SCOTUS Denies ParkerVision, Island IP and Other IP Petitioners Further Review

The Supreme Court today nixed several high-profile IP petitions, including two that touch on the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) controversial use of one-word affirmances under Rule 36.

Rule 36

In ParkerVision v. TCL Industries Holdings Co., Ltd., ParkerVision petitioned the High Court in November 2024 asking the justices 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 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.”

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 PTAB, the petition argued 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.”

Also denied today was the petition in Island Intellectual Property LLC v. TD Ameritrade, Inc., which in part asked 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?” The petition also challenged the courts’ use of Federal Rule of Civil Procedure 56 on summary judgment procedures, arguing that both district courts and the Federal Circuit are misusing federal and local rules in a manner that results in summary affirmance of flawed determinations made at the summary judgment stage. Island IP also filed an amicus brief in ParkerVision’s Supreme court bid asking the Court to consider the two cases in conjunction.

Jurisdiction

In Lighting Defense Group (LDG) v. Snaprays (dba SnapPower), the CAFC reversed a district court’s decision in May 2024, finding that LDG purposefully directed extra-judicial patent enforcement activities at SnapPower in Utah. LDG petitioned the Supreme Court in November 2024, asking the Court to answer the question “[w]hether a defendant subjects itself to personal jurisdiction anywhere a plaintiff operates simply because the defendant knows its out-of-forum conduct ‘would necessarily affect marketing, sales, and other activities’ within the forum…—even though the defendant has no contacts with the plaintiff or the forum whatsoever.” The petition argued that the CAFC’s ruling ultimately permits “patentees to be sued anywhere ‘a targeted seller operates.’”

Collateral Estoppel

Finally, the Court today also denied the petition in Koss Corp. v. Bose Corp., which stems from a July 2024 CAFC precedential ruling for Bose that dismissed as moot Koss’s appeal of the Patent Trial and Appeal Board’s (PTAB’s) invalidation of certain wireless earphone patent claims due to a prior district court decision finding the claims patent ineligible. Koss sued Bose in Texas for patent infringement and on the same day also sued Plantronics, Inc. on the same patents. Bose subsequently petitioned for inter partes review of the patents and the PTAB found all of the asserted claims of two of the patents unpatentable, and some of the claims of a third unpatentable. Koss appealed and Bose cross-appealed the patentability findings, but the CAFC said that, because Koss agreed to dismissal of the Plantronics case with prejudice, without reserving a right of appeal, the district court’s invalidation of the claims is final, and not superseded by Koss’s Second Amended Complaint, as Koss argued.

Koss’s petition asked: “When a district court grants a Rule-12(b)(6) motion to dismiss but does so without prejudice and with leave to amend, may that non-merits determination be given collateral-estoppel effect on the theory that it merged into a later with-prejudice dismissal stipulation?”