Posts Tagged: "Rule 36 judgment"

Based on how often the Supreme Court reverses the Federal Circuit, what percentage of the Court’s Rule 36 decisions are wrong? Perhaps 90% of them? Then again it is impossible to really know given how Rule 36 is an impenetrable black box that realistically prevents appeals, insulating the Federal Circuit from any scrutiny from above… The notion that the facts of the case are what they are and will result in the same results in any district court goes right out the window if you look at what passes for “patent justice” in America. Therefore, the shocking lack of consistency court-to-court and judge-to-judge would certainly argue in favor of more, and better, guidance from the Federal Circuit. But use of Rule 36 and the all too familiar one-word judgment that simply says – “Affirmed” – prevents any guidance, let alone meaningful guidance.

The first and perhaps most obvious news story here relates to the fact that the United States Supreme Court believes that Michelle Lee remains Director of the USPTO… This dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB). There are three questions presented by Oil States in the petition for writ of certiorari… Despite these very important questions, the Federal circuit affirmed the Patent Trial and Appeal Board (PTAB) without opinion with a Rule 36 judgment, which is simply a one-word judgment that says “Affirmed” without any explanation.

Erich Spangenberg commented on our most recent Rule 36 article, “Does the Federal Circuit’s use of Rule 36 call into question integrity of the judicial process?” He raised a significant and potent question: Logically, when the Federal Circuit uses Rule 36 to affirm without a written opinion should fees and costs be awarded?… The Federal Circuit is using Rule 36 so often that it has to raise questions even in the mind of the most vocal supporter of the Court. It is entirely predictable that such secrecy would lead people to ask questions, including the dramatic – why is it not appropriate to award at least costs if the appeal is so easy and nothing could be gained from writing an opinion?

The Federal Circuit is using Rule 36 as a docket management tool, which allows the real problems facing the patent system to fester like an open wound. Between the law being hopelessly uncertain, patent examiners that refuse to issue patents, and a PTAB that denies parties even the most basic due process, it is misguided for the Federal Circuit to think they can fulfill their Constitutional and statutory duties with an ever increasing number of one-word decisions that seem to be issued in direct violation of Rule 36 itself.

The principal manner in which the district courts are divining their guidance from the Federal Circuit is by review of the precise language of claims that court finds non-statutory and comparing them to those at issue before the lower court. In Enfish v. Microsoft, Judge Hughes openly acknowledged that the test for patent eligibility is an ex post facto test that compares the instant claims against other cases where there is an opinion and then figures out which case is most similar to the claims in the instant case. Essentially, the patent eligibility test is a matching test without any semblance of intellectual rigor. How then could it be possible that more written opinions would not shed important light and have precedential value? Indeed, given the nature of the 101 test accurately described by Judge Hughes in Enfish, the Federal Circuit should review as many different claims as possible to expand its guidance to the lower courts. Any Section 101 case in the present state of affairs would necessarily have precedential value. How does this continuing affirmance of multiple district fact patterns without written opinions not violate the clear language of Rule 36 itself?

A lack of written opinion in the Rule 36 affirmance issued by Federal Circuit wasn’t an issue for PCT’s counsel. “These types of results reflect a wholesale rejection of the laundry list of appellate issues Holland had attempted to raise,” Laurus noted. “Prompt resolution of this is better than some lengthy opinion that might issue months down the road.”

In PCT International, Inc. v. Holland Electronics, LLC, the use of a Rule 36 judgment is particularly disconcerting because the Federal Circuit upheld the issuance of a permanent injunction by the district court. Since the Supreme Court’s decision in eBay v. MercExchange over a decade ago it has become increasingly difficult, indeed at times impossible, for victorious patent owners to enjoy exclusive rights once they have prevailed in a patent infringement litigation. Issuing a Rule 36 judgment where the patent owner was victorious and a permanent injunction stands robs the patent owner community of vital Federal Circuit precedent that could otherwise be used to inform district courts on the appropriateness of this extraordinarily important remedy.