What is Appellate Litigation?
Patent disputes in the United States are typically resolved in federal district court, in the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (“USPTO”), or by initiating am International Trade Commission (ITC) Section 337 investigation before an ITC administrative law judge (ALJ).
A federal district court case is typically presented to a judge and a jury, and ends with a trial, a verdict and a judgment. The purpose of a district court trial is to resolve disputes regarding the facts involved in the patent case (usually focusing on claim construction, infringement, validity, and damages, among other issues) and application of the correct law to the facts.
On the other hand, a PTAB proceeding focuses exclusively on whether a patent is valid, and ends with a final written decision by a panel of three PTAB judges.
An ITC Section 337 investigation may result in a federal exclusion order preventing further importation of a product that the ALJ deems to infringe a US patent.
Regardless of whether a district court case, PTAB proceeding, or the ITC forum is involved, for each issue at the trial court level, there will be a winner and a loser. The losing side has the right to appeal to the United States Court of Appeals for the Federal Circuit (CAFC), located in Washington DC. The CAFC is the appellate court where two of BHW’s partners formerly served as clerks, and it has jurisdiction over all patent appeals originating from federal district courts, the PTAB, and the ITC, among other issues.
To prevail on appeal, the party appealing the decision (called “the appellant”) must demonstrate to the appellate court that the trial court committed reversible error. Common types of reversible error include misapplication of the law, incorrect findings of fact, or abuses of discretion. Appellate litigation on behalf of an appellant focuses on identifying such errors and demonstrating to the appellate court that the errors were committed and that they require reversal of the trial court judgment.
On the other hand, the winning side in the trial court (called “the appellee”) argues that no such errors were committed, or that if they were, they do not require reversal of the trial judgment. The arguments for each side are presented in a set of briefs submitted to the appellate court, usually culminating with a brief live oral argument before the Court, typically lasting only 15 minutes per side. For patent cases, an appeal to the Federal Circuit can take about 18 months to be resolved, from the time of the trial court decision to the appellate court decision, although these time frames are not fixed by statute.
Preparing for Appellate Litigation
Preparing for appellate litigation requires careful planning and strategy throughout the entire litigation process, starting with every step at the trial court level. Because a party cannot know with certainty whether it will win or lose on any given issue at the trial court, it is important to present and preserve all issues clearly at the lower court level, so that those issues may be appealed (if necessary). Failure at the lower court level to preserve an issue for appeal results in what is called a waiver, which later prevents the issue from being raised on appeal. Whether representing a client as its sole counsel, or working in conjunction with other counsel, BHW attorneys are experienced in meticulous identification of potential reversible errors and preservation of issues for appeal during the entire lifecycle of a patent case.
Initiating Appellate Litigation
In rare situations, an appeal needs to be initiated even while a trial court proceeding has not yet been fully resolved. These are known as interlocutory appeals, and sometimes involve what is known as a writ of mandamus. Usually, however, appellate litigation in a patent case formally begins once a judgment is issued by the trial court or a final written decision is issued by the PTAB. A notice of appeal is then filed with the trial court and with the appellate court, and this kicks off a series of important deadlines relating to submission of appellate briefs and the accompanying relevant evidence from the trial court.
Appellate Litigation Strategy
Appellate litigation does not allow for relitigating what happened at the trial court. Instead, appellate litigation focuses on identifying the clearest and most damaging errors at the trial court, and demonstrating clearly and persuasively in a party’s briefs that the errors occurred and that they require reversal. As experienced appellate litigation attorneys, BHW partners have decades of experience with analyzing the record of a trial court action to identify the few issues that will be included and argued on appeal. BHW partners have extensive experience with appellate litigation, both in cases where the BHW has represented a party at the trial court level and in cases in which BHW’s representation begins with the conclusion of a trial court phase. Either way, BHW attorneys are skilled at the meticulous legal and technical analysis of a trial court record in a patent case that is required to identify the key issues for appeal and the marshal the evidence that supports the arguments on appeal.
Because of time limits and restrictions on the length of briefs, successful appellate litigation often requires abandonment of issues or arguments to focus attention on the most critical issues on appeal. Even more importantly, because the law requires that an appellate court grant deference to the trial court on many issues, it is often more important to focus on errors of law or abuses of discretion than to try to demonstrate that a trial court judge or jury simply reached the wrong conclusion when evaluating the facts at the trial court level.
Appellate Litigation Practice at BHW
BHW attorneys competently perform a full range of appellate litigation services in patent and other intellectual property cases, including briefing and arguing appeals before the United States Court of Appeals for the Federal Circuit and regional circuits, preparing and opposing petitions for review in the U.S. Supreme Court, providing advice and assistance in preserving and briefing significant legal issues at the trial court level, advising clients on appellate issues during and after trial, handling agency appeals before the USPTO, and preparing and filing amicus curiae briefs.