by Dennis Crouch
This follows up on yesterday’s post on my new draft article “Wrongly Affirmed Without Opinion.”
The basic argument in the paper is that both the Patent Act and the Lanham Acts require the Federal Circuit to provide an opinion when issuing a judgment on an appeal from the Patent & Trademark Office (PTO). In particular, both statutes indicate that, upon determination of the case, the Federal Circuit “shall issue … its mandate and opinion.” As the article explains, Rule 36 Judgments Without Opinion are (almost by definition) not opinions and thus do not satisfy the opinion requirement.
The article steps through some potential alternate constructions of the statutory language (the plain language is best) and considers whether Congress actually has the power to require the court to write an opinion (it does). If the court wants to keep issuing R.36 judgments, its best bet would be to construe the “shall issue its … opinion” akin to the best mode requirement — that it only needs to offer an opinion if it actually has an opinion. I argue that construction is not the best and also misses the reality that the judges form reasons for their judgment before issuing a R.36 judgment — the law just requires those to be written.
 See 35 U.S.C. § 144 (patent cases) and 15 U.S.C. § 1071(a)(4) (trademark cases).
Draft is online through SSRN: https://ssrn.com/abstract=2909007.