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July 24, 2019 Practice Points

On Stuffing the Record for Appeal

Lawyers can be highly effective advocates—if we avoid forcing the court to pick our best arguments for us.

By Stephanie E. O’Byrne

There is a tension between lawyers’ desires to fill in all corners of the record and the court’s objective to unpack voluminous filings and distill the issues before it. I was reminded of this clash of interests through a recent experience with a newly-appointed district judge for the District of Delaware. Upon taking the bench for a claim construction hearing in a patent infringement litigation in April 2019, the judge proceeded to strike all the parties’ briefs, declarations and exhibits (eight docket items) filed in connection with the hearing. The judge made a statement, characterized as for the ultimate benefit of the federal circuit, that there were over 8,800 pages of briefs and supporting documents filed, most of which were exclusive of the joint appendix, with 3,000 pages of duplicative and 1,300 pages of illegible exhibits. Further, lengthy expert declarations provided legal analysis—far exceeding the page limits for briefing. The briefing itself, while within the limits, provided citations to the legal analysis of the declarations, which then cited to exhibits—often, each side citing to different copy of the patent in the record. All of this amounted to an “obfuscated” record that made it impossible for the court to efficiently prepare for the hearing, which was ultimately rescheduled for a time after the parties refiled their papers as ordered by the court.

It’s not often that a federal judge opens a critical hearing in a high-stakes litigation by striking all the written arguments. Undoubtedly, the court appreciated that the reminder would be heard loud and clear, both in that litigation and amongst the frequent fliers in the District of Delaware: Counsel must regain the habit of serving the court by focusing and streamlining issues for its review.

Because the scope of appellate review is defined by the record below, see, e.g., United States v. McCall, 235 F.3d 1211, 1216 (10th Cir. 2000) (“The general rule is that this court will not consider an issue on appeal that was not raised below”), parties have little choice but to bring all related arguments on a legal question—in this example, patent claim construction—to the court in the first instance. But as the above demonstrates, parties can easily overtax a court by filing multiple declarations and voluminous exhibits, the majority of which cannot be discussed in detail.

Generally, a passing reference does not suffice to preserve an argument for purposes of appeal. Rather, “the party seeking to raise the issue [on appeal] must first present it to the [D]istrict Court in a manner that allows the Court an opportunity to recognize and rule on it.” Flanigan's Enterprises, Inc. of Georgia v. City of Sandy Springs, Georgia, 703 F. App'x 929, 938 (11th Cir. 2017), cert. denied sub nom. Flanigan's Enterprises, Inc. of Georgia v. City of Sandy Springs, Ga., 138 S. Ct. 2623 (2018) (internal quotation and citation omitted); see also Diefenderfer v. Office of Recovery Servs. For State of Utah, 185 F.3d 873 (10th Cir. 1999) (“Diefenderfer states that he made at least a passing reference below, but we see nothing in the record sufficient to raise the issue.”). Similarly, appealable issues must have been raised in opening papers below, not in reply. Novosteel SA v. U.S., Bethlehem Steel Corp., 284 F.3d 1261, 1274 (Fed. Cir. 2002) (“Raising the issue for the first time in a reply brief does not suffice; reply briefs reply to arguments made in the response brief—they do not provide the moving party with a new opportunity to present yet another issue for the court’s consideration.”); compare In re Osterman, 296 F. App'x 900, 903 (11th Cir. 2008) (“[A] passing reference to an issue in a reply brief, offered without substantive argument in support, is insufficient to constitute raising the issue”).

These are considerations regarding the breath of the appeal—which must be contrasted with the standard of review, especially in the case of a de novo review of a legal issue. Once a legal argument is sufficiently preserved below for purposes of appeal, the appellate court may consider those arguments re-cast with different supporting citations from the universe of exhibits filed with the original motion. The federal circuit (applying regional circuit law on such issues), has, at least in one instance, concluded that only those exhibits cited in connection with the appealed motion can be considered, “even if that evidence can be found somewhere in the voluminous materials that are part of the record on appeal.” In re Cygnus Telecommunications Tech., LLC, Patent Litig., 536 F.3d 1343, 1353 (Fed. Cir. 2008). But there is no similar limitation to utilizing what were initially backup exhibits filed in support on a motion in the appeal of a legal question reviewed de novo.

Certain legal questions, like claim construction in patent cases, or the interpretation of an integrated agreement, require the submission of all relevant arguments and supporting evidence at one juncture, but usually do not often require the court’s consultation of voluminous extrinsic evidence, leaving at least some room for the type of reservation the Delaware court espoused.

Outside of legal questions, there are more opportunities to streamline the record for the court. Courts reviewing the issue have concluded that appellate rights in the Courts of Appeals are not waived by the failure to object to a magistrate judge’s reports and recommendations. E.g., Masimo Corp. v. Philips Elec. N. Am. Corp., 62 F. Supp. 3d 368, 375 (D. Del. 2014). A party is not obligated to raise any and all issues at the summary judgment phase; its failure to raise a particular issue does not waive its right to trial on any well-pled claims. See Flynn v. Sandahl, 58 F.3d 283, 288 (7th Cir. 1995) (“The purpose of a summary judgment motion is not to preserve legal arguments for appeal; rather, it is to eliminate useless trials on undisputed issues of fact.”) (citing 6 Moore's Federal Practice ¶ 56.04[1] at 56–60 to 56–61 (2d ed. 1994)). Of course, the scope of appellate review is limited to issues raised below. See Singleton v. Wulff, 428 U.S. 106, 120 (1976); Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1344 (Fed.Cir.2001), U.S. v. McCall, 235 F.3d 1211, 1216 (10th Cir. 2000).

By extension, the more arguments crammed into an opening brief in District Court, the less likely the Court can recognize and rule, and the more attenuated they may appear for purposes of guaranteeing appellate review. Further taking into account the often-strict page limits set by Court orders and/or Local Rules, there is simply no way to preserve a record of all plausible issues for purposes of an eventual appeal.

There is also some comfort in knowing that without the requisite record, the Appellate Court will still review an argument in exceptional circumstances. See, e.g., Maldonado Investments, L.L.C., on behalf of Olive St. Bistro v. State Farm Fire & Cas. Co., 715 F. App'x 359, 362 (5th Cir. 2017) (“To invoke a miscarriage of justice, we have required litigants to show good cause for their failure to raise an issue below or identify a unique harm making the result manifestly unfair absent their ability to press an issue on appeal.”); United States v. Chesney, 86 F.3d 564, 567-68 (6th Cir. 1996) (Court may review an issue not raised below in exceptional circumstances or when application of the rule against considering new issues on appeal would result in a miscarriage of justice).For example, the Federal Circuit will consider 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.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1040 (Fed. Cir. 2017) (citations omitted). The Court may also consider “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. Of course, a claim or counterclaim not raised on summary judgment may be revived in the case of a remand.

In many cases, the habit of stuffing the record is rooted in fear—not only of telling a client an argument was lost (when more space was available, and more attachments possible!), but in omitting some piece of argument or evidence that could—maybe—be useful on appeal. As lawyers, we must be cognizant that our efforts to “cover” all alternatives in court submissions neither assist the court in assisting our clients, nor result in an insurance policy for downstream litigation. Ultimately, and using strategical discretion, lawyers can be highly effective advocates—an important component of which is avoiding tasking the court with distilling a mountain of information and forcing the court to pick our best arguments for us.

Stephanie E. O'Byrne is with Potter Anderson in Wilmington, Delaware.

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