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July 30, 2019 Article

Common Issues to Consider when Arguing Before the Federal Circuit

A list of procedural and substantive issues to help you improve your chance of success on appeal before the Federal Circuit.

By Alex Chan

The U.S. Court of Appeals for the Federal Circuit has exclusive jurisdiction over patent and other IP-related appeals. The court is given the congressional mandate to bring uniformity to patent law and often hears matters appealed from the United States Patent and Trademark Office (USPTO), the International Trade Commission (ITC), and the U.S. district courts. But the Federal Circuit is not just a “patent court”—it also has jurisdiction over appeals involving veterans’ benefits, international trade, and government contracts.

For new appellate lawyers who are beginning their appellate practice, particularly in areas such as patent litigation and veterans’ disability, appearing before the Federal Circuit can be daunting because of its complex circuit rules and the court’s domain expertise in highly specialized and technical areas. Below is a list of procedural and substantive issues to consider and help you improve your chance of success on appeal before the Federal Circuit.  

Common Procedural Errors

The standard rules governing the procedure in the courts of appeals are the Federal Rules of Appellate Procedure. For the Federal Circuit, it has adopted an additional set of rules and procedures called the Federal Circuit Rules. Since 2016, the Federal Circuit Rules have been extensively updated to provide additional clarity on existing rules.

Amongst these rules, two of them are often overlooked. They are: (1) Federal Rule of Appellate Procedure 25 and Practice Notes to Federal Circuit Rule 25 governing the certificate or proof service; and (2) Federal Circuit Rule 28 and Federal Rule of Appellate Procedure 28 governing the substance of addendum.

Under Federal Circuit Rule 25(e)(1), a certificate or proof of service must be attached to all court submissions, even if they are to be served through CM/ECF. Yet, more often than not, practitioners often forget to include a certificate or proof of service to all court filings, which leads to a “rejection” notice from the clerk’s office offering a short period to cure this deficiency. For more common errors, see “Common Filing Errors,” U.S. Court of Appeals for the Federal Circuit Clerk’s Office. To comply with this requirement, a standard form is available via the Court’s Form 30 for completion and filing.    

As to the addendum, a common mistake is that attorneys forget to include an addendum in their briefs, or that the addendum material in the joint appendix is not properly numbered or arranged. Under Federal Circuit Rule 28(a) and Federal Rule of Appellate Procedure 28(f), certain materials must be included in the addendum. For example, the judgment, order, or decision in question, and any opinion, memorandum, or findings and conclusions, must be attached in the joint appendix and placed at the end of the initial brief. In an appeal involving a patent, the patent-in-suit may be included within the addendum of the initial brief and, if included, must be reproduced in its entirety (i.e., no cherry-picking pages of the patent for submission). 

When submitting addendum materials, practitioners should be reminded that these materials must be paginated with corresponding appendix page numbers, such as “Appx123” or “Appx123-124.” Other numbering formats, such as “Appx.1” or “Appx111, 113-116, and 117,” should not be adopted, as they will likely lead to a rejection notice from the clerk’s office for noncompliance.

Also, the page numbers used in the joint appendix must correspond to the page numbers assigned by the appellant to the designated material under Federal Circuit Rule 30(b). The materials in the joint appendix must also be in numerical order according to the page numbers the appellant assigned to the designated materials. Where certain pages are omitted, omission of these pages need not be stated (e.g., “Appx1” may be followed by “Appx10” without stating that “Appx2-9” are not reproduced in the appendix).

For the joint appendix that is to be filed after briefing is completed, the general rule is that only those pages that have been cited should be included. Practitioners should avoid keeping extraneous pages (e.g., pages not cited in the briefing) in the joint appendix. Once the joint appendix is filed electronically, per the Federal Circuit’s latest amendment to the Rules (as amended December 1, 2018), paper copies of the briefs and joint appendix must not be submitted, as Federal Circuit Rule 25 previously required. The clerk’s office will issue a notice requesting paper copies of all briefs and appendices shortly after briefing has completed. Upon issuance of the notice, paper copies of all outstanding briefs and appendices will be due within five business days. You should refrain from filing paper copies prior to the court’s notice, unless ordered otherwise.

Standard of Review

The Federal Circuit applies a wide range of standards of review to matters on appeal. Generally, in appeals from the district courts, the most common standards of review are de novo, clearly erroneous, substantial evidence, and abuse of discretion. 

De novo review affords no deference to the lower court and is generally applied to questions of law, such as statutory interpretations, patent claim constructions, and grants or denials of judgment as a matter of law. See Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1259 (Fed. Cir. 2012); see also Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., No. 2012-1014, slip op. at 7 (Fed. Cir. Feb. 21, 2014) (claim construction); Volkswagon of Am., Inc. v. United States, 532 F.3d 1365, 1369 (Fed. Cir. 2008) (statutory interpretation and summary judgment); Mycogen Plant Science v. Monsanto Co., 243 F.3d 1316, 1325 (Fed. Cir. 2001) (judgment as a matter of law). The Federal Circuit also reviews de novo certain legal aspects of patent validity, including the ultimate conclusion of obviousness and whether a claim is directed to statutory subject matter, lacks enablement, or is indefinite. Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 897 (Fed. Cir. 2013) (indefiniteness); In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (statutory subject matter); In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999) (enablement); Panduit Corp. v. Dennison Mfg. Co., 810 F.3d 1561, 1566-68 (Fed. Cir. 1987) (obviousness).

When a trial judge finds facts, such as in a bench trial, the Federal Circuit may not set aside those findings unless they are “clearly erroneous.” Daiichi Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d 1346, 1352 (Fed. Cir. 2010). A finding is “clearly erroneous” when the entire record leaves no doubt that a mistake was made. Id. While the Federal Circuit applies the “clearly erroneous” standard to a trial judge’s findings of fact, the court applies the “substantial evidence” standard to a jury’s factual findings. Integrated Tech. Corp. v. Rudolph Techs., Inc., 734 F.3d 1352, 1360 (Fed. Cir. 2009). For example, any underlying factual findings that draw on extrinsic evidence, such as dictionaries or treatises or expert testimony, are reviewed for support by substantial evidence in the record. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840–42 (2015); Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015); see generally In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000) (following Dickinson v. Zurko, 527 U.S. 150, 152 (1999), and holding that the substantial evidence standard of the Administrative Procedure Act governs judicial review of PTO factual findings). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938). Substantial evidence requires more than a “scintilla of evidence,” but something less than the weight of the evidence, which means that the possibility of drawing two inconsistent conclusions from the evidence does not prevent a finding from being supported by substantial evidence. Matsushita Elec. Indus. Co. v. United States, 750 F.2d 927, 933 (Fed. Cir. 1984).

The most deferential standard, “abuse of discretion,” is generally applied for equitable issues, such as inequitable conduct, injunctions, or attorney fees, and for other issues generally left to the discretion of the trial judge, such as issues involving discovery and trial management. See, e.g.,, Inc. v., 239 F.3d 1343, 1350 (Fed. Cir. 2001). Under this standard, the Federal Circuit will affirm unless the decision rests on a misinterpretation of the law or a clearly erroneous finding of fact, or manifests a clear error of judgment, which suggests some overlap with the other standards of review. Id.

For issues not unique to patent law, such as the standard applied to requests for a new trial, evidentiary rulings, or judgments as a matter of law, the Federal Circuit typically applies regional circuit law. Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1331 (Fed. Cir. 2010). The standard to be applied is issue-dependent and can vary from circuit to circuit. In citing authorities in support of their positions, practitioners should be careful in citing Federal Circuit precedent. For issues unique to patent law, however, the Federal Circuit will apply its own law and standards of review to these issues, such as claim construction, invalidity, and infringement.

New Issues Raised on Appeal

It is axiomatic that a federal appellate court does not consider an issue not raised below. The first step in considering an appeal is to ensure that any appealable issues have been properly preserved.

But at the Federal Circuit, there are factors that can be considered in evaluating whether to deviate from this general rule. In Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1040 (Fed. Cir. 2017), the court listed several factors for considerations when deciding whether to grant a waiver to this rule, including whether (1) “the issue involves a pure question of law and refusal to consider it would result in a miscarriage of justice”; (2) “the proper resolution is beyond any doubt”; (3) “the appellant had no opportunity to raise the objection” below; (4) “the issue presents significant questions of general impact or of great public concern”; or (5) “the interest of substantial justice is at stake.” The court added as considerations “whether the issue has been fully briefed, a party will be prejudiced by consideration of the issue, or no purpose will be served by remand.  Id. 

Thus, when appealing to the Federal Circuit, one can strategically raise new issues by meeting one, some, or all of the factors enumerated above. But this strategy will not guarantee success, and that these are “exceptions,” not the “rules.” These “exceptions” are factors to be considered by the Federal Circuit to decide whether to deviate from the norm. Absent extraordinary circumstances, the Federal Circuit usually abides by the “general rule.” Only in rare cases does the court hear, and rule on, issues not previously raised. By far the better practice is to raise and preserve all issues in the lower tribunal that might be argued on appeal.

Know Your Judges

The Federal Circuit typically hears cases in panels of three judges. The identity of these judges assigned to your panel is generally concealed until the morning of your oral argument. Panel members are typically posted in the courthouse and on the court’s website one hour before argument begins.  

Because the names of those judges are not disclosed in advance, it is ever more prudent that you know all of the judges. For example, it is generally an uphill battle to get the court overturn a decision by the Patent Trial and Appeal Board (PTAB). Yet, there are certain judges who are more likely than not side with the appellant. As an example, based on recent statistics, Judge Kimberly Moore and Judge Raymond Chen are the most likely to vote to reverse or vacate a PTAB decision, while Judge Timothy Dyk and Judge Sharon Prost support the PTAB more frequently than other judges at the Federal Circuit. See Matthew Bultman, “The Federal Circuit Judges You Want On Your PTAB Appeal.”

Knowing which judges are more likely to side with you on the disputed issue(s) allows you to allocate more time to address questions and issues raised by the other “less favorable” judges on the panel. However, regardless of which judges are assigned to hear your case, it is important not to dodge or duck questions and parry at every possible point of contention. See Bradley C. Wright, “Ten Mistakes to Avoid at the Federal Circuit.” An effective presentation style is to help the panel members understand the ramification of their affirmance. Exhibiting desperation or incompetence can only lead to a lack of credibility, which can weaken your argument at best or break your case at worst.

These common issues are by no means exhaustive. A little common sense, coupled with recognition that inexperience and lack of know-how can be a recipe for disaster, can lead to a successful appeal. Practitioners appearing before the Federal Circuit for the first time should, at a minimum, attend, observe, and learn from other arguments before the court and, if necessary, use the clerk’s office as a resource for meaningful information.

Alex Chan is a senior associate at Devlin Law Firm LLC in San Francisco, California.

Copyright © 2019, American Bar Association. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or downloaded or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. The views expressed in this article are those of the author(s) and do not necessarily reflect the positions or policies of the American Bar Association, the Section of Litigation, this committee, or the employer(s) of the author(s).