CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent

IP Precedent Under Kagan and Sotomayor

Newest Justices
Expand patent owners’ rights
In recent cases

Although US Supreme Court Justices Sonia Sotomayor (2009) and Elena Kagan (2010) are not as vocal about their opinions on patent law as is, for example, Judge Richard Posner, they both had IP experience before they came to the high court.

Justice Sotomayor was an IP litigator with the Manhattan firm of Pavia & Harcourt from 1984 to 1992. As a judge in the US District Court for the Southern District of New York from 1992 to 1998 she was involved in a number of high-profile IP cases such as Tasini v. New York Times. One of the patent cases she decided (inREFAC Intern., Ltd. v. Lotus Dev. Corp.) was upheld by the Federal Circuit and the other (Intellectual Property Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc.) was overturned. As a judge at the Second Circuit, she heard two cases that dealt with patent issues in an antitrust context.

Justice Kagan never served as a judge before becoming a Supreme Court Justice. As Solicitor General, she oversaw the government’s case in Bilski, in which her office supported the Federal Circuit’s “machine or transformation” test for determining patent-eligible subject matter.

Both new Justices have taken part in high court decisions that broadened patent rights and favored patent owners – but not too far.

For example, in Microsoft Corp. v. i4i Ltd. P’ship, Justice Sotomayor wrote the majority opinion in which Justice Kagan joined, upholding the “clear and convincing” standard for invalidating patent claims in litigation and making it harder to invalidate a patent.

However, in Kappos v. Hyatt, Justice Sotomayor’s concurrence stressed that a patentee’s right to introduce new evidence in a proceeding under 35 U.S.C.S. § 145  does not apply to evidence deliberately suppressed or withheld in bad faith from the Patent Office.

Both Justices supported the Supreme Court’s unanimous decision Mayo v. Prometheus, in which the Court noted that:

Patent protection is, after all, a two-edged sword. On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery. On the other hand, that very exclusivity can impede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements.

So, while monumental change has not happened, it looks as if patent holders have new justices that are able to grasp issues in the IP arena.

Related Articles

AEON Law Founder Adam Philipp Ranked Among Leading IP Lawyers in Chambers USA Guide

AEON Law founder Adam Philipp is included in this year’s Chambers USA guide of the leading IP attorneys in AEON’s home market of Washington. Based ...
Read More

AEON Law and Founder Adam Philipp Ranked Among World’s Top Patent Professionals in IAM Guide

AEON Law and founder Adam Philipp are recognized in this year’s IAM Patent 1000: The World’s Leading Patent Professionals. Adam was recommended for patent prosecution ...
Read More

Understanding the Dawn Donut Rule for Trademarks

In trademark law, the general rule is that, where two parties seek to use the same trademark in the same geographic area, the earlier (“senior”) ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

call us  206.533.3854

SERVICES

PROTECT

DEAL

DEFEND