Biden Nominee Tiffany Cunningham Tackles Tillis’ Questions on IP Issues at the CAFC

By Eileen McDermott
June 10, 2021

“The current state of eligibility jurisprudence is in abysmal shambles.” – Senator Thom Tillis in questions to Tiffany Cunningham

Tiffany Cunningham and Senator Thom Tillis

President Joe Biden’s nominee for the U.S. Court of Appeals for the Federal Circuit (CAFC), Tiffany Cunningham, yesterday submitted written responses to a series of questions for the record (QFRs) presented by Senator Thom Tillis (R-NC), explaining her view on hot button issues like judicial activism, patent eligibility jurisprudence, the explosion of patent cases in the Western District of Texas, and forum shopping.

Cunningham was announced as Biden’s nominee to the top IP court in March. She would replace Judge Evan J. Wallach, who announced earlier that month that he would retire from active service and assume senior status as of May 31, 2021. She  is a patent litigation partner at Perkins Coie LLP in Chicago, Illinois. She has been with the firm since 2014, and prior to that worked in the Chicago office of Kirkland & Ellis LLP. She served as a law clerk to Judge Timothy B. Dyk on the CAFC from 2001 to 2002 and received her J.D. from Harvard Law School in 2001 and her Bachelor of Science in chemical engineering from the Massachusetts Institute of Technology in 1998.

The Role of a Judge

In his QFRs for Cunningham, Tillis asked a series of questions related to the role judges should play in interpreting and applying the law. Cunningham responded yes to a question on whether a judge’s personal views should be irrelevant and described judicial activism as “injecting one’s personal views into judicial decision-making, which is not appropriate. Regardless of one’s personal views, a judge needs to faithfully apply the law to the facts of each case.” In typical judge fashion, she said that she would assess each case individually and “apply controlling precedent to the facts presented by that case, regardless of my personal views,” and regardless of whether that approach led to an undesirable outcome.

An ‘Abysmal Shambles’

Tillis next grilled Cunningham on Section 101 law, which he described as being “in abysmal shambles.” He asked for her general thoughts on the situation and Cunningham replied that, in her experience, motions to invalidate patents were filed less frequently pre-Mayo/Alice, and that there has been a “significant uptick in the number and the success” of such motions since. She cited a LegalMetric Nationwide Report that found the overall win rate on Section 101 motions to be 50.6% between June 2014 and June 2020 and made reference to the pending American Axle petition at the Supreme Court, for which views of the Solicitor General were requested in May of this year. She added: “While I understand the concerns that you have raised, a s a nominee, it is generally inappropriate for me to comment on whether any given Supreme Court precedent is correctly decided. If confirmed, I would faithfully apply all controlling Supreme Court precedent to the facts of any case, and I would also strive for clarity in the opinions that I authored to best serve future litigants.”

Pressing further on eligibility law, Tillis asked Cunningham to explain how she would apply the Supreme Court’s jurisprudence on eligibility, which excludes laws of nature, natural phenomena, and abstract ideas, to cases before her. Her response described the Supreme Court’s two-step framework for determining eligibility, which she said she would apply “in conjunction with all other on point Supreme Court or Federal Circuit precedent, including the progeny of Alice.”

Forum Shopping and Fintiv

Tillis also asked Cunningham about her views on forum shopping, particularly the explosion of litigation in the Western District of Texas’ Waco Division, and asked what she would do about it. In response, she chiefly reiterated her assertion during the nomination hearings that “district court judges need to be bound by the rule of law and just being focused on applying the law to the facts of each case without really taking into consideration regarding what sorts of cases they might want to appear before them.”

Tillis then invited Cunningham to share her understanding of and views on the problems that have arisen under the Patent Trial and Appeal Board’s (PTAB’s) Fintiv test for discretionary denials, which in part considers the proximity of a district court trial date in determining whether to institute. Since these trial dates are often pushed back, those PTAB decisions to deny review have frustrated stakeholders. While her response did not directly address the question, instead providing the background on discretionary denial precedent, she acknowledged that “an early trial date should be weighed as part of a ‘balanced assessment of all relevant circumstances of the case, including the merits.’”

Nominee for AAG, DOJ Criminal Division

In a separate response to QFRs, Biden’s nominee for Assistant Attorney General for the Criminal Division of the Department of Justice, Kenneth Polite—a partner at Morgan, Lewis & Bockius LLP—addressed a number of IP-related questions, including how he would work with the IP Enforcement Coordinator to coordinate IP efforts across the government:

I would ensure that the Criminal Division fosters productive working relationships with other Department components, as well as with other agencies including the State Department and the IP Enforcement Coordinator in the Executive Office of the President and the National Intellectual Property Rights Coordination Center. I understand that the Criminal Division conducts industry outreach and supports the Global Law Enforcement Network of International Computer Hacking and Intellectual Property (“ICHIP”) attorney advisors. I also understand that the Criminal Division, through its Computer Crime and Intellectual Property Section and its Office of Overseas Prosecutorial Development Assistance and Training, plays a key role in supporting these attorneys and coordinating their efforts to develop international capacity through training, case-based mentoring, and other assistance that can lead to successes in obtaining international cooperation on IP enforcement. I look forward to fully supporting these efforts if confirmed.

 

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 16 Comments comments. Join the discussion.

  1. Anon June 10, 2021 4:46 pm

    Tillis should have been more direct and have been explicit in that it is literally impossible to actually follow the conflicting statements of the Supreme Court or to decipher its Void for Vagueness 101 scrivinings.

    Of course, the “proper” answer to the NON-explicit questions provides NO real answer.

    I do NOT fault Cunningham for such an answer, and as has been ‘custom’ since the judicial vetting process has been co-opted to be a political clown show, such “answers” are a must (unless one wants to be Borked).

  2. Curious June 10, 2021 4:58 pm

    While I’m hopeful that Cunningham will bring a breath of fresh air to the Federal Circuit and will be part of the (Moore-led — finger’s crossed) effort to reign in some of the CAFC’s overexpansion of Supreme Court precedent, her answers to the questions were, predictability, non-answers.

  3. Pro Say June 10, 2021 7:34 pm

    “Since these trial dates are often pushed back, those PTAB decisions to deny review have frustrated stakeholders.”

    Let’s fix this, shall we:

    “Since these trial dates are often pushed back, those PTAB decisions to deny review have frustrated infringers.”

    American innovation, and indeed America as a whole, needs — desperately so — more frustrated infringers.

  4. Anonymous June 10, 2021 8:43 pm

    This is the answer that should have been given: “Thank you for the question on patent eligibility, Senator Tillis. First, I intend to apply the statute because statute defines what is patent eligible and what is not. Congress sets patent policy. The Supreme Court recognizes that every invention can be characterized as an ‘abstract idea.’ Therefore, I intend to follow precedent, including that which says ‘we tread carefully in construing this exclusionary principle lest it swallow all of patent law.’ I share your concern that patent eligibility is an abysmal shambles, but it is your job as a legislator to write clear law and to set patent policy. The constitution clearly lays that responsibility at your feet, so if there is a problem that needs to be fixed, it is the duty of Congress to do it. While the Federal Circuit is an important court in deciding patent disputes, it is not our job to create patent policy. We merely apply the laws you write. If you want no more judicial exceptions to statutory patent eligibility, you must say so in statute. If you pass that statute, I will apply it consistently.”

  5. Anon June 10, 2021 8:50 pm

    Her answers to 11 and 12 are interesting.

    Perhaps the most substance of any provided answers

  6. mike June 11, 2021 12:06 am

    Anonymous @4.
    “Will you marry me?” is the only thing I can say after reading your comment. Could not have been stated any better.

  7. bart June 11, 2021 12:17 am

    Tillis all too often drinks the big tech Kool-Aid. After TC Heartland, there is no forum shopping. There is only the state of incorporation, or a district where infringement occurs (regular place of business). If one of those just so happen to provide jurisdiction in the West Texas Disctrict court — a courtroom that is efficient and has its act together, so be it. West Texas became popular AFTER TC Heartland. There is no forum shopping. Stop drinking the big tech Kool-Aid, Tillis. It makes you believe in fairy tales.

  8. Anon-noyed June 11, 2021 2:44 pm

    @1 “(unless one wants to be Borked)”

    If Mitch McConnell was still Senate Majority Leader, Cunningham wouldn’t have even received a hearing since a Presidential Election is only three years away.

  9. Anon June 11, 2021 7:08 pm

    I hear what you are saying Anon-noyed.

    To be perfectly clear, I blame BOTH parties for the ratcheting up of ‘politics.’

  10. Pro Say June 12, 2021 9:50 am

    Anonymous @ 4: Bravo, brother. You got that right.

  11. Anon-noyed June 14, 2021 4:07 pm

    “I blame BOTH parties for the ratcheting up of ‘politics.’”

    Yeah, but the GOP is far more to blame. For every political action, there is an equal and opposite political reaction.

  12. Anon June 14, 2021 9:16 pm

    Lol – in certain areas (like dark money), sure.

    In other areas, no way — the Left is easily far more off the deep end.

    Quite in fact, at the political/philosophical level, the “Right” is FAR more constrained.

  13. Night Writer June 15, 2021 4:19 am

    This doesn’t sound very good. Cunningham quoting a statistic like “only” 50 % fall under 101, which sounds like a massaged statistic to me at best.

    Sounds to me like Cunningham is in the mold of Stoll where she isn’t going to be an advocate for patents and doesn’t really have a deep understanding of patent law. She just knows how to write them briefs and take the client’s money. And sound professional. My prediction is that she is going to be a disaster. She will be another Prost.

    This is some kind of cruel joke on America. 12 judges on the CAFC plus seniors. 5 were anti-patent judicial activists appointed by Obama. O’Malley was more neutral but ignorant and incapable of leading the CAFC by virtue of having no science education and no background in science, technology, or patents.

    So what we have is a stacked court with Silicon Valley having selected and assigned for Obama to appoint judges that are judicial activists to burn down the patent system.

    The biggest problem right now with patents is not Alice/Mayo or any of the Scotus decision or even the AIA, it is the judges on the CAFC who if they were qualified to sit on the CAFC and not anti-patent could easily cabin the Scotus.

    What a disaster. At best this person is going to be another Moore. What a disaster.

  14. Anon-noyed June 15, 2021 8:14 pm

    The Right is anything but constrained these days. Fascism isn’t creeping on the Right. Fascism/populism has become deeply embedded in the Right to the point where conservatives like Rep. Cheney are tossed out of leadership positions for acting like a leader. I was joking that If Mitch McConnell was still Senate Majority Leader, Cunningham wouldn’t have even received a hearing since a Presidential Election is only three years away, but McConnel just said he wouldn’t consider a Biden SCOTUS nominee in 2024 if he was Senate Majority Leader so the joke doesn’t produce laughter but a nervous chuckle. The GOP of Barry Goldwater is dead.

  15. Night Writer June 16, 2021 10:42 am

    @Anon-noyed

    You are right that the right has a fascism problem led by Trump. But the bigger problem is the left and Neo-Marxism. This is the same thing that happened in the 1930’s in the USA and is a result of the great income disparity that is largely the result of globalism and other policies many of which were adopted by Clinton. The fact is that globalism means for the average USA worker that they will not do well but for those in protected classes then can do better. Europe has declassified the USA from the first world in a recent academic paper looking at statistics regarding jobs, education, and healthcare.

    Anyway, for patents, what is happening is we have Silicon Valley deciding who gets appointed to the CAFC for Ds and we have the D being controlled by Marxists. That is what is hurting patent law. The fascist seem to like patents.

    Reality. Your comment appears to be driven by watching CNN. Try to branch out. A good show that is 60 Minutes Australia.

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