Opposition Brief — Straight Path IP Group, LLC, Petitioner v. Apple Inc., et al.

No. 19-253

IN THE

Supreme Court_________

of the United States

STRAIGHT PATH IP GROUP, LLC,

Petitioner,

v.

APPLE INC., ET AL.,

Respondents.

_________

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

_________

BRIEF IN OPPOSITION FOR

RESPONDENT APPLE INC.

_________

CLAYTON C. JAMES

CATHERINE E. STETSON

Counsel of Record

HOGAN LOVELLS US LLP

MITCHELL P. REICH

1901 Wewatta St.

CELINE JIMENEZ CROWSON

Suite 900

HOGAN LOVELLS US LLP

Denver, CO 80202

555 Thirteenth St., N.W.

Washington, D.C. 20004

(202) 637-5491

cate.stetson@hoganlovells.com

Counsel for Respondent Apple Inc.

QUESTION PRESENTED

Whether the Federal Circuit violated due process

when, in accord with the practices of this Court and

every other Circuit, and after two prior written

opinions on the same patent claim, it received full

briefing on petitioner’s appeal, held oral argument,

and then summarily affirmed the District Court’s

decision on the ground that the decision “ha[d] been

entered without an error of law.” Fed. Cir. R. 36(e).

(i)

ii

TABLE OF CONTENTS

Page

QUESTION PRESENTED ........................................... i

TABLE OF AUTHORITIES ...................................... iii

INTRODUCTION ........................................................ 1

STATEMENT .............................................................. 4

REASONS FOR DENYING THE PETITION ........... 10

I.

THERE IS NO SPLIT IN THE

LOWER COURTS........................................... 11

II.

THIS

CASE

PRESENTS

NO

SUBSTANTIAL FEDERAL QUESTION........... 16

III. THIS ISSUE IS UNIMPORTANT ................. 19

CONCLUSION .......................................................... 21

iii

TABLE OF AUTHORITIES

Page(s)

CASES:

Adams v. Clinton,

531 U.S. 941 (2000) ........................................... 17

Aronstein v. Thompson Creek Metals Co.,

711 F. App’x 489 (10th Cir. 2018) ..................... 14

Belanger v. Commissioner,

--- F. App’x ---, 2019 WL 4316498

(Sept. 11, 2019) .................................................. 14

Bluman v. FEC,

565 U.S. 1104 (2012) ......................................... 17

Butler v. Wilson,

415 U.S. 953 (1974) ........................................... 17

Clark v. Roemer,

500 U.S. 646 (1991) ........................................... 17

Cloud Satchel, LLC v. Barnes & Noble, Inc.,

136 S. Ct. 1723 (2016) ....................................... 10

Concaten, Inc. v. Ameritrak Fleet Sols.,

LLC,

137 S. Ct. 1604 (2017) ....................................... 10

Conn. Bd. of Pardons v. Dumschat,

452 U.S. 458 (1981) ........................................... 18

Cox v. Larios,

542 U.S. 947 (2004) ........................................... 17

Delima v. YouTube, Inc.,

No. 18-1666, 2019 WL 1620756

(1st Cir. Apr. 3, 2019) ........................................ 13

Engelhard v. Schroeder,

258 U.S. 610 (1922) ........................................... 17

iv

TABLE OF AUTHORITIES—Continued

Page(s)

Farmer v. Brennan,

511 U.S. 825 (1994), rev’g,

11 F.3d 668 (7th Cir. 1992) ............................... 19

Franklin-Mason v. United States,

138 S. Ct. 1703 (2018) ....................................... 10

Fund for Accurate & Informed

Representation, Inc. v. Weperin,

506 U.S. 1017 (1992) ......................................... 17

Furman v. United States,

720 F.2d 263 (2d Cir. 1983)............................... 11

Harris v. Rivera,

454 U.S. 339 (1981) ........................................... 18

Hess v. Port Auth. Trans-Hudson Corp.,

513 U.S. 30 (1994), rev’g,

8 F.3d 811 (3d Cir. 1993)................................... 19

Hohn v. United States,

524 U.S. 236 (1998) ........................................... 17

Hyundai Motor Am., Inc. v. Clear With

Computers, LLC,

571 U.S. 1010 (2013) ......................................... 10

Ill. State Bd. of Elecs. v. Socialist Workers

Party, 440 U.S. 173 (1979) ................................ 15

Johnson v. United States,

529 U.S. 694 (2000) ........................................... 17

Kastner v. Chet’s Shoes, Inc.,

565 U.S. 1201 (2012) ......................................... 10

Kelsey v. Muhlenberg Coll.,

No. 17-2399, 2018 WL 2221879

(3d Cir. Feb. 9, 2018) ......................................... 13

v

TABLE OF AUTHORITIES—Continued

Page(s)

Lane v. Pena,

518 U.S. 187 (1996), aff’g,

No. 95-5006, 1995 WL 418635 (D.C. Cir.

June 5, 1995) ..................................................... 19

Martin v. Haith,

477 U.S. 901 (1986) ........................................... 17

Max Rack, Inc. v. Hoist Sys., Inc.,

564 U.S. 1057 (2011) ......................................... 11

Mayor & City Council of Baltimore City v.

Dawson,

350 U.S. 877 (1955) ........................................... 17

Momo Enters., LLC v. Popular Bank,

738 F. App’x 886 (7th Cir. 2018) ................. 12, 13

NLRB v. Amalgamated Clothing

Workers of Am.,

430 F.2d 966 (5th Cir. 1970) ....................... 11, 16

North Carolina v. Covington,

137 S. Ct. 2211 (2017) ....................................... 17

Oil States Energy Servs., LLC v. Greene’s

Energy Grp., LLC,

138 S. Ct. 1365 (2018) ....................................... 19

Perth Amboy Dry Dock Co. v. Monmouth

Steamboat Co.,

215 U.S. 592 (1910) ........................................... 17

Phil-Insul Corp. v. Airlite Plastics Co.,

854 F.3d 1344 (Fed. Cir. 2017) ................... 15, 16

Playboy Entm’t Grp., Inc. v. United States,

520 U.S. 1141 (1997) ......................................... 17

vi

TABLE OF AUTHORITIES—Continued

Page(s)

Rogers v. Am. Fed’n of Gov’t Emps.,

777 F. App’x 459 (11th Cir. 2019) ..................... 12

Romala Stone, Inc. v. Home Depot U.S.A.,

Inc.,

562 U.S. 1201 (2011) ......................................... 11

Samsung Elecs. Co. v. Straight Path IP

Grp, Inc.,

No. IPR2014-01366, 2016 WL 861393

(P.T.A.B. Mar. 4, 2016) ....................................... 4

Samsung Elecs. Co. v. Straight Path IP

Grp., Inc.,

696 F. App’x 1008 (Fed. Cir. 2017) ....... 2, 4, 8, 20

Shore v. Lee,

137 S. Ct. 2197 (2017) ....................................... 10

Smith v. Gavulic,

694 F. App’x 398 (6th Cir. 2017) ....................... 14

Specialty Fertilizer Prods., LLC v.

Shell Oil Co.,

138 S. Ct. 2678 (2018) ................................. 10, 20

Straight Path IP Grp., Inc. v. Sipnet EU

S.R.O.,

806 F.3d 1356 (Fed. Cir. 2015) ................. passim

Taxpayers Watchdog, Inc. v. Stanley,

819 F.2d 294 (D.C. Cir. 1987) ........................... 12

Taylor v. McKeithen,

407 U.S. 191 (1972) ........................................... 16

TecSec, Inc. v. Int’l Bus. Machs. Corp.,

731 F.3d 1336 (Fed. Cir. 2013) ......................... 15

vii

TABLE OF AUTHORITIES—Continued

Page(s)

Tehrani v. Polar Electro,

556 U.S. 1236 (2009) ......................................... 11

United States v. Baynes,

548 F.2d 481 (3d Cir. 1977)............................... 11

United States v. Danzell,

698 F. App’x 93 (4th Cir. 2017) ......................... 14

United States v. Flores-Montano,

541 U.S. 149 (2004), rev’g,

No. 02-50306, 2003 WL 22410705 (9th

Cir. Mar. 14, 2003), .......................................... 19

United States v. Hudson Transit Lines, Inc.,

338 U.S. 802 (1949) ........................................... 17

United States v. Kraus,

No. 18-35516, 2019 WL 2538009

(9th Cir. Mar. 8, 2019)....................................... 13

U.S. Surgical Corp. v. Ethicon, Inc.,

103 F.3d 1554 (Fed. Cir. 1997) ......................... 18

Wayne-Dalton Corp. v. Amarr Co.,

558 U.S. 991 (2009) ........................................... 11

White v. Hitachi, Ltd.,

565 U.S. 825 (2011) ........................................... 11

Williams v. Va. State Bd. of Elections,

393 U.S. 320 (1969) ........................................... 17

Wilson v. Arkansas Dep’t of Human Servs.,

775 F. App’x 261 (8th Cir. 2019) ....................... 13

Wilson v. Sellers,

138 S. Ct. 1188 ............................................ 13, 18

Ylst v. Nunnemaker,

501 U.S. 797 (1991) ........................................... 18

viii

TABLE OF AUTHORITIES—Continued

Page(s)

STATUTES:

28 U.S.C. § 2071(a) ................................................ 12

35 U.S.C. § 144 ....................................................... 19

35 U.S.C. § 285 ......................................................... 9

RULES:

1st Cir. R. 27.0(c) .................................................... 12

1st Cir. R. 36.0(a) .................................................... 12

2d Cir. IOP 32.1.1(a) ............................................... 12

3d Cir. IOP 10.6 ...................................................... 12

4th Cir. I.O.P.-36.3 ................................................. 12

5th Cir. R. 21........................................................... 16

5th Cir. R. 47.6............................................ 12, 14, 16

6th Cir. R. 36........................................................... 12

8th Cir. R. 47B ........................................................ 12

9th Cir. R. 36-1 ....................................................... 12

10th Cir. R. 36.1...................................................... 12

Fed. Cir. R. 36 ................................................. passim

Fed. Cir. R. 36(e) ..................................... 3, 10, 15, 21

Fed. R. App. P. 36(a)(2) .......................................... 11

Sup. Ct. R. 10(a)...................................................... 11

OTHER AUTHORITY:

Dennis Crouch, Wrongly Affirmed Without

Opinion, 52 Wake Forest L. Rev. 561

(2017) ................................................................. 20

IN THE

Supreme Court_________

of the United States

No.

19-253

_________

STRAIGHT PATH IP GROUP, LLC,

Petitioner,

v.

APPLE INC., ET AL.,

Respondents.

_________

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

_________

BRIEF IN OPPOSITION FOR

RESPONDENT APPLE INC.

_________

INTRODUCTION

The First Law of Holes states: “when you find

yourself in a hole, stop digging.” Now facing the

prospect of sanctions in the District Court for bringing this frivolous lawsuit, Straight Path is still

digging. It asks this Court to review an oft-denied,

splitless question, unrelated to the dubious merits of

its case, that would upend the practices of every

Circuit and over a century of this Court’s precedents.

The Court should again decline that request.

In 2015, Straight Path secured several patents on a

method for determining whether a user “is connected” to a computer network. According to Straight

Path, its patents improved on the prior art by enabling a computer to determine not merely whether a

user was connected to a network at some prior

time—a method well established in the prior art—

(1)

2

but whether the user is connected to the network at

the moment a query is made. The Federal Circuit

approved the patents on the basis of that narrow

construction. Straight Path IP Grp., Inc. v. Sipnet

EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015). Two

years later, it did so again. Samsung Elecs. Co. v.

Straight Path IP Grp., Inc., 696 F. App’x 1008 (Fed.

Cir. 2017).

Straight Path then sued Apple based on a dramatically broader construction of its patents than the one

the Federal Circuit had adopted at Straight Path’s

urging. Apple’s FaceTime system does not continuously track the current online status of its users. It

employs a “registration” system indistinguishable

from the one established in the prior art. Nonetheless, Straight Path claimed that Apple infringed its

patents because, any time an Apple user answers a

FaceTime call, the caller is able to infer backwards

from that event that the callee “is connected” at the

time the call is made.

The District Court rejected this argument. It described Straight Path’s theory as “astonishingly

overbroad,” explaining that it would expand the

company’s “narrowly-preserved infringement theory

into one of breathtaking scope.” Pet. App. 17a, 22a.

Furthermore, the court observed that Straight Path’s

theory contradicted the claim construction that

Straight Path itself had convinced the Federal Circuit to adopt. Id. at 4a, 9a-17a. In light of the company’s “disingenuous litigation tactics,” and the

objective baselessness of its claims, the District

Court ordered Straight Path to show cause why it

should not be sanctioned. Id. at 31a, 35a-36a.

3

Straight Path pressed on with an appeal. After full

briefing and oral argument, the Federal Circuit

declined to revisit for a third time the claim construction it had previously adopted. Id. at 2a. It

summarily affirmed the District Court’s judgment

under Federal Circuit Rule 36, which permits summary affirmances where “a judgment or decision has

been entered without an error of law.” Fed. Cir. R.

36(e). The Federal Circuit then denied rehearing

without dissent. Pet. App. 38a.

Rather than putting away its shovel, Straight Path

now asks this Court to grant certiorari—not on the

merits of its infringement claim, but on the very

practice of issuing summary affirmances under Rule

36. This request is indistinguishable from a dozen

other petitions in which this Court has denied certiorari over the last several years. It should meet the

same fate.

The question presented involves no conflict on a

question of federal law. It is common to dispose of

cases by brief summary affirmance, and every Circuit to consider the question has affirmed the legality

of this practice. The fact that different Circuits’ local

rules use slightly different verbal formulations when

issuing summary affirmances does not establish

disagreement on a question of federal law; it just

shows a variation in local practice, and an inconsequential one at that.

Nor does this petition raise any substantial federal

question. Straight Path does not attempt to substantiate its claim that summary affirmances violate due

process. And such a conclusion is directly foreclosed

by this Court’s precedents, as well as this Court’s

longstanding practice of issuing one-word summary

4

affirmances to dispose of cases within its mandatory

jurisdiction.

Finally, the question presented is singularly unimportant. The precise content of a summary affirmance order makes no practical difference to litigants or to the courts. And if ever there were a case

to review the question, this is not that case, given

that Straight Path’s suit is obviously, and perhaps

sanctionably, meritless.

STATEMENT

1. Many computer programs permit users to communicate directly over the Internet. In order to

establish a “point-to-point” communication of this

kind, the caller’s device must identify the Internet

Protocol (IP) address of the callee’s device.

Appx005795.1 For decades, a well-known means of

identifying a callee’s IP address has been to establish

a “registration” system, under which each device

registers its current IP address with a central server

when it goes online. See Samsung Elecs. Co. v.

Straight Path IP Grp, Inc., No. IPR2014-01366, 2016

WL 861393, at *9 (P.T.A.B. Mar. 4, 2016). When a

device wishes to make a call, it checks whether the

callee’s IP address is registered with the server; if it

is, the caller retrieves the address and uses it to

contact the callee. See Samsung, 696 F. App’x at

1011-12.

Registration systems do not always track current

online status accurately, however.

Registration

information stored in a server may be “stale”—

meaning the server may record a device as online

1

All appendix citations are to the Federal Circuit appendix.

5

even though it has moved IP addresses or gone

offline.

See Appx005643.

Consequently, users

frequently attempt to communicate with devices that

are not in fact connected to the network.

Appx005807.

Straight Path owns several patents that purport to

state a method that avoids the drawbacks of a registration system that maintains stale information. See

Appx000151. Under Straight Path’s claimed invention, before attempting a call, the caller “transmit[s],

to the server, a query as to whether the [callee] is

connected to the computer network”; then, if the

server determines that “the [callee] is connected,” it

retrieves the callee’s IP address and sends it to the

caller. Id. (emphases added). According to Straight

Path, determining online status before calling avoids

“wast[ing] resources” by “trying to connect to another

endpoint that is not even connected to the network.”

Appx005796.

That was Straight Path’s story, at least, when its

patents were challenged. In response to multiple

challengers’ arguments that its patents merely

described registration systems well established in

the prior art, Straight Path urged a much narrower

construction, under which the “plain meaning” of the

“is connected” claim language is not “satisfied by a

query that asks only for registration information,

regardless of its current accuracy.” Sipnet, 806 F.3d

at 1360. The Federal Circuit adopted that construction, explaining that “[t]he query required by

[Straight Path’s] claim language asks if the callee ‘is’

online, which is a question about the status at the

time of the query.” Id. (emphasis added). So construed, Straight Path’s claimed invention purports to

6

make a “temporal” improvement to a standard

registration system, by determining with “current

accuracy” whether each device is connected to the

network at the time the caller’s device first queries

the server. Id. at 1360, 1362.

2. FaceTime is a computer program that uses a

registration system to enable point-to-point video

communications between users of Apple devices.

Each time an Apple device connects to the Internet,

it registers a device identifier with a collection of

central Apple servers. Appx005641-42; see Appx

006442-43. When a user wishes to place a FaceTime

call, it sends a message to the servers, which query

whether one of the callee’s Apple devices is currently

registered. Appx005644-45. If it is, the servers

transmit an invitation to the callee to start a

FaceTime call. Appx005645.

Like other registration systems, Apple’s system

does not always track online status accurately, and

does not conclusively determine a callee’s online

status before attempting to establish a point-to-point

communication.

Instead, Apple’s servers “deregister” a device only if the device “power[s] down in

an orderly fashion,” Appx005642, or fails to “checkin” during a certain interval, Appx005643. Because

these methods are imperfect, registration data stored

on the servers is “frequently wrong,” and Apple

attempts billions of times each month to deliver

messages to users who are offline. Appx005643-44;

see Pet. App. 27a-28a. Further, because a callee may

decline to answer a call for a number of reasons—for

instance, because she is busy, because she is ignoring

the call, or because she is actually offline—a caller

does not always learn whether a callee “is connected”

7

even after an invitation is sent to that user and the

callee receives a non-response. Appx005646.

3. FaceTime employs the very type of registration

system that Straight Path had repeatedly (and

successfully) argued to the Federal Circuit that it

was not patenting. And yet in 2014, Straight Path

sued Apple, alleging that FaceTime infringed its

patents because it “track[ed] the network addresses

and online status of users.” Appx002554. Straight

Path brought a similar claim against Cisco Systems,

Inc. The District Court consolidated the two lawsuits, and both Apple and Cisco moved for summary

judgment.

The District Court granted summary judgment to

Apple and Cisco. It held that, “[b]eing bound by the

Federal Circuit’s rulings,” there was “no way defendants’ accused products infringe the asserted claims

at issue.” Pet. App. 4a. As the District Court explained, the Federal Circuit had upheld Straight

Path’s patents by construing the patents to cover

only systems that determined whether a callee “is

connected to the computer network at the time that

the query is transmitted to the server.” Id. at 14a

(emphasis added) (quoting Sipnet, 806 F.3d at 1363).

Straight Path itself had expressly advocated this

narrow construction in order to “save[ ] its patents

from invalidity.” Id. at 4a; see id. at 9a-17a (describing numerous representations by Straight Path to

that effect). Yet “Apple’s accused server—at the time

that it receives a query from the [caller’s device]—

does not know if the [callee] is actually online.” Id.

at 29a. Rather, as Straight Path’s own expert conceded, FaceTime “simply checks a periodicallyupdated registration database and then attempts to

8

transmit a message to the [callee] regardless of

whether or not the [callee] is actually online at that

very moment in time.” Id.

Straight Path argued that Apple infringed its patents because “[i]f the [callee] actually responds to

the message by accepting the call,” it is possible to

“infer[ ] that the [callee] was indeed online.” Id. The

District Court rejected this argument as “astonishingly overbroad,” id. at 17a, observing that “no

purported invention, let alone one as narrow as what

Straight Path got by the Federal Circuit, could turn

on a principle as basic and commonsensical as the

inference that any callee responding to a call must

have been accessible at the time of the call.” Id. at

30a. Indeed, “the point of [Straight Path’s] claimed

invention” was to “determin[e] the recipient’s online

or offline status before attempting to place a call.”

Id. at 31a. Straight Path could not “make a moving

target out of its claimed invention” by seeking to

discard the critical temporal limitation on its patents

that it once claimed was central to their validity. Id.

The District Court concluded by admonishing

Straight Path for its “disingenuous litigation tactics.”

Id. Straight Path had told the Federal Circuit that

“its claimed invention ‘has to track’ whether a computer that has come online and registered is ‘continuing to stay on line.’ ”

Id. at 31a (quoting

Appx007204-05 (Oral Arg. Tr. at 16:24-17:25, Samsung, 696 F. App’x 1008 (No. 16-2004))). “Indeed, the

Federal Circuit * * * went to great pains during oral

argument to pin down this exact point,” and it

“agree[d] with Straight Path” on this precise issue.

Id. at 31a-33a (quoting Samsung, 696 F. App’x at

1013). Yet despite “[h]aving won on invalidity based

9

on those representations,” Straight Path sought to

“take a different position for purposes of proving

infringement,” and “baldly” asserted that the Federal

Circuit had not adopted its view. Id. at 32a-33a. In

light of this conduct, the District Court ordered

Straight Path and its counsel to show cause “why

they should not be held liable for defendants’ attorney’s fees” under 35 U.S.C. § 285. Id. at 35a-36a.2

4. Straight Path appealed, claiming that the District Court had erred in its claim interpretation and

had incorrectly applied the claim language to the

patents at issue. Appellant’s Corrected Opening Br.

14-16 (Dkt. 40); Appellant’s Reply Br. 1 (Dkt. 62).

Apple and Cisco defended the District Court’s decision, explaining that it correctly applied the Federal

Circuit’s prior holdings construing Straight Path’s

patents. See Corrected Br. for Defendant-Appellee

Apple Inc. 1-4 (Dkt. 58); Br. for Defendant-Appellee

Cisco Systems, Inc. 3-5 (Dkt. 49). The court then

held oral argument, during which the panel repeatedly asked Straight Path’s counsel why its argument

was not squarely foreclosed by its prior rulings. See,

e.g., Oral Argument Recording at 11:35-11:45 (Q:

“This is all supposed to be happening at the same

time. Time was the underpinning for the claim

construction and for allowing your claims to be held

valid.”); id. at 12:28-12:35 (Q: “How does that [construction] comport with [what] we said in our Sipnet

case?”).

2

The District Court held in abeyance proceedings relating to

attorney’s fees pending resolution of the Federal Circuit appeal,

and the matter is currently under submission. See D. Ct. Dkt.

185, 233.

10

After argument, the Federal Circuit summarily

affirmed the District Court’s judgment. It wrote

that, having “heard and considered” the case, the

District Court’s judgment was “AFFIRMED” pursuant to “Fed. Cir. R. 36.” Pet. App. 2a. Rule 36 permits summary affirmances in cases raising only

questions of law where the panel determines that “an

opinion would have no precedential value” and “a

judgment or decision has been entered without an

error of law.” Fed. Cir. R. 36(e).

Straight Path filed a petition for rehearing and

rehearing en banc. Pet. App. 38a. That petition was

denied without dissent. Id.

REASONS FOR DENYING THE PETITION

Straight Path contends that the Federal Circuit

erred in affirming the summary judgment ruling

against it—not because that decision was wrong on

the merits, but because the very practice of issuing

summary affirmances pursuant to Federal Circuit

Rule 36 is unlawful. This Court has recently and

repeatedly denied challenges to the Federal Circuit’s

practice of issuing summary affirmances under Rule

36. See Franklin-Mason v. United States, 138 S. Ct.

1703 (2018) (mem.) (No. 17-1256); Specialty Fertilizer

Prods., LLC v. Shell Oil Co., 138 S. Ct. 2678 (2018)

(mem.) (No. 17-1243); Shore v. Lee, 137 S. Ct. 2197

(2017) (mem.) (No. 16-1240); Concaten, Inc. v. Ameritrak Fleet Sols., LLC, 137 S. Ct. 1604 (2017) (mem.)

(No. 16-1109); Cloud Satchel, LLC v. Barnes &

Noble, Inc., 136 S. Ct. 1723 (2016) (mem.) (No. 151161); Hyundai Motor Am., Inc. v. Clear With Computers, LLC, 571 U.S. 1010 (2013) (mem.) (No. 13296); Kastner v. Chet’s Shoes, Inc., 565 U.S. 1201

(2012) (mem.) (No. 11-776); White v. Hitachi, Ltd.,

11

565 U.S. 825 (2011) (mem.) (No. 10-1504); Max Rack,

Inc. v. Hoist Sys., Inc., 564 U.S. 1057 (2011) (mem.)

(No. 10-1384); Romala Stone, Inc. v. Home Depot

U.S.A., Inc., 562 U.S. 1201 (2011) (mem.) (No. 10777); Wayne-Dalton Corp. v. Amarr Co., 558 U.S. 991

(2009) (mem.) (No. 09-260); Tehrani v. Polar Electro,

556 U.S. 1236 (2009) (mem.) (No. 08-1116); see Pet.

21. The result in this case should be no different.

I. THERE IS NO SPLIT IN THE LOWER

COURTS.

The question presented does not involve a split

among the Circuits on a question of federal law. See

Sup. Ct. R. 10(a). Rule 36 of the Federal Rules of

Appellate Procedure expressly authorizes Courts of

Appeal to issue judgments “without an opinion.”

Fed. R. App. P. 36(a)(2). And every Circuit to confront the question has held that courts may issue

brief summary affirmances akin to the one rendered

here. In Furman v. United States, 720 F.2d 263 (2d

Cir. 1983) (per curiam), for instance, the Second

Circuit held that “[t]here is no requirement in law

that a federal appellate court’s decision be accompanied by a written opinion,” and went on to reject a

challenge to a decision upholding an adverse judgment “by summary order” instead of “by published

opinion.” Id. at 264. Likewise, in United States v.

Baynes, 548 F.2d 481 (3d Cir. 1977) (per curiam), the

Third Circuit rejected the claim that an “affirmance

by judgment order without an opinion constituted a

denial of due process of law.” Id. at 482; see also,

e.g., NLRB v. Amalgamated Clothing Workers of

Am., 430 F.2d 966 (5th Cir. 1970). Straight Path

identifies no court that has ever held otherwise. See

Pet. 21.

12

Rather than identifying a legal disagreement

among the Circuits, Straight Path claims that the

Circuits follow different “Local Rules and practices”

in how they draft summary affirmance orders. Id. at

11. That alleged difference in local practice would

not be a basis for certiorari even if it existed. This

Court reviews disagreements among the Circuits on

questions of law, not minor variations in matters of

local procedure. See 28 U.S.C. § 2071(a) (authorizing

“[t]he Supreme Court and all courts established by

Act of Congress” to “prescribe rules for the conduct of

their business”). If a litigant objects to a court’s local

rules, the proper vehicle through which to raise that

complaint is a petition to the Circuit’s rules committee or the Federal Rules Committee, not a petition

for plenary review on this Court’s merits docket.

In any event, the variations in local practice that

Straight Path alleges are inconsequential. Every

Circuit expressly permits panels to decide appeals by

summary affirmance.3 And, where a panel finds an

appeal entirely meritless, nearly every Circuit has a

practice of issuing a brief statement indicating

simply that the panel identified no error in the lower

court’s judgment. See Wilson v. Sellers, 138 S. Ct.

3

See 1st Cir. R. 27.0(c), 36.0(a); 2d Cir. IOP 32.1.1(a); 3d Cir.

IOP 10.6; 4th Cir. I.O.P.-36.3; 5th Cir. R. 47.6; 6th Cir. R. 36;

8th Cir. R. 47B; 9th Cir. R. 36-1; 10th Cir. R. 36.1; Fed. Cir. R.

36; see also Momo Enters., LLC v. Popular Bank, 738 F. App’x

886, 887 (7th Cir. 2018) (stating when “[s]ummary affirmance

may be in order”); Rogers v. Am. Fed’n of Gov’t Emps., 777 F.

App’x 459, 460 (11th Cir. 2019) (per curiam) (detailing when

“[s]ummary disposition is appropriate”); Taxpayers Watchdog,

Inc. v. Stanley, 819 F.2d 294, 297-298 (D.C. Cir. 1987) (per

curiam) (stating when “summary affirm[ance]” is permitted).

13

1188, 1199-1200 (Gorsuch, J., dissenting) (explaining

that “a busy appellate court sometimes may not see

the profit in devoting its limited resources

to explaining the error and the alternative basis for

affirming when the outcome is sure to remain the

same, so it issues a summary affirmance instead”).

The form of those statements varies, but the content

does not.

In some Circuits, a summary affirmance often

takes the form of a sentence stating that the appellant has raised no substantial question on appeal.

See, e.g., United States v. Kraus, No. 18-35516, 2019

WL 2538009, at *1 (9th Cir. Mar. 8, 2019) (“the

questions raised in this appeal are so insubstantial

as not to require further argument”); Kelsey v.

Muhlenberg Coll., No. 17-2399, 2018 WL 2221879, at

*1 (3d Cir. Feb. 9, 2018) (“no substantial question is

presented by this appeal”).

In other Circuits, a summary affirmance may consist of a statement that the district court did not err

or that the panel substantially agrees with the

district court’s reasoning. See, e.g., Wilson v. Arkansas Dep’t of Human Servs., 775 F. App’x 261, 261

(8th Cir. 2019) (per curiam) (“we conclude the district

court did not err in granting summary judgment”);

Delima v. YouTube, Inc., No. 18-1666, 2019 WL

1620756, at *1 (1st Cir. Apr. 3, 2019) (“The judgment

of the district court is summarily affirmed essentially

for the reasons discussed in Magistrate Judge Johnstone’s Report and Recommendation of August 30,

2018.”); Momo Enters., LLC v. Popular Bank, 738 F.

App’x 886, 887 (7th Cir. 2018) (“we summarily affirm

the judgment of the district court for the reasons set

forth in that court’s Memorandum Opinions and

14

Orders in this case”); Aronstein v. Thompson Creek

Metals Co., 711 F. App’x 489, 490 (10th Cir. 2018)

(“we affirm the district court’s judgment for substantially the reasons stated in its well-reasoned Order of

April 27, 2017, and Opinion and Order of April 28,

2017”); United States v. Danzell, 698 F. App’x 93, 94

(4th Cir. 2017) (per curiam) (“We have reviewed the

record and the district court’s memorandum opinion

and affirm for the reasons cited by the district

court.”); Smith v. Gavulic, 694 F. App’x 398, 399 (6th

Cir. 2017) (per curiam) (“After reviewing the record,

the parties’ briefs, and the applicable law, we conclude that the district court’s thorough and wellwritten opinion correctly articulates and applies the

applicable law to undisputed facts and that the

issuance of a full written opinion by this court would

serve no jurisprudential purpose. Accordingly, for

the reasons stated in the district court’s opinion, we

affirm.”).

And in still other Circuits, like the Federal Circuit,

a summary affirmance takes the form of a citation to

a local rule that authorizes summary affirmances

where the panel finds that the district court committed no error of law. See, e.g., Belanger v. Commissioner, --- F. App’x ---, 2019 WL 4316498 (mem.) (per

curiam) (Sept. 11, 2019) (“AFFIRMED. See 5th CIR.

R. 47.6.”); 5th Cir. R. 47.6 (authorizing summary

affirmances where “no reversible error of law appears”); Pet. App. 2a (“AFFIRMED. See Fed. Cir. R.

36.”); Fed. Cir. R. 36 (authorizing summary affirmances where “a judgment or decision has been

entered without an error of law”).

Straight Path claims that courts in this last group

are alone in “authoriz[ing] a totally unexplained

15

decision in an appeal raising only issues of law on

the ground that there is no ‘error of law.’ ” Pet. 13.

But any difference between these Circuits and the

others is entirely formalistic—as illustrated by the

fact that Straight Path itself lumps the Eighth and

Tenth Circuits in with the Fifth and Federal Circuits

and claims they follow the same practice. See id.

The Circuits authorize summary affirmances on

essentially the same grounds (that the district court

did not err), and give essentially the same explanation (that the district court did not err). The only

difference is that some Circuits cite a rule that in

turn states the reason, while other Circuits use a

verbal formula that repeats the reason in every case.

That variation in drafting conventions is not the

stuff of which meritorious certiorari petitions are

made.

Straight Path is also incorrect that, when the Federal Circuit issues a summary affirmance, it “d[oes]

not provide a hint of why it affirmed the district

court decision.” Id. at 10, 13. In cases raising only

legal issues, the Federal Circuit enters a summary

affirmance when it has determined that the district

court’s decision was “entered without an error of

law.” Fed. Cir. R. 36(e); see Pet. 13 (acknowledging

as much). Thus, a summary affirmance in the Federal Circuit—just like a summary affirmance in this

Court—means that the court rested its decision on

those grounds “essential to sustain [the lower court’s]

judgment.” TecSec, Inc. v. Int’l Bus. Machs. Corp.,

731 F.3d 1336, 1343 (Fed. Cir. 2013) (quoting Ill.

State Bd. of Elecs. v. Socialist Workers Party, 440

U.S. 173, 182-183 (1979)); see Phil-Insul Corp. v.

Airlite Plastics Co., 854 F.3d 1344, 1357-58 (Fed. Cir.

2017) (holding that a summary affirmance collateral-

16

ly estops a party from relitigating any issue that was

“essential to the [district court’s] judgment”). The

Federal Circuit leaves no more uncertainty about the

basis for its summary affirmances than this Court

does when it summarily affirms.

II. THIS CASE PRESENTS NO SUBSTANTIAL

FEDERAL QUESTION.

Straight Path also does not identify any legal error

in the decision below. This Court has long approved

the practice of deciding cases by brief summary

affirmance orders. In Taylor v. McKeithen, 407 U.S.

191 (1972) (per curiam), the Court stated that “[w]e,

of course, agree that the courts of appeals should

have wide latitude in their decisions of whether or

how to write opinions,” and that “[t]hat is especially

true with respect to summary affirmances.” Id. at

194 n.4. Even in dissent, then-Justice Rehnquist

agreed: “No existing statute or rule of procedure

prohibits the Fifth Circuit from issuing a short

opinion and order, as it has done here, or from deciding cases without any opinion at all.” Id. at 195

(Rehnquist, J., dissenting) (emphasis added). Both

the majority and the dissent then favorably cited

former Fifth Circuit Rule 21 (currently Rule 47.6),

which is identical in all material respects to the

Federal Circuit’s Rule 36. Compare NLRB, 430 F.2d

at 968 n.2 (quoting former 5th Cir. R. 21), with Fed.

Cir. R. 36.

This Court’s longstanding practice reinforces that

summary affirmances are permissible. For at least a

century, the Court has regularly resolved cases

within its mandatory jurisdiction through one-word

summary affirmances. See, e.g., North Carolina v.

Covington, 137 S. Ct. 2211 (2017) (mem.); Bluman v.

17

FEC, 565 U.S. 1104 (2012) (mem.); Cox v. Larios, 542

U.S. 947 (2004); Adams v. Clinton, 531 U.S. 941

(2000) (mem.); Playboy Entm’t Grp., Inc. v. United

States, 520 U.S. 1141 (1997) (mem.); Fund for Accurate & Informed Representation, Inc. v. Weperin, 506

U.S. 1017 (1992) (mem.); Martin v. Haith, 477 U.S.

901 (1986) (mem.); Butler v. Wilson, 415 U.S. 953

(1974) (mem.); Williams v. Va. State Bd. of Elections,

393 U.S. 320 (1969) (per curiam) (mem.); Mayor &

City Council of Baltimore City v. Dawson, 350 U.S.

877 (1955) (per curiam) (mem.); United States v.

Hudson Transit Lines, Inc., 338 U.S. 802 (1949) (per

curiam) (mem.); Engelhard v. Schroeder, 258 U.S.

610 (1922) (per curiam) (mem.); Perth Amboy Dry

Dock Co. v. Monmouth Steamboat Co., 215 U.S. 592

(1910) (per curiam) (mem.); see generally Hohn v.

United States, 524 U.S. 236, 260 (1998) (Scalia, J.,

dissenting) (stating that “judgments[ ] affirming

without comment the disposition appealed from[ ]

were common in the days when this Court had an

extensive mandatory jurisdiction”). No Justice has

ever identified a legal defect in that established

practice, and the Court has often relied on these

decisions as precedent in subsequent cases. See, e.g.,

Johnson v. United States, 529 U.S. 694, 701 (2000);

Clark v. Roemer, 500 U.S. 646, 653 (1991).

Straight Path suggests, without explanation, that

the Federal Circuit’s Rule 36 may violate “the Fifth

Amendment.” Pet. i. If Straight Path were correct,

the summary affirmance practices of this Court,

every Circuit, and numerous state courts would be

18

unconstitutional.4 Straight Path is not correct. In

Harris v. Rivera, 454 U.S. 339 (1981) (per curiam),

this Court held that the “occasions when an explanation of the reasons for a [judicial] decision may be

required by the demands of due process * * * are the

exception rather than the rule.” Id. at 344. In

particular, “when other procedural safeguards have

minimized the risk of unfairness, there is a diminished justification for requiring a judge to explain his

rulings.” Id. at 344 n.11; see also Conn. Bd. of Pardons v. Dumschat, 452 U.S. 458, 472 (1981) (Stevens,

J., joined by Marshall, J., dissenting) (“Judges often

decide difficult and important cases without explaining their reasons, and I would not suggest that they

thereby commit constitutional error.”).

The Federal Circuit affords ample procedural safeguards to litigants when it decides cases by summary

affirmance. As the Federal Circuit has explained,

“[a]ppeals whose judgments are entered under Rule

36 receive the full consideration of the court, and are

no less carefully decided than the cases in which we

issue full opinions.” U.S. Surgical Corp. v. Ethicon,

Inc., 103 F.3d 1554, 1556 (Fed. Cir. 1997). Here, for

example, Straight Path was afforded full adversarial

briefing; an oral argument; a decision stating that

the panel identified no error in the District Court’s

4

See Ylst v. Nunnemaker, 501 U.S. 797, 806 (1991) (holding

that where a state appellate court issues an “unexplained”

decision affirming the denial of habeas relief, courts may “look

through” that affirmance to the last reasoned decision to

ascertain the ground on which the decision rested); see also

Wilson, 138 S. Ct. at 1193-94.

19

thoroughly reasoned opinion; and an opportunity to

seek panel rehearing and rehearing en banc. Adding

a “few * * * words” akin to what other Circuits say, as

Straight Path proposes, Pet. 22, would do nothing to

meaningfully advance anyone’s due process rights or

to guard against the risk of error.5

In addition to its due process argument, Straight

Path notes that some commentators have argued

that “35 U.S.C. § 144 requires the Federal Circuit to

provide an explicit explanation if it affirms a PTAB

decision.” Pet. 18-19; see id. at 22. As Straight Path

admits, however, this case “does not concern an

appeal from a decision of the PTAB.” Id. at 19. That

statutory question is, accordingly, wholly irrelevant.

III. THIS ISSUE IS UNIMPORTANT.

Apart from being splitless and meritless, the question presented is also singularly unimportant.

Because the supposed differences between the Federal Circuit’s Rule 36 and the summary affirmance

rules of other Circuits are a matter purely of form

rather than substance, see supra pp. 12-15, a deci5

Rule 36 also does not impede this Court’s review. Just two

Terms ago, this Court reviewed a decision in which “[t]he

Federal Circuit summarily affirmed” in the same manner as it

did this case. Oil States Energy Servs., LLC v. Greene’s Energy

Grp., LLC, 138 S. Ct. 1365, 1372 (2018). And the Court has

reviewed many other comparably brief summary affirmances

from other Circuits. See, e.g., United States v. Flores-Montano,

541 U.S. 149 (2004), rev’g No. 02-50306, 2003 WL 22410705

(9th Cir. Mar. 14, 2003); Lane v. Pena, 518 U.S. 187 (1996), aff’g

No. 95-5006, 1995 WL 418635 (D.C. Cir. June 5, 1995) (per

curiam); Hess v. Port Auth. Trans-Hudson Corp., 513 U.S. 30

(1994), rev’g 8 F.3d 811 (3d Cir. 1993) (Table); Farmer v.

Brennan, 511 U.S. 825 (1994), rev’g 11 F.3d 668 (7th Cir. 1992).

20

sion requiring the Federal Circuit to conform to the

practices of other Circuits would have no meaningful

practical effect. It would simply entail a change in

drafting convention, with no real-world benefit to

courts or to litigants.

Straight Path cites a series of blog posts and law

review articles that have criticized the frequency

with which the Federal Circuit applies Rule 36. See

Pet. 16-20. Many of those posts and articles were

actually addressing the use of Rule 36 to decide

appeals from PTO or PTAB decisions—an issue, as

already noted, that is not presented here. See, e.g.,

Dennis Crouch, Wrongly Affirmed Without Opinion,

52 Wake Forest L. Rev. 561, 562 (2017). Further, as

the Solicitor General explained in successfully opposing certiorari on a similar petition, there is no indication “that the [Federal Circuit’s] use of Rule 36

affirmances is in any way improper in light of the

court’s docket,” given that “the number of appeals

from USPTO decisions has skyrocketed.” Br. for

Federal Respondent in Opposition 12, Specialty

Fertilizer Prods., LLC v. Shell Oil Co., No. 17-1243

(May 22, 2018), cert denied, 138 S. Ct. 2678 (2018)

(describing 1183% increase in cases from 2008 to

2017). It is also not clear how review of a single

summary affirmance would enable the Court to

review or curtail the frequency with which Rule 36 is

employed—unless, of course, the Court is prepared to

hold the entire practice unconstitutional.

In any event, if ever there were a poster child for

the proper use of Rule 36, this is it. The Federal

Circuit had already issued two prior opinions definitively construing the precise patents at issue in this

case. See Sipnet, 806 F.3d 1356; Samsung, 696 F.

21

App’x 1008. The District Court then issued a thorough opinion finding those decisions directly controlling, and ordering Straight Path to show cause why

its “disingenuous” claims did not entitle Apple and

Cisco to attorney’s fees. Pet. App. 31a, 35a-36a. The

Federal Circuit reasonably concluded that the District Court’s decision was “without * * * error” and

that nothing more needed to be said. Fed. Cir. R.

36(e). Faulting the Federal Circuit for streamlining

its work in this manner, even in the most meritless

and duplicative of appeals, would only encourage

wasteful litigation, and impose yet more unwarranted costs on litigants and a court already overburdened with a crush of baseless patent claims.

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted,

CLAYTON C. JAMES

HOGAN LOVELLS US LLP

1901 Wewatta St.

Suite 900

Denver, CO 80202

OCTOBER 2019

CATHERINE E. STETSON

Counsel of Record

MITCHELL P. REICH

CELINE JIMENEZ CROWSON

HOGAN LOVELLS US LLP

555 Thirteenth St., N.W.

Washington, D.C. 20004

(202) 637-5491

cate.stetson@hoganlovells.com