Guest Post by Charles Macedo, David Goldberg, Thomas Hart, John Dellaportas, and Jamie Zipper. The authors are all firm of Amster, Rothstein & Ebenstein LLP, except for Dellaportas, who hails from Emmet Marvin & Martin. Disclosure – Several members of this team (and both firms) have represented Island IP — arguing the issues discussed here.
Introduction
Courts of Appeal are both courts of review and subject to review. As courts of review, they have demanded of the lower courts that they provide sufficient reasoning and rationale to enable the parties and reviewing courts to understand the bases of their decisions. As courts subject to review, the US Supreme Court has demanded that Courts of Appeal provide sufficient information and explanation of their judgments so the Justices can, in turn, provide their review.
Federal Rule of Appellate Procedure Rule 36 allows for courts to issue judgments without opinions. Each of the Circuit Courts has their own rules and practices associated with the issuance of such opinions. The majority—including the First, Second, Third, Fourth, Sixth, Seventh, Ninth, Eleventh, and DC Circuits—do not have a local rule allowing simple one-word affirmances, while the minority—including the Fifth, Eighth, Tenth, and Federal Circuits—do. However, of the latter four circuits, in the past year only the Fifth and Federal Circuit have used one-word affirmances, with the Federal Circuit’s use standing out by a high margin.
The Federal Circuit’s use of Local Rule 36 thus differs drastically from other Courts of Appeal. The Supreme Court should resolve this circuit split.
Courts of Appeal Routinely Criticize District Courts’ Failure to Provide Written Explanations of Their Decisions
Many appellate courts do not permit decisions from district courts that fail to state adequate grounds or reasons for a decision. For example, in Campbell v. Hewitt, Coleman & Assocs., Inc., the Fourth Circuit vacated a grant of summary judgment because “[t]he district court stated no facts on which it relied.” 21 F.3d 52, 55-56 (4th Cir. 1994).
Appellate courts have requested that district courts explain not only the facts relied upon, but also their reasoning for issuing judgment. For example, the Ninth Circuit in Van Bourg, Allen, Weinberg & Roger v. NLRB vacated and remanded a summary judgment ruling “so the district court [could] state in reasonable detail the reasons for its decision as to each document in dispute.” 656 F.2d 1356, 1358 (9th Cir. 1981). Similarly, the Third Circuit in Gillis v. Hoechst Celanese Corp. “vacat[ed] the district court’s order to the extent that it denie[d] th[e] claim and remand[ed] the claim so that the basis for the decision [could] be explicated by the district court and an appropriate order [could] be entered.” 4 F.3d 1137, 1149 (3d Cir. 1993).
In Couveau v. Am. Airlines, Inc., the Ninth Circuit explained that the failure of district courts to provide well-reasoned orders “runs contrary to the interest of judicial efficiency by compelling the appellate court to scour the record in order to find evidence in support of the decision.” 218 F.3d 1078, 1080 (9th Cir. 2000) (internal quotation marks and citation omitted).
Similarly, the Sixth Circuit has held that failing to provide well-reasoned, written decisions causes appellate courts to be “handicapped in [their] review.” Peck v. Bridgeport Machines, Inc., 237 F.3d 614, 617 (6th Cir. 2001). By contrast, issuing “written opinion[s] explaining [a] ruling and the reasoning, factual and legal, in support” serves the “reviewing court and . . . the parties . . . much better.” Id. The court further emphasized the importance of providing written, well-explained decisions in cases where “the ruling disposes of the case in a final judgment” like a directed verdict, finding that issuing such decisions in final judgment cases “is necessary not only for the parties to the lawsuit [but] also enables the appellate court to evaluate the basis of the lower court’s action.” Id.; Bellamy v. Bradley, 729 F.2d 416, 418 (6th Cir. 1984). The court elaborated on this issue by stating that “[s]ome form of a written opinion memorializing the district court’s ruling eliminates [the] problem” of appellate courts having to ‘second guess.’ Bradley, 729 F.2d at 418.
Even the Federal Circuit, which issues Local Rule 36 judgments regularly, has recognized that “Courts of Appeals in general and [the Federal Circuit] in particular have recognized that a remand for clarification is appropriate where a judgment is ambiguous.” Jang v. Bos. Sci. Corp., 532 F.3d 1330, 1335 (Fed. Cir. 2008). For example, in Nazomi Communs., Inc. v. ARM Holdings, PLC, the Federal Circuit remanded for a more “detailed analysis” of a noninfringement ruling finding the original analysis to be “inadequate because it [did] not supply the basis for its reasoning sufficient for a meaningful review.” 403 F.3d 1364, 1371 (Fed. Cir. 2005); see also Impact Engine, Inc. v. Google LLC, No. 2022-2291, 2024 U.S. App. LEXIS 16254, at *30 (Fed. Cir. July 3, 2024) (Reyna, J., dissenting). Similarly, in Superior Fireplace Co. v. Majestic Prods. Co., the court remanded a finding that a case was not exceptional meriting attorney’s fees due to “the district court’s failure to provide any findings or reasoning prevent[ing] [the court] from reviewing its decision.” 270 F.3d 1358, 1377 (Fed. Cir. 2001).
The Federal Circuit has similarly opined that, on cases involving summary judgment, “[i]f the district court’s ‘underlying holdings would otherwise be ambiguous or inascertainable,’ the reasons for entering summary judgment must be stated somewhere in the record.” Telectronics Pacing Sys., Inc. v. Ventritex, Inc., 982 F.2d 1520, 1526 (Fed. Cir. 1992) (citations omitted)). The Federal Circuit has even stated that “in complicated cases” such summary dispositions “risk[] reversal when a reviewing court cannot discern the basis for the district court’s decision.” Lamle v. Mattel, Inc., 65 F. App’x 293, 295 (Fed. Cir. 2003) (citing Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1020 (Fed. Cir. 1985)).
Like the Federal Circuit, the Fifth Circuit, which also issues one-word affirmances, has “in practice insisted that district courts record however informally their reasons for entering summary judgment, at least where their underlying holdings would otherwise be ambiguous or inascertainable.” Hanson v. Aetna Life & Cas., 625 F.2d 573, 575 (5th Cir. 1980). In general, the Federal Circuit has found that it is “error” when a district court fails to provide “an adequate explanation” because the Federal Circuit is “left . . . in the zone of appellate speculation.” United States v. Thomas, 236 F. App’x 410, 413 (10th Cir. 2007) (quotation omitted).
The Supreme Court’s Decision in Cardinal Chem. Co. v. Morton Int’l Explains Why Appellate Courts Must Provide an Adequate Explanation of Their Judgments
The Supreme Court has also emphasized the importance of providing reasoned decisions. In Cardinal Chemical Co. v. Morton Int’l, Cardinal challenged the Federal Circuit’s routine practice of vacating declaratory judgments involving patent validity after a determination of noninfringement. 508 U.S. 83, 89 (1993). Until then, the Federal Circuit had taken the position that a finding of noninfringement resolved the underlying case or controversy, even though issues of invalidity or unenforceability may not have been addressed, because the noninfringement finding rendered an alleged infringer’s affirmative defenses or counterclaims “‘moot’ in a jurisdictional sense.” Id. at 92. The Supreme Court reversed, explaining that a case or controversy adequate to support jurisdiction for a counterclaim existed based on the charge of infringement itself, and that a court’s jurisdiction therefore continues once the adequacy of the charge has been established. Id. at 98. In short, the Federal Circuit had jurisdiction to consider Cardinal’s appeal on “two independent bases,” and it was incumbent on the Federal Circuit to properly adjudicate and explain both. Id. at 97. In coming to this conclusion, the Supreme Court opined, inter alia, that the Federal Circuit’s practice “injures not only the alleged infringer and the public; it also may unfairly deprive the patentee itself of the appellate review that is a component of the one full and fair opportunity to have the validity issue adjudicated correctly.” Id. at 101-02.
The Federal Circuit’s routine practice of issuing one-word affirmances under Local Rule 36 similarly deprives patentees of proper appellate review. As described by the Supreme Court, a Federal Circuit’s deprival of appellate review is particularly harmful because it “prolongs the life of invalid patents [and] encourages endless litigation (or at least uncertainty) over the validity of outstanding patents. . .” Id. at 102.
Cardinal is by no means the only Supreme Court case that emphasizes the importance of appellate review. As Justice Cardozo has explained, there is a long appellate tradition of explaining decisions–of not just “declaring justice between man and man, but of settling the law,” and thus the Supreme Court has often warned the Courts of Appeal to explain their decisions. Benjamin N. Cardozo, Jurisdiction of the Court of Appeals (2d ed. 1909) § 6. For example, in Carter v. Stanton, the Supreme Court vacated and remanded where the District Court’s order was “opaque and unilluminating as to either the relevant facts or the law.” 405 U.S. 669, 672 (1972); accord Bush v. Palm Beach County Canvassing Bd., 531 U.S. 70, 78 (2000) (remanding because there was “considerable uncertainty as to the precise grounds for the decision[]” (citation omitted)); Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811 (1986) (remanding for clarification due to “lack [of] an adequate explanation of the basis for the Court of Appeals’ judgment”).
The Federal Circuit’s Use of Local Rule 36 Is Out of Step with Other Courts of Appeal
Based on the Federal Circuit’s database of cases, over the past ten years, on average approximately 35% of Federal Circuit judgments stemming from the appeal of a District Court or Patent & Trademark Office decision are Rule 36 judgments. In contrast, in the past year, out of the three other Courts of Appeal that explicitly allow for one-word affirmances, only the Fifth Circuit actually issued any, and did so at a dramatically lower rate than the Federal Circuit. Only two Fifth Circuit cases so far this year are one-word affirmances. See, For Exoneration from or Limitation of Liab. v. Am. Longshore Mut. Ass’n, Ltd. (In re Complaint of Aries Marine Corp.), No. 23-30564, 2024 U.S. App. LEXIS 8124 (5th Cir. Apr. 4, 2024); Merkle v. Thomas (In re Merkle), No. 23-50692, 2024 U.S. App. LEXIS 17142 (5th Cir. July 12, 2024). More often than not, the Fifth Circuit provides at least a cursory explanation when issuing such affirmances. See, e.g., Gilliard v. Limestone Cty. DA Office, No. 23-50378, 2024 U.S. App. LEXIS 2734 (5th Cir. Feb. 6, 2024) (“Appellant has not identified any reversible error in the district court’s dismissal of his claims.”).
Searching for one-word affirmances this year in the Eighth and Tenth Circuits on Lexis revealed that these courts also provide some sort of explanation when issuing summary affirmances. See, e.g., Stringer v. Wilcox, No. 23-3284, 2024 U.S. App. LEXIS 18451 (8th Cir. July 26, 2024) (“After careful de novo review of the record and the parties’ arguments on appeal, we affirm for the reasons stated by the district court.”); United States v. Parrish, No. 23-6153, 2024 U.S. App. LEXIS 18174 (10th Cir. July 24, 2024) (“Based on the Supreme Court’s decision in Rahimi, the judgment of the district court is AFFIRMED.”). Although these explanations may be minimal, they still provide more insight than a simple one-word affirmance that forces the parties and reviewing courts to play guessing games.
The chart below summarizes the jurisdictional split regarding one-word affirmances:
| Circuit Courts | Adoption of a Local Rule for One Word Affirmances | Issuance of One-Word Affirmances in Practice |
| First Circuit | No | No |
| Second Circuit | No | No |
| Third Circuit | No | No |
| Fourth Circuit | No | No |
| Fifth Circuit | Yes | Yes |
| Sixth Circuit | No | No |
| Seventh Circuit | No | No |
| Eighth Circuit | Yes | No |
| Ninth Circuit | No | No |
| Tenth Circuit | Yes | No |
| Eleventh Circuit | No | No |
| DC Circuit | No | No |
| Federal Circuit | Yes | Yes |
The Supreme Court Is Familiar with One-Word Affirmances
The current Supreme Court Justices are familiar with issues surrounding such affirmances. While sitting on their respective appellate courts, each current Supreme Court Justice (aside from Justice Kagan, who did not sit on an appellate court) decided an impressive number of cases:
| Supreme Court Justice | Circuit Court of Appeal | Years on Appellate Court | Approximate Number of Published Opinions | Approximate Number of Unpublished Opinions | Approximate Total Number of Opinions |
| Chief Justice John Roberts | D.C. | 2003-2005 | 137 | 676 | 813 |
| Justice Clarence Thomas | D.C. | 1990-1991 | 129 | 66 | 195 |
| Justice Samuel Alito | 3rd | 1990-2006 | 2,855 | 1,295 | 4,150 |
| Justice Sonia Sotomayor | 2nd | 1998-2009 | 794 | 2,424 | 3,221 |
| Justice Neil Gorsuch | 10th | 2006-2007 | 636 | 2,302 | 2,938 |
| Justice Brett Kavanaugh | D.C. | 2006-2018 | 688 | 2,858 | 3,546 |
| Justice Amy Coney Barrett | 7th | 2017-2020 | 286 | 510 | 796 |
| Justice Ketanji Brown Jackson | D.C. | 2021-2022 | 47 | 228 | 275 |
However, our review of a representative sampling of the above decisions has so far uncovered that only six of those unpublished decisions were one-word affirmances—five by Justice Alito and one by Justice Sotomayor. This statistic suggests that the Justices appreciate that the use of such one-word affirmances should be restricted to rare and appropriate cases, and not amount to a regular practice.
Furthermore, the Federal Circuit’s use of Local Rule 36 has been the subject of at least nine Petitions for Certiorari to the Supreme Court, as detailed in the chart below:
| Case Name | Year Petition Filed | Docket Number | Question(s) Presented with Respect to Federal Circuit’s Local Rule 36 |
| Schwendimann v. Neenah, Inc. | 2024 | No. 23-1023 | Should Patent Owners be notified of the basis upon which their valuable patent rights are stripped away from them? |
| Virentem Ventures, LLC v. Google LLC | 2023 | No. 22-803 | Does the Federal Circuit’s use of Rule 36 to affirm without opinion PTAB invalidity determinations that are challenged based on pure questions of law violate a patentee’s due process rights through arbitrary or disparately applied results?
Did the Federal Circuit’s use of Rule 36 to affirm without opinion PTAB invalidity determinations of Virentem’s patents violate its due process rights? Did the PTAB’s adoption, and Federal Circuit’s summary affirmance, of broad constructions of Time Scale Modification and other claim terms over Virentem’s explicit narrowing definitions, violate the Federal Circuit’s own law and precedents on claim construction in such circumstances? Does the Federal Circuit’s use of Rule 36 to affirm without opinion decisions from the PTAB violate the requirement of 35 U.S.C. § 144 that the Federal Circuit “shall issue to the Director its mandate and opinion”? |
| Manivannan v. Department of Energy | 2022 | No. 22-150 | 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. |
| Bobcar Media, LLC v. Aardvark Event Logistics, Inc. | 2021 | No. 21-158 | Whether the Court should resolve the circuit split under Federal Rule of Appellate Procedure 36 (wherein a minority of circuit courts issue judgments without any explanation of their decisions), and elucidate whether or not the use of one-word affirmances has constitutional and statutory boundaries.
Whether the Federal Circuit’s extensive use of its Rule 36, to enter judgments which extinguish constitutional rights and private property rights without any explanation, violates constitutional and statutory protections, principles of right and justice, and this Court’s supervisory authority. Whether Federal Circuit Rule 36(a)(3) violates constitutional principles, such as the Seventh Amendment, Due Process, and Equal Protection, by authorizing panels to affirm summary judgment decisions denying jury trials, without any explanation whatsoever, and irrespective of the rules and rights in the circuit from which the case was appealed. |
| Fote v. Iancu | 2019 | No. 19-1129 | 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. |
| SPIP Litigation v. Apple, Inc. and Cisco Systems, Inc. | 2019 | No. 19-253 | Whether Rule 36(e) of the Federal Circuit’s Rules of Procedure violates the Fifth Amendment by authorizing panels of the Federal Circuit to affirm, with no explanation whatever, a District Court judgment resolving only issues of law. |
| Franklin-Mason v. United States | 2018 | No. 17-1256 | Whether the Court should exercise its power of supervisory review to resolve the circuit split created by Federal Rule of Appellate Procedure 36, which allows a minority of circuit courts to issue one-word affirmances of district court opinions without any explanation of the basis for the affirmance?
Whether the circuit split created by Federal Rule of Appellate Procedure 36, which allows a minority of circuit courts to issue unexplained judgments, violates the Due Process and Equal Protection clauses of the Fifth and Fourteenth Amendments to the United States Constitution by denying meaningful appellate review to a class of litigants based solely on the random accident of geography? |
| In Re: Celgard, LLC | 2017 | No. 16-1526 | Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals?
Whether the Federal Circuit’s pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”? |
| Leon Stambler, v. Mastercard International Inc. | 2018 | No. 17-1140 | Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals. |
In addition to the cases listed above, petitioners brought Federal Circuit’s Local Rule 36 to the Supreme Court’s attention at least one additional time, in Traxcell Technologies, LLC v. AT&T Inc., where the issue was raised in argument. Petition for Cert. at 21-22, 144 S. Ct. 574 (2024) (No. 23-1436) (cert. denied). (“The Rule 36 affirmance by the Panel unfortunately is likely to discourage further review and thus further compound the procedural unfairness of the Panel’s decision.”).
The list of recent challenges to the Federal Circuit’s Rule 36 practice should impress upon the Supreme Court Justices the extent to which the Federal Circuit’s overuse of such affirmances has become systemic.
Why the Supreme Court Should Decide the Rule 36 Jurisdictional Split
It is imperative that the public and the parties be informed of the basis of a decision. When an appellate court affirms without an opinion, it is difficult for anyone to understand the actual basis for the court’s ruling. This is especially true in cases involving multiple grounds. Parties are left with uncertainty and the inability to properly determine their next best course of action. As the Ninth Circuit has states, the failure to provide reasoning behind a decision “increases the danger that litigants, whether they win or lose, will perceive the judicial process to be arbitrary and capricious.” Couveau, 218 F.3d at 1080. Further, the Seventh Circuit has explained that providing reasoning “forces a judge to think about and reconcile the pros and cons of alternate courses of actions . . . and assures . . . the court has carefully exercised its discretion.” Crotty v. Chi. Heights, No. 90-2572, 1991 U.S. App. LEXIS 19093, at *11-12 (7th Cir. Aug. 14, 1991).
Many judges agree that providing the reasoning behind court decisions is necessary. As former D.C. Circuit Judge Patricia Wald wrote in a law review article, “virtually every appellate decision requires some statement of reasons.” Patricia M. Wald, The Problem with the Courts: Black-robed Bureaucracy, or Collegiality under Challenge?, 42 Md. L. Rev. 766 (1983) Available at: http://digitalcommons.law.umaryland.edu/mlr/vol42/iss4/8. She added that “[t]he discipline of writing even a few sentence or paragraphs explaining the basis for the judgment insures a level of thought and scrutiny by the court that a bare signal of affirmance, dismissal, or reversal does not.” Id. Similarly, former Federal Circuit Chief Judge Paul Michel, during an interview with Eileen McDermott, editor-in-chief of IPWatchdog, Inc., remarked that he “consider[s] it a dereliction of duty [for the Federal Circuit] not to explain their reasoning . . . in order to remain consistent with their mission to clarify the patent law.” Eileen McDermott, Chief Judge Paul Michel: Patent Reform Progress is Likely, but we Must Stay Focused on the Big Picture, IPWatchdog (Sept. 15, 2019, 12:15 PM), https://ipwatchdog.com/2019/09/15/chief-judge-paul-michel-patent-reform-progress-likely-must-stay-focused-big-picture/id=113326/.
It is time for the Supreme Circuit to step in and resolve this circuit split.
* Messrs. Macedo and Dellaportas were counsel on a Combined Petition in Support of Rehearing and Rehearing En Banc in Island Intellectual Property LLC v. TD Ameritrade, Inc., Nos. 2023-1318, -1441 (Fed. Cir. June 18, 2024) that raises this issue. Mr. Macedo is a partner, Mr. Goldberg is Senior Counsel, Mr. Hart is an associate, and Ms. Zipper is a law clerk at Amster, Rothstein & Ebenstein LLP. Mr. Dellaportas is a partner at Emmet, Marvin & Martin, LLP.