Fote v. Iancu: R.36 Decisions and the Reasons for Judgment

I previously discussed Fote v. Iancu. Charles Fote has now petitioned the Supreme Court for certiorari — asking the following question:

Whether a court of appeals must provide an opinion explaining its reasoning in an appeal that involves a complex and unsettled area of the law and in which a written opinion would likely provide the appellant with a viable basis for seeking rehearing, rehearing en banc, or certiorari.

Petition.

We know that a district court judge deciding an issue on the merits must expressly the legal and factual basis for their decision. The rules of appellate procedure don’t provide the same requirement for appellate decisions.  However, the Federal Circuit’s local rules suggest that it will issue no-judgments affirmance only when an “opinion would have no precedential value” and the lower tribunal decision is properly affirmed. Fed. Cir. Rules of Practice R. 36.

After noting the prevalence of R.36 no-opinion judgments, the petition particularly asks the Supreme Court to “exercise its supervisory authority to provide guidance for the lower courts and ensure that decisions involving complex and unsettled areas of the law are explained—thereby providing the appellant with a viable basis for seeking rehearing, rehearing en banc, or certiorari.”

Does an appeal deserve an opinion?

30 thoughts on “Fote v. Iancu: R.36 Decisions and the Reasons for Judgment

  1. 7

    I’d bet the number is going to be about 30% reduction. And I’ll bet it does not rebound.

    The PTO should figure on about 15-30 percent layoffs during the next 3 years.

    And if the Chinese pull back on their filings then 40 percent layoffs.

    1. 7.1

      As I said long, long time ago, this is coming. But it takes a long time to work its way through the system.

      1. 7.1.1

        Agree and disagree.

        You certainly have been making this projection for a long time, so I agree (and have long agreed) with that aspect.

        But I am not sure that I can agree (totally) with the “long time working through the system” comment. To me, this would imply that ALL of the factors have long been present, and that the full set of factors had to percolate in order to finally come to fruition. I tend to look at it slightly differently. I look at as there have been many (but not all) factors present for a long time, and that some (but not all) of those factors have had cascading effects that do build up over time. There are also OTHER forces that have been in play pushing in the opposite direction. What we may well be in the middle of is an external trigger point serving as a lynch pin to push the cascade factor into overdrive, causing a condition to which Congress may not be able to respond fast enough to.

        It is more nuanced than that.

        This more dynamic ‘give and take’ ecosystem may be evidenced by last year’s awakening in Congress to the understanding that the Score Board is broken in regards to patent eligibility (with the counter resurgence of those jumping on the bandwagon to “help” with Trojan Horse ‘gifts’ to NOT fix the broken Score Board).

        1. 7.1.1.1

          I am going by talking to clients and interacting in my day-to-day world.

          What I’ve seen since Alice/AIA/ebay is a sense that we are spending too much on patents as they are really junk. The corporate inhouse people have had their budgets cut every year for the last several years. There was this sense that maybe we should keep it up as patents tend to rebound and maybe they will be worth something soon.

          That sense is lost. What has happened is a tipping point where the value of patents has so decreased that Wall Street numbers are more important than the patent budget. Now the thought it is to keep it on life support to see what happens over the next several years and to have some around to harass other people or protect against harassment.

          But the tipping point is here. Upper level people are thinking cut the patent budget to make the profit number.

        2. 7.1.1.2

          Let’s remember that patent budgets have not been cut in previous recessions and in 2008 they were, but not much.

          So this will be the first time in modern history of a large cut in patent budgets. That is the tipping point and the point.

          And what I have been saying for years. That this tipping point was coming.

          1. 7.1.1.2.1

            +1

          2. 7.1.1.2.2

            … and let me add: the ‘tipping point’ is facilitated FOR Big Corp in that patents for start-ups and disruptive innovation have been inordinately and disproportionally harmed.

            This sense of inordinately and disproportionally comes from the fact that a ‘single level of harm’ to patent protection CAN BE compensated for differently based solely on non-innovation factors that FAVOR large established entities.

            This has been what ALL of the “0h N0es Tr011s” propaganda has been about: denigrating the strength of patents may well harm all patent holders, but it harms certain patent holders far more than others.

  2. 6

    >Why a patenting decline of between 10% and 20% is on the cards this year
    Modelling undertaken by Donal O’Connell of Chawton Innovation Services suggests a precipitous and unprecedented fall in the number of patent applications that will be submitted during 2020

    Gee, what did I say? I am sure Lemley will spin this as good and an indication that the patent system is healthy and all his work on burning it down is paying off.

    1. 6.1

      Plus abandonment percentages are twice their normal rate this month.

      1. 6.1.1

        Ouch.

    2. 6.2

      >>Based on some simple modelling, I suspect that we may see new patent application numbers almost certainly fall by more than 10% and possibly by as much as 20% when comparing 2020 to 2019.

      Gee, in line with what I predicted.

      1. 6.2.1

        It would indeed be surprising if there was not a big patent application filing drop this year – but from the widespread Corona virus business, university, and laboratory shutdowns. Only a small percentage of current patent applications are on inventions from sole inventors in home basements or garages.

        1. 6.2.1.1

          … maybe those numbers will go up, with some 40% or so Americans now under a ‘Stay at Home’ order

        2. 6.2.1.2

          Paul, the reduction will come mainly from small inventors and large corporations, who will be under enormous pressure to meet Wall Street numbers.

          The reality is that I’d bet the drop is more like 30 percent. It illustrates that the patent system is deteriorating and falling apart.

          Anyone that has been in this business a long time like with top firms knows that. We see it in speaking to our clients’ attitude towards patents and huge reduction in the value of patents when they are sold. The almost impossible task of enforcing a patent. How ridiculously easy it is to kill claims in an IPR. Etc.

          1. 6.2.1.2.1

            … one of the painfully easy to see ‘unintended consequences’ of ‘aligning’ the patent system to the Ends of the Corporatacrazy is that such Big Corp alignment is simply NOT geared towards what is best for any ONE Sovereign.

            Big Corp is all about being able to advance the benefits of Big Corp (and Big Corp alone). This has always been reflected in the lack of concern for any one Sovereign, and the games of Big Corp in playing geo-political move-cost-factors-to-lowest-point-in-the-world play-tax-avoidance games.

            This also is an easy to see REPEAT of history and what happens when the legislature is captured by that Corporatacrazy (I can think of at least two other semi-recent cycles of such: the savings and loan debacle and the auto bailouts).

            In this most recent cycle, we have had the strengthening of the voice of juristic peoples (notably corporations) through the likes of Citizens United, and we may well be faced with paying the piper because of the external-to-innovation shock of the pandemic.

  3. 5

    Some sour grapes re both Rule 36 and the en banc refusal in Arthrex. Gene Quinn is quoted on that blog today as having said: “For a court that claims to be so overworked that it must dispose of literally half of its docket with one-sentence Rule 36 summary affirmances, spending so much time and energy across 58 pages of completely meaningless analysis and disagreement goes beyond unconscionable.”
    Ignoring the logical inconsistency in complaining about Fed. Cir.opinions being too short and too long in the same sentence, the reason for the latter should be quite obvious. The Fed. Cir. judges are well aware that the Arthrex issue is far more likely to get Sup. Ct. cert than the usual Hail Mary cert throws regularly over-discussed here, and thus deserved far more legal analysis.

    1. 5.1

      You absolutely miss the point of the con aligning about too long and too short, Paul.

      Put your pom poms down.

      1. 5.1.1

        weird autocorrect…

        “con aligning” ==> “complaining”

  4. 4

    This premise seems debatable: “in an appeal that involves a complex and unsettled area of the law and in which a written opinion would likely provide the appellant with a viable basis for seeking rehearing, rehearing en banc, or certiorari.” Of course, the reason it’s debatable is that the FedCir didn’t issue an opinion, but I don’t think the argument works.

    As Hal Wegner’s emails used to remind regularly, the Supreme Court has long approved of courts of appeals issuing summary affirmances. Maybe the FedCir is overusing Rule 36, but I don’t think cert petitions are the way to fix it. Maybe a single Justice might one day issue a statement respecting denial of certiorari and express concern about overuse of Rule 36, and maybe that would lead the FedCir to change something. But (though I may be proven wrong very soon), I find it hard to imagine the Supreme Court granting one of these petitions, let alone reversing.

    If you want the Federal Circuit to get rid of R36 or stop using it so much, I think you have to convince the Federal Circuit to change. Tell the Federal Circuit how Rule 36 *should* work, and possibly propose a specific amendment to R36’s substantive criteria, or to the internal operating procedures on R36’s procedural criteria.

    Or maybe convince Congress to amend FRAP 36 to require opinions sometimes.

    1. 4.1

      And credit the petitioners for taking a different approach than previous petitioners, and asking the Supreme Court to use its supervisory authority rather than finding an affirmative right in the rules, but I’ll be surprised if this works.

    2. 4.2

      Or maybe convince Congress to amend FRAP 36 to require opinions sometimes.

      That’s just it, stan – that’s already there and the CAFC is ignoring that in these patent cases.

      1. 4.2.1

        … it’s also interesting to draw a parallel tot the Pirate Copyright case, in that the Supreme Court appears to be telling Congress it could draft legislation (even though that is exactly what Congress has already done).

  5. 3

    Again a disappointing cert. petition on Rule 36. The constitutional question (which was not even raised in the cert petition) is whether a party is entitled to a detailed and reasoned opinion from an Art. III court when the lower (prior) proceeding was a final agency adjudication in a different branch of the government. There is case law on this question and the cert. petition fails to cite it.

    1. 3.1

      There is case law on this question and the cert. petition fails to cite it.

      Perhaps you could cite it.

      1. 3.1.1

        +1

    2. 3.2

      I would be very interested in any thoughts you have on this. Feel free to email me at jdoerre AT ti-law.com .

  6. 2

    Seems like a slow comment day for this post at least, despite everyone being shut-in, presumably, so I thought I’d change that a little.

    Talk about not being able to take “no” for an answer. When are these parties going to realize that getting SCOTUS to bite on such repetitive, cookie cutter petitions is a total pipe dream? It seems like it also may be a profitable cottage industry for the firms drafting and filing these petitions.

    And realistically, is SCOTUS ever going to condemn the practice when it also does the same thing? For example, on occasion there will be summary dispositions – not just GVR, but actual affirmance or reversal – without opinions. You also have cases on mandatory review – Baker v. Nelson being a famous example – that generate merits dispositions on a 1-line dismissal. In a similar vein, and more recently, in U.S. v. Texas you had a case that had gone through full merits briefing and argument, but was ultimately affirmed in 1 line on a 4-4 vote. Whatever one’s take on the practice (I happen to think it’s entirely benign), there’s no coherent reason why CAFC should have to follow a different rule from SCOTUS itself.

    Finally, as to the contrast between the requirements of FRCP and the lack of a similar requirement in FRAP, you obviously can’t really have a “similar” requirement in FRAP because while the DCT has to find discrete facts and make individual legal conclusions, that doesn’t make sense in the appellate context. At the end of the day, what the appeals court does is essentially a binary decision – affirm or reverse. You can have in whole or in part and vacatur and remands too, but the binary is the crux of it. And of course, even in the DCT, in jury trials – putting aside things like special verdict forms – you have up-or-down decisions on a regular basis. Do juries now have to give written opinions for their guilty or acquittal verdicts too?

    1. 2.1

      hardreaders,

      You make some good points, but also appear to have some mistaken foundations.

      When are these parties going to realize that getting SCOTUS to bite on such repetitive, cookie cutter petitions is a total pipe dream?

      Good point – even as an0ther commentator indicates that this cert is NOT a repetitive cookie cutter petition, one should be aware of what the Court has already deigned not to touch and NOT repeat that tactic.

      seems like it also may be a profitable cottage industry for the firms drafting and filing these petitions

      Meh, not likely. Firms really do not like taking losing positions, and I doubt that any firm is making a bundle on repeat losing positions. Of course, this is an off-the-cuff remark, and a closer look at all the losing certs MAY reveal that a particular firm or two IS making this (or at least attempting to make this) a cottage industry. But much like I had to correct Night Writer’s mistaken perception of the drop in IPR cases, this may well be too small (and diminishing) area for a law firm to attempt to make ‘an industry’ out of.

      And realistically, is SCOTUS ever going to condemn the practice when it also does the same thing?

      Sure – you seem to presume that SCOTUS will necessarily be consistent. As anyone paying attention to the 35 USC 101 debacle could point out, this just is not so.

      there’s no coherent reason why CAFC should have to follow a different rule from SCOTUS itself.

      Actually, this is completely wrong — for a number of reasons (structurally and historically). For example, SCOTUS has a discretionary aspect that the lower courts do not. For another example, the lower courts may be controlled to a certain extent to perform as Congress dictates (an item directly on point with the CAFC).

      At the end of the day, what the appeals court does is essentially a binary decision – affirm or reverse

      Meh, this is not helpful, because we are not JUST concerned with an ‘end of the day” result, but rather, in law, the MEANS to any ENDS must also survive scrutiny.

      Do juries now have to give written opinions for their guilty or acquittal verdicts too?

      This is a non-sequitur and is not logically connected to the issue at hand. One may want to venture forth and attempt a parallel, but much more is needed to do so. As is, this is not helpful and appears to merely kick up dust.

    2. 2.2

      so I thought I’d change that a little.

      Changing that a little would involve more than one post, my friend.

  7. 1

    However, the Federal Circuit’s local rules suggest that it will issue no-judgments affirmance only when an “opinion would have no precedential value” and the lower tribunal decision is properly affirmed. Fed. Cir. Rules of Practice R. 36.

    OK, so the ‘no precedential value’ is pretty much a given, as there is nothing there to be precedential about.

    But about the “lower tribunal decision is properly affirmed” AND how this may run smack into Congress passing a law requiring the Appeals Court to provide ITS (and not the lower court’s) reasoning, how can any R. 36 decision vouch for the propriety of the affirmation with nothing from the Appeals Court explaining this…?

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