Strike Two for CPC at High Court in Rule 36 Challenge

The U.S. Supreme Court today denied a petition for certiorari challenging the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) use of Rule 36 summary affirmances in appeals from the Patent Trial and Appeal Board (PTAB).

CPC Patent Technologies petitioned the Court in March of this year asking the Justices to consider the question: “Whether the Federal Circuit can affirm a PTAB decision without opinion in contravention of the clear statutory requirement of an ‘opinion’ when reviewing such decisions.”

CPC appealed from a Rule 36 decision of the Federal Circuit affirming a PTAB ruling that invalidated claims 1, 2, 19 and 20 of CPC’s U.S. Patent No. 8,620,039 on the same day that it reversed the PTAB’s obviousness findings on other claims of the patent. According to CPC’s petition, “[t]he two decisions are difficult, if not impossible, to reconcile.”

This is the second such petition CPC has brought to the Court. In November 2025, the Court denied cert to another petition challenging Rule 36 practice and asking substantially the same question as the petition denied today. The underlying inter partes review (IPR) rulings in both petitions were brought by Apple, Inc.

In the latest case, the ‘039 patent is titled “Card device security using biometrics.” While a panel of the CAFC found in separate IPRs brought by ASSA Abloy AB that the relevant disclosure of the prior art did not reach what the ‘039 patent’s claims require in setting or establishing the memory location that stores biometric data, the same panel in the appeal from the IPR brought by Apple affirmed the PTAB’s invalidity findings. CPC’s position was that both appeals were “predicated upon the assumption that merely ‘associating’ data in a memory location satisfies a claim limitation that requires ‘defining’ a memory location.”

CPC’s chief argument was that the language of 35 U.S.C. § 144 is “unambiguous” in its call for the Federal Circuit to issue an “opinion” in reviews of a PTAB decision. The statute reads:

“The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.”

Under Fed. Cir. Rule 36(a)(1), the CAFC may “enter a judgment of affirmance without opinion, citing this rule, when it determines that any of the following conditions exist and an opinion would have no precedential value: (1) the judgment, decision, or order of the trial court appealed from is based on findings that are not clearly erroneous.”

“Facially, the option not to issue an opinion relying on Rule 36 is inconsistent with the statutory mandate to issue an opinion pursuant to Section 144,” said CPC’s petition.

While CPC acknowledged the “myriad” petitions that have attempted to challenge Rule 36, it argued that this was the right case to take up because none of the previous petitions involved the situation where “two appellate decisions from the panel addressed what amounts to the same issue on the same patent, but reached diametrically opposed results.”

ParkerVision, Inc. petitioned the Court in late 2024, making essentially the same argument as CPC, but lost that bid in March 2025. And Jodi A. Schwendimann lost her own challenge to Rule 36 where the Federal Circuit issued a Rule 36 affirmance of claims as being anticipated when, according to the petition, two different venues issued inconsistent claim constructions and it wasn’t clear which the CAFC had deemed correct. 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?”—was also denied in March 2025.