Quick Look at Judge Sonia Sotomayor’s IP Cases

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by Brian Fletcher on May 28, 2009



Supreme Court nominee Judge Sonia Sotomayor has understandably had few patent-related cases while on the Second Circuit, but was more involved in patent trials while on the Southern District of New York.  She has never sat on the Federal Circuit as a Visiting Judge.


District Court Patent Cases


Judge Sotomayor had two cases that reached the Federal Circuit on appeal. 


The appellate panel agreed with her on one case 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.).


Her claim construction ruling in another case was disagreed with in 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).


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).


Second Circuit Patent Cases


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);


In re Visa Check/MasterMoney Antitrust Litigation, 280 F.3d 124 (2nd Cir. 2001)(Sotomayor, J.)(class certification of antitrust claims).





Sotomayor played a role in one of the major copyright disputes of recent years, a case in which freelance journalists eventually won the right to demand royalties for online archiving of their works.  As a judge of the U.S. District Court for the Southern District of New York, Sotomayor ruled in favor of the newspaper and magazine publishers who argued that they could include the freelancers’ works in electronic collections of their publications under the Copyright Act’s revision right.  New York Times Co. v. Tasini, 533 U.S. 483, 59 USPQ2d 1001 (2001) (122 PTD, 06/26/01).


In the Tasini case, a group of freelance journalists filed suit against the New York Times Co. and other publishers for taking stories that they had independently contributed to for publication, and converting them for use on electronic databases and CD-ROM devices.  Sotomayor granted summary judgment to the publishers, holding that the transfer of collective works to electronic media fell within the legitimate revisions publishers are allowed to make under 17 U.S.C. §201(c).  972 F. Supp. 804, 43 USPQ2d 1801 (S.D.N.Y. 1997).


Sotomayor’s opinion was overruled when the Supreme Court affirmed the Second Circuit’s interpretation of Section 201(c).  In its opinion, the Supreme Court said that the publisher’s privilege of revision does not include the right to convert the subject matter to electronic formats because these transfers are not a mere conversion of intact periodicals or revisions from one medium to another.  The court pointed out that databases offer users individual articles, not intact periodicals and that this makes the content of the transfer not necessarily “a part of” the original collective work.


In A. Brod Inc. v. SK&I Co. LLC, 998 F. Supp. 314, 47 USPQ2d 1008 (S.D.N.Y. 1998), Sotomayor held that a determination of copyright ownership on the basis of express or constructive trust theories is not preempted by the Copyright Act.





While serving on the Second Circuit, Sotomayor helped define the parameters of the Anticybersquatting Consumer Protection Act by ruling as a matter of first impression that the ACPA provides in rem jurisdiction over a disputed domain name only in the judicial district where the domain name registrar, registry or other authority is located.  Mattel Inc. v. barbie-club.com, 310 F.3d 293, 64 USPQ2d 1879 (2d Cir. 2002).


She overturned the Southern District of New York’s ruling that a trademark owner’s earlier litigation under the ACPA barred it from seeking relief under the Uniform Domain Name Dispute Resolution Policy.  Storey v. Cello Holdings LLC, 347 F.3d 370, 62 USPQ2d 1641(2d Cir. 2003) (201 PTD, 10/17/03).


In an “advertising injury” case involving trademarks, Sotomayor filed a dissent, stating that given ambiguities in the meaning of “trademarked slogan,” the majority improperly ruled that an insurer had a duty to defend the trademark owner under a general liability policy.  Hugo Boss Fashions Inc. v. Federal Insurance Co., 252 F.3d 608, 59 USPQ2d 1161 (2d Cir. 2001) (120 PTD, 06/22/01).


In PRL USA Holdings Inc. v. U.S. Polo Association, 520 F.3d 109, 86 USPQ2d 1022 (2d Cir. 2008), Sotomayor joined in the opinion of the court, affirming a jury verdict for noninfringement in a trademark dispute on the grounds that a federal district court did not err in permitting a jury to hear evidence that the owner of Ralph Lauren’s polo-player trademark had, in previous settlement negotiations, stated that he would not object to the governing body of polo in the United States using a logo with two polo players.


In Playtex Products Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 73 USPPQ2d 1127 (2d Cir. 2004) (233 PTD, 12/6/04), Sotomayor found in a trademark dispute that an Internet search engine did not cause a likelihood of confusion among consumers over the terms “Wet-Ones” and “Moist-Ones” in relation to moistened towelettes.


In Nadel v. Play-by-Play Toys & Novelties Inc., 208 F.3d 368, 54 USPQ2d 1810 (2d Cir. 2000), Sotomayor joined in the opinion of the court in vacating a summary judgment for a defendant in an unfair competition case, holding that contract claims in submission of ideas cases require proof of novelty to the buyer alone, whereas misappropriation in such cases requires proof of novelty generally.


In Schering Corp. v. Pfizer Inc., 189 F.3d 218, 51 USPQ2d 1705 (2d Cir. 1999), Sotomayor joined with her colleagues in the Second Circuit in holding that surveys may be admitted into evidence under the hearsay rule’s present state of mind exception for the limited purpose of establishing a pattern of implied falsehood in communications alleged to violate the Lanham Act.


Again, this is a non-exhaustive list compiled from various sources.

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