SurfCast, Inc. v. Microsoft Corporation

Section 144 of the Patent Act directs the Federal Circuit to decide appeals from the Patent Trial and Appeal Board (PTAB) by issuing “opinion[s].” 35 U.S.C. § 144. Congress had also required the Federal Circuit’s predecessor to issue opinions in patent agency appeals. And it made sense for Congress to retain that reasoning-giving directive when it created the Federal Circuit: the court’s man-date was to clarify the legal standards for invention patents. Uncertainty stifles innovation. The Federal Circuit’s first Chief Judge, the Honorable Howard T. Markey, thus said: “In our Court there will be an opinion explaining enough to tell you what the law is in every case.” He added: “We do not just render a one-worded decision and go away.” In recent years, though, the Federal Circuit has routinely issued one-word “judgment[s] of affirmance without opinion” under Federal Circuit Rule 36(a), saying only “AFFIRMED” rather than issuing an opinion. That happened here. The PTAB invalidated claims in SurfCast’s issued patents through inter partes review, a process that flouts due-process principles; and the Federal Circuit summarily affirmed. SurfCast has thus been deprived of vested property rights, yet no court has ever explained why, despite the guidance of § 144. The question presented is: Whether 35 U.S.C. § 144, which requires the Federal Circuit to issue “opinion[s]” in PTAB appeals, is a reasoninggiving directive that prohibits the Federal Circuit’s practice, under Federal Circuit Rule 36(a), of summarily affirming PTAB decisions without issuing opinions.