R.36 No Opinion Judgments at the Supreme Court

A third petition for writ of certiorari to the United States Supreme Court has now been filed stemming from the Federal Circuit’s Rule 36 Debacle.  Despite the need for clear guidance on the implementation of AIA Trials, most such appeals are being decided by the Federal Circuit without any opinion.  I have argued that the process violates a provision of the Patent Act that requires an the court to issue an opinion in cases on appeal from the Patent & Trademark Office.

In Leak Surveys, Inc. v. FLIR Systems, Inc. (Supreme Court 2017), the petitioner explains the problem:

The Federal Circuit is the only avenue for appealing a PTAB decision that extinguishes a patent property right. But as the record of this case demonstrates like few others, the Federal Circuit’s excessive invocation of Rule 36 in PTAB appeals serves to undermine the public’s confidence that the Federal Circuit is providing meaningful and even-handed judicial review of the PTAB, but within the confines of the Federal Circuit’s limited appellate jurisdiction to review patent validity decisions that the PTAB is  authorized by statute to make in the first instance.

The petitioner asks three questions:

1. Does the Federal Circuit … exceed the scope of its limited appellate jurisdiction when it affirms a PTAB … decision that rests upon a plain and egregious error…?

2. On appeal of an IPR decision by the PTAB to invalidate a patent or patent claim, when is the Federal Circuit required to provide a statement of its reasons for affirming – in order to safeguard constitutional limits on the Federal Circuit’s administrative appellate jurisdiction (S.E.C. v. Chenery Corp., 318 U.S. 80 (1943)), and/or to comply with statutory requirements such as 35 U.S.C. §144 and 5 U.S.C. §§ 702, 704, and 706.

3. On appeal of an IPR decision by the PTAB to invalidate a patent or patent claim, when does the Federal Circuit violate a patent owner’s constitutional due process rights by considering and affirming based on arguments that were not previously considered by the PTAB, and/or for reasons apart from those stated by the PTAB itself in its written decision?

Briefing will continue over the next couple of months.

[Read the petition here: Petition for Writ_Leak Surveys v. Flir Systems].

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Note: Celgard’s parallel petition remains pending with PTO’s response due August 21, 2017 (being handled by USDOJ Solicitor’s Office).  Of course, these cases will be moot if the Supreme Court favors the patentee in Oil States.  Finally, folks interested in Oil States might want to attend Duke Law’s upcoming symposium (in Washington DC) focusing on the question: Is Administrative Review of Granted Patents Constitutional? (Funded through Corporate Sponsors).