BECAUSE I SAID SO: THE FEDERAL CIRCUIT, THE PTAB, AND THE PROBLEM WITH RULE 36 AFFIRMANCES.

• Author: Lindhorst, Rebecca A.
• Position: Patent Trial and Appeal Board

CONTENTS INTRODUCTION I. A BRIEF HISTORY OF THE FEDERAL CIRCUIT II. ADMINISTRATIVE PATENT APPEALS AND THE HISTORICAL REQUIREMENT OF WRITTEN OPINIONS III. FEDERAL CIRCUIT RULE IV. THE FEDERAL CIRCUIT'S INCREASING RELIANCE ON RULE 36 AFFIRMANCES V. THE POSITIVES AND NEGATIVES OF RULE 36 AFFIRMANCES VI. ARE WRITTEN OPINIONS MANDATORY FOR PTAB APPEALS? A. Rule 36 Affirmances Violate 35 U.S.C. [section] 144 B. Rule 36 Affirmances Deprive Patent Owners of Their Rights Without Constitutionally Sufficient Process C. Rule 36 Prevents Monitoring the Federal Circuit's Compliance with the Chenery Doctrine VII. A FUTURE WITHOUT RULE 36 AFFIRMANCES OF PTAB APPEALS. "[T]here is accountability in the giving of reasons."

--Judge Harold Leventhal (1)

"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. "

-Judge Patricia M. Wald (2)

INTRODUCTION

"Because I said so!" At some point, almost all of us have uttered these words out of frustration, exhaustion, or simply a lack of ability to explain our reasoning. Often times we say these words to an inquiring child when we know our decision is right but we are unable or have no time to articulate the reason why. This statement often leaves the child unsatisfied while allowing the adult to move on to other tasks and conversations.

What happens, however, when these words are issued by a court to a dissatisfied litigant? That is the precise situation that occurs when the Federal Circuit issues a Rule 36 affirmance. The overburdened court, knowing its decision is correct but lacking the time to fully explain why, simply issues a one-line judgment: "AFFIRMED. See Fed. Cir. R. 36."

Unsurprisingly, the use of Rule 36 affirmances has left litigants unsatisfied and frustrated. Members of the patent bar have begun calling for the end of Rule 36 affirmances, specifically in appeals from the Patent Trial and Appeal Board (PTAB).

Parts I through III of this Comment outline a brief history of the Federal Circuit, the historical use of written opinions in administrative patent appeals, and the adoption of Federal Circuit Rule 36. Part IV discusses why the Federal Circuit has increased its reliance on Rule 36 affirmances. Part V explores the advantages and disadvantages of Rule 36. Part VI then proposes that the use of Rule 36 affirmances in PTAB appeals violates the plain language of 35 U.S.C. [section] 144, deprives patent owners of their patent rights without constitutionally sufficient process, and prevents meaningful review of Federal Circuit decisions. Finally, Part VII explores how the Federal Circuit should proceed in order to eliminate the use of Rule 36 affirmances in PTAB appeals.

1. A BRIEF HISTORY OF THE FEDERAL CIRCUIT

   The United States Court of Appeals for the Federal Circuit was created in 1982 in response to a decades-long campaign to create a single intermediate appellate court to hear all patent law appeals cases. (3) The purpose of a single patent appeals court was "to strengthen the U.S. patent system, foster technological growth and industrial innovation, eliminate forum shopping among the regional courts of appeal, and increase uniformity and reduce uncertainty in substantive patent law." (4) This campaign resulted in the Federal Courts Improvement Act of 1982 which established the Federal Circuit (5) through the merger of two previously created Article III courts, the United States Court of Claims and the United States Court of Customs and Patent Appeals. (6) Consequently, the Federal Circuit is a semi-specialized court with nationwide jurisdiction in patent appeals. (7) This near exclusive patent jurisdiction covers all district court patent appeals (8) and any appeal from a decision of the PTAB with respect to a patent application, reexamination, post-grant review, or inter partes review. (9)

   While the Federal Circuit was formed with the primary intention of creating uniformity in patent law, the court's jurisdiction is not limited to patent law. The Federal Circuit also possesses jurisdiction in specified money claims against the United States government, veterans' benefits, and appeals of administrative agencies' decisions, including the Boards of Contract Appeals, the International Trade Commission, and the Merit Systems Protection Board. (10) The bulk of the Federal Circuit's docket, however, continues to include patent related cases, which is consistent with the driving purpose behind the creation of the court. (11)

2. ADMINISTRATIVE PATENT APPEALS AND THE HISTORICAL REQUIREMENT OF WRITTEN OPINIONS

   The PTAB is an administrative agency charged with rendering decisions on appeals from adverse examiner decisions during patent prosecution and post-issuance challenges to patents. (12) PTAB decisions are appealable to the Federal Circuit. (13) After review of the PTAB decision, the Federal Circuit 11 shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case." (14)

   The current statutory requirement mandating an opinion in administrative patent appeals can be traced back to 1893 and the creation of the Circuit Court of Appeals for the District of Columbia. (15) The D.C. Circuit was granted jurisdiction in appeals from the Commissioner of Patents. (16) The enacting statute of the D.C. Circuit required that the opinion of the court "shall be rendered in writing" in every case. (17) In 1929, jurisdiction over administrative patent appeals was shifted to the Court of Customs and Patent Appeals, the predecessor court of the Federal Circuit. (18) Similar to the D.C. Circuit, the Court of Customs and Patent Appeals was statutorily mandated to issue a written opinion in every administrative patent appeal. (19) The statute required that "in every case on appeal from the decision of the Patent Office [the opinion of the Court] shall be rendered in writing and ... a certified copy of said opinion shall be sent to the Commissioner of Patents and shall be entered of record in the Patent Office." (20) In 1952, the statute was amended as part of the Patent Act of 1952. (21) The revised 1952 statute did not expressly require a written opinion in administrative patent appeals. (22) The Court of Customs and Patent Appeals, however, maintained the practice of rendering written opinions in every administrative patent appeal for the entirety of its existence. (23)

   In 1982, jurisdiction over administrative patent appeals was shifted to the Federal Circuit, the successor court of the Court of Customs and Patent Appeals. (24) Two years after the creation of the Federal Circuit, the statute was amended again--reintroducing the express requirement of a written opinion in all administrative patent appeals. The statutory language requiring written opinions remains in effect today. (25) Between 1982 and 1984, the standard operating procedure of the Federal Circuit was to write opinions in all Cctses, ci practice it adopted from its predecessor court. (26) Therefore, it has been proposed that the 1984 amendment was merely a codification of practice rather than a change of expectations. (27)

3. FEDERAL CIRCUIT RULE 36

   In 1989, in response to an expanding docket and the increasing risk of a docket backlog, the Federal Circuit adopted local Rule 36, allowing for affirmances without opinion. (28) Then-Chief Judge Markey described Rule 36 as a "third form of disposition where it's not necessary to explain, even to the loser, why he lost." (29) Federal Circuit Rule 36 provides that:

   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. (30)

4. THE FEDERAL CIRCUIT'S INCREASING RELIANCE ON RULE 36 AFFIRMANCES

   While Federal Circuit Rule 36 was adopted in 1989, use of the Rule has increased drastically in recent years. (31) The Federal Circuit's decisions were roughly balanced between precedential opinions, nonprecedential opinions, and summary affirmances between 2008 and 2011. (32) But the use of Rule 36 affirmances increased dramatically after the passage of the America Invents Act (AIA). (33) The AIA created a number of new post-issuance proceedings to challenge issued patents as well as the PTAB. Since these proceedings became available in 2012, the number of patent appeals heard by the Federal Circuit has steadily...