Chapter §13.04 U.S. Supreme Court

JurisdictionUnited States

§13.04 U.S. Supreme Court

[A] Before Formation of the Federal Circuit

The U.S. Supreme Court decided numerous patent cases in the nineteenth century.482 In 1891, the Evarts Act's creation of the Federal Courts of Appeals greatly reduced the number of cases heard by the Supreme Court.483 In much of the twentieth century, the Court was hostile to patent ("monopoly") holders in those cases it chose to hear on certiorari.484

[B] After Formation of the Federal Circuit

After the 1982 formation of the U.S. Court of Appeals for the Federal Circuit as the single national venue for all patent appeals, the Supreme Court no longer needed to correct inter-circuit conflicts in patent cases. As a result, the U.S. Supreme Court now reviews patent-related appeals relatively infrequently. Given the currently limited number of Supreme Court decisions in patent cases, such decisions receive close attention from the patent community.485

Supreme Court review of patent cases now tends to resolve intra-circuit conflicts; that is, opposing views expressed and sometimes-conflicting decisions reached by various panels of Federal Circuit judges. In the first decade of the twenty-first century, commentators observed that the Supreme Court took a noticeably more active role in making course corrections to the Federal Circuit's stewardship of U.S. patent law.486



[482] See Efthimios Parasidis, A Uniform Framework for Patent Eligibility, 85 Tulane L. Rev. 323, 332 (2010) (stating that "throughout the nineteenth century, patent litigation was rampant and frequently culminated at the Supreme Court, where the Court not only painstakingly reviewed individual technologies for validity, but filled the statutory void through the establishment of several fundamental patent doctrines"); Parasidis, 85 Tulane L. Rev. at 343 (stating that "the Supreme Court had an active patent docket between 1852 and 1895. Indeed, one often overlooked fact is that during this time period the Court issued more than 500 patent-related opinions") (citing Westlaw search results).

[483] See Evarts Act of Mar. 3, 1891, 26 Stat. 826 (1891); See also Litman v. Mass. Mut. Life Ins. Co., 825 F.2d 1506, 1508 (11th Cir. 1987) (explaining that the Evarts Act "established the circuit court of appeals as a separate intermediate level court. The primary objective of the Evarts Act was to relieve the Supreme Court of the excessive burden imposed upon it arising from the rapid growth of the country, and the steady increase in litigation, by transferring a considerable part of its appellate jurisdiction to the Circuit Court of Appeals, and making the judgments of that Court final, absent compelling circumstances."); Gary M. Hoffman and Robert L. Kinder, Supreme Court Review of Federal Circuit Patent Cases—Placing the Recent Scrutiny in Context and Determining If It Will Continue, 20 DePaul J. Art, Tech. & Intell. Prop. L. 227, 230 (2010) (explaining that "[u]p through the industrial revolution, the Supreme Court was forced to review the merits of any patent case that a party chose to pursue. After the enactments of the Judiciary Acts of 1891 and 1925, Congress granted the Court discretionary review of patent infringement actions. In the patent arena, along with other areas of law, these Acts enabled the Court to set its own course in deciding which cases to hear and which questions to answer. Thereafter, a party wishing to appeal a patent dispute would file a petition for certiorari, which the Court could grant or deny without deciding on the merits.") (footnote omitted).

[484] Supreme Court Justice Jackson observed in 1949 that "the only patent that is valid is one which this Court has not been able to get its hands on." Jungersen v. Ostby & Barton Co., 335 U.S. 560, 572 (1949) (Jackson, J., dissenting).

[485] Notable U.S. Supreme Court patent decisions issued since 1996 include Peter v. NantKwest, 140 S. Ct. 365 (Dec. 11, 2019) (Sotomayor, J.) (unanimously holding that the "expenses" to be paid by a patent applicant in a civil action against the USPTO Director to obtain a patent do not include the USPTO's attorney fees); Return Mail, Inc. v. United States Postal Serv., 139 S. Ct. 1853 (June 10, 2019) (Sotomayor, J.) (holding that a federal agency is not a "person" entitled to challenge the validity of a patent post-issuance in the USPTO via an IPR, PGR or CBM proceeding); Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 628 (Jan. 22, 2019) (Thomas, J.) (holding that under 35 U.S.C. §102(b) (AIA version), the on-sale bar to patentability may be triggered by a sale in which the purchaser is required to keep the details of the invention confidential); WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (June 22, 2018) (Thomas, J.) (by 7–2 vote, holding that patentee who established infringement under 35 U.S.C. §271(f)(2) based on defendant's export of specially adapted components from United States was entitled to remedy of foreign lost profits for ten contracts patentee failed to obtain with foreign customers due to the infringement; the infringing act of export occurred in the United States and this domestic infringement was "the object[t] of the statute's [i.e., of 35 U.S.C. §284] solicitude"); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (Apr. 24, 2018) (Gorsuch, J.) (by 5–4 vote, interpreting 35 U.S.C. §318(a)'s mandate that the Board's final written decision "shall" resolve the patentability of "any patent claim challenged by the petitioner" to mean that the Board must address every claim the IPR petitioner has challenged; rejecting agency's position that it can institute IPR on a claim-by-claim and ground-by-ground basis); Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 138 S. Ct. 1365 (Apr. 24, 2018) (Thomas, J.) (affirming Article III Constitutionality of inter partes review; holding that a patentee has no Seventh Amendment right to jury trial on the validity of its patents; patents are public rights...

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