OPINION: Ghosted by the Federal Circuit
By Eugene Dariush Daneshvar
Living with a disability has long inspired me to innovate in a way that improves the lives of others. That is part of why I became a scientist - to understand problems and generate ideas to diagnose, treat, and help people in need. And that is something that, as a biomedical engineer, I have worked to do. During graduate school, I invented a technology that solved significant challenges in connecting the body with implantable electronics for controlling assistive technologies. Implanted devices get encapsulated with scar tissue by the body’s immune response which distances them from their targets. My movable devices transform into smaller sizes and get closer to their targets as they enter the body. This helps them both navigate into and integrate with the tissue thereby improving their targeting and efficacy.
Four years after disclosing my invention to my advisor, and only three months before my thesis defense, I was shocked to discover that he had secretly applied for a patent through his company for my very idea. This event occurred before the America Invents Act was implemented, where inventorship was still first to invent and not first to file. His company was subsequently sold for tens of millions of dollars and his triumph left me questioning how and why I was not named the inventor. My commitment to seeking greater equality, in all instances where inequality presents itself, led me to pursue a legal challenge seeking correction of inventorship and to deter others who abuse their power.
After months of discovery, undergoing four eight-hour depositions, multiple motions to compel, and two court-ordered mediations, the defendants offered me hundreds of thousands of dollars to settle, in addition to adding my name to the patent. I declined. In my mind, my case was larger than myself. I sought to create precedent for the voiceless students and scientists who are routinely subjected to abuses of power in academia. With both the law and the facts on my side, I had naive faith that the judicial process will suffice to bring justice.
Having ‘smoking gun’ documents supporting my inventorship claim in hand and no corroboration from my advisor predating my disclosure to him, I felt overconfident facing summary judgment. To my disbelief, the District Court relied on false testimony deliberately conflating scientific terms and decided a critical issue of fact against me, returning final judgment in favor of my advisor. The court decided for itself a question for the jury, that my ideas were not a sufficient contribution simply because they did not understand the technology and were tricked by terminology used to describe it. The court neglected to view the facts and draw all inferences in the light most favorable to me, the non-moving party. While it was difficult to accept the delay of justice, I was hopeful that there was a higher tier of court hierarchy to appeal to reason. Enter the U.S. Federal Circuit Court of Appeals, the only appellate court authorized to hear patent cases.
Another year and set of briefs later led to my personal contact with the injustice of the Federal Circuit’s Rule 36, a one-word summary affirmance order - “Affirmed.” My brief had asked if the District Court erred in characterizing one species of a material as not part of a genus of materials as claimed in the patent. With no opinion, the Federal Circuit left me wondering, what was the Court thinking? Did they not comprehend the distinction between a genus and a species? Did they disagree about the semantics or physics involved? Did they fall for the defense’s specious arguments? Was it them or was it me? Instead of answers, I got silence. I was ghosted by the Federal Circuit. This is not a resolution. I lost my right to be named an inventor - a moral truth that even the defense conceded. The finality in the courts brought me no closer to a resolution. Incapable of reasoning the logic of what transpired, I vowed to become an advocate for others. I recorded my emotional reaction upon learning of the silent ruling here.
The Federal Circuit uses their Rule 36 to get rid of cases they do not want to deal with. While appellants submit hundreds of pages seeking clarity, the Court has unchecked power to shrug and issue a one-word response. The Court has broad discretion for when Rule 36 may be applied. Their guidelines say “[t]he court may enter a judgment of affirmance without opinion, citing this rule, when it determines that any of the following conditions exist and an opinion would have no precedential value.” A former Federal Circuit clerk, who didn’t want to be named for this article, stated that the Court may use this rule even if they come to the same conclusion with different reasoning than described in the briefs. Let that sink in.
Numerous entities track the statistics on the prevalence of Rule 36 affirmances by the Federal Circuit. Jason Rantanen, a Professor of Law at the University of Iowa, authored an article regarding the prevalence of Rule 36. See this link. Over the past five years, an average of 1/3 of cases are issued with no opinion. This practice has been challenged as a violation of due process to the Supreme Court, yet they have so far not granted certiorari.
Our legal system is structured on recursive jurisprudence. It is ubiquitous that we reassess prior determinations, correct mistakes, and consider societal changes that form the bends in the arc of justice. The status quo of appellate practice provides an illusory impression that ultimate justice is achievable if one is persistent. By giving credence to the idea that 1/3 of cases are not frivolous but also not worth opining, the Court undermines the basic principle for which parties come before it. Use of Rule 36 circumvents the judicial process.
Rule 36 serves as a hidden trapdoor to expunge cases that they do not choose to address, and which are afforded no redress. In an interview, Rantanen stated that a justification for the practice is that the judiciary has finite resources and they must use their time with judicial economy. He said judges and clerks work “insane hours” and writing these opinions will take away resources from writing other opinions. If they are so overwhelmed, then allow me to advocate for providing the judiciary with appropriate resources to do their job effectively. Perhaps, it is now time to demand a societal change: “Opinions for all.” Let us expand resources for courts, add judges and clerks to augment the court’s bandwidth such that they can offer their jurisprudence, and provide both justice and closure to non-moving parties.
The United States Patent and Trademark Office recently created a Legal Experience and Advancement Program (LEAP) that offers additional time in oral hearings for the professional development of practitioners appearing before the Patent Trial and Appeal Board for the first time. This initiative can serve as a model for the Federal Circuit to provide opportunities for the training of newer judicial clerks and having them draft opinions that would otherwise not be written. Most importantly, reduction of a belief to written opinion provides an opportunity to catch a flaw in reasoning, such as in my case wherein the standard of review was patently neglected.
(Editor's Note: This article was originally published in the November 2020 [Volume 51, Issue 2] edition of The Advocate.)