The Federal Circuit should never use Rule 36 if a patent claim is invalidated

By Gene Quinn & Peter Harter
March 14, 2017

PrecedentAccording to Federal Circuit Rules, a Rule 36 judgment can be entered without an opinion in five separate circumstances, but if and only if “an opinion would have no precedential value.”

Black’s Law Dicitionary, 6th Edition, defines “precedent” as follows: “An adjudged case or decision of a court, considered as furnishing an example or authority for an identical or similar case afterwards arising or a similar question of law…”

How is it possible that a decision finding one or more patent claims are invalid could have no precedential value? Truthfully, the thought that the invalidation of a patent claim is not precedential is at a minimum a factual impossibility, and very likely a legal impossibility as well. Clearly, the final decision that one or more patent claims are invalid will be authority for cases dealing with attempts to enforce the now defunct claim(s).

For the sake of simplicity, let’s work with an example. Let’s say that a not too hypothetical patent owner has had all the claims to the patent invalidated in some prior proceeding, whether in the district court or at the Patent Trial and Appeal Board, and now the Federal Circuit has rubber stamped the previous decision with a one-word judgment: “Affirmed.” Let’s further say that this case was between the patent owner and a single opposing party – Google, for example.

What happens if a patent owner who suffered that Rule 36 summary loss to Google at the Federal Circuit were to decide to sue another party – perhaps Apple – on the same claims that were invalidated in the above mentioned hypothetical Google proceeding? No doubt Apple’s attorneys would be rightfully indignant, and if the proceeding were in federal district court you could guarantee there would be sanctions, likely against both the patent owner and the attorneys representing the patent owner. Why? Because those claims have been lost (i.e., invalidated) in a prior proceeding, and it does not matter that Apple was not privy to that prior proceeding. The underlying property right has been lost, and whether the Federal Circuit wants to admit it or not that is binding precedent.

Claim construction is a question of law, which in some limited sense may at times also have a factual component (i.e., when extrinsic evidence is consulted to construe the claim). See Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. Questions of invalidity, however, are clearly questions of law. Thus, when claims are declared invalid it must necessarily be precedential. In other words, these invalidity determinations are conclusions of law that will absolutely be dispositive authority for cases dealing with attempts to enforce the now defunct claim(s).

Even if there is no bright-line rule to demand it, we all know that if the patent owner were to sue another party on claims lost in a Rule 36 judgment sanctions would issue. Obviously, the outcome of a Rule 36 judgment that invalidates one or more patent claims is very precedential. Thus, it is wholly inappropriate for the Federal Circuit to use Rule 36 if one or more claims have been invalidated. Truthfully, it is also likely equally inappropriate for the Federal Circuit to designate an opinion as nonprecedential if one or more claims are invalidated.

Interestingly, a decision upholding the validity of claims would have no precedential value, as ironic and idiotic as that is, because a challenger not in privy could still continue to challenge claims without estoppel ever applying. Title to patents never quiets, ownership is never real, patent owners need to prevail 100% of the time in every forum if they are to even retain the illusory hope of exclusive rights. On the other hand, challengers need to prevail once, and can do so without the Federal Circuit ever explaining why. To call this unfair and one-sided doesn’t even begin to capture the magnitude of just how shameful the system has become.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Peter Harter has over 20 years of experience bridging the ecosystems of technology, business, law, venture finance and politics by providing advice to management, boards and investors on legislation, regulation, court cases, media, standards, treaties, political campaigns, capital, property and labor. As the founder of The Farrington Group, Peter advises public and private companies, investors, startups and nonprofits on risks from legislation, regulation, court cases, standards, politics, and more. He also helps identify relationships for sales, finance and and executive recruitment. Peter’s career began in 1993 as an Internet lawyer. He broadened in Silicon Valley as head of global government affairs for Netscape and EMusic.com and in business development and sales for Securify. He deepened his experience in policy in Washington, DC, lobbying on patent reform for Intellectual Ventures. Peter has expertise in the areas of patents, copyrights, open source, cybersecurity, export controls, voting, antitrust, nuclear energy, big data, and medical research reform.

To contact Peter please connect with him via LinkedIn.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments. Join the discussion.

  1. Anon March 14, 2017 5:57 pm

    IMO Rule 36 seems to be common when the defendant is the government. I had a first amendment case that got a Rule 36 but I still petitioned for cert, which is an insurmountable task given that there is no written appellate opinion. In essence, Rule 36 is a great way to deny justice.

  2. Jordan Bauman March 15, 2017 5:47 am

    I have to admit that this Rule 36 fad has blown my mind. I have had problems explaining to people the idiocy of it. Thank you Gene.

  3. Paul F. Morgan March 15, 2017 11:19 am

    Patent owners only getting one free lawsuit bite if the claims are held invalid in a final decision [whether unappealed, affirmed under Rule 36, or otherwise] is not new, it dates from the old Sup. Ct. decision in Blonder – Tongue Labs, Inc. v. University of Illinois Foundations, 402 US 313 (1971). Likewise, there has never been a “validity” decision binding on unrelated parties, rather they are “invalidity not proven by this defendant” decisions. [Otherwise, every company in America would be at the mercy of a defendant who did a poor prior art search or other defense presentation failure.] [But if a patent owner wins a trial against a competent defendant, that usually strongly encourages other defendants to settle.]
    BTW, the absence of any real Fed. Cir. appeal decision from a mere D.C. S.J., did not prevent the Sup. Ct. from taking and deciding KSR.

  4. Anon March 15, 2017 2:18 pm

    See the Federal Circuit’s recent nonprecedential opinion in Coffelt v. NVIDIA Corp. There, the Federal Circuit provided a mere two pages of text to justify its section 101 ruling. (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1119.Opinion.3-10-2017.1.PDF).

    I don’t think that the elimination of Rule 36 would appreciably add to the judges’ workload.

  5. step back March 15, 2017 9:37 pm

    Hey Anon @4

    I too spotted that Coffelt (pro se) case of today.
    What surprised me is that the CAFC did not even bother to print the claim.

    One thing for sure is that this case is a poster child for not going it alone as a pro se. Five claims, only one independent, that’s it?

  6. Eric Berend March 16, 2017 8:23 am

    Thank you Peter and Gene, for elucidating yet another area, in which contradictory or nonsensically unfounded judicial decisions, call for clarification or rectification.

    As an inventor who also has some significant experience in real estate, I appreciate the apt analogy to the expectation of enjoyment of a quiet title; as is normally presumed by millions of homeowners and real property owners. I note with interest that; however much a patent may be Constitutionally defined as a right of exclusivity “for [a] limited time[s]”; said limited, exclusive right is supposed to be “…secure…”.

    In essence, how can a subjecting a right that is supposed to be mandated as being secure, to endless post-grant challenges, be Constitutionally valid? Where, as in no other area of U.S jurisprudence, collateral estoppel and res judicata does not apply; at least, not in the Article I bureaucratic manifestations now all-too-enthusastically practiced by the USPTO against patentees? It matters not, whether such treatment is couched in terms such as “public property” (e.g. Patlex; et al), “abstract idea” (Alice; Bilski; et al) or “inventive concept” (a judge-created non-statutory notion); the effect, is the same: to never enjoy the economically necessary and personally beneficial security of title, even if for but the limited time allotted to an inventor, for the purpose of protecting nascent industry and promoting commercial growth, arising from the technology upon which a patent is granted.

    I wish there would be an effective vehicle to convey this concept to the many ignorant, confused or deceived persons, carelessly convinced about so-called “patent trolls”, by the braying infringer-sycophant crowd.

  7. Eric Berend March 16, 2017 8:50 am

    @ 4. ‘Anon’:

    That is a good aspect to point out, given the judges’ special regard of their precious ‘judicial economy’ as being such an important reason for perfunctory decision making and explanation.

    Perhaps, it is not too much to ask; that an Appellate Judge or panel of same, actually explain a ruling; after the arduous legal journey invariably required to reach that point – what: 5+ years, two or more Court proceedings, some $300,000 to 3,000,000 in counsel fees – and the good Judges, cannot write even a mere couple of pages or so; if they are so inclined, to a mere minimal performance of their sworn duties?

  8. Louis Coffelt April 8, 2017 12:20 am

    Hi, This is Louis Coffelt, in the above-mentioned case against Nvidia et. al. Thank you for your interest in my case. I have filed a petition for a writ of certiorari at the Supreme Court of the United States. Please continue to follow my case. Thank you. Louis Coffelt

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website