Distinguishment of court precedent is flexible and solvent in patents --- empirics.

Hence, the Court has made explicit that stare decisis is a flexible doctrine; it is not “inexorable command.”203

But even when the Court is not overruling its precedent and purports to be following precedent faithfully, stare decisis is a very flexible tool to shape the law. This is because of the tool of “precedent vitality.” Supreme Court opinions vary in their vitality. Hanford and Spriggs write, “[s]ome precedents are more legally authoritative than others and thus have an enhanced ability to justify and legitimize the justices’ policy choices.”204 But it is not the age of the precedent that determines its vitality or even particularly the factors mentioned by the Court in Planned Parenthood for overruling a case.205 Rather, Hanford and Spriggs argue that “the vitality of precedent . . . derive[s] from the Supreme Court’s interpretation of it in other cases.”206 Hence, while appearing to apply its precedent faithfully, the Supreme Court can enhance or decrease the vitality of its precedent in various ways. The Court may apply the rationale of one of its opinions to new facts; it may expand the rationale of one of its opinions; or it may distinguish its precedent or limit it to its particular facts or even ignore a particular case altogether. By these methods, “the decision to interpret precedent is driven by the desire to influence the scope and meaning of existing precedent and the goal of legitimizing new legal policy.”207

This is how the Supreme Court has achieved its patent reform project to favor accused patent infringers. The most common rationale the Court has employed to justify reversing the Federal Circuit is that the circuit court has improperly cabined or disregarded its precedent.208 But which precedent? The Court carefully selects which precedent to augment and revitalize and which precedent to sap and diminish.

A striking example of precedent vitality in action is in the recent opinion in Impression Products v. Lexmark. 209 The Court had two bodies of precedent that appeared to be in conflict. In cases such as the 1917 case, Motion Picture Patents, the Court had held that contractual restrictions imposed by patent holders were ineffectual to evade patent exhaustion.210 In Motion Picture Patents, the patent holder had imposed a contract requiring purchasers of its patented film projectors to use the projectors only with its separately sold film reels.211 When the patent holder brought a patent infringement claim to enforce the licensing restriction, the Court held that the claim must be dismissed because the patent rights were exhausted by the authorized first sale.212 But in a 1938 case called General Talking Pictures Corp. v. Western Electric Co., the Court reached a contrary result on almost indistinguishable facts.213 In that case, the plaintiff authorized a third party to make and sell its patented vacuum tube amplifiers, but imposed a contractual restriction that purchasers of the equipment could only use it with amateur radio sets and not in motion picture houses.214 In this case, the Court held that the patent holder could sue purchasers of the equipment who used it in movie theatres for patent infringement and that, because the contract imposed a restriction on the use of the equipment, there was no authorized first sale to purchasers who wanted to use it in a movie house.215

The Federal Circuit had created a rule that contractual restrictions such as the ones at issue in these cases were effective to evade exhaustion, so long as they did not violate the antitrust laws or constitute patent misuse.216 This was based, in part, on a statement by the Supreme Court in Motion Picture Patents that it was “confirmed in the conclusion which we are announcing” regarding patent exhaustion by the fact that Congress “has enacted a law making it unlawful for any person engaged in interstate commerce ‘to lease or make a sale or contract for sale of goods . . . on the condition, agreement or understanding that the lessee or purchaser thereof shall not use . . . the goods . . . of a competitor . . . .’”217