After a relatively sedate confirmation hearing, Judge Amy Cooney Barrett ascended to the United States Supreme Court as an associate justice this week. Justice Barrett previously served on the Court of Appeals for the Seventh Circuit. Accordingly, many in the intellectual property industry wonder how Justice Barrett will view matters on patent law. To answer this, it is helpful to understand how intellectual property appeals work.

The Appeals Process for Intellectual Property

There are four general categories of intellectual property:

  • Patents;
  • Trademarks;
  • Copyrights; and
  • Trade Secrets.

With the exception of patents, all other IP matters go through one of eleven (11) Courts of Appeals. Moreover, they are divided up geographically. For example, here in Florida, we appeal copyright and trademark cases to the 11th Circuit Court of Appeals.

11th Circuit Court of Appeals Admission
My admission to the 11th Circuit Court of Appeals. This is where I take copyright and trademark appeals from United States District Court.

However, if I have a patent matter, it has to go to the United States Court of Appeals for the Federal Circuit.

Federal Circuit Court of Appeals Admission
My admission to the Federal Circuit. This is where I take patent appeals from United States District Court.

As you can see from the diagram below, Justice Barrett was on the 7th Circuit Court of Appeals and did not hear patent law matters. So how can we forecast her approach?

Diagram of how intellectual property cases are appealed to the United States Supreme Court.
Justice Barrett previously served on the 7th Circuit Court of Appeals and therefore did not hear patent cases which are only heard by the Court of Appeals for the Federal Circuit.

Textualist Approach

Like Justice Thomas and the late Justice Scalia, Justice Barrett is reticent to extrapolate statutory language on patents. How will this impact patent practice, patent enforceability and IP value? It means Justice Barrett will unlikely “fix” ambiguous statutory language, particularly on controversial matters. One such issue involves Title 35 United States Code Section 101….what is patentable at all? It was Justice Thomas, another textualist, that rendered the opinion in Alice v. CLS Bank regarding the patentability of computer-implemented methods and abstract ideas. In Alice, the court refrained from adopting (otherwise helpful) tests created by the Federal Circuit. Textualists like Thomas are careful about “rigid tests” created by lower courts to resolve issues. The concern is that the lower courts essentially start “legislating” the gaps in the law.

Pros and Cons of Texualists in Patent Law

On one hand, it is truly up to Congress to correct statutory ambiguities in patent law. There has always been tension on the checks and balances of the three branches of government. This is no different in patent law. For example, the Patent Trial and Appeal Board (PTAB) comprises judges appointed by the USPTO director. The PTAB conducts administrative trials on the patent validity of (often litigated) claims. They frequently invalidate patents during pending litigation. However, the USPTO is an executive branch entity while courts are governed under Article III of the Constitution. Numerous legal challenges have been made addressing the validity of the PTAB and whether it violates Article III.

By the same token, Justice Barrett and other conservative justices generally defer to Congress when statutory ambiguity exists. However, justices are lifetime appointments. The unexpected happens. Most famously, Republican-appointed Chief Justice Roberts salvaged the constitutionality of the Affordable Care Act by characterizing it as a tax.

The Affordable Care Act’s requirement that certain individuals pay a financial penalty for not obtaining health insurance may reasonably be characterized as a tax. Because the Constitution permits such a tax, it is not our role to forbid it, or to pass upon its wisdom or fairness.

P. 50, slip op., National Federation of Independent Business v. Sebelius, U.S. Sup. Ct. (June 28, 2012).

A strict textualist usually sends the ambiguous or constitutionally defective law back to Congress to correct. Thus, Justice Roberts surprised many with this decision. In fairness, few credible attorneys I know ever question the intellectual capacity or integrity of any justice on the Court. These decision reflect philosophical approaches to statutory interpretation.

Patent Law is Specialized

A possible “con” of textualists is that patent law needs some creativity. It is extraordinarily difficult to translate innovative concepts, science and discoveries into the legally binding instruments we call patent claims. The judges on the Court of Appeals for the Federal Circuit are well-versed in patent law. Furthermore, they frequently have science or engineering degrees. For example, a sample of just some Federal Circuit judges:

  • Alan Lourie: Harvard undergrad. Master’s degree in organic chemistry from the University of Wisconsin (1958), and his Ph.D. in chemistry from the University of Pennsylvania (1965). 
  • Haldane Mayer: West Point Bachelor of Science degree in 1963.
  • Kimberly Moore: Electrical engineering degree from MIT.
  • Pauline Newman: Ph.D. from Yale.
  • Raymond Chen: Electrical Engineering degree from University of California.
  • Richard Linn: Electrical Engineering degree from Rensselaer Polytechnic Institute.
  • Kara Stoll: Electrical Engineering degree from Michigan State.

This is no surprise. No attorney may sit for the United States Patent Bar examination with first having a scientific or engineering degree. Additionally, patent law is highly technical. Accordingly, the rules, tests and constraints “authored” by the Federal Circuit judges provide much needed guidance to patent practitioners. Textualist justices tend to strike down tests such as machine or transformation provided by the Federal Circuit. Thus, perhaps a textualist is out-of-place in patent matters.

Certiorari and Deference to Federal Circuit

If I had the ear of Justice Barrett I would first congratulate her on her remarkable poise and intellect during the confirmation hearings. Secondly, I would ask she consider the remarkable experience and technical knowledge of the Federal Circuit. The Supreme Court has the authority to decline to take up appeals (“certiorari”). Therefore, unless the Supreme Court finds an extraordinary error made by the Federal Circuit, it should otherwise permit that court to be the final word on patent appeals. Regardless, we are confident Justice Barrett will make sound findings on patent law and wish her well.

Has Justice Barrett ruled on patent cases?

No, she ascended from the Seventh Circuit Court of Appeals which does not hear patent matters.

How will Justice Barrett handle patent cases?

If she defers to the Federal Circuit and denies certiorari, then patent law should become more predictable.

Attribution to Author Rachel Malehorn for modified header image of then Judge Amy Coney Barrett in 2018.

Anton Hopen

U.S. Patent Attorney with