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By Tony Dutra
Feb. 16 —The outcomes of several closely watched intellectual property cases before the Supreme Court are unlikely to be affected by the death of Justice Antonin Scalia.
The court has decided 70 percent of IP cases in the last 10 years with unanimous or nearly unanimous votes. Unlike more closely contested areas of the law, the court rarely splits along ideological lines in such cases, where statutory interpretation is often the key question. So there is less chance of a 4-4 tie in the intellectual property disputes currently at the high court.
On Feb. 23, the court will hear oral argument in a pair of cases, Halo Electronics v. Pulse Electronics and Stryker Corp. v. Zimmer Inc., involving punitive damages for infringement. It is also likely to weigh this term two petitions for review that were granted but are not yet scheduled: Cuozzo v. Lee on interpreting patent challenge rules under the America Invents Act, and Kirtsaeng v. John Wiley & Sons Inc., on awarding attorneys' fees in copyright cases.
The court has rarely seen a narrow split in an intellectual property case since Chief Justice John G. Roberts Jr. took over in 2005. Only one case would have been affected by a vote contrary to Scalia's. In Costco Wholesale Corp. v. Omega S.A. , the court split 4-4 after Justice Elena Kagan recused herself.
The court has split 5-4 in only one other IP case in the last 10 years, Federal Trade Commission v. Actavis Inc. . In that case, Scalia was with the dissent.
The tension between antitrust law and patent law in that case, arguably where the high court comes closest to voting on ideological lines in IP cases, is not at issue in either Halo/Stryker or Kirtsaeng .
The copyright case before the court presents a coincidence— if not a compelling reason to worry about a 4-4 split.
After the court failed to decide Costco, it decided a similar issue on copyright protection related to imported goods in the first Kirtsaeng v. John Wiley & Sons Inc. The same parties will be before the court this spring but on an entirely different issue—whether John Wiley & Sons should pay Supap Kirtsaeng's attorneys' fees.
The court was unanimous in 2014 on standards for awarding attorneys' fees in patent cases . It seems unlikely it will be split on the same question in the copyright context.
Of 88 Supreme Court decisions on IP law since Scalia joined the court in 1986, he wrote the court's opinion in nine, concurring opinions in 11, and dissents in 10. Six of the majority opinions were on patent issues and three on trademarks; for copyright-related questions, he wrote only one concurrence and three dissents out of 17 cases.
Scalia wasted no time chiming in, filing a concurrence in the first IP-related case decided after he joined the court: the trademark-related case Young v. U.S. ex rel. Vuitton et Fils, 481 U.S. 787, 2 U.S.P.Q.2d 1809 (1987). His constitutional “originalist” approach was presented to the IP community then: His opinion began with a discussion of an 1812 case, has a reference to the “Founding Fathers,” and quotes from The Federalist.
Lately, Scalia had not been much called upon to write the majority opinion in IP cases, with only two coming in the last 10 years. Arguably, his most influential opinion was in 2007 on declaratory judgment standing in patent cases, MedImmune Inc. v. Genentech Inc., 549 U.S. 118, 2007 BL 119118, 81 U.S.P.Q.2d 1225 (2007) .
However, that doesn't mean he was inactive on the issue; half his dissents on IP issues were filed in the last three years.
Earlier important Scalia opinions for the court include: Wal-Mart Stores Inc. v. Samara Brothers Inc., 529 U.S. 205, 54 U.S.P.Q.2d 1065 (2000) , which held that trade dress infringement requires that the design has secondary meaning; and Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193, 74 U.S.P.Q.2d 1801 (2005) , the cause of much current angst among pharmaceutical patent holders, for its holding that the Hatch-Waxman Act's “safe harbor” for generic companies to conduct tests provides a broad exemption to patent infringement.
Though Scalia did no more than his fair share in terms of writing IP-related decisions, he was always engaged at oral argument.
In the most recent case argued before the court, Scalia put the government's attorney on the defensive by suggesting she was calling another high court decision “dumb” .
He joined in the court's penchant for poking fun at the U.S. Court of Appeals for the Federal Circuit. In April 2014, when Kagan called the appeals court “very clever” for avoiding a hard question on joint liability for patent infringement, Scalia said, “And also avoiding the text of the statute” .
“There is that problem,” Kagan said, joining the audience in laughter.
His biting commentary may have been at its best in the controversial Myriad case, as he defended the patent incentive against the American Civil Liberties Union's counsel's argument that it wasn't necessary for DNA research and development.
“What advantage do I get from being the person or the company that isolated that gene?” Scalia asked. “You say none at all.”
“No, I think you get enormous recognition,” the attorney said, but Scalia cut him off before he could go further.
“Well, that's lovely,” he said.
Ultimately, Scalia joined his colleagues in concluding that discoveries of specific, isolated DNA sequences are not patent-eligible, but he tweaked them with a concurring commentary on the court's opinion as to the biotechnology concepts at issue. He refused to join that part “and some portions of the rest of the opinion going into the fine details of molecular biology.” Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2013 BL 155804, 106 U.S.P.Q.2d 1972 (2013) .
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Mike Wilczek in Washington at firstname.lastname@example.org
Source for IP opinions: U.S. Patents Quarterly
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