Incorporation by Reference Rules at the Federal Circuit

by Dennis Crouch
Promptu Systems v. Comcast (Fed. Cir. 2024)
The Federal Circuit released two opinions today involving these two parties.  The first sides with Promptu on claim construction – remanding the case back to the Pennsylvania district court for further development.  The second concludes that reprimands Comcast’s attorney for trying to sneak-in extra words into its appellate brief.  This post will focus on the second case.
Mark Perry is a leading appellate expert from Weil, Gotshal & Manges LLP representing Comcast in the litigation and various IPRs between the parties.  There are four related IPRs on appeal, and in its briefing petitioner used somewhat different arguments in its briefs and then stated that it was “incorporation by reference” arguments made in other briefs.  The problem here is that appellate judges see the briefing word limit as a feature of the appellate system — forcing parties to limit their briefs to their best arguments rather than allowing scattershot appeals.  Perry noted that his incorporation by reference was targeted to only about 2000 words from one brief that he hoped would aid in court efficiency.  At oral arguments, the Federal Circuit ordered counsel to show cause why he should not be sanctioned for violating its prohibition on using incorporation by reference “to exceed word count.” The court explained this is “fundamentally unfair” and forces the opposing party to respond to arguments beyond the permitted length.  This is not the court’s first time addressing this issue — it did so previously in with the same result. Microsoft Corp. v. DataTern, Inc ., 755 F.3d 899 (Fed. Cir. 2014).
In response to a show-cause order, counsel argued he was simply trying to “enhance efficiency,” “streamline the briefing,” and “save the time and resources of the Court.”  In a brief filed and signed only by Perry, he stated that “Comcast and its counsel were unaware of this Court’s decision in Microsoft , until Promptu’s reply brief was filed.”  It is not clear what is limited to “counsel,” but the crazy aspect of this case is that the same firm – Weil Gotshal – was chastised in that case for similar actions. The brief here was joined by attorneys at Farella Braun & Martel LLP.
Counsel argued that he and Appellee were unaware of our decision in Microsoft until Appellant’s Reply Brief was filed, Show Cause Br. at 3, and had they been aware, they would not have included the incorporation by reference, id. at 4. Microsoft is not only a precedential decision of this Court, but a precedential decision of this Court that admonished the exact same law firm before us now for the exact same behavior. We accept as true Counsel’s claim that he was not aware of the Microsoft decision until the Reply Brief referenced it. When it becomes apparent that a lawyer has violated a court rule, as an officer of the court, it would be best for that lawyer to bring it to the court’s attention and withdraw the improper argument. Here, Appellee was made aware of our case law, but chose to do
nothing.
The court’s statement here is important – the rule for attorneys is that they have an affirmative duty to correct misstatements to the court.
Perry argued that the Federal Circuit had not previously ruled on incorporating arguments between companion appeals — the Microsoft case was about incorporating from other-party briefs. But, the court quickly rejected this weak distinction.
The Federal Rules of Appellate Procedure allow parties to incorporate by reference certain materials rather than reproducing them. Fed. R. App. P. 28(a)(viii). But the Federal Circuit has repeatedly held Rule 28 does not permit incorporating substantive legal arguments between briefs. See also Medtronic, Inc. v. Teleflex Life Scis. Ltd. , 86 F.4th 902 (Fed. Cir. 2023). Parties cannot use incorporation to end-run word limits or avoid repeating arguments responding to the unique issues in each appeal.
In the end, the court decided not to sanction Perry, Comcast, or the Weil firm.  I’m sure Mr. Perry’s longstanding and excellent reputation helped him avoid direct penalty.  If I were the court, I would have put more pressure on the firms itself to ensure excellence.
On the merits, Perry’s approach won, with the Federal Circuit affirming the PTAB judgment cancelling claims in a R.36 judgment.
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