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<img class="alignright wp-image-5207" src="https://ipintelligencereport.bakerhostetlerblogs.com/wp-content/uploads/sites/11/2020/03/US-flag-capitol-building-iStock-960532646_1200x630pixel.jpg" alt="" width="438" height="230" />As the country collectively mourns the passing of Justice Ruth Bader Ginsburg, I am reminded of the inspiring book “<a href="https://www.amazon.com/Dissent-Ruth-Bader-Ginsburg-Makes/dp/1481465597">I Dissent: Ruth Bader Ginsburg Makes Her Mark</a>” (which I have read to my children many times). While the justice was famous for her dissents on other issues, what about in patent law?

From <a href="http://cdn.loc.gov/service/ll/usrep/usrep517/usrep517370/usrep517370.pdf">Markman v. Westview Instruments</a> (1996) (claim construction is a matter of law) to <a href="https://www.supremecourt.gov/opinions/05pdf/05-130.pdf">eBay v. MercExchange</a> (2006) (an injunction is not automatic after a finding of infringement) to <a href="https://www.supremecourt.gov/opinions/06pdf/04-1350.pdf">KSR v. Teleflex</a> (2007) (changing the test for obviousness) to <a href="https://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf">Alice v. CLS Bank</a> (2014) (establishing two-part test for patent eligibility), Justice Ginsburg has been involved in 53 Supreme Court decisions relating to issues of patent law during her tenure, and most of the time she was with the majority. Her dissents were few and far between. She authored only two dissents, and joined the dissents in four other cases.



Justice Ginsburg’s first such authored dissent was not until 2017, when she dissented in part in <a href="https://www.supremecourt.gov/opinions/16pdf/15-1189_ebfj.pdf">Impression Products v. Lexmark</a>. She agreed with the majority regarding domestic patent exhaustion: “[A] patentee who sells a product with an express restriction on reuse or resale may not enforce that restriction through an infringement lawsuit, because the U.S. sale exhausts the U.S. patent rights in the product sold.” However, she dissented from the Court’s holding regarding international patent exhaustion: “A foreign sale, I would hold, does not exhaust a U.S. inventor’s U.S. patent rights. . . . Because a sale abroad operates independently of the U.S. patent system, it makes little sense to say that such a sale exhausts an inventor’s U.S. patent rights.”

With respect to her second such authored dissent, Justice Ginsburg joined Justice Breyer’s dissent in <a href="https://www.supremecourt.gov/opinions/17pdf/16-969_f2qg.pdf">SAS Institute v. Iancu</a> (2018) but added her own separate, one-paragraph dissent calling the majority’s interpretation of the statute a “wooden reading,” where it found that when the Patent Trial and Appeal Board (PTAB) institutes an inter partes review, it must decide the patentability of all of the claims challenged by a petitioner. She asked, “Why should the statute be read to preclude the Board’s more rational way to weed out insubstantial challenges? For the reasons stated by Justice Breyer, the Court’s opinion offers no persuasive answer to that question, and no cause to believe Congress wanted the Board to spend its time so uselessly.”

With respect to her four joined dissents, Justice Ginsburg (along with Justice Kennedy) joined Chief Justice Rehnquist’s dissent in <a href="https://tile.loc.gov/storage-services/service/ll/usrep/usrep527/usrep527150/usrep527150.pdf">Dickinson v. Zurko</a> (1999), disagreeing with the majority finding that the Administrative Procedures Act applies to findings of fact made by the U.S. Patent and Trademark Office. She (along with Justices Souter and Breyer) joined Justice Stevens’ dissent in <a href="https://tile.loc.gov/storage-services/service/ll/usrep/usrep527/usrep527627/usrep527627.pdf">Florida Prepaid v. College Savings Bank</a> (1999), disagreeing with the majority’s decision to find unconstitutional a statute that expressly abrogated a state’s sovereign immunity from claims of patent infringement. She joined Breyer’s dissent in <a href="https://www.supremecourt.gov/opinions/10pdf/09-1159.pdf">Board of Trustees of Stanford University v. Roche</a> (2011), disagreeing with the majority’s holding that the Bayh-Dole Act did not automatically confer title to federally funded inventions in federal contractors. Finally, Justice Ginsburg joined Breyer’s dissent in <a href="https://www.supremecourt.gov/opinions/18pdf/17-1594_1an2.pdf">Return Mail v. United States Post Office</a> (2019), disagreeing with the majority’s holding that government agencies are not a “person” under the America Invents Act and thus cannot challenge the validity of issued patents via inter partes and post-grant reviews.

Besides her two authored dissents, Justice Ginsburg also authored three majority opinions involving patent law. In <a href="https://www.supremecourt.gov/opinions/06pdf/05-1056.pdf">Microsoft v. AT&amp;T</a> (2007), she held that even though Microsoft exported a Windows master disk, Microsoft’s liability for patent infringement under § 271(f)(1) did not extend to computers made in another country, where the Windows software was copied abroad from the master disk. She authored the unanimous opinion in <a href="https://www.supremecourt.gov/opinions/13pdf/13-369_1idf.pdf">Nautilus v. Biosig Instruments</a> (2014), where she rejected the Federal Circuit’s standard for indefiniteness and announced a new standard: that a patent is indefinite “if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Finally, Justice Ginsburg authored the majority opinion in <a href="https://www.supremecourt.gov/opinions/19pdf/18-916_f2ah.pdf">Thryv v. Click-To-Call Technologies</a> (2020), which sadly turned out to be her final patent case. She held that a party cannot appeal the decision by the PTAB to institute an inter partes review proceeding based upon the allegation that the petition was time-barred: “A challenge to a petition’s timeliness under § 315(b) thus raises ‘an ordinary dispute about the application of’ an institution-related statute.”

Given her few dissents with respect to patent law, Justice Ginsburg was usually with the majority, or more likely, the majority was usually with her. She will be missed.

Justice Ginsburg’s Dissents – in Patent Law