Note

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.

Clean Air Post-Healthcare: The Federalism Limits of the Spending Power and the Future of Environmental Regulation

Modern environmental regulation was born in the 1970s, at a time when federalism limits to congressional power were essentially an afterthought. Since then, U.S. constitutional law has undergone a federalism revival as Justices of the Rehnquist and Roberts Courts have sought to articulate principled limits to the federal power that ballooned during and after the New Deal. Because of federal environmental law’s expansive scope, many commentators have predicted that this growing revolution could soon change the face of federal environmental regulation.

Emblematic of federalism’s shifting landscape is the Supreme Court’s decision in National Federation of Independent Business v. Sebelius, the politically charged controversy challenging the constitutionality of President Barack Obama’s healthcare reform package, the Patient Protection and Affordable Care Act (“PPACA”). While the majority of headlines about the case reported the Court’s dramatic split over whether the controversial “individual mandate” provision was permissible under the Commerce Clause, the less discussed yet perhaps more significant holding concerned the constitutionality of the “Medicaid expansion” and the scope of the Spending Clause. This new gloss on the Spending Clause could “seriously threaten the constitutionality of a broad swath of federal spending legislation,” including environmental laws.

At the top of the endangered statutes list is the Clean Air Act (“CAA”). The CAA, like many environmental statutes, employs a “cooperative federalism” structure that requires states to take responsibility for administering a federal regulatory program. As “Congress’s most aggressive effort to induce state regulation through the use of conditional spending,” the CAA is considered the most vulnerable environmental statute—and perhaps the most vulnerable statute period—to a federalism challenge post-Sebelius. Just as the PPACA conditioned the receipt of existing Medicaid funds on adopting an expanded Medicaid program, the CAA conditions the receipt of some federal highway funds on the implementation of an air pollution control program tightly managed by the Federal Environmental Protection Agency (“EPA”). This “leveraging” of funds from one program to secure compliance for another was a major factor in the Sebelius majority’s conclusion that the PPACA’s Medicaid expansion was unconstitutional. And although federal highway funds make up a much smaller portion of state budgets than does Medicaid assistance, which might indicate less potential for impermissible “coercion,” federal funds do make up a large proportion of states’ transportation budgets.

EPA’s recent greenhouse gas (“GHG”) rulemakings are a prime example of how the CAA may be vulnerable to a Spending Clause challenge. Chief Justice Roberts’s majority opinion in Sebelius pictured conditional spending as a contract with states, suggesting that Congress exceeds the scope of its Spending Clause power when the terms of that contract—of how states participate in the federal program—change drastically in contravention of states’ reasonable expectations. Although the requirements of the CAA are always in flux as EPA crafts national air pollution control policy to conform to new science and changing environmental priorities, the GHG rulemakings represent the largest nonstatutory change in the Act’s scope in its forty-year history.

This Note will explore the implications of the new Spending Clause jurisprudence for the CAA and how the doctrinal trajectory signaled by the Sebelius decision can undermine both the goals of federal environmental policy and those of our system of federalism itself. Many scholars have already offered assessments of the constitutionality of the CAA after Sebelius, and most have concluded that the Act will stand. While this Note will concur with this conclusion, I hope to offer a more detailed look into the operation and effect of the highway funding sanction in Section 179 of the Act and apply Sebelius in the context of EPA’s controversial GHG rulemaking. Most importantly, this Note will point out the danger of injecting a stronger brand of Tenth Amendment federalism into the Court’s Spending Clause jurisprudence and will discuss how Sebelius might signal a dangerous trajectory for environmental policy and cooperative federalism regulatory schemes in general.

The argument will proceed in four parts. Part I will summarize the structure of the CAA and the importance of cooperative federalism within that structure. Part II will then dissect the Court’s Spending Clause precedents in South Dakota v. Dole and Sebelius, and will dig deeper into the concept of “coercion” from those cases. Part III will apply the new Sebelius test to the CAA and EPA’s GHG rulemaking. Finally, Part IV will discuss why this episode in the Court’s federalism revival may hurt environmental policymaking—and may actually marginalize rather than elevate the power of states in our federal system.

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