The Supreme Court has been presented with a series of petitions that address whether the patent law should be treated like any other area of civil litigation – Does it need to follow the same rules of Summary Judgment under Rule 56? Can the lower courts ignore factual disputes presented by the parties in favor of its own fact finding on patent-eligibility decisions? Does the Federal Circuit have to provide some basis for its judgment, like other appellate courts, when it grants a Rule 36 Judgment affirming a lower court or PTAB decision?

There are now four active petitions for certiorari raising one or both of these decisions:

• Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461 (raising both issues in the context of an appeal under 28 U.S.C. 1391)
• ParkerVision, Inc. v. TCL Industries Holdings Co., Ltd., No. 24-518 (raising Rule 36 Judgment issue in the context of an appeal from the PTAB under 35 U.S.C. 144)
• Harris Brumfield v. IBG LLC, No. 24-764 (raising Rule 56 (and related Rule 12(b)(6) issues)
• Audio Evolution Diagnostics v. United States, No. 24-806 (raising Rule 36 Judgment issue also in context of an appeal under 28 U.S.C. 1391)

In this follow up to our December 2024 PTAB Committee meeting on “Local Rule 36: Federal Circuit Review Under Scrutiny at the Supreme Court”, we will provide an update on the scope and status of the various petitions, and commentary on these issues. PTAB Committee Co-Chairs, Charley Macedo and Kenneth Adamo, will be joined by Amicus Briefs Committee Co-Chair, Paul Coletti.

There will be a Q&A session afterward. This event is free to all NYIPLA members and PTAB Committee members. 1.0 NY/NJ CLE credit will be available for attendees.

Please remember to re-register for the NYIPLA and PTAB Committee if you have not yet done so in the new year to continue to participate at no additional cost in the PTAB Committee CLE program on the third Tuesday of every month, at 4:00 p.m. ET. 

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