Patent exhaustion reached the SCOTUS docket last year, in the form of Impression Products v. Lexmark International. Handing down its 8-0 opinion this Tuesday (7-1 when counting RBG’s partial dissent from the resolution of the cross-border question) the Court delivered—in Ronald Mann’s words—a judgment “full of quotable maxims certain to populate the U.S. Reports for decades to come.”
Yes, the case is hugely significant for patent wonks (is that a thing?); yes, it marks unequivocal support for the doctrine of “exhaustion”, under which a patentee’s rights of enforcement are exhausted at the moment he sells his object; but—most importantly of all—it is another example of Chief Justice Roberts’s word-nerdery.
Interesting (to some) is Roberts’s fidelity to the original Old English(e) spellings of “void” and “traffic”. Concluding for a unanimous court that post-sale conditions on alienation “have been hateful to the law from Lord Coke’s day to ours and are obnoxious to the public interest”, the Chief noted:
“As Lord Coke put it in the 17th century, if an owner restricts the resale or use of an item after selling it, that restriction ‘is voide, because . . . it is against Trade and Traffique,’”
Roberts appears to have derived this quote from Associate Justice Stephen Breyer’s reference to Lord Coke (NB: pronounced “Cook”) in another recent major patent case, Kirtsaeng v. Wiley, 133 S. Ct. 1351 (2013). On that occasion SCOTUS held that the first-sale doctrine does absolve works “lawfully made” overseas of copyright liability in the US. On that occasion, however, Breyer inserted modernisation corrections, writing:
“is voi[d], because [. . .] it is against Trade and Traffi[c],”
Justice Breyer is married to an English daughter of a Viscount (read: aristocrat) and is certainly not shy about original English meanings and structure…
…But Chief Justice Roberts is a grammarian!
Recall FCC v. AT&T, 562 U.S. 397 (2011), in which the Chief delivered another unanimous decision, on that occasion refusing to extend FoIA exemptions for disclosure requirements to information related to corporate privacy. Roberts ruled in a series of bewildering references to “proper English”, including:
“Adjectives typically reflect the meaning of corresponding nouns, but not always. Sometimes they acquire distinct meanings of their own. The noun “crab” refers variously to a crustacean and a type of apple, while the related adjective “crabbed” can refer to handwriting that is “difficult to read,” Webster’s Third New International Dictionary 527 (2002); “corny” can mean “using familiar and stereotyped formulas believed to appeal to the unsophisticated,” id. , at 509, which has little to do with “corn,” id. , at 507 (“the seeds of any of the cereal grasses used for food”); and while “crank” is “a part of an axis bent at right angles,” “cranky” can mean “given to fretful fussiness,” id., at 530.” [so it continues…]
In 2005 New York Times journalists Broder and Marshall described the 1980s Roberts as having been a “clever, sometimes cocky” lawyer, reporting that he once wrote a note including the advice: “I will call the attorney at Justice handling this matter and suggest use of a more neutral sobriquet […] and some stylistic changes to prevent the last sentence […] from reading as if it were an awkward translation from Bulgarian.”
Thanks for reminding us of this tale, Chief, with your Originale Englishe Spelling of Traffique in Impression Products v. Lexmark. Long may you execute the office of Chief Speller of the Supreme Court faithfully.