The Supreme assimilation of patent law.

• Author: Lee, Peter
• Position: Abstract through III. The Supreme Assimilation of Patent Law C. Analogizing from Other Areas of Law: Induced Infringement, p. 1413-1441

Although tensions between universality and exceptionalism apply throughout law, they are particularly pronounced in patent law, a field that deals with highly technical subject matter. This Article explores these tensions by investigating an underappreciated descriptive theory of Supreme Court patent jurisprudence. Significantly extending previous scholarship, it argues that the Court's recent decisions reflect a project of eliminating "patent exceptionalism" and assimilating patent doctrine to general legal principles (or, more precisely, to what the Court frames as general legal principles). Among other motivations, this trend responds to rather exceptional patent doctrine emanating from the Federal Circuit in areas as varied as appellate review of lower courts, remedies, and the award of attorney's fees. The Supreme Court has consistently sought to eliminate patent exceptionalism in these and other areas, bringing patent law in conformity with general legal standards. Among other implications, this development reveals the Supreme Court's holistic outlook as a generalist court concerned with broad legal consistency, concerns which are less pertinent to the quasi-specialized Federal Circuit. Turning to normative considerations, this Article argues in favor of selective, refined exceptionalism for patent law. Although the Supreme Court should strive for broad consistency, certain unique features of patent law--particularly the role and expertise of the Federal Circuit--justify some departure from general legal norms. Finally, this Article turns to tensions between legal universality and exceptionalism more broadly, articulating principles to guide the deviation of specialized areas of law from transcendent principles.

TABLE OF CONTENTS INTRODUCTION I. UNIVERSALITY AND EXCEPTIONALISM IN LAW II. THE SUPREME COURT'S RECENT FORAYS INTO PATENT LAW A. Constraining the Power of Patents B. Favoring Holistic Standards over Formalistic Rules III. THE SUPREME ASSIMILATION OF PATENT LAW A. Enforcing Trans-Substantive Regulatory Schemes and Maintaining Structural Relationships 1. The Federal Rules of Civil Procedure and Appellate Review of District Court Factual Findings 2. The APA and Appellate Review of PTO Factual Findings 3. Jurisdiction over Patent Matters B. Applying Equitable Principles: Injunctive Relief C. Analogizing from Other Areas of Law: Induced Infringement D. Eliminating Specialized Patent Rules in Favor of General Precedent and Ordinary Meanings 1. The "Actual Controversy" Requirement 2. Attorney's Fees E. Eliminating Presumptions and Per Se Rules at the Intersection of Patent and Antitrust Law 1. Tying Arrangements 2. Reverse Payment Settlements IV. UNDERSTANDING THE SUPREME ASSIMILATION OF PATENT LAW A. The Scope and Contours of the Assimilationist Project 1. Transcendent Issues Versus the Heartland of Patent Law 2. Federal Circuit Exceptionalism and Beyond 3. Intersections with Narrowing Patent Rights and Favoring Holistic Standards B. Motivations Driving Assimilation 1. Reining in the Federal Circuit's Doctrinal Exceptionalism 2. Reining in the Federal Circuit 3. Canvassing a Wider Array of Policy Interests 4. Relying on General Legal Principles to Navigate Technical Patent Issues 5. Legitimizing New Doctrine through the Rhetoric of Assimilation V. TOWARD A REFINED EXCEPTIONALISM FOR PATENT LAW VI. GUIDING PRINCIPLES FOR UNIVERSALITY AND EXCEPTIONALISM CONCLUSION "The remoter and more general aspects of the law are those which give it universal interest. It is through them that you not only become a great master in your calling, but connect your subject with the universe and catch an echo of the infinite, a glimpse of its unfathomable process, a hint of the universal law." (1)

INTRODUCTION

Perhaps Justice Thomas is an intellectual heir to Gottfried Leibniz. Certainly, there is much separating the current Associate Justice of the Supreme Court from the Enlightenment philosopher and mathematician. But Justice Thomas's opinion in eBay Inc. v. MercExchange, L.L.C., which rejects a specialized rule to determine injunctive relief in patent cases in favor of a general equitable framework, (2) bears Leibniz's intellectual stamp. Leibniz made many contributions, (3) but he is perhaps best known as one of the most prominent systematizers of the seventeenth century. (4) Leibniz sought to find transcendent principles in natural and mathematical phenomena, thus revealing the unified nature of the universe. (5) Leibniz's quest for universality and intellectual coherence impacted law, ultimately informing the notion of "legal science" associated with Christopher Columbus Langdell and other nineteenth century formalists. (6) This systemizing spirit is evident in Justice Thomas's eBay opinion, which frames itself as rejecting patent exceptionalism in favor of universal legal principles. This universalizing ethos is both substantive and rhetorical; indeed, the Court's eBay rule was actually quite novel, but the Court framed it as reflecting general equitable principles, and it has subsequently become the legal norm. (7) This universalizing ethos, moreover, represents an undertheorized feature of recent Supreme Court patent jurisprudence.

Although tensions between universality and exceptionalism apply throughout law, (8) they are particularly relevant to patent law, which deals with highly technical subject matter. This Article draws on these tensions to offer new insight on the Supreme Court's recent patent jurisprudence. Over the past decade and a half, the Supreme Court has significantly increased its review of patent decisions from the Court of Appeals for the Federal Circuit, a quasi-specialized appellate court established in 1982 that hears appeals of patent matters from district courts and the Patent and Trademark Office (PTO). Commentators have offered several theories to interpret this development. First, many observers view these interventions as attempts by the Supreme Court to rein in expansive Federal Circuit doctrine that has made it too easy to obtain patents and unduly enhanced their power. (9) Second, commentators note that the Court has consistently adopted holistic standards to replace the bright-line, formalistic rules that are characteristic of Federal Circuit patent doctrine. (10)

This Article augments these prevailing interpretations by exploring an underappreciated descriptive theory of Supreme Court patent doctrine. Significantly extending previous scholarship, it argues that the Supreme Court's recent patent jurisprudence reflects a project of eliminating "patent exceptionalism" and assimilating patent doctrine to general legal principles. In substantial part, this trend responds to rather exceptional patent doctrine emanating from the Federal Circuit in areas as varied as appellate review of lower courts, remedies, and the award of attorney's fees. In these and other areas, the Supreme Court has consistently sought to eliminate patent exceptionalism, bringing patent law in conformity with what it characterizes as general legal standards. (11) Notably, this Article also argues that the Supreme Court has utilized assimilation both rhetorically as well as substantively, framing novel doctrine in the language of assimilation.

This Article represents the first comprehensive examination of patent assimilation across myriad doctrinal areas. Among other contributions, it shows that assimilation provides an expansive interpretive theory of Supreme Court patent jurisprudence that encompasses not only recent rulings but cases dating back to the establishment of the Federal Circuit. Although previous scholarship has recognized individual elements of this phenomenon, (12) this comprehensive account of assimilation reveals that it takes a variety of forms in different contexts. The Supreme Court has strictly applied "trans-substantive" (13) regulatory regimes such as the Federal Rules of Civil Procedure, the Administrative Procedure Act (APA), and jurisdictional statutes to patent law. It has (somewhat imprecisely) invoked traditional equitable principles to displace specialized rules for patent disputes. The Court has reasoned by analogy, borrowing and applying concepts from legal fields unrelated to patent law. It has favored general, ordinary connotations of legal terms instead of specialized ones. And it has eliminated per se rules at the intersection of patent law and antitrust. Throughout, the Court has consistently assimilated patent law to its conception of broader legal concepts.

While in large part the Court has sought to conform exceptional Federal Circuit doctrine to established legal norms, Supreme Court assimilation extends beyond this pattern. Under the rubric of assimilation, the Court has also created new doctrine and labeled it as mainstream, reversed the Federal Circuit on open questions of law as well as faithful application of precedent, and stamped out "exceptional" patent doctrine from courts other than the Federal Circuit.

Beyond providing a deep descriptive account of Supreme Court patent assimilation, this Article analyzes its diverse and complex motivations. This Article argues that much (but not all) of the Court's assimilationist project represents a direct response to exceptionalist patent doctrine from the Federal Circuit. Furthermore, the Court's rulings seek to rein in not only patent doctrine but the Federal Circuit itself, whose exceptional patent jurisprudence has tended to increase its own power. More broadly, the Court's assimilationist project reflects its holistic orientation as a generalist court concerned with legal consistency and policy considerations that range beyond the specialized patent system. These observations reveal a deep institutional irony. Congress created the Federal Circuit to unify patent law; in doing so, that court has developed rather exceptional doctrine. In its recent patent rulings, however, the Supreme Court has played the...