A Mysterious, Protracted Rule 36 Judgment

The oral argument of the day comes from Biogen v. Iancu. This case was decided in December 2020; but, it was argued in December of 2019. It took the Federal Circuit over twelve months to decide the appeal by a Rule 36 judgment. How strange. If a case qualifies for Rule 36, why would the panel take so long to dispatch the appeal? Usually, Rule 36 judgments issue within a few weeks of oral argument, at the longest. This one took over a year from the date of oral argument.

I took a look on PACER and there were no clues as to why the decision took a long time. The panel was comprised of Judge Newman, Judge Moore, and Judge Chen. I have some theories on why it could have taken a long time. One, perhaps the court was pondering taking the case en banc sua sponte. Two, perhaps there was a majority and a dissent and no strong opinion on either side. So, after protracted deliberation, the panel opted for a Rule 36. Three, perhaps Covid got in the way somehow.

There were two issues that might have prompted a sua sponte en banc review. First, Judge Newman has been vocal about the Director interloping into appeals of IPR’s when one of the parties drops out. [Link] Such was the case in this oral argument, where Judge Newman again challenged the presence of the Director at the oral argument.

Second, the PTAB invalidated the claims at issue based on a five reference combination — in the unpredictable art of treating cancer, no less. Judge Moore once again expressed some concern about a rejection that involved so many references.

Perhaps the court was considering this case as a potential vehicle for overruling or putting some gloss on In re Gorman (authored by Judge Pauline Newman). For previous times when Judge Moore and others have expressed concern about combining a smorgasbord of references, see this previous post [Link]. At the end of the day, perhaps this outcome was best. If the court is going to address obviousness rejections based on an excessive number of references, it seems best to tee up that issue after Judge Moore has become Chief Judge. At that point she will have seniority to author the opinion.

At any rate, the oral argument was very well done and merits being the oral argument of the day. You can listen to the entire oral argument here:

You can read the Rule 36 judgment here: [Link].

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Update 5/13/21:

Query: Would the Federal Circuit be better served by appointing an amicus to defend the arguments of the party that drops out of an appeal of an IPR? It is somewhat confusing as to whether the Director is representing the Director’s position, the PTAB’s position, or the dropped-out party’s position when the Director intervenes in an appeal like this. Moreover, the government has previously argued that it can take a position opposite to what the PTAB decided and pick and choose which parts of the PTAB decision to defend at the CAFC. So, I think it can be confusing to the Federal Circuit judges who probably assume that the Director by default is defending all of the positions taken by the PTAB. Should the Federal Circuit adopt an operating procedure that requires the government to identify which portions of the PTAB decision (or arguments below of the dropped-out party) that the government does not endorse at the time of filing its brief? Seems unlikely to me that the government would feel comfortable endorsing all the positions that a dropped-out party took below.

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