Property’s Ceiling: State Courts and the Expansion of Takings Clause Property

The Federal Constitution and nearly all state constitutions include takings clauses providing that private property shall not be taken for public use without just compensation. To the extent that scholars have considered the role of state courts with regard to these takings clauses, they have focused around constitutional limits on judicial restrictions of what constitutes property. Little attention has been paid, however, to how state courts can expand the definition of private property—and the problems and possibilities associated with that capability.

Through an original case study derived from unexamined historical sources, this Article explores the complex questions raised by constitutional property creation. It tells the story of a series of nineteenth- and twentieth-century cases on street grading, in which property owners sought relief when municipal officials vertically shifted streets—sometimes in excess of a hundred feet—to improve transportation. Though these regrades often loomed over people’s homes or left them stranded on inaccessible cliffs, government officials contended that because the regrades did not physically take any property, abutting owners could not bring takings claims. In response, state courts created a novel “right of access” to land and treated this right as constitutional property confiscated by the regrades, an innovation which entitled affected owners to compensation for the serious damages their land suffered.

As this history demonstrates, state courts have played an important role in takings law by recognizing new forms of constitutional property. By neglecting constitutional property innovation, scholars who argue that legislatures should be responsible for changes in property rules have missed a significant piece of the puzzle. Consequently, the history of court-made constitutional property rights carries implications for institutional choice analyses in property law. While there may be good reasons to prefer that legislatures allocate and define novel property interests as a general matter, courts have been overlooked as sites where constitutional property rights are created and debated in response to perceived political failures.

A Tribute to David Martin

At the end of the 2015–2016 academic year, David Martin retired thirty-six years after first joining our faculty. He is a true citizen-scholar who made a mark in the worlds of policy and public service, as well as in scholarly research and teaching. Indeed, it would be fair to say that he has had the career that aspiring law professors dream of.

David has been a marvelous teacher, scholar, and colleague. His contributions to immigration and refugee law will long survive his retirement from full-time teaching. Even in retirement, he remains a member of the Homeland Security Advisory Council. I doubt very much that we have heard the last of him in what are now front-page policy debates over immigration and suspect he will remain a participant in the Law School’s intellectual life. Nevertheless, we wish him and Cyndy all the best as he lays down a portion of his labors.

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.