In other areas of federal law, SCOTUS has made it abundantly clear that federal common law doesn’t exist. So, why does SCOTUS believe it can create what is, in essence, a federal common law of patents?
In crafting our Constitution, the Framers very carefully designed the three branches of government (legislative, executive, and judicial) to be co-equals. Those Framers made clear that each of these co-equal branches had designated roles reserved to that branch and that branch only. It also goes without saying that each of the three branches have encroached on roles assigned to other two by the Constitution, all too frequently to grasp power that is not theirs to exercise.
First to do so was the legislative branch, especially following the American Civil War and up through the late 19th Century as Congress and its members became the major power brokers. Next was the executive branch when President Theodore Roosevelt greatly expanded the power of the presidency in the early 20th Century, sometimes to such an extent that he sometimes may have caused his fellow Republican, friend, and former judge, William Howard Taft, to cringe at what the latter might view as exceeding the executive branch’s Constitutional mandate. (By the way, Taft would be the only U.S. President to also be Chief Justice of SCOTUS. His opinion in Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923), which upheld the patentability of an improved Fourdrinier machine for making paper that took advantage of “gravity” in terms of the degree of pitch of the forming wire, is one the current Justices of SCOTUS would do well to read as it relates to issues under Sections 101 and 103.)
Finally, the judiciary, through SCOTUS, starting primarily in the 1950’s and with an increasing velocity and regularity exerted a “judicial activism” that would cause the highest court in the land to be referred to sometimes (and often derisively) as a “super legislature.” For example, in the emotionally-charged 1973 case of Roe v. Wade, a majority of SCOTUSC created, out of thin air, a women’s “right to an abortion,” seen by some in the legal community as an extreme form of such “judicial activism.” By contrast, some might also view the seminal 1954 case of Brown v. Board of Education of Topeka, Kansas which held that “separate” cannot be “equal” in our public schools as another example of judicial “activism.” But I and others having a judicial philosophy which would be characterized as “originalist” (sometimes referred to as a “strict constructionist”), and generally “textualist” (meaning I’m wary of what constitutes true “legislative intent” although not to the extreme of the late Justice Scalia who basically ignored it completely) view it as rectification of a major misstep by SCOTUS in the 1896 case of Plessy v. Ferguson that segregation in public facilities complies with the Equal Protection clause as long as those segregated facilities were equal in quality.
So you may now ask: what does all this historical discussion about Constitutional roles of these three branches of government have to do with patent law? Well, implementation of the Patent Clause, as well as articulating U.S. patent policy was expressly reserved by our Constitution to Congress. Also regrettably, as evidenced most recently for over the past decade or so, SCOTUS has decided (again) to weigh in as a “super legislature” on how Congress has implemented the Patent Clause in the various patent statutes, as well as to grasp to itself what U.S. patent policy should be, even if Congress expresses that policy otherwise. Such judicial (and in my view and others Constitutionally improper) overreach has included: (1) interpreting patent statutes to have “implicit exceptions” that Congress refused to include (e.g., in Mayo, Myriad, and Alice, where does 35 U.S.C. § 101 refer to “abstract ideas,” and “laws of nature” as being excluded?); (2) formulating views on patent policy expressly reserved by the Patent Clause to Congress, especially when Congress not so subtly suggested to SCOTUS that the Federal Circuit (expressly created by Congress in 1979 and becoming operational in 1980) was to be the primary arbiter of patent law jurisprudence; and (3) interpreting existing patent statutes many years after their creation to have meanings different from those repeatedly expressed in prior rulings by the Federal Circuit (e.g., in eBay, what is the appropriate standard for issuing permanent injunctions under 35 U.S.C. § 283?, in KSR International, what is the appropriate standard for obviousness in 35 U.S.C. § 103, and in Oil States, how can 35 U.S.C. § 261 possibly be interpreted as referring to patents as other than a “personal property right” which means those rights cannot be “taken” (invalidated) other than by 5th Amendment “due process” and only in an Article III court?).
Pre-Federal Circuit: SCOTUS’ Unquenchable Thirst to Control Patent Law Jurisprudence and Ignore Congress’ Express Words in Patent Statutes
What’s even worse is that this isn’t the first time that SCOTUS has brazenly exerted such judicial “activism” in patent law jurisprudence, and even more shockingly, by those Justices, especially Justice Thomas, who would consider themselves to be “originalists”/“textualists.” (Justice Thomas’ anti-patent stance ever since his 2006 eBay opinion, and more recently in his Myriad, Alice, and Oil States opinions, is particularly puzzling, given that he authored the unanimous opinion in the 2001 case of J.E.M. AG Supply v. Pioneer Hi-Bred International that held utility patents could still be obtained on sexually reproduced plants, even in view of the Plant Variety Protection Act for sexually reproduced plants and the Plant Patent Act of 1930 for asexually reproduced plants. He also disagreed with his fellow conservative Scalia in the 2006 case of MedImmune v. Genentech on the proper standard for filing declaratory judgments.)
Prior to 1952 when Congress enacted most of the patent statutes that now make up Title 35, SCOTUS had construed the term “invention” in such a way that, unless you could establish that the claimed invention provided “synergy” (i.e., the whole of the “invention” is greater than the sum of its parts), it was virtually impossible to establish the validity of the patent, especially if it was deemed to claim a “combination of old elements.” This ultra-high “synergy” standard for patentability elicited from Justice Robert H. Jackson (well-known for his pithy quotes) an oft repeated one: “the only patent which is valid is one which this court [i.e., SCOTUS] has not been able to get its hands on.” See Jungerson v. Ostby, 335 U.S. 560, 571 (1949) (also stating at the beginning of his dissenting opinion that “I think this patent meets the patent statute’s every requirement” and concluding with “I agree with the opinion of Judge Learned Hand below” that the patent was valid). In the patent law arena, the current Justices of SCOTUS might also need to be reminded (repeatedly) of another famous and scathing quote by Justice Jackson: “Reversal by a higher court is not proof that justice is thereby better done. There is no doubt that if there were a super-Supreme Court, a substantial proportion of our reversals of state courts would also be reversed. We are not final because we are infallible, but we are infallible only because we are final.” See Brown v. Allen, 344 U.S. 443, 540 (1953) (concurring)(emphasis added).
Following enactment by Congress of the 1952 patent statutes, this unitary concept of “invention” was divided into three separate provisions in Title 35: Section 101 defining “usefulness” (utility), including the four statutory classes of patent-eligible subject matter; Section 102 (novelty); and Section 103 (obviousness). Further undergirding these three sections on patent-eligibility/patentability were Section 100 (defining what the terms “invention” and “process” mean), as well as Section 112 (in the first paragraph, describing the “enablement”/“written description” requirement, and in the second paragraph, that the specification must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”)(emphasis added)). As many acknowledge (including at least some SCOTUS Justices), the late Judge Giles Rich of the Court of Customs and Patent Appeals (CCPA) and later one of the judges of its successor, the Federal Circuit, was one of the major, if not primary, architects of these 1952 patent statutes.
In interpreting what these three provisions of the 1952 patent statutes on patent-eligibility/patentability mean, especially Section 103 (obviousness), many in the patent bar would later hail the 1966 decision SCOTUS decision of Graham v. John Deere Co. as a “watershed” case, even though the patent in that case (for an agriculture drill) was deemed unpatentable as being obvious under Section 103. (The suggestion in Graham that these 1952 patent statutes, especially Section 103, merely codified prior SCOTUS patent law jurisprudence would likely still cause Judge Rich to “roll over his grave.”) But others, including me and Professor Adam Mossoff, see certain statements in Graham which, even if only considered dicta, express an alarming unwillingness by these Justices to release their grasp on patent law policy that the Patent Clause reserves to Congress, and Congress alone.
One such problematic statement is that this clause “is both a grant of power and a limitation” on Congress, including stating that Congress’ authority is “qualified,” is “limited to the promotion of advances in the ‘useful arts,’” and in exercising the “patent power may not overreach the restraints imposed by the stated constitutional purpose.” But besides wondering as to whether SCOTUS in Graham has correctly articulated the historical context and meaning of the Patent Clause, Professor Mossoff has rightly questioned why those Justices so frequently refer and cite to Thomas Jefferson in interpreting what the Patent Clause means and who really has the “authority” to determine how that power should be exercised. See Mossoff, “Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent ‘Privilege’ in the Historical Context,” Cornell Law Review, Vol. 92:953 (2007), stating critically and ironically about Graham: “In 1966, the Supreme Court discovered that Thomas Jefferson was the founder of American patent law.”
As Professor Mossoff points out with exquisite clarity and accuracy in his 2007 article, SCOTUS’ view in Graham that Jefferson is a relevant source for the meaning of the Patent Clause is a canard, a complete fallacy and judicial fantasy having no factual, and more importantly, no historical basis. Jefferson was certainly a Founder of America as the primary author of our Declaration of Independence, but was most definitely not a Framer of our Constitution. (As accurate history reflects, Jefferson was not a delegate to the Constitutional Convention, and deliberately so as he did not want replace the existing Articles of Confederation which he favored with this new fundamental document.) Instead, SCOTUS would have done better (and would have been far more historically accurate) to consider the views of Jefferson’s protégé, James Madison, who was not only a delegate to the Constitutional Convention, but wrote the only contemporaneous statement on what the Patent Clause meant, namely Federalist Paper No. 43.
As Professor Mossoff correctly observes, the views expressed by Madison in Federal Paper No. 43 on the Patent Clause (in which the “exclusive right” granted should be considered in the context of Locke’s “natural rights” theory and the concept of “social contract” prevalent at the time of the creation of our Constitution as “securing important property rights,” or “what natural-rights-influenced politicians and jurists called ‘privileges’”) do not support (and are in fact opposed to) the “Jeffersonian story of patent law” expressed by SCOTUS in Graham. See especially page 957 of Professor Mossoff’s article which says:
What is missing today in these oft-repeated historical claims [i.e., including those by SCOTUS about Jefferson’s supposed view of the Patent Clause] is an appreciation of the intellectual context of the eighteenth and nineteenth centuries – an era dominated by the labor theory of property and the social contract theory of civil society. Recognizing this past intellectual context is important in understanding history, if only because that context is radically different from the utilitarian and positivist paradigm that dominates our political and legal discourse today.
It also wasn’t that long after Graham that SCOTUS started exerting its judicial “activism” in interpreting the 1952 patent statutes to add requirements that those statutes did not express and that Congress had, in fact, not included. One of the first was in the 1972 case of Gottschalk v. Benson, written by Justice William O. Douglas, the most virulently anti-patent of the SCOTUS Justices, which held that a method for converting numerical information from binary-coded decimal numbers into pure binary numbers for use in programming conventional general-purpose digital computers was “merely a series of mathematical calculations or mental steps” and did not constitute a patentable “process.” That would be followed by the 1978 case of Parker v. Flook, an opinion written by another virulently anti-patent Justice, John Paul Stevens, that made the astonishing proposition that a previously unknown “algorithm, or mathematical formula, is like a law of nature,” and thus part of the “prior art” under Section 103. (In 2013, Justice Stevens would also write a 41 page concurrence, actually a dissent, in the 2010 case of Bliski v. Kappos which disingenuously argued that recently added Section 273 was a “red herring” as to whether “methods of doing business” were patent-eligible under Section 101). Fortunately, SCOTUS, at least temporarily, changed course in its interpretation of Section 101 in the 1980 case of Diamond v. Chakrabarty and the1981 case of Diamond v. Diehr.
Besides rewriting what Section 101 means and requires, SCOTUS also did the same with Section 103, as shown in the 1969 case of Anderson’s-Black Rock v. Pavement Salvage (claimed invention combining in one machine chassis the spreading and shaping equipment along with a radiant-heat burner held unpatentable, overturning a 4th Circuit Court of Appeals ruling to the contrary), as well as the 1976 case of Sakraida v. Ag Pro (claimed invention on a water flush system to remove cow manure from the floor of a dairy barn held unpatentable, also overturning a 5th Circuit Court of Appeals ruling to the contrary, often crudely and derisively referred to as the “cowshit” case). In both of those cases SCOTUS essentially restated that “synergy” was required for the patentability of “combinations of old elements.” But as accurately observed by the late and former Chief Judge of the CCPA and then the Federal Circuit, Howard Markey, all inventions comprise, in some way or another, a “combination of old elements.” Indeed, this suggested requirement for “synergy” in both of these cases cannot be reconciled with the second sentence of Section 103 which says that “patentability shall not be negatived by the manner in which the invention is made.” In both of these cases, SCOTUS deemed itself free to ignore this express language in Section 103, apparently (and distastefully) believing that, in terms of patent law jurisprudence, it is not governed by the Rule of Law enacted by Congress, but, instead, can act by the Rule of Judicial Fiat.
What makes SCOTUS’s assertions in patent law jurisprudence that there are these “exceptions” or additional “requirements” particularly annoying to many of us in the patent bar is that patent law is essentially statutory. In other words, there should be no “federal common law of patents” that allows SCOTUS (or any other court for that matter) to make “exceptions” to or make additional “requirements” for what is already expressly written in the patent statutes. Indeed, in other areas of federal law, SCOTUS has made it abundantly clear that “federal common law” doesn’t exist. The most famous example is Erie v. Tompkins where SCOTUS overturned its prior view of a “federal common law” applicable in cases involving diversity jurisdiction. So we in the patent bar may rightly ask: why does SCOTUS believe it can create what is, in essence, a “federal common law of patents” to supplant or modify the existing patent statutes?
TO BE CONTINUED… Up next will be discussion of the creation of the Federal Circuit and how Congress initially succeeded in rebuffing the Supreme Court’s dominance over patent law jurisprudence.