What an Obscure Question of Patent Law Says About the Future of Roe v. Wade

The Supreme Court

As a patent litigator I’ll admit that I was somewhat puzzled when I heard that the Supreme Court had decided to take up the case of Minerva Surgical, Inc. v. Hologic, Inc., a dispute that had to do with the ongoing viability of the doctrine of “assignor estoppel” in patent law. Assignor estoppel is an esoteric equitable rule providing that when a party assigns (i.e., sells) a patent to another party and the assignee turns around and sues the assignor for patent infringement, the assignor cannot then claim that the patent it just assigned is invalid. In other words, equitable principles prevent a seller from arguing, after the sale, that the thing he just sold is worthless.

This is, as you may guess, a very unusual set of facts. In sixteen years of legal practice I’ve encountered assignor estoppel in the wild exactly once, which is once more than most patent litigators will ever deal with it. The Supreme Court is notoriously picky about the cases it chooses, all the more so when it comes to patent law, so why would they waste a slot on their docket on a question with such little relevance to the real world?

Even more surprising, the Justices managed to turn this esoteric question into a sharply divided 5–4 decision with three separate opinions spanning 38 pages. The lineup reflected the Court’s new ideological faultlines — the majority opinion was written by Justice Kagan and joined by the other two “liberal” Justices, Justice Breyer and Justice Sotomayor. Rounding out the majority were the two more “liberal” of the three “moderate conservative” Justices: Chief Justice Roberts and Justice Kavanaugh. The “most conservative moderate conservative,” Justice Barrett, wrote the principal dissent, joined by two of the three “conservatives,” Justice Thomas and Justice Gorsuch. The third “conservative,” Justice Alito, wrote a separate dissent that was to the right of Justice Barrett’s opinion. All this for an issue on the outskirts of the outskirts of federal law?

Dive into the opinions and the real issue presents itself. Assignor estoppel is not explicitly provided for in the lengthy set of statutes that govern patent law. It is a judicial invention based “equity,” a legal principle that has enabled courts to craft new legal doctrines based on principles of fairness rather than statutory text. Equity has existed in the legal field for centuries but is something that so-called “originalists” tend to chafe at. The originalist position, broadly stated, is that judges have no business making laws at all— all they can do is interpret laws that the legislatures write. So the question in Minerva Surgical had little to do with patent law but much to do with the role of the courts in the American legal system.

The thrust of Justice Kagan’s opinion is that the doctrine of assignor estoppel is grounded in sound equitable principles and has enough of a historical pedigree to be worth keeping around, albeit on a limited basis. This reasoning was enough to bring Chief Justice Roberts and Justice Kavanaugh on board. In short, not all five Justices in the majority might impose assignor estoppel today, but it’s been a feature of patent law for a century and there’s nothing really wrong with it so there’s no need to upset the apple cart.

For the dissent, none of that matters. History be damned, if there’s no statutory basis for a law then there’s no judicial basis either. The Patent Act doesn’t mention assignor estoppel and therefore assignor estoppel doesn’t exist. What this theory lacks in practical applicability it makes up for in simplicity.

This division reflects a classic ideological split as to the proper role the courts in administering the law within the judicial system that just happens to be flavored, in this case, with an odd quirk of patent law. Should judges employ their own views of “fairness” in deciding cases or should they limit themselves to what the legislatures decide to write down?

It’s tempting to view these trade magazine cases as “test runs” for the kinds of cases that make the front page, and that’s what I propose to do here. Because a year from now the Supreme Court will decide Dobbs v. Jackson Women’s Health Organization, the first case to have the right to abortion recognized in Roe v. Wade squarely on the table since Justice Barrett replaced Justice Ruth Bader Ginsburg last year. And legal commentators generally agree that the case will come down to the three moderate conservatives — Chief Justice Roberts, Justice Kavanaugh, and Justice Barrett. Whichever result at least two of them endorse will end up being the judgment of the Court.

The parallels are hard to miss. The right to abortion is not explicitly mentioned in the Constitution; it was derived from broader constitutional principles of privacy and substantive due process that themselves rely more on judicial interpretation than text. Roe v. Wade, at about half a century old, doesn’t have quite the historical pedigree that assignor estoppel has. But it still may be long enough in the tooth to give Chief Justice Roberts and Justice Kavanaugh pause before wiping it away.

The inquiries in Dobbs and Minerva Surgical are by no means precisely the same, and it’s always wise to resist making strong predictions about how Justices will rule in future cases. But it’s helpful to view little-noticed decisions like Minerva Surgical as signals by the Justices not only to the public but to advocates and, perhaps most importantly, to each other. The moderate triumvirate will need to closely weigh legal history and constitutional text when they consider whether women will enjoy the right to abortion after June 2022. And if nothing else today’s patent law decision gives us a dry run as to how that analysis may unfold.

Lawyer and religion think-abouter.