The Federal Circuit’s Oracle: When Silence Speaks Louder Than Words

by Dennis Crouch

The Supreme Court currently has two cases that each provide opportunity to address a longstanding problem with the Federal Circuit’s practice of issuing no-opinion summary affirmances in patent cases. In ParkerVision v. TCL Industries Holdings Co., No. 24-518, and Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461, the petitioners challenge the Federal Circuit’s use of Rule 36 judgments – where the court simply affirms the lower tribunal’s decision without any written opinion. Both petitions are well drafted by expert counsel and both have recently received strong amicus support.

The cases present the issue from different angles. ParkerVision focuses on appeals from the Patent Trial and Appeal Board (PTAB), arguing that the Federal Circuit’s use of Rule 36 violates 35 U.S.C. § 144’s explicit requirement that the court “shall issue . . . its mandate and opinion” when deciding appeals from the Patent Office. The case arose after the Federal Circuit summarily affirmed PTAB decisions invalidating ParkerVision’s wireless communication technology patents. Island IP, on the other hand, challenges a Rule 36 affirmance of a district court’s summary judgment invalidating its patent under 35 U.S.C. § 101. Island IP argues that the one-word affirmance masked the district court’s failure to properly apply summary judgment standards to disputed factual issues underlying the eligibility determination.

Both cases highlight how the Federal Circuit’s frequent use of Rule 36 undermines transparency and accountability in patent law. In ParkerVision’s case, the practice allows the court to sidestep its statutory duty to oversee administrative patent judges through reasoned decision-making. For Island IP, the summary affirmance obscures whether the court properly reviewed the district court’s handling of disputed factual evidence in the summary judgment context.

The timing of these petitions is particularly significant, as both cases have recently received substantial amicus support highlighting distinct but complementary concerns about the Federal Circuit’s Rule 36 practice. In ParkerVision, two friend-of-the-court briefs filed on November 20, 2024, emphasize national security implications and statutory interpretation. Meanwhile, in Island IP, three briefs amici were filed on November 22, 2024, along with a responsive brief on opposition. These parallel sets of briefs provide the Court with robust arguments for why intervention is needed to address what many view as a troubling lack of transparency in patent appeals.

ParkerVision

Two amicus briefs filed on November 20, 2024 provide substantial support for ParkerVision’s petition. The first brief, from the Fair Inventing Fund emphasizes the statutory interpretation argument, while Injustice Pool focuses on national security implications and Chinese technology companies’ strategic use of IPR proceedings.

The Statutory Violation Argument: The Fair Inventing Fund brief provides a thorough textual and historical analysis of 35 U.S.C. § 144’s opinion requirement. The brief traces the provision’s lineage back to similar requirements in the Tucker Act of 1887 and the 1929 statute that vested patent appeal jurisdiction in the Court of Customs and Patent Appeals. As the brief explains: “Congress’s decision to include the ‘same language’ requiring an opinion in the 1929 Act and, later, in § 144 signals an intent to ‘incorporate’ that settled judicial interpretation.” This historical context strengthens ParkerVision’s core argument that Congress intended “opinion” to mean a written explanation of reasons.

The brief emphasizes that courts consistently interpreted similar statutory language to require explanatory opinions. For instance, in Rogers v. Hill, 289 U.S. 582, 587 (1933), the Supreme Court defined a judicial “opinion” as the “statement of the reasons on which the judgment rests.” The Federal Circuit’s own precedent acknowledges that Rule 36 judgments “are not opinions” and provide no explanatory reasoning. Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed. Cir. 2012).

The National Security Dimension: The Injustice Pool brief highlights the reality that the U.S. economy and patent system are both operating on a global scale.  The brief focuses particularly on how Chinese companies have strategically used IPR proceedings combined with Rule 36 affirmances to take advantage American technology. The brief notes that “Chinese companies are filing hundreds of IPR petitions at the PTAB to invalidate the patent rights of American small businesses.” It singles out TCL Industries – the respondent in this case – as “one of the very worst offenders in this field of economic warfare.”

The brief cites government investigations into TCL, noting the company has been placed on the Entity List by the Bureau of Industry and Security and was blocked by CFIUS from acquiring Novatel Wireless due to national security concerns. This context suggests that the Federal Circuit’s summary affirmance practice may inadvertently aid strategic technology transfer to foreign adversaries by reducing transparency and oversight of PTAB invalidation decisions.

The Scale of the Problem: Both briefs emphasize the widespread nature of the Federal Circuit’s Rule 36 practice in PTAB appeals. According to statistics cited in the Fair Inventing Fund brief, the Federal Circuit has used Rule 36 to summarily affirm PTAB decisions approximately 580 times since 2015, representing nearly 43% of such appeals.

Institutional Legitimacy Concerns: The briefs also highlight how Rule 36 affirmances undermine confidence in both the Federal Circuit and PTAB. The Fair Inventing Fund notes that a 2022 GAO study found that a majority of PTAB judges felt pressured to change their decisions based on comments from political appointees. Without transparent appellate review explaining the reasons for decisions, there is reduced accountability in the system.  The Injustice Pool brief argues that summary affirmances particularly advantage well-resourced parties who can file multiple IPR petitions. The brief estimates that patent infringement by Chinese companies alone costs the U.S. economy between $500 million to $2.8 billion annually, citing a U.S. International Trade Commission report.

TCL has waived its right to respond in the case, but the Supreme Court has not yet placed the case on its calendar for deciding whether to move forward with the petition.

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Island Intellectual Property

The Island IP petition has garnered substantial amicus support, with three friend-of-the-court briefs and also a responsive brief from Ameritrade all filed in late November 2024. These submissions highlight distinct but complementary concerns about Federal Circuit practice, particularly focusing on the court’s frequent use of Rule 36 affirmances in patent cases.

The Boston IP Law Association (BIPLA) Institutional Legitimacy Arguments: BIPLA’s brief emphasizes fundamental concerns about institutional legitimacy in the Federal Circuit’s Rule 36 practice. Drawing on Justice Scalia’s writings about judicial legitimacy, BIPLA presents a compelling argument that “a decision without principled justification would be no judicial act at all.” See Planned Parenthood v. Casey.

The BIPLA brief brings powerful empirical evidence to bear, citing research showing that the Federal Circuit issues one Rule 36 decision for approximately every 2.7 opinions—a rate that far exceeds other circuits. The brief is especially critical of how Rule 36 affirmances are employed in patent eligibility challenges. As BIPLA explains, these summary affirmances are particularly problematic when dealing with “murky” issues like subject matter eligibility, where the proper application of the law is still evolving. In Island IP’s case specifically, the brief notes that the company presented over 1,400 pages of evidence demonstrating the unconventional nature of its patented processes—evidence that received no explicit consideration in the Federal Circuit’s summary affirmance.

The Harris Brumfield Brief: A Inventor’s Perspective: Brumfield is one of the inventors behind Trading Technology and brings a unique perspective to the debate, drawing on his direct experience as a renowned inventor in electronic trading. Brumfield’s personal stake in the issue stems from his own experience with patent eligibility determinations, having an electronic trading GUI tool in the early 2000s that “permitted faster and more accurate trading at a trader’s intended price.”  While some of Brumfield’s patents were previously ruled eligible by the Federal Circuit, two others were later found ineligible in a Federal Circuit summary affirmance—despite over 800 pages of uncontroverted evidence about the technology’s unconventional nature. The brief’s key legal argument is that the Federal Circuit’s approach violates fundamental summary judgment principles.

I expect that Brumfield will file his own petition to the Supreme Court in January focusing on electronic innovation eligibility.

Association of Amicus Counsel Statutory Analysis:  AAC argues that the Federal Circuit’s practice of issuing “no opinion” Rule 36 affirmances in patent cases fails to meet basic due process requirements and undermines the court’s central mission of developing consistent patent law precedent. The brief notes that the Federal Circuit uses Rule 36 affirmances far more frequently than other circuit courts, and argues this practice is particularly inappropriate in patent eligibility cases that require careful analysis under the Supreme Court’s Mayo/Alice test. When the Federal Circuit summarily affirms a district court’s patent invalidity decision without explanation, parties are left with no understanding of how the appellate court evaluated the evidence or applied the law.

A key argument in the brief focuses on the specific harm caused in this case, where the district court invalidated Island’s patent through summary judgment without conducting a complete Mayo/Alice analysis or properly considering the extensive factual record supporting patent eligibility. The AAC contends that the Federal Circuit’s one-word affirmance effectively rubber-stamped this flawed analysis, depriving Island of its constitutional due process rights and right to a jury trial on disputed factual issues. The brief emphasizes that patent holders are entitled to know how courts evaluate evidence when their property rights are at stake.

The AAC urges the Supreme Court to resolve what it characterizes as a circuit split regarding the use of summary affirmances, arguing that the Federal Circuit’s frequent use of Rule 36 creates uncertainty and inconsistency in patent law. The brief points to a statutory conflict regarding PTAB appeals, where 35 U.S.C. § 144 requires the Federal Circuit to issue an opinion, yet the court still sometimes disposes of such appeals through Rule 36.  Although Island IP does not directly raise the Section 144 issue, ACC suggests that the Supreme Court also consider ParkerVision as a companion case.

TD Ameritrade’s Response: TD Ameritrade’s responsive brief presents a forceful defense of the Federal Circuit’s Rule 36 practice, arguing that it is both legally proper and well-established. The brief points to the Supreme Court’s repeated denial of Rule 36 petitions over the past five years and notes the Court’s prior statement that appellate courts have wide latitude as to “whether or how to write opinions.”  Taylor v. McKeithen, 407 U.S. 191 (1972).  The brief also focuses on the merits – arguing that Island IP’s patent claims are materially indistinguishable from those found ineligible in Alice Corp. because the invention is simply an implementation of fundamental economic practices (managing aggregated bank accounts and calculating interest) on generic computers.