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Monday, May 07, 2007

Supreme Court Roundup from Aaron Streett


Greetings, sportsfans! The Court cranked out 5 more decisions this past week, including a blockbuster patent ruling reversing the Federal Circuit for the fourth consecutive time with no more than 1 Justice supporting the CAFC’s approach. For their distinctive record, that court shall heretofore be known as the Ninth Circuit With Pocket Protectors. Two other rulings offer an unappealing melange (dare I say dog’s breakfast) of taxes, trash, and the dormant Commerce Clause. In last week’s final decision, JPS plays the grumpy old man complaining that his 8 whippersnapper colleagues relied on one of those newfangled “talking pictures” to rule for the constable in a chase by motorcar. Let’s recap the action!

Scott v. Harris, 05-1631

Respondent Harris pulled a high-speed OJ when a police officer initiated a traffic stop. After an 85 mph pursuit on a two-lane road, Officer Scott ended the chase by ramming Harris from behind, sending Harris’s car over an embankment and paralyzing Harris. The CA11 denied qualified immunity, holding that a fact question existed whether the chase endangered others enough to others to justify deadly force under Tennessee v. Garner (1985). 

Justice Scalia (+ all but JPS) first held that no reasonable juror could find that Harris’s flight did not endanger other motorists and bystanders. The Court chose to believe its lying eyes rather than the complaint: A videotape of the pursuit recorded by the patrol car’s in-dashboard camera, AS wrote, “quite clearly contradicts” the version of the story told by Harris and the CA11. A group of people that feel a little giddy when they attach a color exhibit to an opinion took a quantum leap by linking a Real Player video clip of the chase in the body of the opinion. While Harris’s complaint gave the impression that he “was attempting to pass his driving test,” the videotape showed Harris running red lights and weaving in and out at “shockingly fast” speeds in a dead-of-night, “Hollywood-style” chase. Given the danger posed by Harris’s flight, Officer Scott did not violate the Fourth Amendment’s reasonableness test by using deadly force to terminate the chase. Garner, which held that police violated the Fourth Amendment by shooting an unarmed burglary suspect fleeing on foot, did not establish a rigid rule that controls this case. The risk of harm to others from this high speed car chase was much greater than in Garner, and therefore it was objectively reasonable to use deadly force to prevent such harm. The police reasonably weighed the lives of numerous innocent bystanders against the risk to Harris, who after all was the one responsible for the “choice of evils” the police faced. The Constitution does not require police to end the chase and hope for the best. Such a rule would give the Dukes of Hazzard a perverse incentive to lead Boss Hogg on endless wild-goose chases.

RBG concurred. She read the opinion not to establish a per se rule for all dangerous car chases, but simply to decide this case on its facts. 

SGB concurred, agreeing with RBG’s point and also arguing that Saucier v. Katz (2001)—which requires courts to address the constitutional question before reaching qualified immunity—should be overruled. That view has been joined in the past by JPS, AS, and RBG. Scalia’s majority opinion includes such a tepid restatement of Saucier’s rule that one wonders whether it is on its last legs, perhaps because JGR or SAA is ready to give it the heave-ho. In this case, however, the constitutional question was sufficiently easy that the Court did not have to reach the Saucier issue.

JPS dissented. He agreed with the CA11 that the chase was not particularly dangerous and criticized the Court for eviscerating traditional summary-judgment principles in favor of “a de novo review of a videotape.” To highlight that argument, he colorfully refers to the majority as “my colleagues on the jury.” The videotape only confirmed JPS’s view of the facts: Had his colleagues “learned to drive when most high-speed driving took place on two-lane roads rather than superhighways—when split-second judgments about the risk of passing a slowpoke in the face of oncoming traffic were routine—they might well have reacted to the videotape dispassionately.” Thus overlooking that the mere septuagenarians on the Court spent decades driving when dashboards were steel, passengers were projectiles, and seatbelts were the subject of hoots of derision.

KSR International Co. v. Teleflex Inc., 04-1350

Now we enter the Federal Circuit error-correction section of today’s report. If you took your last science course in high school, now might be an appropriate time for you to check the fridge. AMK wrote the Court’s unanimous opinion, which sports a positively scary 7-page syllabus, a feature normally reserved for opinions that invent new and implausible constitutional rights. But, as always, your fearless correspondent reads the whole opinion so you don’t have to.

Section 103 of the Patent Act forbids issuing a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” In other words, you shouldn’t be able to get a patent if you simply combine two pre-existing devices in a way that would be obvious to a person in the field. To implement this rule, the Federal Circuit created the “teaching, suggestion, or motivation” test, which finds a patent claim obvious only if “some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem or the knowledge of a person having ordinary skill in the art.” The CAFC applied that test to hold that a patent adding an already-invented electronic sensor to an already-invented adjustable automobile pedal was not obvious.

AMK explained that the CAFC’s “rigid” requirement of a specific teaching, suggestion, or motivation conflicts with the more “flexible approach” found in Supreme Court cases such as Graham v. John Deere Co. (1966) and its progeny, which set forth a “broad” obviousness inquiry and allow courts to consider “any secondary considerations that would prove instructive.” These precedents stand for the principle that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” If this test is met, a court need not identify a precise teaching, suggestion, or motivation for the combination of existing elements. Rather, a court may also consider an ordinary skilled person’s background knowledge and creativity, interrelated teachings of multiple patents, and the demands of the marketplace “to determine whether there was an apparent reason to combine the known elements” into a new invention. The Court seemed to suggest erring on the side of obviousness because “granting patent protection to advances that would occur in the ordinary course without real innovation retards progress”—by giving a monopoly to someone who doesn’t deserve it—“and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.” This holding also has a constitutional basis: If the results of “ordinary innovation” were protected, patents “might stifle, rather than promote, the progress of useful arts,” as the Patents Clause contemplates. All this from people who need assistance in turning on their computers.

The upshot of the Court’s decision seems at least twofold: (1) Patents will be much harder to obtain and easier to invalidate for obviousness, and (2) lower courts will have much more discretion to apply common-sense, equitable principles in the obviousness inquiry. I leave further analysis to those with eyeglasses even thicker than mine.

United Haulers Assoc., Inc. v. Oneida-Herkimer Solid Waste Management Authority, 05-1345

In a decision sure to confound at least one Supreme Court “scholar,” this case split the Court’s “Catholic majority” down the middle. The question was whether a county violated the so-called dormant Commerce Clause by requiring all trash to be processed at state-owned facilities. In terms oddly reminiscent of an Imodium commercial, the opinion explains that the New York counties enacted the “flow control” ordinances in response to a “solid waste crisis.” Trash haulers sued under the Commerce Clause, complaining that the State charged above-market rates and claiming that absent the ordinance, they would haul their loads to more trash-friendly climes.  Like New Jersey.

The Chief (+AS, DHS, RBG, SGB) wrote the opinion for the Court (except as to Part II-D, which AS did not join), upholding the ordinance. The Court noted that in C&A Carbone, Inc. v. Clarkstown (1994), the Court had struck down a similar law that required all trash to be processed at a certain privately-owned facility. In contrast, JGR reasoned that a law favoring a government-owned facility does not facially discriminate against interstate commerce, because it treats in-state private businesses exactly the same as out-of-state ones. Moreover, while a law favoring local businesses is often the product of sheer protectionism, a law favoring local government may promote traditional governmental interests, such as health, safety, and welfare. The citizens of those counties—not out-of-state entities—bear the costs of the decision. In sum, “the dormant Commerce Clause is not a roving license for federal courts to decide what activities are appropriate for state and local governments to undertake.”  This is especially true in an area of traditional government function, such as waste disposal. Having found no facial discrimination, the plurality in Part II-D applied the balancing test of Pike v. Bruce Church, Inc. (1970) and concluded that the law’s revenue generation and encouragement of recycling outweigh any minimal detriment the law may have on interstate commerce. In closing, the Chief argued that judicial activism under the dormant Commerce Clause is just as illegitimate as Lochner-era scrutiny of economic regulation under Due Process. Such sentiments make one wonder whether the Chief’s heart is with Scalia and Thomas (see below), even if his vote is not.

Justice Scalia concurred in all but Part II-D’s discussion of Pike balancing. While he believes the dormant Commerce Clause is a “judicial invention,” he is willing to strike down a law on stare decisis grounds if it facially discriminates against commerce or is indistinguishable from a law previously stricken by the Court. This one was neither.

Justice Thomas concurred only in the judgement, because he believes in neither the dormant Commerce Clause, nor stare decisis, nor the tooth fairy. Well, maybe the tooth fairy. Writing for the history books in an 8-page, originalist opus, CT demolishes every single dormant Commerce Clause case decided in the Court’s history (or so it seems). The Commerce Clause, by its terms, is an affirmative grant of power to Congress, not a restraint on the states. The precedents “rest on the erroneous assumption that the Court must choose between economic protectionism and the free market. But the Constitution vests that fundamentally legislative choice in Congress,” and absent Congressional action, in the States. Thus, the precedents reflect nothing more than “the policy preferences of a majority of this Court.”

Remarkably enough, the Justice from Trenton voted in favor of sending more refuse to New Jersey. SAA (+JPS & AMK) dissented, further supporting my speculation last week that he may be an AMK-style economic nationalist on these types of issues. Justice Alito found Carbone indistingishable. Carbone embodies a longstanding rule against prohibiting the free movement of items in interstate commerce, and no precedent supports a public-entity exception to the Commerce Clause’s antidiscrimination rule. In SAA’s view, laws favoring local governmental entities are no less likely to be protectionist than those favoring private ones.

Microsoft v. AT&T Corp., 05-1056

Still haven’t had enough of Patent Act reversals of the Federal Circuit? Well, you’re in luck. Though the Patent Act generally does not apply to foreign patent infringements, § 271(f) of the Act provides that an actionable infringement does occur when one “supplies . . . from the United States” for “combination” abroad, the “components” of a patented invention “in a manner as to actively induce the combination of such components.” AT&T holds a patent on a speech-processing computer. Microsoft’s Windows operating system contains software code that, when installed on a computer, infringes AT&T’s patent. (But who could ever foresee such a thing happening?) The question here is whether Microsoft violated § 271(f) by shipping Windows master disks to foreign manufacturers, knowing that they would then make copies of that disk and install the Windows copies on computers to be sold abroad.

RBG wrote the Court’s 7-1 opinion, joined by AS, AMK, and DHS in full, and by SAA, CT, and SGB in all but footnote 14 (JGR was recused). RBG first concluded that Windows software code is not a “component. The statutory text refers only to “such components” that are actually combined to infringe the patent, RBG reasoned. The Windows software code is not such a component because it cannot be installed on a computer and thus cannot infringe the patent, until an installable copy is made. Under the same textual provision, the master disk is not a “component,” either, because the foreign copies—not the master—are installed on the computers and infringe the patent. RBG further held that Microsoft did not “supply” the copies from the United States. The fact that is easy to copy software is no warrant to ignore the ordinary meaning of the word “supply,” RBG wrote. Finally, the presumption against extraterritorial application of statutes resolves any doubt in Microsoft’s favor. It is up to Congress to amend the Act to cover software or foreign-made copies, not to the Court to “forecast Congress’s likely disposition.” Where was this textualist Court in last week’s Zuni case?

SAA concurred (+CT & SGB) to address the issue reserved in the majority’s footnote 14. He would have held that even the Windows copies were not “components.” A “component” refers to a physical object that combines physically with something else to infringe the patent. That definition excludes the code on the disk. Likewise, the disk itself is never incorporated physically into the computer; its code is copied, and the disk is then removed.

JPS again found himself in lonely dissent. Microsoft’s shipment of master disks was the equivalent of supplying a “warehouse of components” from the United States, he opined. Apparent Congressional intent should break the tie in this close case.

EC Term of Years Trust v. United States, 05-1541

The Trust claimed the IRS wrongfully levied on some of its property for a tax debt owed by the individual settlors. But the Trust failed to contest the action within the 9-month limitations period provided by 26 U.S.C. § 7426(a)(1), the statute that specifically authorizes challenges to wrongful levies. Instead, the Trust sought a tax refund under 28 U.S.C. § 1346(a)’s more generous 2-year statute of limitations. Having lost the rock-paper-scissors contest at the end of Conference (after 18 years, apparently people figure out that you always throw “rock”), DHS was tasked with penning the Court’s unanimous opinion, which he did in an admirably brief 7 pages with just 467 footnotes, a record low. The rule that a party may not evade the strict requirements of a specifically applicable statute by invoking a more general statute disposes of this case, DHS held.


To no one’s surprise, the Court granted Medellin v. Texas (06-984), the sequel to 2004’s (non)decision of a similar name. In a highly unusual move, the SG had filed an amicus brief in support of Medellin’s cert petition without waiting for a CVSG. You may recall that Medellin is a Mexican national on Texas’s death row. He was not informed of his rights to consular access under the Vienna Convention, a problem the World Court says should result in his retrial, notwithstanding his failure to raise it on direct appeal. The CA5, however, denied federal habeas relief due to Medellin’s procedural default. In Medellin I, the Court DIG’d the petition after President Bush, invoking his foreign-affairs authority, purported to order the Texas Court of Criminal Appeals to consider Medellin’s Vienna argument on the merits. Well, the old Texas CCA didn’t take too kindly to George W.’s getting too big for his britches and politely told him that the Executive has no authority to tell a sovereign State how to administer its criminal-justice proceedings. First they play Fahrenheit 9/11 in Crawford and now this. Besides the executive power question, the Court may also reach the issue granted in Medellin I: Whether the World Court’s ruling is enforceable by a habeas petitioner in state court.

Until next time, that’s today’s baseball. Aaron M. Streett is an associate in the Houston office of Baker Botts LLP and a member of the firm’s Appellate and Supreme Court Practice. The statements, opinions, and subtle emotions expressed herein do not necessarily represent those of Baker Botts LLP; to the extent they are correct, insightful, and not offensive, they most definitely represent the views of the author. Call toll-free number before digging. If you would like to subscribe to these updates, please send an e-mail to [email protected]

Posted by Administrators on May 7, 2007 at 10:11 AM in Constitutional thoughts | Permalink


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