This evening the United States Senate voted 63-33 to confirm Tiffany P. Cunningham’s nomination to the Federal Circuit. Once she receives her commission, she will make history by becoming the first African American judge on the Federal Circuit. As we have highlighted, she will join the court with prior experience as a law clerk at the Federal Circuit with Judge Dyk. She is a registered patent attorney with an undergraduate degree in chemical engineering and nearly two decades of experience as a patent litigator with Perkins Coie in Chicago.
This morning the Supreme Court issued its decision in Minerva Surgical, Inc. v. Hologic, Inc., a patent case reviewing the Federal Circuit’s approach to the doctrine of assignor estoppel. In a 5-4 split decision, the Court vacated and remanded the Federal Circuit’s judgment. In a majority opinion authored by Justice Kagan, the Supreme Court held that the Federal Circuit “was right to uphold” the doctrine but “failed to recognize the doctrine’s proper limits.” Here is a brief summary of the Court’s holding with quotations from Justice Kagan’s opinion as well as from dissenting opinions authored by Justices Alito and Barrett.
Federal Circuit Issues Notice of Modifications to Court Operations and New Protocols for In-Person Arguments
This morning the Federal Circuit announced that starting August 30, for the first time since the onset of the pandemic more than a year ago, it will hold in-person oral arguments. Indeed, the court has indicated that every argument will be scheduled to occur in person, but that the court will entertain motions for leave to appear remotely in appropriate circumstances. The court issued protocols for these in-person arguments, along with an indication of appropriate bases for obtaining permission to appear remotely. Notably, the protocols highlight “the court’s strong preference for in-person argument, based on the court’s experience of its distinctive value.” Case in point: the court has indicated that, even if one side to an appeal gains permission to appear remotely, the other side will not be excused from appearing in person. Moreover, for the first time the court has opted to use videoconferencing (rather than audioconferencing) for remote appearances “unless the court directs otherwise.” Here are highlights from the protocols along with the text of today’s announcement.
Breaking News – Supreme Court Agrees PTAB’s Authority Violates Appointments Clause, Remands for USPTO Director to Determine Whether to Grant Rehearing
This morning the Supreme Court agreed with the Federal Circuit that the statutory authority given to the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board violates the Appointments Clause. The Supreme Court, however, disagreed with the Federal Circuit as to the appropriate remedy given this violation. According to the Supreme Court, both the constitutional violation and the appropriate remedy relate to the lack of statutory authority for the Director of the USPTO, a principal officer of the United States nominated by the President and confirmed by the Senate, to decide whether to grant rehearing with respect to the underlying inter partes review proceeding. Here is a brief summary of the Court’s holding in United States v. Arthrex, Inc.; Arthrex, Inc. v. Smith & Nephew, Inc.; and Smith & Nephew, Inc. v. Arthrex, Inc., along with language from the Court’s controlling opinion.
Yesterday the Senate Judiciary Committee voted 16-6 in favor of President Biden’s nomination of Tiffany P. Cunningham to the Federal Circuit. As a result, her nomination has advanced to the full Senate and has been placed on the Senate’s Executive Calendar.
Special Report on Yesterday’s Senate Hearing Regarding Tiffany Cunningham’s Nomination to the Federal Circuit
Yesterday the United States Senate’s Committee on the Judiciary heard testimony from Tiffany Cunningham, President Biden’s nominee to become the newest judge on the Federal Circuit. Here is a collection of reports about yesterday’s hearing.
Chicago attorney Tiffany Cunningham Sprints Through Senate Judiciary Committee Hearing – Lynn Sweet, a reporter for the Chicago Sun Times, mentions in her article that “[i]f confirmed, [Cunningham] will be the first Black judge to sit on the U.S. Court of Appeals for the Federal Circuit in D.C.”
Who is Tiffany Cunningham? – In her article on NationalReview.com, Carrie Campbell Severino reviews President Biden’s nominee for the Federal Circuit, Tiffany Cunningham, and the recent Senate Judiciary Committee nomination hearing.
Judge (Upcoming) Tiffany Cunningham – Dennis Crouch reports on PatentlyO.com on Tiffany Cunningham’s hearing and attaches Cunningham’s written answers.
Federal Circuit is ‘Dream Job,’ Cunningham Tells Senate Panel – Matthew Bultman, on BloombergLaw.com, reports about the nominee Tiffany Cunningham, who described a seat on the Federal Circuit as a “dream job.”
Here are more details on each article or blog post.
On April 21, the Supreme Court heard oral argument in Minerva Surgical, Inc. v. Hologic, Inc. As we highlighted in our argument preview, the question presented to the Court was “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.” In other words, the parties argued for and against the doctrine of assignor estoppel. This is our argument recap.
Update (April 21, 2021 at 3:30 pm):
The Federal Circuit issued a revised announcement changing only the date of Judge Moore’s succession, from May 21 to May 22.
This afternoon the Federal Circuit announced that one month from today, on May 21, 2021, Judge Moore will succeed Judge Prost as the Chief Judge of the Federal Circuit. The court highlighted that Judge Prost will continue to serve the court as an active judge following the conclusion of her term as Chief Judge. Notably, Judge Prost has served as the court’s Chief Judge since May 31, 2014, and so she will step down from her position as Chief Judge ten days short of the full seven-year term allowed by statute. Here is the text of today’s announcement, which includes a link to a more full description of the transition.
On Wednesday, the Supreme Court will hear oral arguments in Minerva Surgical, Inc. v. Hologic, Inc., the case that is predicted to determine the fate of the assignor estoppel doctrine. Specifically, the question presented to the Court is: “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.” This is our argument preview.
This morning the Supreme Court reversed the Federal Circuit’s finding of copyright fair use in Google LLC v. Oracle America, Inc. Justice Breyer authored the Court’s majority opinion, which Chief Justice Roberts and Justices Sotomayor, Kagan, Kavanaugh, and Gorsuch joined. Justice Thomas authored a dissenting opinion, which Justice Alito joined. Justice Barrett did not participate in the case. Here are the introductions to the majority and dissenting opinions.