The U.S. Court of Appeals for the Federal Circuit (CAFC) has exclusive jurisdiction over patent law appeals. That means that it is the sole appeals court for appeals out of the Patent Office and out of the federal trial courts. An appeals court is exactly that; a court of appeals, not another court of first instance. It makes no sense to re-argue the trial on appeal. Successful appeals, therefore, require experience-based considerations of what to appeal and how. In this article we discuss our experiences in CAFC appeals. But there is no magic formula to winning an appeal because in the end, each case stands on its own.
The CAFC court has 12 active judges and a number of senior judges. In a typical appeal, there is a random selection of 3 judges to form a panel. When the appeal decision is issued, one judge will write the opinion (if there is one). Accordingly, the authoring judge speaks for the panel and the panel speaks for the Court. Therefore, it is wrong to say “a panel of the Federal Circuit (held/ruled…) in ABC v. DEF …” or “Judge XYZ held in ABC v. DEF that …” because the panel is the Court. Rather, it is always proper to say “the Federal Circuit (held/ruled…)” as that respects the role of authoring judge and the panel. Unless a conflict of interest exists, the selected panel stays intact. In addition and contrary to belief, active judges do not get to select what cases to hear based on personal preferences. For example, an active judge cannot jockey for pharmaceutical patent appeals and ditch a government contract appeal onto another judge.
The Appeals Process – The Briefs
The appeals process starts with the notice of appeal. That notice must identify the orders and judgments that are being appealed. This notice does not need to identify the actual errors yet, just the orders and judgments being appealed. Appellants need to be conscious about the rulings being appealed. If the appellant fails to include a ruling, it cannot be raised later. Usually an appellant will over-include the rulings being appealed simply to reserve rights later.
Appeal briefs are filed per a schedule. Once all briefs are filed, the appeal is then slated for oral argument (unless the parties agree that the appeal is only on the briefs). Then the briefs just sit there. About a month or 2 before the oral argument, the panel is selected and receive the briefs. This means the briefs are fully complete long before the actual panel judges are selected. This means that briefs cannot be written to target a certain judge(s). If the brief writer knows the panel judges in advance, the writer will dissect that judge’s prior rulings, try to divine any heart-tugging issues, etc. In other words, the writer will pander to the judges. Anonymizing the panel judges avoids the obvious pandering.
The briefs are the primary basis for winning an appeal. As we will soon see, oral argument really does not matter that much. The appeal brief must be well written, identify the relevant issues, be persuasive, and most of all, be supported by the record. In our experience, the best written briefs will appeal a few critical issues (versus the appeal every error approach), will have an excellent roadmap of the issues in the table of contents and headings/subheadings, will avoid string cites (do the Federal Circuit judges need 2-5 citations to cases that say infringement is a two-step analysis?), will avoid quote cropping, and will be intellectually honest. This intellectual honesty comes from strong support in the record and strong support in the case law. If the appeal requires the Court to overrule prior precedent or “stretch” the law, the honest brief simply and plainly states that. Oblique hits to precedent or the record are easily discovered. Issues presented on appeal must be narrow and thoughtful. Imagine an opening appeal brief that identifies 5+ errors that the trial judge made. How does it sound on appeal to a CAFC judge that the trial judge made that many crucial errors? CAFC judges are protective over trial court judges and do not respond well to a parade of errors. How would you respond as a CAFC judge if the appeal brief is essentially “the trial judge screwed up so many things and so completely…”
We have also found that having someone draft the appellee brief and moot court the case prior to finalizing the opening brief works well. Why? Having someone else tear up your argument or play the role of a judge at argument strengthens the opening brief. It exposes weaknesses. Appellate attorneys are often the trial counsel who were married to the case for years. That attorney cannot divorce him/herself from the case to see the argument structure clearly. Having holes poked early helps the brief read better, help clarify issues to appeal, etc. The goal, remember, is to have the opening brief be as strong as possible and not require overcoming an infirmity in a reply brief. We have never been a fan of holding back something (whether good or bad) from the opening brief to whack the appellee in a reply brief. It is so transparent and off-putting.
It is critically important that an appellant picks appeal issues where the standard of review is helpful. The worst arguments relate to where the standard of review is highly deferential (like clear error or the substantial evidence) and the record supports the appellee. Skilled appellate lawyers know how to frame issues as questions of law (if possible) to obtain de novo review. But yet again, because of the CAFC judge’s experience, it is hard to re-frame obvious deferential issues into de novo issues and the judge will spot improper attempts to re-frame deferential issues into legal questions.
The Oral Argument
Oral arguments are slated for the calendar approximately six weeks after the briefing and appendix are filed. Because the briefs are complete before oral argument, the judges come to the argument fully prepared. The judge debated the case with his/her clerk. Oral arguments recordings are available after the argument. Parties learn the panel composition the morning of the oral argument. We have seen (prior to COVID telephone arguments) where attorneys will see the panel composition, quickly instruct the associate to research cases cited in the briefs by those judges or find other cases written by those judges. The goal apparently is for some strategic or analytical purpose. We have seen that colossally backfire where the unskilled attorney says, “Well Judge X, as you wrote in ABC v. DEF …” only to have the judge rebuke the attorney saying that an authoring judge speaks for the court and it doesn’t help the attorney to pander cases to individual judges.
Oral argument can run the gamut from a passive panel (where the panel asks little to no questions and the attorney can give the prepared speech) to the “hot bench” where the judges pummel the attorney with questions out of the gate. Oral argument can telegraph a judge’s position on the appeal and/or be used to extract admissions. Some are obvious such as, “Counselor, suppose I completely disagree with your position on X, can you still win?” or “Counselor, I searched the record for support for your position X but couldn’t find any. You agree, don’t you, that the trial judge never actually said X?”
After the oral arguments for that morning, the panel usually convenes right away in the conference room behind the courtroom. The panel votes and the opinion authoring judge is assigned. The appellant needs 2 votes to win. The panel may also decide that the ruling will be a Rule 36 summary affirmance. Every appellate attorney loves his/her appeal and it is frankly disappointing to find out later that afternoon or a day later, your appeal is over through Rule 36 summary affirmance.
The 80%-80% Pattern
In speaking with many CAFC judges and law clerks over the years, they will say roughly the same thing. About 80% of the time before oral argument, the judge has decided which way he/she will rule. And after the oral argument, 80% of the time the judge does not change his/her mind. In other words, the briefs matter the most and oral argument does not really sway the judge.
The Debate Fantasy
All active CAFC judges have chambers at the Court. Given the close proximity of the judges, one might think that the panel judges meet ahead of the oral argument, discuss the case, bat around the issues and any policy implications, and debate any precedent. You might also think that after oral argument, the judges engage in the same post-argument debates, trying to jostle for position on issues or rulings, convincing other judges of the errors, etc. Nope. In general, the judges rarely debate the cases before or after argument.
Unless there is a quick Rule 36 summary affirmance, the ruling will be issued within a few months. There is no set time limit, except that the CAFC generally tries to issue rulings within a few months. It may be tempting to assume that if there is no Rule 36 summary affirmance that the appellant wins at least 2 votes to reverse. This is not the case. The appellant can still lose the appeal when the ruling comes out.
The CAFC also has an interesting procedure to circulate an opinion to the non-panel judges for comments. The non-panel judges have 10 days to review the circulated opinion. A non-panel judge can also submit a “hold sheet” to request an en banc poll. Infrequently, the CAFC has issued an opinion where a part of the ruling is issued en banc. For the attorneys and parties, this indicates that the Court convened en banc in part to resolve an issue, even though the main part of the opinion is still by the panel.
The underlying patent litigation may have taken years. Millions of dollars have been spent. Hundreds of thousands of dollars are further spent in the appeal. So when we unpack the appeal, we find that a judge may have spent just a few hours in reviewing the briefs and discussing the case with the clerk. Then the judge spends 30 minutes in the oral argument. And then add 5 minutes to do voting and housekeeping matters post-argument. Though the appeal may involve millions of dollars in resources, hundreds of millions in sales/profits, billions in stock market valuations for a winner/loser, etc., the Court’s commitment to an individual appeal is just a few hours. We often hear litigants or investors comment that the Court didn’t consider the policy implications or the practical effect of a ruling. The CAFC can’t be in a position to devote countless hours to each appeal nor be savior of a company.
How we can help you?
We help clients in patent litigation and appeals. Because we know our patent law and litigation cold, we help clients win at the trial level but also preserve issues for appeal. We recognize that high stakes patent litigation will generally result in an appeal. So we are geared to win at trial and preserve that on appeal or appeal to obtain the reversal. We also help other law firms with appeal brief writing, appeal strategy, and oral argument preparation.
About Upadhye Tang LLP
Upadhye Tang LLP is an IP and FDA boutique firm concentrating on the pharmaceutical and medical device spaces. We help clients with navigating the legal landscape by helping on counseling and litigation. Clients call us to help move drug and device approvals along and to represent them in IP and commercial litigation. Call Shashank Upadhye, 312-327-3326, or by email: firstname.lastname@example.org, for more information.