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  • AI-First Triage: A Path for Quality and Pendency Reduction at the USPTO

    By Michael S. Borella –

    The U.S. Patent and Trademark Office (USPTO) is trapped in a perpetual battle on two fronts.  First, there is their application backlog, which can extend patent pendency by months or years.  Second is the systemic challenge of patent quality.  These two problems are not independent of one another. Low-quality examination is characterized by incomplete searches and rushed analysis, which can lead to rounds of Requests for Continued Examination (RCEs), appeals, and even costly post-grant litigation.  Conversely, under pressure to reduce pendency, examiners may conduct less-thorough examinations, thereby harming quality.

    For decades, the solutions have been incremental, bureaucratic, or both.  Examiner interviews, accelerated examination programs, and various pilot programs have nibbled at the edges of the problem.  The most recent, the “Streamlined Claim Set Pilot Program,” continues this tradition by offering a simple, but flawed bargain: trade your claims for a spot at the front of the examination queue.

    These solutions misdiagnose the illness.  The problem is not the number of claims; instead, it is the profound inefficiency of the first substantive interaction between the applicant and the examiner.  A first non-final office action is often the output of many examiner hours being spent on cold-start prior art searches. In many cases, this office action contains prior art rejections that could have been avoided.  If the applicant had known of the closest prior art, they likely would have narrowed their claims to focus examination on more protectable aspects of the invention.

    With the rise of generative artificial intelligence (AI), there are new options on the table.  One that we’d like to propose for discussion is what we call AI-First Triage (AIFT).  This change would fundamentally restructure the examination front-end to accelerate prosecution, improve patent quality, and create a more collaborative, efficient process for applicants and examiners alike.  Particularly, AIFT is designed to front-load information sharing between the USPTO and the applicant and incentivize early, substantive amendments where appropriate.  The process would be simple, universal, and mandatory, updating the current examination procedure.  Further, it would be provided at no charge for all new applications.

    The main principles of AIFT would be as follows.

    • AI Search (The “Zeroeth” Office Action): Upon filing and completion of formalities, every new patent application would be processed by an in-house, private generative AI search engine. This tool would analyze the specification, drawings, and, most critically, the as-filed claims.
    • The AI Advisory Action: Within a few weeks of filing, the applicant would receive an initial AI advisory action.  This office action would not contain statutory rejections.  Instead, it would be an AI-generated search report.  The report would contain the results of the AI search, mapping the most relevant prior art references found by the AI search to specific claim elements.  For example, the report might include a claim chart mapping each claim element to a specific location in a prior art document where the AI search engine contends that it found disclosure of the element.  Notably, the AI search would only identify prior art and would not provide any legal reasoning.  In other words, the AI search would not provide a § 101 or § 112 analysis, nor would it provide a motivation to combine should it use multiple references against a claim.
    • The Applicant’s Choice: The applicant would then have a two-month, non-extendable window to respond to this AI advisory action.  There would be two simple options.  The first would be to file a preliminary amendment that makes a substantive narrowing amendment to at least one independent claim in view of the AI search.  The applicant would have the option of including remarks explaining why the narrowing amendment results in claims that the cited art does on read on.  The second would be to take no action and not file a response. In the latter case, the applicant can still file a preliminary amendment at any time before the first action on the merits.
    • The Examination Queue: If the applicant chooses the first option, the application is placed into a prioritized queue for examination by a human patent examiner.  If the applicant chooses the second option, the application is placed in the standard (slower) examination queue.
    • The Non-Final Action: Regardless of which option the applicant chooses, the next office action is issued by a human examiner and is a non-final office action.  The examiner is free to use or discard the AI search results, conduct their own search, and formulate their own rejections.  This preserves the applicant’s established right to respond to a complete, human-led examination on the merits.

    AIFT addresses a bottleneck in the examination process by speeding up the prior art search.  This creates a virtuous incentive for applicants to engage with prior art and improve patent quality from the start.  This up-front sharing of information and incentive for early amendment is likely to more quickly to disposal of an application (i.e., allowance or abandonment) by identifying prior art before the examiner lifts a finger.  Additionally, we expect that such a procedure would reduce the rate of RCEs, which are one of the greatest contributors to pendency, making the entire examination process more efficient.

    AIFT can also improve patent quality.  First, it would augment examiners by providing an AI search across extensive databases.  Examiners could then spend less time looking for needles in haystacks and more time conducting an analysis of the prior art.  Second, by presenting applicants with relevant prior art early, applicants are encouraged to amend broad or vague claims early in the process.  Third, the initial AI advisory action could act as a filter, prompting applicants to abandon clearly anticipated or clearly obvious inventions early, freeing up examiner resources for other applications.

    Despite AIFT having advantages, there are several concerns that may hinder its deployment.  Applicants would face a significant dilemma if presented with low-quality or irrelevant AI-cited prior art, forcing them to either make an unnecessary amendment to gain docket priority or be penalized with a longer wait time for challenging the AI’s findings.  Thus, the quality of the AI search would be key and some degree of human oversight may be needed.  Further, filing a preliminary amendment in response to an AI advisory action would create prosecution history estoppel before the applicant ever interacts with a human examiner.  This may incentivize some applicants to ignore the AI search results.  Moreover, some applicants might strategically file overly broad initial claims specifically so they can concede a narrowing amendment in response to the AI search.  This gaming of the system would result in a faster examination without having to file a focused claim set up front, effectively turning the collaborative step into a mere procedural hurdle to be cleared for a docketing advantage.

    While potentially problematic, each of these issues could be mitigated.  AI is a learning technology and the USPTO’s AI search model could be updated with examples of when a human examiner successfully used the AI-cited prior art to motivate an applicant to amend their claims, as well as when the human examiner overrode the AI-cited prior art and used different art to reject the claims.  Applicants could mitigate the estopped issue by filing a response with minimal or no substantive remarks, relying on the claim amendments to speak for themselves.  Also, Applicants could make it clear on the record that the amendments were made without prejudice and merely to expedite prosecution.  Finally, if necessary, applicants can be disincentivized from gaming the system by modifying the procedure as follows.  The first human-produced office action can be final when the applicant does not amend the claims in response to the AI advisory action and the human examiner’s prior art rejections are based entirely and solely on the prior art references that were previously cited in the AI advisory action (if the human examiner adds any new prior art to the rejections, their action must be non-final).  It is recommended that the human examiner would need the head of their technical center to approve such a first-action final.

    The USPTO cannot solve its dual pendency and quality crisis by merely repackaging old ideas or coming up with another pay-to-play docket manipulation approach that fails to improve search quality, claim clarity, or examiner decision making.  The proposed AIFT, in contrast, is a re-imagining of the examination process that places a powerful information technology tool at the very beginning, creating a collaborative triage step to help applicants produce better claims for human examination, and to help examiners conduct better searches. USPTO should stop tinkering with the queue and instead innovate at the core of the examination process itself.

  • BIO IP Conference . . . & Panelist Wanted

    The Biotechnology Innovation Organization (BIO) will be holding its 2025 IP Conference on November 17-19, 2025 in Palm Springs, CA.

    The conference will offer presentations on the following topics:

    • Navigating the Road of Joint Inventorship
    • Public Disclosures and Patent Risks: US vs EP Perspectives
    • Antibody Inventions: The Life and Times of the Genus Claim
    • BPCIA Litigation Update: Key Cases, Trends, and Takeaways from 2024–2025
    • Using AI In Patent Practice: Practical and Ethical Issues
    • How to Talk to Policymakers about Biopharma Patent Portfolios: A Conversation Under Chatham House Rules

    Patent Docs author Dr. Donald Zuhn of McDonnell Boehnen Hulbert & Berghoff LLP and Patent Docs contributor Joshua Rich of Lippes Mathias LLP will be participating as panelists on the session on “Using AI In Patent Practice: Practical and Ethical Issues”.  If you are a patent practitioner who uses AI tools in your practice and would be interested in attending the BIO IP Conference and participating on the above panel, please contact Dr. Zuhn at zuhn@mbhb.com.

    In addition to the above sessions, there will be a welcome reception from 5:30 pm to 7:30 pm on November 17, and a dinner reception from 5:30 pm to 8:30 pm on November 18.  A program agenda for this conference can be found here.

    Registration information can be found here.

  • IPO Webinar on Topics from Recent IP Cases

    The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled “Patent & Technology Law Developments: Personal Jurisdiction, Estoppel & Everything in Between” on October 30, 2025 from 2:00 pm to 3:00 pm (ET).  Aaron Chatterjee of Microsoft Corporation, Renée Fuller of Bristol Myers Squibb Company, and Paul McAndrews of McAndrews, Held & Malloy, Ltd. will explore recent intellectual property cases and examine their practical impact in light of key court decisions and proposed legislation.  Topics to be covered will include a discussion of recent prosecution laches decisions, the Federal Circuit’s resolution of a district court split on the scope of IPR estoppel, personal jurisdiction in certain patent cases, various aspects of patent invalidity, and the domestic industry requirement in ITC proceedings.  Panelists will also discuss the Patent Eligibility Restoration Act of 2025 and the RESTORE Patent Rights Act of 2025, outlining what these developments could mean for practitioners.

    The webinar is free for IPO members.  Those interested in attending the webinar should register here.

  • USPTO Proposed New Rules Limiting the Availability of Inter Partes Review, But Are They Legal?

    By Joshua R. Rich —

    Under President Trump, the U.S. Patent and Trademark Office has sought to encourage the issuance of more patents and limit the ability to challenge them in post-grant proceedings; since John Squires was sworn in as Director, that process has accelerated tremendously. On October 16, 2025, the Office issued proposed rules limiting the circumstances under which inter partes review can be instituted and conditioning institution upon a waiver of any other prior art challenge. There is no doubt that the proposed rules would limit the frequency and availability of IPR to challenge the validity of patents. But there is a real question whether the proposed rules are legal.

    Importantly, notice of proposed rulemaking was not identified as the beginning of notice-and-comment rulemaking (and all of the administrative requirements that such a process would entail). Rather, the notice indicates that “[t]he changes proposed by this rulemaking involve rules of agency practice and procedure, and/or interpretive rules, and do not require notice-and-comment rulemaking.” It is questionable whether that assertion is correct, as the proposed rules would have a significant impact on accused infringers’ (and other patent challengers’) substantive rights, but the USPTO is seeking to push the rules through quickly by allowing only thirty days for the submission of any comments. As a result, the rules may be in place sooner, but there is a very real threat that their enforcement will be blocked if the rulemaking process is challenged under the Administrative Procedure Act.

    There are four basic proposed changes in the IPR rules:

    • Unless every petitioner submits a stipulation to the USPTO and “any other tribunal where it is litigating or later litigates regarding the challenged patent” indicating that it (and any privy or real party in interest) will forego any anticipation or obviousness argument in any other proceeding, inter partes review cannot be instituted or maintained.
    • Inter partes review cannot be instituted or maintained if a challenged claim or an independent claim from which the claim depends has been found not anticipated or obvious in a district court (either upon trial or by summary judgment), the U.S. International Trade Commission (in either an initial or final determination), the Board itself (in an inter partes review or post-grant review), in ex parte reexamination, or in the Federal Circuit, even in proceedings not involving the petitioner.
    • Inter partes review cannot be instituted or maintained if there is a parallel proceeding in a district court, the ITC, or another Board proceeding where it is more likely than not that a decision will be reached before the final written decision in the inter partes review, even in proceedings not involving the petitioner.
    • If the Board finds there are extraordinary circumstances that would justify an exception to the rules above, they can refer a petition to the Director to decide whether to institute. But extraordinary circumstances are limited: they include a bad faith action to prevent review or a substantial change in the statute or Supreme Court precedent that renders the prior challenge irrelevant, but do not include new prior art or argument, Federal Circuit precedent, or a prior challenger’s failure to appeal. And sanctions can be imposed if a petition claiming extraordinary circumstances is found to be frivolous or abusive.

    The first of these provisions appears to be the most legally suspect. The America Invents Act that created inter partes review identified circumstances under which such an inter partes review could prevent anticipation or obviousness challenges in other proceedings. Under 35 U.S.C. § 315(e)(1):

    The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

    That estoppel is narrower than the proposed rule in several ways. Most importantly, it limits estoppel to any ground that the petitioner raised or reasonably could have raised in the inter partes review, not all anticipation and obviousness arguments. But it also only takes effect if a final written decision results from a proceeding; the proposed stipulation is required for institution. So there is a gap between the two forms of estoppel for review that settles before a final written opinion.

    Given the carefully crafted scope of statutory estoppel, an administrative stipulation provision that would have the effect of creating a broader estoppel is likely to be held to exceed the USPTO’s discretion in implementing the statute. Under the statutory construction maxim “expressio unius est exclusion alterius,” Congress’s decision to provided only limited estoppel suggests it did not intend to bar all anticipation and obviousness challenges (and not in all instituted reviews). Any regulations on the same topic – like the stipulation requirement – of different scope would therefore likely be unlawful for the agency to implement.

    But the regulations that would bar inter partes review based on another party’s challenge are legally suspect as well. To be clear, these regulations would not prevent inter partes review of just the same arguments or art, or arguments by the same party. They would prevent any inter partes review if a prior challenger failed in its challenge as well, even if also based on unrelated art. Effectively, this would give some level of offensive res judicata effect to a patent owner’s win against a prior art challenge. That is not the law. To the contrary, res judicata in patent cases is not mutual: patent challengers are not barred by another challenger’s failure, but a single finding of invalidity prevents assertion of invalidated claims against another accused infringer. That question was squarely considered and determined by the Supreme Court in Blonder Tongue v. Univ. of Ill. Found., 402 U.S. 313 (1971). While the decision did not involve whether administrative proceedings could have different rules (especially administrative proceedings that did not exist until decades later), it is hard to believe that courts would view contrary regulations to be appropriate.

    While there appear to be substantial potential problems with the proposed rules, they may serve several beneficial purposes nonetheless. First, just as the bipartisan Patent Eligibility Restoration Act introduced by Senators Tillis and Coons has, they can provide a framework for discussion of potential changes to the Patent Act.  Second, they reinforce the seriousness that the USPTO has shown in trying to strengthen patent eligibility. Further, they may discourage (or sensitize courts) to some of the abusive use of inter partes review. And there is always the possibility that courts will not invalidate the proposed rules, if adopted. But most likely, they are most useful as pushing Congress into action to restore patent protections that have been narrowed over the years.

  • New Director Overturns PTAB Procedural Precedents: Part I

    By Kevin E. Noonan —

    The advent of a new administration always carries with it changes in how the laws are executed and applied, and patent law is both no exception and tends (at least in recent years) to appear to be fraught with dramatic changes in emphasis (at least on certain aspects of the law). This can be appreciated by a consideration of Director Dudas and the (infamous) “claims and continuation” rules fracas in the mid-aughts; a return to the Office’s more convention role of modulating application of legal precedent under Director Kappos; the more stringent application of the Mayo/Alice principles to subject matter eligibility under Director Lee; changes in such applications under Director Iancu; and DEI efforts and cooperation with FDA over drug patents under Director Vidal.

    Under the second Trump administration, the sea change in inter partes review (IPR) before the Patent Trial and Appeal Board (involving Director discretionary denials of such challenges) began this spring under Interim Director Stewart, and with confirmation of Director John Squires these changes have increased in significance and extent.

    On Friday, October 17, the Office released a Memorandum to all PTAB judges and an Open Letter to “Colleagues, Inventors, and Americans” announcing that from October 20, the Director will determine whether to institute IPR proceedings  and post-grant review (PGR) proceedings under the statutory authority provide by 35 U.S.C. §§ 314 and 324, respectively.*  According to the Letter, Congress has vested the Director with sole statutory authority to render such decisions, despite provisions under 35 U.S.C. § 3(b)(3)(B) for the Director to be able to delegate such authority, which has been the practice since IPRs and PGRs were instituted under the Leahy-Smith America Invents Act in 2012.  Such delegation typically has been to three-judge panels of PTAB judges (although expanded panels, including the Director and other PTO officials have made such decisions from time to time, there having been 21 instances to date).

    The Letter announces that “initial operational choices” had been the reason for delegation by earlier Directors, but that “experience has raised structural, perceptual, and procedural concerns inconsistent with the AIA’s design, clear language, and intent” and as a consequence the public’s “rightful expectation of impartiality” had been affected (negatively, presumably)(emphasis in Letter). These concerns included a seeming preference for IPRs over PGRs and a “very high” rate of invalidation. The Letter includes as additional concerns that there was a “perception of self-incentivization” (i.e., creating an appearance that institution decisions were made for the Board to “fill[] its own docket” (although the Letter is quick to emphasize that this perception “may be unfounded”). Further, so-called “bifurcated processes” (i.e., a preliminary review prior to Board referral), which the Letter asserts were both smart and necessary at the beginning of the AIA’s post-grant review regime were not intended to be permanent and “appears to have inadvertently produced extraordinarily high institution rates” (~95%). The Letter also makes the point that Congress had charged the Director to make institution determinations by statute and this mandate should not be easily circumvented.

    The benefits of these changes enumerated in the Letter are said to include “eliminat[ing] the appearance of self-interest,” “remov[ing] perceived referral-signal bias,” “enhanc[ing] transparency and public trust,” and “re-align[ing] the duties and responsibilities of the Director as a “Presidentially appointed and Senate-confirmed officer.”

    The Letter concludes with the following exhortation:

    In closing, the mission of America’s Innovation Agency is to lead the world in intellectual property protection. We can do so and serve the public interest only by maintaining a patent system that is fair, predictable, and respected. Returning institution authority to the Director bolsters our mission because it restores the statutory framework mandated by Congress in the America Invents Act.

    The contents, proposals, and changes in the other announcements will be the subject of following posts.

    * 35 U.S.C. § 314 reads in pertinent part:

    The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

    35 U.S.C. § 324:

    The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

  • We’re Back!

    To paraphrase Chicago Bulls legend, Michael Jordan, Patent Docs would like to announce that we are back! A few of our readers have noticed that it has been awhile since we last posted, and you may have noticed that there were a few “issues” with the way Patent Docs appeared on your browser earlier this month (see screenshot below) – as well as a few differences with the way the weblog currently appears on your browser.

    These issues and differences are due to a change in the software that we use to maintain the weblog. Since Patent Docs began publishing on October 22, 2006 – and up until today – we had been using the TypePad blogging platform. Unfortunately, TypePad announced last month that it was shutting down, effective September 30, 2025, and that bloggers would have to export their content or permanently lose that content. We have therefore moved Patent Docs to the WordPress blogging platform, and note that it may take some time before we have adjusted the settings so the weblog looks somewhat like it looked on TypePad. So we ask that you please pardon our “dust” while we get used to the new digs.

    Screenshot

  • USPTO Announces New Assignment Search Portal

        By Michael Borella —

    USPTO SealOn August 27, 2025, the U.S. Patent and Trademark Office quietly announced that it would be deprecating its current Patent Assignment Search and Assignments on the Web assignment search portals and replacing them with a new portal accessible from Assignment Center.  The announcement states:

    Starting on September 27, 2025, Assignment Search will be live, and the two legacy systems will cease to be available.  This new, web-based application provides customers seeking patent and trademark assignment information with reliable, detailed results via a modernized interface.  Customers can perform basic searches and refine their searches using the filtering options available in the "advanced search" field of the tool.

    Just over a year ago, the USPTO informed the public that it had suffered a data breach in its assignment interface that appears when accessing a patent or application in Patent Center.  In response, the USPTO disabled this option in Patent Center, thus requiring more effort for applicants to check or confirm the status of their assignments.  But the overall inconsistency and unreliability of the current systems have been problematic.

    Particularly, the situation can be summed up as follows.  Some assignments can be viewed from Patent Center (despite what the USPTO alleges), but most patents and applications have the assignment tab grayed out.  Many can be found using Patent Assignment Search.  Sometimes Patent Assignment Search will not provide any results, even for an assignment that has been properly recorded.  In those cases, Assignments on the Web might or might not provide a result.  Both Patent Assignment Search and Assignments on the Web are periodically unresponsive, either never completing or returning no results at all.  Also, neither will show the assignment statuses of unpublished applications, even to the attorney of record.

    This means that when an applicant cannot locate an official record of an assignment by any of these means at the USPTO, they need to check whether they received a notice of recordation.  If they did, the assignment is almost certainly recorded even if Patent Assignment Search and Assignments on the Web indicate otherwise.

    Like many aspects of dealing with USPTO web-based systems that do not work as advertised, these inconsistencies cause excess delays and cost applicants money.  In particular, trying to ascertain the status of a large patent portfolio can be very time consuming, whereas previously (when things were working properly via Patent Center) it was relatively straightforward.  This is particularly problematic when an assignee is trying to use their IP assets as collateral for financing or needs to demonstrate ownership as part of a sale.  If they do not have notices of recordation on hand, the assignment status of these assets may remain unclear.

    While the USPTO's announcement of a replacement for these limited and undependable portals should be welcome, there is reason to be cautious due to the agency's recent track record.

    Notably, the USPTO's rollout of Patent Center has been and continues to be plagued with persistent technical issues that have frustrated practitioners and increased the costs of routine filings.  When Patent Center fully replaced legacy systems such as EFS-Web and PAIR last year, practitioners were subjected to bugs that disrupted even basic functions.  These errors have been described as "totally unacceptable," and what were once were straightforward submissions now take longer, create uncertainty, and can jeopardize deadlines.  The added time and expense ultimately fall on the most vulnerable applicants, particularly startups and smaller companies with limited budgets.

    The USPTO's announcement implicitly acknowledges the obvious — its current assignment portals are unreliable.  Replacing them is welcome, but the agency's execution record in deploying new platforms is mixed at best.  Without meaningful improvements in testing, responsiveness to practitioner feedback, and long-term maintenance, the new Assignment Search risks joining the growing list of USPTO systems that never quite work as intended.  For now, the legal community should be cautious until the new system has proven itself under day-to-day use.

  • Game, Set, and Match: Stories from the “Tennis Courts”

    By Manav Das —


     Tennis ballThe U.S. Open tennis championships are currently underway in New York, with the main draw starting on a Sunday for the first time.  In the singles competition, top players like Emma Raducanu, Novak Djokovic, and Aryna Sabalenka are headlining the early rounds.  Amidst the on-court action, intellectual property (IP) remains a key component of the tennis world, extending beyond player endorsements and brand protection to include patent litigation over technologies used in the game itself.

    Indeed, tennis is not only played or decided on tennis courts.  From racquet technologies to retractable roofs, IP disputes have shaped the sport's technology, marketing, and even its venues.  We look at a few intriguing cases and storylines where decisions were not made by a chair umpire, a line umpire, or a referee, but by a judge in a courtroom or by parties to the dispute.

    A.  Patent and Technology Disputes

    Group One Ltd. v. GTE GmbH[1]

    Group One, a competitor, accused GTE GmbH and its founder, Ralf Weigel, of directly, contributorily, and willfully infringing Group One's patents related to let-detection technology.  The core of the infringement claims involved GTE's "Trinity" system used at the 2019 and 2020 U.S. Opens.  The "let-detection" systems are related to determining if a tennis ball has hit the top of the net during a serve.

    A notable issue was the court's jurisdiction over the foreign defendants (GTE GmbH and Weigel, both in Germany).  The court addressed whether service of process by email was sufficient under the Hague Convention, ultimately concluding that it was, as long as it comported with due process.  This finding is particularly relevant for practitioners dealing with international litigation.

    Another issue was Group One's attempt to hold a non-party, the United States Tennis Association (USTA), in contempt for using an allegedly infringing product.  The court denied this motion, ruling that it lacked the authority to enjoin a non-party unless it was acting in concert with a party.  The court also clarified that a non-party could not be enjoined for using a product not supplied by the defendants in the lawsuit.

    The District Court issued a default judgment against GTE and Weigel for patent infringement, false advertising, and other claims.  Group One was awarded lost profits for the 2019 and 2020 U.S. Opens, but not for other tournaments.  On appeal[2], the Federal Circuit affirmed the District Court's decisions on damages and contempt.  However, the Federal Circuit reversed the District Court's failure to award post-judgment interest and sent the case back to determine the amount.

    Prince v. Wilson (and Frolow)

    These cases[3], which reached the Federal Circuit, involved patent disputes that grew out of a licensing agreement between the two sporting goods giants.  The core issue was whether certain Wilson tennis rackets infringed claims in patents owned by Jack Frolow, to which Wilson had a license Prince, a competitor, was also involved as a licensee.

    The most significant legal takeaway from the appellate court's decision[4] was its analysis of "marking estoppel."  Frolow argued that because Wilson had marked some of its racquets with the patent number, it should be "estopped" from later claiming those same racquets did not infringe the claims in that patent.

    The Federal Circuit rejected the doctrine of marking estoppel, stating it was not a recognized legal principle.  However, the Court did find that the act of marking a product with a patent number serves as circumstantial evidence, an "extrajudicial admission", that the product falls within the patent's scope.  The Federal Circuit reversed the District Court's summary judgment, ruling that the evidence of Wilson's marking was sufficient to create a genuine issue of material fact for a jury to decide.  In essence, while marking does not automatically create liability, it can be powerful evidence of infringement.

    Retractable roofs and trade secrets at Arthur Ashe Stadium

    The engineering firm Uni-Systems LLC, a developer of retractable roof technology, filed a lawsuit[5] in 2017 against several contractors and suppliers behind the U.S. Open's Arthur Ashe Stadium roof project.  The suit, filed in the U.S. District Court for the Eastern District of New York, alleged both patent infringement and trade-secret misappropriation.

    The trade secret dispute centered on an earlier collaboration between Uni-Systems and one of the defendants, Hunt Construction Group, Inc., for a retractable roof project at the University of Phoenix Stadium (now State Farm Stadium) in Arizona.  Uni-Systems alleged that Hunt, in collaboration with the engineering firm Hardesty & Hanover, used a maintenance contract on the Arizona project as a way to steal Uni-Systems' proprietary technology and trade secrets, including operational software and detailed design specifications.

    The lawsuit also accused the defendants of infringing two of Uni-Systems' patents related to retractable roof design:  U.S. Patent No. 6,789,360[6] ("Retractable Roof System for Stadium") and U.S. Patent No. 7,594,360[7] ("Lateral Release Mechanism for Movable Roof Panels").  Uni-Systems claimed that the roofs at both Arthur Ashe Stadium and the new Louis Armstrong Stadium infringed the claims of these patents.

    The case involved numerous defendants, including the USTA, Skanska USA (as a successor to Hunt Construction), and other engineering and construction firms.  While the specific terms of a final resolution are not public, court filings and legal news reports indicate the case was ultimately settled.  Venue construction disputes highlight how stadium infrastructure is laden with IP risk.

    B.  Trademarks, False Advertising, and Brand Control

    Penn (Head) v. Dunlop

    In a case of false advertising under the Lanham Act, Head USA Inc. and its subsidiary, Penn Racquet Sports Inc., sued rival Dunlop International Ltd. over its claim of selling the "#1 ball in America."  The lawsuit was filed in federal court in Connecticut[8].  Penn accused Dunlop of misleading the public by advertising its tennis balls with the slogan "The World's No. 1 Ball" and a related claim of having a 70% global market share.  Penn argued that Dunlop's claims were factually false and that Penn, in fact, held the largest market share in the United States, making Dunlop's "No. 1" claim misleading to American consumers.

    The case is an example of a Section 43(a) Lanham Act claim.  This federal law governs false advertising and unfair competition.  For a claim to succeed, the plaintiff must typically show that the defendant made a false statement of fact in advertising that is material and likely to deceive a substantial portion of the target audience, causing injury to the plaintiff.  The burden of proof would have fallen on Dunlop to substantiate its "#1" claim, likely through reliable market data or surveys.

    While the specific terms of the resolution are not publicly available, such high-profile false advertising cases are often resolved through confidential settlements.

    Babolat false-advertising class action

    This lawsuit[9] alleged that Babolat misled consumers into believing that the tennis rackets sold at retail were identical to those used by professional players, such as Rafael Nadal.  This practice, known as "misleading endorsements" or "product parity claims," formed the basis of the legal action.  The consumers argued that they were induced to purchase the commercial racquets under the false premise that they were getting the same high-performance product used by elite athletes, when in fact, the pro-player frames were often custom-made with different materials, specifications, and weight balances.

    Federal Trade Commission (FTC) guidelines[10] for endorsements require that endorsements reflect the honest opinions, findings, or experiences of the endorser.  When a product is not truly the same, a company risks violating these rules and triggering liability.

    The case sheds light on the frequent practice in professional sports of using "pro stock" or custom equipment that is not available at retail.  This creates a legal gray area where the line between aspirational advertising and deceptive marketing can become blurred.  Companies must be careful to avoid implying a direct link between the pro gear and the retail product if they are not, in fact, identical.

    The case resulted in a class action settlement for $4.5M, underscoring how endorsements and product parity claims can trigger liability.  The significant settlement amount serves as a warning to brands that the financial and reputational costs of misleading advertising can be substantial, especially when consumer trust is a key part of the brand's value proposition.

    Roger Federer's 'RF' logo

    This dispute centered on the ownership of the "RF" logo, a stylized monogram of Roger Federer's initials that became synonymous with his brand.  When Roger Federer was in a long-term sponsorship deal with Nike, the company created the "RF" logo for him.  As part of their contract, Nike registered the "RF" trademark in various classes covering clothing and footwear, making it the legal owner of the intellectual property.  When Federer left Nike for Uniqlo, Nike still owned the 'RF' trademarks.

    This meant that even though they were Federer's initials, he could not use the mark with his new sponsor without a license from Nike.  Federer said[11] his hope that Nike would be "nice and helpful in the process" of returning the logo, emphasizing that they were his initials and "not theirs forever."

    The dispute was not a formal lawsuit in court but a negotiation that took place behind the scenes.  Nike stopped selling "RF"-branded merchandise, and after a period of approximately two years, they assigned the trademark rights to Tenro AG, a company owned by Federer that manages his intellectual property[12].  The details of the agreement were not made public, but it is widely believed that Federer paid a considerable sum to regain control of his brand.  Tenro owns[13] other trademarks associated with Federer.

    The dispute serves as a cautionary tale, illustrating that even an individual's own initials can become the property of a corporation if the company is responsible for creating and registering the trademark.  The outcome shows the immense leverage a top-tier athlete holds.

    This case highlights the crucial importance for athletes to address intellectual property ownership in their sponsorship contracts.  A better-structured deal from the outset could have included a clause that automatically transferred trademark rights back to the athlete upon the termination of the agreement.

    C.  Copyrights

    Artist v. USTA

    In Noonan v. USTA[14], the dispute arose over a T-shirt sold by the USTA at the US Open that featured a design inspired by the New York City subway map.  Mark Noonan, a freelance artist and designer, had created a distinctive, stylized version of the New York City subway map as part of his "NYC Subway Series" artwork.  Noonan claimed that the USTA sold t-shirts at its gift shops during the 2011 U.S. Open that copied his unique "subway-style map" design, which featured tennis-related locations and was registered with the U.S. Copyright Office.  He alleged that the USTA's shirt was a "blatant copy" of his work, infringing on his copyright.

    While a factual map itself is not copyrightable, the artistic expression and selection of elements, colors, and design can be.  Noonan's case rested on the argument that his specific stylized design was original enough to warrant copyright protection.

    The case was also ultimately settled out of court.  The specific terms of the settlement were not publicly disclosed.  The case serves as a good example of the risks that large organizations face when using artistic designs for merchandise without properly licensing the work from its creator.

    D.  Key Takeaways

    Game-day success relies just as much on foresight in IP strategy as it does on on-court performance of the players.  Each case provides significant takeaways both for sports executives and legal practitioners:

    Group One v. GTE GmbH: Courts can find that email is a valid method for international legal service, and a plaintiff cannot seek to hold a non-party in contempt for using an allegedly infringing product not supplied by the defendants.

    Prince v. Wilson (and Frolow): While not legally binding, marking a product with a patent number can serve as powerful circumstantial evidence of infringement in court.

    Uni-Systems v. US Open Contractors: A company's trade secrets can be protected even during a collaborative project, and IP risks extend to complex infrastructure like retractable stadium roofs.

    Penn (Head) v. Dunlop: Superlative advertising claims like "#1" must be factually substantiated with data to avoid liability under false advertising laws.

    Babolat Class Action: Brands face significant liability for misleading consumers with product parity claims, especially when pro-stock equipment is different from what is sold at retail.

    Roger Federer's 'RF' Logo Saga: Athletes should secure ownership of their IP in endorsement contracts, as a corporation that creates a logo can legally own it, even if it is based on an athlete's name.

    Artist v. USTA: Large organizations must properly license creative designs for merchandise, as even stylized artistic interpretations of public domain items, like maps, are protected by copyright.

    [1] Group One Ltd. v. GTE GmbH, 523 F. Supp. 3d 323 (E.D.N.Y. 2021)

    [2] Group One Ltd. v. GTE GmbH, No. 24-1273 (Fed. Cir. Aug. 21, 2025)

    [3] Prince Sports Group, Inc. v. Wilson Sporting Goods Co., 42 F.3d 1408 (Fed. Cir. 1994) (addressing jurisdictional issues and the scope of appealability regarding a settlement and subsequent patent dispute), Prince Sports Group, Inc. v. Wilson Sporting Goods Co., 91 F.3d 167 (Fed. Cir. 1996) (addressing summary judgment on noninfringement and the district court's refusal to rule on patent invalidity), Frolow v. Wilson Sporting Goods Co., 710 F.3d 1303 (Fed. Cir. 2013) (addressed breach of a license agreement and whether certain tennis racket models qualified as "Licensed Articles" under a patent license.)

    [4] Frolow v. Wilson Sporting Goods Co., 710 F.3d 1303 (Fed. Cir. 2013)

    [5] Uni-Systems, LLC v. U.S. Tennis Ass'n, Inc., 350 F. Supp. 3d 143 (E.D.N.Y. 2018)

    [6] https://patents.google.com/patent/US6789360B2

    [7] https://patents.google.com/patent/US7594360B2

    [8] Head USA Inc. et al. v. Dunlop Sports Group Americas Inc. et al., Case No. 3:12-cv-00624-AWT (D. Conn. filed Apr. 30, 2012)

    [9] Ahdoot et al. v. Babolat VS North America Inc. et al., Case No. 2:13-cv-02823 (C.D. Cal. filed Apr. 17, 2013)

    [10] Section 5 of the FTC Act (15 U.S.C. § 45)

    [11] https://www.tennisworldusa.org/tennis/news/Roger_Federer/85009/roger-federer-recovers-rf-logo-from-nike/ (last accessed August 22, 2025)

    [12] https://www.sportspro.com/news/roger-federer-rf-logo-us-trademark-tenro-nike-uniqlo/#:~:text=Roger%20Federer%20has%20reclaimed%20his,and%20Trademark%20Office%20(USPTO). (last accessed August 22, 2025)

    [13] https://www.trademarkia.com/owners/tenro-ag (last accessed Aug. 23, 2025)

    [14] Noonan v. U.S. Tennis Ass'n, Case No. 1:11-cv-06103 (S.D.N.Y. filed Aug. 31, 2011)

  • PTAB § 101 Appeal Stats for 2024: The More Things Stay the Same, the Worse They Remain

    By Michael Borella and Walter DeGroft[1] –

    USPTO SealEach year since 2021, we have examined how the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has been deciding appeals of § 101 rejections from examiners.[2]  And so far, the numbers have been remarkably similar.  2024 was no exception — applicants continued to face affirmance rates that were not only very high, but stubbornly consistent with prior years.  The story here is not one of progress or meaningful change, but of inertia where an entrenched status quo provides predictability by denying patents for a wide range of inventions.

    The overall affirmance rate for 2024 was 88.6%.  As shown below, this is in line with affirmance rates from previous years.

    Table 1
    Put another way, about 7 out of 8 appeals from examiner rejections on grounds of § 101 in 2024 were affirmed by the PTAB.  Conversely, the likelihood of a successful PTAB 101 appeal is 11.4%.  This is approximately the same chance of flipping a coin 3 times and getting no heads (12.5%), the rate of left-handedness in the U.S. (~10%), or your cat coming when you call it (scientifically unverifiable but feels about right).

    The persistently high affirmance rate of § 101 rejections at the PTAB is best understood as a direct consequence of the Supreme Court's decision in Alice Corp. v. CLS Bank.  The two-step framework articulated in Alice provides little concrete guidance for practitioners, examiners, or judges.  The Court deliberately avoided defining what constitutes an "abstract idea" or when an "inventive concept" suffices to transform such an idea into patent-eligible subject matter.  This vagueness has left lower tribunals and the USPTO with a test that is inherently malleable.

    The Federal Circuit's subsequent case law has not resolved the ambiguity.  Instead, it has produced a patchwork of inconsistent precedents, where eligibility may hinge on subtle distinctions that are difficult to reconcile.  Cases such as Enfish v. Microsoft and McRO v. Bandai suggest that claims directed to specific technological improvements can survive § 101 scrutiny, while decisions like Electric Power Group v. Alstom or ChargePoint v. SemaConnect represent how readily claims can be characterized as unpatentably "abstract."  The result is a body of law where outcomes depend heavily on framing and analogy, not clear statutory or judicial criteria.

    While individual examiners at the USPTO apply § 101 in a notoriously inconsistent and personalized fashion, the PTAB consistently errs on the side of ineligibility.  The PTAB's affirmance rate is thus less a reflection of the merits of applicants' arguments and more a predictable byproduct of an eligibility test that lacks objective criteria and is skewed against applicants.  The USPTO's recent subject matter eligibility memo merely reiterates the vagueness of the test, failing to provide anything close to a clear distinction between eligible and ineligible inventions.[3]

    In any event, our data gathering process was as follows.  From the PTAB's search interface, we specified the following criteria:  decision dates between January 1, 2024 and December 31, 2024, a proceeding type of "appeal", a decision type of "decision", and an issue type of "101".  These search results were overinclusive and thus required filtering and a degree of manual review.

    We only included decisions in which the applicant appealed an examiner's Alice-based § 101 rejection and the PTAB ruled on this basis of appeal.  To simplify the analysis, we considered a decision to be an "affirmance" of the examiner's § 101 rejection if the PTAB held at least one claim invalid under § 101.  Excluded cases where those in which: (i) the appeal was not of a § 101 issue but the PTAB set forth a new grounds of rejection based on § 101, and (ii) the appeal was of a § 101 issue but the PTAB did not decide the case on § 101 grounds (e.g., the examiner withdrew the § 101 rejections after the appeal was filed).  This gave us 692 qualifying appeals, of which 613 resulted in affirmance on § 101 grounds.

    In addition to the abysmal overall affirmance rate of 88.6%, we broke the data down by USPTO technical center (TC).  For sake of comparison, we also included corresponding data from 2023 and 2022 in the table below (click on table to enlarge).  To provide a sense of scale, entries in italics are for technical centers with 40 or more 101 appeals for that year.

    Table 2
    As expected, TC3600, where most business method inventions submitted to the USPTO land, continues to have the majority of appeals (488 of 692) as well as the worst affirmance rate.  This shows that appeals from this TC are for applications that the PTAB treats as virtually per se ineligible.  TC3700, which also handles some business methods, is nearly as bad, reinforcing the point that the PTAB views any claim drawn to so-called "non-technical" features as almost certainly doomed.  But high affirmance rates are evident across nearly all art units in which software-implemented inventions are examined, and even life sciences inventions are far from safe.  The persistence of these numbers year after year confirms that the PTAB's application of § 101 is not a matter of discretion or shifting doctrine, but a structural feature of an unworkable test.

    Another set of factors we considered were the grounds under which claims were found to be abstract by the PTAB.[4]  In line with USPTO practice, a claim is "abstract" when it recites mathematics, mental steps, or methods of organizing human activity.  Of the affirmances, 18.3%, 63.9%, and 73.41% were based on these categories, respectively.  Compared to 2023's numbers of 17.3%, 46.7%, and 68.1%, we see mathematics holding steady, while there was a sharp uptick in affirmances based on the mental steps category.

    We have noticed, at least anecdotally, that the mental steps category is appearing with greater frequency in rejections of AI-based inventions.  One explanation could be that the PTAB is simply reviewing more appeals in this technology area.  The methods of organizing human activity category, which is already high, ticked up further.  AI-based inventions directed to automation of tasks previously performed by a human may be a cause of this.

    Finally, we considered situations where the applicant appeals on grounds other than § 101 (e.g., §§ 102 or 103) but the PTAB decision included a sua sponte § 101 rejection.  This occurred 9% of this time in 2024, which is consistent with the 10% of 2023.  For applicants, the practical consequence is clear.  Even if you overcome the hurdles of §§ 102 and 103 at the PTAB, there is a non-negligible chance that § 101 will be raised against you for the first time.  Such a rejection increases the cost, delay, and uncertainty for the application, and reinforces the systemic disadvantage patentees face under the current eligibility regime.

    In short, applicants faced the same uphill battle in 2024 that they did in the previous years, and nothing in these statistics suggests that the trend will change absent intervention from Congress or the Supreme Court.  As Judge Paul Michel has warned, this kind of unpredictability makes patents unreliable assets of questionable value.  The consequences fall heaviest on startups and small businesses, which depend on enforceable patents to raise capital and challenge incumbents.  The current affirmance rates all but guarantee the opposite, fortifying the position of dominant players while draining the lifeblood from emerging companies.

    [1] Walter DeGroft was a 2025 Summer Associate at MBHB.  He is currently a law student at the Chicago-Kent College of Law.

    [2] Patent Docs has published our previous articles for 2021, 2022, and 2023.

    [3] https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf

    [4] The vast majority of the § 101 appeals were of software, business methods, and engineering-related technologies.  Life sciences § 101 appeals were mostly based on the "law of nature" exclusion to patentability rather than the "abstract idea" exclusion.  Very few (less than 10) life sciences appeals were in this data set.

  • Judge Newman’s Challenge Fails at D.C. Circuit

    An inevitable and tragic outcome

    By Kevin E. Noonan —

    Judge Newman_1Congress in writing laws is faced with a dilemma.  On the one hand the laws must be sufficiently clear and specific to enable enforcement, but on the other, the myriad of circumstances that can arise make it impossible to delineate with sufficient prescience the multitude of situations that can fall within the scope of the statute.  Courts are the usual arbiters of how the law should be interpreted and applied, under Marbury v.  Madison and 230 years of subsequent precedent.  The question of what happens when it is the court itself whose practices and procedures are at issue has arisen in Judge Pauline Newman's challenge to her suspension under the Judicial Councils Reform and Judicial Conduct and Disability Act of 1980.  As set forth in the D.C. Circuit Court of Appeals opinion against that challenge, the Court decided that its hands were tied by the statute itself (as interpreted by the Court under McBryde v. Committee to Review Circuit Council Conduct & Disability Orders of the Judicial Conference of the United States, 264 F.3d 52 (D.C. Cir. 2001)), which held that "Congress precluded our jurisdiction over statutory and as-applied constitutional challenges to judicial council orders."  This was the decision even though in their opinion the Court states that "our reasons for affirming are unrelated to the strength of Judge Newman's statutory claim or as-applied constitutional claims.  Nor does our decision reflect our views of the underlying dispute or of Judge Newman's suspension."

    The decision was ultimately jurisdictional, the panel deciding that their jurisdiction only extended to "Judge Newman's facial constitutional challenge to the Act's case suspension provision," which failed on the grounds that the challenged provision has applications that are constitutional (a rather "all or none" approach no matter how proper).  The statutory provision purportedly tying the Court's hands, § 357(c) entitled "No Judicial Review" states that "all orders and determinations, including denials of petitions for review, shall be final and conclusive and shall not be judicially reviewable on appeal or otherwise."  Which seems not only plain on its face but to express Congress's clear intentions, upon which the D.C. Circuit panel relied in affirming the District Court's dismissal of Judge Newman's as-applied constitutional claims and statutory claim for lack of jurisdiction.

    Application of the law, and specifically § 357(c), is governed by Supreme Court precedent, particularly Webster v. Doe, 486 U.S. 592, 603 (1988), where a statutory bar to judicial review should be upheld to preclude review of constitutional claims "only if there is clear and convincing evidence'" of Congressional intent, the opinion citing Ralls Corp. v. Comm. on Foreign Inv. in U.S., 758 F.3d 296, 308 (D.C. Cir. 2014).  The panel turned to McBryde in holding that this Circuit Court of Appeals had performed this judicial analysis and found sufficiently "clear and convincing" evidence to uphold the bar to Judge Newman's constitutional challenge.  In particular, the Court in McBryde held that there was insufficient evidence of Congressional intent regarding facial challenges to the statute's constitutionality, but there was sufficient evidence to do so regarding "as applied" challenges. It was in this latter category to which the Court understood Judge Newman's challenges reside.  And the judges on the panel recognized that they are bound by the earlier decisions of the Court unless overturned by "intervening Supreme Court precedent."

    The opinion then turns to Judge Newman's arguments that the Supreme Court has effectively overruled McBryde, specifically (and fittingly) in SAS Institute, Inc. v. Iancu, 584 U.S. 357 (2018), asserting that the Supreme Court's decision "suggests that even an explicit statutory bar cannot preclude judicial review of claims that an agency exceeded its statutory authority."  (It is necessary to consider in this argument the mention in an earlier footnote that "our court has treated judicial councils and the Judicial Conference as administrative rather than judicial bodies," which makes this citation germane.)  The panel was unpersuaded by this argument, because they discerned as a distinction that in SAS the statutorily preclusion was with regard to "whether to institute an inter partes review" (emphasis in opinion) whereas the challenge was directed to "how the Director conducted his inter partes review" and thus outside the scope of the challenged statutory provision (35 U.S.C. § 314(d)).

    The panel also rejected Judge Newman's argument that the addition of a severability clause to the statute in 2002 "expressly contemplates 'as applied' challenges to the Act being adjudicated in Article III courts," if only because its scope was generic and did not state that an Article III court could consider as-applied challenges.  Nor did the panel agree that the failure of the Judicial Conference to consider constitutional issues undermined the reasoning in McBryde's that the Judicial Conferences themselves could or would consider these issues (the panel recognizing that the Judicial Conference here pointedly declined to consider Judge Newman's constitutional challenges).

    Finally, the Court refused Judge Newman's recourse to Axon Enterprise, Inc. v. FTC, 598 U.S. 175 (2023), and Free Enterprise Fund v. Public Company Accounting Oversight Board, 561 U.S. 477 (2010), to the extent that Judge Newman argued those cases "held that all constitutional questions 'are outside the scope of agencies' expertise' and so must be reviewable in federal courts."  But "neither case involved an explicit jurisdiction-stripping provision like Section 357(c)" (emphasis in opinion); in those cases the preclusion was implied according to the Court, and in such cases the standard is not a clear and convincing evidence of Congressional intent.

    The opinion then addresses the deficiencies of Judge Newman's reasoning to as-applied challenges.  These included a footnote in McBryde that the Judge contended evinced an opinion that a court would have jurisdiction over as-applied challenges should they arise.  This opinion terms this reading of McBryde to be "implausible" in view of the remainder of the McBryde opinion. Similarly the panel dismissed Judge Newman's argument that McBryde (nor the statute) did not preclude her due process claims or the Judicial Conference's refusal to transfer her case to a different circuit, because "Judge Newman may be right that the Act provides no means to petition the Conference for interlocutory review of the Council's transfer decision.  But the Act does provide for Conference review of any final council action stemming from a case that was not transferred," which Judge Newman unsuccessfully attempted to employ.

    Having explained the portions of Judge Newman's arguments over which the Court did not have jurisdiction the opinion turned to those that it does, the Judge's facial challenge to the statute's case-suspension provisions.  The panel acknowledges the difficulty in prevailing in such challenges.  The most determinative of these difficulties is Judge Newman's acknowledgment that there are applications of the statute that pass constitutional muster, where a facial challenge demands that there be no such circumstances or applications.  In this portion of the opinion, the Court sets forth those concessions and their effect on the Judge's arguments, including that "short suspensions from receiving new case assignments" are constitutional under certain circumstances.  But Judge Newman has not been able to show "no set of circumstances . . . under which the law would be valid" or that it "lacks a plainly legitimate sweep," citing Comm. on Ways & Means v. Dep't of Treasury, 45 F.4th 324, 339 (D.C. Cir. 2022).  And ("indeed") the panel appreciates that Judge Newman did not attempt to make this showing, rather arguing that how the statute was applied to her was unconstitutional.  Somewhat unkindly, the opinion states that the Judge's argument "misunderstands the law governing facial constitutional challenges" at least in this context (begrudging that in other contexts, such as the First Amendment, "statutes may sometimes be deemed facially invalid where only a subset of their applications are unconstitutional," citing United States v. Hansen, 599 U.S. 762, 769 (2023), and stating that this is a special case due to the importance of constitutionally protected speech).  The Court also dismissed Judge Newman's invitation to adopt a "narrowing construction" of the statute because in order to properly do so the panel states that first Judge Newman would have had to raise "a serious constitutional question," which, in their view, Judge Newman has not done.

    The opinion ends with two points the panel sought to emphasize.  The first is that they did not (and assert that they could not) consider the merits of Judge Newman's as-applied constitutional claims.  In an apparent nod towards the respect Judge Newman has certainly earned, the Court states that "Judge Newman has posed important and serious questions about whether these Judicial Conduct and Disability Act proceedings comport with constitutional due process principles and whether her ongoing suspension comports with the structure of our Constitution" and that their failure (or more correctly refusal) to address those questions "is no indication that her arguments lack merit, nor signals how we might have addressed them if we were able."  Their hands are tied, according to the opinion, because "precedent strips us of authority to consider those challenges," which is the only reason the panel did not address them.

    The second point is a reiteration that the panel was unable to overrule McBryde but nevertheless the Court recognizes that there are reasons to think that case was wrongly decided.  One reason is that the "seeming absence of a judicial forum to address [Judge] Newman's as-applied constitutional claims itself raises constitutional concerns."  The opinion states that "Judge Newman presents substantial arguments that her suspension—which has now lasted nearly two years, with a third year recommended—threatens the principle of judicial independence and may violate the separation of powers" as well as the due process violations Judge Newman asserted and the Court did not reach.  But as it stands under the law, Judge Newman cannot raise her as-applied constitutional arguments before any Article III court and is left at the consideration (if not mercy) of the Federal Circuit Judicial Council and Judicial Conference.

    In a footnote, the opinion speculates that Judge Newman may have the option of asking the Supreme Court to review the Judicial Conference orders under a writ of mandamus, but the Circuit Court deigned not to express an opinion on this possibility.

    Under the circumstances, it appears that Judge Newman has three options remaining:  to succumb to the demands of the Judicial Council to submit to medical and psychological testing by doctors not of her choosing; to continue in limbo under suspension; or to step down from the bench.  No one but the Judge herself can provide any relevant counsel.  But the circumstances under which the current situation has arisen and persisted can certainly and properly be decried and the Judge herself be wished Godspeed.