Preparing for and Arguing Patent Appeals
Before the Federal Circuit
Greg Castanias  Jones Day, Washington, DC  April 20, 2012
1
Overview of presentation
• Preparing
• In the district court (or USPTO, ITC, or CFC)
• In the Federal Circuit
• Briefing
• Picking the issues
• Standards of review
• Writing the brief(s)
• Arguing
• What to do and what not to do
2
“Preparing”In the District Court
• Critical: Preservation of Error
• “Absent exceptional circumstances, a party
cannot raise on appeal legal issues not raised
and considered in the trial forum.”
– Southwest Software v. Harlequin, Inc.,
226 F.3d 1280, 1289 n.7 (Fed. Cir. 2000)
• Rule of thumb: (1) Give the judge an opportunity
to correct the error; and (2) tell the judge what
s/he should do instead.
3
“Preparing”In the District Court
1. Pretrial matters
• Discovery
• Orders precluding testimony
• Local rules
2. Pretrial motion practice
• Rule 12(b) motions
• Rule 56 (summary judgment) motions
– denials as preservation of error?
4
“Preparing”In the District Court
3. Markman hearings
• “In response, Defendants-Appellants argue that the
purpose of a Markman hearing is to determine the
meaning of claim terms. A claim construction order
always dictates how the court will instruct the jury
regarding a claim’s scope. Because these issues were
fully litigated and decided at the Markman stage of the
litigation, Defendants-Appellants assert that no objection
to the jury instruction was required to preserve error. We
agree.”
– O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
Co., 521 F.3d 1351, 1359 (Fed. Cir. 2008)
• Object anyway at charge conference?
5
“Preparing”In the District Court
4. Evidentiary objections
• Contemporaneous-objection rule
5. Jury charge (Rule 51)
6. Rule 50 (JMOL) motions
• 50(a) motion renewed by 50(b) motion
• Evidentiary sufficiency
7. Rule 52(b): motion to alter or amend
8. Rule 59: motion for new trial
9. Rule 60: motion to set aside judgment
6
“Preparing”In the District Court
•
•
The Notice of Appeal (Fed. R. App. P. 3)
• Filed in district court; 30 days from judgment or last posttrial motion decided
• Form 1: simple form of notice (parties; judgment or order
“or part thereof” being appealed; court to which appealed)
• No need to specify issues; in fact, specificity can
affirmatively hurt an appellant
– Default rule: all nonfinal orders “merge”
– 3M v. Chemque, Inc., 303 F.3d 1294, 1309 (Fed. Cir.
2002): “even a liberal construction of the notice
requirement” would not allow notice to be read as
embracing invalidity issues, where the notice listed
“inducement, infringement, and claim construction.”
Cross-appeal (14 days) appropriate or necessary?
7
“Preparing”In the Federal Circuit
•
7-10 days after notice of appeal: “docketing” in the
Federal Circuit
• Assigns case number, etc.
• Date from which almost all important deadlines
run (e.g., opening brief 60 days after docketing)
8
“Preparing”In the Federal Circuit
9
BriefingPicking the Issues
•
•
•
•
How many issues is too many?
Things to consider in picking issues:
• Strength of argument (i.e., are you correct?)
• Standards of appellate review
– “Standards of review . . . influence the disposition of
appeals far more than many advocates realize.” Paul R.
Michel, Appellate AdvocacyOne Judge’s Point of
View, Fed. Cir. Bar J., Vol. 1, No. 2, at 2 (Summer
1991).
• Relief that flows from a finding of error
• Possible harmlessness of error
Begin thinking about the 15-minute oral argument
Specter of the “Rule 36 Affirmance”
10
BriefingStandards of Review
•
Standards of appellate review often drive issue selection and
appellate results
• Legal error: de novo review (wrong = reversal)
– e.g., Claim construction; obviousness; summary judgment
(disputed material facts); JMOL (sufficiency of the evidence)
• Factual error: clear-error review (really wrong = reversal)
– court (not jury) factfinding: “definite and firm conviction that a
mistake has been committed”
• “Judgment calls”: abuse of discretion (really, really wrong =
reversal)
– evidentiary rulings; equitable determinations (e.g., inequitable
conduct); most balancing tests
– two kinds of “abuse of discretion”: (i) underlying legal or
factual error; (ii) unjustifiable judgment call
11
BriefingWriting the Brief
• Make sure you know and review the Fed. Cir. R. 28
requirements for the contents of a brief.
• 14,000 wordsopening brief(s)
• 7,000 wordsreply brief
• But see Fed. R. App. P. 28.1 re cross-appeals:
14,000; 16,500; 14,000; 7,000 words
• Rigorous adherence to rules’ requirements (e.g.,
“statement of the case” vs. “procedural history”)
12
BriefingWriting the Brief
13
BriefingWriting The Brief
•
•
•
•
•
•
•
•
•
•
Special challenge in high-tech cases
The “four percent rule”
Your audience: the Judges and their clerks
Specialized court, yes. Specialized technical knowledge, not
as likely.
More “single Es” than “double Es” on the bench
A picture is worth a thousand words, but it doesn’t count as a
thousand words
Use your point-headings well and assertively
Tell a story; have a theme
Generally avoid argot, adjectives and adverbs
Table of abbreviations?
14
BriefingWriting Responsive Briefs
• Applies to both responsive briefs and reply briefs
• Meet your opponent’s arguments head-on
• Reply brief is a place to help yourself by helping the
Court:
• Basic opening structure of reply-brief argument:
“In our opening brief, we showed ________.
(Blue Br. at p. __.) Our opponents say _______.
(Red Br. at p. __.) They are wrong for these
reasons.”
15
Between Briefing and Argument
• One week after final reply brief: Joint Appendix due
• Argument will (typically) be set in the third month
following the filing of the Joint Appendix
• e.g., Joint Appendix filed in January 2012;
argument in April 2012
• Notice of oral argument approximately six weeks
prior
• Court’s stated goal: opinion issued within three
months of oral argument
16
ArguingWhat to Do
• 15 minutes per side is the norm
• Argument granted in almost all patent cases
• Appellant can reserve rebuttal time; in crossappeals, cross-appellant can also reserve rebuttal
time, limited to the cross-appealed issues
• Prepare an argument that, without questions, lasts
1/3 to (at most) 1/2 of the time you’ve allotted for
opening argument
• Moot yourself; prepare answers to the hardest
questions you’ve anticipated
17
ArguingWhat to Do
• Some issues of mechanics:
• What to take up to the podium?
• Whether to use blown-up demonstratives
– Should be thinking about this at the briefing
stage; put the figures, pictures, claim language
somewhere in the brief
– Easels are distant and hard to see from the
bench
18
ArguingWhat to Do
•
•
•
•
•
“May it please the Court”
Roadmap of argument
Don’t regurgitate the brief
Tone of “respectful equality”
Answer questions straightforwardly“The answer to
that question is ‘yes,’ and the reason the answer is
‘yes’ is because . . . .”
• Call the judges “Your Honor” or “Judge ____” (or
“Chief Judge ____,” as appropriate), not “Sir” or
“Ma’am.”
19
ArguingWhat to Do
•
•
•
•
Appellees’ arguments and rebuttal arguments should be
responsive to your opponent, and to the Court’s stated
concerns
Effective oral argument is not about your prepared argument,
it’s about the questionsso welcome questions
• Consider argument the opening act of the judges’
conference (where they decide the case and assign the
opinion)
Keep an eye on the lights so you can save your reserved
rebuttal time
Do not feel obliged to use all the allotted time
20
ArguingWhat Not to Do (all of these
have actually happened)
• Make your oral argument sound like a jury argument
• Talk louder when the judges start asking questions
• Answer a judge’s question about the propriety of
granting summary judgment where there are
disputed facts with “Well, I wouldn’t know about that;
you have more experience with that than I do.”
• Suggest that the district judge must have been
corrupt because there’s no other possible
explanation for his ruling
21
Contact:
Gregory A. Castanias
Jones Day
51 Louisiana Avenue, N.W.
Washington, D.C. 20001-2113
(202) 879-3639
fax (202) 626-1700
[email protected]
www.jonesday.com
22