Chief Justice Webster

本文旨在探討美國專利法上商業方法發明專利適格性之相關爭議。美國專利審查及司法實務就商業方法發明之專利適格性，迭有爭論。此議題於2008年In re Bilski 判決暨其後2010年Bilski v. Kappos再次受矚。美國聯邦巡迴上訴法院於前者判決中雖未否定「商業方法發明」之專利適格，惟認應以「機械或轉換判斷標準」作為商業方法發明專利適格性之審查依據。案經上訴聯邦最高法院，聯邦最高法院除重申並非所有商業方法發明均不真專利適格之立場，並指出前開「機械或轉換審查標准」並非判斷「商業方法發明」專利適格的唯一標準。雖此，聯邦最高法院並未進一步於判決中提出具體的審查標準，日後商業方法發明專利適格性之判斷，仍留有解釋空間。經分析前述二則判決（含「多數意見」及「協同意見」）及其他相關司法實務、評論意見後，本文認為聯邦最高法院雖於Bilski判決中否定「所有商業方法發明均不具專利適格」之主張，惟此立場未來到非無變動可能。又， 聯邦最高法院在本案中仍未建立審查商業方法發明專利適格性的明確標準，致實務上爭議頻仍，此部分應循立法方式解決為宜。另本案判決後，美國專利審查實務與聯邦巡迴上訴法院仍繼續適用此機械或轉換判斷標準於商業方法發明， 甚至擴及適用於其他方法發明之專利適格判斷，未來如貫徹此標準，則凡未涉及「特定機械」或「具體有形轉換」之「純粹」方法發明，恐難於美國獲准專利。就此標準之內涵而言，本文則認為其仍有不明之處，猶待近一步「細緻化」、「具體化」各該要件之內涵。此外，經本文比較我國專利實務對於「商業方法發明」之立場，我國專利實務雖於「商業方法發明與電腦軟體技術結合」範圍內肯認「商業方法發明」之專利適格，惟此立場是否過於侷限，仍有討論空間。又，美國專利實務現正積極努力建立各類方法發明之專利適格審查標準，其未來發展趨勢如何，自當密切觀察。

Comments on Mark Seidenfeld’s “Revisiting Congressional Delegation of Interpretive Primacy as Foundation for <i>Chevron</i> Deference”

The nature and sources of the New Deal Constitutional Revolution are among the most discussed and debated subjects in constitutional historiography. Scholars have reached significantly divergent conclusions concerning how best to understand the meaning and the causes of constitutional decisions rendered by the Supreme Court under Chief Justice Charles Evans Hughes. Though recent years have witnessed certain refinements in scholarly understandings of various dimensions of the phenomenon, the relevant documentary record seemed to have been rather thoroughly explored. Recently, however, a remarkably instructive set of primary sources has become available. For many years, the docket books kept by a number of the Hughes Court justices have been held by the Office of the Curator of the Supreme Court. These docket books supply a wealth of information concerning the internal deliberations of the justices. Justice Pierce Butler’s docket book in particular provides a remarkably rich set of notes on the Court’s discussions of cases in conference. Yet the existence of these docket books was not widely known, and access to them was highly restricted. As a consequence scholars knew very little about the Court’s internal deliberations in the landmark cases of its 1936 October Term. This article, which is based upon a review of all of the surviving docket books from that Term, considers what those sources can teach us about the cases comprising what some have called the “switch-in-time”: West Coast Hotel Co v Parrish, which upheld Washington State’s minimum wage law for women and overruled Adkins v Children’s Hospital; the Labor Board Cases, which upheld the constitutionality of the National Labor Relations Act; and the Social Security Cases, which upheld the constitutionality of provisions of the Social Security Act establishing an old-age pension system and a federal-state cooperative plan of unemployment insurance, as well as corresponding state unemployment compensation statutes. Considered in concert with information previously known, the data revealed by these docket books shed considerable new light on the nature of the Court’s deliberations in each of these three sets of cases, on the reasons for its decisions, and on the contention that the justices wrought a “Constitutional Revolution” in the spring of 1937.

for “Liberal Justices’ Reliance on Legislative History: Principle, Strategy, and the Scalia Effect” This article conducts an in-depth examination of Supreme Court Justices’ reliance on legislative history during the Burger, Rehnquist, and early Roberts eras. In doing so, it makes two important contributions to current statutory interpretation debates. First, the article presents a powerful case against the conventional wisdom that legislative history is a “politicized” resource, invoked opportunistically by federal judges. The premise that judges regularly rely on legislative history to promote their preferred policy positions—if true—should find ample support in the majority opinions of liberal Supreme Court Justices construing liberal (pro-employee) labor and civil rights statutes. By analyzing all 320-plus majority opinions in workplace law authored by eight liberal Justices from 1969-2006, the authors establish that legislative history reliance is actually associated with a constraining set of results. When these eight liberals use legislative history as part of their majority reasoning, they do so to justify a higher proportion of their pro-employer outcomes than their pro-employee decisions. The authors then review individual majority opinions to demonstrate how this surprising pattern of reliance is based on neutral doctrinal considerations. Liberal Justices use legislative history to illuminate the existence and contours of complex statutory bargains that often favor conservative or pro-employer positions. The authors consider alternative explanations, premised on the institutional factor of who assigns majority opinions and also the instrumental possibility that liberals withhold use of legislative history in “minor” cases to enhance its value in more important decisions. They conclude, however, that Justices Brennan, Marshall, Souter, Stevens, and others are willing to follow so frequently a legislative history trail leading away from their presumed ideological preferences mainly because they have invoked this interpretive resource in principled fashion. The article’s second major contribution is to identify and analyze the Scalia Effect that has arisen with respect to liberal Justices’ use of legislative history since 1986. In the face of Justice Scalia’s fervently expressed opposition to legislative history, liberal Justices have opted not to rely on that resource in a series of pro-employer majorities that Scalia joins. One result of the liberals’ strategic restraint is to make their use of legislative history in remaining (mostly proemployee) majority opinions appear more ideological than was true before Scalia joined the Court. The authors also show that liberal justices have special reasons for acting strategically in this regard. When liberals rely on legislative history, Justice Scalia is significantly less likely to join their majority opinions even when he votes on their side; he also is significantly less likely to vote for the majority result when these liberals rely on legislative history than when they do not. Intriguingly, Justice Scalia’s strong resistance to legislative history usage does not extend to majorities authored by his conservative colleagues. Scalia seems prepared to give these conservative colleagues a free ride: he is every bit as likely to join their majorities, or vote for their results, when they rely on legislative history as when they do not.

A Personalized View of the Court-Packing Episode Joseph L. Rauh, Jr. Editor’s Note: Joseph Rauh was Justice Cardozo ’s last law clerk and the first law clerk of Justice Frankfurter. This article is a partial ex­ cerpt from a lecture the author delivered on February 13 and 15,1990, as a Regents Lecturer at the University of California, San Diego. The entirespeech also appearedin Volume 69 North CarolinaLawReview(1990)pp. 213-249, under the title “An Unabashed Liberal Looks at a Half-Century of the Supreme Court,” and is reprinted withpermission. Copyright 1990 by the North Carolina Law ReviewAssociation. When I went to work for Justice Cardozo in 1936, the Courtwas hopelesslydivided. The dominant faction consisted of four ultra­ conservativeJustices: Willis Van Devanter, ap­ pointed by Taft in 1910 and no longer produc­ tive; James Clark McReynolds, appointed by President Wilson to get rid of him as United States Attorney General; Pierce Butler, a rail­ road lawyer appointed byPresident Hardingin 1922, who spent an inordinate amount of his time and effort on the Court trying to reverse judgments against the railroads under the Federal Employers Liability Act; and George Suther­ land, another Harding appointee and Republi­ can Senator who had fought against Louis Brandeis’s confirmation in 1916. Against this bloc stood the three liber­ als: Brandeis, the people’s attorney, appointed by President Wilson; Harlan Stone, former dean of the Columbia Law School and United States Attorney General, appointed by Presi­ dent Coolidge; and Benjamin Cardozo, the ChiefJudge oftheNewYork Court ofAppeals, appointed by President Hoover. The appoint­ ment of so liberal a Justice as Cardozo, by so conservative a President as Hoover, was re­ markable in itself. Moreover, Cardozo would be the second Jewish Justice on the Court and was already62years ofage. But the Senate Re­ publican leadership conveyed to Hoover its belief that the best politics for 1932 lay in choosing the best man for the Court, and Car­ dozo was almost universally acknowledged as the proper successor to the Olympian Holmes. Hostility between the two blocs was inevitable and open; they even held intra-bloc “skull practice” regularly. The four conserva­ tiveJusticesrodeinthe same automobile to and from theSupreme Courtbuildingfor oral argu­ ments and for the Saturday conferences of all nine Justices at which the Justices decided the cases (inthose days theJustices’ officeswere in their homes). To compete with these regular get-togethers of the conservatives, the liberals began to meet at Brandeis’s home on Friday evenings to plan their strategies for the Satur- 94 JOURNAL 1990 Charles EvansHughes, Jr., (left) resigned his postas So­ licitor General when his father accepted President Hoover’s nomination to be ChiefJustice in 1930. In this photo, probably taken in the summer of 1916, Chief Justice Hughes holds his grandson, Charles E. Hughes the 3rd, in his arms. day conferences. I always waited until Justice Cardozo returned to his apartment so I could get a full report on the liberal warm-up. I never found theJustice more unhappythan on the few occasions when Brandeis or Stone announced that they were not going to join his dissent in a particular case the following day despite their belief that the majority was going to make a wrong decision. The balance of power, of course, lay with the other two Justices, ChiefJustice Charles Evans Hughes and Associate Justice Owen Roberts. When Chief Justice Taft retired in 1930, there was considerable speculation about who would be named as his successor. Justice Frankfurter later relayed to me the story of Hughes’ nomination as told to him by Joseph Cotton, Hoover’s Under-Secretary ofState. A meeting to discuss Taft’s successor was held in Hoover’s office, which Cotton attended. The President said he felt obligated to offer the position to Hughes, a former Associate Justice ofthe Supreme Court and the Republican stan­ dard-bearer in the 1916 Presidential race. One of those present at the meeting told the Presi­ dent he was safe in making the offer because Hughes would have to decline since his son, Hoover’s Solicitor General, would resign his post as the Government’s spokesman before the Court ifhis fatherbecame ChiefJustice. So Hoover called Hughes on the telephone and...

The case studies in the preceding part of the book frequently touched on the role of the Solicitor General in bankruptcy cases. If the principal thesis of the book is that the Court has underenforced the Bankruptcy Power, the principal explanation is that the Code's failure to create an agency with responsibility for administering the Code has led to a vacuum of expertise that has left the Court lacking the kind of information it needs to apprehend the importance of the Bankruptcy Power to the modern economy. The obvious question, though, is why the Solicitor General has not played that role. After all, with the sole exception of Granfinanciera , the Solicitor General did participate in each of the cases that the case studies examine in detail. As I illustrate below, the Solicitor General's role has been almost diametrically opposed to the system-buttressing role that an agency would produce. In every one of those cases except Marathon, where it appeared (unsuccessfully) to defend the constitutionality of the Code, the Solicitor General has opposed a broad interpretation of bankruptcy power. Moreover, the evidence indicates that the hostile posture of the Solicitor General has had a cognizable effect on the decisions that the Court in fact has rendered. The Court does not always defer to the Executive. Still, when the Solicitor General can convince the Court that its position is reasonable and that a contrary outcome would harm important interests, the Court has given the benefit of the doubt to the Solicitor General's narrower interpretation. This is true even when (as in BFP ) that result does considerable injury to the language of the statute. Indeed, I think that is more likely to be true in bankruptcy cases than in other private law cases, because the Solicitor General's view is less likely to reflect the agency bias apparent in cases in which an agency defends its own programs. Other writers have noticed that the Supreme Court often defers to the government in bankruptcy cases in which the Government is a party (Rasmussen 1993; Lawless 1996, 114–115), but what they have not noticed is the pervasiveness of the Solicitor General's role as a party and as an amicus in bankruptcy cases.

The Federal Circuit and the D.C. Circuit: Comparative Trials of Two Semi-Specialized Courts

Biotechnology's Uncertainty Principle

Severability, Inseverability, and the Rule of Law

Merges: Back to the Shadows, or Onward and Upward? Current Trends in Patent Law

Is Patent Law Technology-Specific?

Documentary Editing and the Jay Court: Opening New Lines of Inquiry Ene Sirvet and R.B. Bernstein For too long, Americans have thought that the history of the Supreme Court of the United States began with John Marshall. Even many lawyers, legal scholars, and historians, though aware that three Chief Justices preceded Mar­ shall, have dismissed their tenures as insignifi­ cant at best, failures at worst. Evaluating the Supreme Court that was by reference to the pow­ erful appellate tribunal that is wrongly gauges a Chief Justice’s success by two rules of thumb: did the Court under that ChiefJustice hand down important constitutional decisions that have be­ come bulwarks of modem American constitu­ tional law? Was that ChiefJustice a leading force in promulgating such decisions? Using the modem understanding of the Su­ preme Court as a measure to evaluate earlier Courts obscures how, by a process neither unop­ posed nor foreordained, the Court became the center of gravity of American constitutionalism. Moreover, focusing the historiography ofthe fed­ eral courts on the Supreme Court scants the vi­ tal role played in the development of American law by the lower federal bench, whether trial or appellate. The Promise of Documentary Editing One factor obscuring the early Court was the difficulty of access to historical evidence. Until recently, most primary sources for the early Court were unpublished, scattered in repositories around the nation, and difficult to use for any­ one lacking historical background and legal training. Lawyers of that era used a complex legal jargon that can baffle unprepared research­ ers. For example, studying the federal circuit courts requires a grasp of such subjects as the common law writ system and federal jurisdic­ tion. Knowing the difference between a suit “in trespass” and one “in trespass on the case” is key to analyzing the kinds of lawsuits that these courts heard; knowing the rules of federal juris­ diction reveals whether cases were properly brought before the courts and lays bare patterns of interstate litigation and the economic trans­ actions behind such suits. Now the “documentary editing revolution,” hailed by historian William W. Freehling as the most important development in modem Ameri­ 18 JOHN JAY can historiography,' has embraced the federal courts. Not only is John Marshall the focus of one ofthe most distinguished documentary edit­ ing projects, The Papers of John Marshall— two other projects examine the pre-Marshall fed­ eral judiciary: The Documentary History of the Supreme Court ofthe United States, 17891800 and The Papers of John Jay. A documentary history portrays the growth of an institution or process of government, trac­ ing the development ofcollegial relations among its members and its processes of collective deci­ sion-making. A documentary editing project keyed to an individual complements institutional documentary histories by presenting the institution’s development through that person’s eyes—especially when, like Jay or Marshall, he is the institution’s leader. A Chief Justice over­ sees and speaks for the Supreme Court and the federal judiciary; he monitors the administration of the federal bench, the courts’ ability to fulfill their constitutional and statutory duties, and the judiciary’s place in the public mind. Focusing on the first Chief Justice offers a unique view ofthe federal courts’ early develop­ ment. This is the goal ofthe last volume of The Papers ofJohn Jay: ChiefJustice and Feder­ alist Statesman, 1789-1829, which will exam­ ine Jay as the Court’s ChiefJustice and as one of six circuit judges. It will assess the burdens he faced while riding circuit and while presiding over the Court, leading his colleagues in defin­ ing the Court’s role in an evolving constitutional system. It will describe the number and kinds of cases that Jay heard, and it will trace patterns of federal litigation. It will analyze how Jay and his colleagues grappled with the problem of extrajudicial activities and responsibilities— those imposed by Congress (as in the 1792 stat­ ute asking the Justices to hear RevolutionaryWar veterans’ pension claims) and those sought by President George Washington and his adminis­ tration (such as his 1793 request for an advisory opinion from the Court, discussed in the follow­ ing article, and his 1794 naming of Jay as Min...

Congress created the Federal Circuit as a specialized appellate court with the goals of fostering uniformity in outcomes, coherent evolution of patent law doctrine and policy, and the development of judicial expertise and competency. However, the creation of this specialized appellate court has had a downside. Because the Federal Circuit has narrow jurisdiction and hears a relatively restricted range of cases, it is much less likely to look at traditional common law doctrines across numerous dimensions, as would the regional courts of appeal with broader jurisdiction. As a result, its decisions can misconstrue those traditional principles in applying them to the unique and complex patent law issues before the court. This article examines this phenomenon in the context of multi-actor patent infringement, which encompasses the sub-categories of joint and divided patent infringement. The Federal Circuit has used imprecise vocabulary to articulate increasingly narrow bases of liability for multi-actor infringement. Returning explicitly and openly to the foundations of the tort and agency law doctrines that traditionally underlie multi-actor infringement doctrine would enable the Federal Circuit to articulate liability rules that are more principled, more grounded in traditional legal doctrine, and more consistent with the overall patent law scheme. Although such an approach will not resolve all multi-actor patent infringement cases, it will help isolate the subset of cases not susceptible to easy resolution under current precedent and doctrine, thus highlighting the areas in need of congressional intervention.

Journal of Supreme Court HistoryVolume 23, Issue 2 p. 3-25 “Presenting the Case of the United States As It Should Be” The Solicitor General in Historical Context Seth R Waxman, Seth R Waxman Seth Waxman is the Solicitor General of the United States. He delivered this paper at the Society's Annual Meeting in June. This article is the printed version of a lecture delivered at the Supreme Court Historical Society's Annual Meeting on June 1, 1998. The author gratefully acknowledges the assistance of David B. Salmons, a Bristow Fellow in the Office of the Solicitor General during October Term 1997, and David C. Frederick, an Assistant to the Solicitor General.Search for more papers by this author Seth R Waxman, Seth R Waxman Seth Waxman is the Solicitor General of the United States. He delivered this paper at the Society's Annual Meeting in June. This article is the printed version of a lecture delivered at the Supreme Court Historical Society's Annual Meeting on June 1, 1998. The author gratefully acknowledges the assistance of David B. Salmons, a Bristow Fellow in the Office of the Solicitor General during October Term 1997, and David C. Frederick, an Assistant to the Solicitor General.Search for more papers by this author First published: 18 July 2011 https://doi.org/10.1111/j.1540-5818.1998.tb00134.xCitations: 1 Read the full textAboutPDF ToolsRequest permissionExport citationAdd to favoritesTrack citation ShareShare Give accessShare full text accessShare full-text accessPlease review our Terms and Conditions of Use and check box below to share full-text version of article.I have read and accept the Wiley Online Library Terms and Conditions of UseShareable LinkUse the link below to share a full-text version of this article with your friends and colleagues. Learn more.Copy URL Share a linkShare onFacebookTwitterLinked InRedditWechat Citing Literature Volume23, Issue2December 1998Pages 3-25 RelatedInformation

William Howard Taft and the Importance of Unanimity* SANDRA DAY O’CONNOR This Term, the Historical Society has put on a wonderful series about the man who is widely—and rightly—regarded as this Court’s greatest Chief Justice. Through his recognition ofthe right ofjudicial review, John Marshall secured for this Court a role in shaping the nation’s most important principles: racial equality, individual liberty, the meaning of democracy, and so many others. Learning more about John Marshall this Term has caused me to think about another great Chief Justice, who perhaps deserves al­ most as much credit as Marshall forthe Court’s modern-day role, but does not often receive the recognition: William Howard Taft. Taft, of course, was remarkable even before he became ChiefJustice—but even the presidency did not hold as much charm for Taft as did his eventual position on the Court. Mrs. Taft noted in her memoirs that “[NJever did he cease to regard a Supreme Court appointment as vastly more desirable than the Presidency.”1 Mrs. Taft, however, disagreed. She loved being First Lady, and was a good one, at that. She was responsible for bringing the cherry blossoms to Washington, a feat for which I am particularly grateful. She also made a bit of history on March 4,1909 by becoming the first First Lady to accompany her husband from the Capitol to the White House on Inauguration Day.2 She was a difficult woman to refuse. Taft, on the other hand, was an unpop­ ular President. His bid for re-election was so unsuccessful that he himself described his defeat as “not only a landslide but a tidal wave and holocaust all rolled into one general cataclysm.”3 Despite his failures as President, however, as chief executive of the Court Taft could only be considered a success. When he took over the job, he found a federal system overwhelmed with cases, causing the Supreme Court’s docket to be as much as five years be­ hind and placing the other federal courts in similarly dire straits.4 Taft, with his experi­ ence as an executive and his connections on Capitol Hill, succeeded in securing the ap­ pointment of twenty-four additional federal judges.5 He also founded the predecessor to the Judicial Conference of the United States, 158 JOURNAL OF SUPREME COURT HISTORY Helen Taft (pictured with her husband and son) be­ came the first First Lady to accompany her hus­ band from the Capitol to the White House on In­ auguration Day. She pre­ ferred being the wife of a President to being that of a Chief Justice. thejob ofwhich it became to keep statistics on the work of federal courts and to suggest re­ forms to keep the federal system functioning smoothly.6 Taft lessened the load on the Supreme Court by successfully lobbying Congress to pass a statute that would give the Court greater control over its own docket by substituting discretionary certiorari review for much of what had previously been mandatory appel­ late jurisdiction.7 But Taft’s concern for the Court went beyond simple efficiency: he had a vision of the Court much grander than that ofa court of error securing justice for individ­ ual litigants. As Taft saw it, individual litigants received all the justice they required through the federal district courts and courts of ap­ peals. The Supreme Court’s role was only “to maintain uniformity ofdecision forthe various courts ofappeal, [and] topass on constitutional and other important questions.”8 Control over its own docket allowed the Court to pass over ordinary lawsuits and spend more time on these sorts of questions. In keeping with his vision of the Court as a player in issues of national importance, Taft also lobbied Congress to appropriate funds to build the present Supreme Court Building, a building whose grandeur matched Taft’s sense of the significance of the business conducted therein.9 Chief Justices Taft and Marshall also placed great value on keeping the Courts over which they presided unanimous. John Marshall began his Chief Justiceship by putting to an end the English practice of seriatim opinions, THE IMPORTANCE OF UNANIMITY 159 Not only was Chief Jus...