Second Circuit Judge Sonia Sotomayor has been nominated to fill the seat of retiring Justice David Souter. Judge Sotomayor has a rather sparse record on patent and IP issues. Since the Second Circuit does not hear patent appeals, this is not surprising. Prior to her elevation to the appellate court, Judge Sotomayor served as a trial judge in the Southern District of New York.
Thanks to Hal Wegner for providing the following information on patent experience of Judge Sotomayor. His research includes cases reported by Westlaw.
District Court Patent Cases Appealed to the Federal Circuit: Judge Sotomayor had two cases that reached the Federal Circuit on appeal. In one case, the appellate panel agreed with her where she held a patent unenforceable based upon inequitable conduct, REFAC Intern., Ltd. v. Lotus Development Corp., 887 F.Supp. 539 (S.D.N.Y. 1995) (Sotomayor, J.), aff’d, 81 F.3d 1576 (Fed. Cir. 1996)(Lourie, J.). In the other, the court disagreed with her claim construction ruling, Intellectual Property Development, Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1317 (Fed. Cir. 2003)(Schall, J.), initial claim construction ruling, 1998 WL 142346 (S.D.N.Y. 1998) (Sotomayor, J.)(Markman ruling), subsequent rulings by different trial judge, 2002 WL 10479 (S.D.N.Y. 2002).
Second Circuit Patent Contact: Her brief experiences with patent issues while sitting as a Circuit Judge were in Innomed Labs, LLC v. Alza Corp., 368 F.3d 148, 161-62 (2nd Cir.2004)(Sotomayor, J.) (Robinson-Patman Act antitrust issue implicating patent exhaustion); Nadel v. Isaksson, 321 F.3d 266, 273 n.3 (2nd Cir. 2003)(Sotomayor, J.)(distinguishing novelty in court action under dispute from patent law novelty); and In re Visa Check/MasterMoney Antitrust Litigation, 280 F.3d 124 (2nd Cir. 2001)(Sotomayor, J.)(class certification of antitrust claims).
Earliest Reported Patent Case: As a trial judge, Judge Sotomayor was also involved in Dow Corning Wright Corp. v. Biomet, Inc., 1993 WL 60571 (S.D.N.Y. 1993)(Sotomayor, J.)(denying summary judgment motion of noninfringement on the basis that prosecution history estoppel did not limit scope of protection).
In addition to her patent experience, Judge Sotomayor has been involved in several copyright cases of note. She was the trial judge in New York Times Co. v. Tasini, where freelance writers sued the New York Times and LexisNexis for copyright infringement based on the re-printing of their articles in electronic form on Lexis. Judge Sotomayor ruled that the publishers were within their rights in doing this. Her decision was reversed by the Second Circuit and the Supreme Court affirmed the Second Circuit decision. The Supreme Court decision held that the writers were entitled to compensation if their stories were re-printed without their permission.
In Castle Rock Entertainment Inc. v. Carol Publishing Group, Judge Sotomayor ruled that a trivia book based on the television series Seinfeld infringed the copyrights held by the shows producers and did not constitute fair use. She ruled that the content was not unprotectable facts, but rather protectable expression under the Copyright Act. The Second Circuit affirmed her decision.
In private practice from 1984-92, Judge Sotomayor worked for the litigation boutique Pavia & Harcourt where she specialized in intellectual property and copyright litigation.