Justice Scalia: Hardest Decision “Probably a Patent Case”

One week ago, on July 18, 2012, Justice Antonin Scalia of the United States Supreme Court sat down for an interview with Piers Morgan of CNN.  See Scalia interview transcript. During the interview Morgan asked Scalia what his hardest decision has been while on the Supreme Court.  This was the back and forth that ensued:

MORGAN: What has been your hardest decision, do you think?

SCALIA: My hardest?


SCALIA: You don’t want to know.

MORGAN: I do want to know.

SCALIA: No, it’s the dullest case imaginable. They — there is — there is no necessary correlation between the difficulty of a decision and its importance. Some of the most insignificant cases have been the hardest. And…

MORGAN: What has been the one that you…

SCALIA: It would probably be a patent case.

You want me to describe it really?

MORGAN: No, I don’t.


SCALIA: No. Of course. (LAUGHTER)

I thought it might be fun to ask some industry insiders what their guess was as to the unnamed case Justice Scalia was thinking of as the “hardest decision.”  Some of those I asked didn’t offer a guess, but rather took the opportunity to discuss the aforementioned Scalia statements more generally.  Those “musings” will be published tomorrow.

I will also publish an article with my own take, as well as criticism of Justice Scalia for saying that patents as being in the category of  “most insignificant cases.”

I think everyone here makes a good case for their choice.  Having said that, I can’t believe it would be a patentable subject matter case.  Sure, we in the industry understand just how hard they are, but does the Supreme Court?  In any event, for the record, my own guess is Stanford v. Roche, but stay tuned for my no-holds-barred analysis!


Bob Stoll
Former Commissioner for Patents, USPTO
Drinker Biddle

I am pretty sure that Justice Scalia is referring to the Bilski decision, where he joined the majority for most of the opinion but did not sign on to the part of the decision relating to the impact the “machine or transformation” test would have on the patentability of software. I also think it is interesting that he did not join the part of the decision that stated that the “machine of transformation” test would have been adequate for the “industrial age” but not the “information age”. The case took a long time to decide and I think both sides were trying hard to get Justice Scalia to join them. Justice Scalia has been considered a strict constructionist that viewed the Constitution through the intent of the framers and seems carry that concept to technology. The decision is narrowly drawn and still recognizes that business method patents can be patent eligible subject matter, for which I thank Justice Scalia.


Stephen Kunin
Oblon, Spivak, McClelland, Maier & Neustadt

If I were to speculate as to which patent case Scalia was referring to as his hardest case to decide it would be the Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 131 S. Ct. 2188 (2011) decision.  The Supreme Court refused to accept the argument that the Bayh-Dole Act automatically vested title to all federally funded inventions in federal contractors.  The Court determined that Congress did not intend to override the accepted rule that ownership of an invention vests in the inventor, even when the inventor makes the invention during the course of employment in projects by a federal contractor funded by the federal government.  The Court, however, raised significant questions about Federal Circuit law on the interpretation of employee assignment agreements.  Individual judges refused to accept the Federal Circuit’s distinction between agreements to assign future inventions and present assignments of future inventions.  This was an outcome that was not predicted by many prognosticators of Supreme Court cases who believed that the Supreme Court would not have granted certiorari if they intended to affirm the decision of the Federal Circuit.

Many would argue that the dullest patent case would have been KSR v. Teleflex.  But I doubt that it would have been the hardest case for Scalia since most Supreme Court cases on nonobvious have concluded that the claimed invention would have been obvious.


Hans Sauer, JD, Ph.D.
Deputy General Counsel for Intellectual Property at BIO

Justice Scalia is probably referring to the 1990 decision in Lilly v. Medtronic, 496 U.S. 661, where he had the unenviable task of construing the infringement safe harbor under 35 U.S.C. 271(e)(1). “No interpretation we have been able to imagine can transform 271(e)(1) into an elegant piece of statutory draftsmanship.”


Beth Hutchens
Hutchens Law Offices

Justice Scalia recently told CNN that one of his hardest decisions was “probably a patent case”.   In the interview he adopted a tongue in cheek approach that we patent practitioners see all too frequently- a dismissiveness that borders on apathy.   When I read the interview I said to myself “He MUST be talking about Bilski”.  I remember in the days leading up to the decision we were all speculating as to what patent law would be like after the Court handed down its ruling.  The software and business method people were having kittens over this and I think we were all wondering what the hell we we’re going to argue if they turned machine-or-transfer on its ear and then…


It’s such a weird opinion that doesn’t really say anything.  In reading it, I could tell the Court was bored with the subject and I couldn’t help but wonder which clerk drew the short straw and had to write it.  Bilski could have been a game-changer if there was a patent geek on the bench but the Court just kind of said “Meh- whatever.”  So to hear Justice Scalia mention the word insignificant just before mentioning a patent case tells me that for the sake of decorum he couldn’t come out and say that he thought Bilski was a snooze fest.  But I bet he wanted to.


Mark Summerfield
Patentology Blog

For a maximum of both difficulty and dullness, my guess would be Bilski. The outcome was completely unsurprising — did anybody really think that the Supreme Court would reach a different decision on patent-eligibility than the USPTO, the BPAI, or the Federal Circuit (either the original panel, or en banc)? However, as those of us who work in this area know only too well, getting one’s head around all of the various issues and arguments weighing for and against patent-eligibility in light of particular claim language chosen by the applicant can be enough to give anyone a migraine!

The challenge for the Court in Bilski was not in finding that the claims were not patent-eligible, but in trying to explain why not in a clear and coherent manner. While some would no doubt argue that the Court failed in this regard, few would dispute the mind-numbing difficulty of the task.


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Join the Discussion

4 comments so far.

  • [Avatar for EG]
    July 26, 2012 11:54 am


    I stand (appropriately) corrected. Contrary to what Justice Stevens disingenuously said in Bilski, 35 USC 273 plainly recognizes that so-called “business methods” are patent-eligible under 35 USC 101.

  • [Avatar for Anon]
    July 26, 2012 10:17 am


    I would beg to differ with your characterization of “tacit.” My understandign of that word is “Understood or implied without being stated” with synonyms of silent – implicit – mum – mute – implied.

    35 USC 273 does more than that.

  • [Avatar for EG]
    July 26, 2012 08:57 am


    If it isn’t Bilski or Stanford, my vote is MedImmune, the most recent patent case that Scalia has authored.

    In my opinion, Scalia gets, at best, a C- on IP cases. Medtronics, which he authored, is probably, at best, a D, given that the floor managers in the Senate and House told SCOTUS that the”safe harbor” covered only drugs, not medical devices or anything else subject to FDA jurisdiction.

    I will say that in Bilski that, while Scalia doesn’t believe “business methods,” however you define them, are patent-eligible, he wasn’t willing to ignore the impact of 35 USC 273 which is tacit Congressional recognition that they are.

  • [Avatar for step back]
    step back
    July 26, 2012 06:37 am

    I really don’t care “which” patent case Scalia considers to be his hardest (KSR v Teleflex and the “gobbledygookness” of obviousness?).

    But it does trouble me that Scalia sees it as being “insignificant”.

    The wealth of our nation rests on a long list of inventors and how they transformed the economic landscape. What is “insignificant” about that?