The Federal Circuit Strides Forward with No-Opinion-Judgments

by Dennis Crouch

Capella Photonics, Inc., v. Cisco Systems, Inc., SCT Docket No. 18-304 (Supreme Court 2018) (on petition for writ of certiorari)

Capella Photonics has asserted its patents covering wavelength-separating technology using array of “fiber collimators” in at least ten separate infringement lawsuits, including a still pending action against Cisco filed in 2014.  After being sued, Cisco reached-out to the USPTO seeking an inter partes review of two patents.  RE42,678 and RE42368.  The USPTO complied and issued final decisions finding the claims obvious. The PTAB’s decision particularly found the use of collimators to be obvious based upon the use of prior art circulators.  On appeal, Capella argued that the Board had erred as a matter of law in both its claim construction and obviousness conclusions (issues to be reviewed de novo on appeal).

For its part, the Federal Circuit heard oral arguments in the case on February 8, 2018 and allowed one business day to pass before issuing its judgment on February 12, 2018: AFFIRMED WITHOUT OPINION R. 36.  [Appendix of Decisions in the Case]

The Federal Circuit has repeatedly vacated District Court and PTAB decisions when the lower tribunal failed to explain the basis for its decision.  Unfortunately, the Federal Circuit continues to rampantly use its self-directed power to issue judgments without any opinion or explanation — even when the review is de novo and thus requires an affirmative statement from the court.  In a 2017 article, I argued that the Patent Act speaks to this issue — and requires that the Federal Circuit provide an opinion in cases on appeal from the USPTO.

The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion.

35 U.S. Code § 144 – Decision on appeal.  There are many situations where Congress and the various states have similarly required tribunals to provide their opinion rather than simply the mandate or judgment.  Prior to 1989, the Federal Circuit always wrote opinions as did its predecessor court, the CCPA.  In 1989, however, the Federal Circuit adopted its Local Rule 36 that permitted no-opinion-judgments.  I have found no evidence (anecdotal or otherwise), that the court considered the text of Section 144 when implementing its local rule.

Now to the Supreme Court, Capella has asked the Supreme Court to review the issue -with the following question presented:

Whether the Federal Circuit’s practice of routinely issuing judgments without opinions in appeals from the Patent Trial and Appeal Board violates 35 U.S.C. § 144, which provides that the Federal Circuit “shall issue . . . its mandate and opinion” in such appeals.

Petition for Writ of Certiorari. I explain in the article, that the issue was rather low-level up until 2013 and the explosion of inter partes review (IPR) proceedings and resulting appeals to the Federal Circuit.  Because those cases typically involve complex obviousness analysis (as in the case at hand), the shortcut route has been for the court to issue R.36 Judgments Without Opinion in these IPR appeals. The result has been hundreds of R. 36 Judgments of PATO appeals over the past few years.

Although a number of parties have raised the issue with the Federal Circuit, the court has not yet addressed the issue directly (other than by continuing to issue no-opinion-judgments).  I will note that the same question is also presented in the pending petition in Leon Stambler v. Mastercard International, Inc., SCT Docket No. 17-1140.

Rob Sterne’s team at Sterne Kessler is representing the patentee-petitioner. Sarah Guske (Baker Botts) represented Cisco in the appeal.

69 thoughts on “The Federal Circuit Strides Forward with No-Opinion-Judgments

  1. 8

    Everyone is looking at the legal issues but not the practical issues.

    Is there the manpower (judge power) to write detailed opinions on all the cases now being dealt with under r.36? In the CAFC dissents or concurring opinions are not particularly common, so that the main load in each case is carried by the judge who writes the lead opinion. As we all realize, the time and effort in writing an opinion is considerable. If the number of appeals has increased because of PTAB appeals, that does not mean that there will be enough judges to write detailed opinions on all of them.

    Selection and use of R. 36 is a manner of coping for what the Judges probably find would otherwise be an impossible workload. While the situation is not ideal, sympathetic understanding is called for.

    1. 8.1

      The Ends do not justify the Means Paul – and especially so if mere administrative ease takes precedence over Justice.

      There is every reason to ignore your “practical issues” when discussing the current law.

      IF you want to advance a change in law (for example, spearhead a movement to influence our legislative branch to “ease back,” then by all means, put forth the “ease of administration” angle.

      Absolutely to the contrary here though, sympathetic understanding is NOT called for.

    2. 8.2

      Paul

      Given my discussions with dozens of clerks over the years in the Federal Courts, I highly doubt any of the CAFC people are “writing” much in the way of opinions. The clerks do 95% of the heavy lifting with only minor touches by the Judges. Now, of course clerks are not free labor either, but that is a much easier problem to solve than appointing more judges.

      1. 8.2.1

        “The clerks do 95% of the heavy lifting with only minor touches by the Judges.”

        I figured that out last April. The panel before me was unaware of some major issues, and by that I mean their own case law.

        That said, do you really want to leave law in the hands of such chowderheaded clerks? Get more adult supervision because the glorified but clueless clerks are obviously technically challenged and can’t be bothered to read the statutes much less their own law.

        1. 8.2.1.1

          I know!

          People, including most attorneys, would be horrified to see how little of the actual work product comes from the Judges. Aside from writing the bulk of the opinions, the clerks read all the briefs, and even write many of the notes and suggested questions for oral argument, etc.

          1. 8.2.1.1.1

            “ the clerks read all the briefs, and even write many of the notes and suggested questions for oral argument”

            I figured that when Judge Hughes asked me a particularly moronic question. It’s as if Hughes never read his own decisions

  2. 7

    I’m lost for words of reply, anon. No idea what your problem is. Sorry.

    Perhaps 6 can mediate?

    1. 7.1

      It is not my problem…

      It is you that offers an EP section as if that answers 6’s point, while how that answer’s 6’s point remains a mystery.

      Keep in mind that 6 is contrasting something, and your offered point has its direct analog here (which means that without more from you, your point can not explain the difference).

      I also note that this is not the first time that you have offered this “point,” and (as will be expected here), you will no doubt explain how your offered point actually makes a difference.

      1. 7.1.1

        Readers, 6, in case you’re wondering, what emerged as #7 was intended by me to be in reply to 6 in this thread at 2.2.3.

  3. 6

    R.36 judgments and Alice judges are about the same– ’cause. Just like the kings and queens of yore.

    1. 6.1

      Dude, its why I have been calling patent attorneys “the gentry” for a long time. We’re learned, but not royals

  4. 5

    The following from the brief may be highly upsetting to cheerleaders of the IPR regime:

    Also lurking in this case, however, is an issue of deep constitutional concern: if the Board can deprive patent owners of their property rights without meaningful appellate review by an Article III court, the careful balance struck by Congress in providing for administrative review of patent validity threatens to be upended. This Court suggested in Oil States that the promise of Federal Circuit review operates as an important safeguard of patent owners’ rights and ensures that Board proceedings may be carried out consistent with the strictures of Article III. Without that safeguard, patent owners are potentially subject to an unconstitutional deprivation of their property every time an IPR is instituted.

    and later:

    Congress’s requirement that the Federal Circuit issue an “opinion” in such appeals operates as an important constitutional safeguard: it mandates that the court show its work in adjudicating the legal issues raised by the parties, and it thus ensures, consistent with this Court’s pronouncements in Crowell, Schor, and like cases, that substantive Article III review of federal patent-law questions is available to parties litigating before the Board. The Federal Circuit’s neglect of this safeguard thus raises grave questions about the constitutionality of that process as it is currently being conducted.

    Is this where the anemic Thomas dicta is supposed to gain its teeth?

    1. 5.1

      Interesting anon. Almost makes me want to rethink my opinion that the takings clause has no hope at the SCOTUS.

    2. 5.2

      Ooooooh, I’m so askeert!

      1. 5.2.1

        Not you, Malcolm, our resident internet tough guy…

    3. 5.3

      Sounds eloquent, but substantively empty. It mixes together 3 distinct questions: (1) would it be good policy for the Federal Circuit to write opinions in every PTAB case, (2) did Congress require the Federal Circuit to write opinions in every PTAB case, and (3) does the constitution require the Federal Circuit to write opinions in every PTAB case.

      The answer to the third question is clearly no. The answer to the first question is irrelevant. The only real question before the court in this petition is the second one. That’s a statutory question. Maybe the answer is yes (see Crouch article), and maybe it’s no (see Dowd article), but there’s no “important constitutional safeguard” involved.

      The idea that a written opinion is an “important constitutional safeguard” seems to assume that the Constitution requires written opinions. Oil States refers to Federal Circuit “review” of the PTAB. Maybe Cappella would prefer that that “review” include a written opinion, but Oil States didn’t say that it has to, and no one’s seriously arguing that Article III of the Constitution requires a written opinion when a court reviews an agency.

      1. 5.3.1

        Thank you “dcl” for a rational analysis. A treat for blog comments.

      2. 5.3.2

        Your “3)” misstates the point.

        Your question is inapposite to the actual thrust of the point presented.

        At least you had more than the snide shot from the sidelines vis a vis “semantic.” Who knows, you might even engage in a discussion of the intersection of Constitution Law and patent law (which would be far more than Paul Morgan ever dared to do).

        1. 5.3.2.1

          anon – you’re 100% correct. The patent law requires an opinion from a PTAB proceeding, which R.36 deprives. To present this as a constitutional issue is inane. “Due process” under the law is often set by congress with the constitution mandating a minimum level.

          The Federal Circuit already has a habit of writing out statutory language when it sees fit.

          1. 5.3.2.1.1

            The “novel” legal position being advanced is an attempt to make lemonade from the lemon of the Oil States decision.

            dcl’s mis-aim simply seeks to avoid the actual point presented with a rather pedantic “the Constitution does not explicitly have that law”….

            (but that is still better than anything Paul Morgan has ever advanced)

    4. 5.4

      There is appellate review, the issue is the form of that review.

      1. 5.4.1

        Absolutely – and the form of that review (as required by law, but NOT being met) impugns the items as noted (or at least argued).

        As I noted, this is the type of stuff reflected in the Thomas dicta in Oil States. A question then, is whether or not that Thomas dicta was really ever meant to have any teeth.

        (I have indicated that I think not – given the fact that the facts of Oil States itself dictate a different end result given the Thomas dicta).

  5. 4

    With respect to the merits of the underlying case, has anyone listened to the oral arguments?

    Just wondering how things went down. Supreme’s may be even less interested in taking this case (if that’s possible) if the petitioner is throwing a hail mary.

  6. 3

    Also I support making the fed circ back up its opinion with a bit of writing. Doesn’t have to be in depth. But may as well make them write something, sometimes when making decisions like this it can be helpful for the brain making the decision to write about what they’re talking about for everything to click well. And further, if the congress wants to make work for the courts then they should be putting $$$ behind it.

    1. 3.1

      As a policy matter, this would be a good idea. Some circuits have a R36 equivalent, but others issue at least short opinions in just about every case.

      The Ninth Circuit does “memorandum” opinions that are often 2-5 pages. Not a deep dive into anything, but there is some actual reasoning.
      link to ca9.uscourts.gov

      The DC Circuit does “judgments” that seem to be shorter and more perfunctory than the Ninth, but still with some actual reasoning most of the time. link to cadc.uscourts.gov

      Writing opinions in every case would take extra time, and the time would have to come from somewhere, but my general sense is that it wouldn’t take a lot of extra time, and the benefits would be worth the cost.

      1. 3.1.1

        Yes, opinions in every case would be desirable, but I would bet you would get very strong opposing views from judges “that it wouldn’t take a lot of extra time.” Or as someone else here argued, that almost all their work is already done once they have [verbally in conference] decided the outcome.
        It’s not just the drafting. It also requires circulating and re-drafting among all three panel members to get a consensus opinion, and that is not easy, especially if they agree on the outcome but not on what is the most important reason for the outcome and how it should be presented.
        Nor would requiring an opinion preclude leaving many issues un-discussed and un-decided, as some seem to think. They will still be free to say that one issue is case-dispositive, with no need to discuss any other appealed issues.

  7. 2

    I just got through reading my 15th or so “patentability report” from EU offices that applied art inappropriately. Why are the offices over in the EU so bad? I’ve talked in real life with some of their examiners, they don’t seem to be that bad when just talking to them. But then they just ignore one or two of the important limitations in the claims and state it isn’t novel. They don’t even bother to ignore limitations that could just be 103’d in, they always ignore something that you just couldn’t even bring in. Only 1 out of all 15 or so actually found the claim to be patentable and I ended up having to find a few 102’s for that one.

    The absolute state of the EU = sht. Up your game euros!

    1. 2.1

      It’s my annecdotal experience that they rarely find the best art. But I hear so many contradictory annecdotes, which seem to be supported by the additional resources available to EPO searches, that I assume my sample is unusual.

      1. 2.1.1

        Wow. That is 180 degrees opposite from my experience. I am always impressed with the EPO search office.

        1. 2.1.1.1

          Like I said, I am aware my experience appears to deviate from the norm and I think it’s likely not representative. *shrug*

          1. 2.1.1.1.1

            Sure. Your experience is your experience. I do not wish to gainsay you. I am simply surprised.

            1. 2.1.1.1.1.1

              Does the EPO still uses more than one different European PO searching offices? If so, would that partially account for the differences in perceived search quality?

      2. 2.1.2

        Interesting. What is this “best art”, Ben, that you know about but the EPO does not? Is it what the USPTO has brought to light? If not, would it occur to you to share it with the European patent attorney taking your EPO filing smoothly through to issue and otherwise, like the EPO, wholly ignorant of the dangerous art closer to the claimed subject matter than anything else on the European patent attorney’s prosecution file?

        1. 2.1.2.1

          I am a US examiner, so my best art will be found in the USPTO prosecution history.

        2. 2.1.2.2

          If not, would it occur to you to share it with the European patent attorney taking your EPO filing smoothly through to issue…

          Ben is a USPTO examiner. I would like to think that the U.S. patent attorney who gets a rejection from Ben would see fit to notify the EP colleague handling the analogous EP file (and the CN attorney handling the CN file, and the AU attorney, etc…), but it seems like it is asking a bit much of Ben to trouble himself to notify other patent offices. This is especially true when you consider that the USPTO posts all of its office actions online, so if the EPO/SIPO/INPI/etc want to see what Ben has found, they can easily check for themselves.

          1. 2.1.2.2.1

            Thanks for pointing that out, Greg, that I was wrong to assume that “Ben” is a patent attorney. Now I’m wondering just how many USPTO Examiners follow this blog during the working day. The more the merrier, in the context of my efforts to influence opinion here.

            Frankly, it is rare for me to receive from my instructing US associate or direct client word of prior art closer than what the EPO has found. That might be that there is nothing. Or it might be that there is no duty of candor at the EPO, so my client thinks there is everything to gain, in not telling me, and nothing to lose. Big error, given the exquisite complexity of amendment, after the EPO grants.

            1. 2.1.2.2.1.1

              The more the merrier, in the context of my efforts to influence opinion here.

              Just not in the way that you think (if the examiners are smart).

            2. 2.1.2.2.1.2

              [I]t is rare for me to receive from my instructing US associate or direct client word of prior art closer than what the EPO has found.

              I am sure that some folks would hold out on their EP attorneys on the logic that there is no duty of candor to the EPO, but I bet that—for the most part—the reason why you do not get submissions of art that are closer than that which the EPO has found is because the EPO just does a very good job. Certainly this has always been my experience.

            3. 2.1.2.2.1.3

              I’m wondering just how many USPTO Examiners follow this blog during the working day.

              I have no idea how many, but certainly “Ben” and “RandomGuy” are two of the most interesting and informed contributors to this board who happen also to be examiners.

              1. 2.1.2.2.1.3.1

                Greg, I agree. I cherish Random’s thoughtful contributions. And even enjoy those of Examiner “6”.

      3. 2.1.3

        I wouldn’t say the art they find is “bad” art, it’s usually at least related art.
        It just isn’t as good as they think it is. And they’re all the time fraking up their decisions.

        I can excuse them not finding all the 102’s I find, they’re just not as good as me, and it takes me a long time quite often.

    2. 2.2

      6, your comment bears out my experience, namely that the level of mutual incomprehension, between those practising patent law in the USA, and those in the 38 Member States of the (non EU) EPC, is sky high.

      When the USPTO is the PCT search authority, and the case moves forward to enter the regional phase and there receives a supplementary search report from the EPO, the novelty and obviousness assessment by the ISA is rarely useful under the EPC.

      The task that the statute gives to Examiners at the EPO is to ensure, before allowing any application, that it complies with ALL the patentability requirements found within the EPC and its Implementing Regulations. One in 15 sounds about right to me, 6. In my experience, round about fourteen out of fifteen receive an EESR with one or other point that requires attention before the case is in order to receive a Notice of Allowance.

      I wonder if the misunderstanding arises out of the different way the EPO construes a claim. It does it on the basis of the wording of the claim, giving those words an expansive interpretation. If Applicant argues that a term in the claim is to be given the narrow definition included in the specification, the EPO expects that definition to be written in to the claim. If the claim is unclear, amendment to clarify the intended meaning will often overcome the novelty objection.

      You see, this is all because, after issue, courts construe the claim issued without resort to the wrapper. So unless the claim is clear, as it stands, it is vulnerable to objections that it is wide enough to include something that is not new.

      Or am I missing your point? And BTW, which are the “offices” (plural) in the EU that have so upset you? Is it some Office other than the EPO which is the object of your scorn?

      1. 2.2.1

        You see, this is all because, after issue, courts construe the claim issued without resort to the wrapper.

        Meh, that’s a Sovereign’s choice, even if it one that makes little sense.

        1. 2.2.1.1

          anon, your opinion is noted. It is only good and proper, that most every lawyer considers his or her own jurisdiction to be superior to any other jurisdiction. When they can no longer hold to that opinion, that’s when alarm bells should start to ring.

          1. 2.2.1.1.1

            Balderdash MaxDrei.

            That “my home is best” mindlessness is NOT “good and proper,” and your thinking that it is IS what should set off the “alarm bells.”

            You really need to start to THINK.

        2. 2.2.1.2

          Explain.

          1. 2.2.1.2.1

            What point do you wish to be explained to you, my historical pseudonym friend?

      2. 2.2.2

        Max, US PCT searches aren’t conducted by USPTO examiners, they’re farmed out to third parties. Who don’t lose a cent if they do a bad job. This also explains why the USPTO gives NO credit to PCT searches done by the “US” – it wasn’t done by US examiners, so they can’t possibly know what they’re doing. And the only benefit to an applicant who has a PCT search in the “US” is a slightly reduced search fee at the USPTO when they enter national phase.

        This approach is, of course, woefully inefficient. The EPO’s approach makes far more sense: have an EPO examiner do the search, waive the search fee upon regional phase entry, and rely on the PCT search as the search.

        The lack of PCT search experience by US examiners becomes apparent when they issue restriction requirements in national phase applications. Such RRs are based on US practice, not PCT unity of invention requirements, which are the standard for national phase applications.

        1. 2.2.2.1

          AM,

          If you are in the US for your national phase, why would anything but US practice be the standard for applying restriction practice?

          I am not seeing how anything else BUT US practice could be the standard once you are in the US national phase.

        2. 2.2.2.2

          “This also explains why the USPTO gives NO credit to PCT searches done by the “US” – it wasn’t done by US examiners, so they can’t possibly know what they’re doing. And the only benefit to an applicant who has a PCT search in the “US” is a slightly reduced search fee at the USPTO when they enter national phase.”

          I had an examiner do the PCT search, and the same examiner do the examination – said examiner not giving his own PCT opinion any weight.

          Yes, we’re talking 3600

      3. 2.2.3

        “When the USPTO is the PCT search authority, and the case moves forward to enter the regional phase and there receives a supplementary search report from the EPO, the novelty and obviousness assessment by the ISA is rarely useful under the EPC.”

        I’m not sure if that’s the problem I’m highlighting or not. But it sounds similar.

        “I wonder if the misunderstanding arises out of the different way the EPO construes a claim. ”

        I thought about that, but I don’t think that’s it. It looks more like they just ignore (or find implicit/inherent incorrectly) a limitation or whole clause. That being said, sometimes I think the person reading the claim isn’t technically sophisticated enough to understand what is happening in the complicated art I’m in. THAT could be the problem.

        “You see, this is all because, after issue, courts construe the claim issued without resort to the wrapper. ”

        I do hear you on that one but idk, I just don’t see it being a factor all that often I don’t think. They seem to be understanding the claim and then intentionally/unintentionally misapplying art. Maybe that is to sus out a bit of a clarifying amendment or something but still.

        “Or am I missing your point? ”

        Maybe. It’s mostly the misapplication of art that I’m concerned about. I’m sure they at least tried to do a good search, and upon doing my own search I often find the references they found in addition to others so I take it we actually are searching somewhat similar at least in the CPC scheme. But then they just take whatever art they find and proclaim lack of novelty when they blatantly don’t have one (sometimes even 2!) limitations explicitly, and when they try to plug the gap with implicit/inherent they offer no evidence and indeed the rest of the art I find suggests it would not be implicit/inherent.

        “And BTW, which are the “offices” (plural) in the EU that have so upset you?”

        Whichever one(s) are doing these searches. It seems to bounce around a bit. Sometimes france, sometimes germany, sometimes england etc. I think.

        1. 2.2.3.1

          Fingered it, 6, i think, in your surmise that an EPO Examiner will cite marginal art and use it to assert that novelty is prejudiced as a way to squeeze Applicant into a clarifying amendment.

          You might say: why not just object that the claim is indefinite?

          Examiners at the EPO are multi-lingual and rarely have English as their first language. With US patent attorneys writing the claims, it is not at all appreciated to receive from Europe an objection that the claim language offends Art 84 EPC because it is “not clear”. Some US patent attorneys get very upset when reading such objections. They bark at the Examiner to get on, do your job, and read the specification. But in Europe, that doesn’t wash. The claim must be clear on its face.

          Another point: from within the EPO we are hearing ever more lamentation that i) management gives them too little time to search and at the same time ii) is moving Examiners around, into art fields they do not know. Seems like your recent experience is confirmation of these deplorable trends.

          1. 2.2.3.1.1

            This is not the first time MaxDrei that you have claimed “must be clear” with Art 84 EPC, as if that were a basis for ipsiss verbis.

            As noted previously, the fact that the EPC IS poly-lingual should lessen — not augment — the flexibility of terms.

            And yet, the tendency is for ipsis verbis.

            One wonders then if processing within a single language provides better understanding of how subtle language is? Or is it perhaps mere “laziness” on the “Euro examiner” in seeking some “exact match.”

            It certainly is not “clarity,” as we too have rules for clarity.

  8. 1

    This argument against Fed. Cir. Rule 36 affirmances w/o opinions might be more persuasive if the Fed. Cir. could be shown to really out of line with the practices of the other Federal Circuits?
    I appreciate the semantic 35 U.S.C. § 144 argument argued as a distinction, but could not that “opinion” requirement be interpreted as being met by effectively adopting the opinion below with it’s Rule 36 opinion?

    1. 1.1

      Paul,

      The Federal Circuit has held repeatedly that its R.36 judgments cannot and should not be interpreted as adopting the opinion or reasoning below.

      Further, if two or more issues are appealed (as was the case here), the R.36 judgment cannot be interpreted to rule on either of the issues — thus no issue preclusion.

      1. 1.1.1

        Good point 1 Dennis.
        But as to point 2, since almost all Rule 36 affirmances of IPR decisions are for the claims being in rem removed, what difference would it make for issue preclusion?
        If there are any Fed.Cir. Rule 36 IPR affirmances where the claims were not killed, would not the Petitioner be subject to statutory estoppel anyway?

      2. 1.1.2

        “Further, if two or more issues are appealed (as was the case here), the R.36 judgment cannot be interpreted to rule on either of the issues — thus no issue preclusion.”

        This is why the panel in the USAA case (recently decided) had such an apoplectic fit during oral argument when counsel argued a prior CAFC R.36 judgement was meaningless as to one key issue that related to the current case. They are sensitive about this and when called out on the defects in this kind of judgement they get extremely hostile.

        1. 1.1.2.1

          Hay, JNG – the Federal Circuit is reconsidering its anti-APA position in the In re Villena case. Specifically, in response to Villena’s combined petition for rehearing and rehearing en banc filed September 7, 2018, the Federal Circuit invited the USPTO to respond.

          As Villena is the first Alice/Mayo case taken from an ex parte PTAB decision to survive Rule 36, a decision en banc from the Federal Circuit has the potential to set precedent in a way that will profoundly affect tens of thousands of patent applications each year at the USPTO.

          Also, it will be a stick in the eye of a certain examiner we both know

      3. 1.1.3

        FYI, there has only been one appeal from an ex parte appeal under Alice/Mayo survive R.36. Just one

    2. 1.2

      To expand a bit on that point, as we all know, the likelyhood of the Sup. Ct. taking cert on an issue is much higher if there is a split between Circuits. So do other circuits taking appeals from federal administrative agencies also often decide them with Rule 36 affirmances? Also, isn’t there a “long standing practice” problem to overcome with a cert petition here, since 35 U.S.C. § 144 is at least as old as the 1952 patent statute, yet never challenged on this ground before?

      1. 1.2.1

        Also, isn’t there a “long standing practice” problem to overcome with a cert petition here, since 35 U.S.C. § 144 is at least as old as the 1952 patent statute, yet never challenged on this ground before?

        Is this not distinguished in the write-up explaining why the explosion of such cases has occurred?

        I “get” it Paul that you are the self-appointed cheerleader, but is this not getting a little silly, even from you?

        1. 1.2.1.1

          Anon, re: “the write-up explaining why the explosion of such cases has occurred.” Where, and how? 35 U.S.C. § 144 was there for many years before reexaminations or IPRs. Are you or they asserting that Rule 35 or other no-opinion affirmances were never or almost never used during all those years for any ex parte application appeals from the Board to the Fed. Cir.?

          1. 1.2.1.1.1

            Read the post to which you are commenting, the brief, and/or the Crouch larger article.

            Then realize how poor your spin attempt is with the “semantic” comment.

          2. 1.2.1.1.2

            As noted in the write-up, the Fed. Cir. has been using its Rule 36 for almost 30 years. There are many hundreds more ex parte appeal Rule 36’s than those in the relatively new AIA post-grant proceedings. I doubt there have been “hundreds” of Rule 36’s in the AIA appeals decided in the past four or so years.

            1. 1.2.1.1.2.1

              Thanks TP. The subject page 23 of this cert petition is misleadingly written to create the impression that extensive use of Rule 36 decisions in PTAB appeals only occurred after the AIA.

              1. 1.2.1.1.2.1.1

                I’m not sure that statement is misleading if only for Alice Corp. decisions. I’m aware of only one Alice/Mayo decision from an ex parte appeal from the PTAB that survived R.36

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