IP Law Bulletin

The U.S. Supreme Court has yet to issue any intellectual property (“IP”) related opinions since Justice Sotomayor joined the Court, but she will undoubtedly participate in a number of IP cases in the future. One case almost certainly familiar to patent practitioners, In re Bilski 545 F.3d 943 (Fed. Cir. 2008), was recently heard by the Court and will be decided later this Supreme Court term.

Justice Sotomayor has gathered experience in intellectual property issues throughout much of her legal career. After five years as an assistant district attorney in the New York County District Attorney’s Office, Justice Sotomayor joined Pavia & Harcourt in Manhattan. While there in private practice from 1984-1992, she handled a variety of cases in a variety of fields, including international law. Her focus, however, was on IP litigation, primarily related to trademarks and copyrights.

After her tenure in private practice, Justice Sotomayor served as a judge in the U.S. District Court for the Southern District of New York from 1992-1998. As is typical for a judge at the Federal District Court level, Justice Sotomayor heard a wide variety of cases, including a full range of IP issues involving patents, trademarks, and copyrights. She was involved as a District Court Judge with two patent cases that were heard on appeal by the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit affirmed her decision in REFAC Intern., Ltd. v. Lotus Dev. Corp., 887 F.Supp. 539 (S.D.N.Y. 1995), aff’d, 81 F.3d 1576 (Fed. Cir. 1996) holding a patent unenforcable due to inequitable conduct related to affadavits submitted during prosecution to address 35 U.S.C. § 112 issues. Inequitable conduct in patent prosecution has become more of a hot button topic in the legislature and the judiciary in recent years, so it would not be unreasonable to suspect that Justice Sotomayor may revisit the issue as a judge on the nation’s highest court.

In another case at the District Court, Justice Sotomayor made a Markman claim construction ruling that was overturned by the Federal Circuit in Intellectual Property Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1317 (Fed. Cir. 2003) (initial claim construction ruling by J. Sotomayor, 1998 WL 142346 (S.D.N.Y. 1998), subsequent rulings after J. Sotomayor’s departure from the court, 2002 WL 10479 (S.D.N.Y. 2002)).

One of Justice Sotomayor’s most well known cases at the District Court involved a copyright issue. In Tasini v. New York Times Co., 981 F. Supp 841 (S.D.N.Y. 1997), the District Court ruled that the New York Times was permitted to include material in a LexisNexis database that was published by the newspaper but written by freelance journalists. This decision was reversed, however, by the Second Circuit in Tasini v. New York Times Co., Inc., 206 F.3d 161 (2000). The U.S. Supreme Court upheld the Second Circuit’s ruling in New York Times Co., Inc. v. Tasini, 121 S.Ct. 2381 (2001), deciding that the New York Times could not license the work of freelance journalists without the journalists receiving compensation. This case is the only District Court case of Justice Sotomayor’s that was ultimately heard by the U.S. Supreme Court. Copyright cases are not frequently heard at the U.S. Supreme Court, but should one arise during Justice Sotomayor’s tenure on the Court, this case could likely be revisited even if not directly on point with a case’s particular copyright issue.

In another copyright case decided by Justice Sotomayor as a District Court judge, she ruled and the Second Circuit affirmed that a trivia book regarding the television show Seinfeld was protectable expression under the Copyright Act. Castle Rock Entm’t Inc. v. Carol Publ’g Co., 955 F. Supp. 260 (S.D.N.Y. 1997); 150 F.3d 132 (2nd Cir. 1998). A nation rejoices, yada, yada, yada.

Justice Sotomayor also heard IP cases while seated at the Second Circuit from 1998 to immediately before her Supreme Court appointment. With patent cases typically being appealed to the Federal Circuit rather than one of the other appellate courts, Justice Sotomayor heard relatively few patent cases. Of note she was involved with Innomed Labs, LLC v. Alza Corp., 368 F.3d 148 (2nd Cir.2004) and In re Visa Check/MasterMoney Antitrust Litigation, 280 F.3d 124 (2nd Cir. 2001), both concerning patent issues in an antitrust context.

While it is uncertain how many IP-related cases Justice Sotomayor will hear while seated on the Supreme Court and how she will decide such cases, it should be beneficial to the IP community to have a Justice versed in IP cases as a lower court judge and, unique to the Court, as a practitioner.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.