PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY: THE

689

PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY:

THE HISTORICAL PROTECTION OF PATENTS UNDER

THE TAKINGS CLAUSE

ADAM MOSSOFF



INTRODUCTION ............................................................................................... 690

I. M

ODERN MYOPIA: NO PATENTS UNDER THE TAKINGS CLAUSE......... 693

II. T

HE HISTORY OF PATENTS AS CONSTITUTIONAL PRIVATE

PROPERTY............................................................................................ 700

III. P

ATENTS, PROPERTY, AND CONSTITUTIONAL PRIVATE PROPERTY –

AST AND PRESENT ............................................................................. 711

ONCLUSION................................................................................................... 724

Conventional wisdom maintains that early courts never protected patents as

constitutional private property under the Takings Clause. In examining long-

forgotten judicial opinions and legislative records, this Article reveals that this

is a profoundly mistaken historical claim. Nineteenth-century courts, securing

to inventors the fruits of their labors, enthusiastically applied the Takings

Clause to patents, and Congress explicitly codified this jurisprudence in the

early twentieth century. It is perplexing that this historical development in

both constitutional law and patent law has become obscured to modern courts

and scholars. This Article thus concludes with a possible answer to this

conundrum, drawing upon the intellectual history of property theory:

Ultimately, the eclipse of the nineteenth-century patent takings jurisprudence

may be an unintended consequence of the legal realists’ radical

transformation of property theory at the turn of the last century.

This intellectual history is important because it exposes the pervasive

misunderstanding of the history concerning two significant constitutional

provisions – the Takings Clause and the Copyright and Patent Clause. Courts



Associate Professor of Law, Michigan State University College of Law. J.D.,

University of Chicago; M.A., Columbia University; B.A., University of Michigan. I am

grateful to William Baude, Thomas Bowden, Eric R. Claeys, Thomas F. Cotter, Brett

Frischmann, Philip Hamburger, Paul J. Heald, Brian Kalt, Roberta R. Kwall, Mark Lemley,

Henry E. Smith, and Eugene Volokh for their very helpful comments on earlier drafts. This

Article evolved from a long-term research project on the intellectual history of American

patent law, and this portion of the project benefited from comments received at a workshop

at the George Washington University School of Law, as well as at the American Society for

Legal History Annual Meeting and the Intellectual Property Scholars Conference at DePaul

University College of Law. The Law Library at the Michigan State University College of

Law provided invaluable research assistance.

690 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

and scholars can no longer rely on the conventional wisdom to conclude that

patents are not protected under the Takings Clause, or that this issue is novel

and uncertain. Doctrinally, this Article also uncovers a venerable

jurisprudence grappling with the constitutional limits on what jurists used to

refer to as the unauthorized “pirating” of patented inventions by government

officials. In a regulatory takings case, in particular, such long-standing

doctrine is highly relevant in defining the scope of the constitutional security

afforded to a property right today. As patented drugs and other inventions are

increasingly the subject of regulations, this Article establishes that the

constitutional and policy issues inherent in these governmental actions are not

new. Courts have long embraced patents as constitutional private property.

INTRODUCTION

Patents are property. The question that haunts scholars and courts today is

whether patents also are constitutional private property, falling within the

ambit of protections afforded to “private property” under the Takings Clause.

Modern takings and intellectual property scholarship concludes that this

question is novel, and its answer uncertain.

Courts agree that the issue is

ambiguous, at best. As recently as March 2006, the Court of Appeals for the

Federal Circuit held that patents are not secured under the Takings Clause.

Several years earlier, though, the U.S. Supreme Court seemed to suggest

otherwise.

Regardless of whether courts and scholars believe the Takings

Clause should apply to patents as a normative matter, they are unanimous in

their view of the constitutional history: no nineteenth-century court held that

the Takings Clause applies to patents.

U.S. CONST. amend. V (“[N]or shall private property be taken for public use, without

just compensation.”).

See, e.g., DAVID A. DANA & THOMAS W. MERRILL, PROPERTY: TAKINGS 233 (2002)

(stating that “[t]he application of the Takings Clause to intellectual property – trademarks,

copyrights and patents – has not yet been seriously tested in the courts”); Thomas F. Cotter,

Do Federal Uses of Intellectual Property Implicate the Fifth Amendment?, 50 FLA. L. REV.

529, 529 (1998) (positing that “the law of takings with regard to

intellectual property can

only be characterized as a muddle”); Shubha Ghosh,

Toward a Theory of Regulatory

Takings for Intellectual Property: The Path Left Open After

College Savings v. Florida

Prepaid, 37 S

AN DIEGO L. REV. 637, 667 (2000) (claiming that applying the Takings Clause

to “intellectual property or intangible property would occur only through analogy”).

See Zoltek Corp. v. United States, 442 F.3d 1345 (Fed. Cir. 2006) (per curiam),

rehearing en banc denied, 464 F.3d 1335 (Fed. Cir. 2006). In a separate case, the Court of

Federal Claims came to a similar conclusion eight years earlier.

See De Graffenried v.

United States, 29 Fed. Cl. 384 (1998) (holding that patents are not secured under the

Takings Clause).

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 739 (2002)

(invoking standard from the regulatory takings doctrine that patent rights constitute “the

legitimate expectations of inventors in their property”).

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 691

This historical claim is profoundly mistaken. In three parts, this Article will

uncover long-forgotten nineteenth-century jurisprudence in the Supreme Court

and in lower federal courts, showing that jurists once enthusiastically held that

patents were protected under the Takings Clause. First, this Article will survey

the views of modern courts and scholars, who seem to agree in a rare case of

unanimity that the historical record reflects no instance of a federal court

holding that the Takings Clause applies to patents. For many intellectual

property scholars, in particular, this historical claim is important, as it forms an

important basis of their critiques of modern, expansive patent practices.

Second, this Article will identify the logical progression in nineteenth-century

constitutional jurisprudence leading to the famous 1878

McKeever’s Case,

which held that patents were secured under the Takings Clause. The

juxtaposition of these historical facts and the modern misunderstanding of

them raises an intriguing question: Why are courts and scholars today so

mistaken about the historical protection of patents as constitutional private

property? This Article concludes with some observations on how this

conundrum arose, suggesting that it may be an unintended consequence of the

legal realists’ radical transformation of property theory at the turn of the last

century.

This intellectual history reveals that modern courts and scholars have

overlooked significant constitutional jurisprudence given fundamental

differences in how courts and scholars have conceptualized both property and

patent rights. At the turn of the twentieth century, the legal realists rejected the

natural rights conception of property as securing the exclusive rights to

acquire, use, and dispose of one’s possessions, which was the leading property

theory in the eighteenth and nineteenth centuries.

The realists redefined

property as securing principally the right to exclude, which is the dominant

conception of property today.

This radical transformation in property theory

necessarily affected how courts and scholars conceptualized other types of

property, such as the intangible property in a patent, which is also now defined

as securing only the right to exclude.

This, in turn, impacted how modern

courts and scholars have understood how patents rights were defined and

secured in the nineteenth century, when property rights were more broadly

conceived as securing exclusive use rights.

It is important to bear in mind the scope of my thesis. This Article builds on

my earlier work, in which I discuss the evolution of patent rights at common

See infra notes 47-51 and accompanying text.

McKeever v. United States (McKeever’s Case), 14 Ct. Cl. 396 (1878).

See discussion infra Part III.

See infra notes 139-43 and accompanying text.

See infra notes 144-47 and accompanying text.

See infra notes 150-62 and accompanying text.

692 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

law and in the early American Republic,

but here I explain only the historical

protection of patents as constitutional private property. Takings scholars

should find this Article relevant to how they have framed their analyses of

takings doctrine – they have missed much of the early constitutional protection

intangible property

– but this Article does not seek to resolve their debates

concerning the historical application of the Takings Clause as such.

Furthermore, the normative question of whether patents

should be secured as

property rights, or whether patents

should be secured as private property under

the Takings Clause, cannot be answered by history alone,

and in any case

could not be addressed sufficiently in a brief Article.

Yet the evidence presented here is not a mere historical or academic

curiosity. This Article establishes that modern courts and scholars have been

relying on incorrect historical claims to justify their decisions and policy

prescriptions. This is significant because patented drugs and other inventions

are increasingly the subject of regulations, and thus the constitutional security

in these legal entitlements is a particularly salient issue in our public policy

debates. Following September 11, 2001, for instance, the federal government

See generally Adam Mossoff, Rethinking the Development of Patents: An Intellectual

History, 1550-1800

, 52 HASTINGS L.J. 1255 (2001) [hereinafter Mossoff, Rethinking the

Development of Patents

]; Adam Mossoff, Who Cares What Thomas Jefferson Thought

About Patents? Reevaluating the Patent “Privilege” in Historical Context

, 92 CORNELL L.

EV. 953 (2007) [hereinafter Mossoff, Reevaluating the Patent “Privilege”].

Since takings scholars focus almost exclusively on land, this Article exposes a

substantial gap in their scholarship.

See, e.g., John F. Hart, Land Use Law in the Early

Republic and the Original Meaning of the Takings Clause

, 94 NW. U. L. REV. 1099 (2000);

Carol M. Rose, Mahon

Reconstructed: Why the Takings Issue Is Still a Muddle, 57 S. CAL.

L. R

EV. 561 (1984); Jed Rubenfeld, Usings, 102 YALE L.J. 1077, 1077-1110 (1993). In fact,

there is no discussion of patent takings in two prominent monographs on takings.

See

BRUCE A. ACKERMAN, PRIVATE PROPERTY AND THE CONSTITUTION (1977); RICHARD A.

PSTEIN, TAKINGS: PRIVATE PROPERTY AND THE POWER OF EMINENT DOMAIN (1985).

Professors Tom Merrill and David Dana do address takings of “intangible rights” in a brief

chapter in a recently published book, but they focus entirely on very recent case law. D

ANA

& MERRILL, supra note 2, at 228-53. Thus, takings scholars should find this Article relevant

insofar as it reveals that courts have long embraced

intangible property as falling within the

definition of “private property” secured under the Takings Clause.

See discussion infra

Part II.

Compare Eric R. Claeys, Takings, Regulations, and Natural Property Rights, 88

ORNELL L. REV. 1549 (2003) (claiming that early courts used natural rights theory to create

a pre-twentieth-century regulatory takings doctrine)

with William Michael Treanor, The

Original Understanding of the Takings Clause and the Political Process

, 95 COLUM. L.

EV. 782 (1995) (proposing that early courts provided almost no protection under state or

federal takings clauses to property that was negatively affected by governmental

regulations).

Cf. Georgia v. Randolph, 126 S. Ct. 1515, 1528 (2006) (Stevens, J., concurring)

(noting in a Fourth Amendment case that constitutional law history is “usually relevant but

not necessarily dispositive” in deciding cases today).

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 693

threatened to suspend Bayer’s patent on Cipro in order to cheaply obtain vast

quantities of the antibiotic that best treats anthrax.

Given the status of patents

as property, these and other state actions raise questions concerning the

constitutional limitations imposed on the government vis-à-vis the patents it

grants to inventors.

In addressing these issues today, courts and scholars justify their

conclusions on the basis of mistaken historical authority, and this Article

establishes that this reliance is no longer defensible. There needs to be a fresh

review of the constitutional and policy issues implicated in a patent takings

case. In this respect, this Article is relevant to the continuing debates over the

nature of patent rights – revealing a substantial nineteenth-century

jurisprudence applying the Takings Clause to patents that has become eclipsed

to modern courts and scholars.

I. M

ODERN MYOPIA: NO PATENTS UNDER THE TAKINGS CLAUSE

It is intriguing that modern courts and scholars believe that patents have

never been secured as constitutional private property. It is beyond cavil that

patents are property rights,

and currently there is a vibrant debate among

scholars and jurists as to whether the recent expansion in these property rights

is unprecedented, unjustified, or both.

Given this debate, one might expect

the relevant historical jurisprudence to be mined for its doctrinal or policy

analyses refuting or supporting the arguments proffered by the relevant players

today. Yet, despite this sharp policy divide, everyone believes that patents

were never secured as constitutional private property in the nineteenth century.

This history might be relevant if only because courts seem schizophrenic in

their decisions today. As a doctrinal matter, some courts suggest that patents

See Jill Carroll & Ron Winslow, Bayer Agrees To Slash Price for Cipro Drug, WALL

ST. J., Oct. 25, 2001, at A3 (“The agreement [between Bayer and the U.S. government]

comes after a high-stakes threat by Tommy Thompson, HHS secretary, to break Bayer’s

patent for Cipro if he didn’t get the price he wanted.”); Shankar Vedantam, Cipro Is Not the

Only Pill That Fights Anthrax

, WASH. POST, Oct. 17, 2001, at A20 (reporting that Senator

Charles E. Schumer “issued a public appeal that the government suspend Bayer’s patents

and allow generic companies to add to the supply”).

See, e.g., Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S.

627, 642 (1999) (holding that patents are property interests secured under the Due Process

Clause of the Fourteenth Amendment in a case involving a state’s unauthorized use of a

patented invention).

See, e.g., 35 U.S.C. § 261 (2000) (“[P]atents shall have the attributes of personal

property.”); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 730

(2002) (stating that a patent “is a property right”); Fla. Prepaid, 527 U.S. at 642

(“Patents . . . have long been considered a species of property.”); United States v. Dubilier

Condenser Corp., 289 U.S. 178, 186-87 (1933) (explaining that “a patent is not, accurately

speaking, a monopoly,” but rather “[a] patent is property”).

See infra notes 47-51 and accompanying text.

694 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

are entitled to protection under the Takings Clause and others disagree.

Complicating the issue, a federal statute (28 U.S.C. § 1498) mandates that the

government pay “reasonable and entire compensation” whenever “an

invention . . . covered by a patent of the United States is used or manufactured

by or for the United States.”

Since the early twentieth century, courts have

recognized this statutory requirement as executing the eminent domain power

of the federal government,

which tacitly acknowledges that patents are

property rights accorded constitutional protection under the Takings Clause.

Perhaps this was the reason why the Supreme Court held in 2002 in

Festo

Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

that patent rights constitute

“the legitimate expectations of inventors in their property.”

In saying this,

the

Festo Court applied to patents one of the contemporary standards securing

tangible property rights under the Takings Clause.

As further evidence that

the

Festo Court had takings doctrine on its mind, it warned the Federal Circuit

that it must neither “disrupt” nor “risk destroying” these “settled expectations”

in exercising its exclusive jurisdiction in deciding patent appeals.

Although

Festo was a patent infringement case, not a takings case, it seemed to establish

an important constitutional claim: patent rights represent “legitimate

Compare Festo Corp., 535 U.S. at 739 (explaining that patent rights constitute “the

legitimate expectations of inventors in their property,” invoking a standard from regulatory

takings doctrine) with Zoltek Corp. v. United States, 442 F.3d 1345, 1352 (Fed. Cir. 2006)

(per curiam) (rejecting claim that patents are secured under the Takings Clause),

rehearing

en banc denied

, 464 F.3d 1335 (Fed. Cir. 2006).

28 U.S.C. § 1498(a) (2000).

See, e.g., Crozier v. Fried. Krupp Aktiengesellschaft, 224 U.S. 290, 307 (1912)

(holding that a suit under the predecessor statute to § 1498(a) provides all the requirements

necessary to sustain the statute as an exercise of the federal government’s eminent domain

power); Decca Ltd. v. United States, 544 F.2d 1070, 1082 (Ct. Cl. 1976) (“It is [the

government’s] taking of a license, without compensation, that is, under an eminent domain

theory, the basis for a suit under § 1498.”); Carter-Wallace, Inc. v. United States, 449 F.2d

1374, 1390 (Ct. Cl. 1971) (Nichols, J., concurring) (assessing a claim under § 1498 as a

claim “to recover just compensation for a taking under the power of Eminent Domain”);

Irving Air Chute Co. v. United States, 93 F. Supp. 633, 635 (Ct. Cl. 1950) (“The

Government urges, rightly, that 28 U.S.C.A. § 1498, is in effect, an eminent domain statute,

which entitles the Government to manufacture or use a patented article becoming liable to

pay compensation to the owner of the patent.”).

535 U.S. 722 (2002).

Id. at 739.

See Penn Cent. Transp. Co. v. New York City, 438 U.S. 104, 124 (1978) (identifying

“investment-backed expectations” as a factor in assessing whether a government regulation

results in a compensable taking of property under the Takings Clause).

Festo Corp., 535 U.S. at 739.

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 695

expectations” on par with property rights in land and chattels already secured

under the Takings Clause of the Constitution.

This conclusion, of course, is far too superficial and easy, and most agree

that the status of patents as constitutional private property is far from clear.

The Federal Circuit’s split decision in March 2006 in

Zoltek Corp. v. United

States

best illustrates the confusion on this issue. In Zoltek, the Federal

Circuit refused to apply the Takings Clause to patents, noting that “patent

rights are a creature of federal law.”

As such, patentees have only those

rights expressly provided by Congress, and § 1498, which mandates payment

to patentees following unauthorized uses by the government, revealed that

these statutory rights were not previously secured under the Constitution.

the court put it: “Had Congress intended to clarify the dimensions of the patent

rights as property interests under the Fifth Amendment, there would have been

no need for the new and limited sovereign immunity waiver” in § 1498.

This conclusion finds additional support in the Festo Court’s scolding of the Federal

Circuit for abrogating a long-standing patent infringement concept known as the doctrine of

equivalents. The Court concluded that the Federal Circuit “ignored the guidance of Warner-

Jenkinson

, which instructed that courts must be cautious before adopting changes that

disrupt the settled expectations of the inventing community.”

Id. Here, the Court was

referring to its holding in

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17

(1997), that nineteenth- and early twentieth-century infringement doctrines survived

Congress’s enactment of the 1952 Patent Act, ch. 950, 66 Stat. 792. See Warner-Jenkinson,

520 U.S. at 26. Thus,

Warner-Jenkinson and Festo established that the expectations

inherent in the patent since the nineteenth century are implicitly secured as constitutional

private property, although Congress is free to negate these expectations prospectively under

its plenary power to define the nature of the “exclusive Right” secured under Article I,

Section 8. See infra notes 59-63 and accompanying text (discussing McClurg v. Kingsland,

42 U.S. (1 How.) 202 (1843)).

442 F.3d 1345 (Fed. Cir. 2006) (per curiam), rehearing en banc denied, 464 F.3d 1335

(Fed. Cir. 2006).

Id. at 1352.

Zoltek raised a Fifth Amendment claim because part of the alleged infringement by the

government occurred in a foreign jurisdiction, and thus the government was immunized

from liability under § 1498(c). Id. at 1349.

Id. at 1352. In a concurring opinion, Judge Dyk reiterated this argument from the

majority

per curiam opinion in almost identical language, stating that “[p]atent rights are

creatures of federal statute,” and that the statutory framework of rights and remedies

provided to patentees precludes applying the Takings Clause to patents. See id. at 1370

(Dyk, J., concurring).

The canon prohibiting courts from construing statutes in a manner that makes them

superfluous militates in favor of this conclusion.

See 1A NORMAN J. SINGER, STATUTES AND

STATUTORY CONSTRUCTION § 25:2 (6th ed., 2002 rev.) (stating that “[n]o statute is intended

by the legislature to be wholly superfluous”);

see also United States v. Buffalo Pitts

Co., 234 U.S. 228, 233 (1914) (citing

McKeever with a similar remark that it was “affirmed

by this court”).

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 705

alleging an unconstitutional taking of his property without compensation.

McKeever claimed that the U.S. War Department manufactured and used two

of his patented inventions without his authorization.

The government

repeated its defense from

Cammeyer, claiming sovereign immunity and

arguing that patents, as special grants of legal privileges

from the government,

did not apply

against the government.

Relying explicitly on Cammeyer,

Burns, and McClurg, the McKeever court rejected this argument and firmly

placed patents within the scope of private property rights secured under the

Takings Clause.

The McKeever court agreed with the government that patents – representing

the “property in the mind-work of the inventor” – were not protected at

common law, and that their origin was found in the English Crown’s royal

prerogative to grant manufacturing monopolies.

The court noted that

England remained wedded to the view of a patent as “a grant” issuing solely

from “royal favor,” and therefore it “shall not exclude a use[] by the Crown.”

But this was not the law in the now-independent United States of America.

Contrary to the English patent practice, the

McKeever court pointed out,

American patents secured the “mind-work which we term inventions,” as

specifically authorized under the Copyright and Patent Clause in the

Constitution (what the court referred to as “our organic law”).

See McKeever, 14 Ct. Cl. at 416-17. Given the formal pleading requirements for

plaintiff property owners filing takings claims in the Court of Claims, McKeever was forced

to argue the legal fiction of an “implied contract” in his complaint. Id.; see also supra note

70 (explaining how landowners and patentees suing the government for a taking in the Court

of Claims had to claim an “implied contract” due to Congress’s use of imprecise language in

the Court of Claims’ 1855 enabling legislation).

McKeever was a Lieutenant in the U.S. Army, and he had invented a new cartridge

box that aided soldiers in carrying more ammunition and in retrieving this ammunition in

the field. He obtained two patents in 1873 for this invention. McKeever, 14 Ct. Cl. at 397.

See id. at 417-20 (discussing English political history and case law establishing that

the Crown was privileged in using patented inventions without authorization).

See id. at 422 (citing McClurg, Burns, and Cammeyer).

Id. at 417-18. This was an uncontroversial historical observation. See, e.g., Morton v.

N.Y. Eye Infirmary, 17 F. Cas. 879, 881 (C.C.S.D.N.Y. 1862) (No. 9,865) (noting that “[a]t

common law an inventor has no exclusive right to his invention or discovery”); Motte v.

Bennett, 17 F. Cas. 909, 913-14 (C.C.D.S.C. 1849) (No. 9,884) (Wayne, Circuit Justice)

(discussing history of patents as “privileges and monopolies” granted by “the kings of

England”);

see also Mossoff, Rethinking the Development of Patents, supra note 11, at

1259-76 (describing progenitor of modern patent system in English Crown’s practice of

granting manufacturing monopolies).

McKeever, 14 Ct. Cl. at 420.

Id.; see U.S. CONST. art. I, § 8 (“The Congress shall have Power . . . . [t]o promote the

Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors

the exclusive Right to their respective Writings and Discoveries.”).

706 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

The

McKeever court first analyzed the text of the Copyright and Patent

Clause as evidence of this fundamental distinction in patent law between the

English Crown’s

personal privilege and the American property right.

The

court explained that the language in this constitutional provision – the use of

the terms “right” and “exclusive,” the absence of the term “patent,” and the

absence of any express reservation in favor of the government – established

that the property rights secured in an American patent were not on the same

legal footing as the personal privileges secured by the English Crown.

This

conclusion was further buttressed by the fact that the Framers empowered

Congress, not the Executive, to secure an inventor’s rights – placing this

constitutional provision in Article I, not in Article II – which suggested they

viewed patents as important property rights secured by the people’s

representatives, not as a special grant issued by the prerogative of the

Executive.

Although the Framers did not state their reasons for securing

patents in the Constitution, the

McKeever court concluded that “they had a

clear apprehension of the English law, on the one hand, and a just conception,

on the other, of what one of the commentators on the Constitution has termed

‘a natural right to the fruits of mental labor.’”

Invoking this classic formulation of the natural right to property,

the

McKeever court then canvassed the federal government’s interpretation of the

again that patents protected important property rights, not special grants of

personal privilege. Accordingly, Congress’s enactment of the patent statutes,

the Executive’s use of patented articles via “express contracts,” and the

Judiciary’s interpretation of these statutes and contracts all “forbid the

assumption that this government has ever sought to appropriate the property of

See McKeever, 14 Ct. Cl. at 420-21; see also Belding v. Turner, 3 F. Cas. 84, 85

(C.C.D. Conn. 1871) (No. 1,243) (distinguishing the “personal privilege” granted in an

English patent from the “incorporeal chattel” or “personal estate” secured under the U.S.

patent laws).

McKeever, 14 Ct. Cl. at 421.

Id. at 420.

Id. Judge Nott did not provide a citation for this quote, but he was likely paraphrasing

from a recently published treatise.

See THEODORE D. WOOLSEY ET AL., THE FIRST CENTURY

OF THE

REPUBLIC: AREVIEW OF AMERICAN PROGRESS 443 (New York, Harper & Bros. 1876)

(discussing how inventors are given “some control over the reproduction of the fruits of

mental labor” on the basis of “public policy” and “the natural right of property, by authority

of which they might, if they chose, keep what they produce themselves instead of

disseminating it”).

See, e.g., Vanhorne’s Lessee v. Dorrance, 2 U.S. (2 Dall.) 304, 310 (1795) (Patterson,

J.) (“[T]he right of acquiring and possessing property, and having it protected, is one of the

natural, inherent, and unalienable rights of man. . . . No man would become a member of a

community, in which he could not enjoy the fruits of his honest labour and industry.”).

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 707

the inventor.”

The McKeever court expressly cited Cammeyer, Burns, and

McClurg – Supreme Court authority establishing the necessary predicates for

the

McKeever court to conclude that the Takings Clause secured patents as

constitutional private property.

But McKeever seemed to blithely sweep under the rug a fundamental

difference between patents secured under federal statute and traditional,

tangible property rights secured at common law. This difference in doctrinal

provenance – statute versus common law – would seem to suggest that patents

were insufficiently similar to traditional property rights to justify their

protection under the Takings Clause.

McKeever’s failure to acknowledge this

point, let alone address it, raises the specter that its reasoning was more the

result of hyperbolic rhetoric and late-nineteenth-century judicial formalism

than of substantive patent and constitutional doctrine.

In fact, this distinction between statutory and common law property was

well known in the nineteenth century, and the Supreme Court placed its

imprimatur on it in an 1834 copyright case.

Federal officials also invoked

this distinction in the patent context. At a minimum, it was implicit in both

Cammeyer and McKeever, in which the government defended its actions by

equating patent rights created under federal statute with patent privileges

granted by the English Crown.

Other federal officials defended themselves

against takings claims by invoking this distinction explicitly, such as in

Campbell v. James,

decided soon after McKeever. In Campbell, U.S. postal

officials defended their unauthorized use of a patented device for postmarking

and canceling hand-stamps by asserting several claims, including a challenge

to the patent’s validity that the Supreme Court ultimately found compelling.

Significantly for our purposes, the defendants also claimed that they were

immune from suit because patent rights were created by federal statutes

adopted and enforced by the federal government, and thus such legal rights

McKeever, 14 Ct. Cl. at 421; see also Mossoff, Reevaluating the Patent “Privilege,”

supra

note 11, at 992-98 (discussing how antebellum and mid-nineteenth-century courts

treated patents as property rights both procedurally and substantively).

McKeever, 14 Ct. Cl. at 422. Notably, a concurrence by Judge Hunt and a dissent by

Judge Davis, joined by Chief Judge Drake, all left untouched Judge Nott’s disquisition on

the nature of American patents as constitutional private property. Instead, judges Hunt,

Davis, and Drake contested only the damages set by Judge Nott for the government’s

unauthorized use of McKeever’s patented cartridge box. See id. at 431 (Hunt, J.,

concurring);

id. at 431-34 (Davis, J., dissenting).

Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 660-61 (1834) (holding that patents are not

secured as common law rights and are merely statutory rights created by Congress under the

authority granted to it under the Constitution).

See Cammeyer v. Newton, 94 U.S. 225, 234-35 (1876); McKeever, 14 Ct. Cl. at 420.

4 F. Cas. 1168 (C.C.S.D.N.Y. 1879) (No. 2,361), rev’d on other grounds, James v.

Campbell, 104 U.S. 356 (1881).

James, 104 U.S. at 382-83 (holding that the reissued patent was “inoperative and

void”).

708 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

were not enforceable against agents of the federal government in a federal

court.

The Campbell court found the defendants’ sovereign immunity argument

wanting in much the same manner as the

McKeever court did. Although there

is no evidence that the

Campbell court was aware of the McKeever decision,

Campbell relied on the same case law in summarizing the legal status of

patents: “The property in a patented invention stands the same as other

property, in this respect.”

By itself, of course, this proposition does not

refute defendants’ claim to sovereign immunity, but the

Campbell court

quickly drew the logical implication of this observation:

[The patent] was granted by express law of congress, pursuant to the

constitution, without which it could not exist. But, all property is upheld

by law, either expressly or impliedly enacted or adopted, all of which is

the law of the land, the same as the statutes upholding patents are. This

property, like all other private property recognized by law, is exempt

from being taken for public use without just compensation, by the

supreme law of the land.

100

The ease with which Cammeyer, Campbell, and McKeever consistently and

unequivocally held that patents were constitutional private property reveals the

extent to which this proposition was well grounded in the constitutional and

patent jurisprudence at that time.

But this is not the end of the story. The defendants appealed the

Campbell

court’s decision in favor of the patentee, and they ultimately succeeded in

convincing the Supreme Court that the patent at issue in the lawsuit was

invalid.

101

Since the Supreme Court resolved James v. Campbell on the issue

of the patent’s validity, it addressed only as dicta whether patents were secured

under the Takings Clause. Here, the

James Court agreed with the lower court,

stating “we have no doubt” that the “exclusive property in the patented

invention . . . cannot be appropriated or used by the government itself, without

just compensation, any more than it can appropriate or use without

compensation land.”

102

The evolution from Society and McClurg, through

Burns, Cammeyer, McKeever, and Campbell, appears to reach its apogee in

James. With the Supreme Court’s imprimatur, the conclusion seemed clear

that patents were secured as constitutional private property under the Takings

Clause.

See Campbell, 4 F. Cas. at 1172.

Id. (citing Burns and Cammeyer); cf. Carr v. Rice, 5 F. Cas. 140, 146 (C.C.S.D.N.Y.

1856) (No. 2,440) (charging a jury that the first inventor has prior title to any subsequent

inventors and that “[p]atent interests are not distinguishable, in this respect, from other kinds

of property”).

100

Campbell, 4 F. Cas. at 1172.

101

See James, 104 U.S. at 382-83.

102

Id. at 358.

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 709

Yet

James ultimately sowed doubt where McKeever and Campbell had

found clarity. Although

James acknowledged that patents are property within

the ambit of the Takings Clause, it proceeded to undermine the second

requirement for securing patents under the Constitution – questioning whether

there was a federal court authorized to rule on this constitutional claim by a

patentee. Apparently forgetting the Court’s own prior decisions on this issue,

Justice Bradley mused in his

James opinion “whether such an action can be

sustained” given the absence of a statute granting jurisdiction to a federal court

to hear a takings claim by a patentee.

103

Admittedly, it is possible that James implicitly reversed the earlier cases, but

the full context of Justice Bradley’s remarks belies this suggestion. First, it is

revealing that Justice Bradley cited only a single case in support of this

observation; it was not even a patent case, but rather one involving an estoppel

defense in a land dispute.

104

It is unlikely that the James Court intended to

overrule

McKeever, Cammeyer, Burns, or McClurg when it acted as if this

jurisprudence, reaching back to the antebellum era, did not even exist. In fact,

the absence of any references to

McKeever, Cammeyer, Burns, or McClurg is

striking, particularly given that the circuit court cited

Burns and Cammeyer in

the decision on appeal.

Second, and more significant, Justice Bradley’s musings were only dicta, as

the Court ended its brief discussion of the takings issue by noting that “the

conclusion which we have reached in this case does not render it necessary to

decide this question.”

105

Perhaps the Justices did not feel compelled to review

the Court’s own precedents on this constitutional issue given that it was

unnecessary to decide the case before them. In any event, it is difficult to

argue that these remarks were intended to overrule the prior patent takings

jurisprudence when they were made in dicta and without any consideration of

the substantial precedent directly on point.

106

In the end, though, Justice

Bradley’s unprecedented musings succeeded in muddying the waters, and

subsequent cases surprisingly relied on his dicta, treating it as part of the

holding of

James. The result was a spat of Supreme Court cases that called

into question the right of patentees to sue under the Takings Clause,

disregarding or simply missing the substantial pre-

James precedent directly

addressing this important constitutional issue.

107

103

Id. at 359.

104

Id. (citing Carr v. United States, 98 U.S. 433 (1878)).

105

Id.

106

Professor Cotter makes this same point, but for different effect. He accepts Justice

Bradley’s musings about patents and the Takings Clause at face value, and thus he too

misses all of the pre-James jurisprudence. Consequently, he mistakenly questions the

doctrinal significance of

James as setting forth any basis for patentees to claim a taking

upon an unauthorized use by the government.

See Cotter, supra note 2, at 543.

107

See, e.g., Palmer v. United States, 128 U.S. 262 (1888) (holding that patentees could

not sue except on the basis of a contract with the government, citing only

Burns);

710 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

Of course, it is important to recognize that nineteenth-century jurisprudence

was not monolithic in favor of securing patents under the Takings Clause.

There are some decisions that suggested otherwise, such as Judge Blatchford’s

allusion in 1869 that the U.S. government retained an implied reservation to

use a patent.

108

As in James, these remarks were not necessary to resolve the

case, as Judge Blatchford recognized that he did “not intend . . . to intimate an

opinion as to whether the government is or is not excluded from the right to

make for itself and use the patented invention without the consent of the

patentee.”

109

He did, however, reveal his personal view on the matter by

referencing a recently decided English case holding that British patents were a

“sole privilege” granted by “the crown,”

110

suggesting that American patentees

stood on equal legal footing as English patentees when faced with

unauthorized governmental uses of their inventions. Notably,

McKeever

recognized this distinction between English royal privileges and American

property rights as one of the principal differences between U.S. and British

patent law, concluding that American patents were secured under the Takings

Clause.

111

Notwithstanding Judge Blatchford’s minority view that patents were special

grants of privilege, the substance of nineteenth-century patent law followed the

logical progression necessary to secure patents under the Takings Clause. In

antebellum cases, such as

McClurg, the Supreme Court established that patents

were property rights on par with tangible property rights.

112

On the basis of

this doctrinal classification, the Court recognized in

Burns and Cammeyer that

the Court of Claims had jurisdiction to hear a patentee’s claim for unauthorized

uses by the government.

113

This evolution reached its climax in McKeever and

Campbell, in which both courts held that patents were constitutional private

property secured under the Takings Clause.

114

Although the James Court

muddied these clear waters when it forgot its own case law on the

jurisdictional issue, it still recognized that patents were property rights within

the scope of the Takings Clause.

115

Aside from Campbell’s reversal on patent

validity grounds, none of these nineteenth-century decisions have been

Schillinger v. United States, 155 U.S. 163 (1894) (holding, without any acknowledgement

Burns, Cammeyer, or McKeever, that patentees were precluded from suing under the

Takings Clause); Crozier v. Fried. Krupp Aktiengesellschaft, 224 U.S. 290 (1912)

(following the

Schillinger holding and citing only cases decided after James).

108

Heaton v. Quintard, 11 F. Cas. 1008, 1009 (C.C.S.D.N.Y. 1869) (No. 6,311).

109

Id.

110

Id. (citing Feathers v. The Queen, 12 Law T., N.S. 114 (1865)).

111

See supra notes 84-93 and accompanying text.

112

See supra notes 59-67 and accompanying text.

113

See supra notes 68-78 and accompanying text.

114

See supra notes 79-93, 96-100 and accompanying text.

115

See supra notes 102-07 and accompanying text.

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 711

reversed or limited in subsequent years.

116

The nineteenth-century

jurisprudence was quite clear: patents were private property rights secured

under the Constitution.

Somehow this constitutional proposition is now long forgotten, resulting in

courts and scholars today treating the issue as one that is relatively novel and

vague. This raises an interesting question: why has the historical protection of

patents as constitutional private property become a forgotten legal artifact?

Although answering this question in its entirety would require an article in its

own right, this Article will conclude with some observations as to how this

situation might have come to pass as a matter of intellectual history.

III. P

ATENTS, PROPERTY AND CONSTITUTIONAL PRIVATE PROPERTY –

AST AND PRESENT

The nineteenth-century jurisprudence discussed in this Article has not been

purposefully buried or neglected due to a nefarious conspiracy by modern anti-

property scholars and jurists. The cases are easily found through standard legal

research; in fact, twentieth-century courts and scholars have repeatedly cited to

McKeever, McClurg, and the other nineteenth-century decisions. McKeever, in

particular, is often cited for procedural issues or for the portion of its decision

addressing how courts should compute damages for patent infringement.

117

Yet, despite this obvious awareness of the

McKeever opinion, its substantial

discussion applying the Takings Clause to patents has gone completely

unnoticed in all modern judicial decisions, as well as in modern takings and

patent scholarship. What explains how this nineteenth-century jurisprudence

applying the Takings Clause to patents has fallen into such disrepute in the

modern era?

An easy doctrinal answer is that Congress mooted this jurisprudence with

the Tucker Act.

118

Enacted in 1887, the Tucker Act did not address patents

116

In fact, some of these cases are very much alive and in play in contemporary

intellectual property disputes. As recently as 2003, Supreme Court Justices argued

extensively over the scope of the McClurg holding in adjudicating a challenge to the 1998

See Eldred v. Ashcroft, 537 U.S. 186 (2003).

117

See, e.g., United States v. Buffalo Pitts Co., 234 U.S. 228, 233 (1914) (citing

McKeever for proposition that patentees may sue the government for unauthorized uses);

Bethlehem Steel Co. v. United States, 42 Ct. Cl. 365, 376 (1907) (same). Courts and

scholars, however, mostly rely on McKeever for its decision concerning how patent-

infringement damages should be assessed by courts on an implied-in-fact contract theory.

See, e.g., International Harvester Co. of America v. United States, 72 Ct. Cl. 707, 714

(1931); Lionel Marks Lavenue,

Patent Infringement Against the United States and

Government Contractors Under 28 U.S.C. § 1498 in the United States Court of Federal

Claims

, 2 J. INTELL. PROP. L. 389, 409-10 (1995); see also Amy L. Landers, Let the Games

Begin: Incentives to Innovation in the New Economy of Intellectual Property Law

, 46 SANTA

CLARA L. REV. 307, 317 (2006).

118

Act of Mar. 3, 1887, ch. 359, 24 Stat. 505 (codified as amended in 28 U.S.C. §§ 1491-

1509 (2000 & Supp. IV 2004)).

712 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

specifically; it granted general jurisdiction to the Court of Claims to hear “[a]ll

claims founded upon the Constitution of the United States or any law of

Congress” (with a few listed exceptions).

119

This confirms that there was

widespread concern in the late nineteenth century that the Court of Claims’

1855 enabling legislation fell short of establishing jurisdiction over cases

concerning constitutional violations of property and contract rights.

120

In the

early twentieth century, Congress twice amended the Tucker Act to provide

specifically for the right of patentees to sue the government in the Court of

Claims for unauthorized uses of their property.

121

This suggests that patentees

lacked constitutional security for their property until Congress enacted these

patent-specific provisions. The Federal Circuit ran with this doctrinal

explanation in its recent decision in

Zoltek, relying on the Tucker Act to deny

securing patents under the Takings Clause.

122

The Tucker Act holds sway over

modern courts and scholars, leading them away from rediscovering the

relevant historical jurisprudence on patents as constitutional private

property.

123

Yet once this nineteenth-century jurisprudence has been rediscovered, the

Tucker Act loses its explanatory power. In fact, this legislation raises more

questions than it answers, because the committee report for the 1910 patent-

related amendment to the Tucker Act expressly states that the federal

government was using patents without authorization “in flat violation of [the

Takings Clause] and the decisions of the Supreme Court.”

124

In support of this

claim, the committee repeatedly cited and quoted from these nineteenth-

century decisions, such as

Cammeyer and Burns, as well as McKeever and

others.

125

In the extensive and far-ranging congressional debates, the

amendment’s sponsor, Representative Currier, emphasized that the legislation

“does not create any liability; it simply gives a remedy upon an existing

119

Id.

120

See supra note 70 and accompanying text.

121

Act of July 1, 1918, ch. 114, 40 Stat. 704, 705 (1918) (codified as amended in 28

U.S.C. § 1498 (2000)); Act of June 26, 1910, ch. 423, 36 Stat. 851, 851-52 (1910) (codified

as amended in 28 U.S.C. § 1498 (2000)); see also supra notes 20-21 and accompanying text

(discussing 28 U.S.C. § 1498 and its application by the courts).

122

See supra notes 27-30 and accompanying text.

123

See, e.g., Zoltek Corp. v. United States, 464 F.3d 1335, 1337 (Fed. Cir. 2006)

(Newman, J., dissenting) (stating that, prior to the 1910 patent-related amendments to the

Tucker Act, “although patents were property, the only remedy for governmental

infringement was by appeal to Congress”); Lavenue,

supra note 117, at 395-96 (stating that

before the Tucker Act, there was little patentees could do “when the government converted

[their] intellectual property”).

124

H.R. REP. NO. 61-1288, at 3 (1910).

125

See id. at 1-4.

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 713

liability.”

126

Ultimately, Congress intended the patent-related amendments to

the Tucker Act to

ratify the nineteenth-century jurisprudence establishing that

patents were constitutional private property.

Why then enact a patent-related amendment to the Tucker Act in 1910? It

appears that this legislation was based in some procedural questions

concerning how patentees could sue the government for unauthorized uses of

their property, revealing the extent to which Justice Baldwin’s musings in

James

127

– and in its progeny, such as Schillinger, Crozier, and others

128

–

caused chaos in patent takings doctrine. Under the 1855 enabling legislation

creating the Court of Claims, patentees had recourse to this court for a takings

claim only by asserting an “implied contract” with the government,

129

and the

1910 congressional debates reveal that such legal fictions were losing their

appeal by the turn of the twentieth century.

130

(Interestingly, patentees were

not the only property owners required to employ such legal fictions under the

1855 enabling legislation. Landowners also had to assert the legal fiction of an

“implied contract” to sue the government in the Court of Claims for a taking of

their property.

131

) The only other means of remuneration for unauthorized

governmental uses of patented inventions was through private acts of

legislation, a device, the congressmen noted, proving less and less certain in

the modern age.

132

126

45 CONG. REC. 8755, 8756 (1910). Later in the debate, Representative Lenroot

responded to a criticism of the amendment that it “creates a favored class” by stating that

“this bill, giv[es] a remedy for a right that does exist.” Id. at 8770.

127

See supra notes 103-06 and accompanying text.

128

See supra note 107 and accompanying text.

129

See supra note 70 and accompanying text.

130

See 45 CONG. REC. 8780 (reporting a colloquy between Representatives Dalzell and

Mann on the difficulties in defining an “implied contract,” as distinguished from an express

contract or a straightforward violation of a property right); H.R. REP. NO. 61-1288, at 3

(describing past reliance by patentees on express or implied contract claims in suing the

government in the Court of Claims).

Schillinger v. United States, the majority and dissenting Justices specifically clashed

over the nature of the “implied contract” claim, as used by patentees.

See 155 U.S. 163, 172

(1894);

id. at 175-76 (Harlan, J., dissenting). After surveying some of the relevant case law,

the dissent accused the majority of failing to recognize that an implied contract claim

permitted a patentee to sue “for the value of specific property taken for public use by [a

government] officer . . . even if the taking was originally without the consent of the owner.”

Id. at 175-76 (Harlan, J., dissenting). In other words, an implied contract claim was a legal

fiction used by the courts to overcome the jurisdictional limitations created by the 1855

enabling legislation.

See supra note 70. This was a point lost on courts in the post-James

era.

131

See, e.g., United States v. Great Falls Mfg. Co., 112 U.S. 645, 656-57 (1884).

132

See 45 CONG. REC. 8758 (statement of Rep. Graham) (noting that patentees “stand

knocking at the doors of Congress vainly seeking justice for twenty, thirty, or fifty years”);

id. at 8767 (statement of Rep. Goldfogle) (opposing the bill, but agreeing with its

714 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

There was little doubt, though, among the congressmen supporting the 1910

patent bill that the Court of Claims was supposed to have been the venue in

which patentees could seek redress for “piracy” by the state.

133

Throughout the

congressional debates, congressmen repeatedly referenced the nineteenth-

century jurisprudence applying the Takings Clause to patents as evidence that

the Court of Claims was supposed to secure this vital property right under the

Constitution.

134

Thus, it is somewhat startling that modern courts and patent

scholars, who regularly cite to these congressional records, seem to miss these

omnipresent references to the nineteenth-century jurisprudence on patent

takings.

135

Although initially appealing as an answer to our conundrum, the Tucker Act

ultimately leaves us with even more questions. When the

Zoltek court cited to

the Tucker Act and its legislative history, as well as when patent and takings

scholars have similarly cited to this legislation, they should have discovered

the substantial references to the pre-

James jurisprudence applying the Takings

Clause to patents. How is it possible that they have missed this jurisprudence

both in the case reporters, and in the numerous quotes and cites in the

legislative history to the Tucker Act?

One possible answer is that the issue is not doctrinal, but rather conceptual.

In other words, courts and scholars have interpreted the Tucker Act in a

particular way because it fits better with their modern conception of property,

which is quite distinct from the conception of property in the nineteenth

century. Although this is certainly not the only reason, one explanation for the

proponents that the “work is too great in this House, and you do not get the time within the

brief period that Congress meets to consider each and every claim” by patentees).

133

Id. at 8783 (statement of Rep. Burke) (claiming that nothing could “justify this great

Government in leading in a practice of piracy in patents, in invading the rights and

despoiling the property of the genius”); id. at 8758 (statement of Rep. Graham) (“It is a bill

to require the United States Government to live up to the eighth commandment, ‘Thou shalt

not steal.’ What right have they to steal a man’s patent?”); see also infra note 162 (citing

nineteenth-century cases in which infringers were called “pirates”).

134

Representative Dalzell, for instance, declared at one point that “we all know, that in

the framing of the law which gives jurisdiction to the Court of Claims there was no intent to

preserve to the United States a right to infringe a patent by failing to provide in the law for a

remedy for the infringement of that patent.” 45 C

ONG. REC. 8780. Representative Dalzell

went on to quote at length from

Cammeyer, James, and Palmer. Id.

Later in the debate, Representative Olmsted would repeat the same point: “Other

individuals have been awarded the right to go into the Court of Claims and recover their

indebtedness from the Government, and I see no reason why the owner of the patent should

not have the same privilege, where his patent is taken without his consent.”

Id. at 8781-82.

135

See, e.g., Zoltek Corp. v. United States, 442 F.3d 1345, 1351 (Fed. Cir. 2006) (citing

the committee report for the 1910 amendment); Daniel R. Cahoy,

Treating the Legal Side

Effects of Cipro®: A Reevaluation of Compensation Rules for Government Takings of

Patent Rights, 40 AM. BUS. L.J. 125, 144-45 (2002) (discussing 1910 and 1918 amendments

and citing their legislative history); Lavenue,

supra note 117, at 411 (discussing 1910

amendment and citing its legislative history).

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 715

eclipse of the nineteenth-century jurisprudence on patents as constitutional

private property is that it resulted from the intellectual history on property that

divides the nineteenth from the twentieth century.

136

As scholars have recognized, the turn of the twentieth century brought with

it a revolution in both political and legal theory. In politics, Progressivism

came into vogue,

137

and in law, Legal Realism soon reigned supreme.

138

This

political and legal sea change affected many legal doctrines, especially

property.

139

Following Wesley Hohfeld’s re-conceptualization of legal rights

as comprising analytically distinct, social relationships,

140

legal realists

redefined property as a set of “social relations,”

141

which later courts and

136

See Mossoff, Rethinking the Development of Patents, supra note 11, at 1257 (“The

validity or significance of constitutional, social, economic or institutional analyses of legal

history is not in doubt; intellectual history is not exclusive of these other approaches to

historical analysis.”).

137

See, e.g., HERBERT CROLY, THE PROMISE OF AMERICAN LIFE (1909); FRANK J.

OODNOW, POLITICS AND ADMINISTRATION (1900); WOODROW WILSON, THE NEW FREEDOM

(1913).

138

See, e.g., AMERICAN LEGAL REALISM (William W. Fisher III et al. eds., 1993); NEIL

DUXBURY, PATTERNS OF AMERICAN JURISPRUDENCE 65-159 (1995); LAWRENCE M.

RIEDMAN, A HISTORY OF AMERICAN LAW 688-89 (2d ed. 1985); Brian Leiter, American

Legal Realism

, in THE BLACKWELL GUIDE TO THE PHILOSOPHY OF LAW AND LEGAL THEORY

50 (Martin P. Golding & William A. Edmundson eds., 2005); Joseph William Singer, Legal

Realism Now

, 76 CAL. L. REV. 465 (1988) (reviewing LAURA KALMAN, LEGAL REALISM AT

YALE, 1927-1960 (1986)).

139

See GREGORY S. ALEXANDER, COMMODITY & PROPRIETY: COMPETING VISIONS OF

PROPERTY IN AMERICAN LEGAL THOUGHT, 1776-1970, at 311-51 (1997); Claeys, supra note

13, at 1604-44; Thomas W. Merrill,

Property and the Right to Exclude, 77 NEB. L. REV.

730, 737-39 (1998) [hereinafter Merrill,

Right to Exclude]; Thomas W. Merrill & Henry E.

Smith,

What Happened to Property in Law and Economics?, 111 YALE L.J. 357, 364-66

(2001).

See generally Adam Mossoff, What Is Property? Putting the Pieces Back Together,

45 A

RIZ. L. REV. 371 (2003); Laura S. Underkuffler, On Property: An Essay, 100 YALE L.J.

127 (1990).

140

See Wesley Newcomb Hohfeld, Fundamental Legal Conceptions as Applied in

Judicial Reasoning

, 26 YALE L.J. 710 (1917) [hereinafter Hohfeld, Fundamental Legal

Conceptions

]; Wesley Newcomb Hohfeld, Some Fundamental Legal Conceptions as

Applied in Judicial Reasoning

, 23 YALE L.J. 16 (1913).

141

Felix S. Cohen, Dialogue on Private Property, 9 RUTGERS L. REV. 357, 361-63

(1954);

see also RESTATEMENT (FIRST) OF PROPERTY ch. 1, introductory cmt. (1936) (stating

that “[t]he word ‘property’ is used in this Restatement to denote legal relations between

persons with respect to a thing”); Wallace H. Hamilton & Irene Till,

Property, in 12

NCYCLOPAEDIA OF THE SOCIAL SCIENCES 528, 528 (Edwin R.A. Seligman & Alvin Johnson

eds., 1934) (defining “property” as “a euphonious collocation of letters which serves as a

general term for the miscellany of equities that persons hold in the commonwealth”);

Hohfeld,

Fundamental Legal Conceptions, supra note 140, at 743 (explaining that “the

supposed single right

in rem . . . really involves as many separate and distinct ‘right-duty’

relations as there are persons subject to a duty”).

716 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

scholars phrased as a “bundle of rights.”

142

Ultimately, if property reflects a

bundle of socially contingent rights, then the most essential right within this

bundle must be the

right to exclude others in society, a conclusion embraced

by many courts and scholars without question today.

143

This revolution impacted intellectual property as well.

144

Ultimately,

patents were defined solely as securing the right to exclude.

145

Courts and

scholars have justified the patent’s right to exclude on the grounds that it

provides an incentive to invent,

146

which achieves social utility by advancing

the constitutional purpose in promoting the useful arts.

147

In the nineteenth century, some courts and commentators presaged this

modern, post–legal realist view of patents,

148

but they did not reflect the

142

See, e.g., Kaiser Aetna v. United States, 444 U.S. 164, 176 (1979) (referring to “the

bundle of rights that are commonly characterized as property”); A

CKERMAN, supra note 12,

at 26-29 (discussing the “scientific” analysis of property as a “bundle” of rights).

143

See, e.g., Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S.

666, 673 (1999) (“The hallmark of a protected property interest is the right to exclude

others.”); Kaiser Aetna, 444 U.S. at 176 (stating that the right to exclude is “one of the most

essential sticks in the bundle of rights that are commonly characterized as property”);

Merrill, Right to Exclude, supra note 139, at 730 (“[T]he right to exclude others is more

than just ‘one of the most essential’ constituents of property – it is the

sine qua non.”).

144

See Mossoff, supra note 139, at 413-27 (discussing the impact of legal realists’ re-

conceptualization of property on myriad intellectual property doctrines).

145

See 35 U.S.C. § 154(a)(1) (2000) (stating that a patent secures “the right to exclude

others from making, using, offering for sale, or selling the invention”); Connell v. Sears,

Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (“[A] patent is a form of property

right, and the right to exclude recognized in a patent is but the essence of the concept of

property.”); Carl Schenck, A.G. v. Nortron Corp., 713 F.2d 782, 786 n.3 (Fed. Cir. 1983)

(“The patent right is but the right to exclude others, the very definition of ‘property.’”);

see

also

FRANK Y. GLADNEY, RESTRAINTS OF TRADE IN PATENTED ARTICLES 18 (1910)

(describing the “patent law right” as solely the right to “exclude others from making, using

and selling” the patented invention); Dan L. Burk & Mark A. Lemley,

Policy Levers in

Patent Law

, 89 VA. L. REV. 1575, 1665 (2003) (remarking that “the patent right to exclude

has been regarded as a nearly absolute property rule”); Frank H. Easterbrook,

Intellectual

Property Is Still Property

, 13 HARV. J.L. & PUB. POL’Y 108, 109 (1990) (“Patents give a

right to exclude, just as the law of trespass does with real property.”); F. Scott Kieff & Troy

A. Paredes, The Basics Matter: At the Periphery of Intellectual Property, 73 GEO. WASH. L.

EV. 174, 198 (2004) (explaining that “patents only give a right to exclude” and that any

“right to use is derived from sources external to IP law”).

146

See, e.g., Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive

Rights and Experimental Use

, 56 U. CHI. L. REV. 1017, 1024-28 (1989); Edmund W. Kitch,

The Nature and Function of the Patent System, 20 J.L. & ECON. 265 (1977).

147

See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146-47

(1989); Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966).

148

See, e.g., Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 549 (1852) (explaining that

patents represent only a “right to exclude” others from this special “franchise” grant); Am.

Hide & Leather Splitting & Dressing Mach. Co. v. Am. Tool & Mach. Co., 1 F. Cas. 647,

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 717

dominant view of patents as property.

149

The first four patent statutes defined

patents as property in substantive terms – as the exclusive rights to make, use

and dispose of one’s invention.

150

Nineteenth-century courts also defined

patents as express legal titles by which “inventors shall exclusively enjoy, for a

limited season, the fruits of their inventions,” by “authorizing them alone to

manufacture, sell, or practice what they have invented.”

151

It was this

conception of patents that linked them conceptually with other tangible

property entitlements.

152

In this way, courts sought to secure a patentee’s

651 (C.C.D. Mass. 1870) (No. 302) (stating that a patent is based only in “a statutory right, a

public grant of a monopoly”); Letter from Thomas Jefferson to Isaac McPherson (Aug. 13,

1813), in 13 THE WRITINGS OF THOMAS JEFFERSON 326, 334-35 (Andrew A. Lipscomb &

Albert Ellery Bergh eds., 1905) (declaring that the “embarrassment of an exclusive patent”

was justified only because these “monopolies of invention” served the “benefit of society”).

149

See generally Mossoff, Reevaluating the Patent “Privilege,” supra note 11

(surveying nineteenth-century case law, treatises, and commentary on the nature of patents

as property).

150

See Patent Act of 1870, ch. 230, § 22, 16 Stat. 198, 201 (repealed 1952) (providing

that “every patent shall contain a short title or description of the invention or discovery,

correctly indicating its nature and design, and a grant to the patentee, his heirs or assigns, for

the term of seventeen years, of the exclusive right to make, use, and vend the said invention

or discovery throughout the United States and the Territories thereof”); Patent Act of 1836,

ch. 357, § 11, 5 Stat. 117, 121 (repealed 1870) (providing that “every patent shall be

assignable in law” and that this “conveyance of the exclusive right under any patent, to

make and use, and to grant to others to make and use, the thing patented” must be recorded

in the Patent Office); Patent Act of 1793, ch. 11, § 1, 1 Stat. 318, 321 (repealed 1836)

(providing that a patent secures “the full and exclusive right and liberty of making,

constructing, using, and vending to others to be used, the said invention or discovery”);

Patent Act of 1790, ch. 7, § 1, 1 Stat. 109, 110 (repealed 1793) (providing that a patent

secures “the sole and exclusive right and liberty of making, constructing, using and vending

to others to be used, the said invention or discovery”).

151

Clark Patent Steam & Fire Regulator Co. v. Copeland, 5 F. Cas. 987, 988

(C.C.S.D.N.Y. 1862) (No. 2,866);

see also Birdsall v. McDonald, 3 F. Cas. 441, 444

(C.C.N.D. Ohio 1874) (No. 1,434) (“Inventors are a meritorious class of men. . . . Their

patents are their title deeds, and they should be construed in a fair and liberal spirit . . . .”);

Earth Closet Co. v. Fenner, 8 F. Cas. 261, 263 (C.C.D.R.I. 1871) (No. 4,249) (explaining

that a “patent is prima facie proof of title”); Evans v. Kremer, 8 F. Cas. 874, 875 (C.C.D. Pa.

1816) (No. 4,565) (explaining that a plaintiff-patentee must “be prepared to maintain his

title, in relation to the question of original discovery”).

152

See, e.g., McKeon v. Bisbee, 9 Cal. 137, 143 (1858) (“Property is the exclusive right

of possessing, enjoying, and disposing of a thing.”); Eaton v. Boston, Concord & Montreal

R.R., 51 N.H. 504, 511 (1872) (“‘Property is the right of any person to possess, use, enjoy,

and dispose of a thing.’” (quoting Wynehamer v. People, 13 N.Y. 378, 433 (1856)));

In re

Flintham, 11 Serg. & Rawle 16, 24 (Pa. 1823) (“Property without the power of use and

disposition is an empty sound.”); W

ILLIAM BLACKSTONE, 1 COMMENTARIES *138 (“The third

absolute right . . . is that of property: which consists in the free use, enjoyment, and disposal

of all his acquisitions . . . .”); STEPHEN MARTIN LEAKE & A.E. RANDALL, AN ELEMENTARY

DIGEST OF THE LAW OF PROPERTY IN LAND 1 (2d ed. 1909) (“Rights to things, jura in rem,

718 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

“substantive rights” – the “right to manufacture, the right to sell, and the right

to use” the patented invention.

153

In sum, the patent was the legal means for

inventors to reap what they had sown, because invention “requires mind,

ingenuity, labor, time, and expense” in researching and developing a new idea

that succeeds in both practical application and in the marketplace.

154

This nineteenth-century conception of patents as serving to reward labor and

remunerate the expense of inventive activities reflected a more substantive

conception of property dominant at that time. It was a moral concept and legal

right predicated on the labor-based theories of the natural rights philosophers.

As Daniel Webster declared in the House of Representatives in 1824:

And, at this time of day, and before this Assembly, . . . he need not argue

that the right of the inventor is a high property; it is the fruit of his mind –

it belongs to him more than any other property – he does not inherit it –

he takes it by no man’s gift – it peculiarly belongs to him, and he ought to

be protected in the enjoyment of it.

155

Patents certainly served the complementary policy of promoting scientific

progress,

156

but patent law was not shielded from the influence exerted on

have for their subject some material thing, as land or goods, which the owner may use or

dispose of in any manner he pleases within the limits prescribed by the terms of his right.”);

see also Mossoff, supra note 139, at 403-39 (discussing the substantive conception of

property that was dominant in the nineteenth century and which encompassed the

possessory rights of acquisition, use, and disposal).

153

Adams v. Burke, 84 U.S. 453, 456 (1873).

154

Buck v. Hermance, 4 F. Cas. 550, 555 (C.C.N.D.N.Y. 1849) (No. 2,082) (Nelson,

Circuit Justice);

see also Birdsall, 3 F. Cas. at 444 (“Patent laws are founded on the policy

of giving to [inventors] remuneration for the fruits, enjoyed by others, of their labor and

their genius.”); Page v. Ferry, 18 F. Cas. 979, 983 (C.C.E.D. Mich. 1857) (No. 10,662)

(“The exclusive privilege is not conferred merely as a reward of genius, and for the

encouragement of useful inventions and improvements in arts and manufactures, but also

embraces the public benefit.”); Brooks v. Bicknell, 4 F. Cas. 247, 251 (C.C.D. Ohio 1843)

(No. 1,944) (McLean, Circuit Justice) (stating that “a man should be secured in the fruits of

his ingenuity and labor,” and that “it seems difficult to draw a distinction between the fruits

of mental and physical labor”); Blanchard v. Sprague, 3 F. Cas. 648, 650 (C.C.D. Mass.

1839) (No. 1,518) (Story, Circuit Justice) (explaining that patents are no longer regarded in

England or America as monopolies, but rather “[p]atents for inventions are now treated as a

just reward to ingenious men, and as highly beneficial to the public”).

155

41 ANNALS OF CONG. 934 (1824). Webster’s primary interlocutor in this House

debate was Representative Buchanan, who agreed with Webster that the law should “protect

the just rights of patentees” by securing “the property which an inventor has in that which is

the product of his own genius.”

Id. at 936.

156

Cf. Eldred v. Ashcroft, 537 U.S. 186, 212 n.18 (2003) (emphasizing in copyright law

the historical “complementary” relationship between the dual policies of rewarding labor

and promoting the progress of new creative works).

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 719

nineteenth-century legal doctrines generally by the natural rights conception of

property.

157

For these reasons, it was common for nineteenth-century courts to draw

doctrinal and policy connections between traditional, tangible property rights

and patents.

158

The Campbell court’s declaration in the late 1870s that the

“property in a patented invention stands the same as other property” was

hardly a novel or controversial claim.

159

As early as 1846, juries were

instructed in patent infringement trials that “[a]n inventor holds a property in

his invention by as good a title as the farmer holds his farm and flock.”

160

the government trespassed on a farm or confiscated a farmer’s flock of geese,

then the property owner could sue under the relevant state or federal

constitutional provision.

161

Nineteenth-century federal courts, such as in

Burns, Cammeyer, McKeever, and Campbell, embraced the logical application

of such reasoning to patents: if the federal government trespassed on a

patentee’s property through the unauthorized use of a patented invention – if

the government committed “piracy”

162

– then the patentee should have the

same right to sue for satisfaction under the Takings Clause.

157

See generally Claeys, supra note 13; Mossoff, supra note 139, at 427-38; Mossoff,

Reevaluating the Patent “Privilege,” supra note 11.

158

See supra notes 54-56 and accompanying text.

159

Campbell v. James, 4 F. Cas. 1168, 1172 (C.C.S.D.N.Y. 1879) (No. 2,361) (citing

Burns and Cammeyer).

160

Hovey v. Henry, 12 F. Cas. 603, 604 (C.C.D. Mass. 1846) (No. 6,742). A year

earlier, Justice Woodbury would embrace this same justification for classifying patents as

property:

“[A] liberal construction is to be given to a patent, and inventors sustained, if

practicable, . . . [as] only in this way can we protect intellectual property, the labors of

the mind, productions and interests as much a man’s own, and as much the fruit of his

honest industry, as the wheat he cultivates, or the flocks he rears.”

Davoll v. Brown, 7 F. Cas. 197, 199 (C.C.D. Mass. 1845) (No. 3,662). This was the first

time an American court used the phrase “intellectual property” in a patent law decision.

See

Justin Hughes, Copyright and Incomplete Historiographies: Of Piracy, Propertization, and

Thomas Jefferson

, 79 S. CAL. L. REV. 993, 1006 & n.39 (2006).

161

See, e.g., Pumpelly v. Green Bay Co., 80 U.S. (13 Wall.) 166, 181 (1871) (holding

that “where real estate is actually invaded by superinduced additions of water, earth, sand,

or other material . . . so as to effectually destroy or impair its usefulness, it is a taking,

within the meaning of the Constitution”); Gardner v. Trustees of Newburgh, 2 Johns. Ch.

162, 165 (N.Y. Ch. 1816) (Kent, Chancellor) (holding that a riparian owner has a “right to

the use and enjoyment of the stream of water” that requires just compensation if interfered

with by the government).

162

See, e.g., Am. Diamond Rock Boring Co. v. Sullivan Mach. Co., 1 F. Cas. 641, 643

(C.C.S.D.N.Y. 1877) (No. 298) (recognizing that a mechanical equivalent “is a piracy of the

principle, and a violation of the patent”); Page v. Ferry, 18 F. Cas. 979, 985 (C.C.E.D. Mich.

1857) (No. 10,662) (charging the jury that if the defendant’s machine “obtained by

mechanical equivalents [the same result as plaintiff-patentee’s invention], it would certainly

constitute an infringement” because “it is a piracy of the principle”); Goodyear v. Cent. R.

720 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

This connection between tangible property and patents is evident only

insofar as one enters the conceptually distinct world of the nineteenth century,

which operated within a different analytical framework in adjudicating both

patent and property rights. This suggests an answer to the question posed at

the very beginning of this Article: Why are modern courts and scholars so

consistently wrong about the historical protection of patents as constitutional

private property? The answer, at least in part, may be that they are unable to

see the historical jurisprudence given the vast conceptual divide between the

legal-realist twentieth century and the natural-rights nineteenth century.

In our post–legal realist world, scholars and courts have excluded from the

legal definition of patents the use-rights necessary to conclude that

unauthorized uses by the government necessarily violate a patentee’s

constitutional private property under the Takings Clause. This tendency is

evident not only in patent law, but also in the takings jurisprudence that has

developed in the land cases that have dominated the Court’s docket in the past

few decades. In these cases, the Court has followed modern property theory

lockstep, focusing on the

right to exclude as the primary right in the bundle of

rights that it secures as constitutional private property.

163

In the world of

tangible property rights, the right to exclude is breached by a trespass – a

physical dispossession from one’s land.

164

Accordingly, the Court consistently

uses

dispossession as evidence for a breach of the right to exclude, which is

Co., 10 F. Cas. 664, 667 (C.C.D.N.J. 1853) (No. 5,563) (Grier, Circuit Justice) (stating that

the defendant, who had made minor variations in the plaintiff’s patented product, was

“pirating the plaintiff’s invention”); Moody v. Fiske, 17 F. Cas. 655, 656-57 (C.C.D. Mass.

1820) (No. 9,745) (Story, Circuit Justice) (referring repeatedly to infringers of both patents

and copyrights as “pirates”); c

f. Davis v. Palmer, 7 F. Cas. 154, 159 (C.C.D. Va. 1827) (No.

3,645) (Marshall, Circuit Justice) (instructing the jury that if “the imitator attempted to copy

the [patented] model” and made an “almost imperceptible variation for the purpose of

evading the right of the patentee,” then “this may be considered as a fraud on the law”);

Dixon v. Moyer, 7 F. Cas. 758, 759 (C.C.D. Pa. 1821) (No. 3,931) (Washington, Circuit

Justice) (explaining that an attempt to make a “mere formal difference” between a patented

device and an infringing copy is “a fraudulent evasion of the plaintiff’s right”).

163

See, e.g., Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S.

666, 673 (1999) (“The hallmark of a protected property interest is the right to exclude

others.”); Dolan v. City of Tigard, 512 U.S. 374, 384 (1994) (declaring that right to exclude

is the essential right in a protected property interest); Kaiser Aetna v. United States, 444

U.S. 164, 176 (1979) (stating that the right to exclude is “one of the most essential sticks in

the bundle of rights that are commonly characterized as property”).

164

See Jacque v. Steenberg Homes, Inc., 563 N.W.2d 154, 159 (Wis. 1997) (explaining

that the “landowner’s interest in protecting his or her land from trespass” derives from the

fact that the “right to exclude others” is an essential property right); J

ESSE DUKEMINIER ET

., PROPERTY 86 (6th ed. 2006) (“The law of trespass . . . protects the right to exclude

. . . .”); J

OSEPH WILLIAM SINGER, INTRODUCTION TO PROPERTY 27 (2001) (“The interest

protected by trespass law is the interest in exclusive possession of the premises, meaning the

right to occupy the property and to exclude others from entering or occupying the

property.”).

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 721

now the analytical fulcrum for determining a compensable taking by the

government, either directly through a condemnation or physical invasion

165

indirectly through a regulation that results in something equivalent to

dispossession.

166

Given its status as intellectual property, a patent is nonrivalrous and

nonexhaustive in nature.

167

The government’s unauthorized use of a patented

invention, therefore, lacks the

physical dispossession that triggers a

compensable taking of land.

168

From the perspective of land-based takings

doctrine, the government’s unauthorized use of a patented invention does not

interfere with a patentee’s own use of the invention, and, more importantly, the

patentee can continue to exclude others from using it.

169

What then could a patentee claim as a taking when the government uses a

patented invention without authorization? A patentee could only claim some

165

See Loretto v. Teleprompter Manhattan CATV Corp., 458 U.S. 419, 434 (1982)

(holding that any “permanent physical occupation of property” by the state is a taking).

166

Modern regulatory takings jurisprudence is highly indeterminate and “ad hoc.” Penn

Cent. Transp. Co. v. New York City, 438 U.S. 104, 124 (1978). The Court, however,

consistently uses dispossession as evidence for a breach of the right to exclude in

determining whether a compensable regulatory taking has occurred.

See, e.g., Lingle v.

Chevron U.S.A., Inc., 544 U.S. 528, 539 (2005) (“A permanent physical invasion, however

minimal the economic cost it entails, eviscerates the owner’s right to exclude others from

entering and using her property – perhaps the most fundamental of all property interests.”);

Lucas v. S.C. Coastal Council, 505 U.S. 1003, 1017 (1992) (holding that a “total deprivation

of beneficial use is, from the landowner’s point of view, the equivalent of a physical

appropriation”); Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1011 (1984) (holding that a

regulation that discloses a trade secret is a taking because “the right to exclude others is

central to the very definition of the property interest”);

Penn Cent. Transp. Co., 438 U.S. at

124 (recognizing that “[a] ‘taking’ may more readily be found when the interference with

property can be characterized as a physical invasion by government”).

167

See, e.g., Burk & Lemley, supra note 145, at 1605 (stating that “information is a

public good for which consumption is nonrivalrous – that is, one person’s use of the

information does not deprive others of the ability to use it”); Katherine J. Strandburg, What

Does the Public Get? Experimental Use and the Patent Bargain

, 2004 WIS. L. REV. 81, 104

(observing that “ideas are nonexcludable public goods”). This is not a modern insight.

See

Letter from Thomas Jefferson to Isaac McPherson, supra note 148, at 334 (stating that

inventive ideas are like “the air in which we breathe, move, and have our physical being,

incapable of confinement or exclusive appropriation”).

168

See Heald & Wells, supra note 35, at 868 (“Intellectual property is intangible, and

therefore it is incapable of being physically possessed or taken away.”); Klancnik,

supra

note 34, at 817 (recognizing that “a government mandate cannot amount to a physical taking

of the patent because the government cannot occupy an intangible, legal construct the way it

can physically occupy land”).

169

See Wilmoth, supra note 34, at 565 (“The State can put a patent to public use without

eliminating the patentee’s ability to use the patent himself. In such event, a patentee can

still gather fruits of his labor, prevent nongovernmental competitors from infringing, or

license or transfer his right to others.”).

722 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

lost profits resulting from this governmental action. Zoltek, for instance,

pursued financial remuneration – its reasonable royalty – for the government’s

unauthorized use of its patented method for making composite fiber sheets

used in aircraft construction.

170

However, the Supreme Court has held, at least

since the legal realists’ heyday in the early twentieth century, that the loss of

only some uses or profits almost never amounts to a taking.

171

In rejecting a

takings claim on the basis of lost profits in the use of tangible property, the

Supreme Court has intoned that “loss of future profits – unaccompanied by any

physical property restriction – provides a slender reed upon which to rest a

takings claim.”

172

It is these future profits – the right to the fruits of one’s

labors – that a patentee would assert under a Takings Clause claim today. In

fact, long before

Zoltek, modern courts employed such reasoning in rejecting

patent takings claims on the basis of lost profits.

173

According to our modern view of patents, which secures solely the right to

exclude and nothing else, governmental interferences with commercial uses of

patents could not fall within the scope of “private property” secured under the

Constitution.

174

Accordingly, if the government remunerates patentees for its

own unauthorized uses, the government is not implementing a constitutional

mandate under the Takings Clause. Rather, it is doing so at the sole policy

discretion of Congress, which amended the Tucker Act in 1910 to include the

government within the scope of the exclusive right that it already secured

under the patent statutes.

175

In fact, Judge Dyk emphasized this point

170

See Zoltek Corp. v. United States, 442 F.3d 1345, 1347-49 (Fed. Cir. 2006).

171

See, e.g., Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg’l Planning Agency, 535 U.S.

302 (2002) (holding that a local government moratorium on all development of land for

thirty-two months is not a compensable taking); Palazzolo v. Rhode Island, 533 U.S. 606

(2001) (holding that a regulation that eliminated approximately ninety-three percent of the

value of a land parcel did not deprive the owner of all economically beneficial uses); Lucas,

505 U.S. at 1027 (“It seems to us that the property owner necessarily expects the uses of his

property to be restricted, from time to time, by various measures newly enacted by the State

in legitimate exercise of its police powers.”); Pa. Coal Co. v. Mahon, 260 U.S. 393, 413

(1922) (Holmes, J.) (“Government hardly could go on if to some extent values incident to

property could not be diminished without paying for every such change in the general

law.”).

172

Andrus v. Allard, 444 U.S. 51 (1979) (rejecting a regulatory takings claim on the

basis of a federal prohibition on the sale of eagle feathers).

173

See Mosca v. United States, 417 F.2d 1382, 1386 (Ct. Cl. 1969) (rejecting a patent

takings claim on the basis that “[t]here is . . . grave doubt as to whether . . . earning profits in

the future is property within the contemplation of the Fifth Amendment,” as it is already

“well established that profits to be derived from a business conducted on property that it

[sic] taken by the Government are not considered as [constitutional private] property”).

174

What might be most surprising to patent scholars today is that this observation is

consistent with the Court’s takings jurisprudence governing land and other tangible property

interests.

175

See supra notes 121, 124-34 and accompanying text.

2007] PATENTS AS CONSTITUTIONAL PRIVATE PROPERTY 723

repeatedly in his multiple concurrences in

Zoltek.

176

The Zoltek decision

stands as a stark reminder of how this conclusion seems almost inevitable

within the mutually reinforcing frameworks of modern property theory and

modern takings jurisprudence.

177

This analysis is not a definitive, comprehensive intellectual history of

patents and property, but it illuminates an important aspect of the jurisprudence

that is often overlooked: the way that courts and scholars define legal rights

affects their ability to identify and to understand relevant aspects of the

historical record.

178

Courts sometimes recognize the import of this insight, at

least in the abstract. For instance, Judge Dyk himself remarked in a patent

infringement case a few years ago that “[p]atent law is not an island separated

from the main body of American jurisprudence.”

179

Unfortunately, Judge Dyk overlooked this important principle when he

joined the

Zoltek majority in refusing to apply the Takings Clause to patents –

based on his faulty understanding of the historical record. In fact, in his

Zoltek

concurrence, Judge Dyk argued that “[p]atent rights are creatures of federal

statute,” and thus Congress is free to provide whatever remedies it sees fit

without constitutional limitation

180

– an argument explicitly rejected more than

a century ago in

Burns, Cammeyer, McKeever, and Campbell.

181

Several

months later, Judge Dyk repeated the same (historically mistaken) point in his

concurrence to the Federal Circuit’s denial of Zoltek’s petition for rehearing en

176

Zoltek Corp. v. United States, 464 F.3d 1335, 1339 (Fed. Cir. 2006) (Dyk, J.,

concurring); Zoltek Corp. v. United States, 442 F.3d 1345, 1367-70 (Fed. Cir. 2006) (Dyk,

J., concurring).

177

There is some evidence that the Court may at least be aware implicitly that the logic

of its regulatory takings doctrine, as applied in land cases, leads inexorably to a conclusion

that there could never be a taking of an intangible property right. See generally Eric R.

Claeys,

The Penn Central Test and Tensions in Liberal Property Theory, 30 HARV. ENVTL.

L. R

EV. 339, 362-65 (2006) (examining differences between the Court’s treatment of takings

of intangible interests, such as a trade secret or the right to devise, from its treatment of

takings of land). Exploring such theoretical issues is beyond the scope of the current

Article, but Professor Claeys and I hope to develop this insight in greater depth in a future

project.

178

The sources relied on in this Article provide, directly or indirectly, some more

extensive treatment of these issues.

See supra notes 11, 139, 157; see also Robert G. Bone,

A New Look at Trade Secret Law: Doctrine in Search of Justification, 86 CAL. L. REV. 241,

259 (1998) (observing an analogous trend in the context of trade secrets doctrine whereby

its supporting theory in the nineteenth century “began to lose its grip, first with the rise of

sociological jurisprudence, and then with the advent of legal realism in the early twentieth

century”).

179

Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corp., 383 F.3d 1337,

1351 (Fed. Cir. 2004) (en banc) (Dyk, J., concurring in part and dissenting in part).

180

Zoltek, 442 F.3d at 1370 (Dyk, J., concurring).

181

See supra Part II.

724 BOSTON UNIVERSITY LAW REVIEW [Vol. 87:689

banc.

182

Why is Judge Dyk seemingly unaware of this long-standing

jurisprudence that directly contradicts his claims concerning the constitutional

status of patent property rights? Perhaps he misses it given that the analytical

and normative framework employed by the courts in

Burns, Cammeyer,

McKeever, and Campbell are no longer cognizable to a modern jurist or

scholar. As this Part has shown, historical developments in American

jurisprudence may affect how courts and scholars understand the history of

patent rights.

ONCLUSION

In its recent decision in eBay v. MercExchange,

183

the Supreme Court

emphasized that modern patent law jurisprudence should not depart from long-

standing historical practices.

184

eBay is important for many reasons, but not

the least is that it highlights the degree to which modern patent policy debates

are predicated on the history of patent law.

185

Yet, despite this heavy emphasis

on history by courts and scholars alike, there remain surprisingly resilient

historical myths, and one of them is that patents were never secured as

constitutional private property in the nineteenth century.

This Article has revealed that this historical claim is mistaken, and that

courts and scholars are relying on it to justify limiting the scope of

constitutional protections afforded to patents today. Unfortunately, the modern

conceptualization of patents as securing only the right to exclude has blinded

modern courts and scholars to the extensive nineteenth-century jurisprudence

that protected patents as constitutional private property. The result is

confusion among courts, and inaccurate claims made in both patent and takings

scholarship, that patents have never been secured under the Takings Clause.

Courts and scholars can no longer rely on this mistaken historical authority. It

is time to set the historical record straight and to recognize that nineteenth-

century courts applied the Takings Clause to patents, securing these intangible

property rights as constitutional private property.

182

See Zoltek Corp. v. United States, 464 F.3d 1335, 1339 (Fed. Cir. 2006) (Dyk, J.,

concurring) (“This decided lack of interest by the Congress and the Supreme Court in

creating a takings remedy is perhaps not surprising given the fact that patent rights are

created only by federal statute . . . .”).

183

126 S. Ct. 1837 (2006).

184

Id. at 1839-40.

185

This is especially salient in Chief Justice Roberts’ admonition in eBay that nineteenth-

century jurisprudence is determinative in defining the scope of legal rights today.

Id. at

1841-42 (Roberts, C.J., concurring).