R.36 No Opinion Judgments at the Supreme Court

A third petition for writ of certiorari to the United States Supreme Court has now been filed stemming from the Federal Circuit’s Rule 36 Debacle.  Despite the need for clear guidance on the implementation of AIA Trials, most such appeals are being decided by the Federal Circuit without any opinion.  I have argued that the process violates a provision of the Patent Act that requires an the court to issue an opinion in cases on appeal from the Patent & Trademark Office.

In Leak Surveys, Inc. v. FLIR Systems, Inc. (Supreme Court 2017), the petitioner explains the problem:

The Federal Circuit is the only avenue for appealing a PTAB decision that extinguishes a patent property right. But as the record of this case demonstrates like few others, the Federal Circuit’s excessive invocation of Rule 36 in PTAB appeals serves to undermine the public’s confidence that the Federal Circuit is providing meaningful and even-handed judicial review of the PTAB, but within the confines of the Federal Circuit’s limited appellate jurisdiction to review
patent validity decisions that the PTAB is  authorized by statute to make in the first instance.

The petitioner asks three questions:

1. Does the Federal Circuit … exceed the scope of its limited appellate jurisdiction when it affirms a PTAB … decision that rests upon a plain and egregious error…?

2. On appeal of an IPR decision by the PTAB to invalidate a patent or patent claim, when is the Federal Circuit required to provide a statement of its reasons for affirming – in order to safeguard constitutional limits on the Federal Circuit’s administrative appellate jurisdiction (S.E.C. v. Chenery Corp., 318 U.S. 80 (1943)), and/or to comply with statutory requirements such as 35 U.S.C. §144 and 5 U.S.C. §§ 702, 704, and 706.

3. On appeal of an IPR decision by the PTAB to invalidate a patent or patent claim, when does the Federal Circuit violate a patent owner’s constitutional due process rights by considering and affirming based on arguments that were not previously considered by the PTAB, and/or for reasons apart from those stated by the PTAB itself in its written decision?

Briefing will continue over the next couple of months.

[Read the petition here: Petition for Writ_Leak Surveys v. Flir Systems].

= = = = =

Note: Celgard’s parallel petition remains pending with PTO’s response due August 21, 2017 (being handled by USDOJ Solicitor’s Office).  Of course, these cases will be moot if the Supreme Court favors the patentee in Oil States.  Finally, folks interested in Oil States might want to attend Duke Law’s upcoming symposium (in Washington DC) focusing on the question: Is Administrative Review of Granted Patents Constitutional? (Funded through Corporate Sponsors).


63 thoughts on “R.36 No Opinion Judgments at the Supreme Court

  1. 8

    What happens if SCOTUS rejections the way the Fed. Cir. has used R.36? Will prior petitioners be able to refile even though the date to request cert has passed? The Fed. Cir. dodged some important questions by using R. 36. The one I’d like to see brought up again is whether eligibility is even a defense available in infringement (RPost Communications).

  2. 7


    On another thread I have like four conversations currently being stifled because of the “don’t have a dialogue” editorial restriction.

    I am not ignoring your replies.

  3. 6

    In the petitions/arguments about Rule 36 that I have seen, the party fails to cite to Taylor v. McKeithen, 407 U.S. 191, 194 n.4 (1972). There, the court specifically endorsed the use of summary affirmances.

    Failing to cite, and somehow distinguish this, seems like a gaping hole.

    To be clear, I don’t necessarily endorse the use of Rule 36 for myriad reasons, especially given the way the Federal Circuit uses it, i.e. by affirming with one word (as compared to other districts, who appear to at least issue a paragraph or sentence or two). However I worry that failing to cite (and explain) a Supreme Court footnote that seems to endorse the practice would leave the Court thinking that the petition is not cert worthy.

    1. 6.1


      That case – on its facts – seems far too distant to support the supposition of “There, the court specifically endorsed the use of summary affirmances.

      From that decision:

      We, of course, agree that the courts of appeals should have wide latitude in their decisions of whether or how to write opinions. That is especially true with respect to summary affirmances. See Rule 21, Court of Appeals for the Fifth Circuit. But here the lower court summarily reversed without any opinion on a point that had been considered at length by the District Judge. Under the special circumstances of this case, we are loath to impute to the Court of Appeals reasoning that would raise a substantial federal question when it is plausible that its actual ground of decision was of more limited importance.

      And from the dissent (emphasis added):

      \The courts of appeals are statutory courts, having the power to prescribe rules for the conduct of their own business so long as those rules are consistent with applicable law and rules of practice and procedure prescribed by this Court, 28 U.S.C. § 2071. No existing statute or rule of procedure prohibits the Fifth Circuit from issuing a short opinion and order, as it has done here, or from deciding cases without any opinion at all. Cf. Rule 21, Court of Appeals for the Fifth Circuit.

      Where – as here – (in particular, the explicit requirement from Congress to provide an enlightening opinion), this would be so different that the Taylor case, that if you WERE to bring up the Taylor case, I would be wondering what point YOU were trying to make.

      Gaping hole?

      I think not.

      1. 6.1.1


        You misunderstand my point; I don’t necessarily disagree with you or your analysis.

        But as a matter of strategy, it does not do a client or your chances of cert many favors to ignore a relevant case. The better strategy is to raise it, and distinguish it (as, for example, you’ve done). If you don’t and a clerk finds it, it makes your argument look weak (or sloppy), and means that a clerk will have to find some reason to distinguish (as opposed to you explaining exactly why it doesn’t control).

        Cases aren’t won at the Supreme Court by ignoring relevant cases that don’t go your way. You win convincing the Court they don’t control.


          You are confused as to what the term “relevant” means.

          That case just is not (see the emphasized portion)



              I showed the lack of relevance with a direct quote, and ALL that you can do is slink around and call names….

              Nice Job Prof – your perception building campaign is coming along “wonderfully.”


                I showed the lack of relevance


                No, you didn’t.

                And this is why you need to find a children’s patent blog to play in.

                1. You are doing your “Accuse Others Of That Which Malcom Does” thing again.

                  Maybe try reading what I posted. Take note of the highlights.

                2. Maybe try reading what I posted.

                  I did. You proved Jane’s point, Billy.

                  Good grief you’re a piece of work.

                3. Lol – if you think that I “proved Jane’s point,” you are mo clueless than I thought possible.

                  You should think about getting into a different career.

  4. 5

    I feel like they should be required to employ item to item matching. If it’s good for the goose (patent office) it must be good for the gander (federal circuit, supreme court etc.), right?

    1. 4.1

      The maximalist side of the patent bar — the part that goes @peshirt over anything that creates more work for “the other side” — is probably the easiest group of people to get frothed up into a Supreme frenzy outside of the gun fondlers. And of course there’s plenty of overlap there (as we’ve been observing for many many years) so … no surprise.

      Whatever change results from this cryfest, it’s not going to make a hill of beans of difference. A lot of the opinions that the CAFC writes (and the ones that the Supreme Court writes, for that matter) fail to provide “reasons” for the failure of all kinds of laughable hail mary arguments that are tossed into briefs by desperate practitioners. That’s not going to change. And there’s nothing wrong with that.

      I’d just like to see a short and quick summary of the issues that were on the table, the claims and the patent numbers. If the CAFC agrees with the lower court’s reasoning it’s enough that simply say so and I don’t care if they do it in code (i.e., by writing “Rule 36 affirmance”).

      1. 4.1.1

        I don’t care if they do it in code

        That rather misses the point….

        As to the rest of your whining rant…. Stultifying.


          anon–can you tell us what the missed point is? Despite the gratuitously nasty tone, I think MM is almost certainly right.

          If Rule 36 is taken away for IPRs or for some other part of the CAFC’s docket, what do people seriously expect will take its place?

          Rightly or wrongly (and I think rightly for the CAFC), courts think of themselves as busy, and every extra hour spent on an easy case is an hour that can’t be spent on a hard case. For every AIA appeal, there’s a full-length opinion from the PTAB, so the losing party already has some official explanation of why s/he lost. Unlike most courts of appeals, the CAFC also holds oral argument in nearly 100% of cases with counsel on both sides. If, after briefing and argument, the CAFC thinks that the PTAB reached the correct result for the correct reasons–or just that nothing the losing party has complained about seems bad enough under the applicable standard of review to reverse–they can and probably will say so as efficiently as possible.

          Instead of “AFFIRMED,” we’ll probably see “opinions” between a sentence and a paragraph long, like the following 3 examples.

          link to cafc.uscourts.gov
          link to cafc.uscourts.gov
          link to cafc.uscourts.gov

          I also agree with MM that it might be preferable and shouldn’t be too much additional work for the judges to replace R36 with opinions that summarize issues and include a bit of reasoning. The CA9 does this with their unpublished decisions (most are 1-4 pages) link to ca9.uscourts.gov But people who were losing before will almost certainly keep losing, and the fight for sentence or two of reasoning is probably not worth it.


            by writing “Rule 36 affirmance”” is NOT the legally required action.

            Malcolm is certainly NOT right.


              “ by writing “Rule 36 affirmance”” is NOT the legally required action.

              For the sake of argument, let’s assume that’s correct. How many words are “legally required” by the statute(s)? What’s the minimum for compliance when the CAFC’s “opinion” is “we agree with the lower tribunal, for the reasons given by the lower tribunal.”

              That’s 14 words.

              Here’s the same sentiment in one word: WAWTLTFTRGBTLT


                It’s CLEARLY not a matter of “number of words.”

                What a horrible strawman to attempt.

                1. It’s CLEARLY not a matter of “number of words.”

                  As usual, you’re not saying anything but just stamping your tiny pink feet and blowing hot air. Did you lose your pacifier again?

                  Either the CAFC can issue a one word statement, in code, expressing its opinion (“AWLT” = “agree with lower tribunal”). Or not.

                  If you’re the l 0sing party and you don’t like the result, then you are free to appeal the decision to the Supreme Court.

                  But I don’t see how you stop the CAFC from summary affirmances when summary affirmances are warranted (in the CAFC’s collective mind) unless you want to put some kind of minimum word count that must be spent on each issue raised.

                  So which is it? Tell everyone. You’re a very serious person. Some something intelligent instead of whining like an entitled b@ by.

                2. As usual, you’re not saying anything but…

                  On the contrary, what I said was abundantly clear. Your strawman choice is extremely weak – even for you (and that’s saying a lot).

                  It simply is not a matter of any number of minimum words, but rather what the words (no matter how many it takes) actually say – and whether those actual words meet the legal point (already presented – by none other than Prof. Crouch – feel free to v0m1t your ad hominem at him as well).

                  Leave out the straw men, leave out the ad hominem and leave out your Accuse Others – try for something meaningful.

                3. It simply is not a matter of any number of minimum words, but rather what the words say – and whether those actual words meet the legal point

                  Thank you for the admission.

                  We agree then: there is no minimum number of words and there’s nothing “illegal” about Rule 36 affirmations or any other summary affirmation. Thank you.

                4. It’s clearly not about a minimum number of words, but what IS the standard?

                  If the PTAB’s opinion is solid and comprehensive, and the CAFC agrees with every word of it, can they just say so? “We affirm the Board’s final written decision for the reasons therein.” Or do they have to paraphrase or block quote specific reasoning? That seems like wasteful and odd to require a court of appeals to fill space in that manner.

                  What if the appellant’s brief is just incomprehensible? Can the CAFC say “The appellant fails to persuade us that the Board’s final written decision rests on any reversible error, and the decision is therefore affirmed?”

                  Is the standard that the court has to address every argument the appellant makes–or at least enough of the arguments to dispose of the appeal?

                  I mean these as real questions, not to be flippant. Courts of appeals sometimes say that lower tribunals must say enough to give the court of appeals “a clear understanding of the grounds for the decision being reviewed,” to “fulfill its role of judicial review.” Research Corp. Techs., Inc. v. Microsoft Corp., 536 F.3d 1247, 1254 (Fed. Cir. 2008) (quoting Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997)). If the CAFC is required to write an “opinion,” is that the standard? Enough reasoning for an imaginary superior appellate court to review the decision if it wanted to? That would perhaps be an administrable standard, but clearly that’s not what Congress was after when it wrote the statute PTAB appeals…

                5. dcl,

                  Not at all a surprise, but Malcolm will not be joining any substantive discussion on the merits.

                  You do raise a good point: “but clearly that’s not what Congress was after when it wrote the statute PTAB appeals…

                  What is it – in your view – that Congress WAS after?

                  I tend to agree that the opinion needs to be (is legally required to be) illuminating. I think the party to which it must be illuminating may in fact be different than a reviewing court (e.g., the party to which it must be illuminating is the applicant/patentee).

                6. What is it – in your view – that Congress WAS after?

                  I tend to agree that the opinion needs to be (is legally required to be) illuminating. I think the party to which it must be illuminating may in fact be different than a reviewing court (e.g., the party to which it must be illuminating is the applicant/patentee).

                  I need to reread Dennis’s article, but I don’t think Congress gave the matter much thought. I’m sympathetic to what I think Dowd’s point was, which is that when Congress said “opinion” it really meant “opinion, if any” and wasn’t considering the minority of cases in which courts of appeals reach a decision without issuing an opinion.

                  I get, though, that Congress used the word “opinion.” If, for the sake of argument, one stipulates that an “opinion” is required, and if the question is, at what point has the Federal Circuit rendered an “opinion” as opposed to something short of that, I don’t know. You say “illuminating.” One of the main purposes of a judicial opinion is to tell the losing party why they lost. Maybe the standard should be whether the Federal Circuit has said enough to fairly apprise the losing party of why they lost.

                7. dcl,

                  I do not know if your post was delayed, but I am only seeing it this morning.

                  I agree with you, agreeing with me.


            Del-ighted “Del” to read your realistic appraisal of the issues here. [Which seems to me to be stirring a statutory straw into a tempest in a teapot, soon to be given a cold shower.]
            Please continue to post substantive comments like yours, to provide needed quality improvements. While Dennis was on a well deserved vacation in Europe this blog’s comment section was even hijacked by political commentators [as if there was any shortage of that these days].


            “Instead of “AFFIRMED,” we’ll probably see “opinions” between a sentence and a paragraph long, like the following 3 examples.”

            Yes, and those types of concise opinions would be appreciated (besides being required by statute for all appeals from the USPTO).


              Oh, so the statute requires “a sentence”? Really?

              I’m surprised “anon” isn’t all over you like a fly on a fresh —-.

              Oh, wait, no I’m not.


          No it doesn’t “miss the point”.

          It’s just a simple statement: I don’t care if the CAFC uses shorthand or any other code to affirm it’s comfort with the lower tribunals judgment. I’d just like the published freely available non-password protected document to provide the essentials needed to understand who lost below and what the issues were and what were the claims and the patent. The CAFC doesn’t even have to do any work– they can put this all on the parties. It’s a paperwork/clerking/admin issue and nothing more.

          The far bigger issue for most of us is what gets deemed “precedential” and what doesn’t. That’s where the CAFC seems to be playing the most games.


            It absolutely misses the point.

            And your weak arse strawman of today shows that you just don’t get it.


              you just don’t get it.


              Tell everybody what “it” is, Billy.

              Go ahead. Use declarative sentences and plain English. Surprise everybody.


                I will just reference you to what Prof. Crouch has already stated.

                Feel free to v0m1t your ad hominem in that direction.

  5. 3

    Someone should ask the question: who exactly are these people who are complaining about post-grant review? what else do they tend to complain about? what sort of “innovations” are they interested in protecting?

    Because the system seems to burning as hot as ever from where I’m sitting.

    Maybe some of the worst attorneys aren’t getting the money they think they are entitled to because their daddy did so well? Or because it was so easy twenty years ago?

    That would explain a lot. But it sure the heck isn’t a Constitutional crisis. Of course, for some infantile people everything that limits their “freedom” to sc r ew other people over is a Constitutional crisis.

    1. 3.2

      idk brah, if the balloon kerfuffle over at ipwatchdog is any indication of what is going on outside of the softiewaftie arts I’d say there’s probably plenty of people poed about certain reviews.

      1. 3.2.1

        there’s probably plenty of people poed about certain reviews

        “Muh victims!” <—– LOLOLOLOLOLOLOLOL

        Yes, you do sound that st 00pit.


          Guess you saw you lost yet another gubernator?

          “With Justice changing his affiliation, there are now 34 Republican governors, 15 Democrats and one independent. Republicans will now control both the legislature and the governorship in 26 of the 50 states.”

          link to yahoo.com

  6. 2

    The U.S. Supreme Court recently granted certiorari in Oil States Energy Services v. Greene’s Energy Group, a case in which the petitioner argues that the most prominent U.S. Patent and Trademark Office process for analyzing the validity of granted patents “violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

    Just a friendly reminder to the little kids who are easily confused: by statute, Congress has defined a so-called “patent right” as one that is extinguishable through a non-Article III forum without a jury.

    Nothing in the Constitution prevents Congress from doing that. The text of the Constitution is crystal clear that Congress isn’t even obliged to promote progress in the useful arts with any kind of “right” if it doesn’t want to. Given that fact, it’s absurd to leap to the conclusion that no matter what administrative system Congress puts in place to eke out a so-called “patent right” to “private citizens” that Congress can’t give the administrative system the power to revoke that right upon a showing that a mistake has been made and after the patent owner has been given due process (e.g., the opportunity to respond and the opportunity to appeal).

    This is an existential moment for the patent system as a whole. Right now my patent attorney colleagues and I can tell you that it’s working just fine. Tons of work. Money flowing from investors to viable start ups with solid IP.

    Someone should ask the question: who exactly are these people who are complaining about post-grant review? what else do they tend to complain about? what sort of “innovations” are they interested in protecting.

    You’ll learn quite a bit if you do that. Or you can just take two seconds and go to Gene’s bl0g and peruse the posts and the comments. You’ll see immediately what kind of deep thinkers (LOL) you’re dealing with. The maximalists are the worst attorneys on the planet: the least intelligent, the most corrupt, and the most desperate. The good news is that their not clever enough to hide their infantile entitled g@ rbage from the public.

    1. 2.1

      Your dissembling is noted.

      We’ve been over the fact that even Congress – the proper branch under the Constitution – is NOT free to abrogate other Constitutional protections once a property right has been established.

      Pull your head out.

      1. 2.1.1

        once a property right has been established


        What has in fact been “established” unambiguously by Congress is that the PTO can grant a so-called “patent right” which, by statute, is revokable by the administration that granted the right upon the showing of an error (with attention being paid to due process all along the way, as I outlined above). There’s nothing — NOTHING — in the Constitution that suggests Congress can’t promote progress in this manner. On the contrary, the Constitution mandates that whatever Congress hands out “to promote progress”, that handout is “limited.”

        Note also that the statute is rationally based. Congress had great reasons for limiting the so-called “patent right” in this manner. Those reasons are just as compelling today as they were when the statute was written, if not more so thanks to b0 tt0m-hoovering cretins like you and your maximalist cohorts who want to fill the system with endless reams of junk so you can “monetize” your way to that third “investment home” in San Diego.


            You might have thought that Tam would have given him a different slant on that whole notion of “Congress can do anything”…


              Yes, please rely on the least coherent Supreme Court decision in the past 50 years. Great argument.


                It’s amazing (not really) what you consider “least coherent.”

                You continue to confuse your feelings with any objective understanding of legal principles.

      1. 2.2.1

        your views align well with those of Kings James and Charles

        King James and King Charles had *zero* views on this issue because there was no US Constitution when they were around, and there was no Congress-enacted statute remotely resembling the statute we have today, and there was no massive glut of ineligible/obvious patents floating out there burdening the public interest, and there was no surplus of b0 tt0m-feeding attorneys trying to enrich themselves at the expense of everybody else.


          MM, the point here is that those Kings didn’t want to let the rabble have their rights protected by the common law courts, they wanted to use the courts as a means of terror and abuse, to push people around.

          Means to an end.

          You have the same attitude. The little folk are mere rabble, to be stepped on because you can.


            You have the same attitude. The little folk are mere rabble, to be stepped on because you can.

            Enjoying that swagger yet, Ned?

    2. 2.3

      “Tons of work. Money flowing from investors to viable start ups with solid IP.”

      Thanks to Trump. Whew MAGA!

      1. 2.3.1

        Thanks to Trump.

        Yes, and the sun continues to turn after Obama’s Presidency as well.

        All thanks to Mango Hairball.

        Stay off d r ugs, kids.


          MM look at this stock indicator, set it to 5 years, and see what happened this past election night and what’s been happening since.

          link to google.com..69i57j0l5.2551j0j7&sourceid=chrome&ie=UTF-8

  7. 1

    Glad to hear about the Duke Law symposium on the Oil States issue as to Administrative Review of Granted Patents Constitutionality. I hope it leads to more thorough legal research and amicus briefs which Dennis can hotlink on this blog.

      1. 1.1.3

        If you don’t like the lineup, you’re always free to set up your own conference.

        Judge Dyk and Greg Garre are both listed as “(invited).” Does that mean only that they’ve been asked to speak and the conference organizer has no idea whether they’ll accept…?


          Just as “setting up your own conference” is NOT an answer to this conference lineup being “laughably onesided” (or not), your suggestion dcl is but a non sequitur.

          What would setting up a different conference do with the make-up of this conference lineup?

          How would that reflect upon the notion that if a conference is being set up to (ostensibly) objectively discuss an issue, that a balanced panel should be the aim?

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