INTELLECTUAL PROPERTY BLOG

The man credited as the Patent Act of 1952’s main author could exert some influence when the U.S. Supreme Court hears arguments next term in a patent case waged by makers of adult hygiene products. 

If SCA Hygiene Products AB has its way, the court will address the interesting question of whether Congress’ intent can be discerned by reading a treatise written after the law was enacted by someone who wasn’t in Congress. 

That someone would be P.J. Federico, a mathematician and former Patent Office head who essentially wrote the law in concert with three others at Congress’ behest. 

SCA, which fired the first shot July 15 in its battle against alleged patent infringer First Quality Baby Products LLC, does not want the high court to take Federico’s commentary into account. 

The case centers on whether SCA could wait more than six years to seek damages for infringement by First Quality’s Prevail line of adult incontinence products. SCA offered some solid arguments about Congress’ intent in getting a new patent law passed but says Federico’s commentary “certainly does not rise to the level of legislative history.” 

The Federal Circuit has awarded Federico more deference. Last year, a 6-5 majority of the judges on the appellate bench relied on Federico’s Commentary on the New Patent Act, written two years after the legislation was enacted, in interpreting one of the act’s provisions. 

In terms of the SCA case, patent community stakeholders could also point to Judge Giles S. Rich’s 1963 paper, “Congressional Intent—Or, Who Wrote the Patent Act of 1952,” to give import to Federico’s musings. 

Rich, one of the act’s co-authors, detailed the drafting process, which was undertaken by himself, Federico and two others meeting occasionally with two congressional aides. The only “intent” in writing the law that’s evident in Rich’s recounting was in the heads of the drafters—none of whom were in Congress. A small committee of lawmakers met briefly after the draft was written to approve it. 

As far as anyone can tell, the intent of Congress was simply to pass an updated patent law.  Trying to assign any further intent to a detail like what’s at issue in this case is an empty exercise.  

Should Federico’s intent matter?  The Federal Circuit thought so. But the Supreme Court gets the last word.