Justice Scalia and His Impact On Patent Law

With the recent passing of Supreme Court Justice Scalia, we now take the time to consider his contributions to the field of patent law.  Scalia served for just shy of 30 years having been confirmed to the Court on September 17, 1986.  During his tenure, Scalia developed a well-earned reputation as a renowned jurist who made important contributions to many fields of law.

Patent law however, as Scalia himself often indicated, was simply not one of his interests.  Patent cases he said, bored him.  During his tenure, Scalia authored few of the major decisions on patent law considered by the Court, but rather tended to join with the majority in most cases.

It should be said however, that patent law is an area of little ideological contention on the Court.  5-4 split decisions breaking down along ideological lines are rare in patent cases and, in fact, the majority of the Court’s patent decisions over the last decade have been unanimous or nearly unanimous.

The Court’s major precedential decisions in the last ten years included the following:

  • Alice Corporation v. CLS Bank (2014) (holding that claims directed to an online financial trading system were directed to abstract ideas and thus were not patent eligible subject matter);
  • Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014) (giving district courts broad discretion to award attorney’s fees in patent cases);
  • Association for Molecular Pathology v. Myriad Genetics (2013) (holding that isolated strands of naturally occurring DNA were not patent eligible subject matter);
  • Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012) (holding that claims directed to methods for optimizing the efficacy of a drug were directed to laws of nature and were therefore not patent-eligible);
  • Microsoft Corp. v. i4i Limited Partnership (2011) (affirming that patent invalidity must be proved by clear and convincing evidence);
  • KSR International v. Teleflex, Inc. (2007) (fundamentally changing the obviousness inquiry); and
  • eBay, Inc. v. MercExchange, LLC (2006) (holding that victorious patent owners do not have an automatic right to permanent injunctions).
Interestingly, the cases were all unanimous or near unanimous decisions of the Court, in which Scalia either joined or concurred with the majority. In following the lead of the majority, Scalia once said that he often followed the lead of Justice Ruth Bader Ginsburg whom he considered to be more knowledgeable on patent issues.
Although Scalia authored few of the major patent decisions during his tenue on the Court, this is not to say that he authored no decisions on the subject.  In MedImuune, Inc. v. Genentech, Inc. (2007), Scalia authored the majority opinion which held that patent licensees need not stop paying royalties on a license, and thus open themselves to infringement liability, in order to have standing to bring a suit for declaratory judgement of invalidity of the licensed patent.  Scalia also authored the majority opinion inEli Lilly Co. v. Medtronic, Inc. (1990) and Merck KgA v. Integra Lifesciences, Ltd. (2005), both of which broadened the safe harbor from infringement provision provided in patent law for generic drug companies engaged in premarket activities.

During his tenue on the Court, Scalia became famous for his dissents in a variety of cases involving hotly contested issues.  The field of patent law, perhaps fortunately, was graced by only a single Scalia dissent in Commil USA, LLC v. Cisco, Systems, Inc. (2015) where the majority held that a good faith belief in a patent’s invalidity is not a defense to induced infringement.  Scalia’s disagreed writing: “It follows as night the day, that only valid patents can be infringed.  To talk of infringing an invalid patent is to talk nonsense.”

In sum, it would be fair to say that Scalia, a lion of modern Supreme Court jurisprudence, had a modest but meaningful impact on patent law.  It would not appear that Scalia had any particular guiding philosophy when it came to patent law.  Rather, his opinions suggest that, as in all his cases, he was interested in clear reasoning and in establishing a readily determinable precedent that could provide guidance to the lower courts.