author: Justice Sotomayor Justice Breyer, Justice Thomas,

text:
    [564 U.S. 91]
    MICROSOFT CORPORATION, Petitioner v i4i LIMITED PARTNERSHIP et al.
    564 U.S. 91, 131 S. Ct. 2238,
    180 L. Ed. 2d 131,
    2011 U.S. LEXIS 4376
    [No. 10-290]
    Argued April 18, 2011.
    Decided June 9, 2011.

      APPEARANCES OF COUNSEL ARGUING CASE
    Thomas G. Hungar argued the cause for petitioner.
    Seth P. Waxman argued the cause for respondents.

      Malcolm L. Stewart argued the cause for the United States, as amicus curiae, by special leave of court.

      Sotomayor, J., delivered the opinion of the Court, in which Scalia, Kennedy, Ginsburg, Breyer, Alito, and Kagan, JJ., joined. Breyer, J., filed a concurring opinion, in which Scalia and Alito, JJ., joined. Thomas, J., filed an opinion concurring in the judgment. Roberts, C. J., took no part in the consideration or decision of the case.
   OPINION OF THE COURT

[564 U.S. 95]

Justice Sotomayor

delivered the opinion of the Court.

Under § 282 of the Patent Act of 1952, “[a] patent shall be presumed valid” and “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282. We consider whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.

I

A

Pursuant to its authority under the Patent Clause, U. S. Const., Art. I, § 8, cl. 8, Congress has charged the United States Patent and Trademark Office (PTO) with the task of examining patent applications, 35 U.S.C. § 2(a)(1), and issuing

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patents if “it appears that the applicant is entitled to a patent under the law,” § 131. Congress has set forth the prerequisites for issuance of a patent, which the PTO must evaluate in the examination process. To receive patent protection a claimed invention must, among other things, fall within one of the express categories of patentable subject matter, § 101, and be novel, § 102, and nonobvious, § 103. Most relevant here, the on-sale bar of § 102(b) precludes patent protection for any “invention” that was “on sale in this country” more than one year prior to the filing of a patent application. See generally Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 67-68, 119 S. Ct. 304, 142 L. Ed. 2d 261 (1998). In evaluating whether these and other statutory conditions have been met, PTO examiners must make various factual determinations—for instance, the state of the prior art in the field and the nature of the advancement embodied in the invention. See Dickinson v. Zurko, 527 U.S. 150, 153, 119 S. Ct. 1816, 144 L. Ed. 2d 143 (1999).

Once issued, a patent grants certain exclusive rights to its holder, including the exclusive right to use the invention during the patent’s duration. To enforce that right, a paten-tee can bring a civil action for infringement if another person “without authority makes, uses, offers to sell, or sells any patented invention, within the United States.” § 271(a); see also § 281.

Among other defenses under § 282 of the Patent Act of 1952 (1952 Act), an alleged infringer may assert the invalidity of the patent—that is, he may attempt to prove that the patent never should have issued in the first place. See §§ 282(2), (3). A defendant may argue, for instance, that the claimed invention was obvious at the time and thus that one of the conditions of patentability was lacking. See § 282(2); see also § 103. “While the ultimate question of patent validity is one of law,” Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966) (citing Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 155, 71 S. Ct. 127, 95 L. Ed. 162 (1950) (Douglas, J., concurring)); see post, at 114, 180 L. Ed. 2d, at 147 (Breyer, J., concurring),

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the same factual questions underlying the PTO’s original examination of a patent application will also bear on an invalidity defense in an infringement action, see, e.g., 383 U.S., at 17, 86 S. Ct. 684, 15 L. Ed. 2d 545 (describing the “basic factual inquiries” that form the “background” for evaluating obviousness); Pfaff, 525 U.S., at 67-69, 119 S. Ct. 304, 142 L. Ed. 2d 261 (same, as to the on-sale bar).

In asserting an invalidity defense, an alleged infringer must contend with the first paragraph of § 282, which provides that “[a] patent shall be presumed valid” and “ [t]he burden of establishing invalidity ... rest[s] on the party asserting such invalidity.” Under the Federal Circuit’s reading of § 282, a defendant seeking to overcome this presumption must persuade the factfinder of its invalidity defense by clear and convincing evidence. Judge Rich, a principal drafter of the 1952 Act, articulated this view for the court in American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350 (CA Fed. 1984). There, the Federal Circuit held that § 282 codified “the existing presumption of validity of patents,” id., at 1359 (internal quotation marks omitted)—what, until that point, had been a common-law presumption based on “the basic proposition that a government agency such as the [PTO] was presumed to do its job,” ibid. Relying on this Court’s pre-1952 precedent as to the “force of the presumption,” ibid. (citing Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 54 S. Ct. 752, 79 L. Ed. 163, (1934) (RCA)), Judge Rich concluded:

“[Section] 282 creates a presumption that a patent is valid and imposes the burden of proving invalidity on the attacker. That burden is constant and never changes and is to convince the court of invalidity by clear evidence.” 725 F.2d, at 1360.

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In the nearly 30 years since American Hoist, the Federal Circuit has never wavered in this interpretation of § 282. See, e.g., Greenwood v. Hattori Seiko Co., 900 F.2d 238, 240-241 (1990); Ultra-Tex Surfaces, Inc. v. Hill Bros. Chemical Co., 204 F.3d 1360, 1367 (2000); ALZA Corp. v. Andrx Pharmaceuticals, LLC, 603 F.3d 935, 940 (2010).

B

Respondents i4i Limited Partnership and Infrastructures for Information Inc. (collectively, i4i) hold the patent at issue in this suit. The i4i patent claims an improved method for editing computer documents, which stores a document’s content separately from the metacodes associated with the document’s structure. In 2007, i4i sued petitioner Microsoft Corporation for willful infringement, claiming that Microsoft’s manufacture and sale of certain Microsoft Word products infringed i4i’s patent. In addition to denying infringement, Microsoft counterclaimed and sought a declaration that i4i’s patent was invalid and unenforceable.

Specifically and as relevant here, Microsoft claimed that the on-sale bar of § 102(b) rendered the patent invalid, pointing to i4i’s prior sale of a software program known as S4. The parties agreed that, more than one year prior to the filing of the i4i patent application, i4i had sold S4 in the United States. They presented opposing arguments to the jury, however, as to whether that software embodied the invention claimed in i4i’s patent. Because the software’s source code had been destroyed years before the commencement of this litigation, the factual dispute turned largely on trial testimony by S4’s two inventors—also the named inventors on the i4i patent—both of whom testified that S4 did not practice the key invention disclosed in the patent.

Relying on the undisputed fact that the S4 software was never presented to the PTO examiner, Microsoft objected to i4i’s proposed instruction that it was required to prove its invalidity defense by clear and convincing evidence. Instead,

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“if an instruction on the ‘clear and convincing’ burden were [to be] given,” App. 124a, n. 8, Microsoft requested the following:

“ ‘Microsoft’s burden of proving invalidity and unenforceability is by clear and convincing evidence. However, Microsoft’s burden of proof with regard to its defense of invalidity based on prior art that the examiner did not review during the prosecution of the patent-in-suit is by preponderance of the evidence.’ ” Ibid.

Rejecting the hybrid standard of proof that Microsoft advocated, the District Court instructed the jury that “Microsoft has the burden of proving invalidity by clear and convincing evidence.” App. to Pet. for Cert. 195a.

The jury found that Microsoft willfully infringed the i4i patent and that Microsoft failed to prove invalidity due to the on-sale bar or otherwise. Denying Microsoft’s post-trial motions, the District Court rejected Microsoft’s contention that the court improperly instructed the jury on the standard of proof. The Court of Appeals for the Federal Circuit affirmed. 598 F.3d 831, 848 (2010). Relying on its settled interpretation of § 282, the court explained that it could “discern [no] error” in the jury instruction requiring Microsoft to prove its invalidity defense by clear and convincing evidence. Ibid. We granted certiorari. 562 U.S. 1060, 131 S. Ct. 647, 178 L. Ed. 2d 476 (2010).

II

According to Microsoft, a defendant in an infringement action need only persuade the jury of an invalidity defense by a preponderance of the evidence. In the alternative, Microsoft insists that a preponderance standard must apply at least when an invalidity defense rests on evidence that was

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never considered by the PTO in the examination process. We reject both contentions.

A

Where Congress has prescribed the governing standard of proof, its choice controls absent “countervailing constitutional constraints.” Steadman v. SEC, 450 U.S. 91, 95, 101 S. Ct. 999, 67 L. Ed. 2d 69 (1981). The question, then, is whether Congress has made such a choice here.

As stated, the first paragraph of § 282 provides that “[a] patent shall be presumed valid” and “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” Thus, by its express terms, § 282 establishes a presumption of patent validity, and it provides that a challenger must overcome that presumption to prevail on an invalidity defense. But, while the statute explicitly specifies the burden of proof, it includes no express articulation of the standard of proof.

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Our statutory inquiry, however, cannot simply end there. We begin, of course, with “the assumption that the ordinary meaning of [the] language” chosen by Congress “accurately expresses the legislative purpose.” Engine Mfrs. Assn. v. South Coast Air Quality Management Dist., 541 U.S. 246, 252, 124 S. Ct. 1756, 158 L. Ed. 2d 529 (2004) (internal quotation marks omitted). But where Congress uses a common-law term in a statute, we assume the “term . . . comes with a common law meaning, absent anything pointing another way.” Safeco Ins. Co. of America v. Burr, 551 U.S. 47, 58, 127 S. Ct. 2201, 167 L. Ed. 2d 1045 (2007) (citing Beck v. Prupis, 529 U.S. 494, 500-501, 120 S. Ct. 1608, 146 L. Ed. 2d 561 (2000)). Here, by stating that a patent is “presumed valid,” § 282, Congress used a term with a settled meaning in the common law.

Our decision in RCA, 293 U.S. 1, 54 S. Ct. 752, 79 L. Ed. 163, is authoritative. There, tracing nearly a century of case law from this Court and others, Justice Cardozo wrote for a unanimous Court that “there is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence.” Id., at 2, 54 S. Ct. 752, 79 L. Ed. 163. Although the “force” of the presumption found “varying expression” in this Court and elsewhere, id., at 7, 54 S. Ct. 752, 79 L. Ed. 163, Justice Cardozo explained, one “common core of thought and truth” unified the decisions:

“[O]ne otherwise an infringer who assails the validity of a patent fair upon its face bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance. If that is true where the assailant connects himself in some way with the title of the true inventor, it is so a fortiori where he is a stranger to the invention, without claim of title of his own. If it is
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true where the assailant launches his attack with evidence different, at least in form, from any theretofore produced in opposition to the patent, it is so a bit more clearly where the evidence is even verbally the same.” Id., at 8, 54 S. Ct. 752, 79 L. Ed. 163 (citation omitted).

The common-law presumption, in other words, reflected the universal understanding that a preponderance standard of proof was too “dubious” a basis to deem a patent invalid. Ibid.; see also id., at 7, 54 S. Ct. 752, 79 L. Ed. 163 (“[A] patent... is presumed to be valid until the presumption has been overcome by convincing evidence of error”).

Thus, by the time Congress enacted § 282 and declared that a patent is “presumed valid,” the presumption of patent validity had long been a fixture of the common law. According to its settled meaning, a defendant raising an invalidity defense bore “a heavy burden of persuasion,” requiring proof of the defense by clear and convincing evidence. Id., at 8, 54 S. Ct. 752, 79 L. Ed. 163. That is, the presumption encompassed not only an allocation of the burden of proof but also an imposition of a heightened standard of proof. Under the general rule that a common-law term comes with its common-law meaning, we cannot conclude that Congress intended to “drop” the heightened standard of proof from the presumption simply because § 282 fails to reiterate it expressly. Neder v. United States, 527

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U.S. 1, 23, 119 S. Ct. 1827, 144 L. Ed. 2d 35 (1999); see also id., at 21, 119 S. Ct. 1827, 144 L. Ed. 2d 35 (“ ‘Where Congress uses terms that have accumulated settled meaning under . . . the common law, [we] must infer, unless the statute otherwise dictates, that Congress means to incorporate the established meaning of those terms’ ” (quoting Nationwide Mut. Ins. Co. v. Darden, 503 U.S. 318, 322, 112 S. Ct. 1344, 117 L. Ed. 2d 581 (1992))); Standard Oil Co. of N.J. v. United States, 221 U.S. 1, 59, 31 S. Ct. 502, 55 L. Ed. 619 (1911) (“[W]here words are employed in a statute which had at the time a well-known meaning at common law or in the law of this country they are presumed to have been used in that sense . . . ”). “On the contrary, we must presume that Congress intended to incorporate” the heightened standard of proof, “unless the statute otherwise dictates.” Neder, 527 U.S., at 23, 119 S. Ct. 1827, 144 L. Ed. 2d 35 (internal quotation marks omitted).

We recognize that it may be unusual to treat a presumption as alone establishing the governing standard of proof. See, e.g., J. Thayer, Preliminary Treatise on Evidence at the Common Law 336-337 (1898) (hereinafter Thayer) (“When ... we read that the contrary of any particular presumption must be proved beyond a reasonable doubt, ... it is to be recognized that we have something superadded to the rule of presumption, namely, another rule as to the amount of evidence which is needed to overcome the presumption”). But given how judges, including Justice Cardozo, repeatedly understood and explained the presumption of patent validity, we cannot accept Microsoft’s argument that Congress used the words “presumed valid” to adopt only a procedural device for “shifting the burden of production,” or for “shifting both the burden of production and the burden of persuasion.” Brief for Petitioner 21-22 (emphasis deleted). Whatever the significance of a presumption in the abstract, basic principles of statutory construction require us to assume that Congress meant to incorporate “the cluster of ideas” attached to the common-law term it adopted. Beck, 529 U.S., at 501, 120 S. Ct. 1608, 146 L. Ed. 2d 561 (internal quotation marks omitted). And RCA leaves no doubt that attached to the common-law presumption of patent validity

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was an expression as to its “force,” 293 U.S., at 7, 54 S. Ct. 752, 79 L. Ed. 163—that is, the standard of proof required to overcome it.

Resisting the conclusion that Congress adopted the heightened standard of proof reflected in our pre-1952 cases, Microsoft contends that those cases applied a clear-and-convincing standard of proof only in two limited circumstances, not in every case involving an invalidity defense. First, according to Microsoft, the heightened standard of proof applied in cases “involving oral testimony of prior invention,” simply to account for the unreliability of such testimony. Brief for Petitioner 25. Second, Microsoft tells us, the heightened standard of proof applied to “invalidity challenges based on priority of invention,” where that issue had previously been litigated between the parties in PTO proceedings. Id., at 28.

Squint as we may, we fail to see the qualifications that Microsoft purports to identify in our cases. They certainly make no appearance in RCA’s explanation of the presumption of patent validity. RCA simply said, without qualification, “that one otherwise an infringer who assails the validity of a patent fair upon its face bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance.” 293 U.S., at 8, 54 S. Ct. 752, 79 L. Ed. 163; see also id., at 7, 54 S. Ct. 752, 79 L. Ed. 163 (“A patent regularly issued, and even more obviously a patent issued after a hearing of all the rival claimants, is presumed

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to be valid until the presumption has been overcome by convincing evidence of error” (emphasis added)). Nor do they appear in any of our cases as express limitations on the application of the heightened standard of proof. Cf., e.g., Smith v. Hall, 301 U.S. 216, 233, 57 S. Ct. 711, 81 L. Ed. 1049 (1937) (citing RCA for the proposition that a “heavy burden of persuasion ... rests upon one who seeks to negative novelty in a patent by showing prior use”); Mumm v. Jacob E. Decker & Sons, 301 U.S. 168, 171, 57 S. Ct. 675, 81 L. Ed. 983 (1937) (“Not only is the burden to make good this defense upon the party setting it up, but his burden is a heavy one, as it has been held that every reasonable doubt should be resolved against him” (internal quotation marks omitted)). In fact, Microsoft itself admits that our cases “could be read as announcing a heightened standard applicable to all invalidity assertions.” Brief for Petitioner 30 (emphasis deleted).

Furthermore, we cannot agree that Microsoft’s proposed limitations are inherent—even if unexpressed—in our pre-1952 cases. As early as 1874 we explained that the burden of proving prior inventorship “rests upon [the defendant], and every reasonable doubt should be resolved against him,” without tying that rule to the vagaries and manipulability of oral testimony. Coffin v. Ogden, 18 Wall. 120, 124, 21 L. Ed. 821 (1874). And, more than 60 years later, we applied that rule where the evidence in support of a prior-use defense included documentary proof—not just oral testimony—in a case presenting no priority issues at all. See Smith, 301 U.S., at 221, 233, 57 S. Ct. 711, 81 L. Ed. 1049. Thus, even if Congress searched for some unstated limitations on the heightened standard of proof in our cases, it would have found none.

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Microsoft also argues that the Federal Circuit’s interpretation of § 282’s statement that “[a] patent shall be presumed valid” must fail because it renders superfluous the statute’s additional statement that “[t]he burden of establishing invalidity of a patent . . . shall rest on the party asserting such invalidity.” We agree that if the presumption imposes a heightened standard of proof on the patent challenger, then it alone suffices to establish that the defendant bears the burden of persuasion. Cf. Director, Office of Workers’ Compensation Programs v. Greenwich Collieries, 512 U.S. 267, 278, 114 S. Ct. 2251, 129 L. Ed. 2d 221 (1994) (“A standard of proof . . . can apply only to a burden of persuasion”). Indeed, the Federal Circuit essentially recognized as much in American Hoist. See 725 F.3d, at 1359.

But the canon against superfluity assists only where a competing interpretation gives effect “ ‘to every clause and word of a statute.’ ” Duncan v. Walker, 533 U.S. 167, 174, 121 S. Ct. 2120, 150 L. Ed. 2d 251 (2001) (quoting United States v. Menasche, 348 U.S. 528, 538-539, 75 S. Ct. 513, 99 L. Ed. 615 (1955)); see Bruesewitz v. Wyeth LLC, 562 U.S. 223, 236, 131 S. Ct. 1068, 179 L. Ed. 2d 1 (2011). Here, no interpretation of § 282—in-cluding the two alternatives advanced by Microsoft—avoids excess language. That is, if the presumption only “allocates the burden

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of production,” Brief for Petitioner 21, or if it instead “shift[s] both the burden of production and the burden of persuasion,” id., at 22 (emphasis deleted), then it would be unnecessary in light of § 282’s statement that the challenger bears the “burden of establishing invalidity.” See 2IB Fed. Practice § 5122, at 401 (“[T]he same party who has the burden of persuasion also starts out with the burden of producing evidence”). “There are times when Congress enacts provisions that are superfluous,” Corley v. United States, 556 U.S. 303, 325, 129 S. Ct. 1558, 173 L. Ed. 2d 443 (2009) (Alito, J., dissenting), and the kind of excess language that Microsoft identifies in § 282 is hardly unusual in comparison to other statutes that set forth a presumption, a burden of persuasion, and a standard of proof. Cf., e.g., 28 U.S.C. § 2254(e)(1).

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B

Reprising the more limited argument that it pressed below, Microsoft argues in the alternative that a preponderance standard must at least apply where the evidence before the factfinder was not before the PTO during the examination process. In particular, it relies on KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007), where we observed that, in these circumstances, “the rationale underlying the presumption—that the PTO, in its expertise, has approved the claim— seems much diminished.” Id., at 426, 127 S. Ct. 1727, 167 L. Ed. 2d 705.

That statement is true enough, although other rationales may animate the presumption in such circumstances. See The Barbed Wire Patent, 143 U.S. 275, 292, 12 S. Ct. 443, 36 L. Ed. 154 (1892) (explaining that because the patentee “first published this device; put it upon record; made use of it for a practical purpose; and gave it to the public . . . doubts . . . concerning the actual inventor . . . should be resolved in favor of the patentee”); cf. Brief for United States as Amicus Curiae 33 (arguing that even when the administrative correctness rationale has no relevance, the heightened standard of proof “serves to protect the patent holder’s reliance interests” in disclosing an invention to the public in exchange for patent protection). The question remains, however, whether Congress has specified the applicable standard of proof. As established, Congress did just that by codifying the common-law presumption of patent validity and, implicitly, the heightened standard of proof attached to it.

Our pre-1952 cases never adopted or endorsed the kind of fluctuating standard of proof that Microsoft envisions. And they do not indicate, even in dicta, that anything less than a

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clear-and-convincing standard would ever apply to an invalidity defense raised in an infringement action. To the contrary, the Court spoke on this issue directly in RCA, stating that because the heightened standard of proof applied where the evidence before the court was “different” from that considered by the PTO, it applied even more clearly where the evidence was identical. 293 U.S., at 8, 54 S. Ct. 752, 79 L. Ed. 163. Likewise, the Court’s statement that a “dubious preponderance” will never suffice to sustain an invalidity defense, ibid., admitted of no apparent exceptions. Finally, this Court often applied the heightened standard of proof without any mention of whether the relevant prior-art evidence had been before the PTO examiner, in circumstances strongly suggesting it had not. See, e.g., Smith, 301 U.S., at 227, 233, 57 S. Ct. 711, 81 L. Ed. 1049.

Nothing in § 282’s text suggests that Congress meant to depart from that understanding to enact a standard of proof that would rise and fall with the facts of each case. Indeed, had Congress intended to drop the heightened standard of proof where the evidence before the jury varied from that before the PTO—and thus to take the unusual and impractical step of enacting a variable standard of proof that must itself be adjudicated in each case, cf. Santosky v. Kramer,

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455 U.S. 745, 757, 102 S. Ct. 1388, 71 L. Ed. 2d 599 (1982)—we assume it would have said so expressly.

To be sure, numerous Courts of Appeals in the years preceding the 1952 Act observed that the presumption of validity is “weakened” or “dissipated” in the circumstance that the evidence in an infringement action was never considered by the PTO. See Jacuzzi Bros., Inc. v. Berkeley Pump Co., 191 F.2d 632, 634 (CA9 1951) (“largely dissipated”); H. Schindler & Co. v. C. Saladino & Sons, Inc., 81 F.2d 649, 651 (CA1 1936) (“weakened”); Gillette Safety Razor Co. v. Cliff Weil Cigar Co., 107 F.2d 105, 107 (CA4 1939) (“greatly weakened”); Butler Mfg. Co. v. Enterprise Cleaning Co., 81 F.2d 711, 716 (CA8 1936) (“weakened”). But we cannot read these cases to hold or even to suggest that a preponderance standard would apply in such circumstances, and we decline to impute such a reading to Congress. Instead, we understand these cases to reflect the same commonsense principle that the Federal Circuit has recognized throughout its existence— namely, that new evidence supporting an invalidity defense may “carry more weight” in an infringement action than evidence previously considered by the PTO, American Hoist, 725 F.2d, at 1360. As Judge Rich explained:

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“When new evidence touching validity of the patent not considered by the PTO is relied on, the tribunal considering it is not faced with having to disagree with the PTO or with deferring to its judgment or with taking its expertise into account. The evidence may, therefore, carry more weight and go further toward sustaining the attacker’s unchanging burden.” Ibid. (emphasis deleted).

See also SIBIA Neurosciences, Inc. v. Cadus Pharmaceutical Corp., 225 F.3d 1349, 1355-1356 (CA Fed. 2000) (“[T]he alleged infringer’s burden may be more easily carried because of th[e] additional [evidence]”); Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1306 (CA Fed. 2005) (similar).

Simply put, if the PTO did not have all material facts before it, its considered judgment may lose significant force. Cf. KSR, 550 U.S., at 427, 127 S. Ct. 1727, 167 L. Ed. 2d 705. And, concomitantly, the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain. In this respect, although we have no occasion to endorse any particular formulation, we note that a jury instruction on the effect of new evidence can, and when requested, most often should, be given. When warranted, the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. When it is disputed whether the evidence presented to the jury differs from that evaluated by the PTO, the jury may be instructed to consider that question. In either case, the jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence. Cf., e.g., Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563-1564 (CA Fed. 1993); see also Brief for International Business Machines Corp. as Amicus Curiae 31-37. Although Microsoft emphasized in its argument to the jury that S4 was never considered by

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the PTO, it failed to request an instruction along these lines from the District Court. Now, in its reply brief in this Court, Microsoft insists that an instruction of this kind was warranted. Reply Brief for Petitioner 22-23. That argument, however, comes far too late, and we therefore refuse to consider it. See Rent-A-Center, West, Inc. v. Jackson, 561 U.S. 63, 75-76, 130 S. Ct. 2772, 177 L. Ed. 2d 403 (2010); cf. Fed. Rule Civ. Proc. 51(d)(1)(B).

III

The parties and their amici have presented opposing views as to the wisdom of the clear-and-convincing-evidence standard that Congress adopted. Microsoft and its amici contend that the heightened standard of proof dampens innovation by unduly insulating “bad” patents from invalidity challenges. They point to the high invalidation rate as evidence that the PTO grants patent protection to too many undeserving “inventions.” They claim that inter partes reexamination proceedings before the PTO cannot fix the problem, as some grounds for invalidation (like the on-sale bar at issue here) cannot be raised in such proceedings. They question the deference that the PTO’s expert determinations warrant, in light of the agency’s resources and procedures, which they deem inadequate. And, they insist that the heightened standard of proof essentially causes juries to abdicate their role in reviewing invalidity claims raised in infringement actions.

For their part, i4i and its amici, including the United States, contend that the heightened standard of proof properly limits the circumstances in which a lay jury overturns the considered judgment of an expert agency. They claim that the heightened standard of proof is an essential component of the patent “bargain,” see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-151, 109 S. Ct. 971, 103 L. Ed. 2d 118 (1989), and the incentives for inventors to disclose their innovations to the public in exchange for patent protection. They disagree with the notion that the patent issuance rate is above the

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optimal level. They explain that limits on the reexamination process reflect a judgment by Congress as to the appropriate degree of interference with patentees’ reliance interests. Finally, they maintain that juries that are properly instructed as to the application of the clear-and-convincing-evidence standard can, and often do, find an invalidity defense established.

We find ourselves in no position to judge the comparative force of these policy arguments. For nearly 30 years, the Federal Circuit has interpreted § 282 as we do today. During this period, Congress has often amended § 282, see, e.g., Pub. L. 104-141, § 2, 109 Stat. 352; Pub. L. 98-417, § 203, 98 Stat. 1603; not once, so far as we (and Microsoft) are aware, has it even considered a proposal to lower the standard of proof, see Tr. of Oral Arg. 10. Moreover, Congress has amended the patent laws to account for concerns about “bad” patents, including by expanding the reexamination process to provide for inter partes proceedings. See Optional Inter Par-tes Reexamination Procedure Act of 1999, 113 Stat. 1501A-567, codified at 35 U.S.C. § 311 et seq. Through it all, the evidentiary standard adopted in § 282 has gone untouched. Indeed, Congress has left the Federal Circuit’s interpretation of § 282 in place despite ongoing criticism, both from within the Federal Government and without.

Congress specified the applicable standard of proof in 1952 when it codified the common-law presumption of patent validity.

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Since then, it has allowed the Federal Circuit’s correct interpretation of § 282 to stand. Any recalibration of the standard of proof remains in its hands.

For the reasons stated, the judgment of the Court of Appeals for the Federal Circuit is affirmed.

The Chief Justice took no part in the consideration or decision of this case.

SEPARATE OPINIONS

Justice Breyer,

with whom Justice Scalia and Justice Alito join, concurring.

I join the Court’s opinion in full. I write separately because, given the technical but important nature of the invalidity question, I believe it worth emphasizing that in this area of law as in others the evidentiary standard of proof applies to questions of fact and not to questions of law. See, e.g., Addington v. Texas, 441 U.S. 418, 423, 99 S. Ct. 1804, 60 L. Ed. 2d 323 (1979). Thus a factfinder must use the “clear and convincing” standard where there are disputes about, say, when a product was first sold or whether a prior art reference had been published.

Many claims of invalidity rest, however, not upon factual disputes, but upon how the law applies to facts as given. Do the given facts show that the product was previously “in public use”? 35 U.S.C. § 102(b). Do they show that the invention was “nove[l]” and that it was “non-obvious”? §§ 102, 103. Do they show that the patent applicant described his claims properly? § 112. Where the ultimate question of patent validity turns on the correct answer to legal questions— what these subsidiary legal standards mean or how they apply to the facts as given—today’s strict standard of proof has no application. See, e.g., Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966); Minnesota Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301

[564 U.S. 115]

(CA Fed. 2002); Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1305 (CA Fed. 2010); cf. Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996).

Courts can help to keep the application of today’s “clear and convincing” standard within its proper legal bounds by separating factual and legal aspects of an invalidity claim, say, by using instructions based on case-specific circumstances that help the jury make the distinction or by using interrogatories and special verdicts to make clear which specific factual findings underlie the jury’s conclusions. See Fed. Rules Civ. Proc. 49 and 51. By isolating the facts (determined with help of the “clear and convincing” standard), courts can thereby ensure the proper interpretation or application of the correct legal standard (without use of the “clear and convincing” standard). By preventing the “clear and convincing” standard from roaming outside its fact-related reservation, courts can increase the likelihood that discoveries or inventions will not receive legal protection where none is due.

Justice Thomas,

concurring in the judgment.

I am not persuaded that Congress codified a standard of proof when it stated in the Patent Act of 1952 that “[a] patent shall be presumed valid.” 35 U.S.C. § 282; see ante, at 101, 180 L. Ed. 2d, at 139. “[W]here Congress borrows terms of art,” this Court presumes that Congress “knows and adopts the cluster of ideas that were attached to each borrowed word . . . and the meaning its use will convey to the judicial mind.” Morissette v. United States, 342 U.S. 246, 263, 72 S. Ct. 240, 96 L. Ed. 288 (1952). But I do not think that the words “[a] patent shall be presumed valid” so clearly conveyed a particular standard of proof to the judicial mind in 1952 as to constitute a term of art. See, e.g., ante, at 106, n. 7, 180 L. Ed. 2d, at 142 (“[S]ome lower courts doubted [the presumption’s] wisdom or even pretended it did not exist”); Philip A. Hunt Co. v. Mallinckrodt Chemical Works, 72 F. Supp. 865, 869

[564 U.S. 116]

(EDNY 1947) (“[T]he impact upon the presumption of many late decisions seems to have rendered it as attenuated ... as the shadow of a wraith”); Myers v. Beall Pipe & Tank Corp., 90 F. Supp. 265, 268 (D Ore. 1948) (“[T]he presumption of [patent] validity .. . is treated by the appellate courts as evanescent as a cloud”); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (CA Fed. 1984) (“[I]n 1952, the case law was far from consistent—even contradictory—about the presumption”); cf. Bruesewitz v. Wyeth LLC, 562 U.S. 223, 255-258, 131 S. Ct. 1068, 179 L. Ed. 2d 1 (2011) (Congress’ use of a word that is similar to a term of art does not codify the term of art). Therefore, I would not conclude that Congress’ use of that phrase codified a standard of proof.

Nevertheless, I reach the same outcome as the Court. Because § 282 is silent as to the standard of proof, it did not alter the common-law rule. See ante, at 100, 180 L. Ed. 2d, at 139 (“[Section 282] includes no express articulation of the standard of proof’). For that reason, I agree with the Court that the heightened standard of proof set forth in Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 54 S. Ct. 752, 79 L. Ed. 163 (1934)—which has never been overruled by this Court or modified by Congress—applies.

      . As originally enacted in 1952, the first paragraph of § 282 read: “A patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on a party asserting it.” 66 Stat. 812. Congress has since amended § 282, inserting two sentences not relevant here and modifying the language of the second sentence to that in the text.

      . Although not relevant here, the Court of Appeals modified the effective date of the permanent injunction that the District Court entered in favor of i4i. 598 F.3d, at 863-864 (2010).

      . i4i contends that Microsoft forfeited the first argument by failing to raise it until its merits brief in this Court. The argument, however, is within the scope of the question presented, and because we reject it on its merits, we need not decide whether it has been preserved.

      . A preliminary word on terminology is in order. As we have said, “[t]he term ‘burden of proof’ is one of the ‘slipperiest members of the family of legal terms.’ ” Schaffer v. Weast, 546 U.S. 49, 56, 126 S. Ct. 528, 163 L. Ed. 2d 387 (2005) (quoting 2 J. Strong, McCormick on Evidence § 342, p. 433 (5th ed. 1999) (alteration omitted)). Historically, the term has encompassed two separate burdens: the “burden of persuasion’’ (specifying which party loses if the evidence is balanced), as well as the “burden of production’’ (specifying which party must come forward with evidence at various stages in the litigation). 546 U.S., at 56, 126 S. Ct. 528, 163 L. Ed. 2d 387. Adding more confusion, the term “burden of proof’ has occasionally been used as a synonym for “standard of proof." E.g., Grogan v. Garner, 498 U.S. 279, 286, 111 S. Ct. 654, 112 L. Ed. 2d 755 (1991).
      Here we use “burden of proof’ interchangeably with “burden of persuasion’’ to identify the party who must persuade the jury in its favor to prevail. We use the term “standard of proof’ to refer to the degree of certainty by which the factfinder must be persuaded of a factual conclusion to find in favor of the party bearing the burden of persuasion. See Addington v. Texas, 441 U.S. 418, 423, 99 S.Ct. 1804, 60 L. Ed. 2d 323 (1979). In other words, the term “standard of proof’ specifies how difficult it will be for the party bearing the burden of persuasion to convince the jury of the facts in its favor. Various standards of proof are familiar—beyond a reasonable doubt, by clear and convincing evidence, and by a preponderance of the evidence. See generally 21B C. Wright & K. Graham, Federal Practice & Procedure § 5122, pp. 405-411 (2d ed. 2005) (hereinafter Fed. Practice) (describing these and other standards of proof).

      . Among other cases, Justice Cardozo cited Cantrell v. Wallick, 117 U.S. 689, 695-696, 6 S. Ct. 970, 29 L. Ed. 1017 (1886) (“Not only is the burden of proof to make good this defence upon the party setting it up, but . . . every reasonable doubt should be resolved against him" (internal quotation marks omitted)); Coffin v. Ogden, 18 Wall. 120, 124, 21 L. Ed. 821 (1874) (“The burden of proof rests upon [the defendant], and every reasonable doubt should be resolved against him"); The Barbed Wire Patent, 143 U.S. 275, 285, 12 S. Ct. 443, 36 L. Ed. 154 (1892) (“[This] principle has been repeatedly acted upon in the different circuits"); and Washburn v. Gould, 29 F. Cas. 312, 320 (No. 17,214) (CC Mass. 1844) (charging jury that “if it should so happen, that your minds are led to a reasonable doubt on the question, inasmuch as it is incumbent on the defendant to satisfy you beyond that doubt, you will find for the plaintiff’).

      . Microsoft objects that this reading of § 282 “conflicts with the usual understanding of presumptions.’’ Reply Brief for Petitioner 4. In support, it relies on the “understanding’’ reflected in Federal Rule of Evidence 301, which explains the ordinary effect of a presumption in federal civil actions. That Rule, however, postdates the 1952 Act by nearly 30 years, and it is not dispositive of how Congress in 1952 understood presumptions generally, much less the presumption of patent validity. In any event, the word “presumption” has often been used when another term might be more accurate. See Thayer 335 (“Often . . . maxims and ground principles get expressed in this form of a presumption perversely and inaccurately”). And, to the extent Congress used the words “presumed valid” in an imprecise way, we cannot fault it for following our lead.

      . In a similar vein, Microsoft insists that there simply was no settled presumption of validity for Congress to codify in 1952. Microsoft points to a handful of District Court decisions, which “questioned] whether any presumption of validity was warranted,’’ or which “required the patentee to prove the validity of his patent by a preponderance of the evidence.’’ Brief for Petitioner 24 (emphasis deleted; brackets and internal quotation marks omitted); see, e.g., Ginsberg v. Railway Express Agency, Inc., 72 F. Supp. 43, 44 (SDNY 1947) (stating, in dicta, that “[i] t may now well be said that no presumption whatever arises from the grant of patent’’); see also post, at 115—116, 180 L. Ed. 2d, at 148 (Thomas, J., concurring in judgment). RCA makes clear, however, that the presumption of patent validity had an established meaning traceable to the mid-19th century, 293 U.S. 1, 7-8, 54 S. Ct. 752, 79 L. Ed. 163 (1934); that some lower courts doubted its wisdom or even pretended it did not exist is of no moment. Microsoft may be correct that Congress enacted § 282 to correct lower courts that required the patentee to prove the validity of a patent. See American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (CA Fed. 1984). But the language Congress selected reveals its intent not only to specify that the defendant bears the burden of proving invalidity but also that the evidence in support of the defense must be clear and convincing.

      . For those of us for whom it is relevant, the legislative history of § 282 provides additional evidence that Congress meant to codify the judge-made presumption of validity, not to set forth a new presumption of its own making. The accompanying House and Senate Reports both explain that § 282 “introduces a declaration of the presumption of validity of a patent, which is now a statement made by courts in decisions, but has had no expression in the statute.’’ H. R. Rep. No. 1923, 82d Cong., 2d Sess., 10 (1952) (hereinafter H. R. Rep.); S. Rep. No. 1979, 82d Cong., 2d Sess., 9 (1952) (hereinafter S. Rep.). To the same effect, the Reviser’s Note indicates that § 282’s “first paragraph declares the existing presumption of validity of patents.’’ Note following 35 U.S.C. § 282 (1952 ed.).
      Prior to 1952, the existing patent laws already incorporated the sum and substance of the presumption as Microsoft would define it—that is, they “assigned] the burden of proving invalidity to the accused infringer,’’ Brief for Petitioner 14 (emphasis deleted). See 35 U.S.C. § 69 (1946 ed.) (providing that a defendant in an infringement action “may plead’’ and “prove on trial’’ the invalidity of the patent as a defense); see also Patent Act of 1870, ch. 230, § 61, 16 Stat. 208 (same); Patent Act of 1836, ch. 357, § 15, 5 Stat. 123 (similar); Patent Act of 1793, ch. XI, § 6, 1 Stat. 322 (similar); Coffin, 18 Wall., at 124, 21 L. Ed. 821 (explaining that the Patent Act of 1836 “allowed a party sued for infringement to prove, among other defences, that the patentee was not the original and first inventor of the thing patented, or of a substantial and material part thereof claimed to be new’’ (internal quotation marks omitted)). The House and Senate Reports state, however, that § 282 established a principle that previously “had no expression in the statute.’’ H. R. Rep., at 10; S. Rep., at 9. Thus, because the only thing missing from § 282’s predecessor was the heightened standard of proof itself, Congress must have understood the presumption of patent validity to include the heightened standard of proof attached to it.

      . Microsoft cites numerous Court of Appeals decisions as support for its claim that a preponderance standard must apply in the event that the evidence in the infringement action varies from that considered by the PTO. We see no hint of the hybrid standard of proof that Microsoft advocates in these cases. Indeed, in some of these cases it appears that the court even evaluated the evidence according to a heightened standard of proof. See Jacuzzi Bros., Inc. v. Berkeley Pump Co., 191 F.2d 632, 634 (CA9 1951) (“Although it is not expressly stated that th[e] conclusion [of invalidity] is based upon evidence establishing the thesis beyond a reasonable doubt, the Trial Court expressed no doubt. And the record shows that such conclusion was supported by substantial evidence”); Western Auto Supply Co. v. American-National Co., 114 F.2d 711, 713 (CA6 1940) (concluding that the patent was invalid where the court “entertain[ed] no doubt” on the question).

      . Not the least of the impracticalities of such an approach arises from the fact that whether a PTO examiner considered a particular reference will often be a question without a clear answer. In granting a patent, an examiner is under no duty to cite every reference he considers. 1 Dept, of Commerce, PTO, Manual of Patent Examining Procedure § 904.03, p. 900-51 (8th rev. ed. 2010) (“The examiner is not called upon to cite all references that may be available, but only the ‘best.’ Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided” (emphasis deleted and citation omitted)); Manual of Patent Examining Procedure § 904.02, p. 129 (1st rev. ed. 1952) (same), http://www.uspto.gov/web/offices/pac/mpep/old/ElR3_900.pdf (all Internet materials as visited June 6, 2011, and available in Clerk of Court’s case file); see also Brief for Respondents 45-46 (describing additional impracticalities). We see no indication in § 282 that Congress meant to require collateral litigation on such an inherently uncertain question.

      . See, e.g., FTC, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy 28 (Oct. 2003), http://www.ftc.gov/os/2003/10/innovationrpt.pdf (recommending that “legislation be enacted specifying that challenges to the validity of a patent be determined based on a preponderance of the evidence’’); Alsup, Memo to Congress: A District Judge’s Proposal for Patent Reform, 24 Berkeley Tech. L. J. 1647, 1655 (2009) (same); Lichtman & Lemley, Rethinking Patent Law’s Presumption of Validity, 60 Stan. L. Rev. 45, 60 (2007) (proposing “statutory amendment or . . . judicial reinterpretation of the existing statute and its associated case law’’ to lower the standard of proof to a preponderance of the evidence (footnote omitted)).


source: Caselaw Access Project

author: Justice Scalia Justice Kennedy, Justice Alito,

license: Public Domain

text:
    [564 U.S. 117]
    NEVADA COMMISSION ON ETHICS, Petitioner v MICHAEL A. CARRIGAN
    564 U.S. 117, 131 S. Ct. 2343,
    180 L. Ed. 2d 150,
    2011 U.S. LEXIS 4379
    [No. 10-568]
    Argued April 27, 2011.
    Decided June 13, 2011.

      APPEARANCES OF COUNSEL ARGUING CASE
    John P. Elwood argued the cause for petitioner.
    Joshua E. Rosenkranz argued the cause for respondent.

      Scalia, J., delivered the opinion of the Court, in which Roberts, C. J., and Kennedy, Thomas, Ginsburg, Breyer, Sotomayor, and Kagan, JJ., joined. Kennedy, J., filed a concurring opinion. Alito, J., filed an opinion concurring in part and concurring in the judgment.
   OPINION OF THE COURT

[564 U.S. 119]

Justice Scalia

delivered the opinion of the Court.

The Nevada Supreme Court invalidated a recusal provision of the State’s Ethics in Government Law as unconstitutionally overbroad in violation of the First Amendment. We consider whether legislators have a personal, First Amendment right to vote on any given matter.

I

Nevada’s Ethics in Government Law provides that “a public officer shall not vote upon or advocate the passage or failure of, but may otherwise participate in the consideration of, a matter with respect to which the independence of judgment of a reasonable person in his situation would be materially affected by,” inter alia, “[h]is commitment in a private capacity to the interests of others.” Nev. Rev. Stat. § 281A.420(2) (2007). Section 281A.420(8)(a)-(d) of the law defines the term “commitment in a private capacity to the

[564 U.S. 120]

interests of others” to mean a “commitment to a person” who is a member of the officer’s household; is related by blood, adoption, or marriage to the officer; employs the officer or a member of his household; or has a substantial and continuing business relationship with the officer. Paragraph (e) of the same subsection adds a catchall to that definition: “[a]ny other commitment or relationship that is substantially similar” to one of those listed in paragraphs (a)-(d).

The Ethics in Government Law is administered and enforced by the petitioner in this litigation, the Nevada Commission on Ethics. In 2005, the Commission initiated an investigation of Michael Carrigan, an elected member of the City Council of Sparks, Nevada, in response to complaints that Carrigan had violated § 281A.420(2) by voting to approve an application for a hotel/casino project known as the “Lazy 8.” Carrigan, the complaints asserted, had a disabling conflict in the matter because his long-time friend and campaign manager, Carlos Vasquez, worked as a paid consultant for the Red Hawk Land Company, which had proposed the Lazy 8 project and would benefit from its approval.

Upon completion of its investigation, the Commission concluded that Carrigan had a disqualifying conflict of interest under § 281A.420(8)(e)’s catchall provision because his relationship with Vasquez was “substantially similar” to the prohibited relationships listed in § 281A.420(8)(a)-(d). Its written decision censured Carrigan for failing to abstain from voting on the Lazy 8 matter, but did not impose a civil penalty because his violation was not willful, see § 281A.480. (Before the hearing, Carrigan had consulted the Sparks city attorney, who advised him that disclosing his relationship with Vasquez before voting on the Lazy 8 project, which he did, would satisfy his obligations under the Ethics in Government Law.)

Carrigan filed a petition for judicial review in the First Judicial District Court of the State of Nevada, arguing that the provisions of the Ethics in Government Law that he was

[564 U.S. 121]

found to have violated were unconstitutional under the First Amendment. The District Court denied the petition, but a divided Nevada Supreme Court reversed. The majority held that voting was protected by the First Amendment, and, applying strict scrutiny, found that § 281A.420(8)(e)’s catchall definition was unconstitutionally overbroad. 126 Nev. 277, 284-288, 236 P.3d 616, 621-624 (2010).

We granted certiorari, 562 U.S. 1127, 131 S. Ct. 857, 178 L. Ed. 2d 622 (2011).

II

The First Amendment prohibits laws “abridging the freedom of speech,” which, “ ‘as a general matter . . . means that government has no power to restrict expression because of its message, its ideas, its subject matter, or its content.’ ” Ashcroft v. American Civil Liberties Union, 535 U.S. 564, 573, 122 S. Ct. 1700, 152 L. Ed. 2d 771 (2002) (quoting Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 65, 103 S. Ct. 2875, 77 L. Ed. 2d 469 (1983)). But the Amendment has no application when what is restricted is not protected speech. See, e.g., Roth v. United States, 354 U.S. 476, 483, 77 S. Ct. 1304, 1 L. Ed. 2d 1498 (1957) (obscenity not protected speech). The Nevada Supreme Court thought a legislator’s vote to be protected speech because voting “is a core legislative function.” 126 Nev., at 284, 236 P.3d, at 621 (internal quotation marks omitted).

We disagree, for the same reason. But before discussing that issue, we must address a preliminary detail: The challenged law not only prohibits the legislator who has a conflict from voting on the proposal in question, but also forbids him to “advocate the passage or failure” of the proposal— evidently meaning advocating its passage or failure during the legislative debate. Neither Carrigan nor any of his amici contend that the prohibition on advocating can be unconstitutional if the prohibition on voting is not. And with good reason. Legislative sessions would become massive townhall meetings if those who had a right to speak were not limited to those who had a right to vote. If Carrigan was constitutionally excluded from voting, his exclusion from

[564 U.S. 122]

“advocat[ing]” at the legislative session was a reasonable time, place, and manner limitation. See Clark v. Community for Creative Non-Violence, 468 U.S. 288, 293, 104 S. Ct. 3065, 82 L. Ed. 2d 221 (1984).

III

“[A] universal and long-established tradition of prohibiting certain conduct creates a strong presumption that the prohibition is constitutional: Principles of liberty fundamental enough to have been embodied within constitutional guarantees are not readily erased from the Nation’s consciousness.” Republican Party of Minn. v. White, 536 U.S. 765, 785, 122 S. Ct. 2528, 153 L. Ed. 2d 694 (2002) (internal quotation marks omitted). Laws punishing libel and obscenity are not thought to violate “the freedom of speech” to which the First Amendment refers because such laws existed in 1791 and have been in place ever since. The same is true of legislative recusal rules. The Nevada Supreme Court and Carrigan have not cited a single decision invalidating a generally applicable conflict-of-interest recusal rule—and such rules have been commonplace for over 200 years.

“[E]arly congressional enactments ‘provid [e] contemporaneous and weighty evidence of the Constitution’s meaning,’ ” Printz v. United States, 521 U.S. 898, 905, 117 S. Ct. 2365, 138 L. Ed. 2d 914 (1997) (quoting Bowsher v. Synar, 478 U.S. 714, 723-724, 106 S. Ct. 3181, 92 L. Ed. 2d 583 (1986)). That evidence is dispositive here. Within 15 years of the founding, both the House of Representatives and the Senate adopted recusal rules. The House rule—to which no one is recorded as having objected, on constitutional or other grounds, see D. Currie, The Constitution in Congress: The Federalist Period 1789-1801, p. 10 (1997)—was adopted within a week of that chamber’s first achieving a quorum. The rule read: “No member shall vote on any question, in the event of which he is immediately and particularly interested.” 1 Annals of

[564 U.S. 123]

Cong. 99 (1789). Members of the House would have been subject to this recusal rule when they voted to submit the First Amendment for ratification; their failure to note any inconsistency between the two suggests that there was none.

The first Senate rules did not include a recusal requirement, but Thomas Jefferson adopted one when he was President of the Senate. His rule provided as follows:

“Where the private interests of a member are concerned in a bill or question, he is to withdraw. And where such an interest has appeared, his voice [is] disallowed, even after a division. In a case so contrary, not only to the laws of decency, but to the fundamental principles of the social compact, which denies to any man to be a judge in his own cause, it is for the honor of the house that this rule, of immemorial observance, should be strictly adhered to.” A Manual of Parliamentary Practice for the Use of the Senate of the United States 31 (1801).

Contemporaneous treatises on parliamentary procedure track parts of Jefferson’s formulation. See, e.g., A. Clark, Manual, Compiled and Prepared for the Use of the [New York] Assembly 99 (1816); L. Cushing, Manual of Parliamentary Practice, Rules of Proceeding and Debate in Deliberative Assemblies 30 (7th ed. 1854).

Federal conflict-of-interest rules applicable to judges also date back to the founding. In 1792, Congress passed a law requiring district court judges to recuse themselves if they had a personal interest in a suit or had been counsel to a party appearing before them. Act of May 8, 1792, ch. 36, § 11, 1 Stat. 278-279. In 1821, Congress expanded these bases for recusal to include situations in which “the judge ... is so related to, or connected with, either party, as to render it improper for him, in his opinion, to sit on the trial of such suit.” Act of Mar. 3, 1821, ch. 51, 3 Stat. 643. The statute was again expanded in 1911, to make any “personal

[564 U.S. 124]

bias or prejudice” a basis for recusal. Act of Mar. 3, 1911, § 21, 36 Stat. 1090. The current version, which retains much of the 1911 version’s language, is codified at 28 U.S.C. § 144. See generally Liteky v. United States, 510 U.S. 540, 544, 114 S. Ct. 1147, 127 L. Ed. 2d 474 (1994); Frank, Disqualification of Judges, 56 Yale L. J. 605, 626-630 (1947) (hereinafter Frank). There are of course differences between a legislator’s vote and a judge’s, and thus between legislative and judicial recusal rules; nevertheless, there do not appear to have been any serious challenges to judicial recusal statutes as having unconstitutionally restricted judges’ First Amendment rights.

The Nevada Supreme Court’s belief that recusal rules violate legislators’ First Amendment rights is also inconsistent with longstanding traditions in the States. A number of States, by common-law rule, have long required recusal of public officials with a conflict. See, e.g., In re Nashua, 12 N.H. 425, 430 (1841) (“If one of the commissioners be interested, he shall not serve”); Commissioners’ Court v. Tarver, 25 Ala. 480, 481 (1854) (“If any member . . . has a peculiar, personal interest, such member would be disqualified”); Stubbs v. Florida State Finance Co., 118 Fla. 450, 452, 159 So. 527, 528 (1935) (“[A] public official cannot legally participate in his official capacity in the decision of a question in which he is personally and adversely interested”). Today,

[564 U.S. 125]

virtually every State has enacted some type of recusal law, many of which, not unlike Nevada’s, require public officials to abstain from voting on all matters presenting a conflict of interest. See National Conference of State Legislatures, Voting Recusal Provisions (2009), online at http:// www.ncsl.org/?TabID= 15357 (as visited June 9, 2011, and available in Clerk of Court’s case file).

In an attempt to combat this overwhelming evidence of constitutional acceptability, Carrigan relies on a handful of lower-court cases from the 1980’s and afterwards. See Brief for Respondent 25 (citing Clarke v. United States, 886 F.2d 404 (CADC 1989); Miller v. Hull, 878 F.2d 523 (CA1 1989); and Camacho v. Brandon, 317 F.3d 153 (CA2 2003)). Even if they were relevant, those cases would be too little and too late to contradict the long-recognized need for legislative recusal. But they are not relevant. The first was vacated as moot, see Clarke v. United States, 915 F.2d 699, 700, 706 (CADC 1990) (en banc), and the other two involve retaliation amounting to viewpoint discrimination. See Miller, supra, at 533; Camacho, supra, at 160. In the past we have applied heightened scrutiny to laws that are viewpoint discriminatory even as to speech not protected by the First Amendment, see R. A. V. v. St. Paul, 505 U.S. 377, 383-386, 112 S. Ct. 2538, 120 L. Ed. 2d 305 (1992). Carrigan does not assert that the re-cusal laws here are viewpoint discriminatory, nor could he: The statute is content-neutral and applies equally to all legislators regardless of party or position.

IV

But how can it be that restrictions upon legislators’ voting are not restrictions upon legislators’ protected speech? The answer is that a legislator’s vote is the commitment of his apportioned share of the legislature’s power to the passage

[564 U.S. 126]

or defeat of a particular proposal. The legislative power thus committed is not personal to the legislator but belongs to the people; the legislator has no personal right to it. As we said in Raines v. Byrd, 521 U.S. 811, 821, 117 S. Ct. 2312, 138 L. Ed. 2d 849 (1997), when denying Article III standing to legislators who claimed that their voting power had been diluted by a statute providing for a line-item veto, the legislator casts his vote “as trustee for his constituents, not as a prerogative of personal power.” In this respect, voting by a legislator is different from voting by a citizen. While “a voter’s franchise is a personal right,” “[t]he procedures for voting in legislative assemblies . . . pertain to legislators not as individuals but as political representatives executing the legislative process.” Coleman v. Miller, 307 U.S. 433, 469-470, 59 S. Ct. 972, 83 L. Ed. 1385 (1939) (opinion of Frankfurter, J.).

Carrigan and Justice Alito say that legislators often “ ‘us[e] their votes to express deeply held and highly unpopular views, often at great personal or political peril.’ ” Post, at 133, 180 L. Ed. 2d, at 163-164 (opinion concurring in part and concurring in judgment) (quoting Brief for Respondent 23). How do they express those deeply held views, one wonders? Do ballots contain a check-one-of-the-boxes attachment that will be displayed to the public, reading something like “( ) I have a deeply held view about this; ( ) this is probably desirable; ( ) this is the least of the available evils; ( ) my personal view is the other way, but my constituents want this; ( ) my personal view is the other way, but my big contributors want this; ( ) I don’t have the slightest idea what this legislation does, but on my way in to vote the party Whip said vote ‘aye’ ”? There are, to be sure, instances where action conveys a symbolic meaning— such as the burning of a flag to convey disagreement with a country’s policies, see Texas v. Johnson, 491 U.S. 397, 406, 109 S. Ct. 2533, 105 L. Ed. 2d 342 (1989). But the act of voting symbolizes nothing. It discloses, to be sure, that the legislator wishes (for whatever reason) that the proposition on the floor be adopted, just as a physical assault discloses that the attacker dislikes the victim.

[564 U.S. 127]

But neither the one nor the other is an act of communication. Cf. Rumsfeld v. Forum for Academic and Institutional Rights, Inc., 547 U.S. 47, 66, 126 S. Ct. 1297, 164 L. Ed. 2d 156 (2006) (expressive value was “not created by the conduct itself but by the speech that accompanies it”).

Moreover, the fact that a non-symbolic act is the product of deeply held personal belief—even if the actor would like it to convey his deeply held personal belief—does not transform action into First Amendment speech. Nor does the fact that action may have social consequences—such as the unpopularity that cost John Quincy Adams his Senate seat resulting from his vote in favor of the Embargo Act of 1807, see post, at 133, 180 L. Ed. 2d, at 164. However unpopular Adams’ vote may have made him, and however deeply Adams felt that his vote was the right thing to do, the act of voting was still nonsymbolic conduct engaged in for an independent governmental purpose.

Even if it were true that the vote itself could “express deeply held and highly unpopular views,” the argument would still miss the mark. This Court has rejected the notion that the First Amendment confers a right to use governmental mechanics to convey a message. For example, in Timmons v. Twin Cities Area New Party, 520 U.S. 351, 117 S. Ct. 1364, 137 L. Ed. 2d 589 (1997), we upheld a State’s prohibition on multiple-party or “fusion” candidates for elected office against a First Amendment challenge. We admitted that a State’s ban on a person’s appearing on the ballot as the candidate of more than one party might prevent a party from “using the ballot to communicate to the public that it supports a particular candidate who is already another party’s candidate,” id., at 362, 117 S. Ct. 1364, 137 L. Ed. 2d 589; but we nonetheless were “unpersuaded ... by the party’s contention that it has a right to use the ballot itself to send a particularized message.” Id., at 362-363, 117 S. Ct. 1364, 137 L. Ed. 2d 589; see also Burdick v. Takushi, 504 U.S. 428, 438, 112 S. Ct. 2059, 119 L. Ed. 2d 245 (1992). In like manner, a legislator has no right to use official powers for expressive purposes.

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Carrigan and Justice Alito also cite Doe v. Reed, 561 U.S. 186, 130 S. Ct. 2811, 177 L. Ed. 2d 493 (2010), as establishing “the expressive character of voting.” Post, at 13, 180 L. Ed. 2d, at 164; see also Brief for Respondent 26. But Reed did no such thing. That case held only that a citizen’s signing of a petition—“ ‘core political speech,’ ” Meyer v. Grant, 486 U.S. 414, 421-422, 108 S. Ct. 1886, 100 L. Ed. 2d 425 (1988)—was not deprived of its protected status simply because, under state law, a petition that garnered a sufficient number of signatures would suspend the state law to which it pertained, pending a referendum. See Reed, 561 U.S., at 195, 130 S. Ct. 2811, 177 L. Ed. 2d 493; id., at 221-222, 130 S. Ct. 2811, 177 L. Ed. 2d 493 (Scalia, J., concurring in judgment). It is one thing to say that an inherently expressive act remains so despite its having governmental effect, but it is altogether another thing to say that a governmental act becomes expressive simply because the governmental actor wishes it to be so. We have never said the latter is true.

V

Carrigan raises two additional arguments in his brief: that Nevada’s catchall provision unconstitutionally burdens the right of association of officials and supporters, and that the provision is unconstitutionally vague. Whatever the merits of these arguments, we have no occasion to consider them. Neither was decided below: The Nevada Supreme Court made no mention of the former argument and said that it need not address the latter given its resolution of the overbreadth challenge, 126 Nev., at 282, n. 4, 236 P.3d, at 619, n. 4. Nor was either argument raised in Carrigan’s brief in

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opposition to the petition for writ of certiorari. Arguments thus omitted are normally considered waived, see this Court’s Rule 15.2; Baldwin v. Reese, 541 U.S. 27, 34, 124 S. Ct. 1347, 158 L. Ed. 2d 64 (2004), and we find no reason to sidestep that Rule here.

The judgment of the Nevada Supreme Court is reversed, and the case is remanded for further proceedings not inconsistent with this opinion.

It is so ordered.

SEPARATE OPINIONS

Justice Kennedy,

concurring.

For the reasons the Court explains, the act of casting an official vote is not itself protected by the Speech Clause of the First Amendment; and I join the Court’s opinion.

It does seem appropriate to note that the opinion does not, and on this record should not, consider a free speech contention that would have presented issues of considerable import, were it to have been a proper part of the case. Neither in the submissions of the parties to this Court defining the issues presented, nor in the opinion of the Nevada Supreme Court, were the Nevada statutory provisions here at issue challenged or considered from the standpoint of burdens they impose on the First Amendment speech rights of legislators and constituents apart from an asserted right to engage in the act of casting a vote.

The statute may well impose substantial burdens on what undoubtedly is speech. The democratic process presumes a constant interchange of voices. Quite apart from the act of voting, speech takes place both in the election process and during the routine course of communications between and among legislators, candidates, citizens, groups active in the political process, the press, and the public at large. This speech and expression often finds powerful form in groups and associations with whom a legislator or candidate has long and close ties, ties made all the stronger by shared outlook

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and civic purpose. The process is so intricate a part of communication in a democracy that it is difficult to describe in summary form, lest its fundamental character be understated. It may suffice, however, to note just a few examples.

Assume a citizen has strong and carefully considered positions on family life, the environment, economic principles, criminal justice, religious values, or the rights of persons. Assume, too, that based on those beliefs, he or she has personal ties with others who share those views. The occasion may arise when, to promote and protect these beliefs, close friends and associates, perhaps in concert with organized groups with whom the citizen also has close ties, urge the citizen to run for office. These persons and entities may offer strong support in an election campaign, support which itself can be expression in its classic form. The question then arises what application the Nevada statute has if a legislator who was elected with that support were to vote upon legislation central to the shared cause, or, for that matter, any other cause supported by those friends and affiliates.

As the Court notes, Nev. Rev. Stat. § 281A.420(2) (2007) provides:

“[A] public officer shall not vote upon or advocate the passage or failure of, but may otherwise participate in the consideration of, a matter with respect to which the independence of judgment of a reasonable person in his situation would be materially affected by . . . [h]is commitment in a private capacity to the interests of others.”

There is, in my view, a serious concern that the statute imposes burdens on the communications and expressions just discussed. The immediate response might be that the statute does not apply because its application is confined to the legislator’s “commitment in a private capacity to the interests of others.” That proposition may be a debatable one. At least without the benefit of further submissions or argument or explanation, it seems that one fair interpretation, if

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not the necessary one, is that the statute could apply to a legislator whose personal life is tied to the longstanding, close friendships he or she has forged in the common cause now at stake.

The application of the statute’s language to the case just supposed, and to any number of variations on the supposition, is not apparent. And if the statute imposes unjustified burdens on speech or association protected by the First Amendment, or if it operates to chill or suppress the exercise of those freedoms by reason of vague terms or overbroad coverage, it is invalid. See United States v. Williams, 553 U.S. 285, 292-293, 304, 128 S. Ct. 1830, 170 L. Ed. 2d 650 (2008). A statute of this sort is an invitation to selective enforcement; and even if enforcement is undertaken in good faith, the dangers of suppression of particular speech or associational ties may well be too significant to be accepted. See Gentile v. State Bar of Nev., 501 U.S. 1030, 1051, 111 S. Ct. 2720, 115 L. Ed. 2d 888 (1991).

The interests here at issue are at the heart of the First Amendment. “[T]he First Amendment has its fullest and most urgent application to speech uttered during a campaign for political office.” Eu v. San Francisco County Democratic Central Comm., 489 U.S. 214, 223, 109 S. Ct. 1013, 103 L. Ed. 2d 271 (1989) (internal quotation marks omitted). And the Court has made it clear that “the right of citizens to band together in promoting among the electorate candidates who espouse their political views” is among the First Amendment’s most pressing concerns. Clingman v. Beaver, 544 U.S. 581, 586, 125 S. Ct. 2029, 161 L. Ed. 2d 920 (2005) (internal quotation marks omitted).

The constitutionality of a law prohibiting a legislative or executive official from voting on matters advanced by or associated with a political supporter is therefore a most serious matter from the standpoint of the logical and inevitable burden on speech and association that preceded the vote. The restriction may impose a significant burden on activities protected by the First Amendment. As a general matter, citizens voice their support and lend their aid because they

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wish to confer the powers of public office on those whose positions correspond with their own. That dynamic, moreover, links the principles of participation and representation at the heart of our democratic government. Just as candidates announce positions in exchange for citizens’ votes, Brown v. Hartlage, 456 U.S. 45, 55-56, 102 S. Ct. 1523, 71 L. Ed. 2d 732 (1982), so too citizens offer endorsements, advertise their views, and assist political campaigns based upon bonds of common purpose. These are the mechanisms that sustain representative democracy. See ibid.

The Court has held that due process may require recusal in the context of certain judicial determinations, see Caperton v. A. T. Massey Coal Co., 556 U.S. 868, 129 S. Ct. 2252, 173 L. Ed. 2d 1208 (2009); but as the foregoing indicates, it is not at all clear that a statute of this breadth can be enacted to extend principles of judicial impartiality to a quite different context. The differences between the role of political bodies in formulating and enforcing public policy, on the one hand, and the role of courts in adjudicating individual disputes according to law, on the other, see ante, at 124, 180 L. Ed. 2d, at 158, may call for a different understanding of the responsibilities attendant upon holders of those respective offices and of the legitimate restrictions that may be imposed upon them.

For these reasons, the possibility that Carrigan was censured because he was thought to be beholden to a person who helped him win an election raises constitutional concerns of the first magnitude.

As the Court observes, however, the question whether Nevada’s recusal statute was applied in a manner that burdens the First Amendment freedoms discussed above is not presented in this case. Ante, at 128-129, 180 L. Ed. 2d, at 161.

Justice Alito,

concurring in part and concurring in the judgment.

I concur in the judgment, but I do not agree with the opinion of the Court insofar as it suggests that restrictions upon

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legislators’ voting are not restrictions upon legislators’ speech. Ante, at 125-126, 180 L. Ed. 2d, at 159. As respondent notes, “[o]ur history is rich with tales of legislators using their votes to express deeply held and highly unpopular views, often at great personal or political peril.” Brief for Respondent 23. To illustrate this point, respondent notes, among other famous incidents, John Quincy Adams’ vote in favor of the Embargo Act of 1807, a vote that is said to have cost him his Senate seat, and Sam Houston’s vote against the Kansas-Nebraska Act, a vote that was deeply unpopular in the South. Id., at 23-24 (citing J. Kennedy, Profiles in Courage 48, 109 (commemorative ed. 1991)).

In response to respondent’s argument, the Court suggests that the “expressive value” of such votes is “ ‘not created by the conduct itself but by the speech that accompanies it.’ ” Ante, at 127, 180 L. Ed. 2d, at 160. This suggestion, however, is surely wrong. If John Quincy Adams and Sam Houston had done no more than cast the votes in question, their votes would still have spoken loudly and clearly to everyone who was interested in the bills in question. Voting has an expressive component in and of itself. The Court’s strange understanding of the concept of speech is shown by its suggestion that the symbolic act of burning the American flag is speech but John Quincy Adams calling out “yea” on the Embargo Act was not. Ibid.

A legislative vote is not speech, the Court tells us, because the vote may express, not the legislator’s sincere personal view, but simply the view that is favored by the legislator’s constituents. See ibid. But the same is sometimes true of legislators’ speeches.

Not only is the Court incorrect in its analysis of the expressive character of voting, but the Court’s position is inconsistent with our reasoning just last Term in Doe v. Reed, 561 U.S. 186, 130 S. Ct. 2811, 177 L. Ed. 2d 493 (2010). There, respondents argued that “signing a petition is a legally operative legislative act and therefore

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‘does not involve any significant expressive element.’ ” Id., at 195, 130 S. Ct. 2811, 177 L. Ed. 2d 493 (quoting Brief for Respondent Reed, O. T. 2009, No. 09-559, p. 31). But the Court rejected this argument, stating:

“It is true that signing a referendum petition may ultimately have the legal consequence of requiring the secretary of state to place the referendum on the ballot. But we do not see how adding such legal effect to an expressive activity somehow deprives that activity of its expressive component, taking it outside the scope of the First Amendment.” 561 U.S., at 195, 130 S. Ct. 2811, 177 L. Ed. 2d 493.

But cf. id., at 219, 130 S. Ct. 2811, 177 L. Ed. 2d 493 (Scalia, J., concurring in judgment) (“I doubt whether signing a petition that has the effect of suspending a law fits within ‘the freedom of speech’ at all”).

Our reasoning in Reed is applicable here. Just as the act of signing a petition is not deprived of its expressive character when the signature is given legal consequences, the act of voting is not drained of its expressive content when the vote has a legal effect. If an ordinary citizen casts a vote in a straw poll on an important proposal pending before a legislative body, that act indisputably constitutes a form of speech. If a member of the legislative body chooses to vote in the same straw poll, the legislator’s act is no less expressive than that of an ordinary citizen. And if the legislator then votes on the measure in the legislative chamber, the expressive character of that vote is not eliminated simply because it may affect the outcome of the legislative process.

In Part III of its opinion, the Court demonstrates that legislative recusal rules were not regarded during the founding era as impermissible restrictions on freedom of speech. On that basis, I agree that the judgment below must be reversed.

      . At the time of the relevant events in this case, the disclosure and recusal provisions of the Ethics in Government Law were codified at Nev. Rev. Stat. § 281.501 (2003). They were recodified without relevant change in 2007 at § 281A.420, and all citations are to that version. The Nevada Legislature further amended the statute in 2009, see Nev. Stats., ch. 257, § 9.5, p. 1057, but those changes are not relevant here.

      . The House first achieved a quorum on April 1, 1789, 1 Annals of Cong. 96, and it adopted rules governing its procedures on April 7, 1789, see id., at 98-99.

      . We have held that restrictions on judges’ speech during elections are a different matter. See Republican Party of Minn. v. White, 536 U.S. 765, 788, 122 S. Ct. 2528, 153 L. Ed. 2d 694 (2002) (holding that it violated the First Amendment to prohibit announcement of views on disputed legal and political issues by candidates for judicial election).

      . A number of States enacted early judicial recusal laws as well. See, e.g., 1797 Vt. Laws, § 23, p. 178 (“[N]o justice of the peace shall take cognizance of any cause, where he shall be within either the first, second, third, or fourth degree of affinity, or consanguinity, to either of the parties, or shall be directly or indirectly interested, in the cause or matter to be determined”); 1818 Mass. Laws, § 5, p. 632 (“[W]henever any Judge of Probate shall be interested in the estate of any person deceased, within the county of such Judge, such estate shall be settled in the Probate Court of the most ancient next adjoining county . . . ”); Macon v. Huff, 60 Ga. 221, 223-226 (1878). See generally Frank 609-626.

      . Justice Alito reasons as follows: (1) If an ordinary citizen were to vote in a straw poll on an issue pending before a legislative body, that vote would be speech; (2) if a member of the legislative body were to do the same, it would be no less expressive; therefore (3) the legislator’s actual vote must also be expressive. This conclusion does not follow. A legislator voting on a bill is not fairly analogized to one simply discussing that bill or expressing an opinion for or against it. The former is performing a governmental act as a representative of his constituents, see supra, at 126, 180 L. Ed. 2d, at 159; only the latter is exercising personal First Amendment rights.

       See 17 Annals of Congress 50 (1807); see also 15 id., at 201 (1806).