Influential Patent Blog Cites Pillsbury Amicus Brief in Key Appeal

These so-called Rule 36 one-word affirmations have been issued in nearly half of the Federal Circuit’s patent cases, according to Patently-O, “leaving parties and the public in the dark about its reasoning.”

ParkerVision appealed that practice with a Petition for a Writ of Certiorari to the U.S. Supreme Court, arguing that summary affirmations violate 35 U.S.C. §144, which explicitly requires the Federal Circuit to “issue to the Director its mandate and opinion” in appeals from the Patent Office. The case is ParkerVision, Inc. v. TCL Industries Holdings Co., Ltd., et al.

The Pillsbury amicus brief was filed on behalf of the Bar Association of the District of Columbia in support of ParkerVision’s petition for writ. (See brief here.) According to Patently-O, the bar association’s amicus brief brings the perspective of practitioners who regularly appear before both the USPTO and Federal Circuit. The brief, the blog added, “stems from their members’ need for clear precedent and guidance in advising clients,” and “presents a compelling statutory analysis of why Rule 36 violates 35 U.S.C. §144’s opinion requirement.”

The bar association’s brief “most strikingly” illustrates “how the Federal Circuit’s approach represents a break from historical practice.”

Before Rule 36 summary affirmations became common, the court required opinions in every case, following the practice of its predecessor, the Court of Customs and Patent Appeals. “Issuing opinions in every case was the standard, reflecting the practices of the Federal Circuit’s predecessor, the Court of Customs and Patent Appeals,” the DC brief stated. Rule 36 affirmances “compromise[s] the role of the Federal Circuit as the single appellate court for patents.”

Due to these concerns, the Patently-O blog predicted that the Supreme Court will accept the appeal for review.