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.