The Supreme Court on Patent Law

March 5, 2014 – Book
Co-Author, Chapter 4 (Claim Construction)

The Supreme Court on Patent Law fills a “critical gap in our understanding of modern American patent law” by comprehensively presenting the Supreme Court’s treatment of this subject matter. This treatise is a “great resource” and “offers a straightforward, at-a-glance gateway into every key aspect of patent law.”

From the time of the Federal Circuit’s formation in 1982 until about the year 2000, the Supreme Court spoke infrequently on patent law, and when it did speak, it made only fairly minor adjustments. During this time, the patent bar focused on pronouncements from the Federal Circuit. That all changed about a decade ago. Since then, the Supreme Court has corrected the Federal Circuit several times in some major decisions that have fundamentally reshaped patent law, including Ebay, KSR, Medimmune, and Prometheus. Importantly, the Supreme Court has shown little or no deference to:

  • The Federal Circuit: e.g., Bilski – the machine-or-transformation test is not the sole test for determining subject matter eligibility;
  • The US Government: e.g., Prometheus – rejecting the US Government’s argument that any steps beyond a law of nature should render a claim patent eligible under § 101; and
  • The US Patent Office: e.g., Myriad – showing no deference to the Patent Office’s long held practice of issuing gene patents.

Given these corrections and the lack of deference shown to organizations whose sole purpose is to serve as this country’s experts in patent law, the Supreme Court is changing the entire patent law landscape. In so doing, the Supreme Court relies upon its earlier precedent. It is therefore imperative for practitioners to understand where the Supreme Court has been to know where the Supreme Court may be going, and inform their patent strategy accordingly.

This treatise by Michael Kiklis guides readers through the historical treatment of patent law at the Supreme Court, identifies key trends in the Supreme Court’s cases, and presents the most relevant Supreme Court cases in an easy-to-use manner. The Supreme Court on Patent Law is a comprehensive and indispensable resource for anyone interested in learning more about the historical and future role of the Supreme Court in the area of patent law.

Recent Reviews:

"In this well organized, readily accessible and highly readable treatise, Michael Kiklis analyzes the serial interventions by the Supreme Court that keep altering the purely statutory patent law as interpreted by the Federal Circuit and understood by patent practitioners. Because these alterations are continuing and even accelerating, practitioners need to anticipate where the Court is headed next if they are to serve their clients well. By stressing trends and explaining dicta for what it may portend, Kiklis provides an invaluable chart for navigating shifting seas." Paul Michel, former Chief Judge, United States Court of Appeals for the Federal Circuit

“In this one volume, Michael Kiklis has filled in a critical gap in our understanding of modern American patent law. Every person interested in the field must study the current Supreme Court’s take on patents, and there is no better source than this treatise." Tom Goldstein, Publisher,

The Supreme Court on Patent Law is a tremendous resource for all patent practitioners, but is a must have for all executive level in-house patent counsel. In his treatise, Mike provides a detailed road map that will enable in-house counsel to make better strategic decisions quickly. In a time when more is asked of fewer in less time, this will be the single best go to resource for all things past, current and future in the world of patent law. While we will never know exactly where the Supreme Court will land on a given patent law issue, Mike’s road map provides GPS level clarity on the likely destination.” – Dave Berdan, Vice President, Intellectual Property, International Game Technology

“The Supreme Court on Patent Law is a great resource for the expert and the novice alike. It offers a straightforward, at-a-glance gateway into every key aspect of patent law, via the most authoritative source available: summaries of and key quotes from all relevant Supreme Court decisions.” Lisa A. Dolak,Professor of Law, Syracuse University College of Law

The Supreme Court on Patent Law is a must read for every patent practitioner. The Supreme Court is the most important voice on patents and this treatise immediately becomes the most important book about the Supreme Court’s view of patents. It is an essential guide to the past and the future of patent law – where we are, how we got here and where we are going.” Michael O'Shea, Partner, Hunton & Williams LLP

"Now, more than ever for our generation of practitioners, it has become critical to stay well-informed of the Supreme Court’s patent law jurisprudence. The Supreme Court’s decisions have not only had a significant impact on the course of patent law over the past several years, but the Court seems poised to continue to exert its overriding influence in the area. Michael Kiklis’s treatise is an excellent resource for the patent practitioner. His treatise provides a comprehensive and valuable explanation of the Supreme Court’s patent decisions, and it contains the insight and statistical data that is vital to understand the possible direction of the Supreme Court as it takes on new patent issues." Alexander J. Hadjis, Chair, ITC Patent Litigation Practice, Cadwalader, Wickersham & Taft LLP

"In The Supreme Court on Patent Law, Kiklis provides valuable insight into how America’s highest court has treated patents over the years. Readers will be rewarded for travelling with Kiklis as he provides a balanced picture of the Supreme Court’s decisions and how they have affected patent law.” Franki Webb, Reporter, IPPro Life Science