by Dennis Crouch
The Supreme Court is poised to decide whether to grant review in the pair of R.36 cases that have been pending now since last fall, ParkerVision and Island IP. These cases challenging the Federal Circuit’s practice of issuing one-word “AFFIRMED” judgments under Rule 36 without providing any explanation. ParkerVision’s reply brief was filed on February 28, 2025 rests on a straightforward statutory interpretation: 35 U.S.C. § 144 requires the Federal Circuit to “issue to the Director its mandate and opinion” when deciding appeals from the Patent Trial and Appeal Board (PTAB). I agree with ParkerVision on this point — the term “opinion” is a legal term of art that unambiguously requires a court to explain its reasoning—something a one-word affirmance plainly fails to do. What was fairly amazing about the opposition brief, filed last month by the Chinese electronics giant TCL, is the absence of any direct push-back against central statutory interpretation question. As ParkerVision notes, “Respondents concede the question presented. They do not dispute that § 144 of the Patent Act requires the Federal Circuit to decide an appeal from the Patent Trial and Appeal Board (PTAB) by issuing an ‘opinion.'”
The reply cites foundational statutory interpretation principles from Bostock v. Clayton County, 590 U.S. 644 (2020), emphasizing that judges “are not free to overlook plain statutory commands” and that this statutory directive “has never hidden in a mousehole; it has been standing before us all along.” Similarly, drawing on Lamie v. U.S. Tr., 540 U.S. 526 (2004), ParkerVision argues that courts may not “soften the import of Congress’ chosen words,” even to avoid harsh outcomes.
Back in 1929, Congress required the Court of Customs and Patent Appeals (CCPA)—the Federal Circuit’s predecessor—to issue written opinions in patent appeals. This express requirement persisted through the CCPA’s half-century existence. Although the word “written” was dropped from the statute, there is no indication that Congress intended the court to offer no opinion at all. The opinion requirement still requires an explanation of its decision, and the way the court generally does that is through a written opinion. The practice up until the mid 1980s had always been to provide a full explanation.
The brief includes an interesting anecdote about Judge Giles Rich, renowned for his commitment to reasoned judicial opinions. Rich once circulated a mock one-word summary affirmance to his fellow judges to demonstrate his opposition to what would later become Rule 36 practice. The satirical draft challenging the idea of whether such cursory judgments satisfied statutory requirements, including “Is this an ‘opinion'” and “Will the appellants and their attorney think their case has received full consideration?” When Congress created the Federal Circuit in 1982, Chief Judge Howard Markey explicitly promised that the court would provide an opinion in every case, stating: “We do not just render a one-worded decision and go away.” The reply brief argues that Congress codified this principle in § 144, requiring an opinion and deliberately continuing the CCPA’s tradition of reason-giving to promote clarity and predictability in patent law.
A significant portion of the reply addresses respondents’ procedural arguments that this case is a poor vehicle for considering the Rule 36 issue. ParkerVision presents four compelling counterarguments:
- Timing: ParkerVision “could not have challenged the Federal Circuit’s use of Rule 36 before the Federal Circuit used Rule 36.”
- Futility: The Federal Circuit has already determined Rule 36 is compatible with § 144, making rehearing futile.
- Pure Legal Question: The issue presents a “purely legal question” that is “appropriate for immediate resolution.”
The Supreme Court’s decision on whether to grant certiorari in these cases may finally resolve whether patent owners deserve more than a one-word explanation when their intellectual property rights are eliminated through the PTAB process.
ParkerVision is one of five currently pending Rule 36 cases before the US Supreme Court:
- ParkerVision v. TCL (No. 24-518) – Rule 36 summary affirmances in PTAB appeals.
- Island IP v. TD Ameritrade (No. 24-461) – Rule 36 practice and summary judgment standards for eligibility.
- Audio Evolution v. United States (No. 24-806) – Rule 36 use in eligibility determinations.
- Converter v. Tekni-Plex (No. 24-866) – Rule 36 in prior art enablement context.
- ATOS v. Allstate (No. 24A777) – Matches ParkerVision.