Since Amy Coney Barrett first assumed the bench at the U.S. Court of Appeals for the Seventh Circuit three years ago, she has had occasion to decide only a handful of IP cases. These cases alone do not reveal how the Supreme Court’s newest justice might decide future IP cases. But given that her academic work did not involve intellectual property, these several cases shed light on issues she may not have commented on during her academic career, including trademarks and trade dress, copyrights, trade secrets, and even patents.
In the only two opinions authored by then-Judge Barrett touching on intellectual property, she did not have the occasion to dive deep into IP issues. Nevertheless, the opinions reveal an understanding of features that make different types of IP distinct and how IP can differ from other areas of law. In J.S.T. Corp. v. Foxconn Interconnect Technology Ltd., the plaintiff brought claims for trade secret misappropriation against several competitors involving electrical connector parts for automobiles. The district court dismissed the suit for lack of personal jurisdiction. On appeal, the plaintiff argued that there was personal jurisdiction in Illinois under the stream of commerce theory because cars containing the parts were sold in the state. Writing for the court, Barrett rejected the plaintiff’s theory, explaining that specific jurisdiction requires that the litigation arose out of the minimum contacts with the forum state. First, she distinguished the case from product liability suits, where the location of the consumer sale is relevant. Conversely, trade secret misappropriation “is not intrinsically linked to interactions with a consumer.” She then noted that trade secret misappropriation is also unlike other forms of IP where the consumer may be relevant, such as trademark law, “in which consumer confusion can be at the heart of the underlying claim,” or patent law, “in which the sale of a patented invention to a consumer can be an act of infringement.” Because the defendants “did not acquire, disclose, or use J.S.T.’s trade secrets in Illinois,” and the elements of the alleged misappropriation “can be completed long before an offending product ever comes into contact with a consumer,” Barrett concluded that the Illinois car sales did not support the exercise of personal jurisdiction in the state.
Next, Judge Barrett’s opinion in PMT Machinery Sales, Inc. v. Yama Seiki USA, Inc. involved the interplay between trademarks and Wisconsin’s Fair Dealership Law, which protects dealers from having a manufacturer sever the relationship without good cause. One of the ways that law defines a “dealership” is based on a contract or agreement granting the right to “use a trade name, trademark, service mark, logotype, advertising or other commercial symbol” of the manufacturer. However, prior cases had established that the right to use alone was insufficient. Instead, the purported dealer must also make “substantial investment in the trademark” such that it “ties its fortunes to the reputation” of the manufacturer. Otherwise, the purported dealer would not be harmed or in need of protection if the manufacturer cut its ties. Ultimately, Barrett’s opinion for the court concluded that merely including the manufacturer’s logos on plaintiff’s website was de minimis and not a sufficient “use” for the plaintiff to qualify as a dealer under the Wisconsin law.
Additionally, Barrett sat on panels deciding other IP cases at the Seventh Circuit—always joining the court’s opinion rather than writing separately in concurrence or dissent. For example, in Sullivan v. Flora, Inc., Judge Barrett joined a unanimous panel decision addressing a question of first impression for the Seventh Circuit regarding statutory damages under the Copyright Act. In place of actual damages, Section 504(c)(1) of the Copyright Act permits a copyright holder to seek statutory damages for infringement “with respect to any one work” of between $750 and $30,000. That section specifies, however, that “all the parts of a compilation or derivative work constitute one work.” Under facts that involved 33 copyrighted illustrations split between two advertising campaigns when first published and registered with the Copyright Office, the court closely adhered to the statutory text and required as an initial matter a determination of whether each illustration constituted “one work” or whether they were instead part of two compilations—i.e., whether there were 33 works or just 2 for which statutory damages could be awarded. While the Copyright Act does not define what constitutes “one work,” other circuits had addressed the question—although not without some disagreement. After reviewing those decisions, Sullivan joined the majority of circuits in holding that the keystone for identifying “one work” under § 504(c)(1) is independent economic value. The question therefore became whether each of the 33 illustrations had standalone value or whether they had value “only in and through their composite whole.” On an incomplete record, the court did not decide that question. But the court’s focus on the statute in a case involving copyright damages is in keeping with Barrett’s reputation as a self-described textualist and originalist.
Barrett also decided trade dress issues while at the Seventh Circuit. In Bodum USA Inc. v. A Top New Casting Inc., following a jury trial finding infringement of Bodum’s iconic French press coffeemaker design, the defendant argued on appeal that Bodum had failed to show that elements of its trade dress were nonfunctional. The court rejected that argument, holding that Bodum had presented sufficient evidence on that issue and distinguishing the defendant’s arguments regarding functionality of a handle with whether there were any functional advantages to having the handle of Bodum’s design. The defendant also argued that the district court had erred by excluding utility patents probative of the design’s functionality, due to potential jury confusion under FRE 403. But the appeals court noted the “special deference” accorded to Rule 403 determinations and the fact that the patents’ probative value was limited because they failed to claim any of the elements of Bodum’s asserted trade dress.
Finally—and unexpectedly to many—Barrett considered substantive patent law issues during her tenure on the Seventh Circuit. ABS Global, Inc. v. Inguran, LLC is one of the rare cases where a patent appeal did not fall under the exclusive jurisdiction of the Federal Circuit. Acknowledging that “it is rare for our court to see a patent case,” the court began by satisfying itself of its appellate jurisdiction through examining whether there was any relationship between the antitrust claims asserted in the original complaint and the patent infringement counterclaims. Finding that the claims were “quite different,” the court held that the defendant’s patent counterclaims were permissive, and thus there was no Federal Circuit jurisdiction under 28 U.S.C. § 1295(a), as the case did not “aris[e] under” the patent laws and did not involve compulsory patent counterclaims.
Proceeding to the merits of the appeal, the court addressed two issues on invalidity following a jury verdict in favor of the patent holder. First, ABS Global argued that the asserted claims for sorting cells were obvious for incorporating a known sorting technique into a separately known method. Given the limited number of cell sorting techniques, the court initially agreed that “as in KSR,” the patent substituted an “identified, predictable solution” into an existing method. However, the court went on to explain that the evidence, viewed in the light most favorable to the patent holder, also showed that merely substituting the particular cell sorting technique involved “large trade-offs in purity and viability, with limited gains in speed.” Based on this, the court concluded that the inventors of the claimed invention went beyond the obvious “by conceiving of a photo-damage sorter that could overcome these roadblocks.”
The second issue addressed by the Seventh Circuit in ABS Global was whether the jury’s verdict was fatally inconsistent in finding that a dependent claim was invalid for lack of enablement but its independent claim was enabled and not invalid. The patent holder argued that the jury could have found that the additional limitation added by the dependent claim was not enabled and that the independent claim was otherwise enabled. But after basic discussion of what independent and dependent claims are and enablement in general, the court held that the jury verdict was indeed inconsistent and a new trial was warranted. The court explained that “because the dependent claim’s scope is a subset of the independent claim’s scope,” the jury’s verdict that the dependent claim was not enabled means that the full scope of the independent claim was also not enabled.
Given the Supreme Court’s recent decisions in the area of IP, Justice Barrett, as a self-described textualist, will find ample company. Many of the Court’s recent decisions relating to intellectual property—Halo Electronics, Inc. v. Pulse Electronics, Inc.; Samsung Electronics Co. v. Apple, Inc.; SAS Institute v. Iancu; Romag Fasteners, Inc. v. Fossil Group, Inc.; and U.S. Patent & Trademark Office v. Booking.com B.V., just to name a few—have reigned in courts and agencies that strayed from the language of the relevant statutes. Despite being at the Seventh Circuit for only three years, Barrett decided several IP cases, including the rare patent case. While that small sample of IP cases may not reveal how Justice Barrett may react to particular IP issues, together with her emphasis on statutory language, it does demonstrate her understanding that the different types of IP are distinct and that each type of IP involves consideration of unique sets of issues.