Judgments Without Opinion Continue at the Federal Circuit

I had hoped that the Federal Circuit would quickly change its ways, but the court has now issued a new R.36 Judgment in a PTO Appeal: GreatBatch Ltd. v. AVX Corp. (Fed. Cir. 2017) (judgment without opinion).  In a draft article released last week (now forthcoming in The Wake Forest Law Review), I argue that 35 U.S.C. § 144 requires the PTO to issue opinions in these cases rather than simply judgments without opinion.  In particular, the statute states:

[T]he Federal Circuit shall review the decision from which an appeal is taken …. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.

The particular case here is narrow – what exactly is disclosed by the cited prior art – and  how a prior art pin assembly is grounded.  Truly a narrow issue, but what the oral arguments suggest is that the court did not really understand the technology at issue and instead planned to rely upon the substantial evidence standard of review.

26 thoughts on “Judgments Without Opinion Continue at the Federal Circuit

  1. 6

    Perhaps it is helpful to post links to orders being appealed, where CAFC uses a Rule 36 order, and where the orders being appealed can be found outside a paywall? (Or maybe this is an abuse of blog comments?)

    Anyway, Appistry v. Amazon (CAFC 16-2077). Appeal against summary judgment order that distributed computing claims are ineligible under 101. District court order is on Justia.com here:

    link to law.justia.com

    Similarly Appistry v. Amazon (CAFC 16-2417). District court order is on Justia.com here:

    link to law.justia.com

    1. 6.1

      Well, if there’s anything that isn’t going to help the cause it’s sanctionable frivolous g@r bage like that.

      Here’s the claims:

      1. A system for processing information, the system comprising:

      a plurality of networked hive engines, a plurality of the hive engines being grouped into a plurality of territories;

      wherein at least one of the hive engines is configured to receive a service request for a processing job, the processing job comprising a plurality of processing tasks for execution by a plurality of hive engines within at least one territory;

      wherein a plurality of the hive engines within the at least one territory are configured to perform the processing job in a distributed manner such that the processing tasks of the processing job are distributed to a plurality of hive engines within the at least one territory for execution thereby; and

      wherein the plurality of hive engines within the at least one territory that execute the processing tasks are further configured to return state information corresponding to the processing tasks for delivery of a processing result in response to the service request.

      “Hive engines.” Trying not to laugh here but … wow. Scrivening to a new b0 ttom.

      Friendly reminder: parsing out tasks, including information processing, to different task performers is an ancient conceptual solution to the problem of not having enough time to perform the task oneself. Receiving status reports is also ancient.

      Applying this concept to some new specific field (e.g., by specifying the content of the information) is either ineligible or per se obvious with zero hope of resuscitation by “secondary factors.”

      Face the music, people.

    2. 6.2

      It would be less of an abuse of blog comments, and more of an item readily adaptable for its own place on this blog (as a reminder, it would not be the first time that a separate place on the blog to have been attempted, or suggested).

      By the way, wish Malcolm a happy 11th anniversary.

  2. 5

    Perhaps we can now see at work the wisdom of some of the earlier SCOTUS separation of powers cases where the Court held that Court of Appeals-level Article III review of administrative determinations is insufficient to satisfy the foundational guarantees of Article III.

    Logistically speaking, no COA is realistically up to the task hence the *holding* first requiring Article III district court de novo review before enforcement.

    Of course, Article III district court participation may be excused – per the SCOTUS – in a very narrow class of claims created solely by the executive and legislative branches implicating “public rights.”

    Public rights necessarily do not include any cause of action traditionally resolved at law or equity.

    And yet, patents are public rights!

    More R36 = more PTAB power. This is just the beginning.

    1. 5.1

      I am it sure that merely “implicating” public rights is enough, anony.

      That would be like being “just a little” pregnant.

      1. 5.1.1

        Not entirely sure what you are getting at, but in any event the following question just came to mind:

        Has anyone tabulated (by year) USPTO gross revenue pre and post AIA?

        A tabaulation of annual gross revenue 2007 to 2017 would be interesting . . .


          Same as budget, anony…

          The Office is a “zero-sum” game, with all money in play being derived from innovators using the system.

          Not sure how that financial aspect squares with any “public rights” doctrine, since zero public money is actually involved in patent prosecution…


            Money is motive, incentive, etc.

            More example, how much revenue does the PTAB generate?

            Where does that money go?

            Does it stay in the USPTO? Is is it diverted elsewhere outside the USPTO?

            Does anyone outside the USPTO and Congress even know?


              Someone should – the USPTO (including the PTAB) is not allowed to be a profit center. That’s what I meant about the budget. Of course, it has been operated as a innovator funded Federal slush fund in the past with the siphoning of diversions to the “general fund” – but that’s a whole rant in and of itself.


                So no one has the financial figures . . . never a good thing when it comes to massive, big dollar federal agencies.

                FOIA suit?

                1. Just because I don’t know who has the numbers most definitely is not the same as saying that no one has the numbers.

                  But I think I get your point and would fully agree that as an executive agency, the books should be fully open and transparent. In fact, I would add that since the AIA provided some additional power to the Office to set fees – with the positive restraint that any increase must balance out in the aggregate, there is a definite NEED to make sure the books are copacetic.

                2. After the enactment of the AIA and the rapid ascension of IPR, the USPTO became a congressional piggy bank on steroids. I know it; you know it; everyone knows it.

                  It’s time the public saw the figures.


          The USPTO for the first time seeking attorney’s fees as a mechanism for chilling district court appeals might strike some as important.

          But yes, LOL!

                1. No.

                  “The patent act’s reference to all expenses of the proceeding regardless of the outcome in section 145 is an open ended broad term that would include personnel litigation expenses jaynie lilley of the DOJ told the panel” (dyk, Prost, stoll)

                  “The USPTO has argued that is novel approach is necessary to keep up with rising costs”

                  Translation: the USPTO much prefers to play with a stacked deck before it’s R36 kangaroo court.

                  Panel is not a good draw for Irell.

                2. Yeah well I can understand on the rising costs front, but those cases are so few and far between (at least I thought) that I’d say they should restrict themselves to exceptional cases.

  3. 4

    Here is the template order:

    “We find there is substantial evidence for the PTAB’s opinion that a POSITA would be motivated to combine the prior art references. We also find there is substantial evidence that a broadest reasonable construction of the claims would read on that prior art combination.”

    The bottom line, is the PTAB has carte blanche to make certain subjective determinations (including motivation to combine, inherency, and indefinitess). In most cases the examiner considered the same or cumulative prior art and determined the claims patentable. By applying the exact same standards in review as in examination the validity of every claim in every patent is rendered indeterminate, for entire term of the patent. Under substantial evidence review, there is no basis to reverse the PTAB on any of these issues.

    In 1997 Greatbatch invented a new filtering/grounding structure and met all the requirements for patentability. But in the twilight zone of the AIA that is not relevant.

    The Fed Circuit recognizes this, but their hands are tied.

  4. 3

    Meanwhile, yet another non-precedential decision in PPG Indus. v. Valspar Sourcing. This was an interesting case, with some worthwhile issues at stake, so it is a shame that they made it a non-prec. PPG wanted to appeal from an adverse inter partes reexam, but there as no lawsuit in the works, and no infringing product ready to launch, so PPG lacked Art. III standing. PPG appealed anyway, and Valspar defended on the basis of lack of Art. III case or controversy.

    Meanwhile, in the time between when the appeal was filed and when it was heard, Valspar sued PPG for infringement, but not based on the patents in the re-exam. Instead, Valspar gave a covenant not to sue on those patents.

    The CAFC decided that the post-appeal notice lawsuit would support Art. III standing for the appeal from the re-exam (in other words, even though there was nothing to support Art. III standing at the time the appeal was filed, the defect was cured by Valspars subsequent suit on other patents), but that this was then mooted by the covenant not to sue.

    I can see why the CAFC did not want to render a precedential judgment where two moving parts in the case each point in opposite directions. It gets too complicated, and rather than make messy law, the CAFC just rendered a non-precedential judgment.

    On the other hand, everything about the post-appeal law suit is really not essential to the disposition. They could simply have omitted that fact from the opinion, and handed down a perfectly coherent precedential judgment holding that a covenant not to sue on patents in an IPR destroys standing to appeal from that IPR, even if there is other litigation ongoing between the two parties. That would have been a precedent worth having. It is a shame that (as usual) the CAFC decided to go the non-prec route.

  5. 2

    Hi Dennis, can’t remember commenting here before but I’ve read you for years. This post brings me to an egregious example, and not sure if you’ve covered it here before. One of the Rule 36 judgments was for In re Webb, which is for application 12/429,724, and upheld a decision at the PTAB. The application was apparently filed with a request for non-publication, so nothing is available on PAIR either.

    The absurdity here is that an abstract idea cited in PTO guidance for this decision apparently came from the PTAB, but almost nobody can verify what was in the claim (or any representative claim), or anything else about the application etc. We are just supposed to take the PTO’s word for it? No information on it from beginning to end, but the PTO holds it up in guidance as an example of an abstract idea.

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