Federal Circuit Continues to Remain Silent about its R.36 Opinions

Waterblasting, LLC v. Iancu (Fed. Cir. 2021)

A few years ago, I wrote an article arguing that 35 U.S.C. § 144 requires the Federal Circuit to issue an opinion when it decides cases on appeal from the USPTO.

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, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.

35 U.S.C. § 144.  [My Article] The provision was amended in 1984 to particularly require a “mandate and opinion.” However, prior to that time the Federal Circuit and its predecessor always wrote opinions associated with every judgment. Although there is no legislative history, I believe that the fact of an opinion was assumed and simply codified into law.

In this case, Waterblasting, LLC appealed an adverse IPR decision cancelling claims 1-4 and 10 of its US7255116 (Stripe removal system).  On appeal, Waterblasting argued that the PTAB had erred in its legal analysis and also made factual conclusions that were not supported by substantial evidence.

The Federal Circuit sided with the PTO and affirmed. However, rather than explaining its decision, the Federal Circuit simply issued its judgment without opinion as permitted under Federal Circuit Local Rule 36.

In its newly filed en banc petition, Waterblasting argues that no-opinion judgments are improper in this situation:

§ 144 should be interpreted consistent with its clear language and the panel’s issuance of an affirmance without opinion is inconsistent with the law.

Waterblasting v Iancu Petition for en Banc Rehearing.

Note here that following my article, more than a dozen parties have asked the Federal Circuit to consider this issue. So far, the court gone meta — remaining silent about its choice to remain silent.

22 thoughts on “Federal Circuit Continues to Remain Silent about its R.36 Opinions

  1. 3

    Dear Pres. Elect Biden,

    If you are reading this, please know that Prof. Crouch has thought more deeply about the issue discussed in this blog post than perhaps any other scholar in the world. If a seat opens on the CAFC (as one likely will) during your term, you could do a lot worse than to name Prof. Crouch to fill that seat.

    As long as I have your attention, meanwhile, I will modestly note that I am available for the PTO director’s job, if you are having a hard time deciding whom to name. Even if you already have someone (no doubt, a better qualified candidate) in mind, this is a job with a very short turnover in recent years. I hope that you will keep me in mind as a next-in-line candidate.


    1. 3.1

      “As long as I have your attention, meanwhile, I will modestly note that I am available for the PTO director’s job, if you are having a hard time deciding whom to name.”

      If you or your corporate employer makes 100k+ contribs to the dems the job is yours I’m sure.

  2. 1

    And they will continue to refuse to accept this argument that they must write opinions in every appeal from every decision below they agree with, especially with the great increase in their workload from IPR appeals. Nor do I think the Sup. Ct. will ever force them to do so, since they depend so heavily on opinionless denials of cert themselves. This is a dead horse.

    1. 1.1

      I could see if there were but one issue below — but when there are multiple, there really is a need for the reviewing court to state the basis (that is, follow the plain words of the law and provide an opinion).

      This is NOT to say that this is onerous as you may be suggesting, Paul, as the opinion could be as simple as “we agree with X or Y or both X and Y below.”

      It really is amazing that the court simply continues to thumb its “meta” nose at those seeking redress.

      1. 1.1.1

        Yes, the Fed. Cir could do more “we agree with X and need not consider er Y, or we agree with both X and Y, below.” But those would be non-precedential opinions not citable in other Fed. Cir. appeals anyway.
        [This is not the only kind of situation in which a very literal reading of statutory language in the abstract by academics can get treated by courts as unintended and unworkable in context. ]


          Whether citable or not is not germane to the reason why Congress wrote that particular section of law.

          (Think law of the case and informing the affected party so as to let that party determine a viable next action).


          Also, as I noted, there is nothing unintended or unworkable here.

          That’s the point I presented: this is easily workable.

    2. 1.2

      Well Gorsuch will disagree. Congress wrote that statute – so live with it. If the CAFC is worked to death – well they can bitch at the cocktail parties – and Congress can change the statute. Comparing the AIA statute requiring an opinion and whether to grant Cert is apples to oranges. Whether or not he (Gorsuch) has 5 to vote with him? Who knows. Roberts will advocate to ‘amend’ the statue to make it ‘work’ by ignoring provisions of the statutory scheme (enable R.36) – I’m not a fan of that school of SCOTUS thinking.


          An yet, its’ going to be the legacy of the Roberts court. This ‘save’ the statutory scheme AKA read stuff in and read stuff out malarky.

          CPFB – ok, so an unremovable officer – is sub silento removable by the executive – complete read out and read in of the removal provisions – but we saved the scheme.

          ACA – buy a product or pay a fine – it’s really just another tax – here again read out and read in – but we saved the scheme.

          Oil States v. the Appointments clause – read out Hayburns case (PTAB is just another court) v. appointments clause – but read out confirmation, but read in just another lower officer – ergo PTAB is not just another court at all – but as if the executive himself is overturning a final decision of a court.

          There are several more.


            “but we saved the scheme.”

            Sht, this ain’t but small potatoes of them saving the APA (which pretty clearly now infringes on the executive’s powers after the DACA fiasco at the supreme court) and DACA with their interpretations.


                If they’re going to interpret the APA as preventing an incoming admin from ending the former admin’s illegal executive order tom scheme because supposedly “the public” (aka illegal immigrants I guess) has come to “rely on it” then yes, the APA was saved because that sht should go straight down the toilet if it interferes with the pres’s powers to issue executive orders in such a fashion.

                1. YOU obviously have something specific on your mind – which simply does not translate to the larger picture (as may be more evident to the patent folk here).

                  Maybe try a different lens (a patent lens), and try again.

                2. Yes, the recent USSC case interpreting the APA as blocking Trump from stopping the DACA executive order. Wherein they specifically think that the APA prevents such issuance of such executive orders (which constitutionally should be the president’s domain and congress should not have say so over). Which, if true, should be enough to WREK the apa itself in its current formulation.

                  It’s the same sort of bs situation where the court is saving the statutory scheme.

                3. Ah, so your thrust includes the notion that “reliance” should not be weighted if that reliance was on ‘bad law’ to begin with (or am I still not grasping what you are presenting…?)

      1. 1.2.2

        Yes, Gorsuch does seem to enjoy rubbing Congressional noses in their legislation’s unintended consequences and drafting mistakes, no matter how strange the results. But most Sup. Ct. Justices have more sense than to unnecessarily provoke the source of all their Courts funding.


          more sense than to unnecessarily provoke the source of all their Courts funding.

          I certainly hope that NO Justice EVER thinks like that.

          Any sense of “gee, don’t offend because I need the money” is — and should be — anathema.

      2. 1.2.3

        “If the CAFC is worked to death – well they can bitch at the cocktail parties – and Congress can change the statute.”

        I mean, it’s just more clerk work I would think. Copy paste clerk work. I’m not even sure why D is so insistent on having them copy paste work anyway.

    3. 1.3

      As for trying to take this issue to the Sup. Ct., unless the cert petition also raises a different and justiciable issue, the mere use of Rule 36 by the Fed. Cir. does not, since it has no effect on the case outcome.

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