Patent Owner Flags Judge Newman’s Suspension to Supreme Court

The owner of an invalidated background-check software patent urged the US Supreme Court to consider the Federal Circuit’s suspension of 97-year-old Judge Pauline Newman, whose absence on the court the company says deprived it of a potentially sympathetic ear.

Miller Mendel Inc.'s patent was deemed abstract under Section 101 of the Patent Act under the high court’s two-step patent eligibility test from its 2014 decision in Alice Corp. v. CLS Bank Int’l., first by an East Texas district court judge and then by a three-judge panel at the US Court of Appeals for the Federal Circuit. The appellate decision came, however, while Newman—who has been critical of the use of the Alice test to weed out patents as abstract—was suspended from hearing new cases by the court’s Judicial Council after she refused to sit for an independent medical evaluation.

Miller Mendel was robbed of “even having a chance that the most experienced appellate patent judge, and one of the harshest critics of Section 101 jurisprudence, could participate, hear, and rule on the case,” the company wrote in a petition to the high court docketed Oct. 18.

Miller Mendel sued the small city of Anna, Texas, in 2021 alleging infringement of its US Patent No. 10,043,188. The action was part of a litigation campaign against state and local governments, including Oklahoma City and the Alaska State Troopers, that use software sold by its competitor Guardian Alliance Technologies.

Miller Mandel said the Supreme Court should take up its case because with Newman sidelined, it was effectively and unconstitutionally denied its “right to an unbiased tribunal.” The petition repeats claims Newman and her lawyer have asserted that Newman’s suspension wasn’t due to concerns about her health or ability but rather was a deliberate “silencing” of the judge—long considered “patent friendly"—because of her unpopular views.

The petition separately seeks Supreme Court intervention due to the district court’s consideration and reliance on a declaration from Guardian’s CEO in dismissing the lawsuit, and also due to what it argues is a lack of objective criteria available to courts trying to determine when patents are abstract under Alice.

Newman has challenged her suspension, both administratively and through a lawsuit in the US District Court for the District of Columbia. That suit was dismissed and Newman’s appeal to the US Court of Appeals for the D.C. Circuit is pending.

Rylander & Associates represents Miller Mendel. The City of Anna was represented by Ryan Whaley PLLC and Dunlap Codding PC at the Federal Circuit.

The case is Miller Mendel Inc. v. City of Anna, U.S., 24-439, cert. petition docketed 10/18/24.