Skilled in the Art Justice Anthony M. Kennedy Retirement Edition Scott Graham email me on Twitter.

Kennedy Kept Things Flexible in IP

Justice Anthony Kennedy Bilski v. Kappos the first in the recent series of four Section 101 opinions KSR v. Teleflex Commil v. Cisco Festo v. Shoketsu Konzoku the belief that patent law abhors rigid rules Paul Hastings Igor Timofeyev Festo Corp KSR Bilski v. Kappos Kennedy also penned dissents in Global Tech v. SEB Eli Lilly v. Medtronic eBay v. MercExchange called out non-practicing entities Lisa Larrimore Ouellette Supreme Court Patent Cases Pom Wonderful v. Coca-Cola Traffix Devices v. Marketing Displays Kmart v. Cartier Matal v. Tam, Already v. Nike Moseley v. Secret Catalogue Campbell v. Acuff-Rose Music.

What Kennedy Said, IP Department

Some notable quotes from Kennedy's IP opinions (citations omitted):

➤ “[T]he doctrine of equivalents and the rule of prosecution history estoppel are settled law. The responsibility for changing them rests with Congress. Fundamental alterations in these rules risk destroying the legitimate expectations of inventors in their property.”– Festo v. Shoketsu Kinzoku, 2002

➤ “An industry has developed in which firms use patents not as a basis for producing and selling goods but, instead, primarily for obtaining licensing fees. For these firms, an injunction, and the potentially serious sanctions arising from its violation, can be employed as a bargaining tool to charge exorbitant fees to companies that seek to buy licenses to practice the patent. When the patented invention is but a small component of the product the companies seek to produce and the threat of an injunction is employed simply for undue leverage in negotiations, legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest.”– eBay v. MercExchange, 2006 (concurring opinion)

➤ “We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.”– KSR v. Teleflex, 2007

➤ “This Court's precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under Section 101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible 'process.'"– Bilski v. Kappos, 2010

➤ “[I]t is still necessary and proper to stress that district courts have the authority and responsibility to ensure frivolous cases are dissuaded. If frivolous cases are filed in federal court, it is within the power of the court to sanction attorneys for bringing such suits.”– Commil v. Cisco, 2015

➤ “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government's benevolence.”– Matal v. Tam, 2017 (concurring opinion)

➤ “Fair use is an affirmative defense, so doubts about whether a given use is fair should not be resolved in favor of the self proclaimed parodist. We should not make it easy for musicians to exploit existing works and then later claim that their rendition was a valuable commentary on the original. Almost any revamped modern version of a familiar composition can be construed as a 'comment on the naivete of the original,' because of the difference in style and because it will be amusing to hear how the old tune sounds in the new genre. Just the thought of a rap version of Beethoven's Fifth Symphony or 'Achy, Breaky Heart' is bound to make people smile.”– Campbell v. Acuff-Rose, 1994 (concurring opinion)

Registration Is Now Open

at what point a copyright holder has “registered” a work with the Copyright Office registered or registration has been refused Aaron Panner of Kellogg, Hansen, Todd, Figel & Frederick for petitioner Fourth Estate Public Benefit Corp Peter Stris of Stris & Maher represents respondent backing Wall-Street.com

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Best BUDS

Latham & Watkins IP partner Max Grant Basic Underwater Demoliton/SEAL the SEAL Code creature from the black lagoon