Justice Sotomayor – Closet Originalist?

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From a Surpeme Court decision against Microsoft v. i4i Limited. I’m not familliar with this case, but I do find this bit of of the majority opinion, written by the new Justice, interesting. She writes:

The parties and their amici have presented opposing views as to the wisdom of the clear-and-convincing-evidence standard that Congress adopted. Microsoft and its amici contend that the heightened standard of proof dampens innovation by unduly insulating “bad” patents from invalidity challenges. They point to the high invalidation rate as evidence that the PTO grants patent protection to too many undeserving “inventions.” They claim that inter partes reexamination proceedings before the PTO cannot fix the problem, as some grounds for invalidation (like the on-sale bar at issue here) cannot be raised in such proceedings. They question the deference that the PTO’s expert determinations warrant, in light of the agency’s resources and procedures, which they deem inadequate. And, they insist that the heightened standard of proof essentially causes juries to abdicate their role inreviewing invalidity claims raised in infringement actions.

For their part, i4i and its amici, including the United States, contend that the heightened standard of proof properly limits the circumstances in which a lay jury overturns the considered judgment of an expert agency. They claim that the heightened standard of proof is an essential component of the patent “bargain,” see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 150–151 (1989), and the incentives for inventors to disclose their innovations to the public in exchange for patent protection. They disagree with the notion that the patent issuance rate is above the optimal level. They explain that limits on the reexamination process reflect a judgment by Congress as to the appropriate degree of interference with patentees’ reliance interests. Finally, they maintain that juries that are properly instructed as to the application of the clear-and-convincing-evidence standard can, and often do, find an invalidity defense established. We find ourselves in no position to judge the comparative force of these policy arguments. For nearly 30 years, the Federal Circuit has interpreted §282 as we do today. During this period, Congress has often amended §282, see, e.g., Pub. L. 104–141, §2, 109 Stat. 352; Pub. L. 98–417, §203, 98 Stat. 1603; not once, so far as we (and Microsoft) are aware, has it even considered a proposal to lower the standard of proof, see Tr. Oral Arg. 10. Moreover, Congress has amended the patent laws to account for concerns about “bad” patents, including by expanding the reexamination process to provide for inter partes proceedings. See Optional Inter Partes Reexamination Procedure Act of 1999, 113 Stat. 1501A–567, codified at 35 U. S. C. §311 et seq.

Through it all, the evidentiary standard adopted in §282 has gone untouched. Indeed, Congress has left the Federal Circuit’s interpretation of §282 in place despite ongoing criticism, both from within the Federal Government and without.11 Congress specified the applicable standard of proof in 1952 when it codified the common-law presumption of patent validity. Since then, it has allowed the Federal Circuit’s correct interpretation of §282 to stand. Any recalibration of the standard of proof remains in its hands.

To make a long story short, Sotomayor says that it is up to the Congress to change the requirements of the burden of proof in patenet cases, NOT the Courts!  That should make some Conservatives at least a little bit happy…

No, Never mind.  It’s election season, and they would NEVER ADMIT that a liberal judge did something right, so this will just get ignored.

More info on the case at Groklaw.


PS. Even more interesting – This was an 8 – 0 decision, and Justice Roberts recused himself. Here is the SCOTUSblog page giving all the details of the case.

3 Comments to “Justice Sotomayor – Closet Originalist?”

  1. By David Schraub, June 15, 2011 @ 3:29 am

    I don’t know the slightest about intellectual property law, and thus can’t speak to the merits of the case (but, since it was a unanimous, it probably isn’t too controversial). But I think the idea that simply “deferring to Congress” is a “conservative” position is far to simplistic — not just because over the past decade, conservative justices have been considerably more likely to overturn acts of Congress as unconstitutional that liberals (see Thomas Keck’s book “The Most Activist Supreme Court in History”); but also because I don’t think there is anything inherently liberal or conservative about delegating issues to the legislative or judicial branches.

  2. By Sonicfrog, June 15, 2011 @ 2:09 pm

    No, I more or less agree with your position. But it is the “Conservative” position that the courts are evil because they have taken it upon themselves to “legislate from the bench!”. Of course, they are less concerned about that in the instances the court does just that, but the decision agrees with their political philosophy.

  3. By David Schraub, June 15, 2011 @ 4:33 pm

    I wouldn’t even give them that much credit. It’s less of a “philosophy” than a “talking point”. Conservatives like it when judges defer to legislative outcomes they like, and dislike it when they defer to legislative outcomes they dislike. “Legislating from the bench” is a piece of rhetoric, nothing more.

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