October 17, 2017

The Demise of Rule 36 Judgments in Federal Circuit Decisions Relating to IPRs

The Federal Circuit issued a fairly mundane decision today in Boundary Solutions, Inc. v. Corelogic, Inc.(PTAB October 17, 2017), affirming the PTAB’s decision to cancel all challenged claims of two related patents.  Over the course of 11 pages, the decision explained how the PTAB’s obviousness determination was supported by substantial evidence and Appellant’s arguments were unpersuasive.

So why is the decision even worth discussing?  In short, such an ordinary, non-noteworthy decision is actually an anomaly in Federal Circuit jurisprudence as it relates to IPR decisions.  Why?  Because the Court has, over the past 5 years, made liberal use of its Rule 36, which allows the court to render a judgment without an opinion.  This practice has, however, come under increasing fire.  Commentators have called the practice an “unprecedented abuse” and have characterized it as the “Rule 36 debacle.”

On at least three occasions, petitions for writs of certiorari have been filed seeking Supreme Court review of this Rule 36 practice (See, e.g., Shore v. Lee).  Perhaps leery of Supreme Court action on this issue, the Federal Circuit’s use of this Rule 36 technique has dramatically declined in recent months.

In general, this decrease in the Federal Circuit’s use of Rule 36 is welcome, even if some of the decisions are as mundane as Boundary Solutions.  Stakeholders in the patent system will be better off with a more robust catalog of Federal Circuit decisions to which they can refer.