property law

“And it's under those

circumstances that I say

okay, let's go with what

we've had for 30 years, and if

Congress feels they should

change it, change it.”

Justice Stephen Breyer

Justice Stephen G. Breyer joined in that question and Anders failed to satisfy either's concerns. Justice

Antonin Scalia stepped in to provide an answer.

“The policy reason is someone who does not even know about the existence of the patent, who

happens to be one of the people who performs one or more of the steps, is suddenly automatically

liable,” Scalia said. “That's the policy reason. It's a strict liability tort.”

Intertwined Provisions and Policy

However, that brought the question back to Section 271(a) and strict liability for direct infringement,

causing Anders to put it back on the court to determine “what tort principles to incorporate in 271(a).”

She acknowledged the Muniauction prinicipal/agent relationship as one that could lead to a finding of

joint direct infringement, but she said there was “a significant concern” should the court choose “to

broaden that out.”

Kagan said the Federal Circuit had thus been “very clever by putting it into a 271(b) box and avoiding

the strict liability consequences of what they were doing, but also avoiding the possibility of an end run

of the patent law.”

“And also avoiding the text of the statute,” Scalia said to laughter.

“There is that problem,” Kagan said, joining the audience.

Kagan, in an earlier discussion with Panner, had noted that the

direct infringement question is still within the Federal Circuit's

purview if the high court reverses on inducement.

“If they did reach it a second time around and they decided well,

now that this inducement theory is not available to us, we think that

there is a real problem here, that there is a kind of end run around

the patent law and so we're going to change what we think on the

271(a) question,” Kagan said of the appeals court. “If they did that, it

would be right to say it would render our opinion on the 271(b)

question a nullity?”

Chief Justice John G. Roberts Jr. came to Panner's rescue in this colloquy:

Roberts: I just want to make clear, you're saying that under existing law, the question presented makes

a huge difference; if existing law is changed, it may not make a difference?

Panner: That's exactly right.

Roberts: I suppose that's true in every case we hear.

Panner: That's well said, Your Honor. Thank you.

Let Congress Decide, But What?

Kagan persisted, but Panner, nearing the end of his argument time, closed by reiterating his primary

point.

“The Federal Circuit did make a policy judgment, tried to amend the statute to reach a result that they

thought was fair in the particular case,” he said. “That's a job for Congress.”

In a discussion with Waxman, Breyer gave hints that he agreed, but in a way that Panner would

probably not like.

Breyer insisted that the issue was complex because “of so many different kinds of situations with so

many different steps in method patents where so many rights and wrongs of it are differently at play.”

And then he said, “And it's under those circumstances that I say okay, let's go with what we've had for

30 years, and if Congress feels they should change it, change it.”

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