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.

NEXT: Eminent Domain Prevails Over Sovereign Immunity in Supreme Court Case Both Sides Deserved to Lose

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  1. “Barrett prevails in Minerva Surgical, Inc v. Hologic.” – only in the academic and irrelevant sense. In the real world, you need votes, and Kagan got them, including Roberts and Kavanaugh

  2. I haven’t seen an endorsement quite like this since this one. (Just substitute “Justice Barrett” for the name, every time, and see how well it works.)

    The “canonical status” of former Justice Scalia’s work will likely remain strong among conservatives, but might not be much of a calling card at the Supreme Court in a few years.

    1. What a silly little man you are.

      1. How have silly little men like me stomped tough guys like you into submission in the culture war, clinger? Now be nicer, or your betters may stop being gracious toward those we defeat.

  3. I frankly didn’t understand Justice Alito. In applying but narrowing Westinghouse, the majority necessarily decided to retain it rather than overre it.

  4. “This treatise by Justice Scalia and Bryan Garner has achieved canonical-status. It is treated on the same level as a Supreme Court precedent.”

    Uhhh, no.

  5. Also, as someone who has litigated patent cases, I can say with some confidence that most patent practitioners – both on the strong patent rights side and the most (litigated) patents are junk side (I’m on the latter) – would strongly agree with Justice Kagan here. Assignor estoppel has its place as an extremely narrow doctrine (e.g., when the assignor was actually involved in prosecution, got consideration for the assignment besides just an employment agreement) but it should not be discarded altogether. The idea that a guy could go prosecute a patent making all sorts of representations to the PTO, then sell it for a few million dollars to a third, and then turn around and infringe the patent and say it is invalid (and rely on prior art he never disclosed to boot) is absurd. The problem is the typical assignor estoppel case generally doesn’t have those facts so the doctrine needs to be narrowed considerably to fit the actual inequitable situations and not the situation where some guy had to assign all his prospective inventions by reason of an employment agreement and had nothing to do with the prosecution of the patent at all for the most part.

    1. In other words, Josh’s analysis strongly reflects his admonition that he knew nothing about the doctrine until a few hours ago.

      1. The thought that this blog is the best right-wing law professors can do in America is very comforting.

        1. 1: Which blog is the best that left wing law professors can do in America?

          2: Most of the people who post here aren’t right wing.

          Since you have a simple mind, I’ll give you a simple filter: anyone who refused to actively support Trump over Biden in 2020 was not, and is not, “right wing”

    2. “The idea that a guy could go prosecute a patent making all sorts of representations to the PTO, then sell it for a few million dollars to a third, and then turn around and infringe the patent and say it is invalid (and rely on prior art he never disclosed to boot) is absurd.”

      The question is not whether it’s absurd (it is). The question is whether or not Congress wrote patent law in such a way as to make it possible.

      It’s not SCOTUS’s job to fix Congress’s mistakes. So, DID Congress write Patent law that way?

      1. You have hit on the rub. In prior generations, most jurists thought it was their job to fill the gaps in Congress’ handiwork. The current dominant view is, let Congress fix it.

      2. Except its not that simple. This would be an implied statutory repeal. What if Congress included the language not really thinking about whether they were overturning Westinghouse?

    3. I am not that conversant in patent law, but it definitely did strike me like the subtext was “legally, this doctrine was probably abrogated, but it has some policy justifications that make it useful to retain”.

  6. Is it not Dean Kagan?.

    Did Justice Barrett ever make it past professor?

    1. It’s a sad and twisted world view that considers “Dean” to be a title of greater respect than “Professor”

      A Professor might actually teach. A Dean is just an administrator

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