Breaking News

Today in the Community: October 7, 2011

Each week, we will have one Community topic of special interest to law students supported by Bloomberg Law.  This week, that topic is originalism. The opening discussion threads, to which readers should feel free to add, address whether originalism should (and, in fact, does) guide constitutional interpretation in the Supreme Court; which form of originalism is best; whether particular constitutional questions are well- or poorly suited to originalist analysis; whether originalism necessarily produces conservative outcomes; and also a discussion of the alternatives to originalism.

For those who have not yet joined the Community, please see Tom’s guide on how to register and participate.

Our past topics from this week (the Affordable Care Act, legal blogging, Maples v. Thomas, and the Court’s patent jurisprudence) remain open for your comments. Here are five stellar comments from yesterday’s discussions—four regarding patents, and one about Maples:

Colleen Chien –

The Supreme Court is like an absentee parent who doesn’t know what the kids are up to, but issues directions nonetheless. Sometimes their directions are hard to follow (Bilski), sometimes they are confusing (KSR), but sometimes they are dead-on (Ebay). Because their time is precious, they tend to get the right questions before them, and because of who they are, they get the best advice and advocacy. As a parent, I know that kids behave better when someone is watching. So in my opinion, while the Supreme Court’s patent jurisprudence could definitely be improved, some supervision is better than none.

Tim Holbrook –

The October 2011 term of the Supreme Court promises to be as (hyper)active in Patent Law as the last term. Two cases this term, however, are not as far reaching as in the past, dealing with the scope of relatively new Hatch-Waxman counterclaim provisions, the admissibility of evidence before the D.C. district court (and in the future the Eastern District of Virginia) in appeals out of the Patent Office. These two cases relate more to the intersection of patent law with administrative agencies, the FDA and PTO respectively, then to core patent law issues. The third, Mayo v. Prometheus, does deal with a core issue, subject matter eligibility, but it is a re-visit of the issue presented in the October 2009 term in Bilski, the eligibility of a process. In Prometheus, however, the issues seems to push on to what extent laws or products of nature are eligible for protection, in contrast with Bilski’s focus on business methods and abstract ideas.

Nevertheless, many observers will look to these cases to see if the Supreme Court is continuing on its anti-patent agenda. I, however, believe such a view of the Supreme Court is overly simplistic and inaccurate. Instead, the Court’s interest in patent law has been shaped not by an anti-patent agenda but by a variety of other concerns. For example, the Supreme Court has rejected any form of patent law exceptionalism, i.e. that somehow patent law is different than and separate from other areas of the law. For example, MedImmune (declaratory judgment jurisdiction) and eBay (permanent injunctions), the Court reintegrated divergent patent law doctrines with the mainstream doctrine in those areas.

Moreover, even though many of the Supreme Court’s patent decisions could be viewed as reducing the value of patents, I do not think that the Court can categorically be described as anti-patent, any more than the Federal Circuit could be viewed as pro-patent. Earlier Supreme Court’s decisions have been pro-patent, such as Warner-Jenkinson, which confirmed the continued viability of the doctrine of equivalents, and Festo, which rejected the Federal Circuit’s absolute bar rule to prosecution history estoppels that would have eviscerated the doctrine of equivalents). More recent cases have clearly benefited patent owners, such as Bilski, in which the Court did not jettison the eligibility of business method patents. Last term’s decisions have a distinctively pro-patent bent to them. In Microsoft v. i4i, the Court agreed with the Federal Circuit that patent claims can only be invalidated by clear and convincing evidence and not a mere preponderance. Even Global Tech v. SEB, the Supreme Court expanded the scope of induced infringement to include actors without actual knowledge of the patent, even though it articulated a higher standard than that of the Federal Circuit. In the decisions from the last term, in fact, the Supreme Court agreed entirely with the Federal Circuit in Roche and Microsoft, a marked change from previous years.

Similarly, one cannot state that the Federal Circuit is entirely pro-patent. Indeed, the Federal Circuit’s written description doctrine, continued withdrawal of the availability of the doctrine of equivalents, and recent claim construction jurisprudence limiting patents to the disclosed embodiments are all anti-patent. The Federal Circuit, therefore, is pro valid patents of rather narrow scope.

Instead of being anti-patent, I view the Supreme Court as being concerned with maintaining balance in the patent system, especially when confronted with the Federal Circuit’s formalistic rules. Because ultimate beneficiary of the patent system is the public, I think the Supreme Court’s intervention in patent law better accounts for that view point. Persons can argue over whether the best way to promote the public’s interest in patent is to afford them robust protection akin to property or instead as tool of public policy, but I believe the Supreme Court’s generalist perspective can offer some helpful insights into the proper balance of the system.

R. David Donoghue –

The Supreme Court opens another term with three more patent cases on its docket, and possibly more to be added. Over the last several years, the Supreme Court has reinserted itself into the patent law after leaving the Federal Circuit to be the final arbiter of patent law for many years. I can appreciate the arguments that the Supreme Court has not established an identifiable vision for its patent law direction. But in fact I think they have established a direction toward fuzzier rules and away from the Federal Circuit’s desire for bright line rules and business predictability. For patent litigants and patent holders that leads to greater indecision, but it also maintains the flexibility of the law allowing district judges and Federal Circuit judges to shape the law to fit the facts of individual cases without being required to make unjust or inequitable decisions based upon bright line rules.

Matthew Osenga –

As another Supreme Court term began this week with several important patent cases on the docket (and several more that might be added), I believe that the Supreme Court is well suited to decide patent cases. These cases often concern issues of statutory interpretation, something that the Supreme Court handles frequently and has a well-developed jurisprudence for doing so. Doctrines in patent law often require a “fresh” look by another court. The Supreme Court can provide finality on certain controversial issues in the law.

There are several recent examples of cases where the Supreme Court used statutory interpretation to reverse Federal Circuit rulings. In eBay v. MercExchange (2006), the Court held that nothing in the Patent Act eliminated the traditional reliance on equitable factors when determining whether to grant an injunction. Indeed, § 283 requires injunctions to be granted “in accordance with the principles of equity”. In Bilski v. Kappos (2010), the Court held that § 101 does not require that inventions meet the Federal Circuit’s “machine-or-transformation” test to be patentable subject matter.

Because appeals of virtually all patent cases are decided by the Federal Circuit, they account for a significant portion of that court’s docket. The Supreme Court also provides a fresh look at areas of patent law that have become stale because the Federal Circuit developed a test a long time ago that has simply become accepted law. In KSR v. Teleflex (2007), the Court held that the Federal Circuit’s long-held “teaching-suggestion-motivation” test was not the only test for determining obviousness. The Court may, however, have tipped the balance too far in the opposite direction with the “obvious to try” language in the opinion.

Finally, the Supreme Court can provide the “final” word on certain patent law doctrines. As an example, in Microsoft v. i4i (2011), the Court finally determined that clear and convincing evidence is required to invalidate a patent once it has been duly issued by the U.S. Patent & Trademark Office.

Nancy King –

Speaking of relief rates and getting back to the cause and prejudice standard, here are a few observations about the procedural default defense from the 2007 study of habeas litigation in district courts (available here:, which examined a random sample of habeas cases filed nationwide in 2003 and 2004 by state prisoners serving noncapital sentences, as well as all of the habeas cases filed between 2000 and 2002 by capital prisoners in 13 districts.

1) Federal district judges regularly enforce the defense of procedural default. In at least 13% of the nearly 2000 terminated non-capital cases, state procedural default was noted as a reason for rejecting at least one claim. Default in capital cases was much more frequent: about half of the terminated cases included a defaulted claim.

2) District courts appear to be finding default in non-capital cases at roughly the same rate that courts found default before AEDPA was enacted.

3) Once the defense of procedural default is raised, it is not likely to be rejected. Fewer than 2% of the non-capital cases included a ruling rejecting the default defense. Among the more than 260 terminated capital cases in the study, however, 19% included a ruling rejecting the defense. The study did not speculate about the reason for the higher rejection rate in capital cases, but we can here. Does the difference in rate reflect worse representation in capital trials and appeals leading to more frequent findings of ineffective assistance of counsel as cause? A higher probability that, as compared to non capital cases, the procedural grounds asserted for default in capital cases are inadequate? The reasons Kent Scheidegger posits for the higher rates of relief in capital cases generally — “the desire of many federal judges to overturn every capital sentence they can, and . . . the inherently subjective nature of the penalty decision, making the ‘materiality’ prong of Brady and the ‘prejudice’ prong of Strickland much less objective to apply than in guilt determinations”? The fact that 93% of capital habeas petitioners are represented by counsel who could raise arguments against the default defense, while 92% of non-capital habeas petitioners are not? The study does suggest that miscarriage of justice or innocence is rarely the reason for rejection. In the study sample, possible innocence was the reason for rejecting the default defense and reaching the merits in only one of the capital cases and in none of the noncapital cases.

4) Statistical analyses suggested that cases in which the court found that a claim was defaulted took longer to finish than cases in which no claims were dismissed as defaulted.

So how, if at all, might this picture change if the Court rules in Maples that “cause” can be established whenever a petitioner shows “abandonment” by his post-conviction counsel? One might anticipate no dip in dismissals for default if a new standard for showing abandonment is so exacting that few petitioners could meet it, or if the “prejudice” prong and not the “cause” inquiry is doing most of the heavy lifting. Even if a new theory of “cause” would make little difference in the outcome of habeas cases, it would probably lengthen disposition times and increase litigation costs. Alternatively, a new theory of cause may prompt more district judges to join those who now prefer to simply address and deny defaulted claims on their merits, ignoring the complicated cause and prejudice analysis entirely.

Recommended Citation: Tejinder Singh, Today in the Community: October 7, 2011, SCOTUSblog (Oct. 7, 2011, 7:34 AM),