R.36: PTO’s Failure to Explain Affirmed without Explanation

by Dennis Crouch

LG v. Iancu, stems from an obviousness determination by the PTAB in its IPR of LG’s U.S. Patent No. 7,664,971.  On appeal, LG argued that the PTAB had failed to explain its decision as required by the Administrative Procedures Act.  In a silent commentary on the current state of patent law, the Federal Circuit has affirmed the PTAB decision without issuing any opinion or explanation for judgment.

The ’971 patent claims both an apparatus and method for controlling power to the cores of a multi-core processor.  In its decision, the board gave an explanation for rejecting claim 1 (the apparatus), but not for the method claim 9.

In oral arguments, Judge Hughes Chen noted how the patentee had intentionally focused on procedure rather than merits — since LG doesn’t really have an argument for why claim 9 is different.  That merits conclusion may have driven the decision here.

In IPR cases, the duty is on the PTAB to justify its cancellation of each claim.  In Securus, the Federal Circuit actually faced a similar situation and came to the opposite conclusion.  In particular, in that case, the patentee did not independently argue patentability of several of the dependent claims, and so the Board simply held them invalid along with the rest. On appeal, the Federal Circuit reversed — holding that the Board must articulate a reason for every claim being cancelled.

Here, the Board failed to articulate any reasoning for reaching its decision as to these claims. While the Board need not expound upon its reasoning in great detail in all cases … it must provide some reasoned basis for finding the claims obvious in order to permit meaningful review by this court.

One difficulty for LG in this case is that that the Securus decision is nonprecedential — thus this new panel is not bound to follow that decision. And, perhaps the court is looking to preserve its internal stability by issuing this decision without judgment.  Of course, that is an improper use of R.36 no-opinion-judgments that are only permitted by Federal Circuit rule when an explanatory opinion “would have no precedential value.”  Here, rejecting or modifying the analysis of a prior Federal Circuit decision fits the bill of precedential value.


24 thoughts on “R.36: PTO’s Failure to Explain Affirmed without Explanation

  1. 6

    Who needs Trump appointees when we have appointees of his predecessors – of both parties – to make a mockery of “due process” and “rule of law”?

    “We’re federal court judges, we can do whatever we please, statutes don’t apply to us judges!”

  2. 5

    OT, but what I said was going to happen is happening. The SCOTUS is losing the respect of the American people. A prominent person on PBS said that perhaps if Gore v. Bush happened today that there would be fighting in the streets instead of an acceptance of the decision.

    Alice is just another aspect of this where the justices are so arrogant they think they can just fabricate law to burn down the patent system ’cause they can.

    I think these R36 decisions are in the same basket as arrogant judges thinking they can do whatever they want without consequences. From the people I know, the CAFC judges engender no respect. People see them as this group of people selected for their lack of character and ignorance of science.

    1. 5.1

      link to politico.com

      There are very few people that have an iota of respect for Kagan and the other justices. They are a joke. They decry the fall of the SCOTUS in one breath and in the next breath they fabricate new laws instead of acting like a judicial branch of the government.

    2. 5.2

      I think trying to draw a parallel between Rule 36 decisions as Bush v. Gore and the current public views of the federal judiciary, is a reach.

  3. 4

    I realize that you’re grasping for every decision that will help your current cause celebre, but when you read claims 1 and 9 of U.S. Patent No. 7,664,971, you can understand why LG’s argument about claim 1 elevated form over substance. The two claims aren’t direct mirror images of one another, but claim 1 is clearly the narrower apparatus claim and it isn’t clear that claim 9 adds anything that isn’t already required by claim 1. And it also doesn’t look like LG really defended claim 9 on the basis of any unique limitations. So the fact that the PTAB articulated its reasoning for claim 1, but hand-waved for claim 9, seems entirely appropriate.

  4. 3

    [T]he reason the Federalist Society was brought into being: to hijack the federal judiciary, and use the federal courts’ (self-proclaimed) judicial supremacy over the electorally accountable branches of government to impose the political — and most specifically the economic — preferences of a reactionary oligarchy on the American people as a whole.

    Pay attention, folks.

    The patent maximalist game is built right along these lines and there are many many patent attorneys covered in the stench of the Ferderlist Society cessp 00l.

    Big F@ t Rich White Daddy is going to tell everyone else how it’s going to be with his big f@t bullhorn and his endless crocodile tears about how he’s being “persecuted” by “anti-patent” forces. “Democracy” has nothing to do with it. On the contrary, “democracy” is something to be avoided at all costs because most people don’t want to be paying Big White Daddy’s lawyers everytime they correlate something or program a computer.

    “anon” and his cohorts can’t stand it when anyone shines the spotlight on this because his pants have been hanging down around his ankles for years, along with his mentor Big Jeans.

    “Patents shouldn’t be politicized” <— LOLOLOLOLOLOLOLOL

    Boo hoo hoo hoo hoo!

    Own it, you cre eps.

    1. 3.1

      The patent maximalist game is built right along these lines


      Who exactly has been the number one critic of a too-powerful judicial branch – especially, as would be pertinent on this forum, as to pertaining to patent law?

      Your rants are off the deep end.

      1. 3.2.1

        The person that acts like Trump on this blog is you

        So says the guy who never shuts up about his imaginary “witch hunt.”

        Like I’ve said before: the combination of self-absorption and lack of intelligence seems to lend itself to patent maximalism.

        Tell us another story about how criticism of software patents is like “fundamentalist terr0r ists k*lling people in Iraq”, Night Wiper.

        Or I could just repost the comment here. Because I’ve saved them all.

        lol stby


            if that is the worse you have on me

            It’s merely exemplary.

            I am a pretty clean person.

            See above re low intelligence and self-absorption. Also just plain weird.

  5. 2

    Dennis Crouch focusing on the really really important stuff:

    Judge Hughes noted how the patentee had intentionally focused on procedure rather than merits — since LG doesn’t really have an argument for why claim 9 is different. That merits conclusion may have driven the decision here.

    Ya think? Boy it’s going to be hard to sleep tonight after this horrific injustice.

      1. 2.1.1

        Shorter “anon”: derp derp derp.

        Has there ever been a more vacuous excuse for a fake attorney than “anon” with his self-righteous vapid aphorism spewing pieh0le?

        Seems impossible.


            The thing about Random Capitalization, “anon”, is that it Doesn’t make you seem more Intelligent or Creative or Important. On the contrary. It’s only highlights your inability to articulate an argument in plain English and undercuts whatever it is that you are trying to communicate (this latter problem is barely detectable and assumes that people care in the first place, which is a terrible assumption). The sources of your difficulties with English are two-fold. First, English isn’t your native language. Second, you’re not very intelligent. Please focus on polluting Big Jeans blog and try to enjoy the echo chamber there. It was made for you!


            Thank goodness it’s Friday.


              There’s nothing random about the capitalization — as you well SHOULD know.

              The rest of your post is your typical Accuse Others, mindless ad hominem and 0bsess10n with Mr. Quinn.

  6. 1

    Failure to explain reminds me of a headline (albeit with a different focus) on that other blog:

    Abdication of Collective Responsibility

    link to ipwatchdog.com

    And yet, some insist on not recognizing that the scoreboard is broken…

    1. 1.1

      the scoreboard is broken…

      Which is why we must put another Repu k k ke partisan hack on the court. Preferably a white guy who perjures all over himself when he isn’t obsessing about the thickness of Bill Clinton’s semen.

      Oh wait, we aren’t allowed to talk about this stuff! It hurts “anon”s precious fee-fees when we bring up historical facts that tarnish his Beautiful Mind.

      1. 1.1.1

        You clearly miss the point of being relevant to patent law issues.

        Is there any wonder then why you have had more posts expunged than all others combined?

        It’s not as if you are unaware of this either. Yet, for some unknown reason (and much like Trump), you seem to believe that the rules just don’t apply to you.

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