maybe absurd, but it's certainly definite.
Jonathan S. Franklin: --Well, Your Honor, if it is definite, then it is certainly not enabling of an actual invention. And here the Morse case, which we have cited in our briefs, comes into play. In that case, the court held that Samuel Morse was entitled to patent his innovative telegraph but he couldn't go further to effectively patent the law of nature or natural phenomenon associated with it and thereby monopolize all manner of devices and processes that he did not invent and did not enable or describe.
Ruth Bader Ginsburg: But wasn't the issue there what is patentable? I mean this case in the district court was under this definiteness idea, 112. 101 deals with what's patentable. And it seems to me that you, this case was presented as a definiteness case.
Jonathan S. Franklin: But it was not just definiteness, Your Honor. It was Section 112. But let me get to the Morse case because as we have explained in our reply brief and, in fact, in our opening brief, the Morse case was in fact decided under what is now Section 112. The Court cited and quoted the relevant statute which has not changed in any material respect today. The Court made clear that the problem in that case, at page 120 of the opinion, was that Morse claims what he has not described in the manner required by law. And what we have here is the same situation. We have these patentees who are indisputably entitled to patent their innovative method for measuring homocysteine. And LabCorp continues to use that method sometimes and we pay royalties whenever we use that method. But what they couldn't do is what Samuel Morse tried to do and push the envelope, and try to effectively patent the natural phenomenon associated with all homocysteine tests and thereby gain a monopoly over just not the one that they invented, not just those that are in the prior art, which itself would be impermissible, but even yet to be invented assays. And here is the nub of this case. LabCorp has sought to use but has been penalized for using and is prevented from using a more efficient and cost effective method for assaying homocysteine than the one that these patentees invented. The method that LabCorp seeks to use, which is the Abbott method, reduces the processing time for homocysteine tests down from what was up to 18 hours under the patentee's method down to a manner of minutes.
Ruth Bader Ginsburg: Is the Abbott test... that's patented and you're paying royalties for that?
Jonathan S. Franklin: Actually, I don't know, Your Honor. And, I just don't know whether it's patented but it is certainly not covered by their claims 1 through 12, which have never been... well, the district court found that those claims didn't apply here, and that's not an issue. The Abbott method is different. It's an immunoassay. It is not the same kind of mass spectometry gas chromatograph method that they have described. It's much more efficient, it's much more cost effective and the reason obviously that LabCorp wants to use that method is to more effectively serve patients and their doctors and to meet the burgeoning demand for homocysteine tests. But because these patentees have effectively claimed the patent on the natural correlation that's associated with all homocysteine tests, they have prevented LabCorp from using what the patent laws would seek to encourage, that is, a more cost effective, innovative, different method, the kind of thing... exactly the kind of thing that the Court was concerned about in Morse.
Anthony M. Kennedy: The opinion of the Court of Appeals for the Federal Circuit in the appendix begins discussion of claim 13 about page 16a. Are there some, one or two sentences there or a paragraph that you can tell me is completely wrong?
Jonathan S. Franklin: In the Federal Circuit's--
Anthony M. Kennedy: Yes. You're asking us to reverse this court of appeals decision and I'm looking, and particularly with reference to claim 13, the one we're talking about, I assume, and I'm looking through pages, say, 16 and 21 to find something that's absolutely wrong.
Jonathan S. Franklin: --Well, I think what--
Anthony M. Kennedy: You want me to tell the court of appeals, well, you can't do this. But where is it wrong?
Jonathan S. Franklin: --I think where it's wrong, Your Honor, is that it proceeds from an assumption that is wrong in itself and that is--
Anthony M. Kennedy: So you can't point me to any particular sentence that would say that's absolutely wrong?
Jonathan S. Franklin: --I think that the argument in... the Federal Circuit's decision is wrong in its enablement discussion, it's wrong in its written description discussion. I mean, just to take one, the written description posits that this is a valid written description because the inventors, as the Federal Circuit says in its opinion, possessed the correlating step. And I think what's wrong about that, Your Honor, is that nobody can possess the correlation. And that's the nub of this case.
Anthony M. Kennedy: And where does it say this?
Jonathan S. Franklin: I'm sorry, that is at page... I believe it's at 17 of the appendix. Let me just make sure I've got the right... that was where the court talks about--
Anthony M. Kennedy: You see my point? I'm not sure what it is you want me to say went wrong, other than the fact that this patent is, should never have been granted to begin with but that wasn't raised.
Jonathan S. Franklin: --Well, I think it was raised, Your Honor. The validity issue was raised in the district court, it was raised on appeal. The district court had construed the patent as requiring... and part of the district court's claim construction addressed the issue as to whether or not one could patent a law of nature or effectively patent a scientific idea. The district court said this patent must require something more, and that is at joint appendix page 60. It must require something more than simple existence of the relationship between homocysteine and vitamin deficiencies. And one of the places that the Federal Circuit did get it wrong, Your Honor, was in abandoning that limitation that the district court had imposed on the patent.
Stephen G. Breyer: I guess that--
David H. Souter: But you're arguing now, as I understand it, that the reason you win on definiteness is that it sweeps in even as yet uninvented processes.
Jonathan S. Franklin: Yes.
David H. Souter: And it does so by means, in effect, of erecting this umbrella of a natural fact which is intended to cover every process that might be relevant to establishing that natural fact.
Jonathan S. Franklin: Yes.
David H. Souter: So that you're saying we cannot... no court can decide definiteness in this situation without hitting the patentable issue.
Jonathan S. Franklin: Absolutely, Your Honor. That's exactly what we're arguing. And that's where the Federal Circuit got it wrong. And we did in fact urge the Court--
Stephen G. Breyer: --But you told the... you said, judge, if you in fact hold that this claim 13 satisfies Section 112 and is sufficiently precise and specific and concise, if you hold that, then the claim would violate Morse?
Jonathan S. Franklin: --Yes.
Stephen G. Breyer: And you argued that specifically? And so your problem... I guess that you said that. I mean, you quote it in your supplementary brief on page 6.
Jonathan S. Franklin: We did say that. Yes.
Stephen G. Breyer: And it's the language.
Jonathan S. Franklin: Yes.
Stephen G. Breyer: That's what it said. It didn't say Morse. It said Diehr.
Jonathan S. Franklin: Diehr, which--
Stephen G. Breyer: Dier incorporates Morse.
Jonathan S. Franklin: --Yes.
Stephen G. Breyer: As I understand.
Jonathan S. Franklin: Yes.
Stephen G. Breyer: So your complaint about the paragraph on 17a is that it did not deal with that argument.
Jonathan S. Franklin: Yes.
Stephen G. Breyer: But I imagine they'll say that simply mentioning it in an oral argument is not enough to get us to think seriously about it.
Jonathan S. Franklin: Well, it was in the brief, Your Honor, and I think that it was also in, with the premise of everything that we argued, because the district court had already... and again, I point the Court to joint appendix page 60. The district court had already held that it had to mean... the patent had to mean something more than the simple relationship, the simple existence of the relationship between elevated homocysteine and vitamin deficiencies. And the premise of the entire Federal Circuit argument and, in fact, to the arguments below was that we don't know what that anything is, because the patent doesn't tell you. The Federal Circuit blew past that, Your Honor, and what the Federal Circuit said, which makes the issue front and center now, is the Federal Circuit said, and this is at 18a. "The correlating step is a simple conclusion that a cobalamin/folate deficiency exists vel non based on the assaying step. " And what that means is now, as a result of the Federal Circuit's decision, unlike the district court's decision, we now know that every homocysteine test automatically infringes because every doctor will reflexively look at it and think about the phenomenon associated with it.
Ruth Bader Ginsburg: You said both the district court and the court of appeals but you don't think the district court got it right, either. You said the district court required something more.
Jonathan S. Franklin: Yes.
Ruth Bader Ginsburg: What was the something more and why wasn't that adequate?
Jonathan S. Franklin: We don't know and that's why it wasn't adequate. That's why we had always argued under indefiniteness and under enablement, under the written description. We had no idea. The patent doesn't tell you. We suggested one way. That wasn't... the Federal Circuit didn't agree with us. The problem with the district court's... we agreed with the district court's claim construction. That far, we did. But then there was nothing more even adduced at trial, and this was the argument we consistently made. The Federal Circuit then abandoned what the district court did and then we here have at front and center--
Ruth Bader Ginsburg: What the district court did is it got, it tried this case and it got a rather large jury verdict.
Jonathan S. Franklin: --Yes.
Ruth Bader Ginsburg: And I don't understand how you're setting off the district court from the court of appeals when the court of appeals, whatever it said, it affirmed the judgment of the district court.
Jonathan S. Franklin: It did, but the claim construction is the part of what I'm talking about. At page 60, I'll just read what the district court said. "Correlating is a verb and must mean more than the simple existence of a relationship between a high level homocysteine and deficiency in cobalamin or folate. " The Federal Circuit's opinion is contrary to that, Your Honor, and that's where this whole issue gets put front and center now. And what we have here under the Federal Circuit's extraordinarily broad construction is we have nothing more than the reflexive mental recognition of a natural correlation preceded by the inherent and generic step of somehow ascertaining the input for that correlation.
Antonin Scalia: I could see how that broad interpretation would raise perhaps for the... clearly raise for the first time the Section 101 issue. But, so that should have been clear to you by the time the court of appeals decision came out, right? But did you, in your petition here, rely on 101?
Jonathan S. Franklin: Well, we relied, Your Honor, on all of, many, many cases interpreting that provision and others under the law of nature--
Antonin Scalia: You never mentioned 101, though, did you?
Jonathan S. Franklin: --We didn't but just as an example, Your Honor. The court's invitation or, to the solicitor general didn't mention 101, but everybody knew what the court was talking about. And let me just... the petition couldn't have raised... the petition squarely raised the issue. On page 18, we cited Diamond versus Diehr, Benson, Funk Brothers, Mackay Radio and the Le Roy case from 1852. On page 26, we cited, quoted, relied on Funk Brothers and Mackay Radio again. Page 27 refers back to the authorities at page 18 of the petition. Page 28 states that under the Federal Circuit's holding, anyone who claims to be the first to discover scientific correlation could patent it simply by drafting the vague test plus correlate claim. This issue was presented in the petition. It is within the question presented. And, Your Honor, I think that the issue is easy to resolve given the Federal Circuit's broad construction. Under that construction, again, there is nothing more than the recognition of the natural phenomenon preceded by what is the inherent step in any natural correlation of ascertaining the input. And as we have said without contradiction in the opening brief, if this patent is valid, then anyone can gain a patent over a scientific correlation by doing this kind of artful drafting. Einstein could have patented E=MC2 which this Court has stated on more than one occasion could not be patented simply by doing a test plus correlate. To take another hypothetical that was stated in the opening brief without contradiction, if I discover tomorrow a new correlation between having a certain kind of blood type and a medical condition that heretofore people do not know about, I could run down to the Patent Office, patent that correlation and the effect of that would be to monopolize all blood typing, no matter whether it's done through methods in the prior art or methods yet to be developed.
Samuel A. Alito, Jr.: Is it true as the respondents argue that a holding in your favor would call into question thousands of patents?
Jonathan S. Franklin: Well, they don't mention all... the number but I don't think it would call into question a huge swath of patents. It would call into question patents that are like this one, obviously, things that are simply test plus correlate.
Samuel A. Alito, Jr.: And do you have any idea how many there are of those?
Jonathan S. Franklin: No. You would have to do an exhaustive search. There are some and I believe that some of the ones that the respondents cite, some of the claims... and let's distinguish between patents and claims here, because it might invalidate some claims in some patents, which is not unusual because patent drafters often push the envelope. The patentors in this case, they have indisputably unchallenged and valid patent claims for a method of measuring homocysteine, but they went further in claim 13. And to the extent there are other patents that might have those kind of claims, yes. But to the extent we're talking about the broader swath of patents dealing with things like genes, no.
Anthony M. Kennedy: If there is some likelihood or possibility of this that we should assess, it seems to me that it's imprudent for us to discuss it here when it hasn't been discussed in the court of appeals.
Jonathan S. Franklin: I think, well, it was, again, it was pressed in the court of appeals. But again, what we're talking about is deciding this case on its facts and obviously to the extent there are other patents that are just like this one, and the court has addressed this in the context of Flook and Diehr and has distinguished between those patents which facially looked rather similar but the court was able to draw the distinctions. The Federal Circuit can draw the distinctions. But if it is a patent that is simply like this one, which claims nothing more than a natural correlation preceded by the inherent step of ascertaining the input, no court, to my knowledge, has ever upheld such a patent before this case.
Anthony M. Kennedy: You're urging on us something like plain error, is about what you're telling us.
Jonathan S. Franklin: No, I think that we're urging the Court to examine the case that it has before it, look at the patent and we're not asking the Court to go further than this patent. Look at this patent, look at the Federal Circuit's construction and that's something that we will take as a given for purposes of today's proceeding.
John Paul Stevens: When you say this patent, you really mean just claim 13, don't you?
Jonathan S. Franklin: I'm... excuse me, Justice. And again, I wanted, as I was saying to Justice Alito, you do need to distinguish between patents and claims. And claim 13 is the only claim that's been asserted here. It's the only claim that's being challenged. And let me just--
Antonin Scalia: Why shouldn't we do what the Solicitor General proposed, that is, since we don't know for sure, at least I don't know for sure, I'm not enough of a scientist, whether in fact the Section 112 determination, as made by the federal court, excludes all other possible use of this natural phenomenon. Since I don't know that for sure, why shouldn't I tell the Federal Circuit, you know, your definition of correlate raises this issue and you should resolve whether it is true that there is no other possible usefulness for this, no substantial usefulness?
Jonathan S. Franklin: --Quite simply, Your Honor, it's because the Court doesn't need to reach that issue and didn't need to reach it in any of its prior cases save one and that's the Benson case where that issue came up really in one sentence of the opinion. In the Morse case, in the Funk Brothers case, in the Flook case, all of those patents had... were limited to a particular use. Just take Morse's patent which was limited to just conveying information at a distance through electromagnetism. That was actually one very small sliver of what you can do with electromagnetism. It's that, very, very small. And the court said, no, it doesn't matter. Where what you have is effectively the patent on the correlation, it doesn't matter whether you can limit it to one use or many uses. So if the court... so I don't think the Court needs to get into that. In Diehr, the Court made that explicit that a field of use... limiting a patent to a field of use is not going to save that patent from invalidity. Now, if the Court does examine the issue, it ought to do it the way it did it in Benson just by looking at the broad sweep here. And how I would use it, Your Honor, would be to say that in addition to all of the other problems that this patent, as construed by the Federal Circuit, has, it also has an extraordinarily broad pre emptive sweep. It applies to any homocysteine test, no matter how it's done, no matter what reason it's done, no matter if it's in the prior art, no matter if I invent it tomorrow. It applies to any act of even looking at the test. And here it's not just doctors. If anyone in the audience today learns about this correlation because of this argument, if they're listening carefully, and then they go to their doctor and ask for a test, they will, number one, be inducing infringement; number two, if they look at the test result, now being armed with what we have given them, which is the scientific knowledge that the correlation exists, they will infringe. And there was testimony in trial to that effect. So I don't think the Court needs to get into the inquiry. and I don't think the Patent Office really wants to get into that inquiry either, to have to look at each patent application to determine not just based on what's in it whether it's valid but whether there are other uses not even invented yet that might not be covered. That's not, I submit, what the Patent Office would like to do. If I might reserve the remainder of my time.
John Paul Stevens: You may, Mr. Franklin. I think Mr. Hungar is next. Mr. Estrada.
Miguel A. Estrada: Oh, sorry.
John Paul Stevens: You're too hungry, Mr. Estrada. Mr. Hungar?
Thomas G. Hungar: Thank you, Justice Stevens, and may it please the Court. Claim 13 satisfies the written description, enablement and definiteness requirements of Section 112 of the patent act. The patent specification sets forth the scope and nature of the claimed invention in terms readily understandable by a person of ordinary skill in the art and it enables such persons to practice the claimed invention.
Anthony M. Kennedy: So you agree or you submit that you can have a definite description of something that's unpatentable because it's too broad?
Thomas G. Hungar: Well, that obviously assumes the conclusion, Your Honor. But with respect to the definiteness requirement, the challenge seems to be that because the first step of claim 13 is not limited to a particular type of assay but instead claims all assays, that that somehow renders it indefinite, and that argument is simply incorrect as this Court has recognized for over a hundred years. In the Cochrane against Deener case, for example, the Court addressed that question where a process claim was not limited to a particular method of performing a particular step of the process, and the Court said, "A process may be patentable irrespective of the particular form of the instrumentalities used. " And the Court reiterated that principle in the Diehr case.
Anthony M. Kennedy: But, but, but... well, let's assume that there is a claim that includes something that should not be patentable, because it's too broad or it involves the scientific phenomena, the mechanics of the universe. Can a patent still be definite if it includes that sort of unpatentable claim?
Thomas G. Hungar: It can be. It might or might not be depending on the circumstances. The Morse case is an example where it was both indefinite and invalid because trying to claim a principle of nature, in effect. But by the same token you can easily have, and in fact you have here, a claim where it's definite in that persons of ordinary skill in the art understand the scope of the claims. They know what is and is not within the scope of the patent, which is, in this case, a question entirely separate from the question whether, as construed by the Court and as understood by the person of ordinary skill in the art, it's valid, under section 101, that is, under the scope of patentable subject matter.
John Paul Stevens: What do you think about its validity under 101?
Thomas G. Hungar: Your Honor, as we suggested in our brief, we don't think that that question is properly before the Court but that--
John Paul Stevens: Excuse me. But I didn't ask you what you said in your brief.
Thomas G. Hungar: --Yes, Your Honor. But that if the Court were to reach that question, we think that while it's unclear because the issue wasn't litigated, there appears to be prima facie evidence of invalidity under Benson, this court's decision in Benson, because, given what we currently know, it appears that the claim as construed by the court of appeals preempts all substantial practical applications of the correlation. But because that issue wasn't litigated below, if the Court were to reach it, it should remand--
John Paul Stevens: The patent... talking about step 1, you can use any assay method you want. It doesn't have to be patented. But the correlation, step 2, that any time you ask a doctor to tell us what you think the results of the test mean, that that's an infringement?
Thomas G. Hungar: --That's how the court of appeals construed it, yes, Your Honor. I'm sorry. Is that--
John Paul Stevens: And is it possible that that can be patentable, in your view?
Thomas G. Hungar: --Well, again, Your Honor, we--
John Paul Stevens: If you just go to the doctor and ask for advice and he says, yes, I've looked at the results; you've got a vitamin B deficiency or whatever it is--
Thomas G. Hungar: --As we indicated--
John Paul Stevens: --he's committed infringement under this patent as I understand it.
Thomas G. Hungar: --As we indicated in our brief, we think that raises a potentially serious pre emption problem and it also raises the anticipation problem, that is, the section 102 argument which is not before the Court but if it were litigated--
John Paul Stevens: It would raise the... just do you think that that patent is valid? That's what I'm trying to ask you.
Thomas G. Hungar: --Well, we think it has validity problems under section 102 and also under the pre emption,... potentially under the pre emption doctrine. We haven't addressed the other issues that petitioner seeks to put before the Court involving Diehr and Flook, both because... well, actually for four reasons. First of all, it wasn't pressed or passed upon below, it wasn't... it's not fairly included within the question presented, which construed at its most broad, broadly, includes only the monopolization issue--
John Paul Stevens: I know all that. I'm just really interested in your view of the patent. That's what I'm trying to get to.
Thomas G. Hungar: --Yes, Your Honor. And as I've said, we've identified two areas in which we think there are potentially problems if they were in front of the Court.
John Paul Stevens: Do you think there is a 101 problem too?
Thomas G. Hungar: The preemption issue is a 101 problem, Your Honor. We haven't addressed... as I said, we have not taken a position on the broader Section 101 issues and we would urge the Court not to do so as well, in a case in which it wasn't presented below, the Court doesn't have the benefit of the lower court's assessment of that question. And given that that question implicates substantial reliance interests and--
John Paul Stevens: So we do have a fairly long discussion by the lower court on the infringement issue. In order to find infringement, they had to construe correlation.
Thomas G. Hungar: --Yes, Your Honor.
John Paul Stevens: Yeah.
Thomas G. Hungar: But the Court didn't grant certiorari on that question. Yes.
Stephen G. Breyer: I didn't understand the definiteness doctrine. I mean, all these things in 1854 I guess weren't so clear. But I think the precise claim in Samuel Morse's case was the use of the motive power of the electric current for making or printing intelligible characters. That sounds absolutely definite. Anyone can understand it. I thought the problem there was that although anyone can understand it, you can't claim something as broad as that. You must intend to claim something narrower. And insofar as it's narrower, it isn't precise. So insofar as it's broad, it's too broad, but definite. And insofar as it's narrow, it's not there, but indefinite. Okay? Precisely the claim that they raised before the Federal Circuit and precisely the claim... with appropriate citations, and precisely the claim in respect to which the Federal Circuit said nothing.
Thomas G. Hungar: Your Honor, I may have misspoken before but I think it's probably most accurate to read the Morse case as dealing with a written specification problem, that is, the specification in claim 8, the one Your Honor is referring to, didn't tell anything about the method by which the principle of nature, electromagnetism, would be used. All it did is describe a result, and it purported to claim any, any method involving any number of steps that any inventor might ever invent in the future, even if those steps had nothing to do with... if there was not a single overlapping step between that new process and Morse's process.
Stephen G. Breyer: Yes, yes, yes, yes. And we here apply the correlation to any homocysteine test, anyone here, anyone in the future, anyone that any mind might impend. What's the difference?
Thomas G. Hungar: Well, the difference is between claiming a... claiming all methods of achieving a particular result and claiming one process for achieving that particular result and then as one claiming any means of doing one particular step.
Stephen G. Breyer: I apply electricity to all methods of putting down letters with electricity. I apply the correlation to all methods of creating a homocysteine test.
Thomas G. Hungar: Well, again, Your Honor, if it is true that all methods of employing the assay... excuse me, all methods of employing the correlation are preempted by this patent claim, then it would be invalid under section 101. But to the extent the argument is an attempt to go beyond that issue, we submit Morse doesn't support it and indeed this Court's decision's in--
Stephen G. Breyer: Oh, no, I'm not talking about going beyond it. I just thought that line between definiteness and 101, 112, 101 is not quite so clear as I would have thought, because it sounds to me relying on the 1854 case of Samuel F. B. Morse, they're making the same kind of argument and, indeed, you translated Morse as a definiteness 112 argument, and yet it seemed to me that's the kind of argument they're making.
Thomas G. Hungar: --Yes, Your Honor. And I think it is more properly understood as a specification problem because, as you say, anyone can understand the scope of that claim. It's just that it was not sufficiently described because he was purporting to claim any process even if it had nothing to do with the process he had invented, and that's not what's happening here. They claim a particular step, that is, do an assay, as opposed to some other method, and they claim any method of doing that assay within step 1 of the overall claim but they aren't saying... first sense of the analogy would be if they had claimed we've just devised one particular method of determining whether someone has a vitamin deficiency and we therefore claim all other methods of determining whether someone has a vitamin deficiency.
David H. Souter: Okay, I think you've hit what is the problem for us. When you use the word assay, you assume that that is excluding certain processes. And that's not clear to me. Would you explain that in greater detail?
Thomas G. Hungar: Well, again, we don't know--
David H. Souter: I thought an assay was in effect synonymous with any process that gets the relevant data and you're using it in a more... I think, in answering Justice Breyer's question, you were using it in a narrower sense.
Thomas G. Hungar: --Well, I think that, as understood by a person having ordinary skill in the art, we... it may be. We don't know because the issue wasn't litigated.
David H. Souter: But I thought that was the point of your argument, that there are assays and then there are other methods. Did I misunderstand you?
Thomas G. Hungar: Well, no. Certainly it's conceivable that there are other methods and indeed the patent claim... the patent specification refers to... or suggests the possibility of assaying tissue as opposed to fluid. The claim is limited to fluid. I thank the Court.
John Paul Stevens: Mr. Estrada, it's your turn now.
Miguel A. Estrada: Thank you, Justice Stevens. Thank you, Justice Stevens, and may it please the Court. This was a hard fought jury trial in which the jury rejected everything LabCorp had to sell. That judgment should be affirmed for three reasons. The first is LabCorp never asked the trial judge or the Federal Circuit to declare this patent invalid under Section 101, which is an affirmative defense they had to plead in the answer and prove by clear and convincing evidence. Second, they're simply wrong on the merits of the 101 case under this Court's cases. And third, you can search their brief in vain for a workable test for patentable subject matter that would invalidate this patent and not wreak complete havoc to the patent world by calling into question numerous diagnostic tests in medicine and otherwise, pharmaceuticals and other inventions. Let me deal briefly with the waiver question because we don't get a sur reply brief and there is a lot in the reply brief that I wish I could deal with at length. But I think I will say that it is a collection of cropped quotes and very inventive characterizations of the record. I will give you just two examples. At the bottom of page 9, they're trying to get out of their Unitherm problem, never having this raised in the answer or in the rule 50. And the footnote at the bottom of the page discusses the rule 50 and states or at least suggests that this argument in terms was raised before the trial court, concluding with the sentence, "Respondents themselves understood LabCorp to have thereby presented subject matter patentability. " They cite to our brief on JMOL. I have that here. This is what we said. "The quick answer to LabCorp's mental steps theme is that LabCorp never pled it in the defense. " "LabCorp. " "pled invalidity on the basis of 102, 103, 112 on the grounds that the patent was anticipated, obvious, indefinite, non enabled and procured by inequitable conduct. " "But the so called mental steps doctrine goes instead to the question whether patent covers statutory subject matter. " "That is governed exclusively by section 1, 101. " "LabCorp has never mentioned that section and has never pled the patent is invalid for covering non statutory subject matter even, in its present JMOL motion. " Footnote: LabCorp failed to assert invalidity on the basis of non statutory subject matter in any of its five answers or counterclaims or in any of its interrogatory responses. None of its experts, including its patent law expert, made any such assertion in any reports or testimony. That gets translated in the reply brief as we understood this issue was in front of the courts. Now, we made that point in our papers. There was no response saying, no, wait, district judge, this isn't the case. Rule on section 101. Not a word. We had the same exchange in the Federal Circuit and, once again, we pointed out this was 101, had been waived six ways from Sunday. Not a response telling the Federal Circuit, this isn't the case, please rule. And this is important because you're being asked to tell trial court and three courts of appeals judges that they committed reversible error for failing to address a question that nobody ever asked them.
Stephen G. Breyer: Now what do you say in response to my question to the Solicitor General?
Miguel A. Estrada: Which question, Justice Breyer? I'm sorry.
Stephen G. Breyer: That they thought it was obvious, that they thought that obviously the problem here with this particular claim is that it doesn't say specifically which tests this principle is meant to apply to. So it isn't definite enough. It never occurred to anyone that if you tried to apply it to every test, it was somehow a valid patent, so they made it in the definitive context. Because for 154 years, it's been clear that you can't take a principle of nature like electricity and simply make a claim for all uses of electricity to create letters. That's their analogy. And they thought by referring to the cases and by referring to the failure to point out definitely what the tests were this applied to, it violated 112 because otherwise, it wouldn't be a valid patent, which everyone in the patent field would know. That's at least, I think, what they're saying.
Miguel A. Estrada: I think it is wrong in the facts and under law. If it was obvious all along this is an affirmative defense under section 282 of the patent code, that must be pleaded. One certainly can't be excused for failing to plead something that, dare I say, is obvious. But let's deal with the Morse case. Mr. Franklin said it's the same statute at the time. Actually, that is not so. At the time Morse was decided, Section 112 and 101 were both together in section 6 of the 1836 patent act. In 1870, Congress broke that off. That's important because in Diehr, this Court considered a similar issue with respect to the novelty requirement and concluded that once Congress consciously wrote the novelty requirement out of Section 101, it was inappropriate to inject, you know, the novelty considerations into section 101. The second answer to the Morse question, Justice Breyer, is that the test for definiteness is not is this definite in the abstract, but is it really too broad in relation to the inventive contribution as disclosed in the specifications. And the contrast here that is important to keep in mind is between Morse in 1854 and Alexander Graham Bell, claim 5 of that patent. Just to set it up, in the Morse case, claim 8, it had been known for many years that it was possible to transmit using the electromagnetic current but nobody knew how. And in fact, this Court's ruling on page 107 says this was known by men of science everywhere. And the problem was that Morse discovered one particular way to transmit characters at a distance and tried to patent everything that everybody might ever discover using whatever means to print at a distance. Alexander Graham Bell is a good contrast. Claim 5. It was also known that you could use the electronic current to transmit voice. People had tried and tried and tried and, in fact, there was somebody in Germany who successfully transmitted music but no words. This is all in... in the Court's opinion. Now, Graham Bell discovered that the key was to use continuous undulations in current. Continuous undulations, not discontinuous undulations. And had a patent claim, claim 5, which was very broad. All users of continuous undulations to transmit voice or sound. The Court said that's absolutely right, because he was not trying to claim beyond his inventive contribution to the art. Now, Drs. Stabler and Allen in this case discovered something very important which is all of the medical tests that existed in the art as late as the 1880s... the 1980s were wrong. People were horribly misdiagnosed. And there was a test that existed but nobody used. This is what the record was. The test for existing homocysteine was almost never used, as Dr. Allen testified to this. There is evidence in the record. This is why we have jury trials. And what happened was this test was solely for attempting to diagnose inherited enzyme defects. This is rare. Nobody used it. There was not a market for it. As a result of the discovery, the medical community came around and concluded that everything they were doing was wrong and the new test combining the knowledge that it was possible to assay for homocysteine... and by the way, the assaying means only measuring... total homocysteine with the discovery of the correlation could be put together, as Diehr allows, to come up with a better diagnostic test. And at the time, obviously, and this is, again, in the trial testimony, no market for this. Nobody wanted to do it. Everybody was just delighted with the existing tests. And so Dr. Allen and Dr. Stabler had to set up their own lab to do it. It was after the medical community came around that all of the lab companies became interested in doing this commercially. And I go into this level of detail because I think it is in part needed to answer the point made by the Solicitor General. In a world in which there was no commercial use for the existing prior art because it was used rarely, and a market develops solely as a result of people using the test to practice the invention, I think it's analytically incorrect to say that we're trying to monopolize the existing prior art. What has happened is commercial laboratory companies like LabCorp are selling the test to practice our invention. It was open to them to say--
John Paul Stevens: Let me just interrupt. As I understand it, the alleged infringers don't use the same novel process that you use in your assay, in other words, step 1. They do not use the step 1 in claim 13, is that correct?
Miguel A. Estrada: --Our... yes and no. I think there is an ambiguity in the question, Justice Stevens, because it is true that the Abbott method--
John Paul Stevens: Well, assume it's not Abbott. Just say I come up with a novel method that's not covered by the patent that I can get the assay results. And so a doctor says, would you test the blood under your unpatented, novel method and tell me what the results are?
Miguel A. Estrada: --All right.
John Paul Stevens: And I do that and then the doctor looks at it and says I think you've got a vitamin B deficiency, has he infringed your patent?
Miguel A. Estrada: If the test was not ordered for the purpose of diagnosing--
John Paul Stevens: It was ordered for the purpose of letting the doctor know exactly what the assay would be. Yeah.
Miguel A. Estrada: --Well, unless--
John Paul Stevens: He hasn't--
Miguel A. Estrada: --there was a purpose for diagnosing the deficiency, I would say no. And while we're on the subject of engaging what our arguments have been all along, we made clear in our brief, and nobody ever responded, at page 38, that claim 13 is only infringed when the assaying and the correlating steps are both performed sequentially for the purpose of diagnosing vitamin B deficiency.
John Paul Stevens: --If a doctor asked me to perform under my, my own method, step 1, which I do it and I give him the results and then he tells the patient, I think you've got a vitamin B deficiency, in that case, he has infringed, if I understand your argument.
Miguel A. Estrada: If he did it for the purposes of trying to determine whether you had a vitamin deficiency. Now, if he did it for the purpose of trying to determine, as in the prior art, whether you had an inherited enzyme condition, that would not be infringing. And this point was addressed, obviously somewhat indirectly because it was never raised in the court of appeals, by the Federal Circuit at page 9 A and 10 A where the Federal Circuit explained the correlating step was included as a limit for the intended use of the test as a means to distinguish the intended use for this test from the prior art.
Stephen G. Breyer: You're onto something, to me, that is absolutely fundamental. You have millions of doctors and scientists and computer people who are working extremely hard to think of useful ideas and if you don't give them an incentive, they may think of less.
Miguel A. Estrada: Correct.
Stephen G. Breyer: And they're all useful. At the same time, if you patent all of their ideas, including very useful mini micro principle ideas, you will establish monopolies throughout this country beyond belief and it will be difficult for people, without paying vast amounts of money, to use their useful ideas. So what principle do we use to separate the scientific idea which can't be patented from the process which can be? I thought that the claim was settled by Morse, Flook and Diehr. Now would it make sense... you can answer any part of this question you want.
Miguel A. Estrada: All right. Let me--
Stephen G. Breyer: Would it make sense to send this back and say, look, at least address their argument? You can answer any part of that.
Miguel A. Estrada: Three answers. Number one, under the patent laws, everybody... anybody who makes, uses or sells the invention is potentially liable as an infringer. Number two, Congress knows this and it knows that the people who might be liable as infringers are doctors. It passed in 1996 section 287 C of the patent law that gives doctors a defense to infringement for certain things they do in their offices, not this one. So Congress is perfectly aware of all of the policy issues being raised and has chosen to give an answer only so far. The third is it is a fundamental misconception to treat the case as though, even if the Section 101 issue is in front of the Court... and it isn't... whether the issue is whether Section 101 means that something is actually patentable as opposed to what Diehr said, which is, is it possibly patentable. This is subject matter patentability. Is the mouth of the funnel, not the end of the funnel, and all of the outlandish hypotheticals that we have to deal about how this could be patented don't really deal with the reality of the patent code, which is this is the intake funnel. We have doctrines of obviousness, anticipation, 112, many other things, all of which were raised at trial and the jury rejected in this case. But the reason why there may be some superficial appeal to the outlandish hypotheticals, Justice Breyer, is because there is an effort to confuse the issue that they're trying to smuggle belatedly into the case, 101, as though it dealt with whether something is actually patentable as opposed to potentially patentable. And on the latter question, whether something is potentially patentable, we have the extremely broad language of Section 101 coupled by this Court's cases, in Chakrabarty and Diehr, which said that what Congress intended is for anything under the sun made by man to be potentially patentable. And if there is some more precise policy issue why a particular invention ought not to be patentable, it is found in section 102, 103, 112, other parts of the patent code, on which they lost in front of the jury.
Antonin Scalia: What was made by man here? I mean, if you're talking about the type of assay that your client developed, which was involved in other claims, not in 13, they might say, yeah, that was made by man. But here, what 13 involves is simply discovery of the natural principle that when one, when there is the presence of one substance in a human being, there is a deficiency of two other ones. That's just a natural principle. What's made by man about that?
Miguel A. Estrada: Well, the... we don't contend that the second step of the correlation is independently patentable even though the argument is framed as a... argument. What we contend is patentable and what's allowed by Diehr is the inventive spark of putting together the discovery of the correlation with a way found elsewhere to measure these important bodily chemicals to produce a diagnostic test.
Antonin Scalia: It's a way found elsewhere if indeed the Federal Circuit had determined the second step, you know, step 1, do the assay, step 2, correlate. If the Federal Circuit had said, oh, that requires your using a scale to see how much of one there is and how little of the other, but this Federal Circuit says, all correlate means is be aware of the fact that when one substance is high, the other two are going to be low. That's all it means.
Miguel A. Estrada: Well, that's unfair to the Federal Circuit on two points. Number one, it was very clear to the Federal Circuit, and in fact I think they said that, I can't put my hand on the page, where they said, there is no issue here about step number one. All that people are fighting about is the correlating step and what it means. And the problem that LabCorp had in the Federal Circuit with respect to the correlating step, which is a question they tried to bring up and was cert denied, is that they proposed in the district court the definition that was used by the Federal Circuit, which is a mutual or reciprocal relationship between an elevated level and the vitamin. And so having proposed that, it actually makes sense as a diagnostic test, as the Federal Circuit pointed out with the example of the pregnancy test. Now, Justice Scalia, you asked a question earlier--
Antonin Scalia: No, please don't get off it... because this is my biggest problem with the case. I agree that what you've said is simply a statement of the natural phenomenon, that when the one substance is high, the other two are low. And simply to be aware of that natural phenomenon is all that correlation consists of.
Miguel A. Estrada: --Well, it is true but is not necessarily the case that being aware of a natural phenomenon or of a correlation leads you inevitably to an inventive diagnostic test. There is a correlation between being told and between height and weight. If I tell you that somebody's coming to visit you who is 250 pounds, that person is probably not a five year old. But that gets me nowhere in terms of turning that into useful knowledge that would be patentable.
John Paul Stevens: But you agree with me, do you not, that step 2 by itself would not be patentable?
Miguel A. Estrada: I do agree with that, Justice Stevens.
John Paul Stevens: Your point is that even though step 2 is performed as the second step of step 1 which is also not patentable, you get together for the patent?
Miguel A. Estrada: That's true. And if you look at the Diehr case, it's a perfect example because Diehr had more steps but it was absolutely true in Diehr that every single step, including the mathematical equation, was part of the prior art. And this Court said that's potentially patentable because you have found a way to put all these disparate things together in a way that makes them potentially useful.
Stephen G. Breyer: But does that fall within it? I mean, I can't resist pointing, as one of these briefs did, the phrase that anything under the sun that is made by man comes from a committee report that said something different. It said a person may have invented a machine or a manufacture, which may include anything under the sun that is made by man. So referring to that doesn't help solve the problem where we're not talking about a machine or a manufacture. Rather we are talking about what has to be done in order to make an abstract idea fall within the patent act. Now, sometimes you can make that happen by connecting it with some physical things in the world and sometimes you can't.
Miguel A. Estrada: But Justice Breyer--
Stephen G. Breyer: And if you have a clear statement other than Diehr, Flook, Morse, which draws that line properly, let me know.
Miguel A. Estrada: --I think the telephone cases, Bell and Diehr, are cases that absolutely show that under this Court's cases, this is patentable subject matter. Again, we're talking about the mouth of the funnel, not the end of the funnel. But let me point something else, Justice Breyer, which is it came from a committee report that has already been incorporated in this Court's cases in Chakrabarty and in Diehr as exemplary of Congress' determination to have the mouth of the funnel be very wide. And if there are problems with something being ultimately patentable, they are because there is some other requirement of the patent law that... that... that should be looked at. One of the other points on the question that Justice Scalia asked, because I think it is important on whether this question is before the Court, is that the rules of this Court, rule 14-1-F mandated that the petition shall contain, quote, the status involved in the case set out verbatim. And you can pick up the cert petition and indeed there is an appendix which is at the very last page of the petition, and you can look at it and it says, pertinent statutory provisions. There are two statutes, Section 112 and section 271. You can pick up their blue brief and do the same with the back flap, and we would have the fishes and the loaves. Now they have three statutes, 101, 112 and 271. There is no way to construe their question 3 as having been intended all along to encompass a very separate affirmative defense that they never put in front of the trial court or the Federal Circuit.
John Paul Stevens: Would the case be different if they quoted Section 101 in their appendix?
Miguel A. Estrada: Yes, I think it would be different, Justice Stevens, because then their argument that this was encompassed within one of the questions in the petition might have some surface plausibility. But it doesn't. Let me just go back and link that point with another aspect of our legal system, which is you see cases of forfeiture and waiver all the time. This term in Unitherm and in Arbaugh, you have already said twice that parties should be held responsible for their procedural defaults. You do that in other areas of the law. And the one that came to mind, to my mind as I was thinking about this case, Justice Stevens, is going all the way back to Wainwright versus Sykes, because you have cases every year involving habeas corpus, where Wainwright versus Sykes says we have to be careful about sandbagging, and we're going to presume that an indigent defendant on trial for his life in a rural county someplace with a lawyer two years out of law school, who can't find the courthouse, consciously chose to save the federal claims so that he could assert later, have it in his back pocket: We're going to have a rule of forfeiture for sandbagging. Empirically, one may well wonder whether that is empirically likely to be true in a great number of cases. But we don't have to wonder in this case because every well advised corporate defendant, if I am their lawyer, I will advise them to hold this in the back pocket and to have a second trip to the trial court and the court of appeals because in the rules in affirmative defense, rule 8 says you have to plead it and the statute says you have to prove it. And it went all the way up the ladder. And if you tell them that they get to start all over again, what you will have is every well advised corporate defendant will be advised by counsel, like me and by Mr. Franklin, that the way to do is to tire the inventor out, have a trial and then we can start all over again. And that's no way to run a legal system, especially when they're coming with the most important questions of patent law to this Court with incredibly far reaching implications and the best that they can say to the Court about why you shouldn't worry about the consequences is, as they say in the closing pages of the reply brief, rule for us and every other case will have to be considered on its own merits. Which I guess is true as far as it goes but it's about as helpful as telling the Patent Office and the lower courts that life is a fountain. And you know, this Court does not sit to issue--
Antonin Scalia: You mean life isn't a fountain? [Laughter]
Miguel A. Estrada: --I didn't say it wasn't. I just said that the expression of that thought is not helpful. And insofar as this Court sits to advise the lower courts and the government and the patents office and the investing community who could swing billions of dollars on the basis of an issue that was never litigated in the lower courts, I frankly submit, Justice Scalia, that it would be irresponsible for the Court to reach out and deal with a question for which there was never an adequate factual predicate.
John Paul Stevens: And Wainwright against Sykes was even decided before AEDPA was passed, too.
Miguel A. Estrada: Exactly. And Congress actually implemented that in AEDPA. And so my basic point, Justice Stevens, is if that the legal system takes the procedural regularity of our courts seriously enough to enforce them in what would seem to some people to be pretty compelling circumstances of life and death, there is little claim on the legal system for a well heeled corporate defendant who has been adjudged to be a willful infringer by a jury to come to this Court and asked to be put in the starting gate again. There is no way that... again, that is no way to deal with the legal system. I have nothing further, Justice Stevens.
John Paul Stevens: Thank you, Mr. Estrada. Mr. Franklin, I think you have about four and a half minutes left.
Jonathan S. Franklin: Hopefully I won't, I won't have to use all that. Just a few points, Your Honors. There was a suggestion made that it matters what purpose these tests were undertaken for. That is not true. We had argued extensively that it did matter, that in fact the doctors were using this for not detecting vitamin deficiencies but for detecting heart disease. That was not... we were not successful on that. What the court of appeals said was any doctor on pain of malpractice will necessarily perform the correlating every time that doctor looks at a test result. So it doesn't matter why the doctor does that. Second, Morse was clearly a case decided under what is now Section 112. I think Mr. Hungar admitted that. The language of the case makes that clear. It quotes the relevant statute, and all of this is in our reply brief, and it concludes that the patent in that case was overbroad because it didn't, it contravened what is now Section 112 and that is how we argued--
Antonin Scalia: Weren't 112 and 101 combined at that time?
Jonathan S. Franklin: --They were.
Antonin Scalia: Do you disagree with that?
Jonathan S. Franklin: No, I don't. He is correct on that. But look at the case and how it was decided. It was decided on the basis of what is now Section 112. We have cited numerous cases in the lower courts that have interpreted it that way. And I believe Mr. Hungar admitted that too.
John Paul Stevens: I don't want to take up your time on rebuttal but I have to ask you, do you have an explanation for not quoting section 101 in your papers?
Jonathan S. Franklin: I think the explanation is that we cited all of the cases... for example, Mackay Radio is a case we cited that doesn't itself cite 101. The Court itself never cited 101 in these cases until 1972. It was a judicially created exception for laws of nature and natural phenomena. And of course to the extent it is applicable here, it is applicable either on its own, but also in connection with and as a natural predicate to the 112 inquiry. And there I think the analogy to Morse is quite striking. And what... in Morse, the Court said that he could not monopolize all devices and processes used to transmit the characters at a distance through the natural phenomenon of electromagnetism. Here what these patent cases are seeking to do is to monopolize all homocysteine tests that are used to, as they say, detect vitamin deficiencies through the natural correlation that they recite. Morse couldn't do that because it wasn't limited to the one device that he actually invented. Here they cannot do it because it's not limited to the one homocysteine assay that they in fact invented, that we use and that we pay royalties on every time we use. Finally, I think that the primary gatekeepers here on these kinds of things is the Patent & Trademark Office. I think they're trying their best, but what I heard from their representative today is that they're not prepared to do anything about these kinds of patents unless this Court gives them further guidance. We are only asking that the Court give them further guidance on this patent and to say that a patent that claims nothing more than a natural correlation preceded by the inherent and generic step of measuring the input for that correlation is invalid and the judgment that is based upon it should also be reversed. Thank you, Your Honors.
John Paul Stevens: Thank you. The case is submitted.


Earl Warren: Number 491, Albert Andrews versus United States and Number 494, Robert L. Donovan versus United States. Mr. Prettyman.
E. Barrett Prettyman, Jr.: Mr. Chief Justice, may it please the Court. This case, and I will treat it as a single case for most purposes, raises the question whether the Government, prior to the resentencing of two defendants in a criminal case, may appeal the orders directing that the resentencing take place. This case originated in 1954 when three men were arrested in connection with an attempted mail robbery. These men were Albert Andrews, Robert Donovan, and Hyman Cohen. Mr. Cohen is no long in -- no longer involved in this proceeding. They were convicted on all three counts in a trial before Judge Lawrence Walsh in the Southern District of New York. They were convicted, that is, of assaulting a post office employee with an attempt to rob with putting the life of the same post office employee in jeopardy by the use of a dangerous weapon and of conspiracy. Now immediately upon conviction and apparently without any presentence required of law and without asking the defendants whether they had anything to say either in mitigation of sentence or on their own behalf, Judge Walsh sentenced all three of them. Counts 1 and 2 merged so there was no sentence on those -- on the first count. On the second count, he gave them the mandatory 25 years, and on the third count, he gave them five years to run concurrently with the 25-year sentence.
Speaker: What year was this, Mr. Prettyman?
E. Barrett Prettyman, Jr.: This was 1954, Your Honor.
Speaker: I don't know why it should take this long?
E. Barrett Prettyman, Jr.: Well, the appeal on the case was not heard until 1957. The record doesn't show why there was that delay. I have inquired of both Mr. Healey and Mr. Friedman to determine and their answer is that due to some difficulties about payments in the in forma pauperis petitions and various other things, it simply drifted on that long. Now, the Second Circuit affirmed the convictions, but remanded for resentencing because Judge Walsh had erroneously thought that he could not grant probation on the mandatory count. Now notice that the remand for resentencing was specifically for the purpose of determining whether probation could be granted. It was in the light of his right to grant probation that that remand took place. The resentencing was first scheduled for May 15, 1957, deferred for five days so that one of the counsels could prepare legal memo. On May 28th, it was called for resentencing. Now note that this was almost two and a half years after the original sentence. Judge Walsh again presided. The defendants were not present, neither was Mr. Frank Healey, an attorney representing Mr. Donovan. The proceedings nevertheless commenced. Mr. Friedman made an argument. Now Mr. Friedman's representation in this case is not entirely clear. He told the -- he told Judge Walsh that at this particular point because Mr. Healey was not present that he represented all three defendants. The docket entries show and the judgment show that he represented only Mr. Andrews and Mr. Cohen, and that Mr. Healey who was now absent represented Mr. Donovan. In any event, he told Judge Walsh that he had not been able to prepare the memo which he had hoped he would and he then argued two points, remember now this is in the absence of the defendants. He argued first a legal point. That is that the first and second counts didn't merge and therefore the Court could grant some sort of sentence on Count 1. Secondly, he argued a non-legal point. He made a plea for clemency. Now Mr. Mathews, the Assistant United States Attorney then presented an argument that the first and second counts did merge and Judge Walsh at that point called a recess. After the recess, the defendants and Mr. Healey were present for the first time during this resentencing procedure. Judge Walsh asked, “Is there anything you want to say?” And this question was answered not by the defendant, not by Mr. Friedman, not by Mr. Healey, but by the Assistant United States Attorney, Mr. Mathews who then proceeded to give his version of the crime. He said the Government did not have much background on these men but he noted that the Court at this point had a presentence report, apparently, the first one in the case. When Mr. Mathews concluded, Mr. Friedman, without being asked then spoke up, saying that he was going to speak with respect to Andrews and Cohen and that Mr. Healey would speak with respect to Donovan. Mr. Friedman made a plea for clemency for Andrews and Cohen, and Mr. Healey also without being asked by the Court spoke up and made a plea for Mr. Donovan. When they were through, despite the fact that the whole purpose of the resentencing was to consider probation, that was the point of the remand, the Court did not ask any defendant whether he had anything to say either in litigation sentence or on his own behalf. He simply proceeded to resentencing. He suspended Mr. Cohen's sentence and put him on probation. He ordered the prior 25-year sentences of Andrews and Donovan to remain in effect. On April 17, 1961, Donovan filed a motion in the District Court. He claimed that his right of allocution under Rule 32 (a) had been denied him and he prayed, “that the sentence aforesaid be vacated and he be resentenced.” In three supporting papers, he specifically requested that this motion of his be treated as a Rule 35 motion.
Speaker: This is seven years after.
E. Barrett Prettyman, Jr.: Yes, sir.
Speaker: Fantastic to me. How does that happen?
E. Barrett Prettyman, Jr.: Well, of course part of his delay was his fault in the sense that there was a delay between the resentencing and his filing of this motion. I'd like to point out however, that I think that is accounted for by the fact that the Green case had not been decided at that time. The Green case was decided four or five months before he filed his petition. And I think frankly, this was the first time he knew he had any such right, and that's when he filed his -- his petition because up until this time, neither at the original sentencing nor at the resentencing did anybody ask him whether he had anything to say. Now Rule 35, of course, reads in part, the Court may correct an illegal sentence at anytime. The docket entry shows that Donovan's motion was entered as a Rule 35 motion. The Court -- the Government stated twice in pleadings -- in pleading that it was a Rule 35 motion. And Judge Murphy granted the motion as made ordering that Donovan “be returned to this District for resentencing”. Now Andrews apparently heard of this because he wrote the Court a letter under date of January 25th, 1961, asking for what he understood to be the same treatment that had been accorded Donovan. Judge Murphy treated this letter as a motion. He granted it and he ordered that Andrews be resentenced. Now, note that neither Andrews nor Judge Murphy, nor the docket clerk, made any mention of 28 U.S.C. Section 2255 in relation to this letter.
Potter Stewart: All this was -- all of this was going on before this Court's decision in Hill against United States.
E. Barrett Prettyman, Jr.: Correct. That's right. Green had been decided, Hill had not.
Potter Stewart: Had Van Hook been decided at per curiam, is it?
E. Barrett Prettyman, Jr.: Van Hook, Your Honor came down --
Potter Stewart: As on direct appeal.
E. Barrett Prettyman, Jr.: After -- after -- you see, that was on direct appeal.
Potter Stewart: Yes, I understand that.
E. Barrett Prettyman, Jr.: It came down at a time when Donovan then proceeded to file a motion and saying -- said in effect, “I want to add Van Hook as another reason for --
Potter Stewart: So it -- it came down during the pendency of this (Voice Overlap) --
E. Barrett Prettyman, Jr.: Yes, that's right. That's correct. Yes, sir.
Potter Stewart: This was in 1951 in this record.
E. Barrett Prettyman, Jr.: That's right, right. If Your Honor will turn to page 39 of the record, you will see that Van Hook at this point came down and he has -- bringing this to the Court's attention. This is all on his own now without benefit of counsel.
Potter Stewart: That was the following -- it was the following January or February that Hill was mentioned, brought --
E. Barrett Prettyman, Jr.: Hill was not decided until January 22nd of 1962 which was after the case had reached the Court of Appeals.
Potter Stewart: Yes.
E. Barrett Prettyman, Jr.: Now both Donovan's and Andrews' motions were filed in the original criminal case with the original criminal docket number. The first mention of 2255 that got into this case at all was in a government affidavit filed one day after Andrews' motion had been granted and yet in that same affidavit, the Government conceded that the factual and legal posture of Andrews' motion was exactly the same as Donovan's motion. Note too that when Andrews found out that the Government was treating his motion as a 2255 motion, he specifically protested in a pleading and claimed that his motion was also a Rule 35 motion. The Government appealed from both of Judge Murphy's orders and obtained the stay pending appeal. All of the Government's papers, all of the Government's papers as every other scrap of paper in this case that was filed in the District Court bore the original criminal docket numbers. Andrews and Donovan were not allowed bail pending appeal. They were not transferred to New York, to help prepare for their appeal, no counsel was appointed for them, they wrote their own briefs, there was no argument in the Court of Appeals, this case was submitted on papers, and the case was then decided. The Court of Appeals held that it had jurisdiction because Judge Murphy could not grant any relief under Rule 35, that these were independent motions under 2255, and that the Government can appeal from adverse decisions under 2255. On the merits, it held that Hill versus United States and Machibroda versus United States, both of which had now come down in the meantime required reversal. Unfortunately, the Court of Appeals was under a misapprehension as to the facts involved. Now I have three arguments. I want to stress to you that each is independent of the other. If the Court agrees with me on anyone of these, the Court of Appeals must be reversed. First, whether petitioner's motions were civil or criminal, whether they were Rule 35 or 2255, whether Judge -- what Judge Murphy did was in the criminal case or in a separate proceeding, these were entirely interlocutory and non-final orders. They were interlocutory in nature, in cause and effect, in form, in result, in any realistic sense, these were interlocutory orders. Now remember these orders were --
Speaker: Was there any -- was a sentence ever imposed?
E. Barrett Prettyman, Jr.: No, sir.
Speaker: Never reimposed.
E. Barrett Prettyman, Jr.: No, sir. The Government appealed quickly you see, before these men can be brought back for resentencing. They obtained a stay and immediately appealed. The order --
Speaker: That the sen -- the old sentence have been vacated.
E. Barrett Prettyman, Jr.: That's right, that's right. These men stood at this point --
Speaker: Well, these men are standing at the Bar now unsentenced.
E. Barrett Prettyman, Jr.: Right, but convicted.
Speaker: But convicted.
E. Barrett Prettyman, Jr.: But convicted. Now these orders were in two parts. They vacated the prior sentences and they ordered resentencing.
William J. Brennan, Jr.: Well, let's see Mr. Prettyman, you said there was a stay, a stay of what?
E. Barrett Prettyman, Jr.: A stay of both of Judge Murphy's orders as entered. That is the prior convictions are --
William J. Brennan, Jr.: Well, technically, there was --
E. Barrett Prettyman, Jr.: Well, technically as of this moment, I suppose you could say that since those orders were stayed that they stand convicted and sentenced as originally.
Byron R. White: [Inaudible]
E. Barrett Prettyman, Jr.: That's right.
Byron R. White: They may not act [Inaudible]
E. Barrett Prettyman, Jr.: That's correct, but as of the moment, he ruled in between then and the time that they obtained to stay, of course, they stood convicted but non -- not sentenced and the stay was based solely upon the right of the United States to appeal which is the very issue in question here.
Byron R. White: [Inaudible]
E. Barrett Prettyman, Jr.: Yes, sir. Now resentencing, as I said, has not taken place. The criminal case is open and I again, with the exception of the fact that the stay was entered. I think we can ignore that fact for the purposes of this situation because if the appeal will not lie, he had no right of course to grant a stay. As of that time, a resentencing had not taken place. The criminal case was open as the Government concedes. The Government concedes that.
Arthur J. Goldberg: Mr. Prettyman, am I right that the two orders [Inaudible] with the two cases starting at page 40 was a memorandum by Judge Murphy, it was [Inaudible]?
E. Barrett Prettyman, Jr.: Yes, the first one, Your Honor is on page 40, that's correct. No settlement is --
Arthur J. Goldberg: And the other one is on page 50, is that the [Inaudible]?
E. Barrett Prettyman, Jr.: And -- and the other one is just two lines on page 50. That's correct.
Arthur J. Goldberg: [Inaudible]
E. Barrett Prettyman, Jr.: That's right.
Arthur J. Goldberg: Those were the two orders --
E. Barrett Prettyman, Jr.: That's it.
Arthur J. Goldberg: [Inaudible]
E. Barrett Prettyman, Jr.: Exactly.
Arthur J. Goldberg: [Inaudible]
E. Barrett Prettyman, Jr.: That's correct.
Arthur J. Goldberg: [Inaudible]
E. Barrett Prettyman, Jr.: Completely.
Arthur J. Goldberg: [Inaudible] a motion to vacate the [Inaudible] the sentence?
E. Barrett Prettyman, Jr.: That's right. These were self executing orders. This Court on numerous occasions has made clear that final judgment in a criminal case means sentence. There can be no question about that. Now, I need not even pause over these situation if the orders were correctly Rule 35 orders, because the Government clearly cannot appeal even from final orders in a criminal case unless authorized by 18 U.S.C. Section 3731. The Government doesn't even claim that right in this case, but the Government said, “What Judge Murphy did was to grant independent petitions under 2255.” Now even if these were true, it doesn't follow that the Government could appeal as the Court of Appeals seems to have assumed. 2255 by its own terms, allows that appeal as from a final judgment on application for writ of habeas corpus and 2253 allows an appeal in habeas corpus only from final orders. The Government doesn't claim that Judge Murphy's orders were -- had the effect of finality. It concedes that the criminal case is now open but for the stay.
Potter Stewart: Open or over?
E. Barrett Prettyman, Jr.: Open.
Potter Stewart: Open.
E. Barrett Prettyman, Jr.: Open. That is that it's incomplete, that orders still have to be entered. What the Government says in effect that --
Potter Stewart: But the function of 2255 as the function of habeas corpus is to secure the release from confinement of people and this -- that part of it has been done. They've been released to -- ordered to be released from confinement to come back to the sentencing court to be resentenced.
E. Barrett Prettyman, Jr.: The 2255, Your Honor, gives -- in the first place, 2255 applies to a prisoner claiming to be -- claiming the right to be released.
Potter Stewart: Right.
E. Barrett Prettyman, Jr.: Now these -- these --
Potter Stewart: And that's the function of habeas corpus also.
E. Barrett Prettyman, Jr.: Yes, that's right. Now these men are not claiming the right to be released. These men have been -- claimed the right to be resentenced.
Potter Stewart: Well, but one has to precede the other. They have to be released from their present sentence and brought back to the sentencing court and resentenced.
E. Barrett Prettyman, Jr.: Well, in that sense released, but they're not released from custody. I take this language to mean release from custody. They're talking about getting out from under the cause of the Government and these men are not released from custody when they're simply transferred from Alcatraz and Louisburg under guard to the Court to be resentenced. But further, note that the -- that 2255 allows the Court to vacate and set aside the judgment -- the judgment and it can discharge or it can resentence or it can grant a new trial or it can correct the sentence.
Arthur J. Goldberg: [Inaudible]
E. Barrett Prettyman, Jr.: Exactly, and that's what is tradition.
Arthur J. Goldberg: [Inaudible]
E. Barrett Prettyman, Jr.: Right. It's traditionally been used for that. Now, as I say, what the Government says in effect here, I think, is this. Technically, since Judge Murphy properly could only vacate the sentence and since the resentencing will be in the criminal case, this is the last order that will be entered in the 2255 proceeding. That's the way I interpret their brief as trying to call for some element of finality here. Well, now first, let's assume that this is Rule 35 proceeding. Rule 35 doesn't say the Court may vacate an illegal sentence. It says the Court may correct an illegal sentence, and unless the correction is a reduction within 60 days, the defendants have to be present. So that it reads as if it's to say -- as if it says, the Court may set aside and order resentencing. Now under 2255, if that's what this is, the Court as I just pointed out specifically given the power both to correct and to resentence. So I think there can be no question but that Judge Murphy had the power to vacate and to order resentencing in this case. Now secondly, I don't concede that other things couldn't happen in this 2255 proceeding, assuming that that's what it was. If his order for example were not followed -- were not followed up there could be new motions in the 2255 proceeding and thirdly, even if the 2255 proceeding, if that's what it is, were now over. That is not what this Court has said the finality means. In Collins versus Miller, final orders were entered in the sense asked for by the Government here. But this Court held that they were not final, a further extradition hearing had to be held. The whole subject matter, that was the -- that was the phrase used by the Court; the whole subject matter had not been disposed off. Now, similar holdings had been made in cases citing on -- cited on pages 20 to 23 of my brief. And so here, Judge Murphy's orders will not be final until what he ordered to be done is done.
Byron R. White: You don't think [Inaudible]?
E. Barrett Prettyman, Jr.: Well --
Byron R. White: [Inaudible]
E. Barrett Prettyman, Jr.: Well, first of course Your Honor, I don't think this is 2255. You understand that --
Byron R. White: As to either one --
E. Barrett Prettyman, Jr.: Yes.
Byron R. White: If either rule are entitled [Inaudible]
E. Barrett Prettyman, Jr.: Right. Now assuming that is Rule -- that it's 2255, I don't concede that it is over necessarily.
Byron R. White: Well, was the resentencing a part of the [Inaudible]?
E. Barrett Prettyman, Jr.: Well, he ordered it right in the same -- right in the same order. He didn't just vacate the prior sentence. He ordered that they'd be resentenced. Now until that is done, I can easily visualize motions being filed, for example, if they -- if they refused to do it or if there was an undue delay, or other things. It was the order entered in 2255 if that's what it was, it must still be carried out. But finally, even --
Byron R. White: But if the – the act doesn't say resentencing [Inaudible]?
E. Barrett Prettyman, Jr.: That would be my contention that they were. That isn't the contention that the Government made. The Government defeated bail on the ground that this was 2255. Now even assuming however, Your Honor, that technically speaking, this was 2255 and 2255 is over in the sense that there's nothing more to be done in 2255, I certainly don't think that that is conclusive in any way because in Collins versus Miller, the Court refused to look at this type of situation in any technical legalistic sense of what is over and something else is opened up. The whole subject matter here is the question of resentencing. This is one ball of wax until the resentencing takes place necessarily the subject matter is still open.
Byron R. White: Well, wouldn't the -- I suppose [Inaudible]
E. Barrett Prettyman, Jr.: Well, I wasn't going to get to it, but I will. I don't know that the Government could. I have not taken a position on that because I would like to be in a position assuming that they tried to appeal following resentencing to say that they couldn't. I would note that the Government obtained an appeal in Williamson, but I would say this. When the resentencing takes place, it's clearly going to take place in the criminal case and it would be my view that the Government could not under 3731 appeal that, but Your Honor, let's assume that the Government totally loses the right to appeal now if it's not allowed to appeal. That hasn't influenced this Court in cases like Carroll or DiBella that same argument, exactly the same argument is made by the Government there. If we're not allowed to appeal these motions to suppress, now at this point, we will lose forever the right to appeal. And the Court said in effect that's too bad. That's just --
Byron R. White: What the -- I suppose you would have the same argument if you take -- right after you had that motion granted [Inaudible].
E. Barrett Prettyman, Jr.: And then the Government tried to appeal from the resentencing.
Byron R. White: [Inaudible]
E. Barrett Prettyman, Jr.: You mean from --
Byron R. White: But that part [Inaudible] the Government appeals the first sentence, is it over?
E. Barrett Prettyman, Jr.: Well, I don't think it could do that, Your Honor. The order was that the -- that the prior sentence was vacated and that these men are now resentenced to 25 years. In the first place, that would be illegal because it was done out of their presence. But --
Byron R. White: Assume -- assume they were there.
E. Barrett Prettyman, Jr.: Assume they were there. Then Your Honor, I would say that they are not allowed to appeal because the re -- that part of it which resentenced was necessarily part of the criminal case. You see, at that point, just in the flash of a moment before he resentenced, they're in the same position as if they have been convicted by the jury --
Byron R. White: What would you think [Inaudible]?
E. Barrett Prettyman, Jr.: Well, that's this case up until the next day, that's this case.
Byron R. White: Well, I know because the Government doesn't stay.
E. Barrett Prettyman, Jr.: Because the Government doesn't stay?
Byron R. White: [Inaudible]
E. Barrett Prettyman, Jr.: Well, I practically don't think that the stay is determinative myself, Your Honor. I mean I don't see that you -- that you convert this into a legal appeal because they walk in and get a stay of an order from which they cannot appeal. Now, I'd like the Court to look at what the Government is really asking it to do here. Let's suppose that the petitioners after they had been convicted by the jury, but before they had been sentenced, had rushed in with a habeas corpus petition attacking their conviction. Now, is there any question but that an appellate court assuming that that was denied, let's assume it was denied so they try to take an appeal, they say it's the final order, is there any question but that an appellate court would dismiss the appeal on the ground that this was a non-final proceeding, that this was non-final in every way. If that, I -- I think that is precisely what the Government is asking you to rule here in effect. The Government says that even though had they -- have yet to be resentenced, it can rush in an appeal because an order has been entered in the 2255 proceeding. If it can, if the Government can appeal here, I can assure you that there's going to be a great revision in collateral attack procedures, not only by the Government, but by petitioners, but by defendants. The whole purpose -- the whole purpose and thrust of Carroll and DiBella is going to be diluted completely. If the Government can appeal, the whole purpose of the finality rule to prevent piecemeal, truncated appeals, to prevent and let them put injustice will be frustrated. Now remember Judge Murphy's orders were -- were entered in June and July of 1961. Over a year and a half ago --
William J. Brennan, Jr.: [Inaudible] -- your thought is that that is -- if the Government made an appeal [Inaudible], prisoners granted under the 2255 [Inaudible] of habeas corpus?
E. Barrett Prettyman, Jr.: Well, they can't bring habeas corpus because they haven't been sentenced yet. But let's -- let's assume they can bring -- they can't bring 2255 because they haven't been sentenced but they can bring -- let's assume, they rushed in with habeas corpus. In other words, they've been convicted, they haven't been sentenced. They come in and file habeas corpus attacking their conviction.
Byron R. White: That's 2255 [Inaudible]
E. Barrett Prettyman, Jr.: Well, 2255 would be ineffective in that situation because it wouldn't lie.
Byron R. White: [Inaudible]
E. Barrett Prettyman, Jr.: That's right. So let's say they come in under habeas corpus and attack their conviction and say this was -- conviction was illegal for any number of reasons, denied, they haven't been sentenced yet. Then they appeal. Then they say that was a final order because it was a final order in habeas corpus and that's all there is to be done in habeas corpus.
William J. Brennan, Jr.: The prisoners could?
E. Barrett Prettyman, Jr.: The prisoner would. I think there's no question but that an appellate court would say, “You are trying to appeal -- we will dismiss this appeal, this is non-final because you have not been sentenced. You cannot --
Byron R. White: Well, if they're out of bail [Inaudible]?
E. Barrett Prettyman, Jr.: Well, some are and some aren't, Your Honor.
Byron R. White: But normally -- actually [Inaudible].
E. Barrett Prettyman, Jr.: Well, this Court is held Your Honor that as I understand it, that bail is a sufficient custody of the prisoner to allow and to file habeas corpus, tell that in a state case.
William J. Brennan, Jr.: And you -- what you're arguing here is that if that was the rule which requires a prisoner [Inaudible] appealing that habeas corpus, [Inaudible] reply to the Government, this is not [Inaudible].
E. Barrett Prettyman, Jr.: Much more so to the Government. This Court has held obviously that this is a much more stringent rule applied to the Government in criminal cases than in the alike. Now, as I pointed out, Judge Murphy's orders directing that these men be resentenced who were entered a year and a half ago. Now, surely this is laden footed justice. It's a denial, I think of the very right which Judge Murphy ordered that these men receive, the right to be legally resentenced. Now, there is a second independent ground why the Court of Appeals should be reversed. Totally, aside from any question of finality now, these were orders, I think, in the criminal case. And Section 3731 does not allow the Government appeal to appeal from such orders. The Government doesn't claim the right to appeal here if these were Rule 35 orders. Now, clearly, the orders were treated as Rule 35 orders. I can -- I think there can be no question about that. They were treated by the parties and by the Court and by the docket clerk as Rule 35 orders, but the Government says the District Court had no jurisdiction to enter a Rule 35 order. Now it's quite true that the concluding paragraph in Your Honors opinion in Hill versus United States intimates that Rule 35 is not the proper remedy even where they're aggravating circumstances to accompany the denial of the right of allocution, but even Hill doesn't suggest that Judge Murphy's orders were void. Moreover with great respect, I think the Court should reconsider the question in Hill as to whether this should not be a Rule 35 order, a Rule 35 motion, whether Rule 35 doesn't properly lie here as a remedy.
Potter Stewart: Your case doesn't depend on that though, does it? It doesn't --
E. Barrett Prettyman, Jr.: No.
Potter Stewart: -- depend at all in our (Voice Overlap) --
E. Barrett Prettyman, Jr.: No, it's an alternative ground completely.
Potter Stewart: Yes.
E. Barrett Prettyman, Jr.: The position I take is that clearly, if it's a Rule 35 motion, they cannot appeal, they're going to complain that.
Potter Stewart: As the Government concedes.
E. Barrett Prettyman, Jr.: That's right.
Potter Stewart: The Government concedes that.
E. Barrett Prettyman, Jr.: No doubt. And all I'm saying is that this -- this was treated --
Potter Stewart: In this case either.
E. Barrett Prettyman, Jr.: -- as a Rule 35 motion, that he had jurisdiction under a Rule 35 motion. He may have been mistaken but that's what he did. He had jurisdiction to do it and that being the case, the Government can appeal from it.
Potter Stewart: But the -- but our case is made it clear, don't they, Heflin and Hill itself that the labels don't count but the --
E. Barrett Prettyman, Jr.: Labels don't count. The label in this case is being used to the -- in effect to defeat the right of resentencing. A Rule 35 motion has been converted into a 2255 proceeding in order to try to make it civil so that they can appeal from what -- otherwise they would (Inaudible).
Potter Stewart: Would be on that appeal?
E. Barrett Prettyman, Jr.: That's right. Now, I point out on pages 33 to 34 of my brief and pages 8 to 9 of my reply brief, some of the consequences of such a ruling that Rule 35 is not available here including the fact that in some instances, it's got to be Rule 35 or nothing. And I will not repeat those arguments here. I want to add only this. The majority in Hill seems to have assumed that Rule 35 traditionally has been used to attack only sentences void on their face whereas 2255 is traditionally been used in situations more akin to this one. But Rule -- but 2255 as I've said by its own terms, doesn't apply to this situation because these men are not seeking to be released from custody. Moreover, it's traditionally been used to attack the judgment of conviction which is not being attacked here. There's no attack on the judgment. There is no request for a new trial in this case. Moreover, the Government itself does not dispute some cases where the absence of the defendant was a ground for Rule 35 relief, on page 14 of its brief. It seems to me that the real rule in relation to Rule 35 is that strongly intimated in Heflin and that is that Rule 35 maybe used to attack the legality of any sentence unless, unless that the effect does not appear from the face of the record. In other words, unless a hearing must be held to determine the true facts and no hearing was necessary here and none withheld. If the Court finds it necessary to reach this question, as I hope it will not, I hope that it will reconsider its concluding paragraph in Hill at least where aggravating circumstances are present. Rule 35, I contend was quite as appropriate a method as 2255 to do what was done here and as a matter of fact was so far neater and more expeditious method of doing it. Now, there's a third independent ground for reversal here. If the Court should find that Judge Murphy's orders were interlocutory, if it should find further that the orders were not entered in the criminal case, then and only then, we reach the question of whether his orders were correct. Now, first, let me say that they were clearly correct at the time that they were entered because at that time, Green had been decided and eight members of this Court clearly thought that Rule 35 was the appropriate remedy because that was a Rule 35 case. Now Hill had not been decided and even under Hill, which was later decided, Judge Murphy, I think was right in his result because this case contains a number of the so-called aggravating circumstances of a fundamental nature and Hill recognizes that some -- such circumstances came relay the sentence open to collateral attack. With great respect, I suggest that the Court of Appeals did not suggest -- did not state actively what actually occurred here. The Court of Appeals seems to have assumed that the question of, “Do you have something to say” was asked of a defense attorney which would bring the case more in line with Green. Actually, the question was asked to the Assistant United States Attorney and no question was ever asked of the defendants or their attorneys at all, although they spoke.
Speaker: Either of the lawyers get up to say, they made --
E. Barrett Prettyman, Jr.: They did.
Speaker: -- make speech.
E. Barrett Prettyman, Jr.: They did. The Assistant United States Attorney spoke and then Mr. Friedman spoke without being asked and then Mr. Healey spoke again without being asked. I think the importance of the point is that I think in Green, the Court assumed that if the question had been directed to the defendants, even though it's been answered by his attorney, he at least knew that he had a right to speak and could presumably have spoken up. In this case, where the only question asked is asked by the Assistant United States Attorney and then the two attorneys have to get up on their own to interject what they had to say. Clearly, there's no way for the defendants to know that they have a right to speak.
Potter Stewart: Is this am I right Mr. Prettyman in understanding that under Count 2 of these indictments that the Court's only choice is to impose a mandatory 25-year sentence?
E. Barrett Prettyman, Jr.: For probations.
Potter Stewart: Or to impose a mandatory 25-year sentence and then put the man on probation through that period.
E. Barrett Prettyman, Jr.: Correct. That's correct.
Potter Stewart: Or --
E. Barrett Prettyman, Jr.: That's correct, which is exactly what he did to Mr. Cohen.
Potter Stewart: Yes. That's exactly what he did to Mr. Cohen. In the first -- and the first reversal was on the basis that Judge Walsh didn't think he had any --
E. Barrett Prettyman, Jr.: Right.
Potter Stewart: -- discretion to allow probation.
E. Barrett Prettyman, Jr.: That's correct.
Potter Stewart: But there's no wrong for anything else except that 25 years or 25 years in probation.
E. Barrett Prettyman, Jr.: The defendants --
Potter Stewart: Is that it?
E. Barrett Prettyman, Jr.: -- made a motion on resentencing if we ever reach resentencing in Your Honor that in fact they could be a sentenced to something else on a legal ground on the -- on the basis that would charge the jury perhaps on the basis of the merger of the first two counts (Voice Overlap) --
Potter Stewart: I thought that had been decided in the merger.
E. Barrett Prettyman, Jr.: Well, it has. I'm -- there's some question whether the whole thing wouldn't be opened up on resentencing and they might be able to plead that, but I think for our present purposes we can assume --
Potter Stewart: That's what's been decided so far in this --
E. Barrett Prettyman, Jr.: That's right.
Potter Stewart: -- subject to your -- right of course, making arguments with your clients.
E. Barrett Prettyman, Jr.: That is correct.
Potter Stewart: They won't -- they want to.
E. Barrett Prettyman, Jr.: That's right.
Arthur J. Goldberg: Mr. Prettyman, how do you conclude that the mark of the court that the [Inaudible] that the United States Attorney, that was on page 25 of the record, it has been decided [Inaudible].
E. Barrett Prettyman, Jr.: That's right.
Arthur J. Goldberg: And then the Court says -- then the Court says that therefore [Inaudible]. Then the Court says, “Is there anything you want to say into that?” [Inaudible]
E. Barrett Prettyman, Jr.: It certainly is. Your Honor, in Green, I think that the Court with great respect, I think it was sort of shall we say assuming quite a bit in terms of the question that was asked and who it was asked off. But in Green at least the Court said, when you ask -- when you ask a question and it's answered by the defense attorney, it's easy to see how that attorn -- that question could be answered by defendants and then the attorneys in effect are saying, “We'll speak for them.” But it seems to me it's inconceivable to assume that a question could be asked of the defendants, “Do you have anything to say” And the man who answers the question and who speaks up in effect on their behalf is the Assistant United States Attorney. So that's what I base it on. Now, I've covered in my brief and my reply brief and I will not reargue here such matters as Mr. Healey's absence during part of the resentencing procedure. I'm now talking about aggravating circumstances. Judge Walsh's mistake of fact as to Andrews' part in the crime, Mr. Donovan's record, the failure to grant the right of allocution at the first sentencing, and things of this sort. I want to add here only a few remarks about the absence of the defendants during this resentencing procedure. It seems to me that Rules 43 and 32 are not separate rules, but complementary. Rule 43 provides that the defendant must be present at every stage of the trial and at the imposition of sentence. Rule 32 guarantees him the right to speak in mitigation of sentence and in his own behalf. Now I think that these rules recognize that there's no point in the defendant being present if he can't speak, and that his right to speak is meaningless if he wasn't present at every stage of what went before. These petitioners were denied both rights. They missed a legal argument. They missed a plea for clemency. They had never spoken at their original sentencing. They have not spoken to this day more than eight years after they originally sentenced them. Surely, I think that they're entitled to what Judge Murphy has ordered that they'd be given. Now in conclusion, Your Honor, I just have one comment. I pointed out on page 15 on my reply brief that according to the administrative office of the United States courts, of the almost 600 motions to set aside are correct sentences filed during fiscal 1962 under both 2255 and Rule 35, only 18 resulted in the granting of some form of relief. Now subsequent to my reply brief, I have the administrative office check to determine how many Government appeals were taken or attempted in any of these actions and I might say that I have informed Mr. Barnett the results of that request. There were 169 appeals taken during fiscal 1962. Not a single one of them was taken or attempted by the Government.
Speaker: Maybe --
E. Barrett Prettyman, Jr.: I think --
Speaker: -- because they weren't represented by Mr. Barnett.
E. Barrett Prettyman, Jr.: It might be. It might well be.
Earl Warren: We'll recess now.