ParkerVision v. Rule 36 | Patently Strategic Podcast

If a court stripped away your property rights, wouldn’t you at least want an explanation? The answer is obvious, but the reality is appalling. The practice of revoking patent rights on appeal without explanation has been happening to inventors at the Federal Circuit Court of Appeals (CAFC) at an alarming rate. In over 43% of PTAB cases on appeal at the CAFC, inventors receive a single-word response – “AFFIRMED” – rather than an opinion. This practice is referred to as the application of Rule 36 and, in cases involving the PTAB, amounts to the seizure of property from an administrative agency without any reasoning provided by a constitutionally created Article III court.

Based on the findings of our guests today, who are taking this very issue up with the Supreme Court, Rule 36 violates clear statutory requirements, raises Constitutional questions, and defies a rich history of court precedent. Gene Quinn has said that this Federal Circuit Court practice is “placing America’s inventors under siege,” and friend of the podcast and former Chief Justice of the Federal Circuit, Paul Michel, has called this practice a “dereliction of duty” that “warrants immediate Supreme Court scrutiny.” Our guests this month – Jeff Parker, Amit Vora, and Juliette Fassett – are fighting hard to make that happen.

Our Guests on the Way to SCOTUS

ParkerVision has filed a petition for a writ of certiorari with the Supreme Court and recently submitted a reply brief in an attempt to get the Supreme Court to take up this innovation-crippling practice. In the coming days, the justices are scheduled to discuss the petition in private conference, where they will vote on whether to take the case.

To help us unpack Rule 36 practice and what ParkerVision is hoping to do about it, Dr. Ashley Sloat and I have enlisted the assistance of the three people closest to this case and its implications:

• Jeffrey Parker, CEO of ParkerVision – an absolute pioneer in wireless technology.
• Amit Vora, appellate litigator at Kasowitz Benson Torres, representing ParkerVision in its petition for cert with the Supreme Court.
• Juliette Fassett from the Fair Inventing Fund, advocating for inventors’ rights. Juliette is an inventor herself, with over 30 years of experience building consumer product companies.

Episode Overview: The Battle for Dignity and Due Process

Through an illuminating and sometimes heartbreaking interview, Jeff, Amit, and Juliette walk us through the core issues of what comes down to some very fundamental questions about both due process and inventor dignity. Along the way, we discuss:

• The significance of ParkerVision’s innovations.
• Rule 36, §144, and the PTAB.
• What sets this cert apart from prior attempts to get the Court to take on Rule 36.
• The importance of judicial respect and the dignity of a reasoned explanation for patent holders who’ve had their rights stripped away.
• Why judicial reasoning is key to what makes a court decision a valid court decision.

Section 144 at the Core

Every year, the Supreme Court receives thousands of petitions to take up cases but only grants cert on roughly one percent. If the Court denies cert, the lower decision stands. If accepted, you get to take a crack at a landmark decision. This is at least the 5th attempt since 2021 to get SCOTUS to take on Rule 36, so the odds might seem daunting, but Amit and ParkerVision are taking a novel approach that centers on what appears to be a clear statutory violation being made by the Federal Circuit in its use of Rule 36.

Rule 36 is a local rule that the Federal Circuit promulgated in the late 1980s, and it states that the Federal Circuit may issue “a judgment of affirmance without opinion.” The problem with that rule is that it conflicts with Section 144 of the Patent Act – a statute that Congress passed in 1984. This statute says that the Federal Circuit, upon its determination of an appeal from the PTAB, issue “its mandate and opinion”. No room for ambiguity exists here since an “opinion” is a long-standing legal term of art that means a court’s statement of reasons. So, a one-word judgment of affirmance under Federal Circuit Rule 36 is not an opinion. A lot of patent law issues can be pretty nuanced, but through the lens of Section 144, this one seems pretty black and white unless the Court takes it up and does something like try to redefine the word “any” again.

History on Their Side

Beyond the plain statutory violation, Amit also lays out the particular reasons Congress had when it enacted Section 144 and the rich historical record that preceded the statute – a history that clearly erases any potential doubt that Congress intentionally wanted the appellate court with jurisdiction over patent agency appeals to explain its reasoning in every case. The history shows that the Federal Circuit’s predecessor (the ?Court of Customs and Patent Appeals) and the Federal Circuit have both been committed to this institutional norm of reason-giving for decades, going all the way back to unequivocal statements made by Chief Judge Markey (Chief Judge of the CCPA and first Chief Judge of the CAFC) and his colleague Judge Giles Rich (widely considered an architect of modern patent law) that connect directly with language chosen for the statute.

Dignity and Due Process

Dignity and due process are two recurring themes throughout our wide-ranging conversation, and both get at the heart of an issue that should matter to everyone – whether you’re steeped daily in patent law or just want some kind of future for your kids. It’s not only this little arcane procedural patent issue. This struggle goes to elemental principles of property rights and of dignity. We now have a regularly occurring situation where patent holders are deprived of vested property rights in already issued patents and then denied any judicial explanation as to why. This is an affront to their dignity.

This affront is particularly troubling in the way that it intersects with a key pillar of constitutionally protected due process rights. To quote Professor Adam Mossoff, “Judicial reasoning is key to what makes a court decision a valid court decision. As we lawyers are wont to say, it’s not the result that matters but how the court got to the result in explaining its legal and policy analyses.” When the Federal Circuit issues a Rule 36, the Federal Circuit itself has held that it’s only endorsing the bottom line. It’s not adopting the reasoning of the PTAB. So your property is being taken away by an administrative agency rather than an Article III court, and then the Federal Circuit is just rubber-stamping that decision without giving any legal justification. This creates a situation where you can lose your property rights without ever receiving an explanation of why – raising a significant constitutional question around whether Rule 36 affirmations, especially in the context of IPRs, violate the 5th Amendment’s due process clause.

Widespread Support

ParkerVision’s case has gained widespread legal and institutional support from inventors’ groups, patent holders, and other stakeholders in the patent system. The petition has received the support of 13 amici across nine briefs, including Professor Mary Ann Glendon of Harvard Law School; Amit notes that no prior petitioner has received that much support. This support also now includes two former Federal Circuit judges – Paul Michel and Kathleen O’Malley. Former Chief Judge Michel has said that the regular practice of issuing judgments without opinions in appeals from PTAB reviews contravenes the literal terms of Section 144. Judge O’Malley looks at it from a slightly different perspective and sees this as a due process problem, given that guardrails against unduly depriving a party of property rights break down in IPR procedures with well-documented due process issues.

Chilling Effect on Innovation

A strong patent system is a cornerstone of innovation. That strength is in part derived from reliability and predictability. The lack of transparency that comes with practices like the application of Rule 36 makes the system anything but predictable and has a chilling effect on patent law, investment, and innovation. During the interview, Jeff tells us a story about how he’s had the fortune of starting three companies and now has a new invention that he knows exactly what to do with but isn’t sure if it’s even worth pursuing given the uncertainty around the ability to protect the IP.

Also Available to Watch

In addition to everywhere you listen to podcasts, this complete video interview is available on our YouTube channel. We’ll also be publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok alongside our monthly Mossoff Minutes, where we provide updates and quick takes on movements in patent reform, significant court rulings, and innovation policy happenings, all with the assistance of Professor Adam Mossoff.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:

• Patent Wars: Innovators, Revolutionaries, and the Race to Reform. A deep dive into the problems plaguing the patent world and solutions on the table. Topics include the PTAB, eligibility, enablement, injunctions, and the patent troll myth. Featuring interviews with Judge Paul Michel, Professor Adam Mossoff, and Randy Landreneau.
• American Inventor Horror Story. A breakdown of the consequences of AIA and the PTAB through a wide array of personal perspectives from inventors, patent practitioners, and a former USPTO patent examiner.
• Why Patents Exist with Adam Mossoff. Why do patents exist in the first place? What function do they serve in society? And what is their historical origin story?
• PTAB Survival Guide. Part Two in our patent quality series, focused on making your patents more resilient to IPR challenges at the Patent Trial and Appeal Board.