by Dennis Crouch
The Federal Circuit has denied Leak Survey’s petition for rehearing en banc on the issue R.36. Perhaps ironically, the court has continued to remain silent on its justification for issuing judgments without opinion. Although the Supreme Court has generally empowered appellate courts to issue summary affirmances without explaining reasoning for their judgment, the statutes provide special rules for cases arising from patent and trademark cases. On the patent side, 35 U.S.C. § 144 requires the Federal Circuit to hear appeals from the PTO, “review the decision,” and, once a decision is reached “the court shall issue to the Director its mandate and opinion.”
I argue (as did Leak Survey) that Section 144 requires the court to write opinions in these cases — as was the longstanding standard practice of both the Federal Circuit and its predecessor court the CCPA before the 1989 internal rule changes by the Federal Circuit.
In my article on the topic, I recognize the argument’s weakest point: since the statute requires issuance of “its opinion”, the requirement might only only kick-in if the court actually has an opinion. In his thoughtful challenge to my approach, Matthew J. Dowd argues that the statute only requires issuance of an opinion once such an opinion exists — but absent an opinion, the statute only requires issuance of the mandate. Matthew J. Dowd, An Examination of the Federal Circuit’s Use of Rule 36 Summary Affirmances (Feb. 19, 2017). Thus, Dowd would clarify that the statutory requirement that, after reviewing the case, “the court shall issue … its … opinion” only kicks-in if the court decides to write an opinion. I think Dowd is wrong.
In my article, I write:
For a patentee, providing the written description is part of the quid pro quo exchange for receiving patent rights. In the same way, forming a reasoned decision is the role of every appellate court, and the statute simply requires that those reasons be written and released.
Reaching a judgment in each merits case is both an inherent duty of the appellate court and a statutory requirement, and that judgment requires the court to at least form a reasoned opinion that justifies the outcome. In other words, the court must make its judgment based upon the law at hand applied to the facts presented. Even when issuing a judgment without releasing an opinion, the court must have formed reasons for its judgment that are at least self-satisfyingly sufficient. Anything less would be a reversible arbitrary judgment and likely a violation of the due process rights of the parties.
The statutory requirement of issuing “its … opinion” is not an illusory request that can be avoided by simply not writing an opinion. Rather, the statute requires a transformation of the court’s internal decision justifications into a document that becomes part of the record of the case as it returns to the PTO.
By now, the court has had many opportunities to justify its approach. It is now becoming more than simply ironic that the Federal Circuit continues to avoid explaining its justifications for a lack of transparency.
Whether or not the CAFC is entitled to Rule 36 PTO decisions, they did so today in Intervet Inc. v. EI DuPont DeNemours, and we should all heave a huge sigh of relief.
The appellant had unsuccessfully requested an interference in a patent on a flea control technology. They submitted as their evidence of prior invention a lab notebook in German. They filed no translation, and the Board refused to declare an interference. In other words, they deserved to lose, and no one should lose any sleep about the injustice if the CAFC summarily affirmed the Board’s decision just one day after the oral arguments.
The problem, however, is that appellant had also blacked out the dates on this lab notebook sample, just as we all do when we submit our evidence of prior invention. This is quite standard practice, and the MPEP says that it is perfectly fine to do so. The CAFC panel, however, evidently took this redacting of dates as some sort of failure of corroboration, and were prepared to affirm on that ground (instead of, or at least in addition to, the fact that the notebook pages were submitted without a translation).
Can you imagine the mischief that would do if a precedential decision had issued that said that evidence corroborating prior invention must be submitted without redaction? I, for one, was immensely relieved this morning to see it affirmed in a Rule 36 decision, such that it leaves no untoward precedential effect.
Nice Ends….
Sir Thomas More would not be so sanguine.
Avoidance of poor judicial decisions is not a great reason for poor process.
I’ve said it before and I’ll say it again: in general, it’s more effective to ask nicely for specific reasonable do-able things than to make sweeping vague statements about how this or that is unacceptable because the law (arguably) demands some vaguely defined action (e.g., an “opinion”).
There is no way on earth that the CAFC or any court that is obligated to listen to your grievance can be forced to respond to every single argument you can dream up.
If appellants really want the CAFC to “respond” with its “opinion” as to all of the ridiculous arguments that are thrown at it, then appellants (and everyone else) should expect a heck of a lot more sanctions because sanctions are the most appropriate response in many cases. What happens now is that the CAFC just rolls its eyes and ignores nearly all of those zombie arguments because of misplaced sympathy for everyone’s favorite class of patent casino bone rollers.
…Malcolm,
asking nicely…
Hilarious!
Tunnel-visioned patent lawyer… You say, “[t]here is no way on earth that the CAFC or any court that is obligated to listen to your grievance can be forced to respond to every single argument you can dream up.” This is a false argument, because CAFC Rule 36 allows them to affirm without addressing ANY arguments whatsoever.
I am with Dennis on this one, the CAFC abuses its own Rule 36 to issue summary affirmances in complex cases when it simply doesn’t want to deal with an issue. Anyone who does appellate law and isn’t a tunnel-visioned patent lawyer like MM will recognize that CAFC Rule 36 is unique in our federal system. Most federal appeals courts use summary affirmance only in rare cases, and their rules confine the practice to specific or exceptional situations. For example, the Ninth Circuit (a far, far, more busy court, per judge, than the Federal Circuit ever will be) has Local Rule 3-6 that is similar to CAFC Rule 36, but the Ninth Circuit rule only allows summary affirmance if the issues raised “are so insubstantial as not to justify further proceedings.” The Second Circuit has a similar rule that permits summary affirmance only if all judges agree that “no jurisprudential purpose is served by an opinion.” Other circuits simply do not allow summary affirmances. Most appellate courts recognize that summary affirmances are the exception, not the rule, because overuse of summary affirmances breeds contempt and disrespect for the court as an institution of justice.
CAFC Rule 36, however, contains none of the protective provisions that rules like the Ninth Circuit follow. Rule 36 allows summary affirmance if the court simply determines that the appeal fails on its merits; it requires no separate determination that the appeal is exceptional in that the arguments are insubstantial or meritless.
Also, the assumption of MM that not doing summary affirmance somehow requires the court to issue a scholarly opinion is simply wrong. Most circuit courts issue non-precedential memorandum dispositions, which are very brief but address the key arguments made in the appeal. They don’t bother with long recitations of the facts and are usually only a couple of pages long. Having clerked in an appellate capacity, I can tell you that these types of opinions do not take that long to write and are not that big a burden on the court. Yet they let losing litigants feel like their arguments were considered, whereas CAFC Rule 36 is a tool for rough justice.
The final argument of “MM” is so bizarre it warrants only brief response. MM writes, “[i]f appellants really want the CAFC to ‘respond’ with its ‘opinion’ as to all of the ridiculous arguments that are thrown at it, then appellants (and everyone else) should expect a heck of a lot more sanctions because sanctions are the most appropriate response in many cases.”
Umm, yeah, tunnel-visioned lawyer, that’s the way federal appeals work everywhere else in the country. And the use of sanctions is also why people don’t feel as free to make bogus arguments in the regional circuit courts. But the CAFC practice of “rolling its eyes” basically empowers unscrupulous lawyers to take frivolous appeals in order to rip off their clients, and they never get called out for it, because the CAFC will just Rule 36 affirm it. If the CAFC more often called out people who raised specious appeals, they’d end up with a lower workload from fewer appeals, and that would more than make up for having to write brief opinions in the many cases they affirm through abuse of Rule 36.
LR: the use of sanctions is also why people don’t feel as free to make bogus arguments in the regional circuit courts. But the CAFC practice of “rolling its eyes” basically empowers unscrupulous lawyers to take frivolous appeals in order to rip off their clients, and they never get called out for it, because the CAFC will just Rule 36 affirm it. If the CAFC more often called out people who raised specious appeals, they’d end up with a lower workload from fewer appeals, and that would more than make up for having to write brief opinions in the many cases they affirm through abuse of Rule 36.
I agree with you 100%. I’ve also been around long enough to know that when those sanctions start coming down the howling from the patent bar will be heard in Timbuktu.
Look, I’m on the record going back a long time that I’d like to see more info in so-called “Rule 36” judgments. Specifically, I’d like to see the claims at issue and I’d like to know the grounds, briefly stated, under which the claims were tanked (or not) by the lower tribunal. I’d like to see that for convenience sake so I don’t have to dig around on the Internet and/or PACER to find the information myself. And the CAFC is in the best position to provide that info and it’s soooooo easy to provide.
But you and some of these other people are asking for quite a bit more. Comparing what other circuits do to what the CAFC does isn’t a fair comparison.
the Ninth Circuit (a far, far, more busy court, per judge, than the Federal Circuit ever will be) has Local Rule 3-6 that is similar to CAFC Rule 36, but the Ninth Circuit rule only allows summary affirmance if the issues raised “are so insubstantial as not to justify further proceedings.”
What makes you think that the CAFC isn’t routinely confronted with these kinds of issues? Do you listen to the oral arguments? It’s a total farce at least 20% of the time.
Your portrayal is false.
You are attempting to insert a straw man (again).
Your portrayal is
*click*
Take a shower, Billy. You stink.
Who is this Billy?
>What makes you think that the CAFC isn’t routinely confronted with
>these kinds of issues? Do you listen to the oral arguments? It’s a total
>farce at least 20% of the time.
This is the kind of “patent law exceptionalism” that makes the Federal Circuit such a lousy Court of Appeals. They think they have it bad, or are special, but they don’t have a clue. Do you really think criminal convictions that the regional circuits handle, or civil rights appeals, or denial of Social Security benefits, or the thousands of other cases in countless areas they hear that fall far outside the Federal Circuit’s very narrow jurisdiction, do not generate a lot of “farce” appeals?
They do, and in far greater numbers than the Federal Circuit could ever imagine. Most of the litigants in the regional circuit courts are not represented by well-heeled patent attorneys, either. You have a much wider diversity of litigants, lawyers, and competence levels. And yet despite all of that variability, and the fact that everyone knows that most appeals are without merit, the regional courts manage to deliver at least a brief written disposition for the vast majority of appeals.
Affirming without opinion under CAFC Rule 36 looks like a cop-out and diminishes respect for the court. It’s a very easy way to get rid of a complex case without justifying your result, which unfortunately, makes it a very handy workload reduction tool to dispose of the intricate and workload-intensive cases that, frankly, should never be the subject of a Rule 36 judgment. It’s even more outrageous that the Court issues Rule 36 orders after hearing oral argument, which really breeds contempt for the court. With the regional circuits, if you’re going to summarily affirm (and it’s rare that you do), they always do before oral argument. Seems like if you put litigants through the expense of an oral hearing, they’re entitled to some explanation for the court’s decision.
Ever notice that Malcolm’s version of “patent law exceptionalism” is always anti-patent,
Always.
CAFC Rule 36 is a tool for rough justice.
Ya think?
In the situations presented (i.e., the court’s verdict is not the “final say” on the matter, and there remains actions in the Office), the tool is NOT “for rough justice” – it is a denial of justice.
And a shirking of responsibility.
“I’ve said it before and I’ll say it again”
That’s a general truism that goes without saying.
(And yes, that’s a joke.)
It’s a pretty funny one (11 years of the same short script and all)
If they have no opinion (lulzers) then they should just write that they have no opinion.
#justicedeniedimo
I want to remind readers and pundits alike that this is not a so-called “bad patent”. David Flurry is a real inventor out in West Texas that invented an effective method and device for detecting gas line leaks. He himself commercialized it, adding further value to the economy by creating jobs and delivering gas more reliably from the fields to the refineries. I don’t think there is really any dispute about whether he has an invention. The dispute is about technicalities of his issued patent and ultimately the subjective opinion of the PTAB panel that it would have been obvious to combine certain piece of prior art. Since their entire job depends on invalidating patents, of course they found it obvious. If this is not a classic example of a star chamber, I don’t know what is.
If this is not a classic example of a star chamber, I don’t know what is.
[waits for final drops of “invention rights” credibility to swirl down the tube]
If this is not a classic example of patent maximalist hyperventilation, I don’t know what is.
LOL You can’t even parody this stuff.
You are far too anxious to parody this stuff.
Clearly, the post was not made by a seasoned attorney. Instead of even bothering to understand the point being offered, you just want to jump all over someone who is pro-patent.
Please get into a profession in which you can believe in the work product produced. The rather evident cognitive dissonance that you suffer paints your own lack of credibility far brighter than the disdain that you do eagerly want to dish out.
Please provide citation to one, just one patent, that you would defend as appropriate and justified.
“Since their entire job depends on invalidating patents”
not technically true. The PTAB could have invalidated 0 patents by now and they’d all still be employed. Though the staff working on IPRs might be smaller, those people would just be doing other cases.
So what’s next?
Are we going to see someone challenge the CAFC’s boilerplate regarding “We have considered other arguments and find them unpersuasive”?
I find it fascinating that patent statute language that went unchallenged for many years can get surprisingly creatively challenged by someone, as here. Sometimes at least initially successfully. Examples include the false marking statute damages Fed. Cir. interpretation [quickly overruled by Congress], and the Fed. Cir. design patents damages statute interpretation [recently overruled by the Sup. Ct.]. Before that, a Fed. Cir. interpretation of the scope of reexamination [overruled by Congress], and long-standing Fed. Cir. and prior judicial interpretations of what is a statutory “on sale” bar [completely changed by the Sup. Ct.]
Money and desperation and lawyers. Mix well and stand back.
Also this: “All incentives have a way of failing. Just look at our society” — Justice Sonia Sotomayor, Sandoz v. Amgen oral argument April 28, 2017
Your point Paul is not clear.
Change the law because of new recognition of what that law has always meant is just not the same as “over-rule.”
You are trying too hard for a particular narrative that just does not fit.
I think Dowd is wrong too, but for a simple philosophical reason.
Mandate andopinion means that both must exist and will exist for each case. The court must issue a mandate, and every mandate must be driven by some opinion- even a roll of the dice is an opinion that the outcome could fairly go either way.
The plain and ordinary meaning of “opinion”, in the vernacular and legally must include the state of having no opinion.
It’s universally accepted that agnosticism is a form of opinion. Not having any opinion is a luxury only available to a non-thinking being.
In that sense, the statute clearly requires the court to rule, and also clearly provides that so long as the reasoning for their ruling is cognizable to themselves, a simple affirmance and order meets the essentially singular requirement for opinion and mandate.
Are there other statues where a published, detailed justification is required by a court or other tribunal in order to make a lawful ruling? Obviously no record at all will mean a due process problem at any appeals court, but where is that line drawn with judges, and especially appeals court judges? The CAFC has been ensuring that the PTAB justifies every statement, but is that based on the text of the AIA or another basis?
If so, what language was used there and why wasn’t similar language used in the CAFC statute?
“The plain and ordinary meaning of “opinion”, in the vernacular and legally must include the state of having no opinion.”
No.
You err in “and legally must” as you simply are wrong on that point.
DC The statutory requirement of issuing “its … opinion” is not an illusory request that can be avoided by simply not writing an opinion
But you agree, Dennis, that “its opinion” can be as simple as “We agree with [X], as set forth in the briefs”?
I do not know of anyone that would disagree there Malcolm – nor of anyone who would have made such an argument (that you seek to knock down) in the first place.
On the other hand, I have also not seen any cogent reply to the necessity of the courts to HAVE an opinion for at least those items that will see continued action within the executive agency and for which action, the opinion of the court matters for providing clarity (as may well be recognized as a requirement of Due Process).
Even the (unoffered) supposition of a court merely saying that all*** of the reasons below do apply meets that Due Process concern.
***all, one, two, and/or the particularity of which items below are viewed as correct AND which items below are not correct — any of which is simply NOT satisfied with a blank R36….
I think the CAFC can simply say they agree with [X], as set forth in the briefs, if the appeal is that straight forward. But there are usually alternative arguments, claim constructions or rejections, etc., that have to be addressed in the briefs and sometimes they are mutually exclusive. So [X] may have to be specific and clear as to what is being adopted as opinion, which means the opinion is not a simple single sentence.
It would be better if they said they agreed with [X] in the PTAB decision. But the danger with adopting the PTAB decision as its own, is that there could be a small part of the PTAB decision that it does not agree with or that is erroneous. The CAFC has to say the error is harmless error or does not affect their rationale.
the danger with adopting the PTAB decision as its own, is that there could be a small part of the PTAB decision that it does not agree with or that is erroneous. The CAFC has to say the error is harmless error or does not affect their rationale.
Could the CAFC simply create some boiler along the lines of “This affirming judgment is non-precedential and does not represent endorsement of every fact or legal argument in the decision”?
Sunny B there are usually alternative arguments, claim constructions or rejections, etc., that have to be addressed in the briefs and sometimes they are mutually exclusive. So [X] may have to be specific and clear as to what is being adopted as opinion, which means the opinion is not a simple single sentence
It seems a bit cheeky to take two “mutually exclusive positions” in your brief and then complain when you lose your case that the CAFC isn’t being clear about whether one of those positions was defensible.
That was not his point, Malcolm.
You were too quick with your “cheeky” comment…
You were too quick with your “cheeky” comment
Get a l i f e.
There you go again with your number one meme…
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