What the passing of Justice Antonin Scalia means for SCOTUS patent jurisprudence

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.

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.



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Join the Discussion

17 comments so far.

  • [Avatar for step back]
    step back
    February 20, 2016 07:45 am

    (But then I start wondering if many in the public –even lawyers– recall their study of government and that by innuendo you mean it is CONGRESS that is supposed to draft and pass the laws. The courts are to act merely as a check and balance, not as a superior creature that overwrites on top of Congressional law. That check and balance asks if the Congressional law is unconstitutional because abridges one or more fundamental aspects of the Constitution such as freedom of speech, freedom of religion, etc. There is no Constitutional right to freely take inventions just because one says they are “directed to” abstract ideas. SCOTUS made that part up out of thin air.)

  • [Avatar for step back]
    step back
    February 20, 2016 07:37 am

    Anon @15


    Couldn’t have said it better than you.

  • [Avatar for Anon]
    February 19, 2016 05:00 pm

    Had Scalia been tasked with writing on 101 in Bilski, we would have gotten some clarity, I am sure.

    tasked with writing on 101

    Can we be any less guilty of not understanding – on purpose – which branch of the government – and the ONLY branch of the government – that our Constitution has authorized to write patent law?

    101 is exceptionally clear on its face, and it is only through nose-of-wax mashing that the Court has placed its pre-1952 grasping of power into 101. Breadth is just not the same thing as lack of clarity. That Congress choose so broadly is simply not something the Court has authority to constrain by its implicit (and explicit) re-writing.

  • [Avatar for Edward Heller]
    Edward Heller
    February 19, 2016 02:31 pm

    a Rational, on your point about fuzziness, I agree.

    Equity is about “fuzz.” Law is about clear rules.

    Scalia always argued that we need clear rules from the Supreme Court on what the law is, rather than some hodgepodge of considerations that have to balanced.

    Regarding 101, Benson, of course, was anything but clear and it lead to 40+ years of back and forth chaos. Your complaint about Alice misses the target. The real problem is with Bilski and its declared “abstractness” reason for holding the claims there invalid. No one knew what that meant, just like no one really knew what Benson meant.

    We really need better from the Supreme Court. Had Scalia been tasked with writing on 101 in Bilski, we would have gotten some clarity, I am sure.

  • [Avatar for A Rational Person]
    A Rational Person
    February 19, 2016 01:09 pm


    So much in your post is so true.

    The Supreme Court is supposed to just decide the case in front of it and “just call balls and strikes”. Instead the justices legislate from the bench.

    The Supreme Court is supposed to resolve disputes among the Circuits and provide guidance to lower courts. But the justices don’t do this. In fact, the Supreme Court regularly makes things worse by replacing objective tests used by the lower courts with Supreme Court’s vague subjective guidelines that have as little basis in the statute as whatever test the lower court may have created and actually make it harder for the lower courts, administrative agencies, etc. to do their jobs in a consistent and fair manner, see for example, the KSR decision and the Alice-Mayo “test”.

    In KSR, the Supreme Court: (1) overruled decades of decisions regarding 35 USC 103, (2) replaced a relatively objective test developed by a circuit court, i.e., the Federal Circuit, tasked with providing uniformity to patent law with the Supreme Court’s own set of subjective guidelines that have no more basis in the statute than the TSM test did, (3) gave no consideration to the need for some type of objective test of obviousness given the need for thousands of Examiners to make the determination obviousness with respect to millions of claims every year, and (4) provided no explanation how the Supreme Courts’ newly created test for obviousness protected a patent applicant’s claim from being judged with impermissible hindsight by a judge or an Examiner.

    In Alice, Mayo and Myriad, the Supreme Court: (1) ignored decades of judicial interpretation 35 USC 101 for no good reason, (2) effectively rewrote 35 USC 101 on the fly, (3) provided no explanation why other parts of the patent statutue, i.e., 35 USC 102, 35 USC 103 and 35 USC 112, did not address the Court’s “justifications” for rewriting 35 USC 101, (3) ignored the fact that 35 USC 102, 35 USC 103 and 35 USC 112 could in fact be used to address each and every one of the Supreme Court’s “justifications” for rewriting 35 USC 101, (4) created vague guidelines that require understanding what terms such “abstract” and “significantly more” mean to implement in a fair and just manner, but provided no definition of such terms, (5) failed to recognize they had created a judicial exception that swallowed the rule, and (6) gave no thought at all to the turmoil that would be caused by making such a drastic change to the interpretation of 35 USC 101.

    The Supreme Court justices have repeatedly shown themselves to be both arrogant and incompetent at doing even the most basic things with respect to their jobs.

  • [Avatar for Anon]
    February 19, 2016 10:38 am

    Sadly true step back.

    Maybe with a pizza over the weekend we can “reprogram” the errant belief that the Supreme Court is (or even should be) above the Constitution and can do “no wrong” or even violate the separation of powers (or write law – common law where statutory law is ordained by the Constitution – that fails the Void for Vagueness doctrine.

    So many things that we as attorneys with our individual state oaths – not to the supremacy of the High Court, but instead to the Constitution should be upset about, and yet so many would push for more of that Court writing the law because of the apparent coinciding with a certain desired ends.

    It is shameful really – and a direct dereliction of our** oaths***.

    **in the Royal You sense of “our,” of course.

    *** I would love to be wrong on this, so if anyone has an example of a state oath that places the Supreme Court above the Constitution, please post that state and its oath here.

  • [Avatar for A Rational Person]
    A Rational Person
    February 19, 2016 10:32 am

    Edward@7 and Step@8,

    Step, I actually agree with Edward about his “tide of anger” comments. I think Edward has accurately assessed the predicament the Republican Senators are in. The problem is that the Supreme Court appointment has the possibility of giving social issues an increased importance in the 2016 election, and the more the election is about social issues, the more likely the Democrats are to win the presidency and take the Senate. The Republicans would much prefer if the election was only about security and economic issues, i.e., the issues where more voters align with the Republicans than the Democrats.

    During the next few months, I would expect the Republican candidates for the Senate in 2016 in states carried by Obama in 2012 to start trying to show their independence from the Republican party during the next year, similar to the way that Democratic candidates in red states tried to (unsuccessfully) show their independence from the Democratic party in the 2010 election after Obamacare was passed. I think the issue of corporate money in politics is every bit as toxic an issue now as Obamacare was in 2010 for swing voters.

  • [Avatar for step back]
    step back
    February 19, 2016 08:24 am

    Anon @9

    Good points.

    Let’s not also forget to ask for a set of judges who have practiced at the district level and know the difference between expert testimony given under oath and with option of being cross examined as opposed to argumentative briefs filed by alleged “friends” of the court.

    If you carefully parse Scalia’s lament in the Myriad case, you will note that he rests his trust in an emotion based pick of which friend briefs are the “expert” ones to be trusted with no cross examination but simply on the basis of his “belief”:

    “I join the judgment of the Court, and all of its opinion except Part I–A and some portions of the rest of the opinion going into fine details of molecular biology. I am unable to affirm those details on my own knowledge or even my own belief. It suffices for me to affirm, ***having studied*** the opinions below ***and the expert briefs presented here***, that the portion of DNA isolated from its natural state sought to be patented ***is identical*** to that portion of the DNA in its natural state; and that complementary DNA (cDNA) is a synthetic creation not normally present in nature.” –Myriad Genetics

    For sooth and for shame Antonin. Every first year organic chem student knows that a small chain molecule is not “identical” to a longer chain molecule. Methane is not identical to propane. Your banana plucking “friends” misled you and the rest of your too smart to be fooled 8 other bench warmers.

  • [Avatar for Anon]
    February 19, 2016 07:50 am

    As to “ because the Scalia seat is just that important,” while indeed important due to its timing, it is but one seat.

    Let’s not forget:
    Ginsburg (fast approaching 83)
    Kennedy (79)
    Breyer (77)

    Likely within the next President’s term, these Justices will need to be replaced, which will fundamentally change the Court’s makeup (a majority will have less than 10 years experience on the Bench of the highest court in the land – adding four more to the less than decade experience of Sotomayor and Kagan).

    Now – more than ever – we need to rethink just how powerful that Court has become and reign in the view that they are above the Constitution itself.

    I do not care in the least the gender, ethnicity, or sexual orientation of the Justices nominated. Give me first and foremost those who respect the Constitution as the highest law in the land, who respect that Rule of Law, and who respect the separation of powers that controls even (especially) the Court itself.

  • [Avatar for step back]
    step back
    February 19, 2016 02:34 am

    A “tide of anger”?
    You mean Trump’s hairpiece is abandoning his expletives deleting skull and pushing out on its own to foment a tsunami of right wing angst?

    Are we still at the IPWatchdog site or have we barked our way out to the Savage Nation station? Just wondering. 😉

  • [Avatar for Edward Heller]
    Edward Heller
    February 18, 2016 07:42 pm

    A rational, If the Republicans in the Senate cave to the O-man on this issue, all of them voting to confirm will be swept from office in a tide of anger from the Republican base whose ferocity cannot be underestimated. There is a reason the that Trump and Cruz lead over the more traditional Republicans. The base is nonplussed even now by what they perceive to be consistent caving into the O-man by the Republican congressional leadership.

    No doubt the Democratic Party base will similarly be motivated.

    So the upcoming election will be monumentally important for both parties because the Scalia seat is just that important.

    BTW, I found out the other day that Scalia was not only the first Italian-American to be on the bench, he was the first Catholic! Can you believe that? Talk about discrimination.

  • [Avatar for A Rational Person]
    A Rational Person
    February 18, 2016 04:22 pm


    You may not want to hear this, but if Obama and the Democrats plays their cards right, they use the failure of the Republican Senate to confirm his Supreme Court nominee to make the issue of restricting corporate contributions to political campaigns, i.e., overturning Citizens United decision, a major issue for the Democrats to run on in 2016, Corporate spending on campaigns is truly hated by a large percentage of Americans:


    There are a bunch of first-term Republican Senators running in blue states that would prefer that the confirmation of a Supreme Court justice to overturn Citizens United not be a campaign issue.

    Also, if Obama thinks strategically (a big “if” based on his past behavior), he should realize that with a few notable exceptions a Supreme Court split 4-4 is already an improvement on a Supreme Court that was often 5-4 against the Democrats and would not be the worse thing to have while bashing the Republican controlled Senate relentlessly on not affirming the first Asian Supreme Court justice, the first Female African-American justice, etc.

    And, to really be strategic, I would not be surprised if the Administration reviews which Circuits have a majority of Obama appointees and start bringing cases that would previously have been reversed by a Supreme Court a Supreme Court including.Scalia just to get a bunch of Circuit Court decisions on the books that will not be reversed for at least a year or more.

    If the Republicans don’t confirm the Obama’s nominee, its possible we would not have a full complement of 9 Supreme Court justices until the spring of 2017, by which time it might be too late for the new justice to participate in many pending decisions prior to the Supreme Court’s annual recess in June of 2017. So there could effectively be a 4-4 court until fall of 2017 with many decisions with the new justice not being decided until 2018, two years or more from now.

    If Obama and the Democrats are smart (once again, a big “if” and there is strong evidence that they are not that smart) there are a lot of ways they could game this situation to their advantage.

  • [Avatar for Edward Heller]
    Edward Heller
    February 18, 2016 03:41 pm

    Listen, all this brouhaha over this or that liberal candidate will just have to await the election. If a Democrat wins, the Republicans then will be more inclined to approve O-man’s appointee. If a Republican wins, then the replacement will be a Republican.

    As to how any of this affects patent law, I do not think it makes any difference at all. My own personal opinion is that Kennedy’s opinion in Bilski was the worst patent opinion in history because he gave us “abstract” without any definition of what that term means and no explanation as to why the claims in that case were abstract.

    Also to remind people, Stevens was a Republican just as was Kennedy.

  • [Avatar for step back]
    step back
    February 18, 2016 02:43 pm

    Friends, Rouge patent practitioners and countrymen; I come not to praise Scalia but rather to validate him. For who else among the robed Olympians confessed to not understanding biochemistry in the Myriad case? Who else among the unquestionable legal scholars wondered in Alice orals why the cotton gin was also not an abstraction under the Mayo doctrine?

    At minimum we will miss one of the last soothsayers on the bench. Rest in peace oh noble and sharp forked tongue master.


  • [Avatar for A Rational Person]
    A Rational Person
    February 18, 2016 10:56 am

    One intriguing possibility about Scalia’s replacement is that you might get justice who at least has a better grasp of computer technology than the current justices do. Patent law is one of the areas where there is not currently a liberal-conservative ideological split on the Supreme Court. This means that the recent bad patent decisions, with the notable exception of Kimbel v. Marvel, tend to have more to do with the justices’ technological ignorance and ignorance with respect to the details of patent law (see Scalia’s “gobbledygook” comment in KSR http://www.law360.com/articles/20046/gobbledygook-at-the-supreme-court).

    For example, if someone such as Sri Srinivasan, who has actually be involved in patent litigation regarding computer-related technology is appointed, could such a justice elevate the level of discourse at oral argument during patent cases and be the voice of reason in reaching decisions on patent law cases? Such a voice does not appear to exist among the current justices.

    Of course, such a justice might just hate the idea of software patents and make things worse.

    Here’s a description of the patent case in which Srinivasan is listed as one of the attorneys:


  • [Avatar for Paul F, Morgan]
    Paul F, Morgan
    February 18, 2016 09:41 am

    Assuming “no presumption of validity” in an IPR, how much practical difference does that make, since the burden of proof with adequate evidence and arguments to institute an IPR and then to invalidate claims is on the petitioner, not the patent owner? Does that not effectively amount to the same thing as a rebutable assumption? I.e., are not other differences between IPRs and D.C. lay jury trials far more important?

  • [Avatar for Edward Heller]
    Edward Heller
    February 17, 2016 07:31 pm

    “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.”

    Agreed, and because of this, Scalia would not be a vote in Cuozzo’s favor on the BRI issue. That might be decisive.