by Dennis Crouch
The Supreme Court currently has before it a unique opportunity to address a longstanding problem with the Federal Circuit’s practice of issuing no-opinion summary affirmances in patent cases. The recently filed ParkerVision petition presents a compelling argument that the Federal Circuit’s heavy reliance on Local Rule 36 judgments violates 35 U.S.C. § 144’s requirement that the court “shall issue… its mandate and opinion” when deciding appeals from the Patent Office. This violation has become particularly acute given the surge in appeals from Patent Trial and Appeal Board (PTAB) decisions in recent years. ParkerVision vs. TCL Indus., 24-518. While appellate opinions serve fundamental interests of human dignity and the rule of law — interests that take on special significance as here when no other Article III court has addressed the dispute — this case presents an even clearer problem because Congress has specifically mandated through Section 144 that the Federal Circuit ‘shall issue’ an opinion in appeals from USPTO decisions.
The ParkerVision petition arises from the Federal Circuit’s summary affirmance of PTAB decisions that invalidated the patentee’s claims related to wireless communication technology. After TCL and LG Electronics successfully challenged the patents via inter partes review (IPR), ParkerVision appealed to the Federal Circuit raising procedural questions about whether the PTAB improperly relied on arguments that had been waived. Rather than addressing the merits of the arguments, the Federal Circuit instead disposed of both appeals without any opinion and rather simply an “AFFIRMED” judgments under Rule 36, providing no explanation for its decisions.
The question presented thus asks:
Whether 35 U.S.C. § 144, which requires the Federal Circuit to issue ‘opinion[s]’ in PTAB appeals, is a reason-giving directive that prohibits the Federal Circuit’s practice, under Federal Circuit Rule 36(a), of summarily affirming PTAB decisions without issuing opinions.
ParkerVision vs. TCL Indus., 24-518 (petition for writ of certiorari).
More reading:
- Dennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017).
- Dennis Crouch, Patent Exceptionalism and Procedural Silence: A New Challenge to Federal Circuit Practice, Patently-O (October 2024) (discussing the Island IP petition).
- Paul R. Gugliuzza and Mark A. Lemley, Can a Court Change the Law by Saying Nothing?, 71 Vanderbilt Law Review 765 (2018)
-
Jason Rantanen, Missing Decisions and the United States Court of Appeals for the Federal Circuit, 170 U. Pa. L. Rev. Online 73 (2022)