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TEN MISTAKES TO AVOID AT THE FEDERAL CIRCUIT
by Bradley C. Wright
Few things are as painful to watch as an argument before the Court of Appeals for the Federal Circuit in which a misguided and uninformed attorney attempts to persuade that court that the judgment below should be reversed. From the perspective of a former law clerk, few things are as frustrating as reading an appeal brief that is garbled, unconvincing, and burdened with distortions of law and fact. As the examples below illustrate, both of the foregoing problems are all too frequent in practice. Fortunately, many of the most common mistakes can be easily avoided through preparation and forethought. Other, more subtle mistakes, can only be avoided through experience. The following ten tips can help you improve your chances of success at the Federal Circuit.
1. RECITING FACTS AT ORAL ARGUMENT
Frequently an advocate will begin with something like “This is a patent case — the patent covers a widget, which is a red and green device with two little gears, and I happen to have a sample with me here today, which I’d like to give you.” Typically, such an introduction will be followed by five or more minutes of a dry recitation of the facts of the case. It is apparent that in these cases, the
attorney fervently hopes that if only the judges would see the facts in the proper light, the court would rule accordingly. If ever there were a reason for an oral argumentectomy, the Federal Circuit is the place to
perform the surgery. The Federal Circuit is not the proper venue for “smoking gun” jury litigators who hope to persuade the judges as if they were a jury. Contrary to what some advocates might believe, the Federal Circuit judges as a group are extremely well prepared and briefed on the facts of each case. There is no need to waste your time (and that of the court) by regurgitating the facts. A better way to kick off your argument is to quickly and precisely zoom in on the heart of the appeal.
As an appellant or cross-appellant, the heart of your case is the specific error of law made by the district court in ruling against you. The heart of an appellee’s case is the body of case law that supports the district court’s decision, on which you can comfortably rely absent in banc action or a deviation from stare decisis. An attorney who begins by reciting the facts is likely to have his or her presentation cut short by a judge seeking to ask a pertinent question. Some of the presiding judges warn attorneys in advance that the court is thoroughly familiar with the facts, and that each party should proceed
immediately to the heart of the case. Obviously, an advocate who has prepared a detailed speech
reciting the facts will quickly be thrown off balance and may have difficulty recovering.
Mr. Wright is a shareholder of Banner & Witcoff, Ltd., and practices intellectual property law in its Washington D.C. office. He is a former law clerk of the Federal Circuit.
One of the most effective oral arguments at the Federal Circuit was one in which the appellee stated his case in five minutes and sat down. (Fifteen minutes are allotted for each side). The presentation was refreshing, crisp, and persuasive. And, not incidentally, he won.
There is one place, however, where the facts should always be laid out in detail: in the briefs.
It is advisable to recite your own version of the facts in every case, rather than taking pot shots at your opponents’ facts. The statement of the case should read like a newspaper or magazine story, with each material fact supported with a pinpoint citation to the appendix. Briefs should be combed carefully to eliminate immaterial and long-winded factual assertions.
2. FAILURE TO APPRECIATE THE STANDARD OF review
Not infrequently, appellants base their appeal on an argument that goes something like this:
“Our accused device does not infringe the patent because it does not include the XYZ element. Instead, it includes a gizmo that does ABC.” They will then spend the next ten minutes (or ten pages in a brief) trying to convince the court that in fact an ABC element is not at all like the XYZ element recited in the claim, notwithstanding the fact that evidence in the record supports both sides of the
issue, and ignoring the fact that a jury concluded that thedevice infringes. This problem stems from the failure to recognize the high burden (lack of “substantial evidence”) that an appellant must overcome in order to overturn a jury verdict. Substantial evidence, which is among the most deferential standards of review, is that degree
of evidence that a reasonable person would consider sufficient to support a conclusion. Where the
record contains conflicting or ambiguous evidence on a factual issue, it is a generally no-win proposition to argue that there is not substantial evidence to support the verdict. Suppose that three fact witnesses testified at trial regarding whether the accused devices performed a particular function.One witness, whose testimony was biased and lacked credibility, was contradicted by two very
credible witnesses who explained in detail why the accused device could not perform as claimed.
Ultimately, the jury decided to believe the non-credible witness. On appeal to the Federal Circuit, it is quite likely that the jury verdict will be upheld under the “substantial evidence” standard. Yet countless advocates will begin their brief or oral argument arguing that the jury should not have believed the non-credible witness. That time would be better spent arguing that the claim
construction was incorrect, a purely legal issue that is reviewed de novo. Similar problems arise for appealed issues that are reviewed under the deferential “abuse of
discretion” standard, such as inequitable conduct, evidentiary questions, and the granting or denial
of preliminary injunctions. The Federal Circuit rarely reverses a district court’s ruling on procedural
issues. It is much easier to affirm a district court’s ruling based on deference to that court’s discretion
or to a jury’s decisionmaking than it is to explain how and why the lower court got it wrong. Of course, if you are the appellee you should focus on the standard of review to your advantage.
Some issues, such as obviousness, are legal questions that involve underlying factual predicates. In such cases, a “mixed” standard of review may be applied, such that the underlying facts will be reviewed under a substantial evidence standard but the ultimate legal conclusion will be reviewed for legal correctness.
3. RAISING NEW ISSUES ON APPEAL OR IN THE REPLY BRIEF
Occasionally, but with surprising frequency, an appellant or cross-appellant will raise a seemingly meritorious issue in a brief or at oral argument that was not raised before the lower tribunal. Examples include claim construction arguments; problems with jury instructions that were
never the subject of a proper objection; or making a more specific argument than the one presented below. None of these is permissible. Nor is it permissible to raise a new argument in a reply brief; all arguments must be raised in
the opening brief. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.3d 792, 800 (Fed. Cir. 1990). Appellees sometimes overlook the fact that the appellant is attempting to raise a new issue in the principal brief or in its reply brief. You can bring this to the court’s attention at oral argument if necessary. The Federal Circuit generally strictly enforces this “no new argument” rule. All arguments made in the district court must be raised with particularity; it is not sufficient to make a general
argument and then “refine” it on appeal. See Johns Hopkins University v. Cellpro, Inc., 152 F.3d
1342, 1361 (Fed. Cir. 1998)(chiding party for raising a slightly different “written description” argument). The same rule applies to rebuttal arguments; see Federal CircuitRule 34.
4. OVERUSE OR MISUSE OF EXHIBITS
Patent cases are complicated and often involve detailed scientific or engineering principles.
Understandably, attorneys appearing before the Federal Circuit seek to make things as easy as
possible for everyone to understand. One of the ways attorneys try to simplify things is through the
use of demonstrative exhibits or visual aids. (Indeed, Federal Circuit Rule 34 encourages such visual
aids). Unfortunately, the use of such exhibits can lead to unintended consequences.
One attorney brought several different accused devices, each weighing several pounds, to the oral argument. At the start of oral argument, he asked for permission to turn over the exhibits to the court for inspection. While carrying the devices to the bailiff, he tripped, sending the devices
smashing across the floor, startling everyone in the courtroom. Another errant exhibit involved a large poster on which the attorney had enlarged the claim
at issue in the case. The attorney had cleverly placed sticky labels over certain terms of the claim that
he believed were being rewritten by the opposing party. To make the point, he ripped off the labels
at the appropriate point in his argument to reveal the original terms in the claim. Unfortunately, when
he ripped off the labels, he ripped the underlying words out of the claim because the tape was too
sticky. Needless to say, it gave a whole new meaning to “reading limitations out of the claims.” Yet another example concerns videotaped demonstrations. Sometime, the video fails to operate as intended, or cannot easily be seen by one or more of the judges. On more than one
occasion, a presiding judge has rejected an attorney’s proposal to play a videotape showing an accused device or a patented invention. Nonetheless, for a particularly complicated invention that may be difficult to visualize, the potential benefits of a concise, focused video may outweigh the risk of having the video rejected outright or of encountering technical difficulties. As with facts presented in the briefs, any videotaped demonstration should be carefully prepared to avoid any argument that
it is biased or based upon a distorted or misleading view of the facts. Other problems involve using too many posters placed on easels in the courtroom. The
exhibits can be a source of distraction as “helpers” try to prop up and change them in tune with the presenter’s arguments. Exhibits sometimes fall off the easels or create viewing problems for opposing
counsel, thus generally adding confusion to the argument.
Finally, some attorneys fail to recognize that the oral arguments are tape recorded, and refer to exhibits as “this device” and “that device.” This renders the taped argument confusing when it is played back. Some judges catch this as it happens and scold the attorneys not to refer to “this device” and “that device” but instead refer to them by their exhibit number.
In general, exhibits should be used sparingly and with careful planning. Note that you must advise the clerk’s office before the oral argument of your intention to use visual aids. And, if you ever must turn over an exhibit to the court during oral argument, never approach the bench directly.Give it to the bailiff.
5. FAILURE TO PROVIDE PINPOINT CITATIONS TO THE RECORD
One of the most frustrating passages that law clerks and judges encounter when reading a brief is something like the following: “Defendants admit that their accused device contains a red widget. See A5221-69.” In addition to violating Federal Circuit rules, such block citations to the
record generate suspicion on the part of the reader. Parties are mistaken if they believe that the
judges and law clerks will not bother to check these citations. An appendix citation to support a particular factual allegation should refer to a specific page and, if possible, a specific line number on that page.
Also annoying yet surprisingly common are erroneous citations to the record, usually the result of a careless employee who transposes a digit in an appendix reference. These problems can be easily corrected and should be carefully screened before filing briefs.
Another recurring problem is a brief that distorts the record. For example, the brief may say something like “Defendants admit that they sold infringing devices on at least two occasions, see A5446.” Upon looking at appendix page A5446, the reader finds the following deposition colloquy with the defendant:
Q: Have you ever sold any water balloons of any type in your entire life?”
A: Yes, when I was a child my brother let me have his water balloons, which I gave to my friends.
Q: What was the structure of those water balloons?
A: I’m not sure, but I think they had some water in them.
Not surprisingly, the reader is left wondering, “where’s the beef?” At the least, an objective reviewer should carefully review all material factual assertions in the briefs to ensure that they do not distort the record. After all, a party’s credibility on appeal can be severely undermined by such
distortions.
by Bradley C. Wright
Few things are as painful to watch as an argument before the Court of Appeals for the Federal Circuit in which a misguided and uninformed attorney attempts to persuade that court that the judgment below should be reversed. From the perspective of a former law clerk, few things are as frustrating as reading an appeal brief that is garbled, unconvincing, and burdened with distortions of law and fact. As the examples below illustrate, both of the foregoing problems are all too frequent in practice. Fortunately, many of the most common mistakes can be easily avoided through preparation and forethought. Other, more subtle mistakes, can only be avoided through experience. The following ten tips can help you improve your chances of success at the Federal Circuit.
1. RECITING FACTS AT ORAL ARGUMENT
Frequently an advocate will begin with something like “This is a patent case — the patent covers a widget, which is a red and green device with two little gears, and I happen to have a sample with me here today, which I’d like to give you.” Typically, such an introduction will be followed by five or more minutes of a dry recitation of the facts of the case. It is apparent that in these cases, the
attorney fervently hopes that if only the judges would see the facts in the proper light, the court would rule accordingly. If ever there were a reason for an oral argumentectomy, the Federal Circuit is the place to
perform the surgery. The Federal Circuit is not the proper venue for “smoking gun” jury litigators who hope to persuade the judges as if they were a jury. Contrary to what some advocates might believe, the Federal Circuit judges as a group are extremely well prepared and briefed on the facts of each case. There is no need to waste your time (and that of the court) by regurgitating the facts. A better way to kick off your argument is to quickly and precisely zoom in on the heart of the appeal.
As an appellant or cross-appellant, the heart of your case is the specific error of law made by the district court in ruling against you. The heart of an appellee’s case is the body of case law that supports the district court’s decision, on which you can comfortably rely absent in banc action or a deviation from stare decisis. An attorney who begins by reciting the facts is likely to have his or her presentation cut short by a judge seeking to ask a pertinent question. Some of the presiding judges warn attorneys in advance that the court is thoroughly familiar with the facts, and that each party should proceed
immediately to the heart of the case. Obviously, an advocate who has prepared a detailed speech
reciting the facts will quickly be thrown off balance and may have difficulty recovering.
Mr. Wright is a shareholder of Banner & Witcoff, Ltd., and practices intellectual property law in its Washington D.C. office. He is a former law clerk of the Federal Circuit.
One of the most effective oral arguments at the Federal Circuit was one in which the appellee stated his case in five minutes and sat down. (Fifteen minutes are allotted for each side). The presentation was refreshing, crisp, and persuasive. And, not incidentally, he won.
There is one place, however, where the facts should always be laid out in detail: in the briefs.
It is advisable to recite your own version of the facts in every case, rather than taking pot shots at your opponents’ facts. The statement of the case should read like a newspaper or magazine story, with each material fact supported with a pinpoint citation to the appendix. Briefs should be combed carefully to eliminate immaterial and long-winded factual assertions.
2. FAILURE TO APPRECIATE THE STANDARD OF review
Not infrequently, appellants base their appeal on an argument that goes something like this:
“Our accused device does not infringe the patent because it does not include the XYZ element. Instead, it includes a gizmo that does ABC.” They will then spend the next ten minutes (or ten pages in a brief) trying to convince the court that in fact an ABC element is not at all like the XYZ element recited in the claim, notwithstanding the fact that evidence in the record supports both sides of the
issue, and ignoring the fact that a jury concluded that thedevice infringes. This problem stems from the failure to recognize the high burden (lack of “substantial evidence”) that an appellant must overcome in order to overturn a jury verdict. Substantial evidence, which is among the most deferential standards of review, is that degree
of evidence that a reasonable person would consider sufficient to support a conclusion. Where the
record contains conflicting or ambiguous evidence on a factual issue, it is a generally no-win proposition to argue that there is not substantial evidence to support the verdict. Suppose that three fact witnesses testified at trial regarding whether the accused devices performed a particular function.One witness, whose testimony was biased and lacked credibility, was contradicted by two very
credible witnesses who explained in detail why the accused device could not perform as claimed.
Ultimately, the jury decided to believe the non-credible witness. On appeal to the Federal Circuit, it is quite likely that the jury verdict will be upheld under the “substantial evidence” standard. Yet countless advocates will begin their brief or oral argument arguing that the jury should not have believed the non-credible witness. That time would be better spent arguing that the claim
construction was incorrect, a purely legal issue that is reviewed de novo. Similar problems arise for appealed issues that are reviewed under the deferential “abuse of
discretion” standard, such as inequitable conduct, evidentiary questions, and the granting or denial
of preliminary injunctions. The Federal Circuit rarely reverses a district court’s ruling on procedural
issues. It is much easier to affirm a district court’s ruling based on deference to that court’s discretion
or to a jury’s decisionmaking than it is to explain how and why the lower court got it wrong. Of course, if you are the appellee you should focus on the standard of review to your advantage.
Some issues, such as obviousness, are legal questions that involve underlying factual predicates. In such cases, a “mixed” standard of review may be applied, such that the underlying facts will be reviewed under a substantial evidence standard but the ultimate legal conclusion will be reviewed for legal correctness.
3. RAISING NEW ISSUES ON APPEAL OR IN THE REPLY BRIEF
Occasionally, but with surprising frequency, an appellant or cross-appellant will raise a seemingly meritorious issue in a brief or at oral argument that was not raised before the lower tribunal. Examples include claim construction arguments; problems with jury instructions that were
never the subject of a proper objection; or making a more specific argument than the one presented below. None of these is permissible. Nor is it permissible to raise a new argument in a reply brief; all arguments must be raised in
the opening brief. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.3d 792, 800 (Fed. Cir. 1990). Appellees sometimes overlook the fact that the appellant is attempting to raise a new issue in the principal brief or in its reply brief. You can bring this to the court’s attention at oral argument if necessary. The Federal Circuit generally strictly enforces this “no new argument” rule. All arguments made in the district court must be raised with particularity; it is not sufficient to make a general
argument and then “refine” it on appeal. See Johns Hopkins University v. Cellpro, Inc., 152 F.3d
1342, 1361 (Fed. Cir. 1998)(chiding party for raising a slightly different “written description” argument). The same rule applies to rebuttal arguments; see Federal CircuitRule 34.
4. OVERUSE OR MISUSE OF EXHIBITS
Patent cases are complicated and often involve detailed scientific or engineering principles.
Understandably, attorneys appearing before the Federal Circuit seek to make things as easy as
possible for everyone to understand. One of the ways attorneys try to simplify things is through the
use of demonstrative exhibits or visual aids. (Indeed, Federal Circuit Rule 34 encourages such visual
aids). Unfortunately, the use of such exhibits can lead to unintended consequences.
One attorney brought several different accused devices, each weighing several pounds, to the oral argument. At the start of oral argument, he asked for permission to turn over the exhibits to the court for inspection. While carrying the devices to the bailiff, he tripped, sending the devices
smashing across the floor, startling everyone in the courtroom. Another errant exhibit involved a large poster on which the attorney had enlarged the claim
at issue in the case. The attorney had cleverly placed sticky labels over certain terms of the claim that
he believed were being rewritten by the opposing party. To make the point, he ripped off the labels
at the appropriate point in his argument to reveal the original terms in the claim. Unfortunately, when
he ripped off the labels, he ripped the underlying words out of the claim because the tape was too
sticky. Needless to say, it gave a whole new meaning to “reading limitations out of the claims.” Yet another example concerns videotaped demonstrations. Sometime, the video fails to operate as intended, or cannot easily be seen by one or more of the judges. On more than one
occasion, a presiding judge has rejected an attorney’s proposal to play a videotape showing an accused device or a patented invention. Nonetheless, for a particularly complicated invention that may be difficult to visualize, the potential benefits of a concise, focused video may outweigh the risk of having the video rejected outright or of encountering technical difficulties. As with facts presented in the briefs, any videotaped demonstration should be carefully prepared to avoid any argument that
it is biased or based upon a distorted or misleading view of the facts. Other problems involve using too many posters placed on easels in the courtroom. The
exhibits can be a source of distraction as “helpers” try to prop up and change them in tune with the presenter’s arguments. Exhibits sometimes fall off the easels or create viewing problems for opposing
counsel, thus generally adding confusion to the argument.
Finally, some attorneys fail to recognize that the oral arguments are tape recorded, and refer to exhibits as “this device” and “that device.” This renders the taped argument confusing when it is played back. Some judges catch this as it happens and scold the attorneys not to refer to “this device” and “that device” but instead refer to them by their exhibit number.
In general, exhibits should be used sparingly and with careful planning. Note that you must advise the clerk’s office before the oral argument of your intention to use visual aids. And, if you ever must turn over an exhibit to the court during oral argument, never approach the bench directly.Give it to the bailiff.
5. FAILURE TO PROVIDE PINPOINT CITATIONS TO THE RECORD
One of the most frustrating passages that law clerks and judges encounter when reading a brief is something like the following: “Defendants admit that their accused device contains a red widget. See A5221-69.” In addition to violating Federal Circuit rules, such block citations to the
record generate suspicion on the part of the reader. Parties are mistaken if they believe that the
judges and law clerks will not bother to check these citations. An appendix citation to support a particular factual allegation should refer to a specific page and, if possible, a specific line number on that page.
Also annoying yet surprisingly common are erroneous citations to the record, usually the result of a careless employee who transposes a digit in an appendix reference. These problems can be easily corrected and should be carefully screened before filing briefs.
Another recurring problem is a brief that distorts the record. For example, the brief may say something like “Defendants admit that they sold infringing devices on at least two occasions, see A5446.” Upon looking at appendix page A5446, the reader finds the following deposition colloquy with the defendant:
Q: Have you ever sold any water balloons of any type in your entire life?”
A: Yes, when I was a child my brother let me have his water balloons, which I gave to my friends.
Q: What was the structure of those water balloons?
A: I’m not sure, but I think they had some water in them.
Not surprisingly, the reader is left wondering, “where’s the beef?” At the least, an objective reviewer should carefully review all material factual assertions in the briefs to ensure that they do not distort the record. After all, a party’s credibility on appeal can be severely undermined by such
distortions.
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