By Dennis Crouch

Four new amicus briefs were filed last week in ParkerVision v. TCL, bringing the total to eight and adding substantial firepower to the challenge against the Federal Circuit’s practice of issuing summary affirmances without opinion. I wanted to quickly run through the briefs and talk through their various perspectives on why the court’s Rule 36 practice warrants Supreme Court review.

You can read in the links below that I have written several times about this pending case and more generally about the no-opinion judgment problem. The basic background is that the Federal Circuit has an ongoing and extensive practice of issuing no-opinion judgments in a substantial percentage of its cases. ParkerVision argues, inter alia, that this practice violates 35 U.S.C. § 144’s explicit requirement that the Federal Circuit “shall issue . . . its mandate and opinion” when deciding Patent Office appeals.

The ParkerVision docket, along with companion case Island IP, has been distributed internally within the Supreme Court and scheduled to be discussed at the court’s January 10, 2025 conference.

Documents Filed with the Court:

Prior Patently-O posts about the case:

The following is a discussion of the four most recent amicus briefs filed with the court — all supporting the petition.

Association for American Innovation Brief

The Association for American Innovation (AAI), along with inventors Paul Morinville and Jeffrey Depp, focus their brief on how Rule 36 undermines the America Invents Act’s quality-control function. They argue that Inter Partes Review was designed to create a feedback loop improving patent quality, but this only works if the Federal Circuit explains its reasoning.

The AAI brief makes three key arguments:

  • One-word affirmances break the quality improvement chain by depriving stakeholders of critical guidance. When the Federal Circuit issues an opinion, patent examiners, PTAB judges, and practitioners can understand how the law is being applied and adjust accordingly. Without opinions, “no product deviation information is produced, so no information can be sent to PTAB judges, supervisory examiners, or any other persons evaluating the product.”
  • Rule 36 affirmances aggravate constitutional concerns about property rights. When politically appointed PTAB judges invalidate patents with minimal oversight, it raises due process and takings issues that are exacerbated by the Federal Circuit’s failure to provide meaningful review.
  • Summary affirmances effectively insulate panel decisions from further review, making the panel “the sole and final judicial arbiter of the validity of any patent.”

Alliance of U.S. Startups & Inventors for Jobs Brief

USIJ‘s brief emphasizes how Rule 36 particularly impacts small companies and individual inventors. They note that IPR proceedings have become a weapon wielded by large companies against smaller ones, with invalidation rates now reaching 71% in 2024. The brief argues this problem is compounded when the Federal Circuit rubber-stamps these invalidations without explanation.

Drawing on detailed legislative history, USIJ explains that Congress intentionally limited IPR challenges to evidence found in “patents or printed publications.” Yet the PTAB frequently reaches beyond these limits, considering expert testimony and other evidence. Without written Federal Circuit opinions, this statutory violation goes unchecked.

Harris Brumfield Brief

Harris Brumfield the perspective of an inventor who experienced Rule 36 firsthand. His electronic trading GUI patents were invalidated by the PTAB and summarily affirmed by the Federal Circuit. The brief emphasizes how Rule 36 “deprives property owners of an ability to seek meaningful review” and “ignores the role of the Federal Circuit of articulating patent law precedent for the lower courts to follow.”

Brumfield’s brief also challenges the Federal Circuit’s reliance on Taylor v. McKeithen, 407 U.S. 191 (1972), noting that while courts have discretion in how to write opinions, this doesn’t justify issuing no explanation at all.

Island IP Brief

I previously discussed the Island IP amicus, and the patentee’s co-pending petition before the Supreme Court.  The brief here emphasizes how the Federal Circuit’s practice deviates from other circuit courts. Notably, the brief explains that only three other circuits permit one-word dispositions at all — and only the Fifth Circuit has issued any in 2024 (three cases), compared to dozens from the Federal Circuit.  The brief suggests that the two cases, ParkerVision and Island IP, could together provide an ideal vehicle for addressing Rule 36 practice.

Looking Forward

Both TCL and LG have waived their right to respond to the petition. With this strong showing of amicus support highlighting systemic problems with Rule 36 practice, the Supreme Court will soon decide whether to take up this important issue. The case offers a chance to restore transparency and accountability to patent appeals, fulfilling the promise made by the Federal Circuit’s first Chief Judge Howard Markey that the court would never “just render a one-worded decision and go away.” The First Annual Judicial Conference of the United States Court of Appeals for the Federal Circuit, 100 F.R.D. 499, 511 (1983).



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