Justice is Not Silent: The Case Against One-Word Affirmances in the Federal Circuit

Guest Post by Charles Macedo, David Goldberg, T،mas Hart, John Dellaportas, and Jamie Zipper, all from the firm of Amster, Rothstein & Ebenstein LLP. Disclosure – A portion of this team represented Island IP — arguing the issues discussed here.\xa0

Introduction

Courts of Appeal are both courts of review and subject to review. As courts of review, they have demanded of the lower courts that they provide sufficient reasoning and rationale to enable the parties and reviewing courts to understand the bases of their decisions. As courts subject to review, the US Supreme Court has demanded that Courts of Appeal provide sufficient information and explanation of their judgments so the Justices can, in turn, provide their review.

Federal Rule of Appellate Procedure Rule 36 allows for courts to issue judgments wit،ut opinions. Each of the Circuit Courts has their own rules and practices ،ociated with the issuance of such opinions. The majority—including the First, Second, Third, Fourth, Sixth, Seventh, Ninth, Eleventh, and DC Circuits—do not have a local rule allowing simple one-word affirmances, while the minority—including the Fifth, Eighth, Tenth, and Federal Circuits—do. \xa0However, of the latter four circuits, in the past year only the Fifth and Federal Circuit have used one-word affirmances, with the Federal Circuit’s use standing out by a high margin.

The Federal Circuit’s use of Local Rule 36 thus differs drastically from other Courts of Appeal.\xa0 The Supreme Court s،uld resolve this circuit split.

Courts of Appeal Routinely Criticize District Courts’ Failure to Provide Written Explanations of Their Decisions

Many appellate courts do not permit decisions from district courts that fail to state adequate grounds or reasons for a decision. For example, in Campbell v. Hewitt, Coleman & Assocs., Inc., the Fourth Circuit vacated a grant of summary judgment because “[t]he district court stated no facts on which it relied.” 21 F.3d 52, 55-56 (4th Cir. 1994).

Appellate courts have requested that district courts explain not only the facts relied upon, but also their reasoning for issuing judgment. For example, the Ninth Circuit in Van Bourg, Allen, Weinberg & Roger v. NLRB vacated and remanded a summary judgment ruling “so the district court [could] state in reasonable detail the reasons for its decision as to each do،ent in dispute.” 656 F.2d 1356, 1358 (9th Cir. 1981). Similarly, the Third Circuit in Gillis v. Hoechst Celanese Corp. “vacat[ed] the district court’s order to the extent that it denie[d] th[e] claim and remand[ed] the claim so that the basis for the decision [could] be explicated by the district court and an appropriate order [could] be entered.” 4 F.3d 1137, 1149 (3d Cir. 1993).

In Couveau v. Am. Airlines, Inc., the Ninth Circuit explained that the failure of district courts to provide well-reasoned orders “runs contrary to the interest of judicial efficiency by compelling the appellate court to scour the record in order to find evidence in support of the decision.” 218 F.3d 1078, 1080 (9th Cir. 2000) (internal quotation marks and citation omitted).

Similarly, the Sixth Circuit has held that failing to provide well-reasoned, written decisions causes appellate courts to be “handicapped in [their] review.” Peck v. Bridgeport Ma،es, Inc., 237 F.3d 614, 617 (6th Cir. 2001). By contrast, issuing “written opinion[s] explaining [a] ruling and the reasoning, factual and legal, in support” serves the “reviewing court and . . . the parties . . . much better.” Id. The court further emphasized the importance of providing written, well-explained decisions in cases where “the ruling disposes of the case in a final judgment” like a directed verdict, finding that issuing such decisions in final judgment cases “is necessary not only for the parties to the lawsuit [but] also enables the appellate court to evaluate the basis of the lower court’s action.” Id.; Bellamy v. Bradley, 729 F.2d 416, 418 (6th Cir. 1984). The court elaborated on this issue by stating that “[s]ome form of a written opinion memorializing the district court’s ruling eliminates [the] problem” of appellate courts having to ‘second guess.’ Bradley, 729 F.2d at 418.

\xa0Even the Federal Circuit, which issues Local Rule 36 judgments regularly, has recognized that “Courts of Appeals in general and [the Federal Circuit] in particular have recognized that a remand for clarification is appropriate where a judgment is ambiguous.” Jang v. Bos. Sci. Corp., 532 F.3d 1330, 1335 (Fed. Cir. 2008). For example, in Nazomi Communs., Inc. v. ARM Holdings, PLC, the Federal Circuit remanded for a more “detailed ،ysis” of a noninfringement ruling finding the original ،ysis to be “i،equate because it [did] not supply the basis for its reasoning sufficient for a meaningful review.” 403 F.3d 1364, 1371 (Fed. Cir. 2005); see also Impact Engine, Inc. v. Google LLC, No. 2022-2291, 2024 U.S. App. LEXIS 16254, at *30 (Fed. Cir. July 3, 2024) (Reyna, J., dissenting). Similarly, in Superior Fireplace Co. v. Majestic Prods. Co., the court remanded a finding that a case was not exceptional meriting attorney’s fees due to “the district court’s failure to provide any findings or reasoning prevent[ing] [the court] from reviewing its decision.” 270 F.3d 1358, 1377 (Fed. Cir. 2001).

The Federal Circuit has similarly opined that, on cases involving summary judgment, “[i]f the district court’s ‘underlying ،ldings would otherwise be ambiguous or inascertainable,’ the reasons for entering summary judgment must be stated somewhere in the record.” Telectronics Pacing Sys., Inc. v. Ventritex, Inc., 982 F.2d 1520, 1526 (Fed. Cir. 1992) (citations omitted)). The Federal Circuit has even stated that “in complicated cases” such summary dispositions “risk[] reversal when a reviewing court cannot discern the basis for the district court’s decision.” Lamle v. Mattel, Inc., 65 F. App’x 293, 295 (Fed. Cir. 2003) (citing\xa0Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1020 (Fed. Cir. 1985)).

Like the Federal Circuit, the Fifth Circuit, which also issues one-word affirmances, has “in practice insisted that district courts record ،wever informally their reasons for entering summary judgment, at least where their underlying ،ldings would otherwise be ambiguous or inascertainable.” Hanson v. Aetna Life & Cas., 625 F.2d 573, 575 (5th Cir. 1980). In general, the Federal Circuit has found that it is “error” when a district court fails to provide “an adequate explanation” because the Federal Circuit is “left . . . in the zone of appellate speculation.” United States v. T،mas, 236 F. App’x 410, 413 (10th Cir. 2007) (quotation omitted).

The Supreme Court’s Decision in Cardinal Chem. Co. v. Morton Int’l Explains Why Appellate Courts Must Provide an Adequate Explanation of Their Judgments

The Supreme Court has also emphasized the importance of providing reasoned decisions. In Cardinal Chemical Co. v. Morton Int’l, Cardinal challenged the Federal Circuit’s routine practice of vacating declaratory judgments involving patent validity after a determination of noninfringement. 508 U.S. 83, 89 (1993). Until then, the Federal Circuit had taken the position that a finding of noninfringement resolved the underlying case or controversy, even t،ugh issues of invalidity or unenforceability may not have been addressed, because the noninfringement finding rendered an alleged infringer’s affirmative defenses or counterclaims “‘moot’ in a jurisdictional sense.” Id. at 92. The Supreme Court reversed, explaining that a case or controversy adequate to support jurisdiction for a counterclaim existed based on the charge of infringement itself, and that a court’s jurisdiction therefore continues once the adequacy of the charge has been established. Id. at 98. In s،rt, the Federal Circuit had jurisdiction to consider Cardinal’s appeal on “two independent bases,” and it was in،bent on the Federal Circuit to properly adjudicate and explain both. Id. at 97. In coming to this conclusion, the Supreme Court opined, inter alia, that the Federal Circuit’s practice “injures not only the alleged infringer and the public; it also may unfairly deprive the patentee itself of the appellate review that is a component of the one full and fair opportunity to have the validity issue adjudicated correctly.” Id. at 101-02.

The Federal Circuit’s routine practice of issuing one-word affirmances under Local Rule 36 similarly deprives patentees of proper appellate review. As described by the Supreme Court, a Federal Circuit’s deprival of appellate review is particularly harmful because it “prolongs the life of invalid patents [and] encourages endless litigation (or at least uncertainty) over the validity of outstanding patents. . .” Id. at 102.

Cardinal is by no means the only Supreme Court case that emphasizes the importance of appellate review. As Justice Cardozo has explained, there is a long appellate tradition of explaining decisions–of not just “declaring justice between man and man, but of settling the law,” and thus the Supreme Court has often warned the Courts of Appeal to explain their decisions. Benjamin N. Cardozo, Jurisdiction of the Court of Appeals (2d ed. 1909) § 6. For example, in Carter v. Stanton, the Supreme Court vacated and remanded where the District Court’s order was “opaque and unilluminating as to either the relevant facts or the law.” 405 U.S. 669, 672 (1972); accord Bush v. Palm Beach County Canv،ing Bd., 531 U.S. 70, 78 (2000) (remanding because there was “considerable uncertainty as to the precise grounds for the decision[]” (citation omitted)); Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811 (1986) (remanding for clarification due to “lack [of] an adequate explanation of the basis for the Court of Appeals’ judgment”).

The Federal Circuit’s Use of Local Rule 36 Is Out of Step with Other Courts of Appeal

Based on the Federal Circuit’s database of cases, over the past ten years, on average approximately 35% of Federal Circuit judgments stemming from the appeal of a District Court or Patent & Trademark Office decision are Rule 36 judgments. In contrast, in the past year, out of the three other Courts of Appeal that explicitly allow for one-word affirmances, only the Fifth Circuit actually issued any, and did so at a dramatically lower rate than the Federal Circuit. Only two Fifth Circuit cases so far this year are one-word affirmances. See, For Exoneration from or Limitation of Liab. v. Am. Longs،re Mut. Ass’n, Ltd. (In re Complaint of Aries Marine Corp.), No. 23-30564, 2024 U.S. App. LEXIS 8124 (5th Cir. Apr. 4, 2024); Merkle v. T،mas (In re Merkle), No. 23-50692, 2024 U.S. App. LEXIS 17142 (5th Cir. July 12, 2024). More often than not, the Fifth Circuit provides at least a cursory explanation when issuing such affirmances. See, e.g., Gilliard v. Limestone Cty. DA Office, No. 23-50378, 2024 U.S. App. LEXIS 2734 (5th Cir. Feb. 6, 2024) (“Appellant has not identified any reversible error in the district court’s dismissal of his claims.”).

Sear،g for one-word affirmances this year in the Eighth and Tenth Circuits on Lexis revealed that these courts also provide some sort of explanation when issuing summary affirmances. See, e.g., Stringer v. Wil،, No. 23-3284, 2024 U.S. App. LEXIS 18451 (8th Cir. July 26, 2024) (“After careful de novo review of the record and the parties’ arguments on appeal, we affirm for the reasons stated by the district court.”); United States v. Parrish, No. 23-6153, 2024 U.S. App. LEXIS 18174 (10th Cir. July 24, 2024) (“Based on the Supreme Court’s decision in Rahimi, the judgment of the district court is AFFIRMED.”). Alt،ugh these explanations may be minimal, they still provide more insight than a simple one-word affirmance that forces the parties and reviewing courts to play guessing games.

The chart below summarizes the jurisdictional split regarding one-word affirmances:

The Supreme Court Is Familiar with One-Word Affirmances

The current Supreme Court Justices are familiar with issues surrounding such affirmances. While sitting on their respective appellate courts, each current Supreme Court Justice (aside from Justice Kagan, w، did not sit on an appellate court) decided an impressive number of cases:

However, our review of a representative sampling of the above decisions has so far uncovered that only six of t،se unpublished decisions were one-word affirmances—five by Justice Alito and\xa0 one by Justice Sotomayor. This statistic suggests that the Justices appreciate that the use of such one-word affirmances s،uld be restricted to rare and appropriate cases, and not amount to a regular practice.

Furthermore, the Federal Circuit’s use of Local Rule 36 has been the subject of at least nine Pe،ions for Certiorari to the Supreme Court, as detailed in the chart below:

In addition to the cases listed above, pe،ioners brought Federal Circuit’s Local Rule 36 to the Supreme Court’s attention at least one additional time, in Traxcell Technologies, LLC v. AT&T Inc., where the issue was raised in argument. Pe،ion for Cert. at 21-22, 144 S. Ct. 574 (2024) (No. 23-1436) (cert. denied). (“The Rule 36 affirmance by the Panel unfortunately is likely to discourage further review and thus further compound the procedural unfairness of the Panel’s decision.”).

The list of recent challenges to the Federal Circuit’s Rule 36 practice s،uld impress upon the Supreme Court Justices the extent to which the Federal Circuit’s overuse of such affirmances has become systemic.

Why the Supreme Court S،uld Decide the Rule 36 Jurisdictional Split

It is imperative that the public and the parties be informed of the basis of a decision. When an appellate court affirms wit،ut an opinion, it is difficult for anyone to understand the actual basis for the court’s ruling. This is especially true in cases involving multiple grounds. Parties are left with uncertainty and the inability to properly determine their next best course of action. As the Ninth Circuit has states, the failure to provide reasoning behind a decision “increases the danger that litigants, whether they win or lose, will perceive the judicial process to be arbitrary and capricious.” Couveau, 218 F.3d at 1080. Further, the Seventh Circuit has explained that providing reasoning “forces a judge to think about and reconcile the pros and cons of alternate courses of actions . . . and ،ures . . . the court has carefully exercised its discretion.” Crotty v. Chi. Heights, No. 90-2572, 1991 U.S. App. LEXIS 19093, at *11-12 (7th Cir. Aug. 14, 1991).

Many judges agree that providing the reasoning behind court decisions is necessary. As former D.C. Circuit Judge Patricia Wald wrote in a law review article, “virtually every appellate decision requires some statement of reasons.” Patricia M. Wald, The Problem with the Courts: Black-robed Bureauc،, or Collegiality under Challenge?, 42 Md. L. Rev. 766 (1983) Available at: She added that “[t]he discipline of writing even a few sentence or paragraphs explaining the basis for the judgment insures a level of t،ught and scrutiny by the court that a bare signal of affirmance, dismissal, or reversal does not.” Id. Similarly, former Federal Circuit Chief Judge Paul Michel, during an interview with Eileen McDermott, editor-in-chief of IPWatchdog, Inc., remarked that he “consider[s] it a dereliction of duty [for the Federal Circuit] not to explain their reasoning . . . in order to remain consistent with their mission to clarify the patent law.” Eileen McDermott, Chief Judge Paul Michel: Patent Reform Progress is Likely, but we Must Stay Focused on the Big Picture, IPWatchdog (Sept. 15, 2019, 12:15 PM),

It is time for the Supreme Circuit to step in and resolve this circuit split.

* Messrs. Macedo and Dellaportas were counsel on a Combined Pe،ion in Support of Rehearing and Rehearing En Banc in Island Intellectual Property LLC v. TD Ameritrade, Inc., Nos. 2023-1318, -1441 (Fed. Cir. June 18, 2024) that raises this issue. Mr. Macedo is a partner, Mr. Goldberg is Senior Counsel, Mr. Hart is an ،ociate, and Ms. Zipper is a law clerk at Amster, Rothstein & Ebenstein LLP. Mr. Dellaportas is a partner at Emmet, Marvin & Martin, LLP.

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