On Saturday, February 13, 2016, Justice Antonin Scalia of the United States Supreme Court passed away in a hotel room in Texas. Justice Scalia is perhaps best known for his conservative philosophy and desire to strictly construe the Constitution, relying on the text of the document. Justice Scalia was also ardently opposed to the use of legislative history to interpret statutes, again preferring a strict textual construction.
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. 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 an automatic right to a permanent injunction; rather, the court must consider the four-factor injunction test, despite the fact that a patent grants a supposedly absolute 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 rationale 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 that an invalidity defense be proven 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 a discussion of the legislative history.
Scalia Patent Opinions
While Justice Scalia may have been influential behind the scenes on patent issues, he did not author what one would consider to be any of the major patent decisions during his time on the Supreme Court. 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 cases. Three of the cases related to trademarks and two of the patent cases related to constitutional issues.
The patent cases where Justice Scalia authored the opinion for the Supreme Court are:
- 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 the answer contains 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.