Last week, Justice David Souter announced that he would retire from the Supreme Court at the end of the Court’s current term in June. Justice Souter, 69, was appointed to the Court by President George H.W. Bush in 1990.
Justice Souter did not leave a large impact on patent law or intellectual property law in general, but the opinions that he wrote on the subject are significant.
Those in the patent field will remember Justice Souter as being the author of the unanimous Supreme Court opinion in Markman v. Westview Instruments, where the Court held that construction of patent claims is exclusively within the province of the court, as opposed to the jury. The case marked one of the rare times where the Supreme Court affirmed a decision of the Federal Circuit.
While the decision certainly has its critics, it had a significant effect on way patent infringement suits are tried. Prior to this decision, juries had to determine what the words of a patent claim meant before determining whether the patent was infringed. This often led to contradictory decisions in different cases. After this decision, most patent infringement cases include a “Markman Hearing” prior to trial where the court hears arguments as to the meaning of disputed claim terms. The court then gives a ruling as to which meaning it favors. Many cases settle shortly after the court makes its “Markman Ruling.”
Justice Souter also wrote the Supreme Court opinion’s in Campbell v. Acuff-Rose Music and MGM Studios v. Grokster. In Campbell, the Supreme Court held that a commercial parody can still qualify as fair use under the Copyright Act. In that case, the Court held that 2 Live Crew’s parody of Ray Oribson’s “Oh, Pretty Woman” qualified as fair use. In Grokster, the Supreme Court held that peer-to-peer file sharing companies could be sued for inducing copyright infringement for their marketing of file sharing software.
Obviously, intellectual property is not a high political priority when naming a successor to the Court. Given that the Supreme Court is reviewing Federal Circuit cases with greater frequency in recent years, however, it would be nice to have a new justice who understands the value of intellectual property.