College of William & Mary Law School William & Mary Law School Scholarship Repository Faculty Publications Faculty and Deans 2002 The esF to Decision and the Return of the Supreme Court to the Bar of Patents John F. Duffy Repository Citation Duffy, John F., "The eF sto Decision and the Return of the Supreme Court to the Bar of Patents" (2002). Faculty Publications. 850. https://scholarship.law.wm.edu/facpubs/850 Copyright c 2002 by the authors. This article is brought to you by the William & Mary Law School Scholarship Repository. https://scholarship.law.wm.edu/facpubs JOHN F. DUFFY THE FESTO DECISION AND THE RETURN OF THE SUPREME COURT TO THE BAR OF PATENTS On January 8, 2002, a crowded courtroom in the Supreme Court witnessed a famous legal and political figure rise from his chair to begin arguments on a case about monopolies. The individual was well qualified for the task. He had written one of the most impor­ tant books on monopolies in the last half-century, 1 taught antitrust law at the Yale Law School, represented the United States as Solic­ itor General, and served for six years as a judge on one of the most important federal courts in the nation.2 In many ways, there was nothing unusual about this scene. Since the dawn of the republic, federal policy toward business monopolies has excited passions both inside and outside of courtrooms. In every period of its his­ tory, the Supreme Court has been intimately involved in crafting the federal law of monopolies, and the cases at the Court have frequently attracted some of the most preeminent members of the bar. But this case was different. It did not involve antitrust law­ the branch of federal monopoly doctrine that the twentieth­ century Court had treated "almost on a par in importance with John F. Duffy is Professor of Law, William & Mary School of Law. AUTHOR's NOTE: I thank Rochelle Dreyfuss, Rich Hynes, Doug Lichonan, John McGinnis, Alan Meese, and Anne Sprighcley Ryan for their valuahle comments on the drafts of this article. 1 Robert H. Bork, The Antitrnst Paradox: A Policy at War with Itself (Basic Books, 1978). 2 Biographical Directory of the Federal Judiciary 1789-2000 387 (Beman, 2001) (entry for Robert Heron Bork). © 2003 by The University of Chicago. All rights reserved. 0-226-36319-8/2003/2002-0006$10.00 273 274 THE SUPREME COURT REVIEW [2002 the major constitutional controversies that come before it." 3 Judge Bark was arguing a patent case. The sight of such a prominent figure arguing the intricacies of patent law to the Justices would not have been so unusual in the nineteenth century. The Court then had jurisdiction over all pat­ ent appeals from the nation's regional trial courts, much like the modern Federal Circuit has today. The Court's jurisdiction was mandatory, and it would regularly hear several patent cases each term. These cases defined the forefront of federal industrial policy and they attracted some of the best legal minds of the day, includ­ ing Daniel Webster,4 Justice Benjamin Curtis/ and Chief Justice Salmon Chase6-all of whom represented private litigants in Su­ preme Court patent litigation. The practicing patent bar could even claim as its own Abraham Lincoln, who served briefly as counsel in a patent litigation against Cyrus McCormick (the inven­ tor of the mechanical reaper)/ authored a famous speech on patent policy, 8 and received a patent on a method he invented for lifting river boats over shoals.9 The importance of federal patent law during the nineteenth cen­ tury can be measured not only in terms of the lawyers attracted to the field, but also in the treatment that the subject received at 3 Philip B. Kurland, The Supreme Court and Patents and Monopolies ix (Chicago, 1975). 4 See Andrew J. King, ed, The Papers of Daniel Webster: Legal Papers, Volume 3, The Federal Practice 824-90 (Dartmouth, 1989). 5 A search of the Lexis database shows that in twelve Supreme Court cases Justice Curtis recused himself from sitting on the grounds that he had served as counsel to one of the parties; eight of the twelve were patent cases. See, e.g., O'Reilly v Morse, 56 US 62, 62 (1854); Le Ray v Tatham, 55 US 156, 156 (1853). 6 SeeJohn Niven, ed, 1 The Salmon P. Chase Papers, Journals, 1829-1872 214-15 & n 41 (Kent State, 1993) (noting Chase's representation of Henry O'Reilly in the patent in­ fringement suit brought by Samuel Morse). 7 See Harry Goldsmith, Abraham Lincoln, Invention and Patents, 20 J Patent Off Socy 5, 20-30 (1938). Lincoln was a counsel for the defendants in the case, as was Edwin Stanton, who would later serve as Lincoln's Secretary of War. The plaintiff, McCormick, retained (among others) Reverdy Johnson, the Maryland statesman. See id at 22. 8 A phrase from Lincoln's speech-"The patent system added the fuel of interest to the fire of genius"-was inscribed over the entrance to the U.S. Patent Office Building in Washington. See id at 5. 9 See US Pat No 6469 (1849), at 1 (reciting that "I, Abraham Lincoln, of Springfield, in the County of Sangamon, in the State of Illinois, have invented a new and improved manner of combining adjustable buoyant air chambers with a steamboat or other vessel for the purpose of enabling their draught of water to be readily lessened to enable them to pass over bars, or through shallow water") (available at <http:/ /patft.uspto.gov/netahtml/ srchnum.htm>). 6] THE FESTO DECISION AND THE BAR OF PATENTS 275 the Court. Perhaps the most visible indication of the field's sig­ nificance can be found in The Telephone Cases, 10 which sustained the validity of Alexander Graham Bell's telephone patents. There the Supreme Court consolidated five separate pieces of litigation, heard oral argument over the course of twelve days, and filed a report that filled an entire volume of the U.S. Reports. The Court's attention to patent law was hardly confined to a single famous case. Early in the century, Justice Story took a special interest in the field. He wrote an influential article on the patent laws 11 and, both at the Court and on circuit, wrote a number of seminal opinions still found in modern case books. And, even when the Court was drowning in appeals toward the end of the century, retiring Justice William Strong supported a congressional proposal that would have limited the Court's mandatory appellate jurisdiction except in patent and copyright cases. 12 But in January of 2002, the heyday of the Supreme Court patent litigation was long gone. In the last decade of the nineteenth cen­ tury, Congress removed the Court's mandatory appellate jurisdic­ tion in patent cases. While the Court continued to hear several patent cases per term throughout the first half of the twentieth century, it seemed to lose interest in the field at mid-century, and the Court's patent docket precipitously declined. For the next three decades, the Court averaged barely one patent decision per year, or less than one-third its average from the first half of the century. No Justice during that period could claim more than a passing familiarity with the field-a stark contrast to the nine­ teenth century, which had, in addition to Story, Chase, and Curtis, Justices such as Joseph Bradley, who authored nearly three dozen patent decisions for the Court; Nathan Clifford, who averaged more than one patent opinion for the Court per year during his twenty-three year career; and William Strong, who wrote more 10 126 us 1 (1888). 11 See On the Patent Laws, set forth as Note II in the appendix to vol 16 of the US Reports, 16 US (3 Wheat) app 13-29 (1818). The Note is attributed to Justice Story in a variety of sources, including a 1904 edition of this volume of the US Reports edited by Frederick Brightly. See Frederick C. Brightly, ed, Reports of the Cases Argued and Adjudged in the Supreme Court of the United States, February Term 1818 302 (1904 ed). 12 William Strong, The Needs ofthe Supreme Court, 132 N Am Rev 437,446 (1881) (en­ dorsing a bill that would have curbed appeals to the Supreme Court but that would have left a right of Supreme Court review in patent and copyright cases without regard to the sum in controversy). 276 THE SUPREME COURT REVIEW [2002 than a dozen patent opinions for the Court in just ten years and became renown for his expertise in the fieldY By 197 5, Professor Philip Kurland could conclude that "[p]atents do not bulk large in the present business of the Supreme Court," and that the Court had "relegated the resolution of patent controversies to the lower levels of the federal judiciary." 14 The Court's withdrawal from the field seemed, at first, to be­ come even more complete afrer the creation in 1982 of a new specialized court of appeals, the Court of Appeals for the Federal Circuit. The Federal Circuit was created in part because of the Supreme Court's then decades-long neglect of the field, and it was designed to become an expert court with the jurisdiction and capa­ bility to unify national patent law. The creation of the Federal Cir­ cuit seemed to eliminate any need for further Supreme Court su­ pervision. While containing a fair dose of judge-made law, the patent field is ultimately an area of federal statutory law, and in statutory cases the Supreme Court has long seen its primary func­ tion as resolving circuit conflicts.