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

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.