The Statute Bars Affirmances Without Opinion

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).[1] 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.

[1] 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.

56 thoughts on “The Statute Bars Affirmances Without Opinion

  1. This article about “technocracy h e l l” speaks to an issue that has been a pet peeve of mine for years, and is also relevant to some of the criticisms downthread directed at those of us who would be happy to see the CAFC at least do the simplest right thing: make the underlying issues and claims in their judgments transparent and readily accessible. No accounts. No passwords. No fees (the extraordinarily tiny costs get passed on to the incredibly well-heeled players who use the CAFC’s services).

    link to democracyjournal.org

    1. You are confusing Ends and Means again, Malcolm.

      No one is criticizing the Ends of judgments that are transparent and readily accessible.

    2. The fact is that they are busy, even more so with the flood of recent PTAB appeals, and Rule 36 provides a useful tool to conserve resources to focus on the precedent cases. Is this really such a problem? I would say no, and if it is a problem at all, it is a negligible problem compared to the other problems that we as a society are currently facing.

  2. Hi Dennis —

    One thing I’d like to see discussed in the next draft is a little more contrast to other tribunals.

    As you briefly mention, all decisions of administrative agencies that are adverse to a party must be supported by a “a brief statement of the grounds,” 5 U.S.C. § 555(e), sufficient to satisfy the “arbitrary and capricious” standard of the Administrative Procedure Act, 5 U.S.C. § 706(2)(A). “We have explained that a ‘fundamental requirement of administrative law is that an agency set forth its reasons for decision; an agency’s failure to do so constitutes arbitrary and capricious agency action.’” Amerijet Int’l Inc. v. Pistole, 753 F.3d 1343, 1350 (D.C. Cir. 2014). “The fundamental principle of reasoned explanation embodied in … (agency) decisions serves at least three interrelated purposes: enabling the court to give proper review to the administrative determination; helping to keep the administrative agency within proper authority and discretion, as well as helping to avoid and prevent arbitrary, discriminatory, and irrational action by the agency; and informing the aggrieved person of the grounds of the administrative action so that he can plan his course of action (including the seeking of judicial review).” McHenry v. Bond, 668 F.2d 1185, 1192 (11th Cir. 1982).

    How do § 144 and § 1071(a)(4) contrast with statutes governing other Article III Courts of Appeals? I truly don’t know. You come close to saying that no other Court of Appeals has an analogous statute–is that the case? It would be helpful to note any such analogy. If there’s no analogous statute for them, then indeed it may be the case that the Federal Circuit has a sui generis obligation to issue an opinion for appeals from the PTO. (Presumably, if there is no analogous statute governing all other Courts of Appeals, the Federal Circuit could continue to use Rule 36 affirmances in appeals from district courts?)

    Recall this was a hot issue around 2000 for other Courts of Appeals, brought to a head by Anastasoff v. United States, 223 F.3d 898 (8th Cir. 2000), vacated as moot, 235 F.3d 1054 (8th Cir. 2000) (en banc). The precise issue in Anastasoff was a bit different, non-citation rules, but the reasoning in Anastasoff was that the Constitutional “judicial power” requires a written opinion that can be cited. After the intial Anastasoff decision was vacated, I haven’t seen the issue resurface.

    I have not looked at the Rules Enabling Act — how is that implicated here? It seems to me that if your analysis of § 144 and § 1071(a)(4) is correct, then (at least for appeals from the PTO) the statute would trump the rules.

    Good thoughtful article.

    1. Another fun case to cite — Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809 (1986) (obviousness has underlying substantive and procedural elements, and the Federal Circuit is vacated on procedural grounds for failing to explain).

      A good paper to look at (perhaps more enlightening on your point than Shapiro) is Salem M. Katsh and Alex V. Chachkes, Constitutionality of “No-Citation” Rules, 3 J. App. Prac. & Process 287 (2001).

  3. WEST PALM BEACH, Fla. (AP) — A Florida golf course owned by President Donald Trump must immediately repay $5.7 million to 65 former members who had been denied membership refunds after he bought the club in 2012, a federal judge ruled Wednesday.

    And tons of patent maximalists voted for this guy. They’re still cheering him on.

    Surprised?

    I’m not.

  4. So can the opinion be really short? Like, “We have considered the appellant’s arguments and find them without merit. Affirmed.”

    1. TJ – Thanks for the question. In my paper I suggest that the opinion can be quite short however, I don’t attempt to actually draw the threshold line. That question may be reserved for another day. What I say is that “Affirmed” is not enough to satisfy the statute.

      Although I would prefer more of an explanation, your proposal provides substantially more than what parties currently get. In your example, for instance, it looks like the court reached the merits of the appeal and did not dismiss on some sua sponte procedural ground. That result then will give more force to the judgment as it is collaterally wielded.

      1. But I can go even shorter and emptier. E.g., “We find reversal is not warranted. Affirmed.”

        My basic concern is the same intuition that informs the common law rule against specifically enforcing personal services contracts. You can make someone write something entitled “opinion” on the heading. You can’t make someone write a good–as in detailed, or informative, or anything that entails actual work–opinion. Well, I suppose you can, if you are going to convene an impeachment (or, in personal services enforcement, contempt) proceeding every time to look at the performance on a case-by-case basis, but that is the same thing as saying you can’t.

        1. against specifically enforcing personal services contracts. You can make someone write something entitled “opinion” on the heading.

          Would one difference herein, TJ, be that the judiciary’s job IS to do what (and how) the case-writing is laid out for them?

          1. If Dennis’s claim is that judges’ jobs are to write opinions and that they are normatively/morally/professionally obligated to write informative opinions, that would be one thing. But that is not his claim. His claim is that the law requires judges to write opinions.

            An singer who has signed a contract to perform at an opera is also normatively/morally/professionally obligated to sing at the opera. But the law will not compel him to sing. The law does not do it because it has no means of enforcing that command. And that problem applies equally to a claim that the law should carry the moral obligation of judges to write informative opinions into a legal command.

            1. TJ – It would be an interesting conversation to have about what to do with judges who refuse to follow the law. We do have a structure where a single appellate judge cannot do to much standing alone b/c of the requirement of a three-judge panel. And, at the federal circuit, even a set of three judges who refuse to follow the law can be overturned if the rest of the court disagrees via en banc holding. The supreme court can also step in to reverse as an congress (to impeach).

              In the particular situation raised in my paper, I don’t think we have an issue yet of judges refusing to follow the law, but just that none of the judges have previously thought through what the law actually requires.

  5. In totally unrelated—but nevertheless interesting—news, the EPO enlarged board of appeals finally released its opinion in G1/15. The upshot: no more poisonous divisionals. Good news!

  6. In reply to:

    Dennis: “judges form reasons for their judgment before issuing a R.36 judgment — the law just requires those to be written,” seemingly walking back from res ipsa loquitur is adequate, see 7.2 in the first post comments.

    If there is unanimous unspoken agreement on the winner, what is there to write?
    Greg at 13 in the fist post: “The proliferation of Rule 36 judgments, however, does neither harm nor good.”

    Agreed. Bad cases make bad law, e.g., KSR. Maybe a written opinion in a Rule 36 case wold be so muddled and fact specific that no opinion would be better than one that adds a complicated gloss on existing law.

    Pilgrim at 11: “It seems the court figures that if the appellant hired counsel, his or her counsel can explain what happened, but where the appellants are pro se, they deserve some explanation from the court.”

    Agreed. I bet that few patent appeals are pro se.

    MM at 7.1 requesting “useful information for everyone.”

    Even in Rule 36 cases, oral arguments are available on the CAFC website. The briefs can be obtained from Westlaw with a $389/month one year subscription or with a PACER account for 10 cents per page. Both are less than satisfactory for everyone. If the CAFC made available just the briefs for easy download, that would be enough to keep most folks happy. Is there a law against that; I really don’t know.

    1. Both are less than satisfactory for everyone.

      Understatement of the year.

      If the CAFC made available just the briefs for easy download, that would be enough to keep most folks happy.

      In fact, it’s the district court’s decision that is more relevant than the g@r bage that’s in the briefs. Nobody really needs to read, e.g., another ethically bankrupt attorney cite Diehr and argue that the claim is eligible because “a computer connected to a network isn’t abstract.”

        1. Thanks for demonstrating what I mean by ethically bankrupt. I suppose we call also just use the term “ign 0rant” or “incapable of h0n esty.” Any of those suffice.

          Why is that the case?

          Because identifying old non-abstract subject matter somewhere in a claim doesn’t make the claim eligible. See, e.g., Mayo. See, e.g., Alice. See, e.g., a zillion subsequent Federal court decisions.

          Advising your clients to the contrary is malpractice.

          But you guys are really serious people, right? You’re totally not just self-dealing shills trying to keep your vanishing business afloat. Sure you aren’t.

          1. Why is that the case?

            Because identifying old non-abstract subject matter somewhere in a claim doesn’t make the claim eligible.

            That’s a non-sequitur to what you wrote and to what I replied to.

            Talk about:
            ethically bankrupt
            “ign 0rant” or
            “incapable of h0n esty.”

            Any of those suffice.

            Indeed.

            1. That’s a non-sequitur

              LOL That’s an easy game to play if you copy just a portion of my comment and omit the part where I directly address your inane “reply.”

              But nobody can see any of this, at least in your own mind!

              Hilarious stuff. Thanks for the Friday laughs.

              1. Except for the fact that my reply was to that portion of your statement, and my follow on statement is no “game” as it captures exactly what you said (and how you actually said it)

                You may have wanted to say something else, but you did not.

                1. my follow on statement …. captures exactly what you said

                  And the path 0 l0 gical l i ar doubles down. Nobody could have predicted that. Your mentor must be so proud!

                2. …or are you going to rewrite “Diehr and pretend that YOU are not the one with the L I E?

                  After all, that would be quite in line with your number one meme…

            2. And it’s been like two week since I last pointed this out but understanding how the subject matter eligibility analysis works in the simplest cases (e.g., “Ineligibile information, wherein said information is stored on a non-abstract machine.”) doesn’t require a whole lot of brainpower.

              It does, however, require a huge amount of intellectual dishonest to kick dust in everyone’s face trying to make it seem more difficult than it is.

              But we live in an age where a habitual l i a r has been elected President and where rich patent maximalists like “anon” and his cohorts either cheer him on, carry on his proud tradition by repeating whatever l i e they find most pleasing, or sit quietly on the sidelines filling their pocketbooks while people die.

            3. And the promulgation of the kind of backwards cl u e less “reasoning” is EXACTLY why it would be useful to have more information in Rule 36 decisions.

              Those of who listen to oral arguments have heard umpteen desperately frivolous (oh, excuse me … “zealous”<-LOL) "advocates" get shot down by pretty much every judge at the CAFC for pitching the kind of g@ rbage you just did.

      1. MM,

        Although they may read the appendices, the appellate panel decides primarily based on the briefs and oral arguments. This should be enough to tell if there has been a miscarriage of justice. If the CAFC followed my suggestion, I think it would defuse much criticism of Rule 36 decisions because one could see that the decisions were on the whole defensible without the need for elaboration, if true.

        1. Don’t get me wrong: I’d be very happy if your proposal ended up as the “solution”, as it were. I’m not sure it would satisfy the statute (maybe some incorporation by reference?) but it would be a huge step in the right direction.

    2. If the CAFC made available just the briefs for easy download, that would be enough to keep most folks happy. Is there a law against that;

      I should hope not. What possible basis could there be for prohibiting easy access to that information (setting aside portions filed “under seal” for whatever reason)?

      1. MM,

        I don’t know the PACER funding situation. However, at one time there was a PTO public search room in Arlington, VA. 35 U.S.C. 41(d)(2)(ii) states “For each photocopy, $.25 per page” irrespective of the cost to the PTO to provide the machines. On the other hand, there was no admission charge to the search room.

    3. [A] PACER account for 10 cents per page… [is] less than satisfactory for everyone.

      Well, yes, I would rather get documents for free than pay 10¢/page. And I would rather that they be brought to me unbidden, rather than that I have to retrieve them myself.

      I would also rather get my tangerines for free than pay $3/lb. Bills need to be paid, however, if the system is to be sustainable.

      The whole question of additional documentation in Rule 36 judgments is rather silly. By definition, Rule 36 judgments settle matters as between the parties themselves and no one else. That is what it means to be “non-precedential.” To provide extra information would serve no useful purpose.

      If some curious lawyer wants, for his or her own enjoyment, to track down the exact wording of the summary judgment (or whatnot) that was affirmed, that is fine, but there is no reason that anyone other than that lawyer should pay the freight for that info, just as there is no reason that anyone but me should pay the freight for my tangerines. In both instances, there is only one individual who gains anything from the product purchased, so that individual should be the one to bear the costs necessary to obtain it.

      The CAFC has enough on its hands, without being asked to fetch some curious lawyer her documents, especially for no extra cost to that lawyer.

      1. I would rather get documents for free than pay 10¢/page

        Well, you can. But you have to ask for that to happen or it will never happen. These are, after all, public documents.

        Bills need to be paid

        Right. Do you think this country’s billionaire corporations and the 1 percenters who rely on the CAFC can afford to subsidize keeping some PDFs on the CAFC’s computers? I’m pretty sure they can.

        If some curious lawyer wants, for his or her own enjoyment

        This isn’t about “curiosity” and “enjoyment.” CAFC judgments aren’t peep shows and it’s really odd that you continue to try to fudge this up. What’s the angle?

        This is about knowing how the CAFC is applying the law to resolve appeals from lower courts. The CAFC is required — by law — to hear those appeals. Why do we need to know what the claims and issues were? So we have information that will help us inform clients about what to expect, and so everyone — including non-lawyers who are concerned about ball00ning patent rights being handed out to tr0lls — can see what’s going on.

        That information should be as easy as possible to access.

        It’s 2017. Digitized files and giant servers have been around for a long, long time. The “do it on a computer” patentistas whine and cry and whine and cry about “promoting the progress” but the CAFC can’t figure out how to provide the most basic information to the public over a computer? They figured out how to make audio files available. But dots on a screen is too much? Someone’s not telling the truth.

            1. The “do it on a computer” patentistas whine and cry and whine and cry about “promoting the progress”

              but

              the CAFC can’t figure out how to provide the most basic information to the public over a computer?

              Those two do not belong in the same sentence – you have tried to make some type of “equivalency” by doing so.

      2. Greg,

        Based on CAFC page limits of 110 pages , the maximum cost is $11.00. However, as MM points out, not everyone is a lawyer. The problem is that it is not easy to find what one needs from the list of PACER documents and, of course, one must set up an account. This discourages the lay public which I don’t think is a good thing for patents.

        1. The problem is that it is not easy to find what one needs from the list of PACER documents and, of course, one must set up an account. This discourages the lay public

          It’s a pointless hassle for pretty much everybody, lay and lawyer. Nobody should have to create yet another online “account” just to access some public documents.

        2. I am skeptical that PACER costs discourage many lay researchers. Nor is the hassle of setting up a PACER account likely much of an obstacle. I expect that the principle obstacle to more lay examination of the back story to Rule 36 judgments is simple lack of interest. Most people (even most lawyers, but especially most non-lawyers) do not care about non-precedential decisions.

          Larding the Rule 36s up with claim language or statutory text would not change this. If anything, it would simply make Rule 36s less intelligible to the average lay reader. Patent claims tend to be gibberish even to other lawyers (of the non-patent variety), let alone lay folk.

          Mind you, just to be clear, I have no objection to making public information more available. If someone wants to organize a charity devoted to making the back-stories of Rule 36s more widely available, I would not chip in (seems like a waste of resources to me), but I would have no complaints against them. I just cannot see my way clear to wasting public funds on this cause. The social utility from such a project is so infinitesimal that there will always be a higher value use for the resources spent on such an effort.

          1. Greg,

            You may be right about the infinitesimal benefit, but the cost of my proposal is infinitesimal compared to the cost of adding enough judges (roughly double the current 18) to the CAFC to write full opinions in every Rule 36 case.

            1. I think you are overstating the scope of the problem. The law does not forbid Rule 36 judgments tout court. The law only prohibits Rule 36 judgments from the PTO (PTAB & TTAB). In other words, unless and until the Congress gets around to fixing this legal problem, the CAFC needs to prepare opinions in a subset of cases that currently get Rule 36ed. Most Rule 36 judgments can chug along as they have always done.

              Meanwhile, consider me skeptical that doing away with a subset of Rule 36s will really require all that much additional workload. As I said elsewhere, if they find themselves too swamped, they could stop putting so much effort into the existing stock of non-prec opinions. Most non-precs have all of the detail and thorough explication of precedential decisions. This is, in a sense, a wasted effort. I have no objection to well-written non-prec decisions, but this is easily a place where they could skimp if they need to rebalance efforts to comply with the law regarding PTO appeals.

          2. Greg: I am skeptical that PACER costs discourage many lay researchers. Nor is the hassle of setting up a PACER account likely much of an obstacle.

            You can be skeptical all you want (no idea what your reasoning is) but both the costs and the hassle are more then enough for most people, including me. I am probably confronted every day with twenty invitations to “create an account.” I refuse all of them.

            I have no objection to making public information more available.

            LOL Yes you do. You think it’s a waste of money.

            I would not chip in (seems like a waste of resources to me)

            You wouldn’t be asked to “chip in” unless you’re litigating at the CAFC.

            I just cannot see my way clear to wasting public funds on this cause.

            That’s a pretty incredible lack of imagination.

  7. I am curious, if the matter went to the US Supreme Court and they agreed with you, what would that do to the judgments that were Affirmed without Opinion? Would they stand? Would those cases be deemed still open and requiring an opinion?

      1. Dennis:
        Thank you for writing this much-needed article. The practice of issuing summary dispositions, regardless of whether statutorily authorized, is disgraceful, if not downright disgusting. Parties typically spend into the six figures to pursue and to resist an appeal, yet the CAFC judges cannot perform the civic responsibility of rendering a thoughtful opinion? As a general proposition, the parties, and the public also, have a right to know how the judges viewed the case and their reasoning. Not to disclose that information opens the entire judicial system to suspicion and distrust.
        The court’s alleged busyness or overwhelming workload are insufficient justification. Simply appoint more judges and hire more staff. Allegations that such a huge percentage of summary dispositions is warranted because the lower decisions were so clear-cut and proper, and in essence the appeals were frivolous, are completely specious. Virtually all appeals, especially when considering the financial hurdle to even pursue an appeal, involve interesting, unique facts and arguments that warrant a deliberate, explained, reasoned decision. In the rare event that an appeal truly is frivolous, then it should take no inordinate time to write an opinion explaining so. I suspect that, if the CAFC were forced to render reasoned decisions, then a substantial percentage of those cases summarily affirmed would have resulted in a different ruling.
        While I will not go far as to accuse the judges of the CAFC of being lazy, I will express my view that they have been knowingly derelict in fulfilling their ethical duties to the parties and to the public.

        1. Allegations that such a huge percentage of summary dispositions is warranted because the lower decisions were so clear-cut and proper, and in essence the appeals were frivolous, are completely specious.

          A lot of the appeals are frivolous. A big part of the CAFC’s problem with “workload” is that they encourage frivolous appeals by refusing to sanction those who bring them.

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