by Dennis Crouch
In a recent batch of Rule 36 summary affirmances, the Federal Circuit disposed of several complex patent cases without written opinions. This continues to raise serious questions in my mind about the court’s ongoing reliance on this practice. While some judges defend Rule 36 affirmances as appropriate for easy to see “losers,” an examination of these recent cases reveals sophisticated legal issues involving millions of dollars in dispute. For instance, in Lu v. Hyper Bicycles, the court declined to address important questions the quantum of evidence needed to survive summary judgment in design patent cases, while Wilson v. Corning presented novel issues regarding jury trial rights for hybrid legal-equitable claims under the Seventh Amendment.
I have previously argued that 35 U.S.C. § 144’s “shall issue” language requires the court to issue an opinion in appeals from USPTO proceedings. But, the court has continued the practice. In In re Google, the court summarily affirmed the PTAB’s rejection of claims related a system for hot-news detection. This is a case where Google retaining top appellate counsel to challenge the Board’s obviousness analysis. Similarly, in Maxell v. Amperex, the court passed on an opportunity to provide needed on analogous art determinations, a key confusing aspect of obviousness decisions.
While I don’t think these cases are generally clear losers, I have found that they are more likely to involve detailed factual records, particularly in IPR appeals where technical minutiae abound. So, I can understand why the court may be reticent to delve into the difficult cases — except that is the role of the judges. And, the court should not permit the PTAB to avoid review via complexity. The Federal Circuit’s handling of Shell v. Scientific Design exemplifies this concern – rather than grappling with important questions about the Board’s ability to fill gaps in petitioner’s obviousness arguments, the court opted for summary affirmance without any opinion. This approach not only deprives the patent community of valuable precedent but also raises questions about whether the court is fully engaging with the challenging factual determinations underlying many patent appeals. For me, the very process of writing often reveals analytical gaps or inconsistencies that were not apparent during my initial consideration of an issue. Judges need to explicitly connect their reasoning from premise to conclusion, and that can be evaded via summary affirmances.
Written opinions serve multiple crucial functions – they force judges to articulate their reasoning, provide guidance to the patent community, and ensure transparency in judicial decision-making. While summary affirmance may be appropriate in truly straightforward cases, the sophisticated nature of these recent Rule 36 dispositions shows that the court is overusing this tool at the expense of its fundamental duty to explain and develop patent law.
I’ve gone through the appellant’s briefing of eight of the R.36 cases issued thus far in 2025, and I think these cases do a good job of illustrating the range and complexity of issues being disposed of through Rule 36 affirmances, each presenting questions that would have benefited from reasoned analysis by the court. I also want to be clear that am not arguing that the court got the outcome wrong in these — just that we need a few words explaining and justifying the outcome.
Lu v. Hyper Bicycles, Inc. 24-1081.
This case centers on two design patents – U.S. Design Patent Nos. D529,842 and D556,642 – covering ornamental designs for bicycles. The district court granted summary judgment to Hyper Bicycles, finding that Lu failed to present sufficient evidence of infringement or damages. Lu appealed, arguing that the district court improperly discounted both deposition testimony from Hyper’s CEO acknowledging the designs were “based upon the drawings” in Lu’s patents and Hyper’s own counterclaim statements about selling the accused products. The procedural posture is somewhat unusual, as the case involved minimal discovery despite spanning nearly three years, with Lu conducting no written discovery or depositions before summary judgment.
The appeal raised interesting questions about the quantum and nature of evidence required to defeat summary judgment in design patent cases. Lu argued that CEO Clay Goldsmid’s deposition testimony from separate litigation, combined with Hyper’s judicial admissions in its counterclaim about manufacturing and selling the accused products “from 2016 forward,” created genuine disputes of material fact precluding summary judgment. The district court found this evidence insufficient without additional proof of actual sales or damages, but Lu contended this improperly elevated the summary judgment standard. This intersects with ongoing debates about what constitutes sufficient evidence of design patent infringement at various litigation stages.
A Rule 36 affirmance seems particularly inappropriate here given the sparse precedent on evidentiary requirements for surviving summary judgment in design patent cases. The Federal Circuit could have provided valuable guidance on several key issues: (1) the role of a defendant’s admissions about using patented designs; and (2) whether proof of specific sales is required at summary judgment when the defendant acknowledges manufacturing accused products. Even a non-precedential opinion addressing these points would have aided district courts and practitioners in future design patent disputes. The court’s silence leaves uncertainty about whether Lu’s evidence was legally insufficient or merely inadequate on these specific facts.
The district court’s opinion of non-infringement is notable for a lack of analysis of non-infringement. But, the case appears straightforward that could basically go to a jury quickly and the record shows that Hyper’s own officer admitted in deposition testimony that their MotoBike and SpeedBike designs were “based upon the drawing[s]” in Lu’s design patents – an admission that should have created, at minimum, a genuine issue of material fact regarding infringement. The court’s emphasis on Lu’s failure to conduct extensive discovery or retain expert witnesses seems misplaced in a simple design patent case. Lu, an individual inventor from Taiwan, was seeking to enforce rights against a company that essentially acknowledged copying his designs. The district court subsequently awarded attorney fees to Hyper, an issue that is now also on appeal to the Federal Circuit.
Wilson v. Corning, No. 24-1065
This appeal stems from a complex dispute over cell culture technology between Wilson Wolf Manufacturing and Corning, centering on allegations that Corning misappropriated confidential information shared under an NDA to develop its HYPERFlask and HYPERStack products. After a three-week bench trial, the district court found for Corning on all claims, including trade secret misappropriation, breach of contract, and correction of inventorship under 35 U.S.C. § 256. Wilson v. Corning Inc., No. 0:13-cv-00210-DWF-TNL (D. Minn. Sept. 25, 2023). A key procedural issue on appeal was whether the district court erred in denying Wilson Wolf a jury trial, given Supreme Court precedent establishing that the Seventh Amendment requires jury trials for legal remedies even when joined with equitable claims.
The appeal raised significant questions about the intersection of trade secret, contract, and patent law – particularly regarding whether disgorgement of profits constitutes legal or equitable relief for Seventh Amendment purposes. The district court characterized Wilson Wolf’s damages theories as purely equitable disgorgement claims, but Wilson Wolf argued this mischaracterized their compensatory damages theory based on a reasonable royalty analysis. This presents an important and recurring issue in intellectual property cases about how to classify hybrid damages theories that reference a defendant’s profits as a measure of plaintiff’s loss. The Federal Circuit has previously recognized that reasonable royalty damages are “undisputedly legal” remedies requiring jury trials, even when calculated with reference to an infringer’s profits. Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., 895 F.3d 1304, 1320 (Fed. Cir. 2018).
A Rule 36 affirmance was particularly inappropriate here given the need for guidance on how courts should analyze jury trial rights when damages theories blend legal and equitable elements. The briefs reveal significant confusion in the district courts about whether unjust enrichment claims under the Uniform Trade Secrets Act are legal or equitable for Seventh Amendment purposes. Written analysis could have helped clarify how courts should classify damages theories that use a defendant’s profits as a reasonable approximation of plaintiff’s losses rather than as pure disgorgement. Additionally, the inventorship claims raised complex questions about when factual overlap between legal and equitable claims requires trying common issues to a jury first. Given the frequency with which these jury trial issues arise in patent and trade secret cases, the Federal Circuit missed an opportunity to provide much-needed guidance to district courts and litigants.
In re Google, 23-2119
This appeal arose from the USPTO’s rejection of Google’s patent application directed to systems and methods for detecting trending topics in social media data streams. The key innovation involves analyzing microblog (e.g., X or Bluesky) activity to determine when to surface social media content in search results based on detecting “spikes” in activity through sophisticated time-series analysis. This is effectively a strategy for identifying “hot news.” Application No. 15/394,586. The PTAB affirmed the examiner’s obviousness rejection.
The appeal centered on a fundamental dispute over claim interpretation and prior art teaching. Google argued that Koudas taught only a user-specified “minimum frequency threshold” rather than the claimed system-determined threshold based on analyzing residuals (differences between predicted and actual values) in time-series data. The PTAB and examiner attempted to bridge this gap by cobbling together disparate teachings about Koudas’s “surprise” scoring function and “interestingness” metrics, without addressing the explicit definition of Koudas’s threshold as frequency-based or explaining how a skilled artisan would have been motivated to modify it. This raised important questions about proper obviousness analysis under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), particularly regarding whether an examiner can rely on implicit suggestions to combine teachings when a reference expressly defines a term in a way that conflicts with the proposed combination.
Although this is an admittedly a narrow case — it is also a multi-million-dollar case with Google hiring top appellate attorneys from Williams & Connolly, including Andrew Trask. I am reminded that the PTAB would have reversed the examiner if she had failed to provide a written rejection; and the Federal Circuit would have reversed the PTAB if it had failed to provide a written opinion. But, the Federal Circuit has no active supervisor with the Supreme Court being kept busy saving federalism.
Maxell v. Amperex Technology, No. 2023-2285 (Fed. Cir. 2024)
This appeal from the PTAB involves the complex intersection of analogous art determinations and obviousness as they relate to battery separator technology. The PTAB found all claims of Maxell’s U.S. Patent No. 9,166,251 unpatentable as obvious based primarily on combinations including Japanese publication JP2003-306594 (“Amagi”), which describes epoxy resin compositions for rotating machines like electric motors. The key dispute centered on whether Amagi qualifies as analogous art to the ‘251 patent, which claims a multilayer battery separator using specific heat-resistant particles to prevent thermal shrinkage and improve battery safety. The Federal Circuit’s analogous art jurisprudence, stemming from In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004), requires references to be either from the same field of endeavor or “reasonably pertinent” to the problem faced by the inventor.
The appeal raised a significant challenge to the PTAB’s analogous art analysis, highlighting tensions in how broadly to define the relevant problem when assessing reasonable pertinence. Maxell argued that the Board improperly focused on superficial similarities in the use of particle materials while ignoring the fundamentally different contexts and purposes – Amagi sought to dissipate heat from motor coils using thermally conductive particles in epoxy resin, while the ‘251 patent aimed to prevent battery separator shrinkage using heat-resistant particles in a distinct layer. The Board’s finding that both references broadly related to “heat resistant materials and insulating materials” risks expanding reasonable pertinence beyond meaningful bounds. This resembles the overbroad “common sense” approach rejected in cases like In re Klein, 647 F.3d 1343 (Fed. Cir. 2011), which emphasized the importance of comparing the specific problems addressed.
The Federal Circuit’s choice to affirm without opinion under Rule 36 is particularly problematic here given the recurring importance of analogous art determinations as part of the obviousness inquiry and the need for clear guidance on avoiding hindsight in defining the relevant problem. The Board’s reasoning could be read to suggest that any reference involving similar materials might qualify as analogous art, regardless of vastly different uses and contexts – a concerning precedent for future cases.
In re Soto, 23-2008
The Federal Circuit has affirmed without opinion the PTAB’s rejection of the Sotos’ claims directed to a “Local Area Network (LAN) client for a passive optical LAN.” The case, argued by noted appellate attorney Kevin Lawrence, presents an interesting intersection of networking protocols and patent law, with the applicants (the Soto brothers) challenging the Board’s combination of Husbands (US Patent No. 4,781,427) and Yuki (US Patent No. 6,778,557). The Board had found the claims obvious, focusing particularly on Husbands’ disclosure of a peer-to-peer CSMA/CD network and Yuki’s teaching of a master-slave protocol for bandwidth allocation. The appeal raised fundamental questions about the proper analysis of obviousness combinations under 35 U.S.C. § 103, particularly where references embody fundamentally different architectural approaches to solving network communication challenges.
The case highlights a critical tension in obviousness jurisprudence – when does combining references with divergent underlying principles render their combination non-obvious? The Sotos presented detailed technical arguments about why one skilled in the art would not have combined Husbands’ peer-to-peer architecture with Yuki’s master-slave protocol, arguing this would have rendered Husbands inoperable for its intended purpose. The Board dismissed these arguments as “not commensurate with the scope of the claims,” seemingly missing their relevance to the fundamental question of whether the combination would have been obvious to one skilled in the art.
Shell USA v. Scientific Design, 23-1937
This appeal arose from three inter partes review (IPR) proceedings where the PTAB found claims of Shell’s catalyst patents (U.S. Patent Nos. 8,084,390, 8,357,813, and 8,357,825) unpatentable as obvious. The patents cover catalysts used in olefin epoxidation reactions, claiming carriers with particular surface area and pore size distribution characteristics. The Board relied primarily on two references – Lockemeyer and Liu – finding that while Lockemeyer disclosed the claimed surface area but not the pore size distribution, Liu’s carriers had the claimed pore size distribution but lower surface areas. Shell appealed, arguing the Board violated the Administrative Procedure Act by adopting an obviousness rationale never advanced by Scientific Design and that the Board’s findings lacked substantial evidence.
On appeal, Shell contended that the Board improperly filled gaps in Scientific Design’s obviousness case by finding that a skilled artisan “would have been motivated and able to maintain the surface area within the claimed range while optimizing the sub-PSD range” – a theory Scientific Design never presented. The Federal Circuit has previously held that the Board must base its decision on arguments advanced by a party, but the boundaries of this principle remain unclear, particularly in cases involving technical modifications to prior art references.
Ward Participations v. Samsung, 24-1065
In this appeal, Ward Participations challenged adverse PTAB decisions against its patents directed to secure electronic transaction systems unpatentable. The patents at issue (US 10,992,480 and US 11,063,766) claim methods for conducting secure transactions by storing authentication data and software in locations inaccessible to the operating system. The PTAB found claims obvious over prior art combinations centered on Ellison (US 7,082,615) and Muir (WO 01/93212), while also determining that certain claims lacked written description support under 35 U.S.C. § 112(a). The case presents interesting questions about the relationship between operating systems, secure execution environments, and authentication in computerized transactions. In reading the briefs, I found the written description issue most interesting – whether the specification’s disclosure of software IDs and encryption keys provided sufficient support for the claimed private key limitations.
While the Rule 36 affirmance may have been expedient, this case warranted at least a brief written opinion. That said, the relatively straightforward nature of the PTAB’s claim construction analysis and Ward’s difficulty articulating clear error in the Board’s factual findings may help explain, if not fully justify, the Federal Circuit’s summary disposition. This appeal was also brought by William Ramey who has been struggling in recent cases before the courts.
Lynk Labs v. Home Depot, No. 23-2185
Home Depot had challenged claims Lynk Lab’s U.S. Patent No. 10,932,341 directed to multi-voltage LED lighting devices. The Board found several claims impossible and therefore lacking written description, enablement and definiteness under 35 U.S.C. § 112. The case turned on whether claims requiring “a switch” that is both “part of the LED lighting device” and “connected between the AC voltage power source and the LED lighting device” are physically impossible, and whether claims reciting “two different DC forward voltages” to an LED circuit are impossible given the Board’s construction of “forward voltage” as a single minimum threshold value. Notably, on the same day the Federal Circuit issued this Rule 36 affirmance, it also issued a precedential opinion in the related case Lynk Labs v. Samsung addressing whether published patent applications can serve as prior art in IPRs as of their filing dates.
In my view, the appeal here raises important questions about how impossibility determinations should be made in patent cases, particularly when they are legal impossibility arguments stemming from claim construction rather than scientific or technical limitations. The patentee argued on appeal that the construction contradicts intrinsic evidence showing multiple operating voltages as well as extrinsic evidence from LED datasheets demonstrating that LEDs routinely operate across a range of forward voltages. The Federal Circuit has rarely addressed impossibility as a basis for § 112 invalidity, making this case an important opportunity to clarify the analytical framework.