How We Win Appeals in the Federal Circuit

Hi. I’m Rich Beem. I’m a patent attorney in Chicago and I’d like to talk to you about patents and the federal circuit. As you may know, there are federal district courts that have exclusive jurisdiction in all patent cases. And the appeals from the federal district courts from all across the country in patent cases and appeals from the U.S. patent and trademark office, all of those appeals go to the U.S. Court of Appeals for the federal circuit in Washington, D.C. Now, I know something about this court because I clerked for a judge on the federal circuit, his name was Edward S. Smith. He was a very fine man, very distinguished jurist, and a very good lawyer. And I had the opportunity to work for him for two years, immediately after I graduated from law school and before I started practicing in Chicago. And I saw a lot of appeals come through that court and I saw what works and what doesn’t work. And I’d like to talk to you about what works in appeals to the federal circuit in patent cases. The first thing – the most useful thing – the best position to have in an appeal to the federal circuit, is one in which the brief is filed with a red cover. Now why is that important? It’s because the blue brief is filed by the appellant, that’s the party that lost below. The red brief is filed by the party that won in the district court or in the patent office. And that’s the best position to be in because the appeals court is a court of error – which means they are only there to fix errors. If no error is shown, they will affirm the judgment below. So, it’s best to win the trial. And winning the trial is the best setting for the appeal. The second thing that is useful – in the federal circuit – and, I like to think in cases where one did not win the trial but wins the appeal is because you really did win the trial. You really did bring the evidence that you needed to show that the patent was infringed, for example if you’re representing the patent owner. But somehow the jury missed the point – or the judge missed the point and we’re now at the federal circuit to correct that error because we did prove all the things that we needed to prove at the trial. So, aside from having the point #1, which is the best position from the district court, point #2 is to be selective about the phrasing of the issues and the selection of the issues – and in particular, the number of issues. I had a friend who asked me for some help on an appeal and he had 10 issues stated in his brief. And I asked him how many of those issues do you have to win on to win the appeal? And he told me, all of them. And I knew right then and there, that he had no chance because one cannot win 10 issues on appeal. What one issue tries to do is win 1 issue. So, 1 issue or 2 issues or 3 issues – or at most 4 issues – that’s the largest number you want to have an appeal brief. And the briefs are very important to the process. Probably 90% of the time it’s the briefs that end of winning the appeal. The third thing is to tell a story. It’s not just about a post-doctorate education in chemistry. That’s not the federal circuit judges are there to hear. They’re not examiners. They don’t want to hear it all over from the beginning. They want to know what the relevant facts are that tie into the legal issue that they are being asked to decide, and that takes telling a story. Now the fourth point is to cite to the record. This is very important. Every statement of fact that is made in an appeal brief, every statement of fact that is made on oral argument, should be backed up by a cite to the record, because that’s what the appeals court is looking at. They’re not going out and making their own decisions based on facts they find themselves. They want to see the facts in the appendix. They want to see the exhibits, they want to see the testimony, and every place in the brief we talk about facts we put in a citation to the record. That’s point 4. And then the fifth, and last, point is oral argument. There’s only 15 minutes per side in a typical patent infringement case that is argued on appeal to the federal circuit. That’s half the amount of time that’s allowed for arguments in the U.S. Supreme Court. So, one has to be focused on what are the 1 or 2 key points we need to make to the court, as to why it should rule in our favor on appeal. Now, why do I tell you this? It’s because your selection of counsel for patent infringement litigation in the district court – and in the appellate court – and they go together. If you’re in the district court, and you’re going to trial, you’re probably going on appeal. And if you’re on appeal, you want to make sure that the right things have been done in the district court. That selection of counsel is important. I’m Rich Beem and what I do is patent infringement litigation and patent infringement appeals in the federal circuit. If you have that kind of case, call me. I’m at 312-201-0011. Thank you!