Timing of CVSG Briefs: American Axle Coming Soon

by Dennis Crouch

Although patents are a form of private property, they are also expressly a tool of public policy.  When a private patent lawsuit of interest reaches the Supreme Court,  the Court regularly turns to the President’s administration for its views on how a decision may impact patent law and innovation writ large. That request for an amicus brief from the government is termed a CVSG – Call for the Views of the Solicitor General.   One problem with CVSGs is that they typically add several months to the certiorari process because the DOJ spends substantial time collecting input from various government branches and outside interests before drafting and filing its brief.  In patent cases, a Gov’t amicus brief is often the most important at the certiorari stage — or at least the most predictive of the outcome.

We are currently waiting CVSG amicus briefs in two patent cases pending before the Supreme Court:

  • American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (patent eligibility); and
  • PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (res judicata)

Of these, the Personal Web request is fairly recent, but American Axle has been spinning since May 3, 2021 – just over 8 months.

To get a sense of timing, I looked back at the past 30 CVSG requests – this stretches back to 2019 and calculated the number of months the USDOJ took to file its brief.  The median timing was 5 months, and all the briefs were submitted in less than 9 months.  What this means is that the DOJ still has a few more weeks to complete its task and still be within these historic guideposts.

I truly do not know what the DOJ is going to say in its American Axle brief.  Back in 2019, the Solicitor General filed a powerful brief in Hikma v. Vanda arguing that Mayo and Alice led to substantial confusion, especially when attempting to reconcile prior cases such as Diehr.  But, the Gov’t brief in Hikma was filed by President Trump’s SG (Noel Francisco) and the big question is whether President Biden’s Solicitor Elizabeth Prelogar (and the Biden Admin generally) will follow the same course.  Although the top-signatories have changed, the folks actually researching and writing the brief are largely the same, including Thomas Krause who was PTO Solicitor and is now the PTO’s Acting GC.  In addition, Malcolm Stewart remains the Deputy SG at the Department of Justice (as do others).

57 thoughts on “Timing of CVSG Briefs: American Axle Coming Soon

  1. 12

    The SG and the powers that be within the USPTO, including the new Director, plus the 11 on the CAFC and the 9 on the USSC, plus hundreds of district judges, plus thousands of patent lawyers, plus tens of thousands of technologists and business people all lack even a coherent axis to ground a team, philosophy, or lobbying position on the question. Everyone’s views are intensely idiosyncratic and not even tied to a sense of their own general interests, because the problem cuts in every direction, randomly.

    That’s why it has persisted for so long and why there is so little movement in any direction over time. The only meaningful movement in decades, Alice, is essentially just a license “to know it when they see it” so that cases can be disposed of- one way or the other.

    Terrain-wise, this is not a problem of law.

    It’s a problem of philosophy and politics, which precede laws and give form and life to laws. Until some coherent philosophy is articulated, and some political accommodation made as a result, the situation cannot be improved.

    The philosophical problem turns on how information is treated by the patent laws. Information transmitted by patent claims, and information that gives rise to the utility of certain inventions described by those claims.

    As of now, it’s in the eye of the beholder.

    1. 12.1

      all lack even a coherent axis to ground a team, philosophy, or lobbying position on the question

      LOL – ONLY Marty knows the position on the question.

      So indicates the guy who cannot even bother understanding the terrain upon which he would do battle.

      Maybe he needs to understand the utility of a traffic light.

    2. 12.2

      “it’s in the eye of the beholder.”

      In the CAFC’s case, it’s in the eye of the beheaders.

  2. 11

    link to federalregister.gov

    The PTO is initiating a “Deferred Subject Matter Eligibility Response Pilot Program.”

    Interestingly, it is the examiner who initiates the program by inviting applicants after an action including SME rejections and non-SME rejections.

    I am curious if this sounds appealing from the patent prosecutor perspective. If one of your applications was invited, would you accept?

    1. 11.1

      It would certainly bring up a conversation with the client, during which the pros and cons would be evaluated.

      Whether or not the invitation would be accepted would be highly situational.

      I would also be interested in how our usual examiner commentators view this.

      1. 11.1.1

        I think this “Deferred Subject Matter Eligibility Response Pilot Program” might make sense in those patent applications filed with very broad functional or end result claims due to lack of prior knowledge of the prior art. The final [extensively amended] claims responsive to a good 102 and 103 examination may specific enough that the examiner would not pursue or maintain an unpatentable subject matter [Alice abstraction or other] rejection? However, since this program is optional with the examiner it does not improve examinations by examiners overly relying on alleged unpatentable subject matter rejections instead of more thorough 102 or 103 searches.

        1. 11.1.1.1

          Paul – not seeing that.

          Looking into the mechanics now, and I have to say – this does NOT accord with what the Tillis letter suggests.

    2. 11.2

      I am a thorough-going empiricist, so I would like to give the program a try before I decide whether it is better or worse than the status quo. Whether I would accept any given invitation, however, would depend on the application in which the invitation arrives.

      As with any company, some of our assets are more business-critical than others. The lower the criticality of the asset, the more easily I can justify “experimenting” with a pilot program. Some assets would be too important to involve in an untested program.

    3. 11.3

      It sounds like a huge waste of most clients’ time and money.

      But it does give clients more time to say “Patent Pending” before the application is finally rejected, appealed to PTAB, appealed to CAFC, and appealed again to SCOTUS.

      So I guess it benefits big companies.

      1. 11.3.1

        Interesting notion — and given that participation is by invitation only, your point may well be borne out as we see what types of entities are so invited to partake.

  3. 10

    For what it’s worth, the government’s brief in Berkheimer was filed eleven months after the CVSG. Hikma was a little under nine months.

  4. 9

    Bros this is a little off topic, but I figured I would let you guys know as it is somewhat good news on the rona’ front and for skilled workers in EE. As the semiconductors have been in extreme shortage leading to plant shut down/halts in production the gov has apparently finally decided to consider (and likely will pass) providing some tax incentives for domestic chip manufacturing. And, importantly, investment therein. They’re eyeing 25% tax credits, apparently total, on tax bills for those that invest in semiconductors (I don’t think this extends to the retail investor/everyday investor, just the big corps doing the investing directly I think). And, micron is looking at making a plant in the triangle in NC. This is apparently a practically sure thing at this point, just a matter of when, not if. Note micron is wayyyy up on the 5 year/11 year already (literally 2 dollars min stock to 92 dollars stock today over 11 years). Samsung coming to TX most likely and Intel opening up in AZ it seems. If you get the popup just re-load the page and stop it from loading all the way and you can read the article.

    link to bizjournals.com

    1. 9.2

      (1) I agree that this is good news.
      (2) It is not only Intel that is building a foundry in AZ. Taiwan Semiconductor Mfg. Co. has also started building another foundry in AZ. Evidently they want to distribute their manufacturing capacity around the globe more, so that in the event of an invasion of their island by mainland China, their operations will not be totally suspended.

      Ordinarily, I oppose government subsidies to industry, but semiconductors (like any other technology critical to national defense) are a special case. It is worth a measure of industrial inefficiency to make sure that we do not end up dependent on China or it’s near neighbors (who can be bullied or captured) for defense-critical tech.

      1. 9.2.1

        “so that in the event of an invasion of their island by mainland China, their operations will not be totally suspended.”

        I had wondered if they hadn’t already been doing that, and if not, why not. I mean, sure they are “Taiwan Semi.” but I mean dang guys you’re gigantic, you can’t let the whole company rest on a tiny island. Good to hear they’re spreading out.

        “but semiconductors (like any other technology critical to national defense) are a special case”

        They def are, and not just for national def. as at this stage they’re in basically everything and integration thereof will only increase. If the shortage gets any worse you could start to see real shutdown just because of the shortage. Right now I think it was that we’re seeing nigh a decent percent of the total GDP (not a whole percent) foregone because of the shortage.

        1. 9.2.1.1

          They def are, and not just for national def. as at this stage they’re in basically everything and integration thereof

          Meh – sounds merely like dem “generic computer” thingies and since we cannot bother protecting such innovation with patents, how important can they be?

          I bet some college kids at the local coffee shop can whip some up over the weekend for a pizza or two….

          /S

          1. 9.2.1.1.1

            “sounds merely like dem “generic computer” thingies”

            That’s because you’re tar ded.

            “I bet some college kids at the local coffee shop can whip some up over the weekend for a pizza or two….”

            If they have access to a fab, yes, but you probably don’t want “some”, you probably want billions.

            1. 9.2.1.1.1.1

              Did you miss the “/S”….?

              Maybe you are throwing that “tar ded” thing around so much because YOU have so much of it.

              Try again to understand the jab – it clearly was not on the manufacturing of the item (think rather, as to what the manufactured items are put to, much like how electrons, protons, and neutrons are put to particular combinations while being — as you put it — “they’re in basically everything and integration thereof will only increase“)

              Think son, think.

  5. 8

    Seems unlikely that the Biden people (bought and paid for by SV) will support cert being granted.

    Probably figure out someway to get it tossed.

    1. 8.1

      You make it sound like a cert. grant would be a good thing for eligibility law. Bad as it is, the SCOTUS is fully capable of making things worse. I am not sure whether the pro-patent position here is to hope for grant or denial.

      1. 8.1.1

        I liked that case. But the drafter fed up in that case iirc was my old position. Just take the L and move on, in terms of overall 101 “pro-patent” desire.

      2. 8.1.2

        First, WT at #4 surmises that there might be a “major internal disagreement” in the SG’s office about “what direction to take”. Then you, Greg, express yourself in doubt whether SCOTUS involvement would be good or bad for the “pro-patent” crowd. Is anybody brave enough to grasp the nettle? Perhaps only the new boss at the USPTO. Is the delay because everybody’s waiting for her to pronounce?

        Me, I’m interested to know whether the “inventive concept” of 101 can be an obvious one.

        1. 8.1.2.1

          To the wondering of, “Is the delay because everybody’s waiting for her to pronounce?

          I would observe that the incoming director is a skilled (even expertly adept) attorney, but is more of a hired gun carrying out her directions than being The thought leader.

          As to from whom she would be taking her directions in this Administration, I only see a massive void on the critical topic of innovation. (and I dare say, matching the massive voids on several other critical topics).

          1. 8.1.2.1.1

            And with perfect timing, the details of (captured mouthpiece) Tillis views

            at link to ipwatchdog.com

            confirm my view that the new director is NOT a thought leader.

            She will execute the script given to her exceptionally well. The driving questions are: just who is giving her that script (hint: it will not be Basement Joe); and just what will that script entail.

            By the by, the Tillis details that laud Lee is NOT a good thing.

        2. 8.1.2.2

          Max >Me, I’m interested to know whether the “inventive concept” of 101 can be an obvious one.

          Goodness. This is America.

        3. 8.1.2.3

          As to MaxDrie’s (rather sophomoric) softball of, “Me, I’m interested to know whether the “inventive concept” of 101 can be an obvious one.

          The two word directive of “don’t conflate” resolves the supposed issue.

          Now please clean up your feces from the vertical structure.

        1. 8.1.3.2

          Has the Bench changed enough so that there are enough people realizing the need to cabin Alice/Mayo…?

          (I would say “No, the Bench has not changed enough — Kavanaugh Scissors notwithstanding)

        2. 8.1.3.3

          Alternatively, someone might want to ground the judicial exceptions in actual text. The “emanations and penumbras” basis for Alice/Mayo has to be somewhat embarrassing.

          1. 8.1.3.3.1

            I see no evidence that the justices lose any sleep over the embarrassing lack of textual grounding for their inane applications of patent law.

            1. 8.1.3.3.1.1

              Please pardon potential rePeat

              (The George Carlin filter still nans the starred word below):

              That is not helped with the overly obsequious and craven cadre of attorneys who are afraid of pointing out that the Supreme Court is not above the law (and the Constitution) in our co-equal three branch government set-up — as I have noted in the various State Oath of Office that attorneys swear to.

              The view that the Constitution IS whatever the Court says it is – is the very issue of a far too powerful court that our *found*ing *fa*there* voiced in the Federalist Papers.

              Our Sovereign’s Rule of Law demands that we NOT blindly accept whatever the Court decrees.

              (Original had also errantly omitted the “NOT”)

            2. 8.1.3.3.1.2

              IDK. Pretty much everyone in the “Conservative Legal Movement” has publicly criticized this kind of thing at one time or another.

              (acknowledging that Mr. Originalism himself wrote Alice).

              1. 8.1.3.3.1.2.1

                Thanks for the rare observation that some of the most detested Sup. Ct. patent decisions have been written by the most conservative members of the Sup. Ct.

                1. Meh, that’s a shallow view there Paul, as it is very clear that the most (and most consistently) anti-patent views of the Supreme Court are harbored in the Liberal Left faction.

                  That there are some anti-patent views from Conservative Justices would then be more properly viewed as the exceptions that prove the rule.

                  Another example of your rather odd (and fruitless) spin jobs.

  6. 7

    This is going to be a defining IP moment for Biden and his administration:

    Either they support the critical return to the strong innovation-protecting patent system our country had before SCOTUS (Mayo / Alice) and the CAFC (Mayo / Alice misapplication) trashed it . . . or they relegate it to the dustbin of history . . . with China soon becoming the undisputed innovation leader of the World.

  7. 6

    “To get a sense of timing, I looked back at the past 30 CVSG requests – this stretches back to 2019 and calculated the number of months the USDOJ took to file its brief. The median timing was 5 months, and all the briefs were submitted in less than 9 months.”

    The second half of this article (Wachtell & Thompson, 2009) discusses timing and process for CVSG briefs and seems to still be accurate. link to patentlyo.com

    The SG is under no deadline to file an invitation amicus, but informally they aim to file either (1) by late December to allow the Court to hear argument that term if it wants, or (2) by late May to allow the Court to grant or deny cert before its summer recess.

    I would have expected the SG to file its American Axle brief by now. I would guess that informal deadline (1) has slipped for some reason–maybe there are strong diverging views among the people the SG consults, maybe the recent change in administrations has slowed things down, or maybe the absence of a confirmed PTO Director has slowed the process down. The SG’s office may also be abnormally busy with OSHA and abortion stuff. Whatever it is, I now think the brief should show up any day now, and I’d be shocked if it wasn’t filed by late May.

    1. 6.1

      Waiting for the new Director to finally review the brief seems likely, as suggested below.

    2. 6.2

      Is there also disclosed what percentage of certs were granted in patent cases in which a CVSG was requested? Presumably higher than the normal very low percentage of certs granted, but by how much?

      1. 6.2.1

        Yes. In the windows the article looks at, cert granted in the 26% and 39% of the time when the court calls for the SG’s views. I’ve seen higher numbers in other terms.

        If the SG recommends grant, the court almost always grants.

        If the SG recommends deny, then I think the chances depend somewhat on whether the SG says that the decision below was wrong. If the SG says the decision below was wrong, but recommends denying cert for some other reason, the court often grants anyway. If the SG says the decision below was right, and recommends denying cert, then odds are against a cert grant.

  8. 5

    I truly do not know what the DOJ is going to say in its American Axle brief.
    My guess is that there is major internal disagreement as to what direction to take.

    1. 5.1

      Good comment, WT. If there is not yet any such “internal disagreement” in my opinion there jolly well should be.

        1. 5.1.1.1

          Maybe because even Bovard knew what was being done to me was illegal, and left. The constant retaliation I am facing daily just keeps my statute at a starting position. I have to laugh at all of you allowing them to put you in a position because you work under their rules. Maybe when they implode a new situation will emerge. The only thing you have to do is make a list of the power players and one by one work together to stop them. Come on over at Quinn’s blog they listed the law firms with the most patents.. But he didn’t even put King Ponzi Litman on the list… GEEEE I wonder why. I also wonder why that was never mentioned on the posts it generated. What a bunch of wimps you are.

  9. 4

    See comments 3 and 1.2.1.1.2 on the immediately below blog re the cert in PersonalWeb Technologies, LLC v. Patreon, Inc., et al., [above] awaiting CVSG.

    1. 4.1

      Re: “the folks actually researching and writing the brief are largely the same, including Thomas Krause who was PTO Solicitor and is now the PTO’s Acting GC.” Is the Solicitor a direct report to the PTI GC? Would not the new PTO Director and DOJ have the last word on the CVSG content?

      1. 4.1.1

        Actually, the last word is from the person writing the scripts being handed to the new director.

        Most likely, that would be the same person handing the scripts to puppet Biden.

  10. 3

    Nice to see (finally) that Greg is taking a bit more seriously his cavalier approach (post Oil States to so gleefully label the Public Franchise as still a form of personal property.

    It’s a starting point.

  11. 2

    Very interesting. Thanks for these numbers, Prof. Crouch.

    Off topic, but does anyone know of a case or statute that sets out the duties of a franchisor to the franchisee? Are there any duties implied by law for this relationship—apart from those that the individual parties to an individual relationship agree by contract? Thanks in advance.

      1. 2.1.2

        Not just by state (there are also ITC considerations), but the further wrinkle comes with the compound phrase “Public Franchise.”

        You move from a FranchisOR being a person (or legal person of a corporation) to that FranchisOR being the government itself.

        I would point out that the larger take-away here is that the (glib — by the Court) use of the phrase Public Franchise was itself legal error and was merely a side effect of the Court reaching its Desired Ends without regard to the Means.

        As Mordor would say, “The Bill comes due.”

        link to youtu.be

      2. 2.1.3

        When you say “especially,” I think that this actually means “exclusively,” at least in some states. All of the statutorily defined duties in the Mo. Rev’d. Statutes that I can find (URL below) concern motor vehicle dealers. Similarly, the Mo. courts do not consider that there are any common law duties owed by a franchisor to a franchisee (e.g., Chmieleski v. City Products Corp., 660 S.W.2d 275, 295 (Mo. Ct. App. W.D. 1983)), except insofar as the contractual arrangements between the parties might give rise to a principal/agent relationship.

        On the federal side, it appears that the Lanham Act creates a duty for a franchisor to police trademark uses on behalf of a franchisee. FTC regulations also impose certain duties of disclosure. That appears to be the sum total of duties in law (i.e., duties not defined by contract) that exist for a franchisor to the franchisee.

        None of the above have any applicability to the relationship between the federal government (as the grantor of a public franchise) and the patentee (as recipient thereof). All talk, therefore, of the government’s “duties” to the patentee in view of the public franchise granted are just vacuous nonsense.

        link to revisor.mo.gov

        1. 2.1.3.1

          Except for the fact that YOU are the one attempting vacuous nonsense by inserting the non-government actor of a ‘straight’ FranchisOR instead of looking at a government actor of a COMPOUND Public Franchsie.

          Maybe Greg is the one that should simply stop using that phrase as some panacea vis a vis Oil States. (here’s a wrinkle: ALL of the items you looked at were items knowingly joined by both sides, the FranchisOR and the FranchisEE – do you really think that same conditions precedent were in force with this Supreme Court made Public Franchise bit?

          Instead of trying so very hard to NOT see the issues, maybe try something else.

          It is curious though why — all of a sudden — this became a burr under his saddle.

  12. 1

    Great post Dennis — I would just point out that Berkheimer (an analogous 101 case) took 11 months for its CVSG brief to get filed (Jan 2019 to Dec. 2019). But I join you in waiting with bated breath!

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