Kavanaugh, Trump High Court Pick, Has Intellectual Property Chops

Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...

By Anandashankar Mazumdar

President Donald Trump’s choice to be the next U.S. Supreme Court justice, federal appeals court judge Brett Kavanaugh, has a record of deciding intellectual property cases in his 12 years on the bench.

If confirmed, Kavanaugh, 53, would fill the seat of retiring Justice Anthony Kennedy.

A federal appeals court judge since 2006, Kavanaugh has a lengthy record on the U.S. Court of Appeals for the D.C. Circuit, including numerous intellectual property cases, according to Blooomberg Law data. He has weighed in on several cases related to the Copyright Royalty Board, the tribunal that sets royalty rates for using various types of content, such as music or TV programs.

His views on administrative power and decision-making could be important if patent owners bring another constitutional challenge against inter partes reviews, the administrative procedures run by the Patent and Trademark Office for attacking granted patents.

In Settling Devotional Claimants v. Copyright Royalty Bd., he joined a 2015 decision that criticized the royalty board’s judges for arbitrarily setting rates in violation of the Administrative Procedures Act.

He also wrote the 2015 decision in Indep. Producers Grp. v. Librarian of Congress, affirming the royalty board’s decision on cable re-transmissions payments for sporting events.

In Soundexchange, Inc. v. Librarian of Congress, Kavanaugh joined the court in 2009 in affirming the copyright board’s rates for songs played on satellite radio stations. But he also wrote a short concurring opinion, saying that the board’s judges should be confirmed by the Senate because they’re principal officers of the government. Since they’re not, Kavanaugh suggested that the board is unconstitutional.

In Recording Indus. Ass’n of Am., Inc. v. Librarian of Cong., Kavanaugh wrote a 2010 decision that upheld the copyright board’s royalty rates for ringtones and a penalty for late payments, saying the board adequately explained the reasoning behind both rates.

Kavanaugh is a Yale Law School graduate and former law clerk for Justice Kennedy. Before joining the D.C. Circuit, Kavanaugh held several roles in the Bush administration, including staff secretary and senior associate counsel to the president. He was associate counsel for Independent Counsel Kenneth Starr during the Whitewater investigation into former President Bill Clinton and Hillary Clinton.

Two IP Cases Queued Up

If the Senate approves Kavanaugh, he will join a court that already has two intellectual property cases on the docket for the 2018-2019 term—a copyright case and a patent case.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, litigants in copyright cases want the court to clarify a requirement that a copyright owner register its ownership claim with the Copyright Office before suing in federal court.

Section 411(a) of the Copyright Act bars copyright infringement lawsuits unless the plaintiff has a registration or the Copyright Office has refused to register the relevant work. Federal appeals courts have split on whether a lawsuit can proceed when the plaintiff has applied for a registration but has not yet received a reply.

According to the Office of the U.S. Solicitor General, a plaintiff must have a registration certificate or a refusal in hand before going to court. Fourth Estate Public Benefit Corp., an independent syndicate for new articles, disagrees, arguing that Section 411(a) is satisfied when the copyright owner files its application.

The question is significant for copyright holders, given the Copyright Act’s three-year statute of limitations. Many copyright owners find themselves bumping up against the three-year deadline before filing for registration and suing in quick succession. If the Copyright Office doesn’t act quickly—which is likely given recent backlogs at the agency—then the plaintiff might find itself without the ability to sue.

The patent case, Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., raises the question of whether confidential sales of an invention before it’s patented can make the invention unpatentable.

The case turns on Section 102 of the Patent Act, known as the “on-sale bar.” It prohibits a patent on an invention that has been available for sale for more than a year before the application filing date.

Helsinn Healthcare SA, maker of the Aloxi anti-nausea drug, sued Teva Pharmaceuticals USA Inc. to stop production of a generic version of Aloxi. According to Helsinn, the America Invents Act of 2011 made changes to Section 102 such that a confidential business transaction doesn’t trigger the on-sale bar.

Court Awaits Government View in Patent Case

The court has asked the Solicitor General’s Office for its views in Eve-USA, Inc. v. Mentor Graphics Corp. Seeking the government’s opinion on a petition can be a sign that the court is leaning toward taking up a case.

The petition by Eve-USA Inc. asks the court to reject a doctrine adopted by the U.S. Court of Appeals for the Federal Circuit, which says that an inventor can’t challenge his or own patent’s validity after selling it to someone else. The respondent, Mentor Graphics Corp., says that the case isn’t a good one for the court to address the doctrine, which is known as assignor estoppel.

The petition also asked the court to settle a question over how much of its lost profits a patent holder can get back from an infringer. A handful of friend-of-the-court briefs say that the Federal Circuit’s ruling in the case goes against prior rulings that require a court to determine how much of the lost profits are attributable to the infringement.

IP Cases Knocking at the Door

Among the petitions that the Supreme Court has not yet decided:

  • Rimini Street, Inc. v. Oracle USA Inc., asking what legal costs a winner in a copyright case can get from a loser. Section 505 of the Copyright Act says a court can award a prevailing party its “full costs.” Appeals court rulings aren’t in agreement about what kinds of litigation expenses that covers. Rimini Street Inc. doesn’t want to pay $18 million to Oracle USA Inc. for items like expert fees and consultant fees.
  • World Programming Ltd. v. SAS Institute, Inc., a dispute over what role a foreign court’s ruling in the same dispute between parties can play in a U.S. court. U.K.-based World Programming Ltd. defeated SAS Institute Inc.’s copyright infringement claim before a British court. The U.S. Court of Appeals for the Fourth Circuit refused to apply the U.K. court’s decision.
  • Regeneron Pharmaceuticals, Inc. v. Merus N.V., which asks whether trial misconduct by a lawyer can obliterate a client’s patent rights. Regeneron Pharmaceuticals Inc. argues that an inequitable conduct finding, the so-called “atomic bomb of patent law,” should make a patent unenforceable only if it happened when the patent was being granted. According to Regeneron, the Federal Circuit “dramatically expanded” the inequitable conduct doctrine.
  • Return Mail, Inc. v. U.S. Postal Serv., which seeks review of whether the U.S. government can petition the U.S. Patent and Trademark Office to re-examine whether a patent should have been granted.

— With assistance by Peter Leung and Malathi Nayak

Request Intellectual Property on Bloomberg Law