Would Kavanaugh Change The Outcome Of SCOTUS Intellectual Property Cases?

It's possible for a single justice to swing the court, it just depends on the IP subject matter.

(Photo by MANDEL NGAN/AFP/Getty Images)

Now that we know the nominee to replace Justice Kennedy’s seat, it’s time to play the “How Will Kavanaugh Vote On Issues I Care About?” game. Most attention is (rightly) going to the big hot button issues like abortion, immigration, or whether a sitting president can be indicted. But since I write on intellectual property issues, let’s take a look at whether Kavanaugh will shift the Court in patent or copyright cases.

Bloomberg has a summary of cases where Judge Kavanaugh has a record on intellectual property issues, mostly related to royalty rates set by the Copyright Royalty Board. Of course, Kavanaugh does not have a judicial record on patents, since those cases are heard by the Federal Circuit. As a result, there isn’t a lot substantively (though a concurring opinion he wrote on one case regarding the Copyright Royalty Board suggests that he may have some thoughts on Patent Trial and Appeal Board, as well) on pure patent and copyright issues to go on.

While, of course, figuring out Kavanaugh’s record on particular issues is predictive of how he will vote on the same issues in the future, it’s not the only factor in the outcome of a SCOTUS case — there are eight other justices on the Court and on some issues, Kavanaugh’s vote might not make a difference, at least in the near term. Let’s take a look at the outcomes of some of the recent patent and copyright cases before SCOTUS.

In the pure patent cases — as opposed to those dealing with other issues, such as civil procedure, administrative procedure, or antitrust — over the last eight years, most cases were decided unanimously, so it’s unlikely that replacing Kavanaugh with Kennedy (or Scalia with Gorsuch) is really going to swing the court on patent issues immediately.

In several cases on patent eligibility, SCOTUS has narrowed the scope of what claims are patentable. In 2010, Bilski v. Kappos In 2012, SCOTUS ruled 9-0 in Prometheus v. Mayo that patent claims that simply apply natural laws do not warrant patent protection. Following this case, in 2013, SCOTUS again unanimously ruled against the patent holder in the case Association of Molecular Pathology v. Myriad Genetics, finding that isolated DNA is not eligible for patent protection because it is a product of nature. (Side note: Justice Scalia penned an amusing three-sentence concurrence in the case, noting that he joined in judgment and the opinion, except for the portions “going into fine details of molecular biology. I am unable to affirm those details on my own knowledge or even my own belief.”)

Determining when induced infringement may occur, SCOTUS again reversed the Federal Circuit 9-0, holding in Limelight Networks v. Akami Technologies that a defendant cannot be held liable unless all steps of a method patent were performed and infringed, rather than just some steps even if another party performs the other steps.

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Even in a case where SCOTUS upheld the plaintiff’s claim of patent infringement, it did so unanimously. In Bowman v. Monsanto, the court ruled that patent exhaustion, the principle that a rightholders’ rights are exhausted on the first sale of the patented article, does not apply to the self-replicating technology of seeds.

There is one case where, if SCOTUS were to hear the issue again today, it could come out differently: Kimble v. Marvel Entertainment. In this 2015 decision, SCOTUS upheld its 1964 decision in Brulotte v. Thys that patent licenses cannot enforce royalties after the expiration of the patent term. This 6-3 decision included Justices Scalia and Kennedy in the majority, and in finding that there was no reason to overturn Brulotte, noted the important role of stare decisis. The dissent, written by Justice Alito and joined by Roberts and Thomas, criticized the majority’s reliance on stare decisis and claimed that this doctrine “does not require us to retain this baseless and damaging precedent.” Judge Kavanaugh will certainly face questions about the role of SCOTUS precedent in deciding future cases, though of course most people will be thinking about Roe v. Wade, not patent misuse.

On copyright issues, the question becomes a bit trickier to answer because SCOTUS has issued more divided opinions than in the patent world. Additionally, there’s not even obvious predictability of how each justice will come down on a particular copyright issue, with the six-justice majority in each of the five SCOTUS cases since 2010 consisting of a different composition of justices (it may be worth noting that in four of the five cases, Breyer and Ginsburg were on opposite sides). Perhaps this lack of predictability is because the copyright issues the court has heard were more diverse, as opposed to the large number of cases involving patentability criteria. Justice Kennedy found himself both in the majority and in the minority on copyright cases over the last eight years (as did Justice Scalia).

In 2010, SCOTUS ruled 6-2 in favor of copyright restoration for works that had fallen into the public domain. Justices Breyer and Alito dissented, with Kagan recusing herself.

In a 2014 decision in Petrella v. MGM, the court ruled 6-3 finding that the laches defense is not available in copyright infringement cases. Justices Breyer, Roberts, and Kennedy dissented.

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In a case involving internet retransmission, American Broadcasting Company v. Aereo, a 6-3 majority ruled in 2014 that Aereo’s live retransmission of television on the Internet to its subscribers infringed the rightholders’ public performance rights. Justices Scalia, Thomas and Alito dissented.

Last year, SCOTUS ruled 6-2 in Star Athetica v. Varsity Brands that a design in a useful article can receive copyright protection if it can be viewed as a work of art separate from the utilitarian article and otherwise meets the criteria for copyrightability. Justices Breyer and Kennedy dissented.

The first sale doctrine was twice heard by SCOTUS since 2010 and is interesting in that it provides an example of how a single justice actually can sway other justices and that outcomes are not necessarily predetermined. In 2010, SCOTUS affirmed a Ninth Circuit decision in Omega S.A. v. Costco by an evenly divided 4-4 court (Justice Kagan recused herself). Then, in the 2012-2013 term, SCOTUS took up the issue of the first sale doctrine once again. SCOTUS issued an opinion in Kirtsaeng v. John Wiley & Sons, finding in favor of parallel importation; the first lawful sale of a copyrighted work anywhere in the world exhausts the copyright holder’s rights. Justices Ginsburg, Scalia, and Kennedy dissented and Kavanaugh (and Gorsuch, for that matter) probably would not have made too much of a difference had he been on the Court. Of course, I say “probably” because while many expected Kirtsaeng to be a 5-4 decision — based on whichever way Justice Kagan decided to vote given the prior split in Omega v. Costco — Kirtsaeng was instead decided by a 6-3 margin. And, let’s not forget the most famous lesson of all on how a single justice can change the direction of the court, remember that Brown v. Board of Education — the case ending “separate but equal” — was poised to be decided in the other direction until Justice Vinson died and was replaced by Earl Warren, who penned a unanimous decision.

So it is possible for a justice to swing the court, but I doubt Kavanaugh will do so on patent issues. Copyright, however, is much tougher to predict.


Krista L. Cox is a policy attorney who has spent her career working for non-profit organizations and associations. She has expertise in copyright, patent, and intellectual property enforcement law, as well as international trade. She currently works for a non-profit member association advocating for balanced copyright. You can reach her at kristay@gmail.com.