by Dennis Crouch
Another new petition for rehearing has been filed with the Federal Circuit asking the court to reconsider its Rule 36 Jurisprudence in light of the statutory requirements that the court issue an opinion in cases appealed from the Patent & Trademark Office.
In Chan v. Yang, App. No. 16-1214, involves an appeal from an interference case and the merits issue involves the requirement that claims subject to interference must be patentable but for the interference. After losing before the PTAB, the petitioner appealed and the Federal Circuit issued a R.36 “Affirmance without Opinion.” Chan’s attorney Robert Bauer writes:
The Rule 36 Judgment of the panel gives the parties and the USPTO no guidance on the key issues that were left unresolved in the PTAB decision. In particular, there is no indication whether the decision is based upon Appellees’ claims having the “white raphide” limitation or not. There is no indication whether the claims as considered by the panel are concluded to be directed to patentable subject matter under 35 U.S.C. 101 or not. …
The statute requires that the Federal Circuit “issue to the Director its mandate and opinion, which shall . . . govern further proceedings” in the case. 35 U.S.C. 144. I previously argued that the Federal Circuit’s practice of Affirmances without Opinion violates this requirement for issuing an opinion.
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Meanwhile, the Federal Circuit appears to be taking some limited notice of the issue. In two pending petitions for en-banc consideration of the R.36 Issue, the court has requested responsive briefing:
- Leak Surveys, Inc. v. FLIR Systems, Inc., Appeal No. 16-1299: responsive briefing requested by March 14, 2017
- Cascades Projection LLC v. Epson America, Inc., Appeal No. 17-1517: responsive briefing requested by March 14, 2017
The request for responsive briefing is important since in most cases the court rejects en banc petitions without even requesting responsive briefing:
At least two pending Supreme Court petitions are also based upon R.36 judgments by the Federal Circuit:
- Oil States Energy Services, v. Greene’s Energy Group and Michelle K. Lee
- Enplas v. Seoul Semiconductor
In both cases, the Supreme Court could properly vacate and remand with a one-line statement requiring the court to comply with 35 U.S.C. 144.