CAFC Puts Patent Community on Notice of Sanctions for Incorporation by Reference Violations
“[A]ll future litigants before the Federal Circuit have been warned that similar attempts to incorporate by reference ‘will likely result in sanctions.’”
On February 16, the U.S. Court of Appeals for the Federal Circuit issued a pair of precedential rulings in Promptu Systems Corp. v. Comcast Cable Communications, LLC, vacating a final judgment of infringement after reversing part of the district court’s claim construction rulings. The entire U.S. patent community, however, should take notice of the Federal Circuit’s sua sponte order informing future litigants that evading briefing limits by incorporating much larger documents by reference will likely result in sanctions.
The CAFC’s rulings follow one month after the appellate court heard oral arguments in four related appeals between telecom giant Comcast and voice user interface developer Promptu, which sued Comcast for infringement of patent claims covering speech recognition services over cable television or video delivery services. The recent CAFC rulings stem from previous rulings from an infringement suit in the Eastern District of Pennsylvania as well as inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB).
Attempt to Evade Word Count Limits in Appellate Briefing Leads to Order to Show Cause
The Federal Circuit entered its sua sponte order in Promptu’s appeal from the IPR proceedings brought by Comcast to challenge Promptu’s speech recognition patent claims. Although briefing on the issues in that appeal was limited to 700 words, briefing filed for appellee Comcast incorporated by reference briefing from a companion appeal that totalled more than 2,000 words. At oral argument in January, the appellate court Mark Perry of Weil, Gotshal & Manges LLP, counsel representing appellee Comcast, was given 10 days to file a brief arguing why the Federal Circuit should not enter sanctions for violating clear precedent from the court.
Federal Rule of Appellate Procedure 28 governs the obligations of litigants related to appellate briefing and it limits most references in those briefs to documents that are part of the intrinsic record of the case. Although Rule 28(i) enables broader incorporation by reference outside of the record of the instant appeal, that provision is limited to appeals with multiple appellants or appellees, including consolidated cases.
In past rulings involving appellate briefs incorporating other documents by reference, the Federal Circuit has stuck to narrow interpretations of Rule 28 that adhere closely to word count limits from the appellate court’s briefing orders. In Microsoft v. DataTern (2014), the Federal Circuit found that it would be “fundamentally unfair to allow a party to use incorporation to exceed word count.” The CAFC held that Microsoft could not incorporate by reference arguments on claim construction raised by fellow plaintiff-appellee SAP, who also sued patent owner DataTern for declaratory judgment but whose appeal was not consolidated with Microsoft’s appeal. Then in Medtronic v. Teleflex Life Sciences (2023), the Federal Circuit reaffirmed that premise by preventing Medtronic from incorporating briefing on diligence in reduction to practice by referencing appellate briefing from a previous appeal between Medtronic and Teleflex. In both cases, the Federal Circuit ruled against the incorporations by reference after noting that those attempts would have exceeded word count limits in appellate briefing by at least 3,000 words.
Because Appellee Pushed Incorporation Argument, ‘It Gets This Order’
“We had hoped not to have to write this order,” stated the Federal Circuit in its recent per curiam opinion. Although the appellate court accepted Perry’s contention that counsel was unaware of the holding in Microsoft, “in which his own law firm was admonished for exactly the same improper conduct,” the Federal Circuit noted that Comcast’s counsel chose not to withdraw the argument once the improper argument had been identified. Instead, Perry argued for Comcast that the CAFC had never decided whether it was improper to incorporate arguments from the same party’s brief in a companion appeal set before the same panel. “Since Appellee has made this argument, it gets this Order.” Although sanctions were not awarded in this case, all future litigants before the Federal Circuit have been warned that similar attempts to incorporate by reference impermissible under Rule 28 to exceed applicable word counts “will likely result in sanctions.”
The Federal Circuit’s other precedential ruling in Promptu v. Comcast dealt with several erroneous claim constructions entered in the Eastern Virginia district court, which led Promptu to stipulate to dismissal of several patent infringement claims. Much of the erroneous construction stemmed from the district court’s improper reliance on embodiments described in the specification to reach narrower definitions than necessary. For example, the Federal Circuit found that the claim term “channel” was not limited to a fixed band of frequencies or time slots, which was simply one exemplary embodiment described in the patent’s specification.
The Federal Circuit’s holding on the construction of “channel” impacted the district court’s construction of the claim terms “back channel” and “multiplicity of received identified speech channels.” The CAFC also found that the district court improperly limited the claim term “speech recognition system” to systems where speech recognition is the exclusive function, improperly read a proximity requirement into the claim term “coupled to,” and improperly required that the claimed “wireline node” be centralized within the claimed system. While the Federal Circuit did affirm part of the district court’s claim construction rulings, the appellate court vacated the entry of final judgment and remanded the case to Eastern Virginia for further proceedings.
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Steve Brachmann
Steve Brachmann is a graduate of the University at Buffalo School of Law, having earned his Juris Doctor in May 2022 and served as the President of the Intellectual Property […see more]
