Is the Federal Circuit using Rule 36 to avoid difficult subject matter?

Is the Federal Circuit using Rule 36 to prevent meaningful review by a Supreme Court that has seemed keenly interested in second guessing so many important decisions reached by the Court in recent years?

On April 2nd, 1982, the Federal Courts Improvement Act was enacted to, in part, create the U.S. Court of Appeals for the Federal Circuit. This new court, part of the U.S. court of appeals, was created by combining the former U.S. Court of Customs and Patent Appeals and the appellate jurisdiction of the U.S. Court of Claims, both of which were abolished by the creation of the Federal Circuit. The only circuit court of appeals which was defined by its jurisdiction over federal law rather than its geographical boundaries, the Federal Circuit was charged with overseeing appeals in certain cases, including cases involving patent law.

Of course, the Federal Circuit’s place as the special court hearing all patent appeals in the United States has not been without controversy over the years. Criticisms of the Federal Circuit have included the fact that the appeals court doesn’t show much deference to either U.S. district courts or to the U.S. Patent and Trademark Office when appeals come out of that executive branch agency. As well, some have noted that the U.S. Supreme Court has shown a much greater willingness in recent years to reverse decisions made by the Federal Circuit in patent cases. Although SCOTUS only reviewed a total of five patent cases decided by the Federal Circuit in the appellate court’s first 15 years of existence, six Federal Circuit patent decisions were reviewed and reversed by the nation’s highest court during the 2016-17 term alone.

Despite these issues, one aspect of the Federal Circuit often criticized is the technical expertise of some the judges sitting on that court. However, in recent months, even that aspect of the Federal Circuit seems to be coming under greater scrutiny in that arena because it is uncertain based on the questions being asked by the judges during oral argument whether they truly understand the technology involved in the cases they are deciding.


Most recently, during oral arguments in Parallel Networks v. IBM, Circuit Judge Jimmie Reyna made what struck some as an incredible gaffe when he seemed to struggle to tell the difference between a web page and a web server. To wit: “You’re saying that those web pages are web servers?” And: “So a web page and a page server are the same thing?”

A “web page” is a hypertext document connected to the World Wide Web; the article you’re reading right now is published on a web page. A “web server” is the combination of hardware and software which is utilized in order to serve contents to the World Wide Web and deliver web pages to clients. Anyone who has ever tried to build a basic website probably knows the difference between those two concepts, and thus would have had an easier time understanding the technical issue set before Judge Reyna.

Obviously, Judges cannot be experts on all things, but this apparent lack of understanding of something so fundamental to the case was a bit alarming for the patent owner. Surely, Judge Reyna would clear up his understanding of the difference between a web page and a web server after oral argument and realize that the arguments being made by the defendant were unnecessarily confusing, but also contradicted arguments previously made.

Unfortunately, we will never know whether Judge Reyna continues to believe that a web page and a web server are the same thing, or whether the other Judges on the panel were equally confused, because the Federal Circuit issued a Rule 36 affirmance of the trial court’s decision in favor of IBM. Essentially, a Rule 36 affirmance is just a rubber stamp of the decision previously made, which substantively reads as one sentence: “Affirmed.” Whether the decision of the trial court is affirmed for the right reason, the wrong reason, or based on an incomplete or even incorrect understanding of the technology will never be know. Rule 36 deprives the litigants of the Federal Circuit’s reason and analysis.

Rule 36 is a growing problem, but here where there are serious questions raised at oral argument about whether the Federal Circuit is comprehending the technology involved a Rule 36 decision fundamentally strikes at the integrity of the judicial process. There is no way to know how or why the Federal Circuit came to their decision, just that they did.

This is not the only time this year that Federal Circuit judges have evidenced a lack of an ability to understand the technical aspects of an argument presented before them. This March, the Federal Circuit issued a Rule 36 affirmance in Cascades Projection v. Epson. During oral arguments in front of that panel, Judge Todd Hughes went so far as to tell an attorney, “I mean, you may be wrong for all I know, you may be right, I have no idea without expert testimony to distinguish between the two [technical terms at issue].”

Rule 36 affirmances at the Federal Circuit have been on the rise in recent years. This growing usage of one-word decisions from the Federal Circuit raises rather serious concerns, which justify many questions, including whether the Federal Circuit is simply using Rule 36 to avoid difficult subject matter, or to prevent meaningful review by a Supreme Court that has seemed keenly interested in second guessing so many important decisions reached by the Court in recent years. 


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Join the Discussion

10 comments so far.

  • [Avatar for LazyCubicleMonkey]
    August 4, 2018 12:50 am

    If only all judges tried to understand the subject matter as much as this guy: – who learned some java programming so he can understand the subject matter argued in front of him, we’d be in a much better place.

    I wonder

  • [Avatar for Anon]
    August 2, 2018 05:45 pm

    I am STILL feeling your pain, B.

  • [Avatar for B]
    August 2, 2018 03:47 pm

    “Isolated echo-chamber,” and to tell the truth, I didn’t mean the first sentence as sarcasm.

    The CAFC has little clue as to the damage they’re doing. Hell, the only reason Berkheimer en banc even mentioned that Mayo was an evidence-based decision was because I told Judge Stoll where to look two months before the en banc decision. It’s on audio btw. I’m not bragging. I’m disgusted.

    Four months since oral hearing and no decision.

  • [Avatar for Eric Berend]
    Eric Berend
    August 2, 2018 03:07 pm

    @ 6. ‘Anon’; 5., ‘B’:

    If by eight words into the second paragraph of B’s comment, sarcasm wasn’t intrinsically obvious, then the term “echo-chamber” in its third line, should do nicely.

  • [Avatar for Anon]
    August 1, 2018 08:16 am


    Your sarcasm emoticon did not make through with your post.


  • [Avatar for B]
    July 31, 2018 04:33 pm

    “Is the Federal Circuit using Rule 36 to avoid difficult subject matter?”

    Short answer: no

    Many judges on the CAFC just know everything, and my personal experience on oral argument is that they don’t appreciate wayward attorneys challenging the wisdom they’ve accumulated in their isolated echo-chamber. Most times Rule 36 is merely a mechanism to skip the inevitable boring write-up and take an early lunch.

    They merely decline to provide answers to the mortals.

  • [Avatar for Disenfranchised Patent Owner]
    Disenfranchised Patent Owner
    July 31, 2018 10:22 am

    oops… I meant to type “expediency”

  • [Avatar for Disenfranchised Patent Owner]
    Disenfranchised Patent Owner
    July 31, 2018 10:20 am

    I have an example decided along different lines (of reason?) than Cascades:
    CAFC hid behind Rule 36 in my recent appeal based [in part] on Aqua Products.
    Clearly, the PTAB wrongly assigned the burden of proof to us. NEVERMIND!
    CAFC ruled “Off with their heads!” ie., “AFFIRMED. See Fed. Cir. R. 36.”
    What led the CAFC to do so? Expedience? Laziness? Bias? All of the above?

  • [Avatar for Ted]
    July 31, 2018 09:59 am

    Great article, it’s alarming how fast technology seems to be outpacing the supreme court in general.

    They shouldn’t have one foot in the door setting new precedents if they can’t devote the resources to gain an appropriate understanding of the context.

  • [Avatar for Steve B]
    Steve B
    July 31, 2018 05:10 am

    why not send Judge Reyna a copy of this expose and see if he responds.