SCA Hygiene Laches Oral Arguments: How Do we Interpret Congressional Silence?

Today the Supreme Court heard oral arguments in SCA Hygiene v. First Quality with the following question presented:

Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.

Sitting in the background is the Supreme Court’s parallel copyright decision in Petrella v. MGM (2014) holding that the doctrine of laches cannot bar a claim for legal damages brought within the three-year statutory limitations of copyright law. In its opinion, the Federal Circuit distinguished Petrella – finding that in this situation patents should be treated differently than copyrights.

Martin Black (Dechert) argued for petitioner-patentee SCA Hygiene and suggested that Petrella paves the way: “There is nothing in the Patent Act which compels the creation of a unique patent law rule, and if the Court were to create an exception here, that would invite litigation in the lower courts over a wide range of Federal statutes.”

According to Black, the focus should be on the statute – and the statute does not provide for laches. Further, section 286 is entitled “Time Limitation on Damages” — that is the section that should be applied when determining whether a patentee unduly delayed its enforcement.

Mr. Black: Laches has never been applied in the face of the Federal statute of limitations. The Court looked at that issue exhaustively in Petrella and could not find Respondents one single example.

Petrella was decided 6-3 and with Justice Scalia’s death the result would be 5-3.  Justice Breyer dissented then and indicated in oral argument “Just to repeat, I’m still dissenting.”

Mr. Waxman, representing the accused infringer in this case (who won on laches) began by highlighting the background of the 1952 Patent Act — “This Court has repeatedly recognized that the 1952 Patent Act sought to retain and reflect patent law as it then existed.”  And, at that time (1952), laches was thought to be an available defense.

Mr. Waxman: The question  in this case is what Congress understood the patent law doctrine was in 1952. And we think that there is a literal mountain of cases. Every single case that was decided in any court at any level from 1897 when the six-year damages cap was put into place until today, with the exception of one district court decision in Massachusetts which demonstrably misapplied the two authorities that it cited, every single case has recognized that — that laches was a defense in an appropriate case to claims for damages. And no case has ever said or suggested to the contrary.

CHIEF JUSTICE ROBERTS: That mountain of cases were in equity, right? . . .  that’s where your mountain becomes a mole hill, right? . . .

Mr. Waxman: But the point I’m trying to make — and if I make no other point, please let me not be misunderstood here — Congress in 1952 simply continued in haec verba the statute that had existed on the books since it was put in on the equity side in 1897. And there were — whether it is a mountain, a mole hill, or a mesa, all of the — okay. Never mind. I’ll just stick with mountain or mole hill. All of the — I mean, I — I don’t think — I hope I live long enough to have another case where I can come to Court and say, all of the case law that decide — that examine this question, all of which was adjudicating the applicability of laches to claims of damages alongside the six-year damages limitation provision, all of them recognize that laches existed comfortably alongside that provision. And there is nothing really anomalous about that.


The difference then, according to Waxman, between patents and copyright is not really found in the statutory text itself but instead emanates from the history and congressional sense at the times of enactment.  For patents, the background law allowed laches and congress intended to implement that background law in 1952.

Mr. Black disagreed with the state-of-the-law:

So it was in front of Congress in 1952 with three things. This Court’s precedent that said that  laches could not be used to bar legal relief. You had the merger of law and equity in 1938 which scrambled all the eggs. You had the 1946 Lanham Act, which also went through the committee on patents and copyrights where they specifically included the word “laches” in the statute. And you had the abolition of the remedy that parties had been seeking as the primary means of monetary relief in patent law for 60 years. There is no way that you can look at that, that fact, and get around it by pointing to a book, a treatise, which, by the way, does not have a section in it on unenforceability.

A practical problem with eliminating laches is the lying-in-wait scenario — do we allow a patentee to simply wait for years until the defendant is locked-in and then sue? Mr. Black argued that Congress offered a solution — concerned third parties can file a declaratory judgment action or else a petition for inter partes review.   Black also argued that the lying-in-wait scenerio doesn’t happen in practice because the patent term ends too soon (unlike in copyright law).  The discussion also entered into patent trolls and the FTC recent report.  Mr. Black argued that “The companies that get hurt by [Laches] are operating companies who don’t like to sue and therefore wait until they have to [while] patent trolls . . . have to sue to monetize.”

98 thoughts on “SCA Hygiene Laches Oral Arguments: How Do we Interpret Congressional Silence?

  1. 8

    Because we all need to remember just how serious and bursting with integrity the patent maximalists are, try to believe the response to Pilgrim’s non-controversial comment:

    Pilgrim: You could have a situation analogous to Lemelson’s “machine vision” patents, where the specification is directed one thing, but then years later the claims are broadly read to encompass something else, such as bar code readers.

    “anon” That’s a different problem, Pilgrim (if one at all).

    Meanwhile, back on planet Earth where people who aren’t reality-denying shills can actually read the news:

    link to

    On October 11, Bartonfalls filed patent lawsuits against Ziff Davis (the owners of PC Magazine), Viacom, Advance Publications (over the website for GQ; GQ and Ars are both owned by Condé Nast, which is in turn owned by Advance Publications), Scripps Networks (HGTV), Bloomberg,, NBC Universal, Turner Broadcasting, the New York Times Company, Forbes, ABC, Discovery, CBS, and Consumers Union (Consumer Reports).

    The ‘922 patent, filed in 1997, doesn’t talk about Web video or the Internet at all. Rather, it talks about switching between different video inputs when changing television programs… After a very long back-and-forth with the patent office, Michigan-based inventors Barry Schwab and John Posa got their patent in 2011. Posa, a patent lawyer in the Ann Arbor office of the Dinsmore law firm, didn’t recall much about his invention when reached by Ars.

    Corporate documents show that Bartonfalls was formed as a Texas LLC in August. Its business office is a virtual office in Plano, a city that’s just inside the borders for the Eastern District of Texas, the venue that it filed its lawsuits in. The only listed manager of Bartonfalls is a paralegal at a small Texas law firm, Stoddard and Welsh.

    B0tt0m feeding slimeballs. In a just society, they’d be disbarred from practicing the law in any context, ever again. But in “anon”‘s world, we all need to pay for their vacation homes. They’re very important people! Without these kinds of “innovative” patent attorneys, civilization would grind to a halt. This Posa cl0wn has 30 patents, after all, and I’m sure they are all very, very important and totally free of the sort of head-in-the-sand prosecution that is a day-to-day part of the life of our nation’s beloved patent monetizing community.

    1. 8.2

      MM, did patent attorney Selden really invent the automobile?

      link to

      He might have, but he made no effort to go into production, but simply sought broad claims, which he got after 16 years of prosecution which Selden delayed as best he could.

      Methinks that the lesson learned from at least this experience, and many, many others over the years, is that patent attorneys should be barred from being named as inventors on patents.

      1. 8.2.1

        “Methinks that the lesson learned from at least this experience, and many, many others over the years, is that patent attorneys should be barred from being named as inventors on patents.”

        Idk about that bro. That’s going a bit far. Some of the most innovation minded people may well go into “innovation” and then you’re just throwing all those potential disclosures away. Indeed, the same has happened at the PTO which used to be a staff of a few hundred and now has a whole tiny town of engineers and scientists barred from patents.


          6, I don’t think you are seeing the inherent conflict of interest.

          When I first started practicing, I was told flat out that patent attorneys should not name themselves as inventors on applications. I thought I understood this as being the case when they were representing clients, but the problem is broader.

          Selden is on good example where he used his skill as a patent attorney to graft broad claims and delay the application from issuing until the industry had been established just as did Lemelson, himself a patent attorney. The abuse of process of both these gentlemen is legendary.

          Another example I have a mind is the inventor on a very basic invention that affected the whole disc drive industry. The patent application was filed by a Silicon Valley patent attorney who worked for numbers of different companies that were variously developing sputtering machines or disk drives or carbon overcoats. He put all this technology together in an application that described sputtering carbon overcoats on discs in order to provide both protection and lubrication. This patent turned out to be used by every single disk drive company and disk manufacturer in the field. But it was all based upon confidential information the attorney received from his clients and which he disclosed in that patent application.

          In truth the application could have been our should have been assigned to any number of his clients. But rather than do that, he named himself the inventor and began to sue his former clients.

          I have seen enough to be sickened by the practice and fully understand that simply assigning the patent to the clients is not sufficient. There has to be a ban.


            I wonder how many ambulance chasers have second careers driving ambulances or working in emergency rooms.


              Or blogging about how E V I L ambulance drivers or those who represent accident victims are…



            “6, I don’t think you are seeing the inherent conflict of interest.”

            No, I see it. I also know that those around me are some experts in a rather important art and any one of them may well propose a nice little invention at any time. Their numbers grow nigh every year. I don’t particularly care where the disclosure comes from in mah art, and if it’s a cool invention in mah art I’d rather it be disclosed than not. Barring people from patents puts a near absolute bar on that ever happening.

            “Selden is on good example where he used his skill as a patent attorney to graft broad claims and delay the application from issuing until the industry had been established just as did Lemelson, himself a patent attorney. The abuse of process of both these gentlemen is legendary.”

            If “process” is abused then claim laches. Either way neither of these guys can control that the office did actually issue their patent. If the office itself did not detect their undue delay and call laches themselves then that is on them. Call up the Director and give her a piece o your mind.

            “He put all this technology together in an application that described sputtering carbon overcoats on discs in order to provide both protection and lubrication. This patent turned out to be used by every single disk drive company and disk manufacturer in the field. ”

            I’m glad to hear that. I did not know who proposed that particular method.

            “But it was all based upon confidential information the attorney received from his clients and which he disclosed in that patent application.”

            So then he should be sued by the holders of that confidential info for all of the money he got? And maybe even the ownership of the patent? And perhaps be disbarred etc etc?

            “In truth the application could have been our should have been assigned to any number of his clients. But rather than do that, he named himself the inventor and began to sue his former clients.”

            Then perhaps other legal action needs to be taken agin him, or else we need laws in place to assure these types of shinanigans do not occur. That doesn’t mean they should be barred from applying for a patent.

            “I have seen enough to be sickened by the practice and fully understand that simply assigning the patent to the clients is not sufficient. There has to be a ban.”

            Well I haven’t seen such so I cannot join you there. Though if I had then perhaps I would join you there.

  2. 7

    There is a long line of cases in which the Supreme Court interpreted statutory silence as a clear showing that Congress chose not to legislate on the backdrop of the common law issue in question. (i.e., Shannon v. United States, 512 U.S. 573 (1994), United States v. Bestfoods, 524 U.S. 51 (1998)). I know there are cases going the opposite direction as well. (i.e., Mid-Con Freight Sys., Inc. v. Mich.
    Pub. Serv. Comm’n, 545 U.S. 440, 468 (2005) (Kennedy, J., dissenting) (“Instead of heeding what Congress actually said, the Court relies on . . . dubious inferences from legislative silence to impose the Court’s view . . . .”). But if the Supreme Court wants to get rid of laches in the Patent context, Congressional silence can be the way to go – it is an opening for the Petrella majority to also prevail in SCA Hygiene.

  3. 6

    Re “lying in wait,” Black also made the claim that we need not worry about that because of the marking statute (287(a)). While that may be true for some patent owners, he also appeared to stretch it to apply to NPEs/PAEs. I was not surprised that the Justices didn’t appreciate the nuance that 287(a) does NOT apply where there is no product that can be marked, but I was a bit taken aback that Waxman didn’t at least quickly take on this policy argument and misstatement of the law in his rebuttal.

      1. 6.2.1

        Good thing then that we do not have a “must make” requirement tied to patent law (or that what one asks for in the market with one’s own fully alienable personal property being tied to any such “cost of actual making,” eh?)


          we do not have a “must make” requirement tied to patent law

          Not yet.

          But keep scraping the b0tt0m and behaving like an ethically bankrupt con artist while bragging about how the world revolves around your “innovations”! It’s such a winning strategy, after all. It’s why the whole world looks to East Texas when they want to understand exactly how shiny our shining future is going to look.


            Lol / and never will.

            As I have explained in detail, the US system emphasizes improvement patents for which the improver may not have any right whatsoever to make the item being improved.

  4. 5

    Was clear appreciation exhibited in the oral argument that 35 U.S.C. § 286 is not a normal statute of limitations or repose? That it does not limit how long after the infringement is detected that one can bring suit? That it merely limits recovery of back damages from before suit is brought to six years? One could wait to sue until 5 years after a patent expires and still recover one year of back damages.

    1. 5.1

      Paul, patent damages are a right of action that flows from an infringement. Past damages may be retained or may be sold independently of the patent.

      To the extent that one may not sue on past damages for more than six years past, it certainly is a statue limitations.

      1. 5.1.1

        The right to past damages is indeed separable- to the extent that the right must be explicitly conveyed. The phrase “all rights, title, and interest” in a given patent does not get it done.

        Seems to me laches requires more than just the passage of time, which is what statues of limitations are about. There needs to be evidence that the patentee knew of the infringement without acting, so laches is both temporal and behavioral (estoppel).

        I’m not sure the justices all even quite understood what this case was about unless maybe the metaphysical location of equitable doctrines in modern patent law.


          Martin, it is good to talk to someone who seems to truly understand patent law.

          Laches should require some unexcused inaction in the face of a duty to act whereby the inaction substantially prejudices the individual or the public.

          Now consider the small time patent owner who knows that the industry has adopted his patented invention, but does nothing for an extended period of time. Does he have a reason not to act?

          Inability to actually litigate is, I believe, a valid excuse. Today, if one even breathes an accusation of infringement, he is both IPRed and DJed. The infringer will also seek attorneys fees if the impecunious patent owner defaults. One now needs millions in the bank, or a deep pockets contingency fee firm, to even complain about piracy.

          Considering this, the infringement now has to grow large in order for the small patent owner to do something, because only with large damages is the contingency firm attracted.

          But if there is delay, no excuse and prejudice? What then? Well, I think the accused infringer should only have to pay damages prior to the time that laches kicked in.

          Also, there should be no presumption that inaction beyond 6 years is laches. Laches is a defense that has to be proved.


            A truly bizarre statement (and shows heavy infection of the “6-is-a-genius-because-he-agrees-with-me” malady):

            Martin, it is good to talk to someone who seems to truly understand patent law.


              I knew you were going to love that one anon. {{{{{{{{spikes the ball}}}}}}}

              Thanks for the kind words Ned.


                You should get into the end zone first before spiking that ball Mr. Snyder.

                You are a long ways away from that.

    2. 5.2

      Might I suggest that laches may be used to bar the equitable remedy and implicitly bar actions on new infringements. That does not mean that one may not sue on past damages because these were accrued before laches came into effect.

      1. 5.2.1

        How would the effect extending to new infringements be justified?

        There are ZERO laches involved with new infringements, eh?


          anon, laches requires sitting on one’s rights and reliance by the infringer. After a time, the reliance becomes reasonable and further infringement is excused, i.e., no injunction.

          But prior infringement is not.


            Ned – a brand new infringement – and recognized as such – is NOT “sitting on one’s rights.”


              Anon, I am not understanding your position.

              Assume laches bars and injunction. What does that permit?

  5. 4

    How does one “lie in wait” when ALL patents are published and fully accessible to the public?

    Turning that availability into something meaningful (as in, presuming knowledge), would have a bolstering effect to the mission of the Patent Office (albeit at the expense of the Efficient Infringement crowd).

    1. 4.1

      I claim a method of enhancing online purchase recommendation information, wherein the information is associated with a network-based compliance attribute object and wherein said object is domain non-specific.

      Do you feel lucky?

    2. 4.2

      Because practitioners in the art know ALL patents that are published and fully accessible to the public, it must follow that all patents ever granted that have but-for materiality to the claims of a patent application must be submitted to the office by those associated with the patent application. If not, the applicant is not fulling their duty of candor.


          I know it is not the standard. But it is the only logical conclusion to what the standard should be from your comment above. Please provide an logically consistent argument of why to standard should be different in the two situations.


              …further, taking the path of logic you offer, there would be NO need of reporting anything, since everything is “fair game,” one would simply say “everything.”**

              Your attempt here is simply too clever by half.

              **also reminds me of the old joke about if you had everything in the world, where would you put it?

    3. 4.3

      You could have a situation analogous to Lemelson’s “machine vision” patents, where the specification is directed one thing, but then years later the claims are broadly read to encompass something else, such as bar code readers.

      1. 4.3.1

        That’s a different problem, Pilgrim (if one at all).

        Presume for this discussion that the granted patent property is a legitimate patent property (scope, enablement, etc). Don’t conflate issues or move goal posts please.


          I would add the very little used (and necessarily pro-patent view) from the KSR decision on this point: the part about “protecting prior inventions”….


          “Move goal posts”? Your “presumption” is like presuming you score a touchdown once you cross the 25 yard line. I would suggest that the assertion by patent owners of unreasonably broad claim constructions to allege infringement is part of the “playing field” as to whether the mere publication of a patent is enough to put everyone on notice of potential infringement.


            Cross the 25…?

            Not at all.

            A granted patent is good for what it covers. That is the presumption to take (under law).

            You appear to be the one that wants to move the goalposts to some other place than where the law states that they are.


              I guess I take a more practical (cynical?) view — A granted patent is good for what a judge and/or jury says it covers.

              A company looks at a patent and its claims when it first issues and decides it is wholly irrelevant to its line of business. Years later, after the patent is assigned to some other entity, the new patent owner decides it can somehow interpret the claims to cover the company’s line of business. And now the company has to defend itself in an infringement suit, possibly without the ability to raise laches as a defense. How could the initial publication of the patent provide notice as to the new “theory” of infringement under which it is now potentially liable?


                Pilgrim, I can see a problem if patent owner a gave a specific construction of the claims to a particular accused infringer, in an accused infringer determined that under that construction there was no problem, and then later a different patent owner alters the construction so that the accused infringer is now in a position of danger.

                1. Ned, I respectfully disagree.

                  I am thinking of the more general case where there is no communications between the patent owner and the potential infringer, and the usual case where the patent applicant does not give a specific construction for any claim terms during prosecution so as to keep its options open for future litigation.

                  The claims are supposed to be directed to persons of ordinary skill in the art. If my hypothetical company looks at the patent as issued and construes the claims as one of ordinary skill in the art would, why shouldn’t they be able to raise the defense of laches when the patent owner comes in years later with some other unreasonable construction of what the claims cover?

                  This goes back to my original reply to anon. I don’t believe that the mere fact that patents are published and readily accessible to putative infringers is reason why laches should not be a defense when the patent owner unreasonably delays in filing suit.

                  The scope of the patent right is not really determined until it’s in litigation. So why not put the burden on the patent owner to bring that litigation in a timely fashion for laches purposes (and not just for limiting damages per 287)?

                2. Mainly because your “real world” view is not how the system is actually set up. You have a far too “litigation” viewpoint.

                3. Pilgrim, assuming

                  1) there is no communication from the patent owner to the accused infringer and the accused infringer comes up with the construction on his own, and

                  2) further assuming that there is been no further prosecution of the claims at issue, such as in a re-examination or reissue proceeding whereby the claims at issue are amended,

                  then I do not believe that the infringer has any leg to stand on from a point of view of equity.

                  From the point of view of validity, though, I think he does, because apparently the claims are indefinite.

                4. Ned – One could easily turn your scenario around the other way: Assuming

                  (1) the patent owner never communicated with the alleged infringer as to how the patent owner interpreted the scope of his claims, leaving alleged infringer with interpreting the claims per one of ordinary skill in the art;

                  (2) the patent owner never made any affirmative statements as to the scope of his claims during the original prosecution, and did not seek a reissue to more particularly claim whatever the innocent potential infringer is doing; and

                  (3) (since we’re discussing laches) the patent owner waits years and years before filing suit or notifying the alleged infringer he might be infringing under the patent owner’s interpretation of his claims

                  then I do not believe the patent owner has a leg to stand on from the point of view of equity.

                5. The only thing Pilgrim, is that there is no such call for “equity” as there is no such thing as an innocent infringer.

                6. Pilgrim, if the patent owner knows of the infringement and then deliberately delays without excuse, then you have a point.

                7. Ned – under Aukerman, one requirement for laches is that the patentee knew or should have known of the alleged infringement. The mere passage of time in and of itself does not give rise to laches (in contrast to statutes of limitations).

                  I will admit that some decisions seem to stretch to satisfy the “should have known” element. Compare Wanlass v GE and Wanlass v Fedders

                8. Precisely what happened when an MPEG patent claim later got broadly enough interpreted by a couple of Texas lawyers to sue dozens of companies for using JPG [not MPEG] several years ago,* and they in turn got sued for a piece of that pie by their former partners.

                  *[A defendant that didn’t pay up to settle won.]


                as to the new “theory” of infringement


                Coming up with a “new theory” does not – and cannot – change what the item is.

                Being mistaken as to the actual (which is merely reflected in the new theory and not actually new in and of itself) is no excuse.

                1. Coming up with a “new theory” does not – and cannot – change what the item is.

                  anon – Do you do any patent litigation? Because this is what happens all the time. In an ideal world, everyone would know the metes and bounds of a patent just by reading it. But we live under the US patent system, so patents cover whatever the patent lawyers can convince judges and juries they cover.

                  I’m not trying to comment on whether this patent system is right or wrong. I’m just respectfully saying that given our present system, laches ought to be a viable defense against claims brought years after they arose, since under the current system, what the patent covers will not be decided until those claims are ultimately litigated.

                2. Serious question Pilgrim – your view is tantamount to NO examination whatsoever, since the only “true” meaning (according to you) can only come from a court.

                  With that view, you should be pushing to eliminate altogether examination (coupled of course with the elimination of the presumption of validity).

      2. 4.3.2

        Pilgrim, according to the District Court, the real problem with the Lemelson patents were the two continuations in part such that no one could practically determine the priority date of the new claims being added, such as the claims to barcode readers.


          Yes. My Lemelson example was only an analogy, and the best I could come up with (sorry). Lemelson actually got claims directed more specifically (allegedly) to bar code readers in his multitude of continuations from the original “machine vision” applications.

          I was trying to analogize to the situation where Lemelson’s original “machine vision” patent application claims — directed to boxes travelling down a conveyor belt — were later said to cover bar code reading.

          Here is claim 3 from US Patent 4,118,730 (issued 10/3/1978). Given Lemelson’s patent specification, would any bar code reader company later have thought this applied to them?? And more to anon’s point, how far back in history do companies have to go to look at “published” patents to see if they might be potentially infringing, especially, as here, when bar code readers weren’t actually invented until years later.

          3. An inspection apparatus comprising:

          (a) an electro-optical device for selectively scanning an image field and producing a picture signal representative of the optical characteristics of the area scanned,

          (b) an image field having an image defining portions of said field, which image is optically contrasting with respect to surrounding image areas,

          (c) said electro-optical device including means for producing an output signal and modulating said output signal in accordance with variations in the image field scanned,

          (d) whereby inflections occur in said output signal which inflections are representative of the characteristics of said optically contrasting image areas,

          (e) a digital code generating means coupled to said device and adapted to be energized when inflections occur in said output signal, and

          (f) means operatively connected to said digital code generating means for receiving and utilizing signals generated thereby and to discriminate the same whereby the characteristics of said predetermined segment of said image field can be determined.


            Forgive me if I have the dates wrong on bar code reader inventions, but I’m just trying to set up a hypothetical – not a specific fact situation.


            Pilgrim, I have no idea where Lemelson found support for a that claim 3, but I do believe that Lemelson did come up with an automatic way of measuring the width of parts, perhaps moving on an assembly line.

            Note also that he uses means-plus-function. Therefore, the claim only covers the specific apparatus disclosed for implementing those functions, and equivalents thereof. I do not know if the average barcode scanner had these means.

  6. 3

    I found this article quite enlightening: Cook, Walter Wheeler. “Equitable Defenses.” The Yale Law Journal 32.7 (1923): 645-657.×601

    Down to 1915 “equitable defenses” were not permitted on the
    common-law side of the federal courts.4 In that year, however, Congress
    enacted the following statute:
    “In all actions at law equitable defenses may be interposed by answer,
    plea, or replication without the necessity of filing a bill on the equity
    side of the court. The defendant shall have the same rights in such
    case as if he had filed a bill embodying the defense of seeking the relief
    prayed for in such answer or plea. Equitable relief respecting the
    subject-matter of the suit may thus be obtained by answer or plea….

    Act of March 3, I9I5 (38 Stat. at L. 956), amending sec. 2746 of the Judicial

    In other words, if the legal claim could be barred by an equitable remedy, that equitable remedy could be pleaded in a legal case as a defense.

    I am not sure that laches alone was ever the basis for an action in equity to bar legal relief. More had to be alleged, such as with estoppel or abandonment. Thus, it would be inconsistent with the statute to allow a laches defense to a legal claim because the laches defense could not be the basis of an equitable remedy barring the legal cause of action.

  7. 2

    “[C]ongress may not ‘withdraw from judicial cognizance any matter which, from its nature, is the subject of a suit at the common law, or in equity.'”

    Stern v. Marshall. 2011.

    1. 2.1

      Just curious – as it departs from the thread here just a bit, but anony, what are your views of the power provided to Congress in the Constitution of jurisdiction stripping?

      An important factor to keep in mind is the notion of original jurisdiction – and what constitutes actual original jurisdiction of the different bodies of the Article III judiciary.

      1. 2.1.1

        anon, can you cite one law review article from Harvard or Yale or Stanford that supports your view of jurisdiction stripping?


          Don’t need one for the plain reading, Ned.

          You do understand the basics of our limited government and the fact that courts (and the Court) have certain items of original jurisdiction (with all other items NOT being of original jurisdiction), eh?


            Martin v. Hunter’s Lessee, 14 US 304 – Supreme Court 1816 link to

            “The language of the article throughout is manifestly designed to be mandatory upon the legislature. Its obligatory force is so imperative, that congress could not, without a violation of its duty, have refused to carry it into operation. The judicial power of the United States shall be vested (not may be vested) in one supreme court, and in such inferior courts as congress may, from time to time, ordain and establish. Could congress have lawfully refused to create a supreme court, or to vest in it the constitutional jurisdiction? … The judicial power must, therefore, be vested in some court, by congress; and to suppose that it was not an obligation binding on them, but might, at their pleasure, be omitted or declined, is to suppose that, under the sanction of the constitution, they might defeat the constitution itself; a construction which would lead to such a result cannot be sound.

            If, then, it is a duty of congress to vest the judicial power of the United States, it is a duty to vest the whole judicial power. The language, if imperative as to one part, is imperative as to all. If it were otherwise, this anomaly would exist, that congress might successively refuse to vest the jurisdiction in any one class of cases enumerated in the constitution, and thereby defeat the jurisdiction as to all; for the constitution has not singled out any class on which congress are bound to act in preference to others.

            The next consideration is as to the courts in which the judicial power shall be vested. It is manifest that a supreme court must be established; but whether it be equally obligatory to establish inferior courts, is a question of some difficulty. If congress may lawfully omit to establish inferior courts, it might follow, that in some of the enumerated cases the judicial power could nowhere exist. The supreme court can have original jurisdiction in two classes of cases only, viz. in cases affecting ambassadors, other public ministers and consuls, and in cases in which a state is a party. Congress cannot vest any portion of the judicial power of the United States, except in courts ordained and established by
            *331 itself; and if in any of the cases enumerated in the constitution, the state courts did not then possess jurisdiction, the appellate jurisdiction of the supreme court (admitting that it could act on state courts) could not reach those cases, and, consequently, the injunction of the constitution, that the judicial power “shall be vested,” would be disobeyed. It would seem, therefore, to follow, that congress are bound to create some inferior courts, in which to vest all that jurisdiction which, under the constitution, is exclusively vested in the United States, and of which the supreme court cannot take original cognizance. They might establish one or more inferior courts; they might parcel out the jurisdiction among such courts, from time to time, at their own pleasure. But the whole judicial power of the United States should be, at all times, vested either in an original or appellate form, in some courts created under its authority.

            … The clause proceeds — “in all the other cases before mentioned the supreme court shall have appellate jurisdiction, both as to law and fact, with such exceptions, and under such regulations, as the congress shall make.” The very exception here shows that the framers of the constitution used the words in an imperative sense. What necessity could there exist for this exception if the preceding words were not used in that sense? Without such exception, congress would, by the preceding words, have possessed a complete power to regulate the appellate jurisdiction, if the language were
            *333 only equivalent to the words “may have” appellate jurisdiction. It is apparent, then, that the exception was intended as a limitation upon the preceding words, to enable congress to regulate and restrain the appellate power, as the public interests might, from time to time, require.

            This leads us to the consideration of the great question as to the nature and extent of the appellate jurisdiction of the United States. We have already seen that appellate jurisdiction is given by the constitution to the supreme court in all cases where it has not original jurisdiction. …

            If the constitution meant to limit the appellate jurisdiction to cases pending in the courts of the United States, it would necessarily follow that the jurisdiction of these courts would, in all the cases enumerated in the constitution, be exclusive of state tribunals.

            On the other hand, if, as has been contended, a discretion be vested in congress to establish, or not to establish, inferior courts at their own pleasure, and
            *340 congress should not establish such courts, the appellate jurisdiction of the supreme court would have nothing to act upon, unless it could act upon cases pending in the state courts. Under such circumstances it must be held that the appellate power would extend to state courts; for the constitution is peremptory that it shall extend to certain enumerated cases, which cases could exist in no other courts. Any other construction, upon this supposition, would involve this strange contradiction, that a discretionary power vested in congress, and which they might rightfully omit to exercise, would defeat the absolute injunctions of the constitution in relation to the whole appellate power.

            But it is plain that the framers of the constitution did contemplate that cases within the judicial cognizance of the United States not only might but would arise in the state courts, in the exercise of their ordinary jurisdiction. …

            On the whole, the court are of opinion, that the appellate power of the United States does extend to cases pending in the state courts; and that the 25th section of the judiciary act, which authorizes the exercise of this jurisdiction in the specified cases, by a writ of error, is supported by the letter and spirit of the constitution. We find no clause in that instrument which limits this power; and we dare not interpose a limitation where the people have not been disposed to create one.

            … [T]the present writ of error is founded upon a judgment of the court below, which drew in question and denied the validity of a statute of the United States…

            …The question now litigated is not upon the construction of a treaty, but upon the constitutionality of a statute of the United States, which is clearly within our jurisdiction. …

            The Dissent:

            “It will be observed in this case, that the court disavows all intention to decide on the right to issue compulsory process to the state courts; thus leaving us, in my opinion, where the constitution and laws place us — supreme over persons and cases as far as our judicial powers extend, but not asserting any compulsory control over the state tribunals.

            In this view I acquiesce in their opinion, but not altogether in the reasoning, or opinion, of my brother who delivered it.

            The only point necessary to be decided in the case then before them was, “whether they were bound to obey the mandate emanating from this court?” But in the judgment entered on their minutes, they have affirmed that the case was, in this court, coram non judice, or, in other words, that this court had not jurisdiction over it.

            This is assuming a truly alarming latitude of judicial power. Where is it to end? It is an acknowledged principle of, I believe, every court in the world, that not only the decisions, but every thing done under the judicial process of courts, not having jurisdiction, are, ipso facto, void. Are, then, the judgments of this court to be reviewed in every court of the union? and is every recovery of money, every change of property, that has taken place under our process, to be considered as null, void, and tortious?

            But it is argued that a power to assume jurisdiction to the constitutional extent, does not necessarily carry with it a right to exercise appellate power over the state tribunals.

            This is a momentous question, and one on which I shall reserve myself uncommitted for each particular case as it shall occur. It is enough, at present, to have shown that congress has not asserted, and this court has not attempted, to exercise that kind of authority in personam over the state courts which would place them in the relation of an inferior responsible body without their own acquiescence. And I have too much confidence in the state tribunals to believe that a case ever will occur in which it will be necessary
            *377 for the general government to assume a controlling power over these tribunals. But is it difficult to suppose a case which will call loudly for some remedy or restraint?


              One can see in this case, anon, the beginnings of the civil war. The Supreme Court of Virginia refused to follow the mandate of the Supreme Court of the United States. The Supreme Court of the US held that it had jurisdiction — over the parties — to decide the issue. But it did not decide whether it had jurisdiction to force the Supreme Court of Virginia to obey.

              Now, consider that Congress sets up Patent Supreme Court and that court refuses to follow the mandates of the Supreme Court of the US? Same question?


                No. and quite simply for the Constitutional power of jurisdiction stripping and the nullity YOU would create (that self same “defeat the constitution itself).

                See the post below, for the additional factors that have accompanied my call for jurisdiction stripping of the Supreme Court of the non-original jurisdiction of hearing patent cases.

                1. That one Supreme Court is still a court of limited original jurisdiction.

                  You seem intent on not seeing all the elements on the table here.

                2. Ned,

                  You are also glossing over what the holding in Marburg actually states: the difference between judicial review for ONLY the Supreme Court and judicial review for an Article III court.

                  Combine this then with the fact that you remain deafeningly silent on the notion of original jurisdiction as well as remain silent on your own quote about turning the Constitution into a nullity (concerning the Constitutional power of Congress to employ jurisdiction stripping of ANY non-original jurisdiction matter, and your attempt at dialogue here is utterly unconvincing.

                3. No, anon, it has also has appellate jurisdiction from lower court decisions involving the laws and constitution of the US. It would not be Supreme if it did not have such appellate jurisdiction.


              is to suppose that, under the sanction of the constitution, they might defeat the constitution itself; a construction which would lead to such a result cannot be sound.

              That applies as well to what YOU want to do with the Constitutional power of jurisdiction stripping.

              Mind you, I have used the notion of jurisdiction stripping ONLY in the manner of stripping the Supreme Court of the non-original jurisdiction of hearing patent cases. I have fully complimented THAT jurisdiction stripping with a proper Article III court to still hear patent cases – this is NOT a matter of removing any case from the judicial branch.

              May I remind you (again) to re-read Marbury, as nowhere in that decision does the Court insist that judicial review must be with the Supreme Court, but rather, the decision merely insists that judicial review be with an Article III court.


                anon, Congress can provide for lower courts and lower appellate courts. What it cannot do is strip the Supreme Court of its (ultimate) appellate jurisdiction.

                In Hunter’s Lessee, the Court decided that it had appellate jurisdiction even from State Courts because it had appellate jurisdiction over all cases and controversies arising under the laws and constitution of the United States as a matter of the structure of the Constitution. So, what if a party to the Legislative Patent Supreme Court petitions the constitutional Supreme Court for review, the Supreme Court accepts and the Supreme Court reverses? Can the Legislative Patent Supreme Court ignore the constitutional Supreme Court’s mandate?

                Clearly, the dissent suggested that it should not ignore it, because the Supreme Court clearly had constitutional jurisdiction. The problem was, of course, could the Supreme Court do to force the lower court to comply if it chose to ignore the Supreme Court. Is there to be a war between marshals of the respective courts?

                Ultimately, the refusal of the Southern States to follow the Federal Law was the reason for the Civil War. The forces of the Union won that war, but it was truly not necessary had the South been willing to follow Federal Law. But I see no reason to deliberately set up another constitutional crisis concerning patents.

                I certainly think that Congress would think twice.

                1. What it cannot do is strip the Supreme Court of its (ultimate) appellate jurisdiction.

                  You have finally taken a (baby) step to discussing this.
                  Of course, where you have erred is in assuming that patent appeals are a matter of original jurisdiction for the Supreme Court.

                  They are not.

                  Your path STILL leads to the nullity of the Constitutional grant of jurisdiction stripping to Congress. Your own quote is the petard upon which you STILL hoist yourself.

                2. …and it is NOT Congress that is instigating another “civil war” with the statutory law that is patent law (and one branch – the judiciary – ig noring what the PROPER branch has written)

                3. You are also misreading a different type of issue from that case: the federal versus state divide. Try not to confuse yourself with the non-issues that only cloud your thinking.

    2. 2.2

      “The judicial power shall extend to all cases, in law and equity, arising under . . . the laws of the United States.”

      U.S. Constitution. Article III. Section 2.

      1. 2.2.1


        That is a non sequitur to my post.

        …and what about the Constitutional power of jurisdiction stripping…?


          Sorry, wasn’t responding to your question – added a supplement to my original post.

          Re jurisdiction stripping? No opinion.


            Lol – no opinion?

            Not very persuasive.

            How about the notion of what constitutes original jurisdiction?

            Keep in mind that Ned’s view that the Supreme Court (somehow) has original jurisdiction over ALL law cannot be true as that would eviscerate the Constitutional power of jurisdiction stripping given to Congress (would make a nullity of an express Constitutional power, which is prima facie incorrect – no academic publications necessary).

  8. 1


    I just read the transcript. It seems to me from the questions and comments that the battle lines are as they were before, although Kagan is more of a wildcard now. It would otherwise be 5-3 then to reverse (with Scalia gone) but if she switches it would be 4-4. I’d say there is a 75% chance they reverse at this point.

    1. 1.1

      I don’t see that impetus to switch – especially if it merely results in an inglorious tie.

      I am curious as to why you see such a switch, JNG.

      Care to flesh out your view?

      1. 1.1.1

        sure – she only asked a few questions – on pages 49/50 though, she seemed receptive to distinguishing between patents and copyrights

        again, I don’t think she WILL switch, but in terms of everything I read, she was the only one that seemed possible of changing their mind


          Ok / I don’t see the same possibilities, given the resulting tie (and I am sure that you would agree with me that the Justices do take such things into consideration – typically)

    2. 1.2

      I’m curious why this case interests you at all, JNG. After all, you’re not the type who is going to wait to sue, right?

      1. 1.2.1

        Why does “wait to sue” even matter when ALL patents are published?

        Only those playing the Efficient Infringement game (or wish to denigrate patents for other philosophical reasons) would take a view directly counter to the main mission of the Office.

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