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Experimentation and Patent Validity: Restoring the Supreme Court’s Incandescent Lamp Patent Precedent

“If the description [of the invention] be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.”

      -United States Supreme Court, The Incandescent Lamp Patent

“[A] patent is not invalid because of a need for experimentation.”

      -United States Court of Appeals for the Federal Circuit, W.L. Gore & Associates, Inc. v. Garlock, Inc.

In 1982, Congress vested the U.S. Court of Appeals for the Federal Circuit with exclusive jurisdiction over patent appeals. In recent years, the Supreme Court has reversed Federal Circuit decisions for straying from established Court precedent. In KSR International Co. v. Teleflex, Inc., the Court rejected the Federal Circuit’s “rigid approach” to patent obviousness as “inconsistent” with the “expansive and flexible approach” articulated in prior Supreme Court precedent. In eBay, Inc. v. MercExchange, L.L.C., the Court found that the Federal Circuit approached the decision whether to grant an injunction in “the opposite direction” of the Court’s precedent. In MedImmune, Inc. v. Genentech, Inc., the Court reversed the Federal Circuit for too “readily dismiss[ing]” close Supreme Court precedent. Even when affirming, the Court has not been kind to the Federal Circuit’s reasoning. In Bilski v. Kappos, the Court upheld the Federal Circuit’s judgment but rejected the Federal Circuit’s approach. The Supreme Court’s close review of Federal Circuit decision making does not appear to be slowing. The Court heard six patent cases during the 2013–14 Term and reversed the Federal Circuit in five of those cases.

This Note will examine another, previously unrecognized, area where tension exists between the Federal Circuit’s approach and Supreme Court precedent. For an invention to receive patent protection, an applicant must provide an enabling description—that is, a description that enables a person of ordinary skill in the art to make and use the invention. The Federal Circuit analyzes whether a description is enabling by applying an eight-factor test to determine whether a person of ordinary skill could practice the invention without “undue experimentation.” Yet in The Incandescent Lamp Patent, the Supreme Court directed that “[i]f the description [of the invention] be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.” In short: The Federal Circuit’s approach allows experimentation, while the Supreme Court requires that the inventor obviate experimentation entirely.

The difference in approach becomes clear when considering Incandescent Lamp’s context. That case was the culmination of a fifteen-year legal battle between Thomas Edison and George Westinghouse, two titans of nineteenth-century innovation, regarding who would receive patent rights for the light bulb. The Supreme Court decided not that Edison invented the light bulb, but held invalid a patent belonging to two other inventors: William Sawyer and Albon Man. Because a person would have to perform independent experiments to practice Sawyer and Man’s invention, their patent was void. The parties’ arguments regarding enablement reveal that the Supreme Court considered, but did not adopt, a standard similar to the one currently embraced by the Federal Circuit.

While many modern patent treatises consider “undue experimentation” to be black-letter law, the Supreme Court has never endorsed, nor even considered, the standard. In adopting “undue experimentation,” the Federal Circuit did not cite Incandescent Lamp—indeed, the Federal Circuit has never cited the case, though it appears to be controlling precedent. In light of recent scrutiny of the Federal Circuit, Incandescent Lamp provides authority to challenge an issued patent and seek certiorari review.

Further, Incandescent Lamp appears poised for a resurgence. While not cited by any court since 1981, it has been cited in fourteen papers before the Supreme Court since 2001, including four in 2013. While litigants have cited the case in encouraging certiorari review, no party has recognized the tension between the Federal Circuit and Supreme Court standards. This seems particularly remarkable because no court at any level has overruled or even criticized Incandescent Lamp in the 119 years since the Supreme Court decided the case. Further, the Court continues to voice concerns about the policies animating Incandescent Lamp. The case is a standard in patent law textbooks, and one scholar recognized Incandescent Lamp as one of the “Top 10” patent cases of all time.

This Note will proceed in three parts. First, I will give a brief overview of the relevant law and describe the background of Incandescent Lamp. Second, I will evaluate why the Supreme Court decided the case the way that it did, and how the arguments that the parties presented provide context for what the case means. Finally, I will evaluate the case’s effect on enablement doctrine, trace the rise of undue experimentation, and illustrate that the tension between the Federal Circuit’s current approach and Incandescent Lamp cannot be resolved.

Reassessing the Doctrine of Judicial Estoppel: The Implications of the Judicial Integrity Rationale

When a party “assumes a certain position in a legal proceeding, and succeeds in maintaining that position, he may not thereafter, simply because his interests have changed, assume a contrary position.” This doctrine is most often termed “judicial estoppel,” but it may also be called “fact preclusion,” “judicial preclusion,” or “estoppel in pais.” Judicial estoppel is an equitable, court-created, discretionary doctrine that may be invoked by either a party or the court sua sponte. Very simply stated, the doctrine prevents a party from taking a position contradictory to a position which that party adopted previously.

The most difficult questions of judicial estoppel tend to arise when a party asserts an inconsistent claim in two different proceedings, since judicial estoppel “prevents a party from asserting a claim in a legal proceeding that is inconsistent with a claim taken by that party in a previous proceeding.” For estoppel to be considered in a second proceeding, the first proceeding need not have been a complete case; rather, it may have taken a variety of forms—from a complete court case, to a pleading, to a sworn statement made to an administrative agency. And questions of judicial estoppel arise in a variety of different factual scenarios, from boundary disputes to bankruptcy cases.

Despite enjoying recognition for over one hundred and fifty years in some state courts and over one hundred years in the U.S. Supreme Court, the doctrine of judicial estoppel has never taken one settled form. In the nearly fifteen years since New Hampshire v. Maine—the Court’s seminal modern case on judicial estoppel—was handed down, various federal courts of appeals have changed their approaches to the federal doctrine of judicial estoppel, but no uniform approach has emerged. Different federal courts continue to emphasize different factors and rationales relevant to judicial estoppel when applying their own federal common law approaches to judicial estoppel. At the same time, there continues to be a circuit split over whether the Supreme Court’s decision in Erie Railroad Co. v. Tompkins requires federal courts to apply state law of judicial estoppel in some cases.

Little to no literature exists on the development of federal judicial estoppel—especially in relation to the Erie doctrine—since New Hampshire v. Maine. This Note attempts to fill that gap. Part I of this Note will lay out the background law of judicial estoppel. It will first outline the Supreme Court’s decision in New Hampshire v. Maine and then sketch the ways in which the courts of appeals have emphasized different elements of judicial estoppel when applying their own variations on the doctrine. It also will discuss the various rationales underlying different federal approaches to judicial estoppel.

Part II will begin with an explanation of the split among the courts of appeals over what form of judicial estoppel applies in particular scenarios under the Erie doctrine. The bulk of this Part will outline and defend the proposed rule: that judicial estoppel should be categorized as substantive for the sake of the Erie doctrine, and that a federal court considering the application of judicial estoppel in any case should apply the judicial estoppel doctrine that would be applied by the court that adjudicated the first proceeding. Part III will provide a cursory outline of state approaches to choice-of-law questions that states are faced with when applying judicial estoppel. This Part will also discuss the possible application of Semtek International Inc. v. Lockheed Martin Corp. to the doctrine of judicial estoppel and propose a state approach to choice-of-law questions that arise when states consider judicial estoppel; this proposed state rule mirrors the proposed federal rule under the Erie doctrine.

Aligning Campaign Finance Law

“You have some ideological extremist who has a big bankroll and they can entirely skew our politics.” –Barack Obama, Press Conference, October 8, 2013

Here are some facts about money and politics in today’s America. At the federal level, campaign spending totaled $7.3 billion in 2012. Almost all of this funding came from individual donors, not corporations or unions.Individuals gave about half of their contributions to specific candidates, a quarter to political parties, and a quarter to Political Action Committees (“PACs”) and Super PACs.  These donors were in no way representative of the country as a whole. They were heavily old, white, male, and, of course, wealthy. They also were far more polarized in their political views than the general population. Most Americans were moderates in 2012, but most donors were staunch liberals or conservatives.

However, there is no evidence that much of this money is traded explicitly for political favors. Proof of quid pro quo transactions is vanishingly rare, and studies that try to document a link between PACs’ contributions and politicians’ votes typically come up empty. But there is evidence that politicians’ positions reflect the preferences of their donors to an uncanny extent. The ideal points of members of Congress—that is, the “unique set[s] of policies that they ‘prefer’ to all others”—have almost exactly the same bimodal distribution as the ideal points of individual contributors. They look nothing like the far more centrist distribution of the public at large.

Suppose a jurisdiction is troubled by this situation and decides to enact some kind of campaign finance reform. What reason might it give? One option is preventing the corruption of elected officials. But the Supreme Court has recently narrowed the definition of corruption to quid pro quo exchanges, and, as just noted, such exchanges do not occur with any regularity in contemporary America. Another possibility is avoiding the distortion of electoral outcomes due to the heavy spending of affluent individuals (and groups). But the Court has emphatically rejected any governmental interest in ameliorating “the corrosive and distorting effects of immense aggregations of wealth.” Yet another idea is equalizing the resources of candidates or the electoral influence of voters. But this equality interest has been deemed invalid in even more strident terms. “[T]he concept that government may restrict the speech of some elements of our society in order to enhance the relative voice of others is wholly foreign to the First Amendment.”

So is our reformist jurisdiction out of luck? Not quite. This Article’s thesis is that there is an additional interest, of the gravest importance, that both is threatened by money in politics and is furthered by (certain) campaign finance regulation. This interest is the promotion of alignment between voters’ policy preferences and their government’s policy outputs. Alignment operates at the levels of both the individual constituency and the jurisdiction as a whole. Within the constituency, the views of the district’s median voter and the district’s representative should align. One step up, the preferences of the jurisdiction’s median voter and the legislature’s median member should correspond. Moreover, at the jurisdictional level, the median voter’s views should be congruent not only with the median legislator’s positions, but also with actual policy outcomes. Preference alignment refers to the former sort of congruence; outcome alignment to the latter.

Alignment is a significant—indeed, compelling—interest because of its tight connection to core democratic values. At the district level, it follows closely from the delegate theory of representation. A delegate “must do what his principal would do, must act as if the principal himself were acting . . . must vote as a majority of his constituents would,” as Hanna Pitkin wrote in her landmark work. In other words, a delegate must align his own positions with those of his constituents. Likewise, at the jurisdictional level, alignment is essentially another term for majoritarianism. To say that policy should be congruent with the preferences of the median voter is to say that it should be congruent with the preferences of the voting majority. Of course, majoritarianism is not our only democratic principle. But, as Jeremy Waldron has argued, it is “required as a matter of fairness to all those who participate in the social choice.”

Unsurprisingly, given its democratic roots, the concept of alignment has surfaced repeatedly in the Court’s campaign finance decisions. In a 2000 case, the Court recognized “the broader threat from politicians too compliant with the wishes of large contributors”—and not compliant enough with the wishes of voters. In a 2003 case, the Court warned of “the danger that officeholders will decide issues not on the merits or the desires of their constituencies, but according to the wishes of those who have made large financial contributions.” And in its most recent campaign finance decision, McCutcheon v. FEC, a decision otherwise unremittingly hostile to regulation, the Court strikingly concluded its opinion with a paean to alignment. “Representatives are not to follow constituent orders, but can be expected to be cognizant of and responsive to those concerns. Such responsiveness is key to the very concept of self-governance through elected officials.”

Despite these doctrinal hints, some scholars claim that alignment is a forbidden interest in the campaign finance context. Kathleen Sullivan reasons that alignment reflects a particular theory of democracy, and that speech cannot be restricted based on “one vision of good government.” Similarly, Robert Post contends that in the First Amendment domain of public discourse, public opinion is forever changing shape. Thus “[t]here is . . . no ‘baseline’ from which [misalignment] can be assessed.” These critiques are misplaced. As to Sullivan, it might be controversial for the Court to embrace a specific model of democracy, but surely a popularly elected legislature may do so. In fact, legislatures adopt theories of self-governance all the time, both when they regulate money in politics and when they enact other electoral policies. As to Post, public opinion actually is not as fluid as he suggests, and alignment furthers what he deems the crucial aim of public discourse: making “persons believe that government is potentially responsive to their views.” It is unclear as well why electoral speech should be considered part of public discourse rather than the managerial domain of elections, in which speech may be regulated to serve the domain’s ends.

Even if alignment is not a forbidden interest, it may be a duplicative one. As Richard Hasen has argued, it may be nothing more than a slick repackaging of the anti-distortion or equality interests that the Court already has rejected. This charge also misses its mark. The distortion that cannot justify campaign finance regulation, in the Court’s view, is the skewing of electoral outcomes due to large expenditures. The Court has never suggested that the warping of policy outcomes due to large contributions (or their equivalent) is an illegitimate basis for regulation. The distortion of voters is different from that of representatives.

Alignment also is distinct from equality (in all its guises). One form of equality is the leveling of candidate resources. But candidates need not be equally funded to produce alignment, nor does alignment follow from evenly sized war chests. Another kind of equality is equal representation for all voters. But it is only the median voter, not every voter, who is entitled to congruence under the alignment approach. Alignment at the median can arise only if there is misalignment at all other points in the distribution. A final type of equality is equal voter influence over the political process. But equal influence is, at most, a means to achieving alignment. It is not the end itself. Alignment also is possible under conditions of unequal influence, and equal influence does not necessarily result in alignment.

Assume, then, that alignment is a compelling interest that neither is barred by First Amendment theory nor is identical to goals the Court already has rebuffed. We are not done yet. The next step is to determine whether money in politics can generate misalignment, and whether campaign finance reform can promote alignment. According to a burgeoning political science literature, the answer to both questions is yes, at least sometimes. The relevant empirical evidence fits into three categories.

First, according to numerous studies, wealthy Americans have more influence on politicians’ voting records and actual policy outcomes than do poor or middle-class Americans. This extra sway is evident whether House or Senate voting records, or state or federal policy outcomes, are considered. It also appears even after non-monetary forms of political participation (voting, volunteering, contacting officials, etc.) are controlled for. Second, as noted at the outset, politicians and donors have nearly identical ideal point distributions: highly bimodal curves in which they cluster at the ideological extremes and almost no one occupies the moderate center. Voters’ views, in contrast, exhibit a normal distribution whose single peak is in the middle of the political spectrum. It is fair to say that donors receive exquisitely attentive representation—and that voters receive virtually no representation at all.

Third, campaign finance regulation can be aligning or misaligning based on its implications for how candidates raise their money. Tight individual contribution limits reduce the funds available from polarized individual donors. They therefore encourage candidates to shift toward the ideological center, the home of the median voter. Conversely, stringent party or PAC contribution limits have the opposite effect. Both parties and PACs are relatively moderate in their giving patterns—parties because their chief goal is winning as many seats as possible, PACs because they want access to incumbents of all political stripes. Reducing the funds available from these more centrist sources thus incentivizes candidates to move toward the ideological fringes. As for public financing, its impact hinges on its treatment of individual donors. “Clean money” schemes that provide block grants to candidates after they receive enough individual contributions are misaligning because of the extremism of the donors who initially must be wooed. But multiple-match systems that offer high matching ratios for small contributions may be aligning because of the more representative pool of donors they attract.

What do these findings mean for the constitutionality of different policies? Individual contribution limits would sit on sturdy legal ground under the alignment approach. Whatever their link may be to the prevention of corruption, they demonstrably further the governmental interest in alignment. Unlike under current law, individual expenditure limits also might survive judicial scrutiny. Since politicians mirror the views of not only individuals who donate directly to them, but also individuals who spend on their behalf, no great significance would attach to the contribution/expenditure distinction. Public financing that relies on individual donors who resemble the general population (or that does not rely on individual donors at all) would be valid as well. On the other hand, contribution and expenditure limits for parties and PACs could not be sustained by reference to alignment. Since these entities are relatively moderate, their funds exert little misaligning pressure. Public financing that requires appeals to polarized individual donors also could be justified only on the basis of other interests.

The Article proceeds as follows. Part I introduces the alignment interest. It describes the different forms of alignment, explains the role the concept has played in earlier campaign finance cases, and responds to the claim that general First Amendment principles proscribe the interest. Part II argues for the distinctiveness of alignment. It compares alignment to the interests the Court already has considered—anti-corruption, anti-distortion, and equality—and shows that it is different from each of them. Part III conveys the current state of knowledge about alignment. It summarizes the many studies on the misaligning influence of money in politics, as well as the fewer studies on the aligning impact of (some) regulation. Lastly, Part IV assesses the implications of this literature for the validity of different policies. Individual contribution and expenditure limits, and certain kinds of public financing, should be upheld because they promote alignment. But contribution and expenditure limits for parties and PACs, and other kinds of public financing, cannot be justified on this basis.

One final question should be answered before proceeding further. Given the array of interests already asserted in the campaign finance context, is there really a need for another one? In fact, the need is dire, for two reasons. First, the only interest the Court currently considers to be legitimate—the narrowly construed anti-corruption interest—neither captures the full extent of the harm caused by money in politics, nor is sufficient to sustain most campaign finance regulation. In recent years, policies have toppled like dominos, rejected by the Court due to a lack of fit with this interest. If the reform project is to avoid collapsing entirely, we must, in Michael Kang’s words, “look[] beyond the prevention of corruption as defined by the Court.”

Second, the misalignment produced by electoral fundraising and spending is not holding steady. Instead, it is getting worse. Over the last generation, the share of campaign funds provided by the wealthiest 0.01% of Americans has surged from about 10% to more than 40%. During the same period, individual donors steadily have become more extreme in their political views, and candidates steadily have become more dependent on their contributions. As a result, the representational gap in favor of the affluent is now five times larger than it was in the 1970s and 1980s. Misalignment thus is not a problem that can safely be ignored. Rather, it is a problem that—increasingly—threatens to swallow American democracy.

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