The Volokh Conspiracy

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Professor Kagan v. Professor Barrett, Round 1 of N

Barrett prevails in Minerva Surgical, Inc v. Hologic.


Today, the Court decided Minerva Surgical, Inc. v. Hologic, Inc. The case concerned the patent law doctrine known as "assignor estoppel." Justice Kagan wrote the majority opinion, which was joined by Chief Justice Roberts and Justices Breyer, Sotomayor, and Kavanaugh. Justice Barrett wrote the principal dissent, which was joined by Justices Thomas and Gorsuch. Justice Alito dissented, and would have dismissed the writ as improvidently granted.

Last week in HollyFrontier, Justice Kagan joined Justice Barrett's dissent. Today, however, the two former professors were on the opposite sides of the docket. And I have to say, I really enjoyed the dueling opinions. They were clean, easy to read, not vituperative, witty in all the right places, but not overdone. I look forward to many, many future such matches–though preferably with Barrett in the majority.

Until this morning, I had never heard of "assignor estoppel," so I approached this case with a blank slate. On balance, I think Barrett gets the better of the argument. Though in fairness, Kagan was fighting with one hand tied behind her back; she had to keep the Chief and Kavanaugh on board. The best she could do was narrow the doctrine, without discarding it. And generally, dissenters always have a freer hand to upset precedents, and make winning arguments.

Ultimately, the tiebreaker for me was property law. Chief Justice Taft's Westinghouse decision viewed patents like real property. Thus, under the 1870 Act, it made sense to draw analogies to the real property concept of deed estoppel. But the 1952 Act explained that "patents shall have the attributes of personal property." The concept of deed estoppel has no bearing on personal property. This change undermines the argument that Congress somehow ratified Westinghouse.

Justice Barrett also persuaded me that assignor estoppel was not a deeply-rooted background principle against which Congress legislated. This type of estoppel pales in comparison to other entrenched doctrines, like res judicata and collateral estoppel. In the wake of Westinghouse, the Supreme Court did not apply this doctrine. As best as I can tell, the Federal Circuit re-animated the doctrine in 1988.

Perhaps the strongest argument in favor of the assignor doctrine is stare decisis. But, Justice Kagan was estopped–pun intended–from invoking her favorite principle. If ever the price to keep a fourth and fifth vote (Roberts and Kavanaugh), stare decisis is verboten. Justice Alito gleefully points this omission out:

With so little support for its reasoning, it is more than a little surprising that the majority forswears reliance on precedent. See ante, at 13. Not too long ago, in Kimble v. Marvel Entertainment, LLC, 576 U. S. 446 (2015), another case involving a judicially created rule of patent law, the Court applied a "superpowered form of stare decisis." Id.,at 458. Yet the majority refuses to wield the nearly impregnable Kimble shield. Instead, it adopts a text-blind method of statutory interpretation with which I cannot possibly agree.

"Kimble shield"? Come on. "Marvel shield" would have been such a better turn of phrase. It could even be made of vibranium.

I found a lot to agree with in Justice Alito's dissent. The Court probably should have overruled Westinghouse. But on balance, I can go along with Justice Barrett's position that the 1952 Act abrogated the precedent. Thus, there was no need to formally over rule it.

There was a feisty exchange between Justices Alito and Barrett about Reading Law. This treatise by Justice Scalia and Bryan Garner has achieved canonical-status. It is treated on the same level as a Supreme Court precedent. Last term in Bostock, the Justices waged battle over who could claim the Scalia mantle. We saw a repeat of this battle in Facebook v. Duguid, where Scalia's co-author was bested 9-0. And today, Justices Alito and Barrett sparred over who had the better reading of Scalia. At one point, Alito wrote that Reading Law was "one of" the former Scalia clerk's "chosen treatises." And Justice Barrett calls Reading Law "a leading treatise." Though Barrett also cites William Eskridge twice. Reading Law has taken a life of its own.