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.
combined-petition-for-panel-rehearing-and-rehearing-en-banc
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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.
I think D should have asked: “MAY the Federal Circuit Continue to Affirm Without Opinion?”
Because it is without question that the fed circ CAN continue about their business free from harassment by any other gubmit body as of today.
Also published today: CAFC’s opinion in SmartFlash v. Apple, tanking SmartFlash’s claims as ineligible under 101 (and reversing the district court’s JMOL on that issue).
Sadly: not precedential.
Chan’s attorney: 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.
This whining misses the point (and maybe that’s because Dennis took it out of context — I haven’t read the brief).
The CAFC isn’t obliged to give anybody guidance on “unresolved issues.” “Unresolved issues” aren’t going away because it’s not the job of courts to “resolve issues” that don’t need to be resolved to dispose of the case. From the Supreme Court on down, courts routinely write that “other arguments were considered and deemed to be without merit”, or they simply don’t reach issues because they are moot in light of an issue that was considered.
The only problem I have with Rule 36 Judgments is that they say literally nothing about what the lower court decision was about. It’s a form of buck passing that happens to be barred by the statute.
But people shouldn’t fool themselves into believing that they are entitled to an extensive analysis of every hail mary thrown by either party. That’s never going to happen (and it shouldn’t happen).
Focus on the reasonable, people, and we might actually see a minor improvement to the status quo.
You want to characterize as “whining,” “missing the point” and “taken out of context,” when you have verified none of that?
Sounds like YOUR whining misses the point.
You want to characterize as “whining,” “missing the point” and “taken out of context,” when you have verified none of that?
Go ahead and prove me wrong, “anon.” You’re a very serious person! The recent utterly predictable 7-0 smackdown of your kinderg@rten grade analysis in Life Tech was just a fluke. LOL
Go ahead. Put on those big boy pants and prove me wrong. Everybody makes mistakes. Maybe not nearly as often as you but we still all make them. So step up. This can be a special day for you.
You quite miss the point asking me to prove anything.
You whine about “whining” as if somehow your own whining is exempt.
It’s not.
You’ve been playing with your number one meme of Accuse Others for far too long.
You quite miss the point asking me to prove anything.
LOLOLOLOLOLOLOLOLOLOLOLOLOLOL
In fact, my point is proven.
Now cry me another river, you s00per serious person!
“In fact, my point is proven.”
In fact, not.
Try to figure it out.
Chump.
It will continue until SCOTUS stops them.
Interestingly, the PTAB decision below was based on interference estoppel due to a prior interference decision. [On presumably patentably indistinct claims?].
Did the PTAB perhaps consider interference estoppel to be an independent “threshold question” that trumped the mandatory threshold question of having patentable claims to institute an interference so that they did not need to consider it?
OT, but is there a way to file a continuation and not get it examined for a couple of years?
Also, great work on this DC. These R.36 affirmations real s@ck.
@Night Writer – You can include nominal new matter and label it a CIP and it will be placed in a different docket queue where it probably will not be examined for several years. Alternatively, you can file a string of continuations paying only the basic filing fee and push examination out indefinitely.
>>Alternatively, you can file a string of continuations paying only the basic filing fee and push examination out indefinitely.
What do you mean by this? You file one continuation and then wait for first OA + 6 months – one day, and then file another continuation? Repeat.
You can file a continuation paying only the basic filing fee and receive a notice to file missing parts, then file a new continuation paying only the basic filing fee on the day that the response to the missing parts is due, etc.
There is a load of work to be done.
Someone will be stuck holding the bag.
Justice requires such.
Yeah, the district court judges
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