This browser is not actively supported anymore. For the best passle experience, we strongly recommend you upgrade your browser.
| 4 minutes read

The Perils of Incorporation by Reference at the Federal Circuit

Because judicial resources are limited, virtually all courts impose length limitations, such as word, page, or line limits, for briefing.  The U.S. Court of Appeals for the Federal Circuit limits a party’s principal brief to 30 pages, unless the brief contains no more than 14,000 words or 1,300 lines of text if using a monospaced typeface.  Fed. Cir. R. 32(b)(1).  While these limits, particularly the 14,000-word option, might appear generous, in practice, this is a rather tight limit for a principal appellate brief.  The Federal Circuit holds that an issue on appeal must be adequately developed or else the court will not reach the merits and the issue is waived.  See Monsanto Co. v. Scruggs, 459 F.3d 1328 (Fed. Cir. 2006).  The result is that parties often must make strategic decisions regarding which arguments to marshal and the amount of detail to devote to each argument.  In many cases, parties are forced to omit arguments that they consider meritorious.  Parties usually manage length limitations through careful selection of arguments and drafting as well as wordsmithing. More aggressive approaches, such as attempts to make additional arguments through incorporation by reference, can prove risky and result in waiver of arguments and result in an adverse decision on appeal.  The recent case, Medtronic, Inc. v. Teleflex Life Sciences, Inc., No. 22-1721, 2023 U.S. App. LEXIS 30501 (Fed. Cir. Nov. 16, 2023), illustrates such perils.

Medtronic appealed a decision of the Patent Trial and Appeal Board in an inter partes review (“IPR”) proceeding rejecting its challenge to the validity of a patent owned by Teleflex directed toward a method relating to insertion of a catheter into a coronary artery.  The Board found that the principal reference asserted under 35 U.SC. § 102(e) of the pre-America Invents Act (“AIA”) first-to-file provisions did not constitute prior art because Teleflex successfully antedated it.  A patent owner may antedate an asserted prior art patent by showing conception of the claimed invention prior to the critical date and either actual reduction to practice prior to the reference's critical date or “reasonably continuous diligence” in reducing the invention to practice until the effective filing date, which would be a constructive reduction to practice.

On appeal, Medtronic moved to extend the word limit to 20,000 words, and the Federal Circuit denied its motion. Medtronic failed to include developed arguments on diligence in its opening brief, but rather argued in a response to a citation to supplemental authority that the court should decide "the diligence question briefed” by Medtronic in another appeal of an IPR decision concerning a related patent.  The court found that this was an improper incorporation by reference, as argument by incorporation by reference violates Fed. R. App. P. 28(a)(6), which requires “a concise statement of the case setting out the facts relevant to the issues . . . , describing the relevant procedural history, and identifying the rulings presented for review, with appropriate references to the record.” Moreover, the Federal Circuit found that it would be fundamentally unfair to allow a party to use incorporation to exceed word count.  The court rejected Medtronic’s argument that its diligence argument should still be considered because the Board incorporated its analysis on this issue by reference on the basis that the Board is certainly entitled to incorporate by reference analyses from other decisions, but that does not entitle an appellant to violate the applicable rules in appellate court. 

Accordingly, the Federal Circuit found that Medtronic’s attempts to incorporate by reference twenty pages from another brief in another case, amounting to over 4,000 extra words constituted a clear violation of both its denying extension of the word limit and the applicable rules.  The court explained that Medtronic chose to make certain strategic decisions concerning what material to include in its opening brief, and it affirmatively chose not to include developed arguments on diligence.  Therefore, the diligence argument was held to be waived. 

Medtronic's gambit with respect to incorporating its diligence argument not only failed in that the argument was waved, but had grave consequences for its appeal.  The court explained that actual and constructive reduction to practice are alternative and independent bases, and thus, a patent owner may antedate an asserted reference based on prior conception and either actual reduction to practice or constructive reduction to practice.  In other words, the Board’s decision could be affirmed on either actual reduction to practice or reasonably continuous diligence until constructive reduction to practice without reaching the other issue.  Therefore, because Medtronic waived its diligence argument and did not contest conception the Federal Circuit affirmed the Board’s finding that the reference was not prior art and its holding that Medtronic did not show invalidity without reaching the issue that Medtronic focused on its briefing— actual reduction to practice.  With respect to this, Medtronic had argued that the Board erred in concluding that in vivo testing was not required for an actual reduction to practice, raising interesting substantive issues.

This case provides a cautionary tale regarding the effects of a party’s election not to address or otherwise waiving an argument on appeal under circumstances where that argument goes to one of two alternative bases on which the other party can prevail.  As the court found, waiver with respect to once such basis forecloses a successful appeal as the party must prevail on both. This case illustrates the necessity for careful strategic decisonmaking with respect to which arguments to marshal on appeal based on the facts and law at issue in each case.  Perhaps a complicating factor here was that there were several appeals pending in with respect to IPR proceedings between the same parties involving related patents as the parties briefed this case.  After briefing was complete, decisions in those appeals foreclosed all of the arguments in Medtronic’s briefing other than the antedating argument, such as those relating to other references. 

In this case, Medtronic moved to extend the word limit by 6,000 words, for a total of 20,000 words for its principal brief. . . . The motions panel denied that motion, confirming that the opening briefs were "not to exceed 14,000 words." . . . According to its Certificate of Compliance, Medtronic's opening brief includes 13,979 words, yet it attempts to incorporate by reference twenty pages from another brief in another case, amounting to over 4,000 extra words. . . . That is a clear violation of both the motions panel's order and our rules. Medtronic, Inc. v. Teleflex Life Sciences, Inc., No. 22-1721, 2023 U.S. App. LEXIS 30501 (Fed. Cir. Nov. 16, 2023).


life sciences, life sciences patent litigation & counseling, litigation, patents