Winning Strategies at the Federal Circuit
“Perhaps due to the higher number of complex patent cases, overall pendency and time to argument [at the Federal Circuit] has increased. With this in mind, it is more important than ever to be focused, even surgical, in how you approach briefing and oral argument.”
Knowing your way around the U.S. Court of Appeals for the Federal Circuit (CAFC)—the specialized appellate court that has exclusive jurisdiction over patent cases—is essential to success in patent appeals.
Founded in 1982, the Federal Circuit is the thirteenth federal court of appeals, and has nationwide jurisdiction over many types of cases, including international trade, government contracts, patents, trademarks, certain monetary claims against the United States government, federal personnel, and veterans’ benefits, among others.
Although the court hears appeals from numerous federal courts and administrative agencies, two-thirds of its cases come from just two tribunals: federal district courts and the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB). Between those two sources, the PTAB now generates vastly more work—almost double the number of district court cases. In fact, the number of PTAB appeals has increased so much that USPTO appeals overall have increased more than sixfold since the passage of the America Invents Act (AIA) in 2011.
In some ways, the Federal Circuit is like other appellate courts, where an appealing party’s chance of winning outright hovers around 14%. But the changes to its docket brought about by the AIA is requiring the Court to adapt. Among other approaches, the Court is consolidating more cases on its own initiative (reducing the total number of briefs and arguments) and designating more cases as companion cases (resulting in related cases being argued on the same day before the same panel). Still, perhaps due to the higher number of complex patent cases, overall pendency and time to argument has increased. With this in mind, it is more important than ever to be focused, even surgical, in how you approach briefing and oral argument.
Following up on the recent Federal Circuit panel discussion at Patent Litigation Masters 2024 (“Winning and Losing at the Federal Circuit”), I offer the following observations on how to best present your appeal.
Guard your credibility. Zealous advocacy should not come at the cost of credibility. During the editing process, we make the brief stronger and more persuasive, honing arguments over time. But sometimes during that process, despite our best intentions, we stretch or even lose the truth. A sentence that once read, “Patent Owner barely touched on claim construction below,” becomes “Patent Owner never argued claim construction below.” Patent Owner responds: “Petitioner lies!” Things devolve, and the court, rather than focusing on the merits of the argument, must determine first whether those arguments are even accurate.
I have heard at least one Federal Circuit judge say that the clerks’ job has become ferreting out who is lying to the court and how badly. This problem reminds me of the telephone game, where you would sit in a circle and one person would whisper a sentence into the ear of the next person and then that person would whisper what they heard into the ear of the next person until you got to the last person who would say the final message aloud. We all know how mangled the original message became when each person repeated what they thought they heard. The same thing happens in brief writing.
One way to address this is through the cite checking process. But it is not enough to cite check the brief because that process seldom corrects mistakes of this type unless the cited point is quoted directly from the record or the case. So, someone needs to “own” the brief and know the record and the cases well enough to undo “helpful” edits that appear to strengthen the brief but undermine its accuracy.
Group your issues and errors in threes. We all know that we must be selective when identifying issues for appeal. Yet, appellant must address every dispositive error below lest the decision be affirmed for reasons not presented. One way to present your issues and errors clearly and concisely is to group them in manageable numbers, optimally in threes.
That does not mean that you cannot discuss more than three errors. You can group errors logically. For example, the first group of errors under a single issue on appeal could involve claim construction, the second procedural errors, and the third factual errors. By grouping this way, you can succinctly state the standard of review and the applicable rule that applies to all of the errors under that issue. This is just one of many possible groupings.
One approach that I do not recommend is grouping the errors by patent when the patents are related. This temptation arises because the court is now frequently consolidating cases, and it may seem easier to proceed serially as you were originally planning separate briefs. In a recent opening brief I read, this resulted in significant repetition in the brief and confusion about whether certain arguments were the same across the patents/proceedings. Appellee rectified this by grouping the argument by related terms rather than by patent. This resulted in a shorter, more coherent, and more persuasive brief.
Provide shortcuts and multiple avenues to win. As you present your written arguments, it is helpful to signal which errors the court does not need to reach. Stated another way, it is helpful to explain how you can win the appeal even if you do not win on all issues. For example, if you argue three issues decided below—that the claim construction was wrong, that evidence was overlooked, and that the decision lacked substantial evidence—explain that a win on claim construction can resolve the appeal without reaching those other issues.
So, why brief three issues? Among other reasons, certain judges are sticklers for claim construction, others for due process problems, and still others want to dig into the fact findings to ensure they are well supported. Unlike district court—you do not know who your judge will be, so you are wise to expand your options to pique the judges’ interests.
Additionally, you increase your odds. By arguing that if the court concludes that construction was not wrong the court should still vacate and remand the case because the Board overlooked evidence, you might double your chance of winning. Or, if you are appealing an adverse patent eligibility decision from the district court, where the odds of winning are less than 10%, do not simply argue that the district court made a legal error, explain, if you can, why there are disputed issues of fact underlying the eligibility decision. That might result in a remand for a jury trial.
Write the shortest brief you can. As noted, the Federal Circuit is consolidating related cases and identifying other related cases as companion cases—all to be more efficient with its workload. While the court has been amenable to extending the time to file briefs, the court has not been amenable to increasing page limits–even if both parties agree to permit additional briefing and there are multiple patents involved and lengthy decisions below. That is a signal that the court believes briefs are, in general, already too long.
At a recent conference, a panel of judges emphasized the importance of being concise in writing. One Federal Circuit judge suggested, for example, that tribunals should eliminate standard background material that is not directly relevant to their decisions. The same applies to briefs. A helpful tip with the fact section is to imagine an impatient judge tapping their foot, asking you why each fact is relevant. A helpful tip with the argument section is to make sure that after every major heading you present both the issue and the applicable rules before engaging in a discussion of your facts and circumstances. Remember IRAC [“Issue, Rule, Application, Conclusion”]?
Another tip is to avoid “briefing” case law, which usually interrupts your flow and takes up too much space. Instead, extract the rule and apply it to your facts. After that, point to analogous cases if they are “on all fours.”
Present the shortest argument you can. Cases are rarely won at argument, but they can often be lost. The judges at the Federal Circuit are always familiar with the briefs and the record and are often ready to decide the appeal before they hear argument. Therefore, argument at the Federal Circuit is most often a function of simply answering the judges’ questions. To that point, because they are so well prepared, it may be dangerous to go beyond answering their questions. In fact, as multiple judges recently cautioned, it is possible that by continuing to argue you will raise an issue that they have not considered that could turn the case against you.
Aside from substance, as a matter of time management, Federal Circuit judges also prefer that you simply end the argument once their questions are answered. As one judge recently said, litigants need to understand that the argument is the judges’ time—not the lawyers’ time. It is important to keep this in mind. I appreciate that 15 minutes per side does not sound like much time, particularly if you are more familiar with district court and PTAB practice, but I have seen judges cut off a simple prayer for relief to save ten seconds after the questions and answer portion ended.
For this reason, appellants may only want to prepare brief remarks (2-3 minutes) to make a few key points. For example, open by stating that the district court should be reversed for three reasons. Then go right into it. Do not even say, “Now, I would like to turn to the first reason.” Five wasted seconds. Just say, “First, . . .” If you make it through your opening remarks, do not solicit questions. Pause. If there are no questions, you can simply reserve your time for rebuttal. If there are questions, answer them, and then reserve your time for rebuttal.
Appellees likewise could begin by preparing brief remarks on a few key points. But a more effective technique is to begin by addressing areas of interest that have already been revealed by the panel, weaving your points into that response. Then pause to answer questions. If there are no questions, it is best to thank the court and sit down no matter how much time you have left. You won below and are likely (statistically 70-80% likely) to win outright on appeal.
During rebuttal, appellants should be even more limited. Again, a quick thank you to the court is an appropriate way to conclude.
You may be understandably nervous that clients will not like this approach because the argument is their “day in court.” But explain that, at the Federal Circuit, their day in court is really the brief, not the argument. At a recent argument, I observed a senior partner at a large law firm arguing for the appellee. He had flown all the way from California the day before to appear and was representing a Fortune 500 client. He responded to two points from the appellant and concluded, even though he had spent many hours preparing and two days of travel to appear for what ended up being a few minutes of argument. His reward? A summary affirmance the next day.
Finally, answer before you explain. Because the Federal Circuit emphasizes efficiency, it is even more important there to answer questions head on before making a larger point.
At an oral argument last month, I observed an attorney making a persuasive point about a dependent claim, but the well-prepared panel suspected there were no arguments about the dependent claim in the brief. When a judge asked where the argument was in the brief, the attorney would not answer. He just kept expanding on the argument. Admittedly, it was a good argument. Then a second judge asked the same question. Where was the argument in the brief? Still no answer. As he continued to avoid the question, it became clear that the argument was not made below or on appeal. But the judges let him continue even though it was clear that they were no longer interested. Some judges would not have been so polite.
So, what do you do when you are preparing for an argument, and you realize that you left a great point out of the brief? To adhere to the answer first approach, first, admit that it was not in the brief. Then explain why the argument should be considered. It may simply illustrate a point that was made in the brief. The judges are concerned about the rules, but they also want to get to the right answer. They will give you latitude if you respect their time and are up front about the flaws in your case.
In sum, to modify an old saying, a good lawyer knows the law, a great lawyer knows the court. Know the Federal Circuit, and you will increase your chances of winning on appeal.
Image Source: Deposit Photos
Author: iqoncept
Image ID: 2074774
