Have Federal Circuit Judges Summarily Affirmed Your Patent Appeal Without Explaining Why? Tell SCOTUS

By Nathan Lewin
August 28, 2019

“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.”

https://depositphotos.com/57216291/stock-photo-human-hand-holding-megaphone.htmlI 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.

Abdicating Accountability

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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The Author

Nathan Lewin

Nathan Lewin is a Washington lawyer who clerked for Justice John M. Harlan on the US Supreme Court, then held supervisory positions in the Departments of Justice and State in the Johnson Administration, and has argued orally before the Supreme Court in 28 cases. He is on the Adjunct Faculty of Columbia Law School, where he gives a seminar in Supreme Court litigation.

For more information or to contact Nathan, please visit his Firm Profile Page.

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 58 Comments comments. Join the discussion.

  1. Pro Say August 28, 2019 8:08 pm

    Nathan — big thanks to you and your clients for fighting the good fight. This ocean of Rule 36’s have to end. They are an unconstitutional deprivation of due process.

    As others have posited, even short 2 – 5 pages decisions would go a long way and be a great help to us all.

    Relatedly, assuming Congress gets the pending eligibility fix correct (including by not letting the FAANG cabal and their henchmen including the EFF and ACLU corrupt the reform by convincing Congress to move the 101 morass over to 112), a big burden will quickly be lifted off the CAFC’s shoulders.

  2. Software Inventor August 28, 2019 10:29 pm

    Thank you Mr. Lewin for your good work for the people.

    Why do we need written decisions by the CAFC? Thousands of inventors need to know the legal bases of why their property was taken from them by the corrupt Article I APJ hacks at the PTAB. Article III CAFC’s written decisions are subject to a Code of Conduct and are essentially the last chance to retain their property, and their livelihood. It is about justice and transparency.

    At some point in time, the Congress and SCOTUS will dust off the constitution and awaken to the largest scale property grab by corrupt government officials since the 19th and early 20th century betrayal of native Americans.

  3. Night Writer August 29, 2019 5:33 am

    I think the biggest thing the Rule 36 opinions illustrate is the arrogance and callousness of the CAFC judges. It is another indication of the incredibly poor character of the judges that Obama appointed.

    The problem is that for a patentee there may have been years of litigation and then to have a Rule 36 opinion gives no closure and gives the appearance of corruption or that the law is not sound in that the judges are acting outside the law.

  4. Paul Cole August 29, 2019 6:07 am

    While I completely understand the desirability of every case being decided on the basis of a reasoned opinion, allowance has to be made for the human capabilities of the CAFC judges and the need for them to have manageable workloads. In particular, no judge can be expected to digest 2500 pages of evidence without major disruption to other cases.

    However, in every case where full analysis is not needed there must be a key point or reason supporting dismissal of an appeal. It would be reasonable to expect the reviewing panel to state this in a concise 200-500 word summary which would provide the appellant with an explanation for the dismissal and reassurance that the case has been properly considered without imposing an impossible burden on the judges.

    The alternative, of course, would be to appoint additional judges to the Federal Circuit to reflect the increased workload.

  5. Daniel Hanson August 29, 2019 7:32 am

    Speaking with David Gergen in 2012, Justice Sandra Day O’Connor mentioned an important characteristic of the judicial branch, which separates it from the other branches of government:

    “The court is the only branch of government that explains the reasons for its decisions.”

  6. Anon August 29, 2019 8:09 am

    If I recall correctly, litigation statistics for the CAFC show that litigation is down (and sharply so).

    And even if this were not the case, the Rules Of Law are not present in order to “make it easy” for the courts — leastwise, in matters of deprivation of property.

    Mr. Cole, not being of US “heritage” (by that, I merely mean that his practice is not in the US, and thus, he does not understand the context of US law) is not doing anyone any favors by opining here.

    While it is indeed true that anyone can have an opinion, what is of value are informed opinions. Certainly, Mr. Cole may have informed opinions in “best practices” of patent law in some aspects. This though, is not one of them.

  7. Anon August 29, 2019 8:18 am

    … in other words, while it is certainly true that in the US system, we do provide for leeway to courts to manage their dockets, such does not rise above the importance of the underlying matters themselves.

    This may be “subtle,” but reflects a dangerous and pernicious mindset. A mindset not limited to the judicial branch when it comes to patents, as witness the now decades old fight against the executive branch administrative agency of the patent office itself that (continues to) seeks out “making it easy for itself” above its constituents and the matters before it.

    So just as (for example) Dave Boundy has diligently fought off self-serving attempts by the executive branch, diligence is required to fend off what is — in essence — self-serving attempts by the judicial branch.

    There very much appears to be a type of “blinders” on when it comes to not holding the judicial branch accountable. The topic of this thread is not the only topic for which Mr. Cole has shown such a propensity (subject matter eligibility immediately comes to mind).

  8. Anonymous August 29, 2019 8:19 am

    Mr. Lewin, I notice that you do not mention subsection (e) of Fed. Cir. R. 36, which states that judgment may be entered summarily affirmed where “a judgment or decision has been entered without an error of law.” Thus, it would appear that your case falls within R. 36 if the judges believed that there was no error of law.

  9. CP in DC August 29, 2019 9:18 am

    I think it is important to read rule 36.

    Rule 36. Entry of Judgment – Judgment of Affirmance Without Opinion
    The court may enter a judgment of affirmance without opinion, citing this
    rule, when it determines that any of the following conditions exist and an
    opinion would have no precedential value:
    (a) the judgment, decision, or order of the trial court appealed from
    is based on findings that are not clearly erroneous;
    (b) the evidence supporting the jury’s verdict is sufficient;
    (c) the record supports summary judgment, directed verdict, or
    judgment on the pleadings;
    (d) the decision of an administrative agency warrants affirmance
    under the standard of review in the statute authorizing the
    petition for review; or
    (e) a judgment or decision has been entered without an error of law.

    So basically, the Federal Circuit on review accepts the lower court’s fact findings (whatever deference necessary) and conclusions of law. Simply to repeat this in an opinion by stating the burden of proof and that it was met is a waste of court resources.

    The Fed Cir realized this and stopped issuing lengthy opinions. The author admits that his client is not disputing facts: “My client, on appeal from an adverse summary judgment, did not contend that the factual record failed to support that result.” Advocating quantity of pages at trial (appeal has 30 page limit to prevent abuse) or lawyers working a case is irrelevant: “More than 25 lawyers have participated in the litigation. The briefs and evidence in the trial court covered more than 2,500 pages.” Quantity does not make an argument right, a fact many appellants forget. So does this mean the appellant who doesn’t have the Apple/Cisco resources to flood the chambers with papers (that no one reads) deserves less? Certainly not.

    The issue is simple. If the facts lead to different conclusions in law, then an opinion is warranted. If it is merely more of the same, then an opinion is unnecessary. Even when wealthy clients want an appeal to make it look like they made the effort (remember that appeal to the Federal Circuit is of right, not discretionary like at the Supreme Court).

    Anon comments of this nature do not aid the discussion: “Mr. Cole, not being of US “heritage” (by that, I merely mean that his practice is not in the US, and thus, he does not understand the context of US law) is not doing anyone any favors by opining here.” Residence (if that is what you meant by “heritage”) is not required to understand US patent law and there are plenty of US patent attorneys that do “not understand the context of US law” despite residing in the US.

  10. Anon2 August 29, 2019 9:27 am

    “Rules Of Law are not present in order to “make it easy” for the courts — leastwise, in matters of deprivation of property.”

    Well said Anon

  11. Software Inventor August 29, 2019 11:59 am

    @CP in DC #9

    I understand and can accept 36(e), yet that is neither presented in a simple “Affirmed” decision nor are any further opinion offered for the the others (a) – (d). Inventors need to know why their country is taking their property and livelihood.

    Further, can someone in the know explain to me and other inventors just to whom CAFC judges report, manages them, and reviews their decisions for appropriateness and accuracy, or disciplinary measures when inaccurate or incompetent? Who is the higher authority who sets their performance requirements and disciplines them when they error or act out of line? I tried to look this up and cannot find a good understanding.

  12. Paul Cole August 29, 2019 12:15 pm

    Given that the appeal here was based solely on two legal issues, the question under rule 36 was whether these issues were sufficient to establish an error of law. If the panel judges had concluded that they were not sufficient, it would seem that a short confirmatory opinion explaining concisely and in a focused manner why error was not found would be better than a mere blanket denial. If that could not be done concisely and straightforwardly, then there must be doubt whether the panel judges had got a sufficient grip on the case, which would justify the comments of Mr Lewin whose seniority and experience cannot be ignored.

  13. Pro Say August 29, 2019 1:35 pm

    CP in DC: Then perhaps the CAFC could; when they issue a 36; at least provide / include a list of the one or more of the (a) to (e) conditions the panel felt warranted the 36.

    Of course . . . were the decision on conditions not unanimous (a split panel) . . . (or are 36’s always 3-judge unanimous?)

  14. TFCFM August 29, 2019 2:24 pm

    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.”

    I regret that my advice may be ‘too late,’ but I wouldn’t recommend repeating that characterization of the Federal Circuit’s affirmance should the matter proceed further.

    Anyone with more than a couple of functioning cerebral neurons recognizes that a Rule 36 affirmance communicates, in equally-abbreviated essence, “You lose, for the same reason(s) the lower tribunal already told you.

  15. Anon August 29, 2019 7:25 pm

    Anyone with more than a couple of functioning cerebral neurons recognizes that a Rule 36 affirmance communicates, in equally-abbreviated essence, “You lose, for the same reason(s) the lower tribunal already told you.”

    Yet again, TFCFM, you are objectively wrong.

    ESPECIALLY if you were to use some (any?) neurons and realize that cases bellow with more than one set of reasoning simply do NOT fit what you so (boldly? arrogantly?) state.

  16. concerned August 30, 2019 7:18 am

    TFCFM@ 14:

    Anyone with more than a couple of functioning cerebral neurons recognizes that a Rule 36 affirmance communicates, in equally-abbreviated essence, “You lose, for the same reason(s) the lower tribunal already told you.”

    I realize that the USPTO uses statements that are not factually true: Routine, conventional and well understood on claims that nobody on Earth performs and it was proven to be the case that nobody uses the claims. The examiner offered no rebuttal or explanation how the statement cannot be reconciled with the evidence on the official record.

    Then I realize that courts affirm the USPTO rejections using terms that the courts refuse to define: Abstract and significant more.

    Then I realize that another court affirms the rejection without explanation: Rule 36.

    I have less than a couple of functioning cerebral neurons and I realize that this kind of justice is highly suspect.

    Does “TFCFM” stand for: (T)he (F)-in (C)ourt (F)ed (M)e?

  17. TFCFM August 30, 2019 9:48 am

    @concerned “The examiner offered no rebuttal or explanation…

    By the time you’re before the Federal Circuit, the focus of the tribunal is not what the Examiner said or didn’t say, but rather the Board’s adjudication. That’s why it’s called an “appeal.” (If the Board were to start issuing Rule-36-like affirmances of Examiner rejections, then THAT would be a problem, because there wouldn’t be an adjudication to appeal, but that’s not, of course, what we’re discussing here.) FC appeals are about whether the Board got the lower decision right.

    If the FC believes that the Board got it right and has nothing to add (regardless of how many pages of text an appellant submits), a Rule 36 affirmance is precisely the right tool to use. (Either that, or spend a nickel a page photocopying the Board’s opinion, but what’s the sense in that?)

  18. Anon August 30, 2019 10:11 am

    TFCFM,

    By parsing the statement to which you reply and only addressing the first step, you show yourself to be disingenuous.

    The issue is simply larger than that which your chosen blinders provide.

  19. B August 30, 2019 10:21 am

    @ TFCFM “Anyone with more than a couple of functioning cerebral neurons recognizes that a Rule 36 affirmance communicates, in equally-abbreviated essence, “You lose, for the same reason(s) the lower tribunal already told you.”

    You really are too stupid for words.

    First, what if you have three bases of invalidation? No collateral estoppel, and nothing is settled. Second, a Rule 36 guarantees the CAFC won’t hear the case en banc no matter how stupid the basis of the Rule 36 judgment is. Third, I know for a fact that, even when a case is under the APA, CAFC judges will find alternative grounds to affirm a rejection. I’ve seen it done. Last, statutory due process on appeal from the USPTO demands a written opinion – 35 USC 144

    Isn’t there another forum where you can pretend to be an astronaut or a fireman that you can bother?

    @ concerned “Then I realize that courts affirm the USPTO rejections using terms that the courts refuse to define: Abstract and significant more.”

    And “inventive concept.”

    “Then I realize that another court affirms the rejection without explanation: Rule 36.”

    It’s like arguing with children – really retarded children whose best argument is “OH YEAH!”

  20. Concerned August 30, 2019 10:39 am

    Many people believe the patent system has serious problems and the Rule 36 just adds to this observation. If the overall process seemed fair to me, a Rule 36 may seem somewhat appropriate.

    However, I really think my patent application was dead on arrival, no matter what problem was being solved, no matter how many experts tried to solve the problem and no matter at what financial harm to the States and their citizens, all of which were proven.

    The Federal Circuit can pen and continue the same insane arguments, let them share in the pain experienced by the inventor.

    BTW: The examiner told me 3 times in the phone interview my application has patentability, hinting that it is caught up in a bigger discussion surrounding the 101 issue. So they say, so shall the all write and put their name precisely to it.

  21. Software Inventor August 30, 2019 3:49 pm

    Inventors, I asked for insight by the legal experts on this blog on the management authority of the CAFC judges, #11 above.

    They know the answer is that there is essentially no management authority. CAFC answers to no one except themselves. It is an imperial court.

    While the president appoints and has authority over CAFC judges, he and his commerce secretary and solicitor have no interest in the ethical or efficient functioning of the patent system.

    Hence, caveat emptor.

  22. Anon August 30, 2019 4:25 pm

    Software Inventor,

    To a certain extent, you are correct in that the judges at the level of the CAFC answer to no one.

    Facially, they do ower deference to prior panel decisions, and most defintitely to prior en banc decisions at their own level, and (critically – as this is what supplies the “fire hose”) the HOLDINGS from decisions from “on high” from the Supreme Court. Notably, dicta from the Supreme Court is NOT supposed to be something that the CAFC has to answer to (which is one reason why Judge Rich was able to push back after the Benson and Flook cases which brought a “swing back to center” with Chakrabarty and Diehr).

    The judges of the CAFC are also supposed to faciailly take direction from the Chief Judge of the CAFC. However, my observation is that THIS mechanism was suffering serious flaws all the way back to Chief Judge Michel (and was really laid to waste under Chief Judge Radar, to whom no one on that court even bothered to pretend, as witnessed by the en banc MESS of the Alice case at that level).

    As to your insinuation that the president (or commerce secretary and solicitor) having ANYTHING to do with the ongoing court (the president may appoint, but after that his hands are off), you are NOT even close to being correct. Such is just “not a thing,” and has never been “a thing.”

  23. Software Inventor August 30, 2019 6:56 pm

    @Anon #22

    Thank you for your insight. I anticipated and welcome your comments.

    I am fine with your comment, and inventors can gain knowledge from it, yet in reference to your last paragraph, the president can remove the CAFC at any time. So you might clarify.

    We are on the same side to the argument, so let’s comment to the benefit of the knowledge of the industry, and inventors. Thank you.

  24. Judge Rich's Ghost August 30, 2019 11:02 pm

    This cert petition has absolutely no chance of being granted. I don’t see how it can plausibly claim that a party’s Fifth Amendment due process rights. To begin with, the cert petition doesn’t even cite or apply any tests or caselaw regarding procedural due process rights. Zero application of the applicable law. It also doesn’t address the role of the Rules Enabling Act.

    Most troubling, the cert petition does not even acknowledge that the courts, including the Supreme Court, have repeatedly held that there is no constitutional right to appeal.

    In short, the cert petition is borderline-frivolous.

  25. Anon August 31, 2019 5:49 am

    No, the President (head of the executive branch) can NOT remove any member of the CAFC (member of the judicial branch) at his will.

    That’s just not how it works.

    Perhaps you are thinking of the PTAB “judges,” which as members of the administrative agency USPTO ARE a part of the executive branch (and, through the Director of the USPTO, are suspect to the power of the president).

  26. Concerned August 31, 2019 8:12 am

    The 24 hour ATM just turned 50 years old this weekend. I can easily see that inventor in 1969 getting the “Alice drill” today as all his machine does is hand out cash like a bank teller has been doing for many years on a routine, well understood and conventional manner.

    Followed up by an appeal that uses terms no court will defined, topped off with another appeal failure using a Rule 36 no explanation statement.

    Then as a pointless follow-up to his rejection on this hypothetical situation, as he did get a patent in just 2 years in real life, it would not matter how many Jamie Dimon level experts said 50 years later in 2019 how the ATM changed banking forever. What do the experts in the actual field know?

  27. The Master August 31, 2019 2:08 pm

    I like the critical comments are being deleted

  28. Anon September 3, 2019 12:03 pm

    TM,

    Which comments (let alone critical ones) have been deleted?

    I have noted not a single deletion on this thread.

  29. Wen September 3, 2019 2:13 pm

    “Anyone with more than a couple of functioning cerebral neurons recognizes that a Rule 36 affirmance communicates, in equally-abbreviated essence, “You lose, for the same reason(s) the lower tribunal already told you.””

    My firm had a case on appeal in which the panel clearly stated during oral argument that they felt the PTAB’s decision to be severely flawed, yet they affirmed the tribunal without an explanation. Rule 36 is definitely subject to abuse.

  30. TFCFM September 3, 2019 3:37 pm

    @Wen “My firm had a case on appeal in which the panel clearly stated during oral argument that they felt the PTAB’s decision to be severely flawed, yet they affirmed the tribunal without an explanation.

    Ignoring that you decline to name the case to permit confirmation…

    A Board decision including a good reason for holding a claim invalid/not-patentable is no less suitable for Rule 36 disposition merely because it also includes a flawed alternative reason for doing so.

    If the Board’s opinion (also not cited) contained only a flawed reason, your firm’s client would have been foolish not to appeal (and to reference — or include a copy of — the panel’s comments). Was this the situation?

  31. Anon September 3, 2019 6:42 pm

    TFCFM,

    Your comment of:
    A Board decision including a good reason for holding a claim invalid/not-patentable is no less suitable for Rule 36 disposition merely because it also includes a flawed alternative reason for doing so.

    There is a clear and evident reason why: the rule 36 simply does not distinguish between the two, choosing NEITHER.

    is objectively false.

  32. TFCFM September 3, 2019 7:09 pm

    @anon “There is a clear and evident reason why: the rule 36 simply does not distinguish between the two, choosing NEITHER is objectively false.

    To the extent that I can understand what you’re attempting to say, if the Board provides two reasons why a claim is invalid/not-patentable, Rule 36 does not impose any obligation upon the Federal Circuit to explicitly pick one (or both) reasons to dispose of the appeal by application of the rule.

    If you believe otherwise, please explain why (preferably in greater detail than your usual “because I say so.”)

  33. B September 3, 2019 9:22 pm

    @ TFCFM “A Board decision including a good reason for holding a claim invalid/not-patentable is no less suitable for Rule 36 disposition merely because it also includes a flawed alternative reason for doing so.

    Rule 36 produces no collateral estoppel, and when you have a series of related cases, that makes a difference, I’ve had a case where the CAFC was required by law to set aside a case and still got Rule 36’ed due to prejudicial behavior – an issue the CAFC or USPTO didn’t contest. The CAFC doesn’t care right from wrong if they can sweep something under the rug they deem less important than lunnch.

    There’s a reason CONGRESS wrote 35 U.S.C. s144, which REQUIRES an opinion.

    Anyway, here’s why you’re just so off the reservation. If the PTAB issues a nonsense holding and a good holding, who is allowed to determine which holding is good if the CAFC doesn’t? Maybe both holdings are really bad, but the reviewing CAFC panel thinks one is good based more on peyote than on law and fact.

  34. B September 3, 2019 9:31 pm

    @ TCFCFM “A Board decision including a good reason for holding a claim invalid/not-patentable is no less suitable for Rule 36 disposition merely because it also includes a flawed alternative reason for doing so.”

    Hint: No sane person appeals to the CAFC if they think the PTAB is right. “Golly, you Honor, I concede the USPTO is right on theory one. Go ahead and issue a Rule 36.”

  35. TFCFM September 3, 2019 9:54 pm

    @anon “There’s a reason CONGRESS wrote 35 U.S.C. s144, which REQUIRES an opinion.

    Nothing in 35 U.S.C. 144 precludes a court from disposing of an appeal with an “opinion” that says anything more than, “AFFIRMED. See Fed. Cir. R. 36.”

    Similarly, @B, the mere fact that an appellant *wants* the Federal Circuit to address every bit of nonsense an appellant’s stubby little fingers can pound into a brief does not compel the court to do so.

    Any REAL arguments?

  36. Anon September 4, 2019 10:14 am

    TFCFM,

    You employ the “i said so” that you want to accuse me of, while getting wrong (and objectively wrong) the notion of what is required under 35 USC 144 — and double down in the express case of multiple possibilities below.

    Then you want to triple down by feigning a “I don’t understand what you write” type of disingenuous tripe.

    This is not that “other blog,” and your propensity for behaving like it is places you on thin ice.

  37. TFCFM September 4, 2019 12:05 pm

    @anon “while getting wrong (and objectively wrong) the notion of what is required under 35 USC 144…

    If you wish to assert that section 144 requires more, I would appreciate some sort of rationale for the assertion (other than because you claim that I am “objectively wrong” — presumably because you say so).

    (“Other blog”? To which one are you referring? I follow Patently-O, but don’t believe I’ve ever left a comment there. But you run and tell Mommy that the
    Bad Man won’t stop disagreeing with you if it makes you feel better.)

  38. B September 4, 2019 12:39 pm

    @ TFCFM “Nothing in 35 U.S.C. 144 precludes a court from disposing of an appeal with an “opinion” that says anything more than, ‘AFFIRMED. See Fed. Cir. R. 36.’”

    Nothing except the statutory language of “shall issue to the Director its mandate and opinion.”

    Also, Rule 36 reads: “Entry of Judgment – Judgment of Affirmance Without Opinion”

    Seriously, why can’t you pretend too be a fake lawyer on a family law website and opine on other stuff you know nothing about?

  39. TFCFM September 4, 2019 12:54 pm

    Name-calling isn’t support for a proposition.

    If you believe section 144 requires more, please cite support. (One can only wonder why you resort to name-calling, rather that demonstrating my incorrectness if, indeed, I am incorrect.)

  40. TFCFM September 4, 2019 12:56 pm

    Interesting law journal article that a friend brought to my attention:

    Vanderbilt Tech Law Journal, 2019.

    Evidently, we’re not the first folks to consider the issue.

    http://www.jetlaw.org/wp-content/uploads/2019/06/1_Dowd_Final.pdf

  41. B September 4, 2019 1:27 pm

    @ ANON

    TFCFM is another clueless version of MM.

    He can’t be bothered to read the statutes, rules, and case law, but knows more than anyone else on any issue of patent law. I’m sure there’s a genetics blog somewhere where he plays expert to the irritation of everyone else.

  42. B September 4, 2019 1:32 pm

    “If you wish to assert that section 144 requires more, I would appreciate some sort of rationale for the assertion”

    What sort of twit thinks the statutory language of “shall issue to the Director its mandate and opinion” doesn’t require issuing an opinion?

  43. Anon September 4, 2019 1:47 pm

    Name-calling isn’t support for a proposition.

    Says the guy doing name-calling as his apparent strongest suit…

    Further, it is NOT “that the Bad Man won’t stop disagreeing” – it is HOW you are disagreeing and the lack of honesty in your replies. IF you follow “the other blog” AND this one, you should be able to readily tell that the far lower tolerance for that type of blogging is one reason this blog has been winning prestigious awards while the other blog has turned into a veritable cesspool.

  44. TFCFM September 4, 2019 1:58 pm

    @Anon “IF you follow “the other blog” AND this one…

    I’m still trying to figure out what “the other blog” is? Do you mean Patently-O? A different one?

    If all you’ve got is name-calling, I don’t have the time. I note that the article I cited addresses the issue, but I haven’t fully read it yet. The author appears to make the good point that judicial rules, rather than legislative statutes, are the appropriate source for the requirements governing the content of an “opinion.”

  45. B September 4, 2019 2:20 pm

    @ TFCFM “Interesting law journal article that a friend brought to my attention.”

    Matthew Dowd’s opinion, which I’m sure you just recently found via Google, is an unreasonable reading of the statutory text where he literally discounts the word “opinion.” Classic cluelessness.

    Dowd also believes that issuing an opinion doesn’t necessarily mean that an opinion must be written, but only “implies” that an opinion may be written. Classic cluelessness.

    Dowd also completely missed the idea that, while implications are sometimes not favored, what is actually not favored is negative implications to the exclusion of terms not in a statute. This is known as the “Negative-Implication Canon” Also not favored are statutory repeals of earlier statutes by implication, but that doesn’t apply in this situation as the text of s144 goes back to the 1952 patent act while Rule 36 was enacted circa 1967. If anything Dowd gets things 180 degrees wrong. More classic cluelessness.

    What the courts have done is to interpret a rule in a way that violates statute.

    Dowd once blessed us with his presence citing his Vandy Law review, but couldn’t be bothered with actually defending it.

  46. TFCFM September 4, 2019 2:50 pm

    @Anon “Classic cluelessness.

    It would seem to go without saying, but this bears a resemblance to merely more “because I say so” name-calling.

    Out of curiosity, though, what is the “other blog”?

  47. B September 4, 2019 5:51 pm

    @ TFCFM “It would seem to go without saying, but this bears a resemblance to merely more “because I say so” name-calling.”

    No – when your legal position is based on changing the meaning of basic terms and completely changing centuries-old doctrines to mean the opposite of what they really stand for, that’s being clueless.

    There’s a reason the SCOTUS won’t take up the issue of the CAFC’s abuse of Rule 36 – because it’s not defensible.

    Of course, you never read Dowd’s article. You also didn’t read s144 or Rule 36. Yet for all your profound ignorance you are the one claiming we have no arguments. Your entire arguments are based in ignorance, and not just a minor amount of ignorance.

    Do you really think you fool a single person into believing you’re an attorney? Apparently, you’re naught but an internet parasite. The collective I.Q. of the English-speaking world lowers every time you post.

  48. TFCFM September 4, 2019 6:28 pm

    “The statute means what WE SAY it means because we say so… and you’re stoopid!” ???

    I would hazard to guess there’s a good reason why you so resent the judicial branch.

  49. Software Inventor September 4, 2019 6:47 pm

    @TFCFM

    defame, babble and obfuscate…you are a true anti-patent soldier carrying out the lobby playbook…

    Good to see capable debaters Anon and B call you out and hand you your arse…

  50. B September 4, 2019 8:22 pm

    ”I would hazard to guess there’s a good reason why you so resent the judicial branch”

    You don’t need to guess. I’m on record as describing CAFC and SCOTUS decisions as dishonest, intellectually retarded, and capricious. I read the briefs as well as the opinions. There’s little to admire.

    There’s less than a handful of competent CAFC judges capable of not contradicting themselves one decision to another, and apparently no one at the SCOTUS is aware that they’re not allowed to rewrite statutes because they disagree with Congress on policy.

    Remember Berkheimer? Of course you don’t. You’ve not been faking attorney that long. It was dead letter jurisprudence 24 hours after the en banc denial issued.

  51. Anon September 5, 2019 8:46 am

    All,

    My issue with TFCFM is NOT that he has an opinion different than mine.

    It is (directly) in HOW he goes about expressing that opinion.

    It is clear that he would like to obfuscate and draw ‘the debate’ down to such a level of “mere difference.”

    One may well disagree with me without my drawing ire to the manner of posting in regards to ANY such disagreement.

    B — for example — is an excellent case, as he and I have disagreed on a number of nuanced factors, all without either of us playing the game that TFCFM plays.

    B,
    That TFCFM does NOT “resent” the judicial branch is its own point — as I do not personally know ANY actual patent attorney** that does not carry more than a little scorn with the mess created in patent law by that branch of the government.

    B, you assert that TFCFM is NOT a real attorney.
    I would not go that far.

    I surmise that TFCFM is a real attorney, but simply NOT a real patent attorney**.

    And THAT type of attorney is even worse than a non-attorney when it comes to discussions concerning the niche area of law that protects innovation.

    ** By this phrase (used twice here), I mean to differentiate those attorneys that have bothered to have BOTH a technical background AND a legal background and that have passed BOTH a State bar examination AND the USPTO “bar” examination. I expressly exclude mere attorneys that only litigate patent matters.

    Those attorneys who only litigate BY FAR tend to have a very negative (and incomplete) view of patents at a fundamental level.

    TFCFM ventures forth his opinion (and does so ONLY on his mere ‘say-so,’ and then has the gall to accuse others of tactics that he employs. B, I agree with you that there is a very distinct parallel OF this tactic to the blight “MM” (aka Malcolm Mooney, aka Malcolm) employs over at that cessp00l blog.

    It is worth noting that my attempt to draw a distinction to the posting environments draws instead of a “ok, thanks for the reminder,” an accusation that resembles the tactics so “accustomed” to that other blog.

    That TFCFM feigns ignorance of exactly which blog (more than once) testifies to his deliberate ignorance, as if that tactic is not seen as shallow as it is by those who are even remotely skilled in the rhetorical arts (and here, the term is not used in its negative connotation).

    Even those not so trained (such as Software Inventor) can easily pick up when games are being played — as well as pick up when the game-player is being trounced.

    SI, I would rebut your observation with a coy: it takes two to have a debate, and such things are known to follow certain rules of exchange, of which TFCFM does NOT partake, Therefore, TFCFM is not debating. While B and I have been harsh to TFCFM, this harshness is not without its due consideration, given the pattern with which TFCFM has set for himself in the manner of which he has chosen to ‘champion’ his positions.

  52. Anon September 5, 2019 8:57 am

    …a recent exchange highlighting my point:

    https://www.ipwatchdog.com/2019/06/19/alice-ip-stakeholders-comment-alices-impact-five-years/id=110509/

  53. TFCFM September 5, 2019 10:06 am

    For all the hyperbole, the issue is really pretty simple. The only remotely-sensible rationale suggested for the assertion that the Federal Circuit may not dispose of an appeal without writing a formal opinion (having unknown and unspecified required parameters) is 35 USC 144, which reads, in relevant part:

    The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record…

    This, upon plain reading, requires review appealed decisions and also requires issuance to the Director of any mandate or opinion which results.

    The question being debated is simply whether this rule requires that the FC generate an opinion for every appealed decision, despite the fact that the statute does not say that it must.

    Hand-waving, insult, and mis-direction are not substitutes for a credible basis for reading such a requirement into the statute. Neither is “because I say so.”

    Absent such a credible basis, advocates of this view can hardly expect intelligent folks to take their word for the fact that the requirement is implicit (despite the fact that the FC’s Rule 36 has been reviewed by both the USSCt and Congress and that neither has modified or negated the rule, despite their ability to do so.)

  54. B September 5, 2019 11:07 am

    @ Anon “My issue with TFCFM is NOT that he has an opinion different than mine.”

    Heck, we disagree on a lot, but when that happens it typically involves an unanswered question of law.

    No one outside this phony joker believes that your statements are based on a mere difference of opinion.

    “B, you assert that TFCFM is NOT a real attorney. I would not go that far.”

    A real attorney, even if only doing real estate or wills and trusts, would at least read the statutes and rules before opining on the statutes and rules. Also, there’s nothing lawyerly in his style of debate. Do you know a lawyer who debates as TFCFM does? “The statute means what WE SAY it means because we say so… and you’re stoopid!” What attorney argues this way on issues of statutory construction – especially when the language is clear on its face? (Ans: a guy who never read the statute)

    Statutory construction is not particularly new or challenging – except when you’re deliberately trying to distort a statute. That’s my problem with Dowd’s law review article. It’s so wrong on the most superficial level. For example, Dowd makes a big fuss about the “to the Director” language in s144. It’s as if Dowd were unaware that the Director of the USPTO isn’t a named party in every ex parte appeal.

    Dowd’s nonsense advocacy piece on Rule 36 will clog up common sense for decades unless the SCOTUS addresses the issue (they won’t). At least Dowd is alone in his intellectual corner.

  55. Concerned September 5, 2019 2:28 pm

    Not an attorney. A person with any street smarts knows that a patent system and legal environment that issues statements that are clearly not factual on the surface, and discards or will not rebut hard evidence, is highly suspect. The Berkheimer court having to remind society that facts matter is telling, it should have been a given all along.

    In my opinion, the patent system has been reduced to wordplay to effect a particular end result, an end result that has little to do with solving real longstanding problems that experts have sought.

    To those who think the patent system is corrupt, I see nothing in the prosecution of my patent application to rebut such an opinion.

    B and Anon et al: If we lived back in colonial 1776, I could see us easily being on a certain side together against all odds. And the truth shall set us free.

  56. anonymous September 5, 2019 3:44 pm

    The sad but likely answer, however ironic, to the question of why a Rule 36 affirmance is acceptable or not is “cert. denied.”

  57. B September 5, 2019 4:21 pm

    “The Berkheimer court having to remind society that facts matter is telling, it should have been a given all along.”

    Berkheimer is dead. Judge Moore’s experiment of incorporating sanity in the Alice/Mayo test has been rejected by almost every judge that signed onto the en banc denial decision.

  58. Anon September 5, 2019 6:04 pm

    Concerned,

    Most people who understand innovation and that actually labor to help inventors protect their innovations will naturally be on a certain side together.

    It’s rather easy to see just who has that leaning, even if all views for all items in patent law do not fall totally into alignment. It is also just as easy to see those who have no clue when it comes to innovation, who speak purely from one (brainwashed) world of tech (like the lemmings of Slashdot and Techdirt) or purely from one world of legal (and just have no underlying grasp of innovation), or heaven forbid, the academics who do not have working knowledge of either.

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