The Federal Circuit’s Blind Spot: ParkerVision and the Problem of Invisible Reasoning

by Dennis Crouch

Two more amicus briefs have been filed in support of ParkerVision’s petition challenging the Federal Circuit’s Rule 36 practice of issuing summary affirmances of USPTO appeal without opinion. Courts typically provide written explanations for their decisions – it’s a fundamental aspect of our judicial system that helps ensure accountability, enable meaningful review, and develop precedent. Yet the Federal Circuit has been issuing one-word affirmances in nearly half of its patent cases, leaving parties and the public in the dark about its reasoning. While this practice would be concerning in any context, ParkerVision’s petition raises a more precise challenge: 35 U.S.C. § 144 explicitly requires the Federal Circuit to “issue to the Director its mandate and opinion” in appeals from the Patent Office. Two new amicus briefs have been filed supporting ParkerVision’s argument that the court’s Rule 36 practice of issuing summary affirmances without opinion violates this statutory mandate.

Petition and Amicus Briefs in ParkerVision v. TCL:

• Petition for Writ of Certiorari (Nov 4, 2024) View Petition
• Injustice Pool, LLC (Nov 20, 2024) View Brief
• Fair Inventing Fund (Nov 20, 2024) View Brief
• Phyllis Schlafly Eagles and Eagle Forum Education & Legal Defense Fund (Dec 2, 2024) View Brief
• Bar Association for the District of Columbia (Dec 3, 2024) View Brief

The Bar Association of the District of Columbia: A Voice for IP Practitioners

The BADC, through its Intellectual Property Section, brings the perspective of practitioners who regularly appear before both the USPTO and Federal Circuit. Their interest stems from their members’ need for clear precedent and guidance in advising clients. The BADC’s brief presents a compelling statutory analysis of why Rule 36 violates 35 U.S.C. § 144’s opinion requirement.

The BADC emphasizes that Rule 36’s very title – “Judgment of Affirmance Without Opinion” – contradicts the statutory mandate. As they note, “If AFFIRMED were considered to be an opinion, it would provide an analysis or explanation of the affirmance, just like an opinion would for a reversal or denial.” The brief methodically analyzes how federal court rules and statutes consistently distinguish between “opinions” and mere “orders” or “judgments.”

Most strikingly, the BADC documents how the Federal Circuit’s approach represents a break from historical practice. Before Rule 36, the court required opinions in every case, following the practice of its predecessor, the Court of Customs and Patent Appeals. “Issuing opinions in every case was the standard, reflecting the practices of the Federal Circuit’s predecessor, the Court of Customs and Patent Appeals.”  The brief cites statistics showing that through 2023, 43% of appeals from PTAB proceedings were disposed of through Rule 36 affirmances – a practice they argue “compromise[s] the role of the Federal Circuit as the single appellate court for patents.”

Phyllis Schlafly Eagles: National Security Implications

The Eagle Forum bring a distinctive conservative and national security perspective to the debate. Their interest stems from Phyllis Schlafly’s longstanding advocacy for individual inventors’ rights, which she viewed as “essential to our national security and prosperity.”

The brief frames the case within current national security concerns about technology transfer to China, specifically highlighting how Rule 36 affirmances may inadvertently aid strategic technology acquisition. The brief notes that wireless technology – the subject matter of ParkerVision’s patent – was identified by the Office of the President in February 2024 as one of the “Critical and Emerging Technology (CET) Subfields” that are “potentially significant to U.S. national security.”

According to the brief, Chinese companies have developed a sophisticated strategy of challenging U.S. patents through PTAB proceedings, particularly in critical technology sectors. When these PTAB decisions are summarily affirmed without explanation through Rule 36, it creates a dangerous opacity in areas of vital national interest. The brief cites a 2024 U.S.-China Economic and Security Review Commission report warning about “continuing erosion to China of American innovation essential to the prosperity of the United States.” The lack of written opinions makes it impossible to track patterns or identify potential systemic issues in how foreign challenges to U.S. patents are handled.

If this foreign exploitation of American intellectual property, by a country widely recognized as hostile to the United States, is to be permitted by a federal appellate court, then at least its rationale should be disclosed for full public review, criticism, checks and balances in our system of government and, if desired, further legal challenge to the reasoning or arbitrariness behind the decision.

While I believe that the brief overstates the case here somewhat – the lack of transparency is certainly concerning.

The brief specifically targets TCL Industries, the respondent in this case, noting that 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.” Yet when TCL successfully challenged ParkerVision’s patent rights to critical wireless technology, the Federal Circuit provided no explanation for affirming that decision.

Patents are at least a small part of our complex geopolitical world, and the brief argues that a U.S. court should not silently and secretly permit foreign exploitation of American intellectual property. Rather, those decisions demand particular transparency and explanation. “Congress should not need to resort to subpoenaing panel members of the Federal Circuit to obtain answers to why, for example, they allow a China-owned company to exploit an American-patented invention.”

Due Process

Both briefs emphasize how Rule 36 undermines fundamental principles of judicial transparency and accountability. The BADC argues that Rule 36 frustrates meaningful Supreme Court review by providing no basis to assess whether a case presents an important question of federal law or conflicts with relevant decisions. The Schlafly Eagles brief adds that Congress itself is hampered in its oversight role when it cannot understand the Federal Circuit’s rationale for decisions affecting vital national interests.  These two new briefs are added to the support from the Fair Inventing Fund and Injustice Pool that I discussed last week.  Dennis Crouch, The Federal Circuit’s Oracle: When Silence Speaks Louder Than Words, Patently-O (November 2024).

Respondents TCL and LG have both waived their right to respond, and so I expect that the Supreme Court will place the case on its calendar in the upcoming weeks.

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ParkerVision is represented by Amit Vora of Kasowitz Benson Torres. On the respondent side, TCL Industries Holdings is represented by Kristopher Reed of Holland & Knight, while LG Electronics is represented by David Chun of Ropes & Gray. Four amicus briefs have been filed, with counsel of record as follows: William Atkins of Pillsbury Winthrop Shaw Pittman for the Bar Association for the District of Columbia; Andrew Schlafly for the Phyllis Schlafly Eagles and Eagle Forum Education & Legal Defense Fund; Joseph Cecere of Cecere PC for Injustice Pool; and Eugene Sokoloff of MoloLamken for the Fair Inventing Fund.

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The parallel case of Island IP v. TD Ameritrade also focuses on the Rule 36 problem – particularly on how it results in a distorted analysis of summary judgment appeals.  That case is awaiting Island’s reply brief.

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In another similar case of UNM Rainforest Innovations v. ZyXEL Communications Corp., UNM Rainforest recently sought en banc review after the Federal Circuit summarily affirmed a PTAB decision invalidating patent claims related to wireless communication technology.  The petition emphasized how the PTAB’s construction rendered dependent claims superfluous and argued that a Rule 36 affirmance masked these fundamental claim construction errors. Despite these arguments, the Federal Circuit denied the petition for rehearing en banc, leaving intact the panel’s summary affirmance of the PTAB’s decision.