For the second time in less than a year, there will be a vacancy on the U.S. Supreme Court. Justice John Paul Stevens has announced that he will retire from the Court at the end of its current term. Justice Stevens, who turns 90 on April 20, was appointed to the Court by President Gerald Ford in 1975.
Justice Stevens is the second oldest man ever to serve as a Supreme Court justice, trailing only Justice Oliver Wendell Holmes, who was less than two months shy of his 91st birthday when he retired from the court in 1932. Depending on the effective date of his retirement, he will be the second or third longest serving justice with a tenure of nearly 34 and a half years. Justice William O. Douglas is the longest serving Supreme Court justice at 36 and a half years.
Impact on Intellectual Property Law
Justice Stevens wrote a number of important patent and intellectual property law opinions as a member of the Supreme Court. Some of the highlights are listed below.
Justice Stevens authored the Court’s 6-3 1978 opinion in Parker v. Flook where the Court reversed a Court of Customs and Patent Appeals decision in holding that a claim to a method for updating alarm limits in a catalytic converter was not patent eligible subject matter because the only novel feature of the invention was the use of a particular mathematical algorithm. The algorithm was a principle or law of nature that could not be patented. The case has been rightly criticized for conflating the § 101 analysis with a prior art analysis under §§ 102 and 103.
Justice Stevens wrote a dissenting opinion in the Court’s 1981 6-3 opinion in Diamond v. Diehr. In Diehr, the court held that the execution of a physical process, a method for curing rubber, controlled by running a computer program was patentable. Justice Stevens’ dissent again seems to argue that because he did not believe the process to be novel, it does not contain patent eligible subject matter, another confusion of the issues.
He also joined Justice Breyer’s dissent in the LabCorp. case.
In other patent cases, Justice Stevens also wrote the Court’s opinion on the on-sale bar in Pfaff v. Wells in 1998. In Pfaff, the Court clarified the standard that the invention must be “ready for patenting” before it can be barred as having been on-sale for more than a year. He also wrote the opinion on patent misuse and anti-trust in Illinois Tool Works in 2006. Justice Stevens dissented in Microsoft v. AT&T where the Court ruled that Microsoft was not liable for infringement under § 271(f) for shipping master disks overseas.
In the copyright arena, Justice Stevens wrote the opinion permitting time-shifting for “VTR’s” in the 1984 Sony decision. He dissented from the Court’s opinion in Eldred v. Ashcroft where the Court permitted Congress’ extension of the copyright term.
Justice Stevens also wrote the opinion in the trademark dilution case Moseley v. Victoria’s Secret in 2003.
Professor Joe Miller of Lewis & Clark Law School has speculated that Justice Stevens may be writing the long-awaited decision in Bilski. That does not bode well for patentees, considering his positions in Flook, Diehr, and LabCorp.
President Obama will get his second opportunity to nominate a member of the Supreme Court. Although Justice Sotomayor has some experience with intellectual property, it is unlikely that IP will be a high priority in finding a successor. Still, having some experience with intellectual property would make us less nervous when the Court reviews Federal Circuit decisions as it is now doing with some regularity.