General Practice, Solo & Small Firm DivisionMagazine

Intellectual Property Law

Ten Mistakes to Avoid at the Federal Circuit

By Bradley C. Wright

The following 10 "don’ts" can improve your chances of success at the federal circuit.

Reciting Facts at Oral Argument. Do not regurgitate the facts. 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.

However, the facts should always be laid out in detail in the briefs. Recite your own version of the facts in every case, rather than taking pot shots at your opponent’s facts. Support each material fact with a pinpoint citation to the appendix. Review briefs to eliminate immaterial and long-winded factual assertions.

Failure to Appreciate the Standard of Review. Substantial evidence 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, do not argue that there is no substantial evidence to support the verdict.

Similar problems arise for issues that are reviewed under the deferential "abuse of discretion" standard, such as inequitable conduct or evidentiary questions. The federal circuit rarely reverses a district court’s ruling on procedural issues. If you are the appellee, 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, so that the underlying facts will be reviewed under a substantial evidence standard. The ultimate legal conclusion, though, will be reviewed for legal correctness.

Raising New Issues on Appeal or in the Reply Brief. Do not raise a seemingly meritorious issue in a brief, reply brief, or at oral argument that was not raised before the lower tribunal. All arguments must be raised in the opening brief. Arguments made in the district court must be raised with particularity; it is not sufficient to make a general argument and "refine" it on appeal. The same rule applies to rebuttal arguments.

Overuse or Misuse of Exhibits. Use exhibits sparingly and with careful planning. Advise the clerk’s office before oral argument of your intention to use visual aids. If you must turn over an exhibit to the court during oral argument, never approach the bench directly; give it to the bailiff. Any videotaped demonstration should be carefully prepared to avoid any argument that it is biased or based on a distorted or misleading view of the facts.

Failure to Provide Pinpoint Citations to the Record. 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. 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.

Screen briefs for erroneous citations to the record, and have an objective reviewer review all material factual assertions in the briefs to ensure that they do not distort the record.

Cross-Appealing When You Won Below. Recognize that if you were the judgment winner on a claim in the district court, you lack standing to cross-appeal the judgment on that claim, even if the district court refused to adopt any of your arguments. For example, suppose 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.

However, an appellee must cross-appeal where he or she seeks to modify or enlarge the judgment below. For example, if a district court rules that a patent is valid but not infringed, an appellee supporting the noninfringement ruling would need to separately cross-appeal the validity ruling in order to argue invalidity in the federal circuit. This is because an invalidity ruling would "enlarge" the noninfringement judgment.

A cross-appellant is in the peculiar position of arguing out of both sides of his or her mouth. On the one hand, as the appellee, he or she is urging that the district court’s judgment be affirmed. On the other hand, he or she is admitting that the district court made mistakes because a cross-appeal was filed. Parties should consider whether having the position of solely affirming the trial court is the better strategy.

Failure to Anticipate Questions From the Judges. Judges frequently ask hypothetical questions that 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. 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. 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. 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.

Respond to questions directly, either by answering the question or by stating a tentative answer and qualifying the answer with some uncertainty. Be prepared to explain why the cases cited in your opponent’s brief do not apply to your facts. 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.

Failure to Know the Court. Embarrassing situations arise when lawyers repeatedly mispronounce the name of a judge during oral argument. A trip to the clerk’s office beforehand can help you 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 lawyers who embarrass clients 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 an oral argument before your scheduled appearance or associate with a lawyer familiar with federal circuit practice.

Treating the Judges as Adversaries Rather Than as Colleagues. Avoid dodging and ducking questions and parrying at every possible point of contention. A more effective presentation style is to help the judges to understand the consequences of ruling in the opponent’s favor. For oral argument, pick your three most important points and stick to them, conceding the unimportant points. The most successful advocates maintain a confident, measured and evenhanded tone with deference to both the judges and opposing counsel.

Bradley C. Wright is a shareholder of Banner & Witcoff, Ltd., and practices intellectual property law in its Washington, D.C., office.

- This article is an abridged and edited version of one that originally appeared on page 1 in IPL Newsletter, Winter 1999 (17:2).

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