Scalia Often Put Limits On Rights In IP Decisions
By Ryan Davis
Law360, New York (February 16, 2016, 11:03 PM ET) — Justice Antonin Scalia wrote few opinions and dissents in intellectual property cases and was upfront that it was not exactly his favorite area of the law, but when he did opine on patents and copyrights, he often tended to favor positions that put limits on IP rights, experts say.
The late U.S. Supreme Court justice, who died Saturday at age 79, authored several decisions that went against patent and copyright holders, including a 2007 case that made it easier for companies to challenge the validity of patents they have licensed.
The case, known as MedImmune Inc. v. Genentech Inc., held that patent licensees do not need to stop paying royalties — and thus risk facing infringement liability — in order to file a declaratory judgment suit seeking to invalidate a patent. Justice Scalia’s majority opinion undid precedent that had restricted the ability of licensees to challenge patents.
The decision “was really a game-changer,” said Paul Ragusa of Baker Botts LLP. “It changed the landscape and the balance of power between patent owners and licensees.”
In another case, Merck KGaA v. Integra Lifesciences Ltd. in 2005, Justice Scalia wrote for the unanimous court in a decision that expanded the scope of a safe harbor provision in the Hatch- Waxman Act, creating an exception to patent infringement in drug cases.
“That had vast policy implications, since it opened up a whole realm of activity that now falls under the safe harbor,” said Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff LLP.
Justice Scalia also has the unusual distinction of being the only justice to use the controversial term “patent troll,” often disfavored by patent owners for its pejorative connotations, in a Supreme Court opinion to refer to companies that make no products but file patent lawsuits. That came in a dissent last year in Commil USA LLC v. Cisco Systems Inc., a case that eliminated a defense to infringement and that Justice Scalia said would embolden trolls.
In the copyright realm, Justice Scalia wrote a decision that barred copyright owners from using trademarks to enforce their rights to copyrighted works that have fallen into the public domain.
That 2003 case, known as Dastar Corp. v. Twentieth Century Fox Film Corp., “established important limitations on authors’ rights,” said Ari Waldman, a professor at New York Law School. Had the case gone the other way, the ability to use copyrighted works in the public domain could have been significantly curtailed, he said.
While Justice Scalia’s views on copyright were not completely consistent, “many of his votes went toward more freedom and opening up creative works to the public,” said Waldman, director of New York Law School’s Innovation Center for Law and Technology.
In another major copyright case in 2013, Justice Scalia wrote the dissent in ABC v. Aereo, in which the majority held that a streaming TV service infringed the copyrights of major TV networks. He wrote that because of the way Aereo’s system was set up, he believed that it did not publicly perform any copyrighted works.
Justice Scalia’s views on IP law sometimes put him at odds with those who agreed with him on other issues. Bob Zeidman, president of Zeidman Consulting, who holds 22 patents, said he had a lot of respect for Justice Scalia’s strict interpretation of the Constitution but didn’t understand how that could be squared with his opinions weakening IP rights.
“I don’t think infringers need any more ability to invalidate patents. I think making that easier is not good for the patent system,” he said, adding that Justice Scalia seems to be among those “people who have views on patent law that don’t go along with the rest of their ideology.”
Experts say it’s difficult to make generalizations about Justice Scalia’s approach to IP since he wrote about it infrequently and sometimes signed on to opinions that conflicted with his apparent inclination in other cases toward limiting IP rights. For instance, he was in the majority in Eldred v. Ashcroft, the 2003 case that upheld a law extending the term of copyrights by 20 years.
Perhaps the most defining aspect of Justice Scalia’s relationship with IP law was his apparently limited interest in it, which he expressed in public several times, attorneys say.
Justice Scalia was very knowledgeable about many areas of the law, but “I don’t think he was fully plugged in on copyrights and patents,” said Jonathan Steinsapir of Kinsella Weitzman Iser Kump Holley LLP.
“It just wasn’t his thing. It wasn’t something he was very passionate about,” he said.
Justice Scalia admitted as such. In 2012 interview with Piers Morgan on CNN, he was asked what his hardest case was, and he responded that it “would probably be a patent case.” He declined to identify the case he had in mind, but said it was “the dullest case imaginable” and that “there is no necessary correlation between the difficulty of a decision and its importance.”
In a 2008 speech at a symposium about the legacy of the late Judge Howard Markey, the first chief judge of the Federal Circuit, Justice Scalia opened by saying that he was invited because he was a close friend of Judge Markey and that “I am not here because I am an expert in patent law or in intellectual property law.”
Justice Scalia repeated that same disclaimer last year at an event honoring another one of his close friends, fellow Justice Ruth Bader Ginsburg, held by an organization of female IP lawyers. He told the group that his colleague had a greater understanding of IP law than he did and that when it comes to such cases, “my judgment is often guided considerably by Ruth.”
Justice Scalia also expressed some displeasure with the highly technical and scientific nature of patent cases in an unusual, brief concurring opinion in the 2013 Association for Molecular Pathology v. Myriad Genetics case holding that isolated human DNA is not patent-eligible.
He joined in the judgment but added that he could not join aspects of Justice Clarence Thomas’ majority opinion that went into the “fine details of molecular biology” because “I am unable to affirm those details on my own knowledge or even my own belief.”
That indicated that while Justice Scalia agreed with the outcome, he didn’t think it would be worthwhile to get up to speed on all the technicalities of the science, Noonan said.
“He at least was honest enough and straightforward enough to say, ‘I don’t know what this is about, but it sounds right to me,” he said.
That concurrence rubbed some IP litigators the wrong way. Steinsapir noted that district judges and clerks have to grapple with complex patent issues every day, and “here he is sitting in his ivory tower in the Supreme Court saying, ‘I don’t have to think about this because I’m not a scientist.'”
In general, Justice Scalia did not appear to be as engaged on patent law as on the hot-button social issues like gun control and gay rights, where his conservative views were well-known, attorneys say.
“He may have shared some of the views that patents should be construed and granted parsimoniously, but I don’t think he felt strongly about it,” Noonan said.