Pauline Newman

Newman has authored a number of important opinions setting forth the law of patents in the United States. In Arrhythmia Research Technology, Inc. v. Corazonix Corp.,[11] she wrote an opinion for the panel finding that the use of an algorithm as a step in a process did not render the process unpatentable. In In re Recreative Technologies Corp.,[12] she wrote the opinion finding that the Board of Patent Appeals and Interferences exceeded its authority when it considered a claim of obviousness in the reexamination of a patent previously held by the examiner not to be obvious with respect to the references cited. In Intergraph Corporation v. Intel Corporation,[13] she highlighted the right of a patent owner to refuse to license, even to a party that has become completely dependent on the patent. In Jazz Photo Corp. v. United States International Trade Commission,[14] she clarified the law of repair and reconstruction (permitting the owner of a patented item to fix the item when it breaks, but not to essentially build a new item from the parts of an old one), writing that it was not a patent infringement for one party to restore another party's patented "one-use" camera to be used a second time.

With respect to the court's federal contracts jurisprudence, in 2010 she wrote a dissenting opinion in M. Maropakis Carpentry, Inc. v. United States. Stanfield Johnson has called her the court's "great dissenter", and has said that her dissents in the area of federal contracts "consistently reflect the view that a primary responsibility of the court is to serve 'the national policy of fairness to contractors'". He writes:[15]

At the core of Judge Newman's dissenting jurisprudence is the premise that the sovereign as a contracting party should be accountable for its actions, subject only to limited exceptions not to be presumed, unnecessarily expanded, or imposed in a formalistic doctrinaire way that ignores or masks the facts of government conduct. Where the facts justify it, contractors should be entitled to a 'fair and just' remedy, and the Federal Circuit is there to make sure this happens.

In 2015 Newman was the only dissenter in Ariosa v. Sequenom, where she criticized Federal Circuit's position on patent-eligible subject matter (claims preempting the use of the laws of Nature), following the SCOTUS decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. Instead of inconsistent interpretation of patentable subject matter by different courts at different times (i.e. requiring additional "inventive concepts" to transform a newly discovered Law of Nature into a patentable claim) Newman maintains, that claims, limited to a small number of routine applications of new discoveries, should be allowed, because such claims do not “preempt further study of this science, nor the development of additional applications". Gene Quinn and Nancy Braman, writing for IPWatchdog, praised Judge Newman's position in this case, stating [her] "dissent in Ariosa would be a way forward for the Federal Circuit and would be in keeping with the admonition from the Supreme Court that 101 not be used to swallow all of patent law."[16]

A 2016 Law360 article stated that Newman "built her reputation as the appellate court's most prolific contrarian".[17] A 2017 analysis of the impact of Newman's dissents has shown that her positions are often adopted by the Supreme Court of the United States on appeal.[2] In Merck KGaA v. Integra Lifesciences I, Ltd. (2005) the SCOTUS not only changed the state of the law to reflect what Judge Newman had written, but they cited her outright in the opinion.[18]

In April 2023, Newman published a noted dissent in SAS Institute Inc v. World Programming Ltd., asserting that the majority had conflated infringement and copyrightability questions, and failed to enunciate the burden of proof.[19]

In April 2023, it was reported that Chief Judge Kimberly A. Moore had demanded an evaluation of whether 95 years old Newman can keep up with a case load expected for Federal Circuit judge. She was said to have quoted chief judge Howard Thomas Markey, who died in 2006, on a court ruling.[20][21][22][23] In response to reports questioning Newman's competence, Mercer University professor David Hricik, writing for Patently-O, stated:

I saw Judge Newman (with Judge Lourie and former Judge O'Malley) speak at at the USPTO three weeks ago. (I was there speaking on patent ethics.) Judge Newman was eloquent, coherent, cogent, and spoke passionately about various topics, including section 101 (which requires a bit of mental agility, I would say).[24]

The initial report by Gene Quinn for IPWatchdog also noted that "Newman has filed dissenting opinions in at least two recent cases that show no signs she is suffering from any disability", stating that these were "classic Newman dissents, do not read as if they were written by law clerks, and do not show signs of decline or disability".[23]

On April 14, 2023, the Federal Circuit Judicial Council, released a statement and unsealed Orders dated March 24, 2023 and April 13, 2023.[25] The March Order alleged that court staff and judges had raised concerns about potential impairments of Newman's cognitive abilities and other concerns.[26]

Quinn also questioned why Newman would have been offered an opportunity to assume senior status, and continue hearing cases in that status, if there were questions about her competence to hear cases at all.[23] In a report for Bloomberg Law, Professor Arthur Hellman of the University of Pittsburgh School of Law noted that senior-status judges only hear cases "at the pleasure of the chief judge", and speculated that the prospect of getting no cases could explain why Newman would have rejected going to senior status.[21]

On May 10, 2023, Newman filed a lawsuit against Moore and others in the United States District Court for the District of Columbia, to prevent them from investigating whether she can continue to serve as a circuit judge of the court because of her health.[27] The filing noted that Newman had been given "only a few days to comply with requests for mental evaluations and her private medical records".[27]

On May 16, 2023, the Federal Circuit Court ordered her to release her medical records to help explain with her apparent cognitive decline in her health.[28][29]