In Fox v. FCC,  the Second Circuit held that the FCC’s indecency policy is impermissibly vague and violates free speech.  The citation to the Second Circuit’s opinion is 613 F.3d 317. The Supreme Court granted Certiorari in this case and heard oral arguments Tuesday, January 10th. The citation to the petition for writ of cert is 2011 WL 1540430.

The Second Circuit addressed the dangers of the FCC’s current three-factor “patently offensive” test. The Court pointed out inconsistencies in how this test has been applied and also a lack of discussion as to how each factor is applied, thus resulting in a failure to provide notice to broadcasters as to how the Commission will apply the factors in the future.

The Court also noted that the same vagueness issues exist with the Commission’s presumption that words like “f*ck” and “sh*t” are prohibited. Under the current policy, all variations of the two terms are prohibited unless they fall under the “bona fide news” exception or the “artistic necessity” exception. The Court stated that the Commission has failed to explain the “bona fide news” exception except to concede that it is not absolute. The “artistic necessity” exception permits the use of “fleeting expletives” if they are “demonstrably essential to the nature of an artistic or educational work or essential to informing viewers on a matter of public importance.” You can read more about the “artistic necessity” exception in the Commission’s omnibus order available at 2006 WL 656783.

The Second Circuit explained that while the currently policy provides the most flexibility to the Commission, that flexibility is dangerous, stating:

“The FCC’s current indecency policy undoubtedly gives the FCC more flexibility, but this flexibility comes at a price. The “artistic necessity” and “ bona fide news” exceptions allow the FCC to decide, in each case, whether the First Amendment is implicated. The policy may maximize the amount of speech that the FCC can prohibit, but it results in a standard that even the FCC cannot articulate or apply consistently”. 613 F.3d 317, 332.

The Second Circuit also expressed concern over the chilling effect this vague policy has on speech, citing examples of  broadcasters deciding not to air particular programming for fear of being fined or losing their license. The court warned:

“If the FCC’s policy is allowed to remain in place, there will undoubtedly be countless other situations where broadcasters will exercise their editorial judgment and decline to pursue contentious people or subjects, or will eschew live programming altogether, in order to avoid the FCC’s fines. This chill reaches speech at the heart of the First Amendment.” 613 F.3d 317, 334.

If you are interested in seeing how the Commission has applied these tests you can search in FCC materials.

On Westlaw go to the database Federal Communications – FCC Record (FCOM-FCC)

On WestlawNext, type FCC into the Search bar and when it says “looking for this?” click on Federal Communications Commission (FCC).

Sample Search: (“patently offensive” /10 three-factor) (presum! /5 profan! indecen!)

Transcipts: The Supreme Court oral argument transcripts are available at this citation: 2012 WL 72459

If you would like to be alerted when the Supreme Court’s decision comes out, set up a WestClip with this as your query: ti(Fed! & Fox) in the SCT database. The steps for setting up a WestClip are available here: Westlaw Quick Reference Guide: Using Westclip (pdf).

The Supreme Court is back to business Monday, January 9th. The court will hear 3 cases Perry v. Perez/Perry v. Davis, Kappos v. Hyatt and Sacket v. E.P.A. This post’s research covers Kappos.  Perry and Sacket posts are forthcoming.

Kappos v. Hyatt: Overview

In Hyatt v. Kappos, the Federal Circuit held that when a patent applicant files suit under 35 U.S.C. § 145, the only limitation on the admissibility of evidence for issues raised before the Patent Office are the Federal Rules of Evidence and the Federal Rules of Civil Procedure. The citation to the Federal Circuit opinion is 625 F.3d 1320.

In this case the Director of the PTO argued that an applicant in a § 145 action can only present new evidence to the District Court if the evidence could not reasonably have been provided to the Patent Office. The Federal Circuit rejected this argument citing Butterworth v. Hoe (112 U.S. 50), “It is not a technical appeal from the patent-office, like that authorized in section 4911, confined to the case as made in the record of that office, but is prepared and heard upon all competent evidence adduced, and upon the whole merits.”

The Director also argued that allowing applicants to introduce new evidence would conflict with the doctrine that parties may not raise issues in the district court that were not raised before the Patent Office. The Federal Circuit rejected this argument as well and clarified that an applicant cannot raise new issues but can provide new evidence as to issues raised before the Patent Office.

The Federal Circuit identified two different standards of review for the District Court in a §145 action. The First applies in situations where the applicant does not introduce new evidence. In this instance, the court reviews the case on the administrative record and must apply the APA’s substantial evidence standard to the Patent Office findings of fact. Second, when the applicant does introduce new evidence, the district court is not limited to the administrative record, instead the court must make de novo findings of fact that relate to the new evidence.

Ronald Mann’s overview at SCOTUSblog notes…

The arguments of the parties are squarely drawn.  Although the parties argue at length about the state of the law at the time when the various predecessors to Section 145 were adopted and amended (the statute dates to 1839), the central debate really pits the language of the statute against considerations of institutional design.

We nevertheless spent some time finding the old statutes. The Federal Circuit opinion looks at the legislative history of 35 U.S.C.A. § 145 and discusses § 4915 of the Revised Statutes at length.  Section 4915 and other 145 predecessors can be found in the US-STATLRG database.   For example, we found 44 Stat. 1335 by searching for,  patent and da(1927).  Searching clues can be found under the Historical and Statutory Notes at 35 USCA 145.

The Supreme Court has granted certiorari and hears oral arguments on Monday, January 9th. The Petition for Writ of Cert can be found at 2011 WL 1336431.

To read the briefs filed in this case run this search in the SCT-BRIEF database: ti(kappos & hyatt) or, find the link for filings links at the case from the Federal Circuit opinion.

The transcript will be available soon after the oral argument, to access that you can go to the Transcripts of the U.S. Supreme Court Oral Arguments database (SCT-ORALARG) and enter Kappos in one party name box and Hyatt in the other party name box. We’ll also update this post when the citation becomes available. [Update: Oral Arguments Transcript is here: 2012 WL 38640]

If you would like to be alerted when the Supreme Court’s decision comes out, set up a WestClip with this as your query: ti(kappos & hyatt) in the SCT database. The steps for setting up a WestClip are available here: Westlaw Quick Reference Guide: Using Westclip (pdf).

Oyez, Oyez, Oyez! Last week the Court heard 2 patent-related cases on vastly different issues.

Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, No.10-844

The Caraco case was argued last Monday, December 5th (trascript available at 2011 WL 6020517). In this case the court must consider whether a generic manufacturer can bring a counterclaim against a pioneer manufacturer under the Hatch-Waxman Act (Drug Price Competition and Patent Term Restoration Act of 1984).

In Caraco, “[T]he Court of Appeals for the Federal Circuit held that the Hatch-Waxman Act allowed a prospective manufacturer of a generic version of a drug to bring a counterclaim against a patentee, in a Paragraph IV patent infringement action triggered by the generic manufacturer’s abbreviated new drug application (ANDA), only if the drug patent did not claim any approved methods of using the listed drug, and thus, a counterclaim was not available on the ground that the drug patent did not claim all approved methods of using the drug.”

176 Intellectual Property Counselor 5

The question presented in Caraco’s petition for certiorari was:

“Whether this counterclaim provision applies where (1) there is “an approved method of using the drug” that “the patent does not claim,” and (2) the brand submits “patent information” to the FDA that misstates the patent’s scope, requiring “correct[ion].”” (You can find the Petition for Writ of Cert at this citation 2010 WL 5399206)

The counterclaim provision referred to above can be found at 21 U.S.C. § 355(j)(5)(C)(ii)(I)

Also remember,  the patent in suit is available from the KeyCite History links:

Research Trail:

COUNTER-CLAIM /P PATENT! /P DRUG & CARACO in Intellectual Property – Law Reviews, Texts & Bar Journals (IP-TP) database on Westlaw or in All Intellectual Property Secondary Sources in WestlawNext

Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150

The Prometheus case was argued last Wednesday, December 7th (transcript available at 2011 WL 6077582). In this case the patent covered a method of determining the proper dosage of thiopurine, a drug used to treat gastrointestinal and autoimmune diseases. The Supreme Court vacated and remanded the Federal Circuit’s prior decision (581 F.3d 1336) for further review in light of Bilski v. Kapppos, 130 S.Ct. 3218 (2010). On remand from the Supreme Court, the Federal Circuit held that this claimed method was patent eligible. 628 F.3d 1347.

In the Bilski case, the Supreme Court held that the court is not limited to the machine-or-transformation test as the only test for determining whether a process is patent eligible. This test provides that a claimed invention is not patentable it if is not tied to a machine and does not transform an article. The Supreme Court held that, while the machine-or-transformation test can be a useful tool for determining whether or not a process is patent eligible, this test is not the only means available for making this determination.

The Petition for Writ of Cert is available at this citation 2011 WL 992001

Research Trail:

PROMETHEUS /P METHOD PROCESS /10 PATENT! in in Intellectual Property – Law Reviews, Texts & Bar Journals (IP-TP) database on Westlaw or in All Intellectual Property Secondary Sources in WestlawNext

Lastly, you might want to be alerted when these 2 cases are decided. We have yet to outline the steps for setting up a Westclip in this blog. So, here they are:

In Westlaw, click on the Alert Center link the upper right corner of the screen. In WestlawNext, from the homepage click the Tools tab and then click on the Alert Center link.

Follow these steps:

1. Where it says WestClip follow the blue line to the right of the screen and click on Create.
2. Name your clip in the “Name of clip” box
3. Type in your Client ID (if you don’t have one just type in anything you wish, I use my initials).
4. In the Database box type SCT
5. In the Query box type TI(CARACO) or TI(PROMETHEUS) depending on which one you want this clip to grab.
6. Now click the Edit link to the right of Delivery Settings
7. Select the frequency with which you would like the WestClip to check for new cases
8. Select E-mail for Destination and click the Properties button to input the correct email
9. I recommend List of All Citations as your Result Format
10. To the right of “No older than” make sure the number is 0 is in the Days box
11. Uncheck the “Inform me of no results” box to avoid getting an email everyday telling you the opinion is not out yet.
12. Click Save
13. This will bring you back to the page where we named the clip, click Save again.
14. Now you can see your clip listed under WestClip in your Alert Center.



The United States Supreme Court heard oral arguments on November 8, 2011 in the case of US v. Jones.  The oral arguments are available at UNITED STATES, Petitioner, v. Antoine JONES. 2011 WL 5360051. The issue presented in the case is an interesting one regarding Fourth Amendment’s protection against unreasonable searches: “Whether the warrantless use of a GPS tracking device on a vehicle to monitor its movements on public streets violates the Fourth Amendment.” See the Electronic Frontier Foundation’s (EFF) Amicus Brief: United States of America v. Jones, 2011 WL 4590838.

You can retrieve the briefs filed in this case by going into the database SCT-BRIEF-ALL and running a search such as: da(2011) & GPS & TI(JONES). I have also set up a WestClip in the SCT database to be notified when the Supreme Court issues an opinion in this case. My search for this clip is: TI(JONES) & GPS.

Nina Totenberg owns the Supreme Court beat.  Her recent 8 minute piece on Clarence Thomas’ influence on the Supreme Court is not to be missed. Ms. Totenberg’s straight delivery puts her listeners in the courtroom even when there’s no recorded audio available to flavor her reporting. In her coverage of the October 5th oral arguments in Hosanna-Tabor v. EEOC, Totenberg noted:

Following Kruger to the lectern was Perich’s lawyer, Walter Dellinger. He literally got one word out of his mouth before the justices pounced. Justice Elena Kagan asked Dellinger “why this commissioned minister does not count as a minister…..” [emphasis mine]

What do you think that one word might have been? Here’s the transcript (2011 WL 4593953):

MR. DELLINGER: Mr. Chief Justice, and may it please the Court –

JUSTICE KAGAN: Mr. Dellinger — could you assume — could you assume for me that — is it –

CHIEF JUSTICE ROBERTS: Mr. — Justice Kagan –

(Laughter.)

JUSTICE KAGAN: I feel like I missed something. Mr. Dellinger, could you assume for …?

Ok.  So, it was more than one word.  But, if you can’t get past “may it please the court,” you’ve been pounced upon.  And, the transcript reveals that Mr. Dellinger (certainly a seasoned attorney)  felt it.  For Court-followers, these transcripts offer great additional value to Ms. Totenberg’s coverage.  Transcripts of oral arguments can be found on Westlaw (SCT-ORALARG) and WestlawNext (Surpreme Court Oral Transcripts).

A very common question for Reference Attorneys is how to find this term’s Supreme Court cases?  One response is, why research when you can just get the answer? The SCOTUSblog’s Merit Cases page includes docket numbers, party names, argument dates, a short description of the case, and a link to the opinion when available. It’s also sortable by case name or date.

But, as researchers, we keep our powder dry.  It’s not enough to know what.  We also want to know how.  See for ourselves.  And, our own research gives us more discretion as far as how we wish to work with the results.

Here’s one recommended search.  In Supreme Court Dockets, try:

2011 2012 /25 “set for argument”

66 Results

From here, you can download the dockets.  On WestlawNext, you can also export the result list to a .csv file (‘comma-separated-values’ means it’ll open in Excel).  Fields include case title, filed date, docket number, and the docket’s WesltawNext URL.

How does one find Supreme Court cases where certiorari was denied, but the dissenting opinion states that the Justice writing the dissent would have granted certiorari?  Try this in the Westlaw SCT database or the Supreme Court jurisdiction on WestlawNext:

(scalia +5 “would grant certiorari”) (DIS(j. justice /3 scalia) and “WOULD GRANT CERTIORARI”)

Other Helpful Cert Content

Of course, petitions for Writ of Certiorari can be found on Westlaw (SCT-PETITION) and on WestlawNext:

Joint Appendices (SCT-JA on Westlaw, U.S. Supreme Court Joint Appendices on WestlawNext): Once Cert is granted, Supreme Court Rule 26 requires petitioners to file 40 copies of a joint appendix which must inlcude: (1) the relevant docket entries in all the courts below; (2) any relevant pleadings, jury instructions, findings, conclusions, or opinions; (3) the judgment, order, or decision under review; and (4) any other parts of the record that the parties particularly wish to bring to the Court’s attention.  See for example, the  Citizens United v. Federal Election Commission Joint Appendix at 2009 WL 62995 (Approx. 85 pages).

The librarians at the University of Houston O’Quinn library offer these great search tips for searching concurring and dissenting opinions within Supreme Court cases. We take exception only to this:

If you want to use WestlawNext rather than Westlaw, the same field searches will retrieve the same results if you limit the Jurisdiction to United States Supreme Court. Unfortunately, WestlawNext does not advertise this functionality, so those law students who have been introduced only to WestlawNext (as opposed to Westlaw) will never know such control exists.

In fact,once you navigate to the Supreme Court page onWestlawNext, you’ll find dissenting, concurring, and panel fields on the Advanced Search Template:

In addition, the Advanced Search page includes a pdf outlining the poriton of the document searched by each field:

This week, we’ll be offering additional Supreme Court search tips.  Let us know what other Supreme Court-related research you’d like us to investigate.

Each year, Tom Goldstein, co-founder of the widely read SCOTUSblog, compiles and releases Supreme Court statistics. Last month, Mr. Goldstein released the final “Stat Pack” for the Supreme Court’s most recent October 2010 term with these results: The Court reversed or vacated seventy-nine percent of the decisions it reviewed. Circuits with the highest percentage of reversals included the Sixth Circuit (eighty-three percent) and the Fifth Circuit (eighty percent). The Ninth Circuit came in third at seventy-nine percent.

There is nothing remarkable about these figures. SCOTUS scorecards demonstrate that over time the Supreme Court will typically reverse or remand seventy to seventy-five percent of the cases it hears. Most (if not nearly all) circuits are reversed at levels well above the fifty-percent mark year after year.

What is interesting, though, is the reaction to these numbers – in particular, the media’s condemnation of the Ninth Circuit. Referencing the SCOTUSblog figures, the Los Angeles Times reported this week that “it was another bruising year for the liberal justices of … the 9th Circuit.” The American Bar Association agreed writing, “the Ninth Circuit took another beating from the United States Supreme Court this past term”.  Earlier in the year, media attacks on the Ninth Circuit were equally disapproving with headlines like “SCOTUS smackdown of the Ninth Circuit.”

The Ninth Circuit has been a media punching bag for many years, but looking at the SCOTUS figures, I wonder how much of the recent criticism is misplaced. In the October 2009 term, the circuit courts were reversed seventy-one percent of the time. That year, while the Supreme Court reversed eighty percent of Ninth Circuit cases, three other circuits plus the grouping of all appeals taken from state courts had higher reversal rates. The year prior, during the 2008 term, the Ninth Circuit was reversed only sixty percent of the time, well under the seventy-six percent reversal rate for all cases. Seven other circuits that year had higher reversal rates than the Ninth Circuit; six of them were reversed at the one-hundred percent level.

If it’s the numbers speaking, why isn’t the story about the much higher reversal rates we see out of the Fifth and Sixth Circuits?  Why has no one written about the propensity of the Supreme Court to turn back state Supreme Court decisions which, in this past term, were reversed at a rate of one-hundred percent?  Are we to discount the importance of the five Ninth Circuit opinions upheld by the Supreme Court or disregard the reversals by a narrow 5-4 split?  

Commentators who question using reversal rates as a benchmark for court performance point out that the Supreme Court reviews only a very tiny percentage of the total number of circuit court decisions.  Drawing generalization and creating themes from such a small sampling would be an imprecise science at best, misleading at worst. Furthermore, because circuit courts are comprised of judges who occupy every corner of the ideological spectrum, reaching consensus has more to do with the make-up of a particular panel than anything else.   

The Times points out that while seventy-nine percent may not be unusual in terms of past records, twelve of the reversals this year were unanimous which, it argues, may indicate that the Ninth Circuit is more “often out of step with even the high court’s liberal justices.”  But implicit in this remark is an assumption that Supreme Court opinions, even if unanimous, are somehow more “correct” – certainly, a debatable conclusion.   

In my reading about reversal rates I found two articles of particular interest:  The first, a recent essay by Diarmuid F. O’Scannlain of the Ninth Circuit, widely considered the that court’s most conservative jurist, decries Ninth Circuit reversal statistics (the Ninth Circuit’s record is “strikingly poor”), but raises some interesting questions about whether nominal percentage differences between circuits should mean anything.  The other article (76 MOLR 315) raised what I thought an interesting approach to judging our judges: instead of using reversal statistics as a measuring stick, why not measure performance according to the mix of positive and negative citations to legal opinions.  For more on this, see Judging the Judges in Research References below.

RESEARCH REFERENCES

General: Those interested in reading more about Supreme Court reversal rates and the role of judicial statistics, might consider a structured search in WestlawNext along these lines:

“circuit court” “supreme court” “ninth circuit” /50 (reversal /2 rate) /100 statis!

Circuits by Supreme Court Term: The Court’s term runs from the first Monday in October to the first Monday of October the following year.  The synopsis of the Supreme Court case will reference the origins of the case as well as the Court’s holding.   So, to approximate the research discussed in this article, try the following in the SCT database:

da(aft 09/03/2009 and bef 10/04/2010) and sy(ninth-circuit)

Judging the Judges:

For this analysis we’re picking on Alex Kozinski.  To perform an analysis of positive/negative citations recommended by the Missouri law review referenced above, we began with a search in opions by Kozinski from 2010 forward: In CTA9, try ju(kozinski) and da(aft 2009).  Then, we downloaded  just the citations to Word.  We ran this word document through WestCheck for Cases and Negative History only.  Call the Reference Attorneys if you’d like us to walk you through this process.  The sample report is here: Kozinski. (Note: This Word document is about 90 pages long.  The obvious benefit of reversal rates, is that they are a convenient snapshot.)

Reversal reports are available for individual judges from Profiler-WLD databases.  Find the table for Appeals of Decisions BY (not TO) Judge.

A few days ago, we noticed an interesting story in the New York Times regarding the U.S. Supreme Court and the use of dictionaries. The Marquette Law Review, as cited by the article, released a study that found a significant rise in the number of times the Court cites to a dictionary. You can view the study on Westlaw at 94 MARQLR 77. The New York Times article talked to various law professors, lexicographers, and lawyers who looked with caution on this increase. One interesting quote is from a professor at Loyal Law School, commenting about how the press tends to influence dictionary definitions.

“It may also be a surprise to the Supreme Court justices who look to dictionaries as authorities in construing statutes,” Ms. Aprill wrote in the Arizona State Law Journal, “that in good measure they are interpreting law according to The New York Times.”

If you wanted to see U.S. Supreme Court cases that cite to a dictionary, try this search through the U.S. Supreme Court cases (SCT) on Westlaw:

american webster random-house black! oxford /5 dictionary

There are many ways to find definitions on Westlaw. We have the 9th edition of Black’s Law in the BLACKS database. There is also the Word and Phrases database (WORDS-PHRASES) which stores various definitions from cases.

If you wanted to search caselaw directly, there are two different searches that I like to use. First is the Words & Phrases field. If you put your search team in the WP() field, any cases that define that term in the headnote will appear. Another search is to try:

term word phrase +1 [search term]

Most courts will phrase a definition as “we define the term” or “the word [search term] means.” This search has been very helpful in finding definitions.