Nothing hurts worse than a Rule 36 (single page, single sentence affirmance of the decision below) after years of work and millions of dollars spent on a case. Rule 36 makes rehearing, en banc review, and/or cert petitions a nearly impossible task for Appellant. Yet the Court of Appeals for the Federal Circuit has issued Rule 36 on nearly 50% of the 600 PTAB appeals a year – leading to the 88% affirmance rate of PTAB decisions. Besides the immediacy of losing, the lack of explanation seems to many in the patent bar offensive to their principles of right and justice. The Supreme Court has denied review of this practice at least 15 times in the past – and has one more cert petition still pending filed by Celgard last summer.

Celgard has argued “issuing Rule 36 judgments in more than 50% of appeals from the Patent Office offends principles of right and justice” in its Reply to the USPTO’s Reply to Celgard’s cert petition. Celgard argues “judgments without opinions pursuant to Federal Circuit Rule 36 (hereinafter “Rule 36 judgments”) are statutorily prohibited in appeals from the Patent Office.” Celgard contends “Rule 36 judgments conflict with the clear and unambiguous language of 35 U.S.C. § 144: the Federal Circuit “shall issue to the Director its mandate and opinion.” “Even if not statutorily barred, the Federal Circuit’s use of Rule 36 judgments has far exceeded any bound of reasonableness and has offended principles of right and justice.”

The USPTO and U.S. Government disagree arguing “The Federal Circuit issues Rule 36 judgments —after giving cases “the full consideration of the court,” United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir.), cert. denied, 522 U.S. 950 (1997)—only if it concludes that an opinion would not meaningfully serve the purposes that petitioner highlights. In particular, the court issues a Rule 36 judgment without opinion only if an opinion would have no precedential value and the court finds no ground to revisit the decision of the lower tribunal. See Fed. Cir. R. 36.” And in response to Celgard’s “right and justice” allegation, the USPTO stated “[s]ummary orders are among the tools that courts may use to resolve their cases even though such decisions do not provide precedential guidance…While the Federal Circuit has used Rule 36 affirmances more frequently as the number of appeals from USPTO decisions has skyrocketed….that increase does not suggest that the court is breaching its duty to articulate the law and promote uniformity.”

Celgard developed its own technology (microporous membrane separator adding a ceramic layer to limit the growth of lithium dendrites that cause of lithium battery failures and overheating), patented that technology, and then licensed technology — before the AIA was passed. After the passing of the AIA, the licensees serially attacked the patents through six inter partes reviews.

Many in the patent bar feel that the taking of a patent representing substantial commercial success, millions in R&D, and years of development, not to mention millions in litigation costs, should never end in a summary affirmance by the Federal Circuit. They argue the Federal Circuit should not be able to “punt” on a difficult case with complex legal and factual issues

In the end, no matter whether you are a Patent Owner or Petitioner, after a long fought legal battle and the millions spent on litigation, the parties are owed more than a single sentence “THIS CAUSE having been heard and considered, it is ORDERED and ADJUDGED: PER CURIAM – AFFIRMED. See Fed. Cir. R. 36.”

This article appeared in the February 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.