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Colo. 1887. In the Act of 1861 providing that justices of the peace shall have jurisdiction “in” their respective counties to hear and determine all complaints, the word “in” should be construed to mean “throughout” such counties. Reynolds v. Larkin, 14, p. 114, 117, 10 Colo. 126.

A clash between Senate Minority Leader Charles Schumer (D-N.Y.) and Chief Justice John Roberts is igniting a partisan fight over the Supreme Court as the justices move forward with a politically-charged docket during an election year.

Schumer stepped onto a political landmine when he warned that two conservative justices would “pay the price” if they voted against abortion rights, earning a rare rebuke from Roberts who called the comments “dangerous.”

While the Supreme Court may have historically been able to act as political cover for the President and/or Congress, that is not true in a world post-Bush v. Gore. The Court is seen today as a politicized body, and especially now that we are in the era of the Roberts Court, with a Chief Justice hand picked by the President and approved by the Congress, it is highly unlikely that Court action will not, at least to some extent, be blamed on and/or credited to the President and Congress. The Court can still get away with a lot more than the elected branches since people don't understand the technicalities of legal doctrine like they understand the actions of the elected branches; this is, in part, because the media does such a poor job of covering legal news. Nevertheless, it is preposterous to argue that the Court is entirely insulated from politics, and equally preposterous to argue that Bush and the Congress would not receive at least a large portion of the blame for a Court ruling that, for whatever reason, received the attention of the public.

What went wrong? In a nutshell, U.S. patent protections have greatly weakened in the new millennium. The primary culprits are federal judges, particularly the U.S. Supreme Court.

For example, in several high-profile cases involving human health, the high court shrank the pool of inventions eligible for patenting.

As for the infringement notion, it encompasses cases where a person who is not the owner or licensee and assignee of the owner of the IPR copies, reproduces, or exercises any of the exclusive rights granted in respect to the IPR in question without the license or consent of the IPR owner. Furthermore, infringement proceedings comprise both claims where the plaintiff brings an IPR infringement action or where the claimant starts a declaratory action to establish that the IPR is not infringed. The term pure infringement claims will be adopted to denote infringement disputes where the validity of the IPR involved is not raised. Additionally, the term transnational misappropriation of IPRs will be used synonymously with transnational infringement of IPRs. The term protection will be treated as synonymous to judicial enforcement.

There is, of course, no bar to the Supreme Court adopting a Court of Appeal's reasoning as its own. Yet there is legitimate reason to question whether that was what the Supreme Court intended in 1983. First, as just shown, only the least authoritative of the three sources cited **385 actually supports the word “must,” while the two Supreme Court decisions employ “should.” Second, barely a month later, the Supreme Court—speaking though the same justice—filed another decision which used the “should” formulation from the 1955 Allen decision as quoted in Abbott.20 Third, the 1983 Allen decision involved retirees (and Flournoy the widow of a retiree), who historically receive a heightened degree of judicial protection. (See fn. 19, ante.) Fourth, and most significantly, the “must” formulation has never been reiterated by the Supreme Court, which has instead uniformly employed the “should” *699 language from the 1955 Allen decision. (Olson v. Cory, supra, 27 Cal.3d 532, 541, 178 Cal.Rptr. 568, 636 P.2d 532 [“Although an employee does not obtain any ‘absolute right to fixed or specific benefits ... there [are] strict limitation[s] on the conditions which may modify the pension system in effect during employment.’ [Citation.] Such modifications must be reasonable and any ‘ “changes in a pension plan which result in disadvantage to employees should be accompanied by comparable new advantages” ’ ”]; Legislature v. Eu (1991) 54 Cal.3d 492, 529–530, 286 Cal.Rptr. 283, 816 P.2d 1309 [quoting Olson]; City of Huntington Beach v. Board of Administration (1992) 4 Cal.4th 462, 472, 14 Cal.Rptr.2d 514, 841 P.2d 1034 [“changes in a pension plan which result in disadvantage to employees should be accompanied by comparable new advantages,” citing Allen v. City of Long Beach, supra, 45 Cal.2d 128, 131, 287 P.2d 765].)

It thus appears unlikely that the Supreme Court's use of “must” in the 1983 Allen decision was intended to herald a fundamental doctrinal shift. “Should,” not “must,” remains the court's preferred expression. And “should” does not convey imperative obligation, no more compulsion than “ought.” (Lashley v. Koerber (1945) 26 Cal.2d 83, 90, 156 P.2d 441; see People v. Webb (1986) 186 Cal.App.3d 401, 409, fn. 2, 230 Cal.Rptr. 755 [“the word ‘should’ is advisory only and not mandatory”].) In plain effect, “should” is “a recommendation, not ... a mandate.” (Cuevas v. Superior Court (1976) 58 Cal.App.3d 406, 409, 130 Cal.Rptr. 238.)

A. The government of the United States is not a single official entity. Nor is it when it is referred to as the federal government or the U.S. government or the U.S. federal government. It’s just a government, which, like those in all countries, has some official bodies that act and operate in the name of government: the Congress, the Senate, the Department of State, etc.

Our reading is confirmed by Congress's use of the definite article in “when the alien is released.” Because “[w]ords are to be given the meaning that proper grammar and usage would assign them,” A. Scalia & B. Garner, Reading Law: The Interpretation of Legal Texts 140 (2012), the “rules of grammar govern” statutory interpretation “unless they contradict legislative intent or purpose,” ibid. (citing Costello v. INS, 376 U.S. 120, 122–126, 84 S.Ct. 580, 11 L.Ed.2d 559 (1964)). Here grammar and usage establish that “the” is “a function word ... indicat[ing] that a following noun or noun equivalent is definite or has been previously specified by context.” Merriam-Webster's Collegiate Dictionary 1294 (11th ed. 2005). See also Work v. United States ex rel. McAlester-Edwards Co., 262 U.S. 200, 208, 43 S.Ct. 580, 67 L.Ed. 949 (1923) (Congress's “use of the definite article [in a reference to “the appraisement”] means an appraisement specifically provided for”). For “the alien”—in the clause “when the alien is released”—to have been previously specified, its scope must have been settled by the time the “when ... released” clause appears at the tail end of paragraph (1).

T he above inventory, whil e signifi cant, merely scratches the surfa ce of possibl e congressio nal responses to Supreme Co urt decisio ns. Congress, for example, may enact legislation that seeks to limit the reach of Supreme Court rulings. After the Supreme Cou rt upheld abo rti on rights in Roe v. Wade, 4 10 U.S. 11 3 ( 1973), Congress blocked the use of Medica id and orher federal funds to pay for abortions. Congress also o ffe red reli gious orga nizations federal funds to promote sexual abstinence as a method of birth control. T he Supreme COUIT ap proved both of these sta[Utes and , in so doing, val idated Congress's use of its appropriation powers to respond to Supreme Court rulings (Harris 1). ae, 448 U.S. 297 [1980]). T he Supreme Court also uph eld a 2003 federal statute prohibiting intact dilations and ex tractions, enacted in response to a 2000 Court ruling that a state ban on socalled partial birth abortions was unconstitutionally vague (Gonzales v. Cmhart, 550 U.S. _ (2007 1). Co ngress may also respond to a Supreme Court decision by reenacting a statute that the Court struck down. Fo r example, Congress strongly d isagreed with the Court's 1918 ruling thar the commerce powe r could not be used to regulate child labo r (Hammer v. Dagenhart, 247 U. S. 25 1 [19 18]). The very nex t year, Congress sought to make use of an alternative power (the taxing power) to enact child labor legislation . Again, the Supreme Court struck the statute down (Child Labor Tax Case, 259 U.S. 20 [1922]). In 1938, afte r the Court's composition had changed, Congress aga in based child labor legislation o n commerce clause legislation that a unanimo us Court upheld (United States v. Darby, 312 U.S. 100 [1941]). Congress has also taken aim at Court decisions through its powers to enfo rce the Fourteenth (equal prorection) and Fifteenth (voting rights) Amendments. Rejecting a 1980 Supreme Court decision requiring civil rights plaintiffs to prove intentional discrimination in vote d ilution cases (Mo bile v. Bolden, 446 U.S. 55 [1980]), Congress amended the Voting Rights Act to allow for impact-based proof.~ of vote dilution. Congress likewise disapproved of the 1990 Supreme Coun decision in Employment Division v. Smith, 494 U.S. 872 ( 1990) that limired rhe abiliry of plaintiffs to succeed in religious liberty lawsuits, and enacted legislatio n thar required governmental actors to have a "compelling governmental interest" whenever religious libeny was " burdened. " T his legislation , the Religious Freedom Restoration Act (RFRA), was subsequently invalidared by the Supreme Court in City of Boerne 1). Flores, 521 U.S. 507 (1997). Unwilling to accept defeat, Congress enacted a scaled down version of the RFRA, rhe Religious Land Use and lnsrirlltio nalized Persons Act (RLUIPA), a sratute thar the Supreme Court upheld (against a preliminalY challenge) in 2005 (Cutter v. Willeinson, 544 U.S. 709 [2005]). The RLU1PA statute highlights Congress's willingness to respond to a Court ruling by advancing its policy agenda in ways thar it thin ks the Court will approve. W hen enacting RLUIPA, lawmakers paid close arrention to the Supreme Court decision invalidating the RFRA with Boerne v. Flores, 52 1 U.S. 507 (997), seeking to advance their policy agenda while not calling into question the Court's handiwork. Likewise, afrer the Supreme Court invalidated a stature banning guns within 1,000 fee l' of a school (as an impermissibl e exercise of Congress's commerce power) in United States v. Lopez, 5 14 U.S. 548 (1995), Congress amended the G un-Free School Zones Acr to require the federal government to prove th at th e firea rm had either moved in inrersrate commerce or otherwise afFecred interstate commerce. Another way that Congress expresses its disagreement wirh the Supreme Court is to protecr rights rhat the Court says it need not protecr. Following a 1986 Supreme Court decision upholding an Air Force regulatio n that had prohibited an observant Jew fro m wearing a yarmulke in Golden v. Weinburger, 475 U.S. 503, Congress enacted legislation allowing service members to express their faith by wearing neat and conservarive religiOUS apparel. In 1999, Congress responded to concerns that independenr counsels were overzealous when investigating high-ranking 402 EN CYC L. O PED IA 0 1' THE SUPREME COU RT 0 1' T H E UN ITED ST ATES executive branch officials. Specifically, notwithstanding the Supreme Court's lopsided seven-to-one approval of this statute with the decision of Morrison v. Olson, 487 U.S. 654, in 1988, Congress concluded that the statute was fundamentally flawed and ought not to be reauthorized with the Ethics in Government Act. Congressional responses to Supreme Court decisions are not always hostile. Sometimes the Court invites Congress to enact legislation that would effectively negate a Court ruling. For example, when upholding state power to issue search warrants of newspapers, the Court invited a legislative response noting that its decision " does nor prevent or advise against legislative or executive efforts to establish nonconsititutional protections against possible abuses of the search warrant procedure" (Zurcher v. Stanford Daily, 436 U.S. 547 [1978]). Congress accepted the invitation, passing the Privacy Protection Act of 1980 to prohibit third-party searches of newspapers. On other occasions, Congress affirmatively assists in the implementation of a Court decision . In response to resistance in the South to school desegregation, Congress took bold steps to make Brown v. Board of Education, 347 U.S. 483 (1954), a reality. In 1964, it prohibited segregated school systems from receiving federal aid and authorized the Department of] ustice to file desegregation lawsuits. These federal efforrs proved critical to ending dual school systems. More desegregation took place the year after these legislative programs took effect than in the decade following Brown. As the above discussion makes clear, the Supreme Court does not speak the last word on the meaning of federal statutes or the Constitution. Congress can nullifY Supreme Court interpretations of federal statutes by enacting a new statute or amending an existing law. On constitutional issues, the dynamic is more complex. Congress can respond to Supreme Court constitutional rulings through a variety of techniques, r3.nging from the enactment of the very same statute to the confirmation of Supreme Court justices who are likely to distinguish or overturn disfavored rulings. Through these varied responses to Supreme Court rulings, Congress plays a critical role in shaping constitutional values.

As Benjamin Ewing and Douglas Kysar have written, government actors should “perform[] their official roles with a self-conscious appreciation for the ways in which they can signal to other institutional actors that a given problem demands attention and action.”175 They can use “prods and pleas” to combat “government underreach,” much as they can use checks and balances to regulate government overreach.176 This dynamic can become even more powerful when multiple levels of government act simultaneously.177The “exceptional” status of agriculture under federal environmental law is, as J.B. Ruhl has argued, highly questionable. Farming operations contribute significantly to the environmental harms that other industries alone are tasked with remediating. If public nuisance suits open the doors to liability for environmental harms flowing from agricultural activities, history may repeat itself and the agricultural industry may seek out preemptive federal regulatory legislation that both protects the industry and ensures a baseline level of control over the environmental harms that farms create.178 Courts’ ability to find and remedy liability can amount to an intolerable change to the policy status quo (from the perspective of producers of meat) which may induce coordinate branches to take up the problem, and when they do, national regulatory policy will be up for debate. 2. Encouraging and Accelerating Change in the Industry Another major indirect effect of even the possibility of exposure to liability is that it can spur innovation and self-regulation, whether in an attempt to appeal to niche markets or to limit risk.180Indeed, the deterrence theory of torts is premised on the hope that exposure to liability will encourage potential defendants to avoid harms ex anteby taking adequate precautions.181In many ways, the potential for liability for public nuisance for contributing to climate change through meat production would only reinforce larger market trends that are promising to fundamentally change the animal agriculture industry. Cell-cultured meat—i.e., meat grown from stem cells in a lab—appears to be on the verge of marketability.182 Such meat would have an estimated 7 to 45 percent reduction in energy use, a 78 to 96 percent reduction in greenhouse gas emissions, a 99 percent reduction in land use, and an 82 to 96 percent reduction in water use.183In fact, incumbent meat industry leaders have recently begun investing in the technology.184 Short of a shift to cellular agriculture, there are ample opportunities for cutting emissions from the supply chain of meat production. The United Nations’ Food and Agriculture Organization has outlined a suite of technologies and practices that increase the efficiency of animal agriculture.185 Implementing them across the industry could reduce emissions by 30 percent.186All these adaptations would tend to limit firms’ exposure to liability. Consequently, one way to speed the transition would be to heighten the incentives to avoid liability, thereby increasing the incentives to find inefficiencies and remedy them.

5. The Courts and the U.S. Patent Office have had 10 years to develop the Alice/Mayo caselaw and guidance for the innovation ecosystem. PERA introduces new terms and standards that would have to be newly interpreted by the Courts. How long do you think it would take the Courts and the Patent Office to bring certainty to the application of the new Section 101, should PERA become law? Can you explain why a potential new period of uncertainty would be more attractive than the current status quo?

As I noted above, for life sciences technologies such as diagnostics and isolated natural products, PERA would restore patent eligibility to what was eligible for patenting before the 2012-2014 Supreme Court decisions in Mayo, Myriad, and Alice. Thus, rather than signify a new paradigm, it would restore the status quo prior to Mayo. Additionally, the current draft of PERA itself provides specific examples that will inform its interpretation and application.

The Intellectual Property (IP) Clause, also known as the “Patent and Copyright Clause” refers to Article I, Section 8, Clause 8 of the United States Constitution, which grants Congress the enumerated power "To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." It is a foundational document establishing intellectual property rights in the United States, replacing the patchwork of state-law protections that existed in the Articles of Confederation period.

This clause gave Congress the power to enact legislation governing patents and copyrights. For patents, the clause gave Congress the power to grant inventors exclusive rights to their discoveries, allowing inventors to recoup their investment, and capitalize on their research.

IV. EVOLVING AND INCONSISTENT COURT DECISIONS CREATE UNTENABLE UNPREDICTABILTY AND UNCERTAINTY

The “Findings” section of the current draft of PERA notes “extensive confusion and a lack of consistency” in how courts are applying the judicial exceptions to § 101. I agree. This confusion and inconsistency makes it difficult to counsel clients on whether or how a given innovation can be patented in the U.S. It also makes it difficult to assess the value of patent portfolios for corporate valuations or transactions, since that depends on the validity of the constituent patents.

Judicial politics are contradictory like that. Any strategy for responding to the Gorsuch nomination and Trump’s judicial agenda more broadly must begin with an appreciation of these paradoxes, and a clear-eyed view of the Supreme Court’s conservative constitutional role. It is not a matter of opposing Gorsuch because of his originalism — still less of defending the judiciary from capture by conservative jurisprudence. It is a matter of resisting the judiciary itself as a reactionary institution. It is about focusing on the Court, not on Trump’s pick. A movement of mass opposition and disruption must target institutions rather than individuals, power rather than personalities. A filibuster by Senate Democrats would certainly be a welcome (and newfound) display of parliamentary intransigence. But it would be a mistake to stake all our hopes on the success of a campaign of protest aimed at holding the Democrats to account. There are few reasons to believe they will reprise the Republicans’ exercise of party discipline in denying a confirmation hearing to Merrick Garland, Barack Obama’s pick to succeed Scalia. Mass action against the reactionary Court must be part of a broader pattern of social unrest. It must look to Standing Rock, Baltimore, and Ferguson for guidance and instruction. It must not be corralled by the Democrats into a campaign of stage-managed protest (especially if the Democrats decline to filibuster Gorsuch for the sake of parliamentary norms no one else cares about). In short, it will have to look to a horizon more distant than the end of Gorsuch’s confirmation battle, keenly aware of the Court’s strange position in American politics. The Supreme Court is the site of multiple intersecting contradictions. As the capstone in the edifice of the federal judiciary, it is frequently celebrated as the final dispenser of justice. At the same time, it is an autonomous court controlling its own docket, with a self-conscious mission not of laying out philosophical accounts of justice but of resolving disparities in constitutional and statutory interpretation as they arise from lower courts. The Court is shrouded in the majesty of the law, cordoned off by the velvet ropes of judicial independence. Yet it often injects itself into political conflicts between other institutions and is a cherished prize in national politics. The highest bench in the land, it holds itself to be bound by precedent — until it doesn’t. The justices themselves are also ambiguous figures. They never seem to tire of repeating the sententious bromide that they are neutral arbiters — yet their interpretive philosophies frequently offer up divergent outcomes in similar cases. Most justices deny that their jurisprudence is colored by ideological commitments or partisan affiliations — but political scientists have no difficulty assigning them ideology scores on the basis of their voting patterns. No one who follows national politics has trouble discerning which justices share their views and which don’t. At times, Supreme Court justices appear to be ciphers — empty vessels into which the presidents who nominate them have decanted their preferred political views. At other moments, they are mysterious and oracular. Their involuted and gnomic utterances, it seems, can only be understood by arcane adepts skilled in the divination of such things. Exposing the Court’s contradictions underscores the limitations of the liberal vision of seeking political change through judicial review. Neil Gorsuch does indeed represent a threat to many things that both liberals and leftists cherish. His hostility to reproductive rights is plain. He is not, to put it mildly, an exponent of queer liberation. He is certain to be an enemy of the jurisprudential foundations of what’s left of the welfare state. But Gorsuch is not a threat to the purported dignity or democratic legitimacy of the Court. Historically, the Supreme Court has been one of the principal sites for elaborating and implementing the traditions of white supremacy, capitalist labor relations, and social hierarchy that have characterized American political development. In this regard, Gorsuch is the perfect person for the job. The majesty of the law is one of the most stubbornly persistent myths in American public life. Most participants in US politics profess a faith in and respect for judicial independence. Liberals eagerly condemn conservatives for failing to respect current interpretations of constitutional principles, while conservatives happily respond by condemning liberals for distorting the historically received meaning of legal texts. This dialectical embrace mystifies the fact that both major parties seek to entrench their power and their policies by installing friendly judges in the federal and state judiciaries, and by seeking to maintain majorities of co-ideologues on the Supreme Court. The belief that the Supreme Court is a responsible guarantor of constitutional rights and liberties is particularly rife among liberals. For decades, they have both accepted and reiterated the narrative that the Constitution is a moral document that, when appropriately interpreted by jurists, restrains the state’s power over the individual. This narrative is grounded in the experience of the Warren Court, which in the 1950s and ’60s secured limited progressive victories in certain domains of the law — most notably antidiscrimination, criminal procedure, and civil liberties. The Warren Court’s judicial activism became a stencil for later liberal jurists seeking to use judicial review as a vehicle for social change. But the epoch in which liberal jurisprudence predominated at the Supreme Court turned out to be exceptional. The Warren Court could only pursue its progressive legal project as long as powerful social forces like the Civil Rights Movement placed severe limits on the state’s capacity to preserve the cultural logic of racial domination. When the reactionary backlash set in and the conservative legal movement advanced, the ideals of democratic citizenship and the equal dignity of persons — which often received their fullest expression not in the legislature but in the courts — took a hammering. The ideological terrain of struggle had shifted. Appeals to elites, no longer hemmed in by mass protest, went unheard. For all the pressure the Civil Rights Movement was able to bring on the federal government, many of its victories could only be secured through the intercession of the Court when other institutions failed to act. While the Civil Rights Act and the Voting Rights Act were important, if partial, legislative victories, many others were won only through judicial review. Similarly, reproductive rights, expansive individual civil liberties, and modern understandings of the federal government’s powers and responsibilities are all grounded in liberal jurisprudence. These and other progressive gains are now particularly vulnerable. A predominantly conservative Court could easily reverse them. But such a risk cannot be averted through a campaign to defend judicial gains that, by their very nature, have always been fragile. The Supreme Court’s brief is inherently conservative. It exercises judicial review in order to patrol the state’s institutional boundaries — boundaries spelled out in the Constitution, an elite-drafted document that limits democratic power and was intended to maintain racial domination. Democracy requires the rejection of the legalization of politics, in favor of constant antagonism with powerful institutions like the Supreme Court. Robust protections for civil rights, civil liberties, and abortion access will never be safe in the hands of elite judicial guardians.

By design, the federal judiciary is the weakest of the three branches of government. While the executive wields the sword, and Congress holds the purse strings, the courts have no temporal power. To give effect to their decisions and orders, courts depend on popular legitimacy and the cooperation of the other branches. While that cooperation is normally forthcoming when needed to enforce judicial decisions against private citizens, when the subject of a court’s order is the government itself, there’s always a risk that it will be ignored or avoided. Such is the case in Hornbeck Offshore Services v. Jewell, which began when the Interior Department (DOI) chose to put itself above the courts and above the law. Following the Deepwater Horizon disaster in April 2010, DOI issued a total ban on drilling activity in the Gulf of Mexico. A district court judge held that this drilling moratorium was irrational and not supported by scientific research or other credible evidence. The judge issued an injunction prohibiting DOI from enforcing its ban. Instead of obeying the injunction — or appealing it — DOI ignored it. The Secretary of the Interior told Congress that as far as he was concerned, the drilling ban was still in effect. DOI then issued a second ban on drilling that was identical to the first. The district judge held DOI in contempt of court, noting that “each step the government took following the Court’s imposition of a preliminary injunction showcase[d] its defiance” of the court’s authority. On appeal, a panel of the New Orleans‐​based U.S. Court of Appeals for the Fifth Circuit sided 2–1 with the DOI’s position that the contempt finding was improper because the issuance of a second (identical) drilling ban was not technically disallowed by the text of the injunction — which explicitly prohibited only enforcement of the initial ban. Cato has filed an urging the Supreme Court to hear the case because the appellate court’s ruling undermines the rule of law and the judiciary’s independent authority. Under the Fifth Circuit’s rule, government agencies will be able to legally avoid court orders with bureaucratic trickery. If only the explicit text of an injunction — and not any of its spirit or clear purpose — binds the federal government, Congress or the executive could simply rename whatever statute or regulation has been declared unconstitutional and continue enforcing the substantively unconstitutional rule. Such an overly technical rule would force district court judges into the role of mind‐​readers, trying to predict how the government could weasel its way out of a ruling. Without an effective contempt power to punish the violation of its orders, even the Supreme Court would be unable to enforce its important rulings, such as ending the District of Columbia’s , and striking down . In both of those recent cases, the sort of semantic game‐​playing endorsed by the Fifth Circuit here would have resulted in hollow victories for liberty and an evisceration of the idea that in our constitutional republic, the government is bound by the same (if not stricter) rules as the rest of us.

The US Supreme Court’s decision reining in the global reach of US trademark law left practitioners questioning brand owners’ ability to combat foreign parties indirectly selling knock-offs into the country. While nixing a $90 million award based mostly on foreign infringement, the high court ruled that whether plaintiffs can obtain damages turns on whether the “use in commerce” that could confuse consumers was domestic—defined by the infringer’s conduct, not the consumer confusion itself. Four justices concurred with Justice Samuel Alito’s majority opinion, agreeing that Hetronic International Inc.’s award was unwarranted, but disagreeing on why. They said trademark law is primarily focused on preventing US consumer confusion, rather than the actions that cause it. Alito left few clues on the boundaries of “use in commerce,” raising the question of what conduct does and doesn’t qualify. Attorneys said the lack of clarity leaves complicated questions for enforcement against typical infringing supply chains in an increasingly global and digital marketplace. Additionally, neither Alito’s opinion nor Justice Sonia Sotomayor’s dissent-like concurrence addressed secondary or vicarious liability—in which the defendant doesn’t infringe but knowingly encourages or benefits from it—adding to the ambiguity. “I think he thought he was settling a lot, but he didn’t know all the fact patterns out there,” intellectual property law professor Rochelle C. Dreyfuss of New York University said. “Whatever was a hard question before is still a hard question.” Those hard questions leave brand owners and practitioners unsure of what they have to do to prevent infringement that affects the US. If a foreign infringer is causing confusion in the US, Alito’s opinion seems to suggest companies have to be very active protecting their rights even in countries where they don’t operate, attorneys said. “This has the potential to have a profound impact on trademark enforcement and how brands develop trademark portfolios internationally,” IP attorney Andrea Stein Fuelleman of Neal Gerber Eisenberg LLP said. “In the digital age, it’s hard to talk about where the sale occurred, where the conduct occurred. The conduct isn’t always squarely in one country or another. It really does blur the lines.”

“Congressional Responses to Judicial Decisions,” William & Mary Law School Scholarship Repository, https://scholarship.law.wm.edu/cgi/viewcontent.cgi?article=2671&context=facpubs

Congress may also respond to a Supreme Court decision by reenacting a statute that the Court struck down. For example, Congress strongly disagreed with the Court's 1918 ruling that the commerce power could not be used to regulate child labor (Hammer v. Dagenhart, 247 U. S. 25 1 [19 18]). The very next year, Congress sought to make use of an alternative power (the taxing power) to enact child labor legislation . Again, the Supreme Court struck the statute down (Child Labor Tax Case, 259 U.S. 20 [1922]). In 1938, after the Court's composition had changed, Congress again based child labor legislation on commerce clause legislation that a unanimous Court upheld (United States v. Darby, 312 U.S. 100 [1941]).

The underlying premise of this review is, presumably, uncontroversial. When citing a higher court for a proposition and applying it in a new context, a lower court must determine whether the higher court's original rational applies. When the higher court warns lower courts to use caution when applying the proposition in a new context, the lower court must heed that caution. Lower courts risk adopting arbitrary and/or random rules by failing to consider the rationale and use caution. The bare citation of a higher court's proposition out of context provides no support for a lower court's conclusion or, for that matter, a lawyer's assertion. Applying a higher court's ruling to a new factual context requires consideration of whether that precedent fits the new circumstances. In Sony, the Supreme Court provided a rationale for apply a patent rule to copyright law and accompanied it with a caution. The rationale was that both patent and copyright law are based on the premise that the primary object of exclusive patent and copyrights is providing the public with the benefits of innovation and original expressive works. To achieve these benefits, intellectual property law awards exclusive rights to inventors and authors. When considering the adoption of a new rule or interpretation, courts should, therefore, consider the balance between incentives to create and society's interest in the free flow of ideas, information, and commerce. Caution must be used, however, to ensure that patent and copyright law are similar enough in their structure and design that treating them the same way is appropriate. The cases cited by the Supreme Court illustrate the balancing process and ways in which the differences between copyright and patent law require different treatment or the similarities permit the transfer of rules from one regime to the other. Thirty-seven cases have cited the historic kinship between copyright and patent law as support for their interpretation of the law. Table I reveals that only two cases, Harris v. Emus Records Corp.17 and In re Independent Service Antitrust Litigation" both apply the Supreme Court's rationale and consider the Supreme Court's caution. Two groups of opinions should also be excluded from the list of those opinions that have abused the Supreme Court's precedent by failing to consider the rationale and use caution when applying the Sony rule. In the first, the lower court is consider the same issue of vicarious liability and substantial non-infringing use the Court was addressing in Sony. If the context does not change in any relevant way, citing the precedent without repeating the analysis is not problematic. Of the thirtyseven cases, three opinions were related to vicarious liability or substantial non-infringing use. These are the vicarious liability cases discussed in Part III, infra. In the second group, the lower court cites the "historic kinship" when facing a legal issue in a context already addressed by an authoritative (higher) court cited by the lower court. Being as generous as possible, perhaps nine cases involving the issue of intellectual property licensing, fall into this category. These are the licensing cases discussed in Part III, infra. In these opinion, a citation to the controlling authority would be sufficient support for applying the rule that higher court borrowed from another regime. There would be no independent need for the lower court to cite Sony, as each of these opinions does. The vast majority of the cases citing the "historic kinship" fail to do so properly. Removing the two cases with adequate analysis, the three cases properly relying on Sony in the vicarious liability context, and the eight licensing cases relying, however adequately, on precedent, leaves almost two-thirds of the cases (twenty-four of thirty-seven) abusing the Supreme Court precedent. This analytical failure may lead to new rules in patent and copyright law that are not determined by reason or principle.

In 1982, the United States Court of Appeals for the Federal Circuit ("Federal Circuit") was created by merging the Court of Customs and Patent Appeals and the appellate jurisdiction of the Court of Claims."1 3 Because Congress noticed a trend in inconsistent patent jurisprudence across the country, Congress created the Federal Circuit with intentions "to reduce the widespread lack of uniformity and uncertainty of legal doctrine that exists in the administration of patent law."" 4 Although this paper discusses copyright infringement issues rather than patent law issues, both patent and copyright law are notoriously difficult for layperson jurors to understand and for judges to adjudicate. " Both copyright and patent law are exclusive to federal jurisdiction already, and both regimes extensively require expert testimony. "The Federal Circuit is a panel of experts who specialize in, among other issues, patent law,"11I6 and the overall result of staffing a patent-focused court with patent-trained judges has been generally helpful." By expanding the court and conferring appellate jurisdiction over copyright issues, the court retains its specialized focus in intellectual property and can help clarify copyright law on a federal scale more efficiently than every circuit being conflicted with each other. Since the Federal Circuit has already examined complex copyright issues previously, conferring appellate jurisdiction over copyright issues is logical. Recently, in Google v. Oracle, the Federal Circuit examined a copyright infringement case dealing with computer software.' Even though the Federal Circuit has appellate jurisdiction over patent cases, the jurisdiction statute only requires a patent case to be alleged in the complaint." 9 By assigning the Federal Circuit appellate jurisdiction over copyright cases in addition to patent cases, copyright law will benefit from greater uniformity and the parties, likewise, will benefit from having specially-trained appellate judges adjudicating their cases. However, the Federal Circuit's patent law decisions have introduced controversy.120 Federal Circuit patent decisions are often reversed by the Supreme Court, despite the Federal Circuit's technical expertise.121 Conferring exclusive appellate jurisdiction for copyright cases might similarly create additional confusion since Federal Circuit judges are not experts on copyright law and have misapplied copyright standards previously.12 2 Despite some potential negative jurisprudential implications, "[t]he increasing importance of the Federal Circuit to the Supreme Court and the wide-reaching influence the court holds due to its unlimited geographical jurisdiction position [establishes] the court as the voice of American intellectual property."1 23 As a result, conferring exclusive appellate jurisdiction for copyright cases to the Federal Circuit helps achieve uniformity in copyright jurisprudence.1 24

V. CONCLUSION

Do you agree with Judges Lourie and Newman? Does § 101 require a Congressional fix or should we let the courts continue to work things out?

I agree that the law of patent eligibility needs clarification by Congress. The current uncertainty in patent eligibility is the result of exceptions solely created by the Supreme Court. The uncertainty has existed for decades, with the scope of what is and is not patent eligible ebbing and flowing and tests for eligibility appearing and disappearing. The courts have on many occasions sought to devise a test for patent eligibility of computer implemented inventions. But even after all that time and effort, as the Federal Circuit noted, there is no “single, universal definition of ‘abstract idea.’” See Amdocs Ltd. v. Openet Telecom, 120 U.S.P.Q.2D 1527, 1531 (Fed. Cir. 2016).