Posts Tagged: "Rule 36"

But did Judge Reyna really fail to understand the importance that a web page and the page server are not the same thing as the Federal Circuit adjourned to deliberate? Did he and the other judges on the panel continue to have this important, yet fundamental misconception during deliberations? Did the reality that a web page and a page server are not the same thing become appreciated and understood by the Federal Circuit panel, or did this fundamental misconception perpetuate itself up to and through the decision making process? Did counsel for IBM managed to mislead the panel? Did the panel even realize that IBM had made the exact opposite argument about WebSphere technology at the district court? The sad, and rather inexplicable reality is it is impossible to know whether the Federal Circuit was mislead, simply didn’t understand the technology, or was even hoodwinked.

The USPTO admits that the Director does not have statutory authority to adjudicate an issue after a panel has been chosen, but argues that the Director can assert administrative authority to intentionally select Judges that will rule diametrically opposite to those Judges originally assigned to the case, thereby stacking any panel the Director chooses to achieve the result the Director wants in any case… This admission by the USPTO is both stunning and scandalous for at least two reasons. First, the Administrative Procedure Act, which applies to the PTAB, demands decisional independence, which obviously is not happening when the Director of the USPTO can stack a panel to achieve a particular desired outcome.

IntegraSpec was denied the opportunity to make its case here because of collateral estoppel based on the reasoning that they already had a full and fair opportunity to litigate the dispute. What exactly does “full and fair” mean? Figuring out what the means in the context of Rule 36 disposals is complicated. We do know, however, what “full and fair” cannot mean. The term “full and fair” cannot mean “equal.” While the Federal Circuit continues to want to say that cases decided using the Rule 36 summary mechanism are “no less carefully decided,” the fact is that litigants in Rule 36 cases receive less consideration by the Court; this truth is factually indisputable. It takes a certain amount of time to decide the answers to the questions presented, but it also takes a certain amount of time to explain those answers in a written decision. To think the act of writing the decision is purely ministerial and makes no difference strikes me as pure nonsense.

A Federal Circuit Rule 36 judgment can be a valid and final judgment for purposes of preclusive effects. Additionally, district court findings affirmed by a Rule 36 judgment can have preclusive effect as long as each is “necessary” to the final appellate judgment. The Federal Circuit did not address the Circuit split regarding the preclusive effect of independent, alternative holdings.

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.

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?

First, I continue to wish for patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice, although I am mindful of both how naive that sounds and dangerous it could become given competing interests at play. Of course, there is also a very real possibility any statutory reform would simply be ignored by the Supreme Court anyway, as they cling to the judicially created exceptions to patent eligibility that find no support anywhere in the statute or Constitution. Second, I am again also going to wish for meaningful copyright reforms and/or real Internet industry cooperation that recognizes the important rights of content creators, both large and small. It is too easy to steal original content with impunity and that threatens content creators large and small. Finally, while I would like to wish for an end to post grant procedures, I’ll remain content to more modestly wish for a new PTO Director unafraid to reform the post grant process in ways that remove the systemic biases that make the proceedings hopelessly one-sided against patent owners.