“The most realistically effective way of reining in the Federal Circuit’s runaway trend of facilely resolving its caseload problem [via Rule 36] is a rebuke from the Supreme Court…. the Court should direct judges of the Federal Circuit that they must provide at least some minimal clarification for a decision in an appeal presenting only legal issues.”
I am a litigator with more than 55 years of experience and 28 oral arguments in the Supreme Court. When asked to file a petition for Supreme Court review in a patent infringement case decided by the Federal Circuit, I struggled to understand the patents, but they are beyond my twentieth-century comprehension.
The case, SPIP Litigation Group, LLC v. Apple, Inc. and Cisco Systems, Inc., No. 19-253., concerns four patents that have been the subject of decisions by the Patent Trial and Appeal Board (PTAB) and the Federal Circuit. More than 25 lawyers have participated in the litigation. The briefs and evidence in the trial court covered more than 2,500 pages. My client, on appeal from an adverse summary judgment, did not contend that the factual record failed to support that result. My client raised only two legal issues when it appealed to the Federal Circuit from the district court’s decision that the patents were not infringed. The appeal briefs covered 202 pages.
Three Federal Circuit judges heard oral argument and issued their decision 12 days later. It read: “AFFIRMED. See Fed. Cir. R. 36.”
Did the judges understand the technology any better than I do? No one can tell.
Did my client deserve some explanation, even if exceedingly concise, from the judges? The petition I have now filed with the Supreme Court claims that the Federal Circuit judges deprived my client of a constitutional right by declaring, “You lose, but we won’t tell you why.”
Roots of the Racket
IP Watchdog has called the Federal Circuit’s increasing reliance on its Rule 36 “unprecedented abuse” and a “racket.” A recent comment has suggested that the Circuit is invoking Rule 36 “to avoid difficult subject matter” or to conceal the judges’ inability to understand a challenged patent. Close to half of all cases decided by the Federal Circuit now result in an order declaring only “AFFIRMED. See Fed. Cir. R. 36.”
The Federal Circuit’s Rule 36 is not universally accepted by all federal circuits. It is modeled on a rule that the Court of Appeals for the Fifth Circuit adopted in 1967, when that Circuit’s jurisdiction included Alabama, Florida, and Georgia. The Eleventh Circuit was created in October 1981 by carving the three States out of the Fifth Circuit, leaving only Louisiana, Mississippi, and Texas in the Fifth Circuit. Although the Eleventh Circuit initially retained the Fifth Circuit’s Rule 47.6, it eliminated that Rule in 2006.
The Fourth Circuit authorizes only summary opinions that announce the appellate court’s decision “and the reason or reasons therefor.” The Sixth Circuit authorizes a summary decision with no stated reason only if the decision is rendered “in open court.” The District of Columbia Circuit permits a summary affirmance or reversal if it contains “a notation of precedents or [is] accompanied by a brief memorandum.” Other than the Fifth, Eighth, and Tenth Circuits, no federal court of appeals explicitly permits a panel to affirm with no clue as to why.
The case I am trying to bring to the Supreme Court is not defined by subsections (a) through (d) of the Federal Circuit’s Rule 36. These subsections govern situations when: (a) factual findings “are not clearly erroneous,” (b) evidence is “sufficient” to support “the jury’s verdict,” (c) the “record supports summary judgment, directed verdict, or judgment on the pleadings,” and (d) an administrative agency decision “warrants affirmance under the standard of review in the statute authorizing the petition for review.” The first three categories relate to factual sufficiency and the fourth to deference to an administrative agency’s decision.
Our case raised two legal issues presented to the Federal Circuit. Without explicitly deciding either, the Federal Circuit panel precipitously rejected the appeal. Our petition asks the Supreme Court to decide whether any federal appellate court—and particularly the Federal Circuit under its Rule 36—may constitutionally conceal its ratio decidendi so totally.
Language in a footnote of a 1972 Supreme Court majority opinion (Taylor v. McKeithen, 407 U.S. 191, 194 n. 4 (1972)) speaking for five Justices declared that “courts of appeals should have wide latitude in their decisions of whether or how to write opinions.” Some appellate courts have read these words—ignoring the qualification in the footnote that follows them—as authorizing appellate rulings with absolutely no written explanation. Our petition questions whether this qualified aside in a footnote truly was meant by the Supreme Court to establish a lasting constitutional principle for permissible resolution of an appeal.
Highly respected federal appellate judges observed that their thinking was sharpened by uttering reasons for a result. D.C. Circuit Judge Patricia Wald said, “The discipline of writing even a few sentences or paragraphs explaining the basis for the judgment insures a level of thought and scrutiny by the court that a bare signal of affirmance, dismissal or reversal does not.” It is common knowledge that the votes of Supreme Court Justices shift when draft opinions expressing reasons for tentative positions are distributed. “There is accountability,” said D.C. Circuit Judge Harold Leventhal, “in the giving of reasons.”
The most realistically effective way of reining in the Federal Circuit’s runaway trend of facilely resolving its caseload problem is a rebuke from the Supreme Court. The Justices recently told the PTAB in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), that it must resolve all patent issues raised in inter partes review with a final written decision. By the same token, the Court should direct judges of the Federal Circuit that they must provide at least some minimal clarification for a decision in an appeal presenting only legal issues.
Share Your Experience with SCOTUS
You can further this result by supporting my client’s Supreme Court petition with an amicus curiae brief reporting your own experience in the Federal Circuit. Note, however, that Supreme Court Rule 37(2) imposes some strict procedural steps. Your amicus brief will have to be filed electronically on or before September 26, 2019. You must notify counsel for the respondents at least 10 days before filing that you intend to file and seek their consent. (I have filed a “blanket consent” so that you need not seek the petitioner’s approval.) If they refuse to consent, you will have to cover your proposed amicus brief with an application for leave to file. Under Rule 37(6) the brief will have to contain the required certification that it has not been funded or written, in whole or part, by any party, and identify anyone other than the amicus who made a “monetary contribution.”
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