Supreme Court Asked to Address Constitutionality of Judge Newman Removal

Patent

by Dennis Crouch

Miller Mendel, Inc. has petitioned the Supreme Court to review a Federal Circuit decision invalidating its background check software patent in a case that raises questions about both judicial independence and patent eligibility standards. The petition comes after both the district court and Federal Circuit found Miller Mendel’s US Patent No. 10,043,188 ineligible under § 101 as directed to an abstract idea.

The Patent and Technology at Issue: The ‘188 patent covers a software system for managing pre-employment background investigations. The claimed system automates many aspects of the background check process, including collecting and storing applicant information, managing communications with references via email hyperlinks, and automatically generating suggested lists of law enforcement agencies based on an applicant’s residential address.  Miller Mendel accused the City of Anna police department (northern Texas) of infringement through its use of Guardian Alliance Technologies‘ background check platform. The City successfully moved for judgment on the pleadings arguing patent ineligibility under § 101. The court characterized the claimed automation features as merely implementing conventional background check steps on generic computer components.

Three Questions for Supreme Court Review

The petition, filed by Kurt Rylander of Rylander & Associates, presents three questions that go to fundamental issues in patent law and judicial administration:

1. Constitutionality of Removing Article III Judges

The most striking issue challenges the Federal Circuit’s effective removal of Judge Pauline Newman from judicial duties for refusing to submit to mental health evaluations. The petition argues that the Federal Circuit’s self-policing usurped Congress’s exclusive constitutional authority to remove Article III judges through impeachment. 

The petition relies heavily on Justice Douglas’s dissent in Chandler v. Judicial Council of Tenth Circuit, 398 U.S. 74 (1970), warning against allowing judges to remove their colleagues. It cites extensive scholarship criticizing the constitutionality of the Judicial Councils Reform and Judicial Conduct and Disability Act under which Judge Newman was removed.

The petition argues Judge Newman’s removal prejudiced Miller Mendel by depriving it of the possibility of having its case heard by the court’s most experienced patent judge and noted critic of current §101 jurisprudence. It analogizes the removal to improperly striking a prospective juror, citing Holland v. Illinois, 493 U.S. 474 (1990) and Taylor v. Louisiana, 419 U.S. 522 (1975) for the principle that artificial restrictions on the composition of decision-making bodies undermines fairness.

Of course, these cases focusing on the constitutional right of an impartial jury have not previously been extended to include a right to a random selection of three appellate judges.  I expect that the arguments here will be seen as a couple of steps too far by the Supreme Court.  That is especially true at this current time where there is increased political discussion of restructuring aspects of the court.  In order to avoid that major reworking, I expect that the court will want to show its capability of self management and self policing.

The petition cites a really well done law review student note by Jack Brake, Effective Removal of Article III Judges: Case Suspensions and the Constitutional Limits of Judicial Self-Policing, 91 U. CHI. L. REV. 1111 (2024).  Brake argues that while the Judicial Conduct and Disability Act (JCDA) expressly prohibits judicial councils from removing judges, case suspensions that result in a judge having no cases to decide amount to “effective removal” in violation of the Constitution. According to Brake, once Judge Newman finished her last pending opinion in November 2023 and was left with no cases and no ability to receive new assignments, she was effectively removed from office — a violation of Article III’s protection of judicial tenure and Congress’s exclusive impeachment power.  Brake uses Judge Newman’s situation to highlight what he sees as a dangerous loophole in judicial discipline – the ability of judicial councils to achieve through suspension what they cannot do directly through removal. He argues that the Constitution requires any deprivation of a judge’s case-deciding power to be categorical (applying to all cases, not just certain types) and imposed as a sanction for misconduct before it counts as effective removal. Judge Newman’s suspension meets these criteria since she has been completely barred from hearing cases as punishment for refusing to submit to cognitive evaluations. While Brake acknowledges that judicial councils need some disciplinary authority, he recommends amending the JCDA to prevent councils from imposing suspensions that would result in judges having no cases at all.

2. Rule 12(d)’s Conversion Requirement

The second question challenges the lower courts’ handling of extrinsic evidence under Federal Rule of Civil Procedure 12(d). The petition argues that under Carter v. Stanton, 405 U.S. 669 (1972), when matters outside the pleadings are presented on a motion to dismiss, the court must either exclude the evidence or convert the motion to one for summary judgment, giving the non-moving party opportunity to present evidence.

The petition details how the district court here considered a declaration from Guardian Alliance’s CEO but neither excluded it nor converted the motion, despite Miller Mendel’s explicit request. The court instead stated in a footnote it would have reached the same conclusion without the evidence. The Federal Circuit approved this approach as harmless error.

This treatment, the petition argues, conflicts directly with Carter’s mandate and exacerbates an existing circuit split. The petition attempts to highlight a circuit split between several circuits that have required express notice to the parties associated with conversion of R.12 motion on the pleadings into a R.56 motion for summary judgment.   The brief cites to cases from the Second, Fourth and Eleventh Circuits that all have required express notice, and contrasts those to other circuits, including the Fifth Circuit covering Texas, have a more relaxed approach that allows conversion based upon “adequate notice under the circumstances.”

In general, the pleading stage motions and summary judgment motions tend to be incredibly different because the first is based upon allegations and the second based upon evidence — often in the form of deposition testimony and affidavits.  In a typical case, Judges provide substantial notice regarding summary judgment decisions in order to give the non-moving party time and opportunity to marshal and present their evidence. A formal conversion process ensures proper development of the full factual record, rather than courts making decisions based on an incomplete set of facts submitted by just one party while claiming other potential evidence wouldn’t have mattered. As the Supreme Court held in Carter v. Stanton, when matters outside the pleadings are presented on a motion to dismiss, Rule 12(b) requires the court to treat it as a motion for summary judgment and dispose of it under Rule 56, which means the court cannot grant judgment unless there is “no genuine issue as to any material fact” – a determination that cannot properly be made without giving both parties fair opportunity to present their evidence.  Of course, the courts are looking to balance this fairness against both efficiency and potential for gamesmanship.

3. Abstract Idea Exception Standards

Finally, the brief also focuses on the merits of its case – arguing that the Court needs to provide objective criteria for the “abstract idea” exception to patent eligibility or eliminate it entirely. Unlike the judicial exceptions for laws of nature and natural phenomena which date to Le Roy v. Tatham in the 1850s, the abstract idea exception emerged much later and lacks clear definition.  And the current abstract idea analysis “allows courts to invalidate patents arbitrarily without factual development or evidentiary support.”

The City of Anna, represented by Douglas Sorocco of Dunlap Codding, has waived its right to respond to the petition. Although I expect a fairly swift denial of certiorari, the petition is certainly an interesting read.

Note – the image above comes from the Rylander firm website and appears to show Rylander (left) and his law firm partner (with boxing gloves) battling in the courtroom.