Supreme Court Associate Justice Antonin Scalia testifies before the House Judiciary Committee’s Commercial and Administrative Law Subcommittee on Capitol Hill May 20, 2010 in Washington, DC. CC BY 2.0.

On Saturday, February 13, 2016, Justice Antonin Scalia of the United States Supreme Court passed away in a hotel room in Texas. Justice Scalia was nominated by President Ronald Reagan to fill the vacancy left by Justice Rehnquist when he ascended to the role of Chief Justice. Confirmed on September 17, 1986, Antonin Scalia served on the Supreme Court for nearly thirty years.

Justice Scalia is perhaps best known for his conservative philosophy and desire to strictly construe the Constitution, relying on the text of the document. Scalia would tell Leslie Stahl in 2008 that he is fundamentally opposed to treating the Constitution as a living document, and thought it unfair to ask the question about opposition to the Constitution as a living document because it immediately put him on the defensive as if he were trying to defend the Constitution as a dead document. “It’s what did the words mean to the people who ratified the Bill of Rights or who ratified the Constitution,” Scalia explained.

Justice Scalia was also ardently opposed to the use of legislative history to interpret statutes, again preferring a strict textual construction. Scalia’s opposition to the use of legislative history was perhaps most apparent in a concurring opinion in Zedner v. United States, a 2006 case relating to the Speedy Trial Act of 1974, which generally speaking requires a federal criminal trial to begin within 70 days after a defendant is charged or makes an initial appearance. In his brief concurrence Scalia explained several of the reasons why he does not believe legislative history to be an appropriate tool for the courts to use. He simply concluded: “Because the use of legislative history is illegitimate and ill advised in the interpretation of any statute—and especially a statute that is clear on its face—I do not join this portion of the Court’s opinion.”

The Impact of Scalia’s Passing on Patent Law

With Justice Scalia’s passing some have started to already wonder what his absence will mean for a variety of different cases and issues. With respect to intellectual property, not much will change (if anything) as the Supreme Court moves forward to consider a number of patent and other intellectual property cases this term and in future years.

While Justice Scalia served on the Supreme Court for nearly three decades, his contributions to the area of intellectual property law were quite limited. Scalia did famously refer to patents as “gobbledegook” during the KSR v. Teleflex oral arguments. Scalia was the only Justice not to sign onto an opinion in Bilski v. Kappos that would have recognized that at least some software is patent eligible. But Justice Scalia did not author any of the major patent decisions considered by the Court during his tenure. Furthermore, the major patent and trademark decisions considered by the Supreme Court over the last generation have for the most part been unanimous, or near unanimous decisions. Intellectual property is not an area where the Court divides ideologically, so we do not generally see 5-4 splits as are seen in many other areas of law.

For example, the three recent patent eligibility cases that have thrown the industry into something of a tailspin were all unanimous decisions — Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012); Association for Molecular Pathology v. Myriad Genetics (2013); and Alice Corporation v. CLS Bank (2014). The Supreme Court also reached unanimous decisions in eBay, Inc. v. MercExchange, LLC (2006)(ruling that a victorious patent owner does not have a right to a permanent injunction and that the court must consider the four-factor injunction test despite the fact that a patent grants an exclusionary right to the patentee); and KSR International v. Teleflex, Inc. (2007)(fundamentally changing the obviousness inquiry by ruling that teaching, suggestion and motivation is not the only rational to combine references to support an obviousness rejection). Although not all agreeing on the reason, all of the Justices participating in the case also agreed in Microsoft Corp. v. i4i Limited Partnership (2011) that the presumption of validity bestowed upon a patent by 35 U.S.C. 282 requires an invalidity defense to proved by clear and convincing evidence. Finally, in Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014), a virtually unanimous Supreme Court ruled that the rigid framework crafted by the Federal Circuit to authorize the awarding of attorneys fees was inconsistent with the statutory text and that district courts should be given broad discretion to award attorneys fees pursuant to 35 U.S.C. 285. Of particular interest with respect to the Octane Fitness decision, it was not completely unanimous because Justice Scalia did not join in footnotes 1-3, all of which related to discussion of legislative history.

Notwithstanding the reality that patent decisions are generally unanimous decisions by the Supreme Court, Inc. Magazine has published an article suggesting that the death of Justice Scalia will have an impact on the Court’s consideration of Halo Electronics v. Pulse Electronics. Simply stated, there is absolutely no chance that the absence of Justice Scalia will have any impact on this case, and frankly it seems rather silly that someone would suggest otherwise.

The single issue accepted by the Supreme Court in Halo is as follows:

Whether the Federal Circuit erred by applying a rigid, two-part test for enhancing patent infringement damages under 35 U.S.C. § 284, that is the same as the rigid, two-part test this Court rejected last term in Octane Fitness, LLC v. ICON Health & Fitness, Inc. for imposing attorney frees under the similarly-worded 35 U.S.C. § 285.

Indeed, Sections 284 and 285 of the Patent Act are constructed virtually identically. In making the errant interpretation of Section 285 in Octane Fitness, the Federal Circuit relied on Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc. (“PRE”), 508 U.S. 49 (1993). In no uncertain terms the Supreme Court explained that the Federal Circuit was mistaken in their understanding and application of PRE. This same exact mistaken understanding and application of PRE is at the heart of Federal Circuit jurisprudence relating to the awarding of enhanced damages under Section 284. Absent the Supreme Court completely ignoring their own ruling in Octane Fitness from just two years ago, the outcome in Halo is clear. It seems virtually certain that the Supreme Court took Halo to grant district courts discretion to award enhanced damages. Given that Octane Fitness was another virtually unanimous decision of the Supreme Court, the presence or absence of Justice Scalia will matter not for Halo.

Thus, the passing of Justice Scalia does not seem likely to have much of an impact on intellectual property cases, particularly patent cases. Having said that, there is a potential that the absence of Justice Scalia may have some impact when the arguments being offered relate to legislative history. Most notably, the America Invents Act (AIA) was passed in September 2011 with a long and cumbersome legislative history, which Justice Scalia would never have considered himself and certainly would have lobbied against considering.

Before the Court this term is a case where that could matter depending upon the arguments made and the direction the Court wishes to take with its decision. I could see legislative history becoming more relevant than anyone would have anticipated just a week ago when the Supreme Court considers Cuozzo Speed Technologies v. Lee. See Supreme Court accepts Cuozzo. For example, at issue on some level will be post grant procedures authorized by the AIA and conducted by the Patent Trial and Appeal Board (PTAB). Throughout the legislative history these post grant procedures are characterized as an alternative to district court litigation on the issue of validity, but the Patent Office applies different standards than would a district court, including no presumption of validity. Arguments of the petitioner tied to legislative history may get greater consideration given the absence of Justice Scalia.

Scalia on Intellectual Property

The American Intellectual Property Law Association published a brief piece pointing to eight majority opinions and one dissent authored by Justice Scalia in intellectual property related cases. Three of the cases related to trademarks and two of the patent cases related to constitutional issues.

Scalia Trademark Opinions

• Wal-mart Stores, Inc. v Samara Brothers, Inc., 529 U.S. 205 (2000), a unanimous Supreme Court ruled that in order to bring an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act a product’s design must be distinctive, which requires a showing of secondary meaning.
• Dastar Corp. v. 20th Century Fox, 539 U.S. 23 (2003), a unanimous Supreme Court (minus Justice Breyer who did not participate) ruled that the Lanham Act did not prevent unaccredited copying of a work. Scalia reasoned that a contrary ruling would essential establish a perpetual copyright under the guise of trademarks, which Congress could not do.
• Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S.Ct. 1377 (2014), a unanimous Supreme Court ruled that in order to bring a claim for false advertising under the Lanham Act the plaintiff must plead and prove an injury to a commercial interest in sales or business reputation that is proximately caused by the defendant’s misrepresentations.

Scalia Patent Opinions

• Eli Lilly, Inc. v Medtronic, Inc., 496 U.S. 661 (1990), decided 7-2, the Supreme Court decided that 35 U.S.C. 271(e)(1) exempted from infringement the use of patented inventions reasonably related to the development and submission of information needed to obtain marketing approval of medical devices under the Federal Food, Drug and Cosmetic Act.
• College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 527 U.S. 666 (1999), decided 5-4, the Court decided that the imposition of liability on States for patent infringement violated the 11th Amendment.
• Holmes, Group, Inc. v. Vornado Air Circulation System, Inc., 535 U.S. 826 (2002), a case where all of the Justices at a minimum concurred with the judgment, the Supreme Court ruled that the Federal Circuit cannot assert jurisdiction over a case in which the complaint does not allege a patent-law claim, but where the answer does contain a patent-law counterclaim.
• Merck KGAA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005), a unanimous Supreme Court ruled that the use of a patented compound in experiments that are not themselves included in a submission of information to the FDA does not, standing alone, render the use infringing.
• Mediummune Inc. v. Genentech, Inc., 549 U.S. 118 (2007), decided 8-1 with only Justice Thomas dissenting, the Court decided that the case or controversy requirement of the Constitution did not require a licensee to breach a license agreement in order to challenge the validity of a patent.