ParkerVision is Latest to Petition SCOTUS for Review of CAFC’s ‘Heavy Reliance’ on Rule 36

ParkerVision, Inc. has filed a petition for a writ of certiorari, docketed on Thursday, November 7,  with the United States Supreme Court, presenting the question of whether the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) habit of issuing one-word affirmances under Rule 36(a) is prohibited under 35 U.S.C. § 144.

The underlying cases stem from appeals of two Patent Trial and Appeal Board (PTAB) decisions in which the Board invalidated all challenged claims of ParkerVision’s U.S. Patent Nos. 7,292,835 and 7,110,444, geared generally to advanced wireless solutions for communications networks. The Federal Circuit issued two separate Rule 36 judgments on June 5, 2024, affirming the PTAB’s analyses with no explanation. The court’s use of Rule 36 has increased in recent years and is a controversial subject.

According to the petition, the CAFC’s first Chief Judge, the Honorable Howard T. Markey, during the the First Annual Judicial Conference of the CAFC, specifically said: “In our Court there will be an opinion explaining enough to tell you what the law is in every case…. We do not just render a one-worded decision and go away.” And 35 U.S.C. § 144 requires the court to issue “opinions,” which has been historically defined as “a court’s statement of reasons for its decision.” This premise flows from the CAFC’s predecessor, the Court of Customs and Patent Appeals (CCPA), which the petition notes “was statutorily required to issue ‘opinion[s]’ in appeals from the PTO’s predecessor, the Patent Office,” a requirement that was revived after the CCPA was replaced with the CAFC.

While the theory is that the use of Rule 36 is justified due to the significant increase in cases the CAFC has seen following the America Invents Act’s creation of the Patent Trial and Appeal Board (PTAB), the petition argues that a “reason-giving” opinion need not deluge the court and that “the Federal Circuit would satisfy § 144 by issuing a one-paragraph document identifying the grounds for reversal or vacatur that the appellant has raised and stating why they fail.”

The petition cites statistics from an article by Daniel F. Klodowski showing that “since the AIA’s enactment in 2011, and as of August 22, 2024, the Federal Circuit has issued a Rule 36 summary affirmance in 43.01% of its PTAB appeals from inter partes review, post-grant review, and covered-business-method proceedings—i.e., 569 out of 1,323 appeals.” Furthermore, the court issued 60 Rule 36 decisions as of August 2024 and 75 opinions in PTAB appeals, “which amounts to a relative-Rule-36 frequency of 44.44%.”

ParkerVision pointed to Judge Paul Michel’s statements in a September 2019 interview with IPWatchdog that when he was on the court, “we used Rule 36 in two very limited circumstances: for pro se personnel cases of no merit at all and for plainly frivolous cases.” Michel added that he considers it “a dereliction of duty not to explain their reasoning in at least three to four pages in order to remain consistent with their mission to clarify the patent law. It’s very hard to justify.”

This “heavy reliance on Rule 36” has resulted in a situation where “patent holders rarely receive a judicial explanation why their already issued patents have been invalidated,” says the petition.

Even if the Justices disagree with the petitioners’ interpretation of Section 144 as “a reason-giving directive,” the petition implores the Court to consider the question nonetheless, in order to explain on the record “why a one-word affirmance suffices.”

Kasowitz Benson Torres, which is representing ParkerVision, issued a press release Friday explaining that “without an opinion, patent holders are left without an understanding of why their vested property rights have been invalidated, creating uncertainty that destabilizes the patent system and stifles innovation.” Jeffrey Parker, ParkerVision CEO, added:

“For inventors like us, patents are not just legal assets; they represent countless hours of research and development. When those rights are stripped away without explanation, it’s a blow to innovation and to the future of technology. The lack of a written opinion leaves us and other patent holders in the dark about why our patents were invalidated, undermining the very purpose of the patent system.”

This is the latest in a series of petitions that have challenged the CAFC’s use of Rule 36. In May of this year, the High Court denied a petition for certiorari filed by Jodi A. Schwendimann, which presented the question of whether it is permissible for the CAFC to issue a Rule 36 affirmance of claims as being anticipated when, according to the petition, two different venues issued inconsistent claim constructions and it isn’t clear which the CAFC has deemed correct.

In October, Island Intellectual Property LLC filed a petition in Island Intellectual Property LLC v. TD Ameritrade, Inc that in part asks the Court whether it’s “proper for the Federal Circuit to use its own unique Local Rule 36 to affirm district court rulings with one-word decisions lacking explanation or analysis, when the grounds for affirmance are unclear in view of the arguments made on appeal?”