September 4, 2020 - Substantive Orders Update

Orders of Interest Roundup

At Federal Circuitry blog, we like to check in once in a while on what the Federal Circuit is doing in its orders that don’t get posted on the public website. Those orders often offer nuggets about practice at the Federal Circuit and sometimes even give insight into more substantive issues. So below we flag a few orders that caught our eye in the past couple weeks.

Thryv and orders to show cause – As readers know, the Supreme Court’s decision in Thryv, Inc. v. Click-to-Call Technologies, L.P. seemed to reaffirm the strength of the prohibition against judicial review of the PTO Director’s determination whether to institute an IPR. The Federal Circuit looks to be responding by taking early action in cases where an appellant appears to be appealing from an institution decision. In two recent cases (see here and here) the Court issued orders to show cause why appeals shouldn’t be dismissed for lack of jurisdiction based on the bar against judicial review and Supreme Court and Federal Circuit precedent interpreting it (including Thryv). In both cases, the orders issued sua sponte, though they may have been prompted by the appellants’ docketing statements.

Order denying attorney fees under Rule 38 – The Federal Circuit denied a motion for attorney fees under Federal Rule of Appellate Procedure 38. That rule allows appellate courts to sanction parties for bringing “frivolous” appeals, a high bar. In the recent order, which followed a mandamus denial, the Court found that the mandamus petitioner hadn’t “raised issues that are beyond the reasonable contemplation of fair-minded people” nor “dealt” unfairly with the Court or “misrepresented the law or facts.” More broadly, attorney fees motions on appeal rarely seem to succeed. From a quick search, I could only find three instances in the last ten years where the Federal Circuit granted such fees. That’s not to say the rule has no teeth. In one of the cases where the Court granted fees, it held the sanctioned party’s counsel jointly and severally liable for the fees because of counsel’s “misconduct in arguing the appeal.” Walker v. Health Int’l Corp., 845 F.3d 1148, 1157 (Fed. Cir. 2017). So although counsel may want to think twice about whether a motion for fees is warranted, to state the obvious, counsel should think even harder about whether they’re being candid with the Court or making arguments that border on frivolous.

Order deferring on constitutional challenges to PTAB – The Federal Circuit denied a motion to decide a request for remand under Arthrex before the parties fully briefed the appeal. The appellant there filed an opening brief focused primarily on constitutional challenges to the PTAB’s authority, including arguing that Arthrex required a remand. The appellee responded by filing a motion asking the Federal Circuit to decide the Arthrex issue immediately since a remand under Arthrex could moot the need to address other issues. But as it often does, the Federal Circuit declined to decide the issue at the motions stage and instead directed the appellee “to raise its arguments in its response brief.” As regular Federal Circuit practitioners know, motions panels will often defer dispositive issues to the merits panel assigned to the case unless the right to relief is clear. That practice, combined with Rule 27’s requirement that parties generally file motions for dispositive relief before the opening appeal brief, may have led to the result here (though the order doesn’t explain).

Order denying motion for oral argument as moot – As readers know, we’ve tracked (see here) the success of requests to reinstate oral argument where the request is based on providing junior diverse attorneys an opportunity to argue. In the latest case involving such a request, rather than wait for the court to cancel and then ask for reinstatement, the appellant submitted a preemptive motion asking that argument be allowed because it would be the first Federal Circuit argument for a junior attorney. This week the Federal Circuit denied the motion, but only because the panel had already determined to hold oral argument so the request was “moot.” The order’s wording makes it sound like the choice to hold oral argument was made independent of the appellant’s request—we’ve previously explored what that might mean for the panel makeup and appeal outcome here, here, and here. (And good luck to my former co-clerk with her first Federal Circuit argument!)