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The Litigation Consulting Report

Winning BEFORE Trial - Part 2 - Parallel Trial Preparation Tactics

Posted by Ryan Flax on Mon, Aug 10, 2015 @ 03:01 PM


trial-presentation-trial-preparation-trial-prepby Ryan H. Flax
(Former) Managing Director, Litigation Consulting & General Counsel
A2L Consulting

In our last post, we discussed why it is important to win a case before trial and we went over some excellent ways of doing so.

 In a patent case, for example, let’s say we could end litigation by winning a landslide victory in claim construction at a Markman hearing. Granted, this doesn’t necessarily cut off all the post-trial costs because the U.S. Court of Appeals for the Federal Circuit will ordinarily be involved. But a claim construction that forecloses or ensures infringement or invalidity is a very powerful result.

Similarly, in a criminal case, a convincing pre-indictment meeting with assistant U.S. attorneys, or similar state prosecutors, and their staffs can save a good amount of time and money.

 But what if the opportunity to argue a case before trial isn’t necessarily going to end the litigation? Is it still worthwhile to follow best practices early on in that case? Well, if you and your client are committed to spending hundreds of thousands or even millions of dollars taking a case to trial, shouldn’t all that expense and effort be worth it in the end? Depositions, settlement negotiations, mock jury exercises, and similar proceedings provide you with real opportunities to focus your case and sharpen the way in which you will present it to a jury or judge so as to maximize your persuasiveness. This early work will put you in a position to win at trial and on appeal.

But how do we do this? What is meant by “best practices”?

The best practices in litigation are based on the idea that the road to success at trial is forked. You need to approach litigation in a specific way. Many attorneys fail to develop the necessary two-track strategy.

Litigators know that during a trial, a jury tends to find relatively few facts to be interesting and important. They usually decide the case on the basis of those few facts. Jurors are always looking for the “smoking gun,” and attorneys need to recognize this and to build their case around those key facts.

What begins at the early stages of case preparation as a single track of general case-building now needs to change to a two-track strategy directed both toward a persuasive presentation and to the formation of a solid record. These two tracks clearly do not have the same path or destination, but both are essential to winning. Often in litigation, too little time is spent on the track of developing a sympathetic story and theme that will be presented to the jury. Instead, litigation teams tend to focus very heavily on the minutiae of a case until the last minute before trial and not enough time putting their story together in a way that will be persuasive to jurors.

In our next post, we will discuss why storytelling is so crucial to winning at trial. Click here to be notified of subsequent articles.

Additional articles and resources focused on pre-trial strategy and trial preparation from A2L Consulting:

litigation support trial toolkit consultants a2l consulting

Tags: Markman Hearings, Trial Presentation, Litigation Management, Juries, Trial Preparation, Storytelling, White Collar, Federal Circuit

How the New Commil USA Supreme Court Opinion Changes Patent Litigation

Posted by Ryan Flax on Mon, Jun 1, 2015 @ 09:00 AM



by Ryan H. Flax, Esq.
(Former) Managing Director, Litigation Consulting
A2L Consulting

On May 26, 2015, the U.S. Supreme Court released its opinion in Commil USA, LLC v. Cisco Systems, Inc. (575 U.S. ____ (2015)) and it will significantly change patent litigation in the U.S.1

In Commil USA, the Court clarified when indirect patent infringement known as “inducement” occurs and how [not] to escape liability. As a bit of background, a patent can be infringed directly and indirectly. The Patent Act, at 35 U.S.C. § 271, makes it unlawful to make, use, sell, or offer to sell (in the U.S.) a patented thing or process without the patent holder’s permission. Part (a) of this section provides liability for direct infringement, that is, outright doing the thing that infringes a patent. Part (b) governs the first of two indirect infringements, induced infringement, and states “whoever actively induces infringement of a patent shall be liable as an infringer.” This is the focus of the Commil USA case. Part (c) of section 271 deals with the second of the indirect infringements (and interestingly, the one that was first statutorily identified), which is contributory infringement, which makes it an infringement to supply a non-staple, component for use in a patented thing or process.

Both types of indirect infringement require that some direct infringement occur and that the accused infringer actually know that its actions will constitute infringement of the patent at issue. The question before the Court was whether it was a proper defense to induced infringement that the accused infringer had a reasonable belief that the asserted patent was invalid. There is no question that there can be no infringement liability of an invalid patent claim, but does that matter when an accused infringer knows that its actions would otherwise infringe?

The Supreme Court held that, no, it does not matter. It’s no excuse and does not absolve liability for induced infringement that the accused infringer had a reasonable belief that the infringed patent was invalid. This is contrary to (and overrules) several years of precedent from the U.S. Court of Appeals for the Federal Circuit, which has held repeatedly that you cannot infringe an invalid patent and so reasonable arguments that a patent was invalid prevent induced infringement liability.2

indirect-patent-infringementThe law of the land on induced infringement is that if there is (1) a direct infringement of a patent and (2) you knew of the asserted patent and (3) you knew that the acts you actively encouraged would infringe that patent, you’re liable for infringement whether or not you thought that patent was valid or invalid. Validity is presumed, so as an accused infringer you can’t assume otherwise.

How will this affect patent litigation and patent counseling going forward?

If clients are potential indirect patent infringers, meaning they don’t actually directly infringe, but they either contribute to infringement (e.g., they supply the key component making infringement possible in an otherwise not-infringing product) or their actions would arguably encourage the direct infringement of others (e.g., a patent claims playing a video game and the client developed the software and sold the game hoping hundreds of thousands of gamers would play it), how can we help insulate them from liability?

Opinions of counsel are key and they must address non-infringement. The point of the legal opinion is to instill a reasonable belief in your client that they do not infringe.

As soon as your client learns of a patent and potential infringement, a well-reasoned (I’d suggest formal) opinion should be developed and it should focus first on a reasonable claim construction that takes the behavior at issue out of the scope of infringement. I do not advocate ignoring validity issues in these opinions, but no matter how well reasoned they are they will not mitigate against indirect infringement unless you actually succeed on the invalidity arguments at trial.

patent-infringement-willfulPre-trial opinions should set out solid reasons why there is no direct infringement. The claim construction is the first step. A reasonable claim construction that pushes the claimed invention away from the client’s behavior or product is the goal. The second step is identifying why the potential infringer’s (this is some third party because the client will be an accused inducer) actions fall outside the patent’s claim scope when properly construed. An alternative, more conservative argument on claim construction and non-infringement may also be warranted, using a claim construction more likely to be adopted by the patent holder. If a direct infringer’s actions reasonably do not infringe the more conservatively construed claims then you likely have a good argument against inducement.

The reasonable claim construction(s) developed at the pre-litigation counseling stage should be carried through to any litigation that ultimately develops so that the pre-litigation reasonable belief in non-infringement is reinforced. District courts get some deference in their claim construction holdings – that is, factual conclusions underpinning a claim interpretation under the law are reviewed for clear error, not de novo, thanks to Teva Pharma. USA, Inc., et al. v. Sandoz, Inc., et al., 135 S.Ct 831, 574 U.S. ___ (2015). This should be taken into consideration when developing non-infringement arguments and the facts upon which your claim construction is based should be carefully planned and soundly supported. Winning at the district court is important for this reason and, so, winning (or at least doing a reasonable job) the Markman is essential. If you had a pretty good, but still losing claim construction argument at the district court, you have an argument to the Federal Circuit that you had a reasonable believe you didn’t infringe the patent because of it.

Above all else, you must plan early to be the most reasonable man in the room when it comes to arguing non-infringement, whether your reasoning is based on claim construction or the facts.

Other articles on A2L Consulting's site related to patent litigation and the use of visuals in patent trials, in the ITC and in IPRs:

[1] The Court’s opinion was written by Justice Kennedy, the same judge who wrote the opinion in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).

[2] It should also be noted that the Federal Circuit has ruled similarly on the issue of enhanced damages for willful infringement – that a reasonable belief that a patent is invalid prevents the satisfaction of the first, objective recklessness prong under Seagate(497 F.3d 1360 (Fed. Cir. 2007)). It will be interesting to see if the Supreme Court has anything to say in the future on this issue. The Seagate rule does add that the risk of infringement must be of a “valid patent,” but this is a court-made rule and not statutory.

The materials on this website are provided for informational purposes only and do not constitute legal advice.

Tags: Markman Hearings, Litigation Consulting, Patent Litigation, Claim Construction, ITC, Federal Circuit, Inter Partes Review

The 5 Biggest Issues in Patent Law Right Now

Posted by Ryan Flax on Mon, Nov 25, 2013 @ 10:38 AM

by Ryan H. Flax, Esq.
(Former) Managing Director, Litigation Consulting
A2L Consulting

The field of patent law, like all other areas of the law in the U.S., is constantly in flux and is constantly being refined or even rewritten by the courts and the lawmakers.  Even more so than most other areas of law this is true for patent law because, if for no other reason, there are so many nuances to it and so many different complimentary and competing doctrines within the greater label of “patent law.” 

patent litigation law issuesTo make matters more volatile, patent practitioners have two courts to deal with in terms of those believing they’re the last word on the relevant law: the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court.  We all know who really gets the last word on things, but for most patent issues, the Fed. Cir. makes the law.

Well, guess what, the lawmakers in Congress also think they have something to say about the patent laws they initially wrote (or someone in the seat they now occupy wrote).  The wheels on Capitol Hill are turning again over the patent laws (they have to do something up there while they’re not addressing the nation’s financial concerns).

So, recently there have been some interesting issues evolving in patent law.  Here’s a brief review to keep everyone up to date.

1. Trolls – slaying the beast under the bridge

patent trolls litigationThe most frequent patent news as of late relates to newly proposed legislation to make it less attractive for non-practicing entities, also called patent trolls, to sue as a business model.  Patent trolls are usually categorized as entities that own patents, but not the inventor of the claimed subject matter, that use those patents aggressively to solicit fees from companies they allege infringe their patents.

Most recently, a bill called the Patent Litigation Integrity Act (S. 1612) was introduced in the U.S. Senate by Orrin Hatch (an experienced IP legislator) and proves for fee shifting in patent enforcements that aren’t “substantially justified” and allows for an accused infringer to move the court to require a bond be posted by the plaintiff.  Prior to that, the Innovation Act (H.R. 3309) was introduced in the U.S. House of Representatives and provides for fee shifting of litigation costs and heightened pleading requirements, as well as a requirement that a party enforcing a patent disclose patent ownership information from the outset of a lawsuit.

There’s some pushback on such proposed legislation within the patent practitioner community, not the least of which comes from former Chief Judge of the Fed. Cir., Judge Paul Michel (Ret.) (he made his comments, by the way, at the 15th Annual (Ray) Niro Distinguished Intellectual Property Lecture – Ray Niro is a well-known patent plaintiff’s attorney).  Likewise, the current Chief Judge Randall Rader warned lawmakers of overreaching in a speech at the Eastern District of Texas Bench Bar Conference – both decrying the “litigation blackmail” of some patent owning plaintiffs who seek to extort settlement that is less than the cost of a defense and also balancing this by saying that the solution is not special rules for patent owners that don’t make or sell any products.  Opposition aside, it’s apparent that people are getting fed up with the tactics of trolls and the climate is ripe for some action.

patent litigation demonstrative evidence

2. Claim Construction – deference to district court

patent litigation trial graphicsAs patent litigators we’re all aware of how important the claim construction is to the entire case – it often dictates the outcome before the jury selection even takes place.  So, it’s with high interest that we all await the en banc opinion from the Fed. Cir. in Lightning Ballast Control v. Philips.  This case is all about how much deference to give the district court in reviewing its claim construction order.  As it stands now, the 1998 Fed. Cir. ruling in Cybor makes claim construction a pure issue of law and allows absolutely no deference to the trial court judge’s opinion.

Both parties in the Lightning Ballast case agree that the standard de novo review applied by the Fed. Cir. in reviewing claim construction is not the way to go.  What they argue over is merely what parts of the district court’s claim interpretation get deference. 

I personally can’t wait to see the result.  It hardly seems fair for the Fed. Cir. to identify a brand new claim interpretation, one that never had to be proved-up at the district court, and still outright reverse a jury verdict.  But, this happens all the time.  The opinion in Lightning Ballast should improve things one way or another.

3. Damages and Costs?

The U.S. Supreme Court has granted cert. in several IP cases this term.  One of them, Octane Fitness, LLC v. ICON health & Fitness, Inc., involves the issue of determining whether a case is “exceptional” and, thus, warrants increased damages or the award of attorney fees.  Fed. Rule Civ. Pro 11(c) and Patent Act section 285 each provide for the award of attorney fees as a sanction against the loser of certain cases.  The Patent Act requires an exceptional case for such an award.  What’s exceptional?  A finding of willful infringement will make it so.

Again, in Highmark Inc. v. Allcare Heath Management Sys., the subject of attorneys fees are at issue.  In Highmark the question relates to whether any deference must be given to the district court’s award of attorney fees. 

So, as winners, we all want to collect attorney fees – we’ll have to stay tuned to see how it will be done in the future.

4. Burden of Proof – should it shift?

Just in the last couple of weeks (November 5) oral argument [PDF] was heard in the U.S. Supreme Court in Medtronic Inc. v. Boston Scientific Corp.  The issue is whether, in a declaratory judgment (DJ) matter, the burden should be on the possible-infringer plaintiff or the patent-holding defendant to prove either non-infringement or infringement, respectively.  Normally, a patent holder has the burden of proof to establish by a preponderance of the evidence that those he accuses have infringed. 

patent law litigation graphicsA DJ situation is skewed, though, in that the would-be infringer brings the case to establish that he hasn’t infringed (or that the patent is invalid and he cannot infringe).  That would-be infringer here (Medtronic) is a licensee, so the defendant-patent-holder’s position is that, as a licensee in good standing, he has no right to assert a counterclaim of infringement.  So, a licensee-party can sue a patent-holding-licensor, force them to litigate, and also force the burden of proof on them.  Weird, eh?  In any event, we’ll definitively know the answer to this question in a few months.

5. Post-Grant Stuff at the USPTO

The America Invents Act, now in full effect, created new ways to challenge issued patents: inter partes reviews (IPR); post-grant reviews (PGR); and covered business method reviews (CBM).  It appears that these are becoming pretty popular strategies as more and more litigators recognize how each challenge can fit into their practice and specific client situation.  Apparently, as of this Fall, there have been almost 600 IPR petitions, a the rate of about 60 per month.  Experts expect this rate to double in the coming year.

To add fuel to this fire, recently the Fed. Cir. held in Fresenius USA Inc. v. Baxter Int’l Inc., 721 F.3d 1330 (Fed. Cir. 2013), that an invalidity (unpatentability) ruling by the USPTO Paten Trial and Appeal Board mooted a pending district court case once the patent was found invalid.  Interestingly, the district court had reached the opposite ruling and was essentially overruled by the USPTO.

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Tags: Markman Hearings, Patent Litigation, Judges, Claim Construction, Federal Circuit

11 Tips for Preparing to Argue at the Federal Circuit

Posted by Ryan Flax on Tue, Apr 16, 2013 @ 03:49 PM

federal circuit appeals patent dc mock support argumentby Ryan H. Flax, Esq.
(Former) Managing Director, Litigation Consulting
A2L Consulting

In patent law, usually the U.S. Court of Appeals for the Federal Circuit (affectionately called the Federal Circuit or just Fed. Cir. for short by us patent practitioners) has the last say in any case. It’s the court of appeal for patent cases in the U.S. and has made most of the law on patent infringement and validity. As a patent attorney, I’ve had my cases heard before the Fed. Cir. and as a litigation consultant, I’ve worked with retired Fed. Cir. judges in helping prepare appeal teams for their oral argument before the court. After just doing so in collaboration with a (very impressive) retired Fed. Cir. judge, I’ve identified 11 things you must consider when getting ready for your own oral argument. Read on below and, once you have, I invite your feedback, either by email or as a comment below.

describe the image1.  Practice, practice, practice.

It may seem obvious, but you need to practice your oral argument - like crazy. It needs to become like reciting the pledge of allegiance. You must be able to recite your 15-minute argument all the way through and do so convincingly. You also need to be able to begin the argument, get interrupted, discuss something tangential to your argument, and then jump right back in where you left off and do it in a way that makes sense and flows well.

You will have a total of 15 minutes to make your case at oral argument, but you’ll never be able to do it from beginning to end in the real hearing because the judges will likely interrupt you just moments after you say “May it please the court,” to ask the questions they’ve been wanting to ask since they read your brief. But, that doesn’t mean you shouldn’t be prepared to do so. And, being prepared in this way will allow you to stay on your own agenda, rather than bending completely to the direction the Fed. Cir. panel forces you to take with their questions.

I just listened to the oral argument of a client at the Fed. Circuit. We’d prepared for every conceivable question the panel could offer, and our client was ready. However, the panel was surprisingly laid back compared to most. They did ask a few questions, but, for the most part, had little to say. This was an opportunity for counsel to really argue and present all the reasons why his client should win. But, to do that, you need to be ready to do it and have your arguments in the bag.

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2.  Craft a sharp, focused, and memorable introduction.

As I just mentioned, it’s likely that you will have barely gotten through your introduction to the Court when you’ll be interrupted by the panel asking a question. For this reason, it’s of paramount importance that you have a terse, memorable, and eloquent statement for why you should win that you can lead with.

if the glove does not fit oj simpson jury consultantsEveryone reading this article knows the quote to the right and who made it. Johnnie Cochran was certainly not arguing before the Fed. Cir. when he said those famous words, but they were supremely effective in setting O.J. Simpson free. This one line summed up the entirety of the defense’s position on the case – “the evidence just doesn’t fit here, something’s wrong, and you can’t convict O.J.” I’m not suggesting you begin your Fed. Cir. argument with a rhyme or something silly, but whatever you say should stick with the judges after the hearing is over and it should encapsulate your case for them, because it’s not impossible that this could be the only scripted part of what you actually argue at the podium.

3.  Give the panel a good reason to listen to you. 

Most Federal Circuit cases are won and lost on the briefs and, so, the oral argument may be of less importance both generally and to the Court. However, I’m sure you’re not willing to forgo your chance to explain why you should win in the courtroom. If you want your oral argument to have the impact it should, you need to have the judges listen to what you have to say, not just use you as a punching bag for their questions.

To do this you must have an introduction that explains to the panel that what they’re about to hear, they could not get by simply reading the briefs. You need to explain why what you’re about to say is different, more focused, and, perhaps, will clarify things that may have seemed confusing from simply reading the papers. 

You want to get the panel sitting back in their seats, both figuratively and literally, so they are waiting to hear what you’ll say and so they will hear you out. If you don’t do this, you’re on the Court’s agenda, not your own.

federal circuit briefs limits page count word count format4.  Focus on the paper.

All that matters to the court is the record. Appeal courts in general are slaves to the record. If something didn’t happen on paper, it didn’t happen at all as far as the Fed. Cir. is concerned. 

So, how do you include this knowledge in your oral argument strategy? The answer is that you need to have a solid cite to the appeal record for each and every point you want to make and for each and every response to every conceivable question the Court may ask.

You also need to be able to find the things you identify as supportive in the record so you can quote from the record. Have a copy, tabbed and ready with you at the podium. Have your second chair as familiar with your argument and tabbed record as you are and have his own so that he or she can help you should you become “flustered” at the podium.

5.  Use a demonstrative or two.

Using demonstrates during Fed. Cir. oral argument is not common, but that doesn’t mean you shouldn’t consider it. If a graphic might help you make your argument or help you explain something complicated about the patent and/or technology at issue, have such a litigation graphic professionally created in consultation with a litigation consultant. But, you need to carefully consider doing this.

First, if you get to use a demonstrative at oral argument at all, you’ll likely only get to use one. So, you’d better make that one graphic count. It should be useful for several purposes. For example, using an image or illustration of the accused infringing device can be useful both to explain your own invention and the proper claim constructions and also how the accused thing infringed the correctly construed claims.

Second, be careful. A lot can go wrong using a demonstrative in the Fed. Cir. It’s not as dangerous as an animal act on live late night TV, but you can certainly look pretty un-smooth if you’re not well versed in what the demonstrative shows, how you plan on using it, or if you haven’t practiced actually referencing the board while you argue. And, that’s precisely the type of demonstrative I suggest, a very large, clear, and precise poster-board graphic. And, another real danger is that you will “fall in love” with your demonstrative so much that you overuse it as a tool. Be careful not to become a slave to your graphic, don’t turn your back on the panel while using it, and stop using it when its usefulness has ended.

federal circuit argument time limit 15 minutes6.  You have to manage your time, the court won’t do it for you.

Each party gets 15 minutes to argue before the Court – use and manage your time wisely. The Court will do nothing but monopolize your time – it will not manage your time or urge you along your argument agenda. 

If you are the appellant you’re going to argue first, but you also want to argue last so be sure to tell the court you want to reserve between 3 and 5 minutes for a rebuttal after the respondent argues. When you get down to the 10 or 12 minute mark, you need to put the brakes on and remind the panel that you intended to reserve time for rebuttal because if you let the Court go on, it will and it may steal away your rebuttal if you don’t speak up.

When you’re arguing there are lights at the podium. When the lights turn yellow, your time is running out and when they’re red, you’re out of time. When you’re out of time, that’s it unless the Court makes an exception for you. Sometimes this happens if the panel asks an excessive number of questions and recognizes that it’s pushed you over the time limit. Usually if this happens, the panel will grant you the extra time and also add an equal amount to the opposing side’s argument.

Part of managing your time is being prepared to respond in a completely responsive, but pithy way to every question the panel might ask. Doing so allows you to be respectful of the Court, but also get back to your own points. 

Considering your introduction, the time taken up by the judges asking questions, and, if you’re the appellant, your rebuttal time, you’ve really only got about 6-8 minutes of oral argument, so make the best of it. And, you’re likely going to be a bit flustered, so practice and be prepared to handle this time management.

7.  Seek help.

Get feedback from outsiders, like me, on how your planned argument is going to go over at the Fed. Cir. Sure, you’re a very smart person and an experienced and talented attorney, but that doesn’t necessarily or automatically mean you’re going to make a great presentation to the Court. Part of getting to the appeal is likely drinking a lot of your own Kool-Aid. You’ve had to convince yourself that your case is a winner, had to try to convince opposing counsel your case is a winner, and try to convince the district court judge and the jury that your case is a winner.  Then you had to write a super-compelling and persuasive 14,000-word brief. After all this, it’s understandably hard to view your position and arguments objectively.

That’s where I come in. You can have the partner down the hall sit with you and listen to your ideas about oral argument and even watch you practice, but it’s unlikely you’re going to get the type of objective feedback you need under such circumstances. I recommend conducting a mock oral argument before a mock panel. You need to prepare carefully and thoroughly for such a mock exercise and you need to be grilled with the toughest questions anyone associated with the case, including me, can think of. If you do not practice in this way, unless you do Fed. Cir. oral arguments frequently, you’re not going to be ready when the day comes (at least not in my book of “ready”).

reasonable man standard8.  Prepare to be the most reasonable person in the room. 

You need to be well-reasoned in all aspects of your oral argument. Any point you’re affirmatively making must be backed up, and backed up well, by some point in the record and you need to be able to direct the court right to that record-cite. When responding to the panel’s questions, you need to have anticipated the issue and have a terse, one sentence, reasonable answer to that question that fits with your appeal positions (and you need a record cite to back it up, too). 

If you have an argument that’s a loser, concede it unless it’s dispositive and focus on what you need to to win the war. Maybe you’ve brought some superfluous causes of action that can be dropped while maintaining your case-at-large. Maybe some of your patent’s claims can be allowed to be either abandoned (in terms of infringement) or acknowledged to be (possibly) invalid if it saves the patent and case, generally. 

Basically, don’t fight needless and likely-losing battles just to sacrifice the war. Look like a reasonable person. It’s easier to take your case and points seriously if you are.

9.  Be ready for anything and everything.

Brainstorm and identify every single possible question that may be asked and have a one sentence, perfect answer for each. Over-do this preparation.

You really do need to spend a lot of time imagining what questions may be asked by the panel because, for all the reasons discussed above, you need to be ready for what the judges will throw at you. You need to have an understandable, reasonable, and completely responsive answer for anything and everything a judge might question – and that answer must fit within the confines of a single sentence or two, at most.

All the judges have to go on is the briefing in the case, the record, and whatever their clerks have to report before the hearing. Re-read all this stuff again. Have an outsider read it and give you feedback. Ask yourself: where are the holes in my argument? What points seem strongest for the opposition based on their brief? What might be confusing based on the briefs alone? 

Ask: What can the judges do to simply dispose of this case without much fuss. This last one identifies what the judges’ primary goal will be during the hearing.  If they can identify a simple reason to rule one way or another and develop a reasonable rationale for that reason, that’s the path of least resistance and the one most likely to be taken.  Be ready.

10.  On rebuttal, don’t rehash.

Rebuttal is available to rebut, not to review and restate arguments already made. As confirmed by my retired-judge-collaborator, the Fed. Cir. judges will just tune you out (at best) if you rehash and could affirmatively end your argument for you (at worst).

Listen carefully to what your opposition argues and to the questions asked by the panel during your opposition’s argument. If opposing counsel makes a good point – counter it on rebuttal. If the judges seem to identify a chink in your opposition’s armor – drive your sword into it and make it bigger (tell the panel how astute they were to see it and how important it is to why you should win). 

Take your time during the opposition’s oral argument to read any notes your second chair may provide you – they were likely dying for you to say something specific during your argument that you just didn’t think of in the stress of the situation – you can make that point on rebuttal.  Carefully consider how your argument went and the questions asked by the judges. What did you do well and where could you have done better? What could you fix by rephrasing or by identifying an appropriate cite to the record? Do it when you get the chance.

Of course, all this rebuttal strategy only works if you’re the appellant because the respondent (appellee) does not get a rebuttal.

appellate argument briefs consultants11.  Write a brief that the Court can follow, easily.

Lastly here, but the first thing you should do in a real appeal, make sure your brief is a winner, not just on the facts and law, but in how it’s formatted and organized. I leave it to you to know what issues must be addressed and what precedent supports your positions, but I believe you need to make your brief a “recipe” for victory.

As discussed above, most cases are won on the briefs. You don’t want to have to rely on giving a perfect oral argument, because it’s likely too late by then. Set your brief up in a way that the Court can instantly recognize your primary points. I suggest setting it up in a “check-list” style.

What this means is that a reader (the Court) should be able to fully understand the entirety of your argument and why you should “win” by simply reading the headings of your brief. The headings should be terse, but crystal clear in their point. The rest of the brief (the substance under the headings) should be there simply for the purpose of supporting the big points you’ve made in the headings. This way, when the judges initially read your brief, it’s simple to follow along and there’s a clear organization to your arguments. Then, when the judges want to review your brief right before your oral argument (which they likely will), they can get through it quickly and understand it – checking off your arguments and rationale.

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When I say make your brief a “recipe” for victory, I mean that it should be as easy to follow and as understandable as a cookbook. You should give the Court exactly what it needs (the steps and ingredients under the appropriate burden) to rule in your favor, but not so much embellishment that it detracts from the clarity of your positions.

I hope you’ve found the 11 suggestions above informative and thought provoking. I believe if you follow my advice, you will be ahead of the game for your next oral argument before the Fed. Cir. (or, really, any appeal court).

Some other A2L Consulting materials related to arguing cases in the Federal Circuit, in patent litigation or at trial generally are linked below:

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Tags: Courtroom Presentations, Litigation Consulting, Trial Consulting, Demonstrative Evidence, Jury Consultants, Patent Litigation, Judges, Washington D.C., Appeal, Federal Circuit, Briefs

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Download the (Free) Storytelling for Litigators E-Book

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Considering Using a Trial Technician at Your Next Trial? Download this first.

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Ken Lopez founded A2L Consulting in 1995. The firm has since worked with litigators from all major law firms on more than 10,000 cases with over $2 trillion cumulatively at stake.  The A2L team is comprised of psychologists, jury consultants, trial consultants, litigation consultants, attorneys and information designers who provide jury consulting, litigation graphics and trial technology.  Ken Lopez can be reached at lopez@A2LC.com.


Tony Klapper joined A2L Consulting after accumulating 20 years of litigation experience while a partner at both Reed Smith and Kirkland & Ellis. Today, he is the Managing Director of Litigation Consulting and General Counsel for A2L Consulting. Tony has significant litigation experience in products liability, toxic tort, employment, financial services, government contract, insurance, and other commercial disputes.  In those matters, he has almost always been the point person for demonstrative evidence and narrative development on his trial teams. Tony can be reached at klapper@a2lc.com.

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Laurie R. Kuslansky, Ph.D., Managing Director, Trial & Jury Consulting, has conducted over 400 mock trials in more than 1,000 litigation engagements over the past 20 years. Dr. Kuslansky's goal is to provide the highest level of personalized client service possible whether one's need involves a mock trial, witness preparation, jury selection or a mock exercise not involving a jury. Dr. Kuslansky can be reached at kuslansky@A2LC.com.

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