by Dennis Crouch
The Supreme Court currently has before it a unique opportunity to address a longstanding problem with the Federal Circuit’s practice of issuing no-opinion summary affirmances in patent cases. The recently filed ParkerVision petition presents a compelling argument that the Federal Circuit’s heavy reliance on Local Rule 36 judgments violates 35 U.S.C. § 144’s requirement that the court “shall issue… its mandate and opinion” when deciding appeals from the Patent Office. This violation has become particularly acute given the surge in appeals from Patent Trial and Appeal Board (PTAB) decisions in recent years. ParkerVision vs. TCL Indus., 24-518. While appellate opinions serve fundamental interests of human dignity and the rule of law — interests that take on special significance as here when no other Article III court has addressed the dispute — this case presents an even clearer problem because Congress has specifically mandated through Section 144 that the Federal Circuit ‘shall issue’ an opinion in appeals from USPTO decisions.
The ParkerVision petition arises from the Federal Circuit’s summary affirmance of PTAB decisions that invalidated the patentee’s claims related to wireless communication technology. After TCL and LG Electronics successfully challenged the patents via inter partes review (IPR), ParkerVision appealed to the Federal Circuit raising procedural questions about whether the PTAB improperly relied on arguments that had been waived. Rather than addressing the merits of the arguments, the Federal Circuit instead disposed of both appeals without any opinion and rather simply an “AFFIRMED” judgments under Rule 36, providing no explanation for its decisions.
The question presented thus asks:
Whether 35 U.S.C. § 144, which requires the Federal Circuit to issue ‘opinion[s]’ in PTAB appeals, is a reason-giving directive that prohibits the Federal Circuit’s practice, under Federal Circuit Rule 36(a), of summarily affirming PTAB decisions without issuing opinions.
ParkerVision vs. TCL Indus., 24-518 (petition for writ of certiorari).
More reading:
- Dennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017).
- Dennis Crouch, Patent Exceptionalism and Procedural Silence: A New Challenge to Federal Circuit Practice, Patently-O (October 2024) (discussing the Island IP petition).
- Paul R. Gugliuzza and Mark A. Lemley, Can a Court Change the Law by Saying Nothing?, 71 Vanderbilt Law Review 765 (2018)
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Jason Rantanen, Missing Decisions and the United States Court of Appeals for the Federal Circuit, 170 U. Pa. L. Rev. Online 73 (2022)
I see the “opinion” requirement within Section 144 as a legal term of art referring to a court’s written explanation of its reasoning, distinct from the judgment itself that is embodied within the statute’s mandate requirement. The provision states that “[u]pon its determination the court shall issue to the [USPTO] 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.
The requirement for a written opinion — some amount of “reason giving” — flows naturally from the Federal Circuit’s congressional mandate to bring uniformity and predictability to patent law. When Congress created the Federal Circuit in 1982, it sought to address problems of forum shopping and inconsistent application of patent law across different circuits. The court’s first Chief Judge Howard T. Markey recognized this mandate, declaring at the Federal Circuit’s First Annual Judicial Conference that “In our Court there will be an opinion explaining enough to tell you what the law is in every case” and “We do not just render a one-worded decision and go away.” And, at the time Section 144 was enacted, the opinion requirement was uncontroversial because the predecessor court, the CCPA, had always issued opinions in every patent office appeal. Without addressing the statutory requirement, the Federal Circuit, a few years later, quietly adopted Rule 36 that allowed it to do the exact thing Chief Judge Markey had denied.
In those early years, no judgment opinions were sparingly issued, but the Federal Circuit has increasingly relied on Rule 36 summary affirmances, particularly in appeals from the PTAB. According to the court’s own statistics, Rule 36 judgments now account for over 40% of merits decisions in patent appeals. This practice leaves inventors, practitioners, and the public without guidance on important questions of patent law. It also deprives patent owners of any explanation when their property rights are extinguished through administrative proceedings.
Another pending petition in Island IP v. TD Ameritrade raises similar concerns about the Federal Circuit’s summary disposition practices. There, after the district court granted summary judgment invalidating Island IP’s patent under § 101, the Federal Circuit affirmed without opinion despite substantial evidence in the record creating genuine disputes of material fact. The Island IP petition argues this both violates traditional summary judgment standards and exemplifies how Rule 36 masks important legal developments. Although I support the Island IP petition, I believe that ParkerVision has a stronger case on the Rule 36 issue because of the statutory provision that applies particularly to appeals from the USPTO.
The lack of transparency is particularly problematic in the context of inter partes review proceedings, which already raise serious due process concerns. As the Supreme Court recognized in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018), these proceedings allow an executive agency to extinguish vested patent rights through a process that combines investigative and adjudicative functions. When such property rights are at stake, due process may require that reviewing courts explain their decisions. The statutory opinion requirement also serves important notice functions given the public nature of patent rights. Much like the writing requirement for the statute of frauds, “the discipline of writing even a few sentences 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.” Petition. As Justice Brennan once wrote, this process of stating and explaining the decision “restrains judges and keeps them accountable to the law and to the principles that are the source of judicial authority.” William J. Brennan, Jr., In Defense of Dissents, 37 Hastings L.J. 427, 435 (1986).
The Federal Circuit has never directly addressed whether Rule 36 violates § 144, despite the issue being raised in numerous appeals. In cases like TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013), the court has acknowledged that Rule 36 judgments provide no explanation and should not be read as endorsing the lower tribunal’s reasoning. This makes the violation even clearer – by the court’s own admission, these are not opinions.
As I explained in my article Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017), the court’s routine use of summary affirmances threatens its institutional legitimacy and fails to fulfill its congressional mandate. Other commentators have similarly criticized the practice as abdicating the court’s responsibility to explain its decisions.
The Supreme Court should take up ParkerVision to address this important issue. The Federal Circuit’s continued violation of § 144’s opinion requirement undermines the development of patent law and deprives parties of reasoned explanation when their rights are adjudicated.
Amit Vora is counsel of record in the case and joined on the brief by Clarine Riddle and Paul Tsavoussis, all from the New York firm of Kasowitz Benson Torres LLP. Ron Daignault of Daignault Iyer LLP joined them on the brief.
In this case, the patent challenger is TCL Industries, a large Chinese state-owned corporation. TCL’s attorneys have not yet filed an appearance before the Supreme Court. Kristopher Reed and Edward Mayle of Kilpatrick Townsend represented TCL before the Federal Circuit. TCL’s responsive brief will be due in early December 2024.
Hello Professor—
While I agree with your argument about Rule 36 at a high level of generality, I do not believe, or agree, that the Supreme Court should take up the Rule 36 issue.
If we look at the plain text of 35 USC 144, which says in its entirety:
“The United States Court of Appeals for 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.”
Its predecessor statute, 28 USC 216, reads:
“The Court of Customs and Patent Appeals, on each appeal from a Patent Office decision, shall file a written opinion as part of the record and send a certified copy to the Commissioner of Patents who shall record It in the Patent Office.” June 25, 1948, ch. 646, § 1, 62 Stat. 899.
I believe the statutory language makes sense because the PTO has zero substantive rulemaking authority with respect to patentability determinations, so it’s entirely reliant on CAFC opinions. Indeed, the Manual of Patent Examination Procedure is a giant summary of CAFC and SCOTUS opinions, and Section 144 could be read as Congress guaranteeing the PTO with a wealth of judicial opinions to carry out patent examinations.
That said, the statutory language plainly says that the Director of the PTO shall receive & record the opinion, not private litigants—the phrase “to the Director” means what it says. Indeed, there is nothing in the text or the legislative history that shows Congress intended to confer a privately enforceable right to private litigants—Section 144 does not look like a stereotypical procedural or informational right statute. And without a private cause of action, the debate is an academic exercise, not a legal one.
I welcome any thoughts or feedback that you might have.
Rene
Dear Rene,
Thank you for your careful analysis of Section 144. I do agree that the PTO’s lack of substantive rulemaking authority makes the opinion requirement particularly important for its operations. But I see this as additional support for requiring opinions, rather than a limitation on who can enforce the requirement.
While I agree that Section 144’s statute requires the opinion be delivered “to the Director,” I respectfully disagree with your conclusion that this bars private enforcement. First, as explained in my article, Rule 36 judgments create a significant gap in patent jurisprudence that affects all stakeholders, not just the PTO. The Federal Circuit has repeatedly made clear that its Rule 36 judgments “are not opinions, that they offer no reasons for judgment, and that the judgments should not be read as accepting any of the reasoning or findings of the lower court.” This lack of reasoning creates uncertainty for both the PTO and the public regarding important patent law developments. Second, the statutory requirement that the opinion “shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case” reflects the longstanding recognition of the public nature of patent rights. As I noted in the article, the collective result of this is that the Federal Circuit’s judicial reasoning – even when affirming a PTO determination cancelling one or more patent claims – will likely be highly relevant to later cases involving the same or closely related inventions either in the US or abroad. The statute recognizes this by requiring the opinion be issued and placed in the publicly available patent file.
While the Director is the direct recipient, the statute’s structure suggests the opinion requirement serves broader purposes than merely guiding the PTO. The requirement flows naturally from the Federal Circuit’s congressional mandate to bring uniformity and predictability to patent law. When Congress created the Federal Circuit in 1982, its first Chief Judge Howard T. Markey recognized this mandate, declaring that “In our Court there will be an opinion explaining enough to tell you what the law is in every case.”
Regarding the predecessor statute – I agree that the law used to be clearer because it required a “written opinion.” The shift from requiring a “written opinion” to simply requiring an “opinion” appears to have been a matter of streamlining language rather than substantiating change, since an “opinion” in judicial parlance has always meant a written explanation of the court’s reasoning. This understanding is reinforced by the statute’s unchanged requirement that the opinion “be entered of record” and “govern further proceedings” – functions that necessarily require a written document. The Federal Circuit itself has repeatedly recognized this distinction, stating that Rule 36 judgments are expressly not opinions, but rather simple affirmances without explanation.
Dennis
Thanks for the article.
Something about appealing the use of a patent-related one-word decision to a judicial body that does not like to even hear patent cases, even ones related to some significant issues (e.g., 35 USC 101), that might not bode so well for this issue.
🙂