The U.S. Supreme Court today invited the Solicitor General (SG) to weigh in on a case about internet service provider (ISP) liability for infringement and denied another petition for certiorari asking the Court to clarify U.S. patent eligibility law. The latter petition also asked the Court to consider whether Judge Pauline Newman’s effective removal from the U.S. Court of Appeals for the Federal Circuit (CAFC) has deprived patent owners “of a fair hearing before a duly constituted appellate panel.”

In Cox Communications, Inc. v. Sony Music Entertainment, et. al. and a separate petition filed by Sony, the Supreme Court’s order list today invited the Solicitor General to file a brief in both cases. Most recently, Cox Communications filed a brief in October opposing Sony’s petition for certiorari that charged “[p]etitioners want to make a terrible situation even worse.” The case involves claims by music publishers including Sony, Arista Records, Warner Music and Universal Music Group against Cox in July 2018 that alleged Cox was liable for the infringement of 10,017 musical works that were illegally distributed by the ISP’s subscribers. A 2020 jury verdict found that Cox liable for both vicarious and contributory infringement, leading to a $1 billion damages verdict against Cox after damages were increased for the jury’s willfulness finding. Then, in February of this year, the Fourth Circuit ruled on Cox’s appeal, affirming the willful contributory infringement finding but remanding for a new trial on damages after overturning the vicarious liability finding for lack of Cox’s profit directly attributable to its subscribers’ acts of infringements.

Cox petitioned the Supreme Court in August 2024 asking whether the Fourth Circuit erred in finding that Cox materially contributed to infringement merely because it did not terminate Internet access to subscribers who were alleged to have committed infringement without proof. The petition also questions whether mere knowledge of infringement suffices to find willfulness under 17 U.S.C. § 504(c). Sony filed a competing petition one day later asking the Court whether the profit requirement for vicarious liability only permits liability where the defendant expects commercial gain from the alleged infringing act, or whether other circuits are correct in holding that this requirement is fulfilled when the defendant expects to gain from the enterprise, allowing infringement to occur.

In September, amici representing both ISPs and music publishers weighed in on each petition. The request for the SG’s views indicates the Court is likely to grant at least one of the petitions.

Eligibility Petition Denied

In Miller Mendel v. Anna, TX, the Court today denied a petition for writ of certiorari asking the Justices to consider the effects on patent owners of CAFC Chief Judge Kimberly Moore’s effective removal of Judge Newman from the Federal Circuit due to alleged misconduct related to her refusal to submit to the CAFC’s preferred medical experts for testing to prove she is not cognitively impaired. The Special Committee of the Federal Circuit that has been investigating her alleged misconduct in July 2024 renewed its recommendation to sanction her in the form of a suspension from hearing cases at the panel or en banc level for an additional year. Newman has submitted to medical testing by three separate neurological experts.

The SCOTUS petition was filed on October 16 by Miller Mendel, Inc., which lost its appeal to the CAFC in July. In that case, the CAFC  affirmed the Eastern District of Texas district court’s decision for the City of Anna, Texas (“the City”), that claims for a software system that manages pre-employment background investigations were patent ineligible. The decision was precedential and authored by Judge Cunningham.

Aside from the question about Judge Newman’s treatment by the court, Miller Mendel was  also asking the High Court to consider questions relating to the proper use of Rule 12(d) of the Federal Rules of Civil Procedure; whether the current judicial exception to patentability for abstract ideas for Section 101 “allows courts to invalidate patents arbitrarily without factual development or evidentiary support, thus undermining the predictability and stability necessary for the patent system to function effectively”; and whether the Court should eliminate the judicial exception altogether.

With respect to the petition’s argument about Judge Newman, Miller Mendel explained that “effectively removing an Article III judge, one of the most experienced and perceived patent friendly appellate judges on the Federal Circuit and who has been particularly critical of the Federal Circuit’s jurisprudence regarding ‘abstract ideas,’” raises serious constitutional questions. The petition also said that Newman’s removal prejudiced Miller Mendel, since without her, there was not even a possibility that “the Federal Circuit’s most experienced and vocal critic of Section 101 jurisprudence” could have been appointed to the panel.

Further, the petition argued that the Judicial Disability Act, “as applied in this case, allowed co-equal judges to sideline a judge known for her critical views on patent jurisprudence, particularly regarding the controversial abstract idea doctrine.”

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