Rule 36: The Ides of March for the Federal Circuit?

Julius Caesar. The Ides of March (or March 15) is the date Julius Caesar was assassinated in 44 BC.

Julius Caesar. The Ides of March is notoriously known as the date Julius Caesar was assassinated in 44 BC.

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. Still, it is interesting to see the Federal Circuit asked for an opposing brief in the en banc petition in Leak Surveys, Inc. v. FLIR Systems, Inc. The Federal Circuit similarly asked for an opposing brief in Cascades Projection LLC v. Epson America, Inc.

One might wonder whether these decisions by the Federal Circuit to invite response briefs in Leak Surveys and Cascades Projection has something to do with the Supreme Court the day before similarly asking for the views of the U.S. government on another Rule 36 disposition in Oil States Services, LLC v. Greene’s Energy Group, LLC. Perhaps these two events are wholly unrelated, but much ink has been spilled recently here (see Rule 36 archive) and elsewhere (see here, here, here and here) about the Federal Circuit’s Rule 36 practices and judges are not as apolitical as some may think. It is a small “p” political to be sure, but history is replete with examples of judges sensing a change of winds in advance of the storm arriving, which some might even say is a very positive feature of the judicial system.

Perhaps the Federal Circuit is trying to look ahead at what the Supreme Court may do on the venue issue in TC Heartland? Just take a look at these charts on the resolution of motions to dismiss. In looking at these statistics it becomes easy to see why the infringer lobby wants to see cases filed in the District of Delaware and the Northern District of California instead of the Eastern District of Texas. Motions to dismiss for under 35 U.S.C. 101 for failure to state a claim are nearly twice as likely to be denied in the Eastern District of Texas as they are in either Delaware or the Northern District of California.

Clearly, getting the “right” judge versus the “wrong” judge makes all the difference in the world to litigants, which obviously shouldn’t be the case. However, that doesn’t necessarily mean that venue in the Eastern District should be automatically and unceremoniously chopped. Where is the concern about aggressive use of motions to dismiss that declare patent claims invalid as lacking patent eligible subject matter without even the most basic claim construction?

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.

So how in the world can the Federal Circuit look at district court results in 101 cases and not take advantage of every possible opportunity to provide guidance on the scope and meaning of the amorphous, highly subjective Alice/Mayo framework? In some settled areas of the law, using Rule 36 makes sense.  But here, where “guidance” is all over the map, the Federal Circuit is clearly failing to meet its fundamental responsibility to promote consistency in patent law, after all the entire reason the Federal Circuit was created was to harmonize patent laws across the U.S. and act as the chief patent appeals court in the United States. So if the Federal Circuit declines to provide guidance in uncertain, unstable and evolving areas of the law the Court is not living up to the reason it was created.

Rule 36 continues to be used in 101 appeals from Article III courts so the Federal Circuit is not slowing down. Below is an update from our earlier listing of cases where Rule 36 has been used to affirm 101 rulings from Article III courts, with numbers 14-17 being the new cases added from our previous list.

With the first ever PTAB bar association meeting in DC this week and the PPAC quarterly meeting also this week having a PTAB update on its agenda coupled with the FY17 and FY18 budgets and the USPTO fee rules up in the air we should see March as a very busy month on Rule 36 issues.

So when will the activity of the Federal Circuit start to change?  We will probably have to wait to see that trend appear by April based on March data, that is if there will be a perceivable change at all.

  1. Becton Dickinson and Co. v. Baxter Int’l Inc., Appeal No. 15-1918 (decided May 9, 2016) [Remote Pharmacy Monitoring]. Becton, Dickinson & Co. v. Baxter Int’l Inc., 639 F. App’x 652 (Fed. Cir. 2016) (per curiam).
  2. IP Learn-Focus, LLC. v. Microsoft Corp., Appeal No. 15-1863 (Decided July 11, 2016) [computer learning system comprising particular combinations of different types of sensors (e.g. optical sensors, nonoptical sensors, and imaging sensors) and software programming, applied to MS’s Kinect device]. IP Learn-Focus, LLC v. Microsoft Corp., No. 15-1863, 2016 WL 3667604 (Fed. Cir. 2016) (per curiam).
  3. Novo Tranforma Techs. L.L.C. v. Sprint Spectrum, L. P., Appeal No. 15-2012 (decided September 23, 2016)[payload delivery system that eliminates the incompatibility between different communication services employing different media for communicating information]. Novo Tranforma Techs. L.L.C. v. SprintSpectrum, L.P., No. 15-2012, 2016 WL 5335040 (Fed. Cir. 2016) (per curiam).
  4. Broadband iTV Inc. v. Hawaiian Tele., Inc., Appeal No. 16-1082 (decided September 26, 2016) [Automated Control of Video-on Demand Technology]. Broadband iTV Inc. v. Hawaiian Tele., Inc., No. 16-1082, 2016 WL 5361570 (Fed. Cir. 2016) (per curiam).
  5. Blue Spike LLC v.Google, Inc., Appeal No. 16-1054 (decided October 10, 2016) [Alternative to digital watermarking by creating a “Signal Abstract”, a smaller digital representation of the digital signal, that can be used for identification purposes]. Blue Spike, LLC v. Google, Inc., No. 16-1054, 2016 WL5956746 (Fed. Cir. 2016) (per curiam).
  6. Concaten, Inc. v. AmeriTrak Fleet Solutions, LLC, Appeal No. 16-1112 (Decided October 11, 2016) [Snow management system where real-time data is collected from a plurality of working snowplows and that data was then used to optimize the routing and operation of subsequent snowplow operations]. Concaten, Inc. v. AmeriTrak Fleet Solutions, LLC, No. 16-1112, 2016 WL 5899749 (Fed. Cir. 2016) (per curiam).
  7. GT Nexus, Inc. v. Inttra, Inc., Appeal No. 16-1267 (December October 11, 2016) [Computer network architecture called “common carrier system” that integrates existing automated carrier booking and tracking systems and enables multiple shippers and multiple carriers to communicate across a common platform]. GT Nexus, Inc. v. INTTRA, Inc., No. 16-1267, 2016 WL 5899189 (Fed. Cir. 2016) (per curiam).
  8. Netflix Inc. v. Rovi Corp., Appeal No. 15-1917 (decided November 7, 2016) [Automated Viewing Recommendations and Booking-marking in Interactive Program Guides]. Netflix Inc. v. Rovi Corp., No. 15-1917, 2016 WL 6575091 (Fed. Cir. 2016) (per curiam).
  9. American Needle, Inc. v.Zazzle Inc., Appeal No. 16-1550 (decided November 10, 2016) [selling objects online using a two-dimensional format to preview merchandise in three dimensions].  American Needle, Inc. v. Zazzle Inc., No. 16-1550, 2016 WL 6647774 (Fed. Cir. 2016) (per curiam).
  10. Personalized Media Commc’n LLC v., Inc., Appeal No. 15-2008 (decided December 7, 2016) [Seven distinct network control applications form seven different and patentably distinct patents].  Personalized Media Commc’n LLC v., Inc., No. 15-2008, 2016 WL 7118532 (Fed. Cir. 2016) (per curiam).
  11. MacroPoint LLC v. FourKites Inc., Appeal No. 16-1286 (decided December 8, 2016) [Five vehicle tracking applications]. MacroPoint, LLC v. FourKites Inc., No. 16-1286, 2016 WL 7156894 (Fed. Cir. 2016) (per curiam).
  12. Voxathon LLC v. FCA US LLC, Appeal No. 16-1614 (decided December 9, 2016) [Technology for allowing driver to access telephone calls through Vehicle Entertainment and Data Systems]. Voxathon LLC v. FCA US LLC, No. 16-1614, 2016 WL 7174144 (Fed. Cir. 2016) (per curiam)
  13. HealthTrio, LLC v. Aetna, Inc., Appeal No. 2016-1034 (decided January 18, 2017) [health care database maintained by normalizing and remodeling data from disparate, incompatible healthcare databases to form new data structures].  HealthTrio, LLC v. Aetna, Inc., No. 16-1034, 2017 WL 192962 (Fed.Cir. 2017) (per curiam)
  14. Appistry, Inc. v., Inc.,Appeal No. 2015-2077 (decided February 10, 2017) [distributed computer system that vastly increased processing capabilities and added reliability and scalability].
  15. Appistry, Inc. v., Inc.,Appeal No. 2017-2477 (decided February 10, 2017) [distributed computer system that vastly increased processing capabilities and added reliability and scalability] (companion case to #14; involved different but related patents.)
  16. RaceTech, LLC v. Kentucky Downs, LLC.,Appeal No. 2016-1672 (decided February 10, 2017) [terminal-based, networked hardware and software systems for pari-mutuel wagering on historical horse races, marketed as “Instant Racing.”].
  17. Parus Holdings Inc. v. Sallie Mae Bank, Appeal Nos. 2016-1179, -1180, and -1181 (decided February 27, 2017) [cross-system communication across different networks and protocols (e.g., telephone, voicemail, email, web, fax, text, and paging messages) so as to remove the requirement of using a separate conventionally compatible type of device (i.e., computer, telephone, mobile phone, fax machine, or pager) for each communication type].


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Join the Discussion

3 comments so far.

  • [Avatar for Scalia's Ghost]
    Scalia’s Ghost
    March 2, 2017 05:18 pm

    Contrary to recent suggestions, it appears Section 144 does not require an opinion.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 1, 2017 06:01 pm

    David @1-

    Yes. Correct. Most of what Peter and I have written about is how the use of Rule 36 is violated by its own explicit language. Rule 36 is only appropriate where an opinion would have no precedential value. That is why we continue to focus on 101, where any and all opinions would have precedential value.


  • [Avatar for David Boundy]
    David Boundy
    March 1, 2017 05:51 pm

    The statute identified by Prof. Couch only requires an “opinion” in deciding appeals from the PTAB, not from district courts.