Supreme Court applies stare decisis in patent case

By Gene Quinn
June 22, 2015

Justice-Kagan-335

Justice Kagan delivered the opinion of the Court in Kimble v. Marvel Entertainment.

If you were going to write a ridiculous piece of fiction that no one in the industry would believe the plot would start with the United States Supreme Court citing stare decisis in a patent case. But that is exactly what happened earlier today in Kimble v. Marvel Entertainment, LLC.

In a 6-3 decision written by Justice Kagan, with Justice Alito in dissent (joined by Chief Justice Roberts and Justice Thomas), the Court explained that stare decisis is the legal doctrine standing for the proposition that legal precedent must stand unchanged in order to infuse the law with certainty and predictability. For that reason the Court refused to overrule Brulotte v. Thys Co., 379 U. S. 29 (1964), a case long criticized for having achieved the wrong decision. Indeed, Justice Alito’s characterization in dissent said it all: “The Court employs stare decisis, normally a tool of restraint, to reaffirm a clear case of judicial overreach.”

There will be plenty of time to review the decision in Kimble, but the larger issue begging to be discussed is the Supreme Court’s selective application of stare decisis. It seems that stare decisis is a newly found legal doctrine that this Court has previously not been acquainted with even as they were thoroughly upsetting well settled law in ways that have cause patent owners tremendous harm.

Simply stated, any patent decision from the Supreme Court that cites stare decisis lacks all intellectual credibility given how arbitrarily and capriciously they have ignored their patent own precedent and the patent statutes over the past decade. Obviously, this Supreme Court doesn’t understand the true definition of stare decisis. Given how frequently the Court disturbs well-established principles and precedent in the patent space the use of stare decisis in this case is nothing more than a complete and total cop-out. It also insults the intelligence of anyone who has even casually observed the Supreme Court on patent matters over the past decade.

For example, over the last four years the Supreme Court has ignored prior precedent and even refused to apply the clear and unambiguous terms of the one-sentence patent statute they have so frequently interpreted. Indeed, in patent eligibility cases the Supreme Court has uttered complete nonsense, such as discoveries are not patent eligible even though the statute – 35 USC 101 – says otherwise.

It was particularly difficult to read the Supreme Court explain that overruling previous decisions requires special justification and stare decisis has additional force where the Court is interpreting a statute given that the parties can always go to Congress with their objections. But that didn’t stop the Supreme Court in AMP v. Myriad from deviating from 30+ years of well-established precedent (including their own) to find that certain man made gene related innovations are not patent eligible. It also didn’t stop the Supreme Court from deviating from 30+ years of well-established precedent (including their own) to find that many, if not most, software patent claiming techniques result in a patent ineligible articulation of the underlying innovation in Alice v. CLS Bank.


Indeed, in Myriad and Alice the Supreme Court not only ignored their own precedent, but also upset the entire software industry and much of the biotech industry in the process. To hell with well established expectations of innovators and companies that operate in those sectors. The Supreme Court knew best. They decided to re-write the law on their own accord. Where was the concern about stare decisis then?

The simple truth is that there has been no concern at the Supreme Court about stare decisis over past patent eligibility decisions. In fact, the changes to the well-established law that the Supreme Court adopted in both Myriad and Alice were not just prospectively applied, but they were retroactively applied. To retroactively apply changes within a property rights regime is fundamentally unfair, even more so when the law was well established for three decades.

In Mayo v. Prometheus, the Supreme Court substantively ignored the mandates of the Patent Act and expanded the patent eligibility inquiry under 35 U.S.C. 101 to swallow the novelty inquiry set forth in 35 U.S.C. 102, the obviousness inquiry set forth in 35 U.S.C. 103, and the description requirement set forth in 35 U.S.C. 112. But not only did the Supreme Court ignore the statute, they ignored their own precedent that clearly and unambiguously forbade exactly what they did, which was to turn the patent inquiry into a single inquiry test. Previous Supreme Courts had universally warned against that and chastised courts for not following the statute.

As violative of the separation of powers as the Supreme Court’s usurpation of patents has been, the most alarming aspect of recent Supreme Court jurisprudence has been the reality the creation and continued enlargement of so-called judicial exceptions to patent eligibility. The statute the Supreme Court has spent so much time interpreting does not give the Court any authority to create any judicially created exceptions to what is patent eligible, but the Court still moves forward with an ever increasing list of things that are patent ineligible. The Supreme Court acts as if they know best and Congress answer to them instead of the other way around, which is how the Constitution distributes powers. Indeed, if a statute is constitutional then Congress is supposed to be the final word, not the Supreme Court. For reasons never explained the Supreme Court must view themselves as a super legislative body that has the authority to ignore Congress as it pleases them. If this judicial tribunal were in the Middle East the Western press would endlessly ridicule them, but because they are the U.S. Supreme Court they seem to get a pass.

Of course, the most ridiculous and fundamentally unfair thing this Supreme Court has done in the patent space has been to continue to expand the judicially created abstract idea doctrine to increasingly find computer related innovations to be patent ineligible. To call these decisions intellectually dishonest doesn’t really capture the depth of just how arbitrary and capricious the Supreme Court has become. Not only do they expand judicially created exceptions they don’t have the authority to make, but they do so never once having defined what it means to be an abstract idea. How can you have a doctrine where the core terminology is not defined? Expecting patent owners to satisfy an undefined criterion makes the Supreme Court nothing better than a kangaroo court where fairness and impartiality is the first casualty. See Naked Emperors: A Supreme Court Patent Tale.

I guess applying stare decisis to other patent decisions would have inconveniently prevented the Supreme Court from doing what they wanted to do, which seems to be the declaration of war on patent owners.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. Anon June 22, 2015 6:20 pm

    The truly sad thing here is that the main principles involved were less of a patent nature and more of an anti-trust/contract nature, for which the so-called “statutory stare decisis” carries far less weight.

    This was a contract issue signed between two (and only two) parties of their own free will and accord. This was a payment timing issue. This was NOT an issue whereby the public at large (i.e. everyone else that did not sign a special contract) was somehow deprived of the item as it entered the public domain upon patent expiration. No such person in the public was so affected.

    While at the same time that this decision flows less from patent law makes it more amenable to being “per se” correct for patent law – meaning that the usual beef has somewhat less traction, the Court’s choice of language and choice of outcome is yet another insult from the seemingly least capable branch of the US government concerning patent matters.

  2. Curious June 22, 2015 10:58 pm

    This was a contract issue signed between two (and only two) parties of their own free will and accord … This was NOT an issue whereby the public at large.
    I agree that these are very important points. We are talking about an arm’s length transaction between two parties — not protecting some public right. The public isn’t relying upon this interpretation of the statute for protection. This is simply the Court punting to a (wrongly decided) opinion to set aside the negotiated terms of a contract.

    What this case does show (yet again) is a court that is hostile to patents.

  3. EG June 23, 2015 7:51 am

    Hey Gene,

    Well stated. Another disingenuous instance of the Royal Nine suffering from precedential (and selective) amnesia. And people continue to wonder why the most of the patent bar does not respect Our Judicial Mount Olympus?

  4. Dan Wood June 23, 2015 11:17 am

    This was a contract case cloaked in patent couture. The first rule of Contract Law is that parties can contract for anything (that is legal). The second rule of Contract Law is the the courts will only look to the adequacy of consideration, not the sufficiency, i.e., is the consideration what was bargained for, not, was the consideration “enough.” If a licensee agrees to a ‘premium’ that involves payments that run beyond the life of the patent, then so be it. If such bargaining liberty does not exist where he lives, then he should move to Ameri… oh, wait!

  5. Dan Wood June 23, 2015 11:48 am

    Oops! Sufficiency, not adequacy. I sit self-corrected.

  6. Anon June 23, 2015 12:16 pm

    Dan Wood – well said (sadly).

  7. Curious June 24, 2015 10:20 am

    Off topic, but the latest decision of Internet Patents Corp. v. Active Networks is an absolute travesty. Judge Newman used to be my favorite judge on the Federal Circuit. However, over the last year or so, I have seen her become increasingly hostile to patent owners. This Internet Patents decision is, by far, the worst.

    The alleged “abstract idea” was “the idea of retaining information in the navigation of online forms.” Is that really an abstract idea? If so, we need to redefine what the term “abstract idea” means.

  8. Anon June 24, 2015 11:22 am

    Curious,

    See my current posts on several threads. I think that Judge Newman might just be recognizing the inevitable. I view her change as less one of becoming anti-patent herself, and one more merely reflecting that she recognizes a losing battle when the Supreme Court itself is anti-patent and will pick and choose which versions of “stare decisis” to hold onto (those that hurt patents) and which to completely ignore the actual statutory laws (101 and super-empowering PHOSITA when such seems likely to hurt a patentee in a present case [KSR}).

    Further, I am mystified when you say “redefine” as the term itself has never been defined (by the Supreme Court) in the first place.

    When terms at the heart of a weapon of mass-patent-destruction are NOT defined, we have patent law, written by the Judicial Branch, that itself fails the constitutional mandate of being understood apriori. Not only do we have a violation of the constitutional separation of powers, we have the ultimate in making sure that 101 remains a nose of wax, since this version of patent law necessarily must return to the Court for its nose of wax treatment.

    If you were a member of the CAFC, would you really place yourself in a position of constant reversal for items undefined?

  9. Gene Quinn June 24, 2015 11:23 am

    Curious-

    Before we can redefine what “abstract idea” means we need a definition in the first place. I continue to be baffled by the fact that there is a “doctrine” applied against patent owners and applications where the essential term has never been defined. If this were a criminal statute it would be unconstitutional because you cannot expect people to be held to a standard the government can’t (or won’t) define. Personally, I think we don’t have a definition because they can’t define it without capturing everything under the sun contemplated by man.

    -Gene

  10. Curious June 24, 2015 11:45 am

    I am mystified when you say “redefine” as the term itself has never been defined (by the Supreme Court) in the first place.
    Redefine — as from its ordinary meaning (e.g., “relating to or involving general ideas or qualities rather than specific people, objects, or actions”). For example, a computer is not “abstract.” A processing executed by a computer is not “abstract.” However, we now have Supreme Court precedent that says that claims directed to a computer are directed to an abstract idea.

    If you were a member of the CAFC, would you really place yourself in a position of constant reversal for items undefined?
    Honestly, it wouldn’t bother me if I were reversed if I thought I make the correct decision.

    We all know that Supreme Court started this mess in Benson and kept doubling down on that bad decision over the years. This bad precedent only became worse when they stated ‘we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case” — give carte blanche to any decision maker to declare an invention as being directed to an abstract idea. After reading plenty of declarations of what constitutes an “abstract” ideas from both the courts and the USPTO, I’m convinced that anywhere between 30%-60% of patents issued these days could be declared as being directed to an abstract idea (despite almost all of them being embodied in real products and/or real processes).

    It is a sad state of affairs when I’m looking to (hoping for) the Supreme Court to put a stop to this madness when they are clearly patent unfriendly themselves. I don’t see Congress stepping in to clean up this mess. The USPTO is more than happy to issue 101 rejections, and there are few court decisions that they won’t interpret broadly (to the detriment of patent holders). When a once patent-stalwart like Judge Newman throws in the towel, it is a very bad sign for the U.S. patent system and for U.S. inventors.

  11. Curious June 24, 2015 11:58 am

    Personally, I think we don’t have a definition because they can’t define it without capturing everything under the sun contemplated by man.
    I’ve read Benson (which started this mess) many times. There are a lot of things I can criticize about both the case itself and the justice (Douglas) who wrote it. However, with regard to the “abstract idea” concoction, the phrase “abstract” is used just three times in the decision —

    “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham, 14 How. 156, 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.

    Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion.

    I think very, very few of the patents recently invalidated under 35 USC 101 could be considered either a “fundamental truth” or ” basic tools of scientific and technological work.” Moreover, I believe it would be incorrect to describe the process of Benson in the same manner.

    The last statement involving “abstract” is really a statement about the breadth of the claims — they cover both known and unknown uses. However, the same can be said about most claims. This is the error in the court’s analysis — it fails to appreciate that technology (inventions) are built upon other technology (inventions) which are built upon other technology (inventions). Each new invention based upon some underlying technology is an “unknown use.” Does the fact that an improvement to an old technology now render that old technology an “abstract idea”? I guess — if you follow Douglas’ (il)logic.

  12. Anon June 24, 2015 6:23 pm

    Gene At 9,

    Not only criminal statutes can fail for lacking clarity. While indeed it is a bit more rare, civil statutes also can fail for that reason. One can Google this and find among others the case of Giaccio v. Pennsylvania 382 US 399 (1966) in which the US Supreme Court did not let a Pennsylvania Supreme Court use the excuse of “but it’s a civil law.”

    Further complicating the analysis here though, is that the Court lacks authority to write patent law in the first place. If we want to “play the game” and pretend that the Court is not “writing” patent law, then the fact that the Court’s “interpretation” being unable to pre-define the law on any reasonable basis only means moreso that the underlying law as written by Congress is necessarily even more defunct.

    The option then to the Court is NOT to insert its version of the law as it would want it to be, but the only option available is to declare the law void for vagueness and strike it down, leaving it to the branch of the government that does have authority to write a law that is not void for vagueness.

    Personally, I am really disappointed in our academia, whom it would appear would rather spend their intellectual coin on weakening the patent system as opposed to safeguarding the tenuous balance of powers between the branches of government.

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