Background
CPC Patent Technologies owns U.S. Patent No. 8,620,039, titled “Card device security using biometrics,” which covers biometric authentication technology for card-based security devices. Apple challenged the patent’s validity through an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB), which found claims 1, 2, 19, and 20 unpatentable.
CPC appealed to the Federal Circuit, which affirmed the PTAB’s invalidity ruling under Rule 36 — a procedural mechanism allowing the court to affirm a lower tribunal’s decision without issuing a written opinion. Notably, the same panel on the same day issued a separate written opinion reversing the PTAB’s obviousness findings on other claims of the same patent, creating what CPC called an irreconcilable split in reasoning.
CPC petitioned the Supreme Court, arguing that Rule 36 violates 35 U.S.C. § 144, which states that the Federal Circuit “shall issue to the Director its mandate and opinion” — language CPC contended unambiguously requires a written opinion in every patent appeal from the PTAB.
The Court’s Holding
The Supreme Court denied certiorari without comment, declining to hear the case. This is CPC’s second failed attempt to challenge Rule 36 at the Supreme Court — the Court previously denied a similar CPC petition in November 2025.
The denial continues a pattern of the Court refusing to engage with Rule 36 challenges. Other parties that have unsuccessfully sought certiorari on this issue include ParkerVision, Inc. (denied March 2025), Jodi A. Schwendimann (denied May 2024), and Island Intellectual Property LLC (denied March 2025).
Key Takeaways
- The Federal Circuit’s practice of affirming PTAB decisions without written explanation remains unchallenged by the Supreme Court, despite multiple petitions raising statutory-text arguments.
- Patent owners whose claims are invalidated via Rule 36 affirmance receive no explanation of the appellate court’s reasoning, making it difficult to identify errors or seek further review.
- The statutory argument under § 144 — that Congress mandated written opinions — has now been rejected implicitly by the Court multiple times, suggesting legislative action may be the only path to change.
- The tension highlighted by CPC — where one panel issues a written opinion reversing some PTAB findings while simultaneously affirming others without explanation — remains unresolved.
Why It Matters
Rule 36 remains one of the most controversial features of Federal Circuit patent practice. The court uses it in roughly 40% of its patent appeal dispositions, meaning thousands of patent owners receive final rulings with no written explanation of why their patents were invalidated. For patent owners and their counsel, this creates a black box at the appellate level — there is no reasoning to appeal, no precedent created, and no way to identify whether the panel even considered their arguments.
With the Supreme Court repeatedly declining to intervene, attention may shift to Congress. Patent reform advocates argue that the plain text of § 144 requires opinions, while the Federal Circuit maintains that Rule 36 is a reasonable exercise of its procedural authority for cases that do not present novel legal issues. For now, patent owners appealing PTAB decisions must accept the possibility of receiving no explanation for their loss.