The number of summary affirmances in patent cases at the Federal Circuit has grown explosively over the last several years, from 96 in 2013 to 179 in 2016. In a summary affirmance, the court merely affirms the prior decision, without providing any written opinion setting forth the reasons for doing so.

The rise of summary affirmances may reflect the increased number of appeals at the Federal Circuit engendered by the new types of proceedings permitted since 2012 by the America Invents Act. Such proceedings (e.g., inter partes reviews), decided by the Patent Trial and Appeal Board rather than by a district court, have often been appealed to the Federal Circuit. According to a recent article in Law360, on appeal, the Federal Circuit has proven very deferential to the PTAB’s decisions, affirming a vast majority of the decisions, typically via summary affirmances. See Ryan Davis, Fed. Circ.’s Embrace of PTAB to Fuel More AIA Reviews, Law360 (Mar. 8, 2016).

Summary affirmances are intended to be used solely for cases where the logic is so clear that no explanation is required, particularly in cases where oral argument took place. Judge Moore, for example, speaking at the PTAB Bar Association’s inaugural conference on March 3, opined that “I don’t think that anyone that ever comes to an oral argument that I’ve participated in loses and doesn’t know why.” See Matthew Bultman, Fed. Circ. Can Manage Influx of Cases, Judges Say, Law360 (Mar. 3, 2017). However, some litigants contend that the use of summary affirmances has sometimes been extended beyond the realm of clear-cut cases, leading to uncertainty and confusion. The company Leak Surveys, for example, requested a rehearing after the Federal Circuit issued a summary affirmance upholding a PTAB IPR decision invalidating parts of two of its patents, arguing that the court should provide an opinion when it relies on new or alternative grounds to affirm the PTAB. (Leak Surveys v. FLIR Systems, Nos. 16-1299, -1300, Dkt. 64 (Fed. Cir. Feb. 9, 2017)). More recently, on February 27, inventors Pui-Kwong Chan, May Sung Mak and Yung Wang asked for a rehearing after a Federal Circuit panel issued a summary affirmance upholding a PTAB judgment cancelling multiple claims in their patent on cancer treatment. (Chan v. Yang, No. 16-1214, Dkt. 48 (Fed. Cir. Feb. 27, 2017)).

Some commentators, in contrast, have no objection to the current use of summary affirmances. These commentators note that although the total number of summary affirmances has increased, the increase merely tracks the increase in the number of appeals handled by the Federal Circuit, with the percentage of decisions involving a summary affirmance holding steady. Accordingly, these commentators argue, despite the significant use of summary affirmances, there have still been more than enough published opinions to provide legal guidance.

Yet other commentators contend that the issuance of substantive opinions along with decisions is not merely a pragmatic decision left to the discretion of the Federal Circuit based on its current caseload, but rather is a statutory requirement inherent in the Patent Act itself, at least in the case of appeals from the PTAB. These commentators cite the language of 35 U.S.C. § 144, which states that the “Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office … [and] shall issue to the Director its mandate and opinion.” Leak Surveys, for example, has cited this statutory language in its request for rehearing and has suggested that it might bring the issue to the U.S. Supreme Court for clarification.