SHEDDING LIGHT ON THE DARK WORLD OF NONPRECEDENTIAL OPINIONS: Since the Judicial Conference and the Supreme Court announced that, starting January 1, 2007, nonprecedential opinions may be cited in court documents, a concern immediately arose over how this would affect patent practice before the Federal Circuit (see Federal Circuit's rule-change proposal here).

Basically, two forms of non-precedential judgments exist: Rule 47.6 basis for Nonprecedential Dispositions, and Rule 36 Judgment of Affirmance Without Opinion.

Under Rule 47.6, the court would typically provide a relatively short opinion for the public record, but the opinion is not citable as precedent. An opinion will be deemed non-precedential when it is "one determined by the panel issuing it as not adding significantly to the body of law. " Such rulings provide the holding for an opinion, but often gloss over the rationale for the holding in light of existing precedent.

Under Rule 36, appeals may be summarily disposed without stating an opinion, or otherwise providing any indication why the lower court's judgment is affirmed. Most often, a Rule 36 disposition gets rid of frivolous (or near-frivolous) appeals.

Practitioners and academics have historically been opposed to the practice of issuing nonprecedential opinions, since they claim this deprives a public need for properly understanding (and ultimately critiquing) decisions made by the court, and saps the potential for participating in such decisions via amici. In contrast, the Federal Circuit has unanimously and urgently supported the practice, claiming that valuable judicial resources would otherwise be wasted on cases not "worthy" of precedential opinions.

Professor Hal Wegner has provided an important update to his 2005 paper titled "The Non-Precedential Claim Construction Black Hole" that explores in detail the effect of non-precedential opinions on the Federal Circuit and patent jurisprudence. While most people haven't lost sleep over the issue of non-precedential opinions in federal practice, there is an important catch to keep in mind when the new citation rules take effect: most of all patent decisions in appeals from the trial courts are non-precedential opinions (this study on federal appellate decisions estimates that 80% of all federal appellate decisions are non-precedential). And even when you ignore the appeals that were "Rule 36'ed" in the Federal Circuit, there remains a large body of judicial decisions waiting to be unleashed that is confusing and often times contradicts itself. Coupled with the already dizzying body of claim construction rulings, and you have a recipe for potential disaster.

According to Professor Wegner, claim construction was most prone to abuse from the practice of nonprecedential dispositions. The evidence of this is found in the high level of 2-1 split rulings on claim construction issues that were released as nonprecedential decisions. This begs the question: if these cases are so apparently lacking in merit or controversy, then why is 1/3 of the bench dissenting?

Also, since Phillips v. AWH was decided, Professor Wegner found that roughly one opinion per month has been rendered by the court with a 2-1 split vote on claim construction. Worse yet, even when cases are published as precedential, the Federal Circuit has shown difficulty in agreeing on arguably simple terms in mechanical cases. In the Dorel v. Graco child car-seat case, no consensus could be reached on the meaning of the term "removably attached." In Agfa v. Creo, the same problem existed for the meaning of the term "stack."

Which brings Professor Wegner to the money quote: "[i]f three judges with a cumulative forty-five years on the bench can't reach agreement on a simple term - 'removably' attached - in a simple mechanical technology, then what hope does an otherwise skilled and experienced trial judge have in dealing with her or his first patent case?"