Re: TEN MISTAKES TO AVOID AT THE FEDERAL CIRCUIT ( 2 )
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Message: Time & Sales - Thursday 9/18/14 Vol 243,760 Closed at $0.047
6. CROSS-APPEALING WHEN YOU WON BELOW
Some attorneys apparently do not realize that if they were the judgment winner on a claim in
the district court, they lack standing to cross-appeal the judgment on that claim, even if the district
court refused to adopt any of their arguments. For example, suppose that there are two claim
construction issues in the district court, either one of which would result in a finding of noninfringement
in your favor. If the district court resolves one claim construction issue in your favor but the other one against you, resulting in a judgment in your favor, you cannot cross-appeal the lower court’s failure to adopt your other claim construction argument. Similarly, if a district court denies a preliminary injunction motion on the grounds that no irreparable harm was shown, but nevertheless agrees with the plaintiffs that likelihood of success was
shown, you (as the defendant) cannot cross-appeal the likelihood of success finding. You can, however, urge that the judgment should be affirmed on the alternative ground, as you should. See Genentech, Inc. v. Wellcome Foundation Ltd., 29 F.3d 1555, 1562 (Fed. Cir. 1994); Shamrock Tech. v. Medical Sterilization, 903 F.2d 789, 792 (Fed. Cir. 1990)(an appellee can urge affirmance on any ground fairly supported by the record, as long as the result would not enlarge the scope of the
judgment or relief).
One situation in which an appellee must cross-appeal is where he seeks to modify or enlarge the judgment below. See A-Transport Northwest Co. v. United States, 36 F.3d 1576, 1580 n.7 (Fed. Cir. 1994). For example, if a district court rules that a patent is valid but not infringed, an appellee supporting the non-infringement ruling would need to separately cross-appeal the validity ruling in
order to argue invalidity in the Federal Circuit. See Radio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840, 843 (Fed. Cir. 1984). This is because an invalidity ruling would “enlarge” the noninfringement judgment.
Finally, a cross-appellant is in the peculiar position of arguing out of both sides of his mouth.
On the one hand, as the appellee, he is urging that the district court’s judgment be affirmed. On the other hand, he is admitting that the district court made mistakes because a cross-appeal was filed. Consequently, parties should consider whether having the position of solely affirming the trial court is the better strategy.
There may be certain situations where it may be necessary to raise a conditional cross-appeal
to preserve certain rights. In one situation, the Federal Circuit reversed an infringement ruling on the
basis that the district court had too narrowly construed the claim, but refused to allow the appellee
to argue that the claims were invalid under the broader construction because it failed to cross-appeal
validity. Nevertheless, the court frowns upon improper cross-appeals, so it is advisable to get it right.
7. FAILURE TO ANTICIPATE QUESTIONS FROM THE JUDGES
The judges on the Federal Circuit want to hear from counsel not for a rehash of arguments
in the briefs, but to test counsel’s knowledge and to help understand how a ruling in that party’s favor
would affect future cases. To that end, the judges frequently ask hypothetical questions, to which
advocates are frequently unprepared to respond. A little advance preparation, however, can provide
the foundation for a stellar performance. Advocates should welcome questions from the judges,
because they reveal the court’s initial thoughts about the case and provide an opportunity to correct
any misperceptions that may have taken hold after reading the briefs.
You should be prepared to explain why your fact situation falls within the holding of one case rather than another, including any of the cases cited by your opponent. You should also create your own hypotheticals in advance of the argument by extending your facts slightly in the direction of a case that reaches a different result. Counsel should be prepared to explain either why it is not
appropriate to extend the facts in that direction, or offer a distinction or line of demarcation between the hypothetical facts and the holding of the contrary case. One of the most irritating responses a judge hears is, “that’s not this case.” Judges as a group don’t want to radically change the law, and you must be prepared to convince them that your facts would not result in sweeping changes to the
law. You can also use this to your advantage by painting your opponent’s case as requiring a radical
change in the law, or by characterizing your position as merely an incremental and justified extension
to the law. Counsel should always respond to questions directly, either by answering the question or by
stating a tentative answer and qualifying the answer with some uncertainty. Not enough can be said of the need for attorneys appearing at oral argument to have a detailed understanding of the full record and the case law cited in the briefs. Judges will frequently ask questions such as, “doesn’t the gizmo in the photograph at appendix page A458 show a blue rim instead of the claimed red rim?”
All too frequently, advocates are unprepared to respond to detailed questions regarding the meaning
of terms in a patent because of unfamiliarity with the entire prosecution history or the full scope of a patent specification. There is no substitute for extensive preparation based on the entire record and
a complete reading of all pertinent case law likely to affect the outcome of the appeal.
Finally, you should be prepared to explain why the cases cited in your opponent’s brief do not apply to your facts. You should know what your weakest argument is, and which case is the strongest one against you. Identify the weakest point of your case, confront it directly, and find
support in the case law to support your position. After all, many questions are directed to your weakest point, not your strongest one.
8. FAILURE TO KNOW THE COURT
Some people do not know that Jan Horbaly, the clerk of the court, is a man. (Letters
frequently arrive at the court addressed to “Ms. Horbaly.”). Embarrassing situations arise when attorneys repeatedly mispronounce the name of a judge during oral argument. Typical examples are Judge Plager (mispronounced “Plajer” instead of a hard “G”), Judge Michel (mispronounced “Michael” instead of “Michelle”); and Chief Judge Mayer (pronounced “Mayor,” not as in the famous bologna). A trip to the clerk’s office beforehand can avoid such blunders. Other advocates attempt
to approach the bench to turn over documents or exhibits, a definite no-no. There are many other examples of misinformed attorneys who embarrass clients and the bar at large by their court appearances and briefing errors.
The Federal Circuit is a specialized court. If you have never argued a case before the Federal Circuit, attend one or more oral arguments before the date on which yours is scheduled, or associate with an attorney familiar with Federal Circuit practice.
9. TREATING THE JUDGES AS ADVERSARIES RATHER THAN AS COLLEAGUES
Advocates sometimes seem to be locked in mortal combat with the judges on the panel, dodging and ducking questions and parrying at every possible point of contention. A much more effective presentation style is to help the judges to understand the consequences of ruling in the opponent’s favor. For oral argument, it is advisable to pick your three most important points and
stick to them, conceding the unimportant points. One technique is to begin with something like the
following: “There are three points that I need to convince you of today to win this case: (1), (2), and (3).” Phrases such as “Let me see if I can explain the principles on which my entire case turns” are likely to lead to a collegial discussion with the court. The entire tone and demeanor of your presentation should be one of helping the judges, as colleagues, to understand the implications of ruling for the other side. Some habits and gestures are particularly antithetical to a collegial oral argument. Surprisingly, some advocates believe that pounding a fist on the podium, raising their voice, pointing fingers at opposing counsel, rolling their eyes in response to arguments made by opposing counsel, or feigning surprise or indignation will add to the melodrama of the argument and help their cause. Some attorneys who primarily try cases before juries apparently believe that the sort of flair that
persuades juries will translate into a successful appellate argument. They are entirely mistaken. Normare such unhelpful practices confined to those standing at the podium. Similar gestures and facial
expressions are easily discerned on those sitting at counsel’s table in the courtroom. The most
successful advocates before the Federal Circuit maintain a confident, measured, and evenhanded tone
with deference to both the judges on the court and to opposing counsel.
10. SHOTGUNNING THE ISSUES
Some appellants believe that if they include enough allegations of error in their appeal brief, at least one of them will stick and the judgment will be reversed. That strategy almost always backfires. The weak and frivolous arguments included in such a brief detract from any meritorious ones. Once the reader has concluded that some arguments are frivolous or have little merit, he or she begins to suspect that the seemingly meritorious ones credibility with the judge or law clerk. It is not unusual to find a brief alleging a dozen or more errors that were committed by a district court, with issues sprinkled generously throughout footnotes and the reply brief. Such a “shotgun” approach often exhibits desperation or incompetence. Raising multitudes of issues in an
appeal also makes the oral argument particularly challenging, because the attorney will undoubtedly
be able to discuss no more than two or three issues during the allotted 15 minutes. Even if only a
limited number of issues are raised in the appeal, unpersuasive arguments should be dropped in favor
of focusing on the stronger ones. A persuasive brief reads like a judicial opinion: unbiased, not argumentative; neutral, yet forceful. Weak arguments should be eliminated and strong arguments buttressed with hard evidence. There is no need to use up the entire page limit when filing a brief.
CONCLUSION
The foregoing examples are by no means the only mistakes committed by counsel appearing
before the Federal Circuit. A little common sense, coupled with a recognition that inexperience and
lack of know-how can be a recipe for disaster, can lead to a successful appeal. Advocates appearing
before the court for the first time should, at a minimum, watch other arguments before the court and,
if necessary, use the clerk’s office as a resource for general information.
Some attorneys apparently do not realize that if they were the judgment winner on a claim in
the district court, they lack standing to cross-appeal the judgment on that claim, even if the district
court refused to adopt any of their arguments. For example, suppose that there are two claim
construction issues in the district court, either one of which would result in a finding of noninfringement
in your favor. If the district court resolves one claim construction issue in your favor but the other one against you, resulting in a judgment in your favor, you cannot cross-appeal the lower court’s failure to adopt your other claim construction argument. Similarly, if a district court denies a preliminary injunction motion on the grounds that no irreparable harm was shown, but nevertheless agrees with the plaintiffs that likelihood of success was
shown, you (as the defendant) cannot cross-appeal the likelihood of success finding. You can, however, urge that the judgment should be affirmed on the alternative ground, as you should. See Genentech, Inc. v. Wellcome Foundation Ltd., 29 F.3d 1555, 1562 (Fed. Cir. 1994); Shamrock Tech. v. Medical Sterilization, 903 F.2d 789, 792 (Fed. Cir. 1990)(an appellee can urge affirmance on any ground fairly supported by the record, as long as the result would not enlarge the scope of the
judgment or relief).
One situation in which an appellee must cross-appeal is where he seeks to modify or enlarge the judgment below. See A-Transport Northwest Co. v. United States, 36 F.3d 1576, 1580 n.7 (Fed. Cir. 1994). For example, if a district court rules that a patent is valid but not infringed, an appellee supporting the non-infringement ruling would need to separately cross-appeal the validity ruling in
order to argue invalidity in the Federal Circuit. See Radio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840, 843 (Fed. Cir. 1984). This is because an invalidity ruling would “enlarge” the noninfringement judgment.
Finally, a cross-appellant is in the peculiar position of arguing out of both sides of his mouth.
On the one hand, as the appellee, he is urging that the district court’s judgment be affirmed. On the other hand, he is admitting that the district court made mistakes because a cross-appeal was filed. Consequently, parties should consider whether having the position of solely affirming the trial court is the better strategy.
There may be certain situations where it may be necessary to raise a conditional cross-appeal
to preserve certain rights. In one situation, the Federal Circuit reversed an infringement ruling on the
basis that the district court had too narrowly construed the claim, but refused to allow the appellee
to argue that the claims were invalid under the broader construction because it failed to cross-appeal
validity. Nevertheless, the court frowns upon improper cross-appeals, so it is advisable to get it right.
7. FAILURE TO ANTICIPATE QUESTIONS FROM THE JUDGES
The judges on the Federal Circuit want to hear from counsel not for a rehash of arguments
in the briefs, but to test counsel’s knowledge and to help understand how a ruling in that party’s favor
would affect future cases. To that end, the judges frequently ask hypothetical questions, to which
advocates are frequently unprepared to respond. A little advance preparation, however, can provide
the foundation for a stellar performance. Advocates should welcome questions from the judges,
because they reveal the court’s initial thoughts about the case and provide an opportunity to correct
any misperceptions that may have taken hold after reading the briefs.
You should be prepared to explain why your fact situation falls within the holding of one case rather than another, including any of the cases cited by your opponent. You should also create your own hypotheticals in advance of the argument by extending your facts slightly in the direction of a case that reaches a different result. Counsel should be prepared to explain either why it is not
appropriate to extend the facts in that direction, or offer a distinction or line of demarcation between the hypothetical facts and the holding of the contrary case. One of the most irritating responses a judge hears is, “that’s not this case.” Judges as a group don’t want to radically change the law, and you must be prepared to convince them that your facts would not result in sweeping changes to the
law. You can also use this to your advantage by painting your opponent’s case as requiring a radical
change in the law, or by characterizing your position as merely an incremental and justified extension
to the law. Counsel should always respond to questions directly, either by answering the question or by
stating a tentative answer and qualifying the answer with some uncertainty. Not enough can be said of the need for attorneys appearing at oral argument to have a detailed understanding of the full record and the case law cited in the briefs. Judges will frequently ask questions such as, “doesn’t the gizmo in the photograph at appendix page A458 show a blue rim instead of the claimed red rim?”
All too frequently, advocates are unprepared to respond to detailed questions regarding the meaning
of terms in a patent because of unfamiliarity with the entire prosecution history or the full scope of a patent specification. There is no substitute for extensive preparation based on the entire record and
a complete reading of all pertinent case law likely to affect the outcome of the appeal.
Finally, you should be prepared to explain why the cases cited in your opponent’s brief do not apply to your facts. You should know what your weakest argument is, and which case is the strongest one against you. Identify the weakest point of your case, confront it directly, and find
support in the case law to support your position. After all, many questions are directed to your weakest point, not your strongest one.
8. FAILURE TO KNOW THE COURT
Some people do not know that Jan Horbaly, the clerk of the court, is a man. (Letters
frequently arrive at the court addressed to “Ms. Horbaly.”). Embarrassing situations arise when attorneys repeatedly mispronounce the name of a judge during oral argument. Typical examples are Judge Plager (mispronounced “Plajer” instead of a hard “G”), Judge Michel (mispronounced “Michael” instead of “Michelle”); and Chief Judge Mayer (pronounced “Mayor,” not as in the famous bologna). A trip to the clerk’s office beforehand can avoid such blunders. Other advocates attempt
to approach the bench to turn over documents or exhibits, a definite no-no. There are many other examples of misinformed attorneys who embarrass clients and the bar at large by their court appearances and briefing errors.
The Federal Circuit is a specialized court. If you have never argued a case before the Federal Circuit, attend one or more oral arguments before the date on which yours is scheduled, or associate with an attorney familiar with Federal Circuit practice.
9. TREATING THE JUDGES AS ADVERSARIES RATHER THAN AS COLLEAGUES
Advocates sometimes seem to be locked in mortal combat with the judges on the panel, dodging and ducking questions and parrying at every possible point of contention. A much more effective presentation style is to help the judges to understand the consequences of ruling in the opponent’s favor. For oral argument, it is advisable to pick your three most important points and
stick to them, conceding the unimportant points. One technique is to begin with something like the
following: “There are three points that I need to convince you of today to win this case: (1), (2), and (3).” Phrases such as “Let me see if I can explain the principles on which my entire case turns” are likely to lead to a collegial discussion with the court. The entire tone and demeanor of your presentation should be one of helping the judges, as colleagues, to understand the implications of ruling for the other side. Some habits and gestures are particularly antithetical to a collegial oral argument. Surprisingly, some advocates believe that pounding a fist on the podium, raising their voice, pointing fingers at opposing counsel, rolling their eyes in response to arguments made by opposing counsel, or feigning surprise or indignation will add to the melodrama of the argument and help their cause. Some attorneys who primarily try cases before juries apparently believe that the sort of flair that
persuades juries will translate into a successful appellate argument. They are entirely mistaken. Normare such unhelpful practices confined to those standing at the podium. Similar gestures and facial
expressions are easily discerned on those sitting at counsel’s table in the courtroom. The most
successful advocates before the Federal Circuit maintain a confident, measured, and evenhanded tone
with deference to both the judges on the court and to opposing counsel.
10. SHOTGUNNING THE ISSUES
Some appellants believe that if they include enough allegations of error in their appeal brief, at least one of them will stick and the judgment will be reversed. That strategy almost always backfires. The weak and frivolous arguments included in such a brief detract from any meritorious ones. Once the reader has concluded that some arguments are frivolous or have little merit, he or she begins to suspect that the seemingly meritorious ones credibility with the judge or law clerk. It is not unusual to find a brief alleging a dozen or more errors that were committed by a district court, with issues sprinkled generously throughout footnotes and the reply brief. Such a “shotgun” approach often exhibits desperation or incompetence. Raising multitudes of issues in an
appeal also makes the oral argument particularly challenging, because the attorney will undoubtedly
be able to discuss no more than two or three issues during the allotted 15 minutes. Even if only a
limited number of issues are raised in the appeal, unpersuasive arguments should be dropped in favor
of focusing on the stronger ones. A persuasive brief reads like a judicial opinion: unbiased, not argumentative; neutral, yet forceful. Weak arguments should be eliminated and strong arguments buttressed with hard evidence. There is no need to use up the entire page limit when filing a brief.
CONCLUSION
The foregoing examples are by no means the only mistakes committed by counsel appearing
before the Federal Circuit. A little common sense, coupled with a recognition that inexperience and
lack of know-how can be a recipe for disaster, can lead to a successful appeal. Advocates appearing
before the court for the first time should, at a minimum, watch other arguments before the court and,
if necessary, use the clerk’s office as a resource for general information.
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