Federal Circuit Guideline 36 has actually been slammed for leaving IP professionals in the dark as it enables the court to get in judgment of affirmance without the reasoned analysis of the Court. Usually, the Guideline enables a judgement of affirmance without viewpoint if among the enumerated conditions is satisfied and the viewpoint would not have precedential worth. The enumerated conditions are:
( 1) the judgment, choice, or order of the high court appealed from is based upon findings that are not plainly incorrect;
( 2) the proof supporting the jury’s decision suffices;
( 3) the record supports summary judgment, directed decision, or judgment on the pleadings.[1]
On April 10, 2023, the Federal Circuit provided 3 Guideline 36 judgments that summarily verified the last composed choices by the PTAB for One World Technologies, Inc. v. Chervon (HK) Ltd., Longhorn HD v. Unified Patents, and Uniloc 2017 v. Google As noticeable from the summaries listed below, the Federal Circuit has actually made use of Guideline 36 judgments to verify PTAB choices including a large range of difficulties, arguments, and findings.
One World Technologies, Inc. v. Chervon (HK) Ltd.[2]
The Federal Circuit summarily verified 4 inter partes evaluation ( IPR) last composed choices in One World Technologies The 4 IPR petitions set up by the PTAB referred to gardening tool patent claims. In the IPR procedures, the PTAB dismissed the petitioner’s difficulties based upon anticipation and obviousness arguments. The petitioner likewise provided constitutionality arguments, however the PTAB dismissed stated arguments as fixed by the Supreme Court’s choice in United States v. Arthrex ( 2021 ).
Longhorn HD LLC v. Unified Patents LLC[3]
In Longhorn HD, the Federal Circuit summarily verified the PTAB’s decision of obviousness in view of previous art. The Patent Owner challenged the top priority date of the asserted previous art, arguing that the provisionary applications from which the previous art declared top priority date stopped working to satisfy the requirements of 35 U.S.C. § 119( e)( 1) as set out by the Federal Circuit in Dynamic Drinkware v. National Graphics ( 2015 ). Under Dynamic Drinkware, the requirements of a provisionary application need to “consist of a composed description of the development … in such complete, clear, succinct, and precise terms” to make it possible for practice of the development in the non-provisional. The PTAB discovered the provisionary applications to effectively reveal the declared system and therefore dismissed the Patent Owner’s arguments.
Uniloc 2017 LLC v. Google LLC[4]
In Uniloc 2017, the PTAB revoked a number of claims due to a decision of obviousness in view of the mix of 2 previous arts. The Patent Owner argued that the mix stopped working to satisfy the crucial restriction of their claims, however the PTAB discovered that the requirements and prosecution history of the claims-at-issue were not restricted to the Patent Owner’s argument. For that reason, the PTAB discovered that the mix of the previous art satisfied the constraints.
Summary
Exhibited in the events above, the Federal Circuit has actually utilized Guideline 36 judgments to summarily verify PTAB procedures throughout the board. Although Guideline 36 judgments are nonprecedential in nature, IP professionals are left without a response or assistance to the appellant’s legal concern or other concerns raised. While the Court might justifiably feel overloaded by its case load, Guideline 36 can produce more concerns than responses. These concerns might result in more appeals down the line; therefore, Guideline 36 might not be lightening the load as planned.
As one possible modification, the “enumerated conditions” of Guideline 36 might be even more specified, restricting its application to legal concerns the Court has actually formerly examined in information and consisting of stated viewpoints as a list of referral product. Additionally, a Guideline 36 judgment might be accompanied by a basic summary of the Court’s notes and remarks concerning the PTAB choice (i.e., a Court redline), which might offer the needed insight to the thinking for affirmance.
[1] Guideline 36( a) Judgment of Affirmance Without Viewpoint.
[2] One World Technologies, Inc. v. Chervon (HK) Ltd., No. 2022-1329, 2023 WL 2847519 (Fed. Cir. Apr. 10, 2023) verifying IPR2020-00884, IPR2020-00886, IPR2020-00887, IPR2020-00888
[3] Longhorn HD LLC v. Unified Pats., LLC, No. 2022-1361, 2023 WL 2847506 (Fed. Cir. Apr. 10, 2023) verifying IPR2020-00879
[4] Uniloc 2017 LLC v. Google LLC, No. 2022-1245, 2023 WL 2847507 (Fed. Cir. Apr. 10, 2023) verifying IPR2020-00755