Musings on Justice Scalia and the Hard, Dull Patent Cases

Justice Antonin Scalia

Just over one week ago Justice Antonin Scalia of the United States Supreme Court was interviewed by Piers Morgan of CNN. See Scalia CNN transcript.  During the interview Justice Scalia said that the hardest decision he has had to make in his time on the Supreme Court was in a patent case.  The patent case remained unnamed, which lead me to ask some within the industry to take a guess about which case Justice Scalia may have been referring to.  See Justice Scalia: Hardest Decision “Probably a Patent Case”.

I received a few responses from those who did not opine as to what case Justice Scalia might be referring to, but rather commented generally about the interview and what Justice Scalia said relative to patent cases being difficult, dull and insignificant.  What follows below are those musings from industry insiders.

Stay tuned for my own thoughts and musings.


Charles Gorenstein
Birch, Stewart, Kolasch & Birch

I don’t find it very surprising that Justice Scalia characterizes a patent case as his most difficult decision, whichever case that might be.  Mr. Scalia and the other justices are, without doubt, individuals possessing outstanding intellect and command of the law, and nothing here is intended to suggest otherwise. However, when addressing some of the more difficult issues that arise in connection with patents, they are required to deal with matters and concepts that are not only extraordinarily difficult, but which are foreign to persons of ordinary experience, i.e., persons generally lacking in technical background and not extensively familiar with patent law and practice.

Let’s not forget that, with the possible exception of Admiralty, Patent Law has long been the only recognized specialty in the U.S. legal system. I would submit that this is no accident.  Patent law requires an understanding of the law and the legal system, an understanding of the world of technology in both broad conceptual strokes and in its specific applications and manifestations, an understanding of the interface between those two disparate worlds, and a grasp of the complications imposed on the whole situation by the vagaries of the human thought process. That is outside of the scope of experience of most persons, including most of the finest jurists.

It requires a great deal of experience with the many twists, turns and nuances of patent law and practice to appreciate how all these things interplay with one another, or to understand the broad ripple effects of decisions on what might appear to be a single issue.  It requires still more in the way of understanding to be able to articulate the basis for any decision in a way that makes sense across the spectrum of issues that will be impacted by such decision.  Decisions of the Supreme Court, both recent and in the more distant past as well, too often indicate that the Court understands the nature of the desired result, but is unable to articulate the basis and reason for the decision in a way that actually makes sense across the spectrum of patent issues or provides reasonable guidance to patent applicants or litigants.  In patent cases the justices are too often grappling with matters and concepts which are well outside of their “comfort zones.” As a result, despite best efforts and intentions, decisions of the Court often inject new uncertainty into, rather than resolve issues on appeal.


Scott Daniels
Westerman Hattori Daniels & Adrian, LLP

About 20 years ago, when our daughter was in the second grade, her class had something called “Career Day.” Each week a parent was invited to describe his or her workday. By the time that my name rose to the top of the list, there had been several interesting careers represented, including some in law enforcement. The teacher asked my daughter to introduce me, saying what it was I did.  She looked nervous and said that I was  “a patent pender.”  My presentation started slowly, so the teacher threw in the comment that people could make a lot of money inventing and patenting inventions. Then some of the students started to ask questions. What happens if two people separately make the same invention? What proof is needed to show invention? Does it have to be on paper? Do you need witnesses? My interference knowledge was being put to the test as never before. Finally, one child asked what if two people made the same invention on the same day? That has never happened, I confidently answered. Several days later I received a handful of letters from our daughter’s classmates — no doubt written under the coercion of the teacher — thanking me for coming. One letter said: “I used to think that patent law was the most boringest thing in the world, but you taught me!” So, you see, Scalia has it all wrong.


Andrew Beckerman-Rodau
Suffolk University Law School

Not sure which decision he is referring to. However, when I read patent decisions by the Supreme Court generally I am sometimes left with the feeling that the court doesn’t like having to decide patent cases. They obviously must think the cases are important or they would not grant cert. However, the opinions are sometimes rather short, sometimes devoid of substantial analysis or both. For example, the eBay case from a few years ago changed almost a century of clear established precedent with a brief opinion that was no more than three pages. The majority opinion lacked any real explanation for the change in the law.


Mark Nowotarski
Markets, Patents & Alliances, LLC

What a great insight into the thinking of the Supreme Court.  In essence they are saying that patent law is hard, but insignificant.  That’s simultaneously exciting and sobering.  Exciting because it says we work in one of the toughest areas of the legal profession.  Sobering because it says we are not doing our job of positively impacting most people’s lives.

We need to look to the future and envision new laws and new structures that clearly support innovation but are much easier to understand.  I personally am very excited about the whole field of crowdfunding.  It is a new and powerful tool that addresses THE critical issue in new product development – how to get seed capital to start your company, build your prototypes and get your product to market.  Whether it’s preselling your product (e.g. Kickstarter) or mass marketing equity in your company (e.g. JOBS act), new frontiers of business growth are being explored and legal conflicts are going to arise.  I hope that when the Supreme Court gets these cases, they will find them a lot more important and much easier to decide.


Mark Summerfield
Patentology Blog

Interesting comments from Justice Scalia, although it is hard to imagine any patent case that makes it to the Supreme Court being described as ‘insignificant’. Perhaps Justice Scalia had CNN’s audience in mind, in which case he may quite rightly have assessed that the general level of community interest in patent cases is not likely to be high. A discussion of the issues addressed in MercExchange, KSR, Bilski or Prometheus would hardly make for exciting television!

At the Supreme Court, he at least has the benefit of not having to sit through days of evidence, testimony and argument. So we know he is not referring to spending hours listening to opposing counsel argue over such minutiae as the meaning of the word ‘data’, as was the fate of Justice Bennett in the Federal Court of Australia yesterday.


Stephen Moore
Kelley Drye & Warren, LLP 

My first thought is that he must be referencing one of the few patent cases in which the Court split on the decision such as Stanford v. Roche which held that the University and Small Business Patent Procedures Act of 1980 (“the Bayh-Dole Act”) does not automatically vest title to federal contractors for inventions conceived, or first reduced to practice with the support of federal funds.  This is pretty dry stuff.  However, I am going to go with a case that was unanimous in decision, but far reaching – Mayo Collaborative Services v. Prometheus Laboratories.  I am guessing the same because the whole concept of “laws of nature, natural phenomena, and abstract ideas” while sounding in prinicipal as simple, is in reality a bear to deal with, particularly given the Supreme Court case law that preceeded the Prometheus decision.



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Join the Discussion

8 comments so far.

  • [Avatar for step back]
    step back
    July 30, 2012 08:53 am

    they are seemingly stuck in an Ivory Tower


    More likely, they (Scalia & friends) are trapped inside a shopping mall.

    The mall delivers magic. (“Too Much Magic” according to Kunstler)

    You want an iPhone, iPad or iNextBigLittleThing?


    Walk into the local Apple store and “buy” it.
    The market delivers.

    You want an iShoe, iShirt, iWear?


    Walk into the local Walmart store and “buy” it.
    China Inc. delivers.

    Very few people (Scalia included) have a clue of where stuff comes from.

    Try this very simple thought experiment on your friends:
    (I did and was astonished re how few knew the answer)

    You can plant a tiny acorn in the ground …
    and then come back a few years later
    to find a might oak tree standing there;
    filled with hundreds of pounds of solid, heavy “wood” stuff.

    Where did all that stuff come from?

    Hardly anyone knew (if they understood the question to begin with).

    And you want Scalia to understand where inventions (oh sorry, I meant to say “innovations”) come from?
    Good luck.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 28, 2012 08:40 pm

    After getting a chance to read all of the opinions, I think that Scott makes thr most compelling *argument* by saying very little except what happens to be true. Patent law is very boring, unless you have happened to invent something, whereupon it gets very interesting.

    But then again, I happen to actually Like doing patent searches, to discover where I am not able to go. I find that I usually invent about 2 new things per day when I am in Full Search mode, as bits of this and that collide with what I have done in the past.

    Mark Summerfield makes a very valid point in my opinion, when he suggests that a Supreme Court Justice describing a patent case as being “insignificant” is a very telling bit of evidence that would seem to suggest that they are seemingly stuck in an Ivory Tower somewhere, and who knows what they are using for a foundation for their assertions. I don’t especially need to get too worked up about it, because there is little that can be done in any event, but I don’t have to like their *wisdom* very much.

    I think they just dropped back and punted, because they realized that they mostly didn’t have a clue about what to do. In their Ivory Tower, they will most likely not have to watch, as their *subjects* are driven out of business by their careless decisions.

    ” What- Me Worry?” ( Alfred E. Nueman)

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 28, 2012 01:16 pm

    Step Back-

    Interesting that you mention Alan Turing, as I think he was involved in breaking the German Enigma Code during WWII, which probably caused the defeat of the Nazi war machine about 2 years earlier that it might have been otherwise. Without him we might all be sprechen aus Deutches right about now.


  • [Avatar for Paul Cole]
    Paul Cole
    July 27, 2012 07:51 am

    @ Step Back

    If what I have read is correct, Dick Feynman ran the computing department for the Manhatten Project. They had teams of operators performing mathematical calculations on the mechanical desk calculators of the time. Complex operations had to be broken up into simple tasks which could be carried out by relatively unskilled people working as a team. So a computing team of 1944 was in effect doing much the same type of operation as subsequently transferred to an electronic computer. And a “computer” can indeed be a human being and certainly was so in 1944.


    Those who write briefs for the Supremes (and especially the amici) should bear in mind their audience. This not an expert court, the technology will be unfamiliar, the applicable law will be unfamiliar, and the patterns of thought may differ significantly from other areas of the law. And it would be good if some of the cases sent to them were really worthwhile and important engineering or scientific breakthroughs and not cases at the margins. Difficult to achieve that though, since it is thr marginal cases which get litigated.

  • [Avatar for step back]
    step back
    July 26, 2012 06:04 pm

    Dear Alan Turing, (semicolon or other end of line delimiter)

    You are an ID-8 [;]
    You do not know what a “computer” is [;]
    Only the 3 CAFC judges sitting on the BANCORP SERVICES v. SUN LIFE know [;]
    They have defined the “computer” in clear and unequivocal terms:

    “At its most basic, how-ever, a “computer” is “an automatic electronic device for performing mathematical or logical operations.” 3 Oxford English Dictionary 640 (2d ed. 1989). As the Supreme Court has explained, “[a] digital computer . . . operates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.” Benson, 409 U.S. at 65. Indeed, prior to the information age, a “computer” was not a machine at all; rather, it was a job title: “a person employed to make calculations.” Oxford English Dictionary, supra. Those meanings conveniently illustrate the interchangeability of certain mental processes and basic digital computation, and help explain why the use of a computer in an otherwise patent-ineligible process for no more than its most basic function—making calculations or computations—fails to circumvent the prohibition against patenting abstract ideas and mental processes. “

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    July 26, 2012 05:20 pm

    Or should I say:

    .–. .-.. . .- … . / -.. — -. / – / .. -. …- . -. – / .- -. -.– — — .-. . / … – — .–.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    July 26, 2012 05:13 pm

    Please don’t invent anymore. Stop.


  • [Avatar for step back]
    step back
    July 26, 2012 05:01 pm

    Dear William F. Morse. Stop.
    Your work is insignificant. Stop.
    And it merely recites a law of nature. Stop.
    Please don’t invent anymore. Stop.
    Progress was inevitable with or without you. Stop.
    Progress is inevitable with or without any inventor.
    It is an inherent force of markets and human nature.
    Stop. We don’t need no stinkin patents. Stop.
    They are a waste of time. Stop.

    p.s. I wish you had invented a Morse code symbol for sarcasm face. End.