Parties Again Ask the Federal Circuit to Follow the Law and Issue an Opinion in PTO Appeals

In a recent article, Judge Hughes was quoted as saying that he does not personally look at petitions for rehearing that stem from R.36 no-opinion judgments by the Federal Circuit.

Hughes said if the panel affirmed without an opinion, he puts the petition down and waits to hear from his clerks if it’s worth considering. If the panel wrote a nonprecedential decision without a dissent, he may flip through the table of contents to make sure he’s not missing anything.

But the only en banc petitions Hughes said he reads seriously are the precedential decisions, particularly with dissents. “Those are the only ones that are going to be en-banc-worthy,” he said.

Perry Cooper, Full Court Patent Review Bids Often ‘Waste of Time,’ Judge Says.  In many ways, these no-opinion judgments are the shadow docket of the Federal Circuit without the usual full-court or expositive guardrails of ordinary appellate practice.

Before 1989, the Federal Circuit and its predecessor courts (going back 100+ years) wrote an opinion in each and every appeal of a patent case from the Patent Office.  Now, about half of the cases are decided without opinion.  Back in 2010, this represented fewer than 20 cases per year, many of which were pro se and ex parte.  By 2019, more than 120 R.36 no-opinion judgments were issued in PTO cases, most of these were in hotly litigated inter partes reviews. In their article, Paul Gugliuzza and Mark Lemley looked at one area of law – patent eligibility – and concluded that the court was subtly shifting the law through its R.36 practice. Gugliuzza and Lemley, Can a Court Change the Law by Saying Nothing?, 71 Vanderbilt Law Rev. 765 (2018).

In a number of cases, parties have petitioned the Supreme Court and Federal Circuit for a hearing on the issue — arguing as I did in my 2017 article that 35 U.S.C. 144 requires the court to issue an opinion when reviewing an appeal from the Patent Office. So far, no court has agreed to even hold such a hearing.

In WaterBlasting v. Iancu, the petitioner is taking this same approach (I previously wrote about the patentee’s en banc request here.)   In its new responsive briefing, the USPTO focused on general principles of appellate procedure that, by “longstanding tradition” permit the appellate courts to “establish their own procedures concerning when to issue opinions.”  While I agree with this general principle, the USPTO failed to consider or work through the competing longstanding tradition in the patent context noted above or the statutory history on point.

One thing that I like about the Gov’t brief is that it lists many of the unsuccessful petitions to the Supreme Court on this issue:

See, e.g., Fote v. Iancu, 140 S. Ct. 2765 (2020); Kaneka Corp. v. Xiamen Kingdomway Grp., 140 S. Ct. 2768 (2020); Specialty Fertilizer Products, LLC v. Shell Oil Co., 138 S. Ct. 2678 (2018); Shore v. Lee, 137 S. Ct. 2197 (2017); Concaten, Inc. v. AmeriTrak Fleet Solutions, LLC, 137 S. Ct. 1604 (2017); Cloud Satchel, LLC v. Barnes & Noble, Inc., 136 S. Ct. 1723 (2016); Hyundai Motor Am. v. Clear with Computers, LLC, 134 S. Ct. 619 (2013); Kastner v. Chet’s Shoes, Inc., 565 U.S. 1201 (2012); White v. Hitachi, Ltd., 565 U.S. 825 (2011); Max Rack, Inc. v. Hoist Fitness Sys., Inc., 564 U.S. 1057 (2011); Romala Stone, Inc. v. Home Depot U.S.A., Inc., 562 U.S. 1201 (2011); Wayne-Dalton Corp. v. Amarr Co., 558 U.S. 991 (2009); Tehrani v. Polar Electro, 556 U.S. 1236 (2009).

WaterBlasting PTO Brief.

= = = = =

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

51 thoughts on “Parties Again Ask the Federal Circuit to Follow the Law and Issue an Opinion in PTO Appeals

  1. 6

    After reading the link, Judge Hughes should be immediately removed from the bench.

    His priority on his own convenience is horrifying.

    1. 6.1

      Hughes is a SV appointee that Obama was instructed to nominate in exchange for the billions SV has funneled into the D’s coffers and privately into the D’s pockets.

  2. 5

    This is perhaps the most important line from the Government’s brief, in terms of understanding why literally no one outside this blog cares about the Section 144:

    >The issue is also one of limited practical significance. A Rule 36 summary
    >affirmance is not meaningfully different from a summary affirmance in the
    >circuits that issue brief nonprecedential opinions stating that the decision
    >of the agency is affirmed for reasons outlined in the agency’s decision.

    In other words, if the statute were construed to require an opinion in every appeal from the PTAB, the CAFC would just start issuing one-line opinions stating that the judgment is “affirmed for the reasons stated in the PTAB decision,” or “for the reasons stated in the respondent’s brief,” etc. I don’t think even Dennis has argued that “opinion” in Section 144 requires a detailed statement of reasons for the decision, and as the government’s brief correctly notes, one-liner opinions affirming “for the reasons outlined in the agency decision” are common in circuits that don’t often invoke formal summary affirmance under Rule 36, and are not meaningfully different from what the CAFC does.

    1. 5.1

      Which actually makes the situation here worse.

      They could easily comply.

      Of course, by doing so with a mere “blanket” approach, this would give applicants the possibility of redress on the slimmest of those items below that were not properly adjudicated.

    2. 5.2

      A one-line opinion affirming “for the reasons outlined in the agency decision” would be very different, because the Fed. Cir. has made clear that a R.36 judgment “does not endorse or reject any specific part of the … reasoning [below].” Rates Technology v. Medaitrix Telecom, 688 F.3d 742, 750 (Fed. Cir. 2012).

      Currently, under R.36 the Fed. Cir. can theoretically affirm under a different rationale without ever explaining the actual rationale for affirmance to the appellant.


          A big underlying issue is that a lot of the time the best arguments you will face come not from the other side, but from the Court. In this situation, you are faced with questions out of the blue with no time to find relevant law to address the concern.

          If the Court writes an opinion articulating a new concern or rationale, then you can at least file a request for panel rehearing addressing the concern. If the Court does not write an opinion, it is exceedingly difficult to request rehearing on a new concern or rationale that is not officially set forth anywhere. Effectively, the only chance you ever have to address such a new concern or rationale is on the fly. In some situations, this simply is not a meaningful opportunity to respond.

          Ultimately, the reality is that appellate judges at the Circuit level are generally under no obligation to provide reasons for their decision, other than so as to enable review by the Supreme Court. There are plusses to this arrangement, but there are minuses too. I come out more on the side of preferring the reasoning for a decision be explicated in every case, but I have not been in their shoes so I do not presume to know better, and even from the outside I understand why the approach is desirable and potentially necessary.


            Those are all good points.

            I think a lot of the R.36 judgments at the CAFC are there for two reasons. 1) I think that most of the judges on the CAFC generally disrespect patents and are trying to do everything possible to diminish their effectiveness. They simply have no respect for the litigant. 2) I think there are so many contrary opinions on the CAFC that it is easier to just not write an opinion than open up the can of worms that is the precedent of the CAFC.

            There are, of course, other reasons as you discuss. But I think these factors have exacerbated the problem of relying on R.36 judgments.

            R.36 judgments are just terrible for the average citizen to have confidence in our judiciary.


              What compounds the “too many reasons” and hiding by the CAFC of sharing of the “reasoning,” is that often that “reasoning” is nothing more than the reflexive fire-hosing of the caged CAFC simians by the US Supreme Court.

    3. 5.3

      Thanks. The Fed. Cir. would not even need to say “The decision of the agency is affirmed for reasons outlined in the agency’s decision.” They could simply say “The Appellant has not raised any issue consistent with the requirements of the APA for reversing the PTO decision below.”

      1. 5.3.1

        Again, this only makes the matter of the CAFC choosing not to follow the law about providing a (meaningful) opinion even worse.

      2. 5.3.2

        Paul, this is 100% correct, and this fully addresses J. Doerre’s comments above.

        The Federal Circuit could issue a one-line affirmance opinion without adopting the PTAB’s reasoning; it could could simply issue a one-liner (as other appellate courts do), stating something along the lines of “we have fully considered the appellant’s arguments and find that they lack merit,” or “we have fully considered the appellant’s arguments and find that they do not provide a basis for reversing, vacating, or modifying any aspect of the decision below,” and affirm without saying more. Such an opinion would seem to have the same meaning as a Rule 36 affirmance.

  3. 4

    As Dennis and others may have noticed, the court denied this rehearing petition last Wednesday. I suspect the court called for a response to the rehearing petition only because they were interested in the first issue raised.

    It might a good idea for the court to address this Rule 36 issue explicitly in an opinion at some point. Panels sometimes issue short opinions explaining why a rehearing petition is denied.
    link to This would take some time, but the court has seen enough of these rehearing petitions that a responsive opinion might be worth doing.

    One thing that makes it difficult for this issue to gain traction is that it can only really be raised in a rehearing petition or a cert petition–which are almost always denied without comment. The Judge Hughes interview article notes that the losing party files a rehearing petition in more than half of the patent appeals. The Supreme Court is unlikely to care enough about this to make room on its merits docket. If the Supreme Court thought Dennis was clearly right, it could summarily reverse, but I don’t think any Justice thinks that.

    At the Federal Circuit, the issue can only come in cases where the appellant has already lost on appeal, and is arguing not that the result was wrong but that the court owes it more of an explanation. A regular appeal brief raising the issue would look a bit silly. Imagine the argument headings: “I. The PTAB Erred in Ruling Claims 1, 5, and 6 Are Obvious.” “II. The PTAB Erred in Denying Leave to Amend.” “III. If I Lose, 35 U.S.C. 144 Requires This Court to Write an Opinion.” So when an appellant is asking the panel to go back and do more work, as a purely practical matter, I think most judges would ask “why should I care?” Usually a losing appellant has seen the rebuttal to its arguments in the PTAB’s opinion, in the other side’s brief, and (at least in pre-pandemic times) at oral argument through the court’s questions, so it’s hardly a mystery what an opinion might say. The Fifth Circuit dealt somewhat humorously with a rehearing petition asking for more reasoning on what the panel regarded as a trivially simple issue. link to

    The other thing that makes it difficult for this issue to gain traction is that it’s a pure technicality. I support the idea that the statutory text is is the law, and if it clearly requires something then the text must be followed, absent something like scrivener’s error or absurdity. But that seems to be the whole argument. There’s no suggestion I’m aware of (unless it’s simply been too long since I read Prof. Crouch’s article) that Congress actually wanted to cut back the Federal Circuit’s use of Rule 36, or that they cared whether every appellate decision included an opinion or not.

    To be sure, the word “opinion” is in the statute, but I thought Dowd’s rebuttal was persuasive and wish the PTO had cited it. link to

  4. 3

    “We don’t care what the statute says, no statute can tell *US* to write an opinion!” – CAFC

    Of course Rule 36 affirmances are up since 2010. In 2011 Congress created IPRs, which have become a required part of the patent litigation process: if you’re a litigator, you’re derelict if you don’t file an IPR (ethics rules says you need to zealously protect your client’s interests, business rules says you have to bill them every chance you get), and you’re derelict if you don’t appeal an IPR decision that’s adverse in some way (see previous parentheses). This has added to CAFC’s workload, so of course there will be more Rule 36 affirmances.

    1. 3.1

      Hence the reference to “shadow docket,” eh?

      I am sure that you would agree though, that the apparatus of the government does not exist first and foremost for the convenience OF the government, right?

    2. 3.2

      “We don’t care what the statute says, no statute can tell *US* to write an opinion!” – CAFC

      In fairness, it’s probably correct on a separation of powers question that Congress can’t order the judiciary to write an opinion. Congress is only vested with powers to set up inferior courts and to withdraw jurisdiction. I think the only remedy for a judge not judging is impeachment.

      1. 3.2.1

        Is that statement an accurate interpretation of Article 3, Section II, clause 2, sentence 2? This clause empowers the Congress with not only “exceptions” to jurisdiction (the withdrawing jurisdiction that you mention) but also “regulations”. I believe that if Congress wants to regulate a court of its own creation by demanding that it write opinions, no separation of powers problem is effected.

        Under RandomGuy’s interpretation of the Constitution, all the judges of a court could decide they were never again going to write any opinion ever (permanent federally funded vacation!) and there would be nothing the Congress could do about it, short of abolishing the court.


          In fairness, Random is not an attorney (not even a country lawyeh), and his views are almost never correct on the merits.

  5. 2

    The title of this combined request for rehearing or en banc review is now WaterBlasting v. ANDREW HIRSHFELD. The Solicitor [intervenor] devotes almost its entire PTO brief to arguing that the appeal was not appropriate anyway since the appeal was only for a factual, not legal, argument [about certain claim term meanings]. The above list of cert denials of Rule 36 use attacks was a mere BTW at the end of their brief, with no accompanying legal argument.

    1. 2.1

      BTW, this was an appeal from an IPR decision, where the APR applies and thus the distinction between appeals of fact issues and legal issues is even more significant. Or, to argue it another way, mounting an attack on Rule 36 practice in a case where it could not make any difference in outcome is even less likely to be effective.

    2. 2.2

      Are you saying that one cannot appeal for supposed errors of fact?

      Further, the use of R.36 is even more egregious if a mere statement that would take no more than a “we hold based on agreeing with facts as suggested by the Office instead of as suggested by applicant.”

      Or perhaps more importantly, whether it was ALL facts, some (and which ones), or even only one.

      By doing nothing but R.36, this is exactly the type of frustrating justice for the applicant to decide to do what’s next that the Congress’ mandating of including an explanatory statement would prevent.

      Leave it to the IPR cheerleader to take a “no harm here, move along” position.

      1. 2.2.1

        As usual, I said no such thing. In fact, if mere personal opinions counted for anything, I might have argued that the Solicitor’s asserted facts-only arguments about claim interpretation in this IPR [which I had clearly noted as such] could perhaps be argued as legal arguments under Markman?


          Mea culpa – your post reflected the government’s view (you repeated it without opinion, and I took that repeating as you agreeing with that view)


            Her in the states we still try to honor free speech, Hall Monitor (aka Snowflake).


                Why would you think that I am the one not “honoring” free speech?

                What is you understanding of how the First Amendment is applied here on this privately owned blog?

                (Real questions)

                1. Well, Snowflake, our US Constitution did not grant a right of free speech. It recognized and provided protections for our right of free speech. What do they think about those precepts where you are?

                2. The tone and content of your question are not clear.

                  Maybe instead of asking what appears to be a completely tangent notion, you might answer the questions put to you before we proceed in this conversation.

                3. Regulation of ideas having “tone and content” you don’t like is the reason we free speech is honored in America, Hall Monitor. Again, what do they think about those precepts where you are?

                4. And again, your reply is odd, as you seem to want to presume a lack of understanding from me that is just not there, and then want to presume that my location is somehow ‘different.’

                  Your presumptions are what color the tone and content.

                  Also, you have not yet answered the questions that I first put to you:

                  Why would you think that I am the one not “honoring” free speech?

                  What is you understanding of how the First Amendment is applied here on this privately owned blog?

                  Please answer these questions to show that you are not merely playing your old games.

                5. I said “free speech,” Snowflake. I did not say “First Amendment,” Hall Monitor.

                6. Your reply is a non sequitur. Read my post.

                  I used the words “free speech.”

                  And EVEN IF I had instead
                  used “First Amendment,” the notion of free speech only has context in relation to First Amendment, so even your non sequitur is nonsense.

                7. “ the notion of free speech only has context in relation to First Amendment “

                  Snowflake (aka Hall Monitor), March 20, 2021.

                8. Do you have one of your own oft-requested “citations” to offer to establish a counter view (remembering that we are on a blog that aims to discuss legal topics)?

                9. And to remind you of what “on point” means in the immediate context:

                  Why would you think that I am the one not “honoring” free speech?

                  What is you understanding of how the First Amendment is applied here on this privately owned blog?

                  (Real questions)

                10. Wow. Just wow, Snowflake (aka Hall Monitor).

                  We must agree once again with your own designated expert that you are an incredibly sloppy reader, writer, and thinker.

                11. Reaching back into your past games with the double dip of “just wow” and quoting someone who was bu tts0re from being on the wrong end of a position with me related to the fact that Void for Vagueness is not limited to criminal law matters…

                  This is just not a good look for you.

                12. We’re not sure what you think you are talking about, Snowflake.

                  But we must agree once again with your own designated expert that you are an incredibly sloppy reader, writer, and thinker.

                13. You just went to that same well of the bu ttsore person who was shown up for dis-abusing his errant view that Void for Vagueness was a legal concept only applicable to criminal law.

                  Relying on someone else in their moment of weakness and error is NOT a great strategy.

                14. Yes. And now this anon will explain to us how under US law typing in a public forum in response to typing in a public forum constitutes “cyberstalking” as one of the anons alleged.

                  Of course, this anon will not because none of the anons can. With good reason.

                  Management learning about some of your games, Snowflake?

                  Should you not complain to management about the mean people saying mean things to you again? We’ll wait.

                15. Let’s nip this attempted redirect and attempt to assert control of the direction here right in the bud.

                  There is NO NEED for me to have to explain anything about cyber-stalking.

                  That you think I “need” to is as wrong as you thinking that merely because of the type of forum we are on precludes you from engaging in cyber stalking.

                  It just is not so.

                  Reminder (and these are cold hard facts – plainly present in the YOUR choices as captured in the black and white of these threads):

                  Your posts this years have been 100% to or about me.
                  Your posts – going back some now two years or so- have been to or about me at a clip greater than 98%.

                  Across the fifteen plus year history of this forum, no one has had as much obsess10n over one person than you have had over me.

                  And it’s not even close.

                  Instead of focusing on the forum, you might want to focus on the actions in that forum. And you don’t even need to wait for that, as – just like your choices to post what you post – this is something entirely within your control (using that term loosely, I suppose, eh?)

                16. So that’s your legal analysis, Snowflake? Now we understand why, even though you purport to reside in the US, you cannot get into a US law school.

                17. More of the same from you leads to the same end spot:

                  Are you down to less than seven hours a day with your ga y child cl0wn p0 rn addiction? Yes, we are back into this loop.

                  This is the inevitable spot to which your game of false presumption and so-obviously loaded questions leads to.

                18. Ass handed to you again with your “cyberstalking” debacle. Time to wahh wahh wahhh to management (again).

                  [what a maroon]

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