From Chief Judge Markey’s Promise to Rule 36: We Do Not Just Render One-Worded Decisions

Patent

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:

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.

 

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