Supreme Court Justice Sotomayor's Intellectual Property Record

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...