Tuesday 16 February 2016

Associate Justice Scalia, IP and His Potential Successor

Like I am sure many, I was shocked to find out on Saturday that Associate Justice Antonin Scalia died.  I felt a number of conflicting emotions on hearing the news.  For one, I admired the general thrust of some of Justice Scalia’s intellectual property law opinions.  As co-blogger Neil Wilkof noted in an excellent post on the IPKat blog, the Walmart v. Samara Brothers opinion certainly stands out.  One of my favorite parts of the opinion is how Justice Scalia noted the argument of counsel essentially that shifting the analysis to a determination of whether something is product design or packaging would lead to difficult factual questions.  Justice Scalia, skillfully avoiding the consumer motivation trap in trademark law, simply basically says, “fine,” now we will presume product design in close cases.  I imagine him giving that famous Scalia gesture while creating that presumption and favoring competition over expansive and potentially vague intellectual property claims—“Wanna use my argument against me—take that!”  Another opinion that stands out is the DaStar v. Twentieth Century Film Corp. opinion.  Once again, Justice Scalia reigns in a potentially expansive intellectual property law claim and does so using wonderful language: “species of mutant copyright law.”  My favorite language from one of his intellectual property opinions, though, is his concurrence in the famous patent eligible subject matter Myriad Genetics decision.  In that case, Justice Thomas wrote the majority opinion, but Justice Scalia wrote this paragraph in his concurrence:

I join the judgment of the Court, and all of its opinion except Part I–A and some portions of the rest of the opin­ion going into fine details of molecular biology. I am unable to affirm those details on my own knowledge or even my own belief. It suffices for me to affirm, having studied the opinions below and the expert briefs presented here, that the portion of DNA isolated from its natural state sought to be patented is identical to that portion of the DNA in its natural state; and that complementary DNA (cDNA) is a synthetic creation not normally present in nature.  (Mayo?)


I am not so excited about some of his other opinions in other fields.


Interestingly, almost immediately, the media and pundits began to speculate about his successor.  The first name to rise to the top was U.S. Court of Appeals for the D.C. Circuit Judge Sri Srinivasan.  Judge Srinivasan has worked for both the Bush Administration and the Obama Administration.  He also served as a partner at O’Melveny and Meyers, the famous Los Angeles based law firm.  Judge Srinivasan was born in Chandigarh, India and has an MBA and a JD from Stanford University.   Notably, in the U.S. Supreme Court IP Stanford v. Roche case, the counsel of record for the amicus National Venture Capital Association was Sri Srinivasan.  The brief essentially argued for overturning the Federal Circuit decision because it could lead to “discouraging private investment in the development and commercialization of federal funded research ideas” and stifling “of cooperative efforts between universities and industry.”   More specifically, the brief states:

First, the Federal Circuit’s decision would tend to discourage venture capitalists and established companies from committing the “risk capital necessary to develop [federally funded] inventions to the point of commercial application.” H.R. Rep. No. 96-1307, pt. 1, at 3 (1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6462. The Bayh-Dole Act has facilitated such investment because it has long been understood to create a clear and predictable ownership framework. The decision below undermines that framework, however, leaving in its place a regime under which venture capital firms cannot easily determine who holds the rights to a federally funded research idea. This uncertainty would discourage the commitment of the risk capital needed to develop and commercialize raw research ideas.

Second, the decision below would tend to stifle cooperative efforts between the business community and university faculty. If, as the Federal Circuit held, individual researchers (faculty, post-doctoral students, or other graduate students) may assign away the rights to future inventions, universities might restrict and police the activities of those researchers in order to protect the ownership of the patents, instead of encouraging technology transfer through faculty-industry interaction contemplated by the Act. Moreover, the decision could discourage successful former startups and established companies from funding research and development in academia through sponsored research agreements. Companies’ participation in these cooperative ventures is contingent on the integrity and clarity of their licensing and assignment arrangements with universities.

Notably, there is not an Asian-American on the U.S. Supreme Court.  Moreover, Judge Srinivasan recently received a unanimous Senate vote to the DC Circuit making it hard to challenge him now.  Of course, there are some “ugly” politics going on right now—particularly with gaming a pick and opposition to one to rile up either the conservative or liberal base of voters.  It bites both ways.  The next appointee will likely be there for a very long time.  As a side note, I recently heard a statistic that more than 5% of all startups in Silicon Valley are founded by Indian Americans.

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