Can the Federal Circuit use Rule 36 Affirmances in PTAB Appeals?

By Gene Quinn & Steve Brachmann
October 22, 2018

Can the Federal Circuit use Rule 36 Affirmances in PTAB Appeals?By its explicit terms 35 U.S.C. § 144 requires the United States Court of Appeals for the Federal Circuit to “issue to the Director its mandate and opinion.” 

By its explicit terms, Federal Circuit Appellate Rule 36 authorizes the Court in certain circumstances to “enter a judgment of affirmance without opinion”.

Obviously, the Federal Circuit canny rely upon Rule 36 when the Court’s appellate jurisdiction is based upon § 144. The Federal Circuit simply cannot by rule ignore a statute. The Federal Circuit cannot use Rule 36, which is a judgment without an opinion when the law requires the Court to issue an opinion. But that is precisely what the Federal Circuit does. Rule 36 has been expansively used by the Federal Circuit for years.

Now there is a petition pending at the Supreme Court that asks the Nation’s High Court to look behind the curtain at what has become an abusive use of authority by the Federal Circuit that deprives both petitioners, respondents and the public of interpretations of the law even in under developed and unsettled areas.

Inventor advocacy group US Inventor recently filed an amicus brief with the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari in Capella Photonics v. Cisco Systems. This case, if taken up on appeal, will require the Supreme Court to answer whether the Court of Appeals for the Federal Circuit operates in violation of 35 U.S.C. § 144, the statute governing how the Federal Circuit must respond to appeals of decisions from the U.S. Patent and Trademark Office. In other words, can the Federal Circuit use Rule 36 to issue an affirmance without opinion of decisions appealed from the Patent Trial and Appeal Board (PTAB).

As we have written here before, there is no justifiable reason for the Federal Circuit to use Rule 36 when patent claims are invalidated, but that is precisely what happened to Capella Photonics, the patent owner who lost patent claims in an inter partes review (IPR), only to have the Federal Circuit rubber stamp the decision of the Patent Trial and Appeal Board (PTAB) without an opinion.

US Inventor’s petition begins by arguing that Rule 36 summary affirmance issued by the Federal Circuit are both illogical and constitutionally unsound. The brief notes that the Federal Circuit’s local rule is written in such a way so that any one of five conditions can give the appellate court the ability to issue a summary affirmance, including instances when a judgment or decision has been entered without an error of law. As US Inventor argues, that particular condition allows the Federal Circuit to uphold judgments from lower courts if the proper legal standard is stated even if the appellate court knows that the lower court grossly mistook facts that were applied to that standard. “Thus on its face, Rule 36 permits unjust outcomes, allowing affirmances where there should be reversals or remands,” the brief reads.

Rule 36 also undermines the Federal Circuit’s ability to provide constitutional due process in deciding appeals, the brief argues. Due process under the Constitution requires that decision making to be performed by adjudicators who are not in situations where they are tempted to make decisions without giving a case the proper disposition. US Inventor notes that this particular case petitioned by Capella Photonics was appealed from the PTAB after Capella alleged that the PTAB made factual errors leading to its finding that patent claims owned by Capella were invalid.

Further, US Inventor argues that Rule 36 judgments prevent the resolution of issues stemming from litigation and has even required the Federal Circuit to revisit legal arguments that would have been settled had it not issued a Rule 36 affirmance in a prior judgment. As evidence of this, US Inventor cites to a 2013 decision issued by the Federal Circuit in TecSec, Inc. v. International Business Machines Corp. TecSec sued IBM and other defendants for patent infringement in district court and the district court stayed proceedings against defendants other than IBM. The district court granted a motion for noninfringement made by IBM on summary judgment after finding that TecSec both failed to produce evidence of direct and indirect infringement and failed to show that accused software offered by IBM met the claim limitations as construed. TecSec appealed to the Federal Circuit which issued a Rule 36 affirmance. The district court then continued infringement proceedings against the other defendants and TecSec stipulated to noninfringement based on the claim construction in the IBM proceedings. TecSec then appealed the judgment of noninfringement and, while the defendants argued that TecSec was collaterally estopped based on the prior Rule 36 affirmance, the Federal Circuit found that collateral estoppel didn’t apply because the district court’s judgment in the IBM proceedings was found independent of that court’s claim construction. “TecSec thus shows that collateral estoppel will not apply where the appellate court affirmed, without explanation, the judgment of a trial court that ‘determined two issues, either of which could independently support the result,’ because one can never know which issue was ‘necessary’ to the final appellate judgment,” US Inventor’s brief reads.

Finally, US Inventor argues that the Federal Circuit’s use of Rule 36 judgments systematically and unfairly biases outcomes in favor of affirmance. Appellate panels often experience “vote fluidity,” where a justice changes a vote between the initial conference vote and the publication of the opinion. Data from a study of Supreme Court cases decided between 1969 and 1985 showed that at least one Justice exhibits such vote fluidity in 36.6 percent of cases. Such fluidity cannot take place when the Federal Circuit issues a Rule 36 affirmance, and thus it follows that those cases cannot receive the same full consideration of cases where an opinion is issued.

How the Federal Circuit can think they have the authority to use Rule 36 when an opinion is required to be issued pursuant to 35 U.S.C. § 144 is a mystery. Whether the Supreme Court will rectify this error remains an open question. The Supreme Court has seemed quite interested in looking over the shoulder of the Federal Circuit over the past decade. The Supreme Court would be hard pressed to find an area where there is a more blatant disregard for the letter of the law than with Rule 36.

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

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

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 3 Comments comments. Join the discussion.

  1. Matthew Dowd October 22, 2018 7:53 am

    I’m surprised that this argument is still being pushed. I’ve written several articles explaining why Section 144 does not preclude the Federal Circuit from deciding cases with a Rule 36 affirmance. My longer analysis will be published in Vanderbilt Journal of Entertainment and Technology Law. Surprisingly, the cert petition doesn’t acknowledge my articles and doesn’t cite the single Supreme Court case that address the question presented. The Supreme Court denied cert last week on yet another petition that raised this same issue. The Court has denied cert on this issue many times already, and I expect the Court to do so again.

    See, e.g., https://www.law360.com/articles/898732/fed-circ-is-permitted-to-use-rule-36-for-uspto-appeals.

  2. Matthew Dowd October 22, 2018 11:45 am

    I will add that whether the Federal Circuit should be using Rule 36 as frequently as it does is a separate issue from whether it is permitted to do so. I have an article forthcoming on that issue.

  3. Mark Martens October 22, 2018 9:45 pm

    Steve and Gene,

    Wow some of that is ‘a bit involved’, still followable so nicely argued, I thought. Persuasive too. I’ve been thinking that if the existence and easy usage of 36 is real, as you suggest, then it must also have the effect of allowing the dumbing down of judicial appeal cecision-making. In fact, there might be such a force towards this judicial system-wide, IF the process of judicial appointment were already politicised anyway.

    Perhaps the system ought to err on the side of transparency, namely making sure the judgement process itself does not actually encourage ‘rubber stamping’ by underqualified politicised judicial appointees. But rather to call out the decision-making rationale in particular, to be of ‘transparently’ of the highest possible quality.

    Lets avoid ennabling the ‘dumbing down’ of the judgement/decision-making process?

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website

Our website uses cookies to provide you with a better experience. Read our privacy policy for more information.Accept and Close