August 2013
Intellectual Property & Technology Law Journal
Authored by J. Preston (J.P.) Long, Ph.D. and Allen M. Sokal
Appeals begin at trial, and they can be won or lost there. Whether making a strategic decision not to object to a piece of evidence or inadvertently failing to preserve an issue for appeal, countless decisions and oversights made during trial can make or break an appeal. Thus, a wise litigator cannot be single-minded; he or she must always appreciate the potential implications accompanying each choice made at trial. More fundamentally, he or she must recognize each choice that needs to be made.
This article seeks to provide insight into what issues to look for at trial and how to address them. It highlights many of the most common procedural traps for unwary litigators, including filing interlocutory appeals, notices of appeal, and post-trial motions, including motions for judgment as a matter of law (JMOL), motions for new trial, motions to amend a judgment, motions for relief from judgment, motions for stay pending appeal, and motions to reconsider. Before delving into the details, however, this article provides some basic, overarching principles, illustrating them with some fairly uncommon situations and procedures that can snare even the most attentive litigators.
Appellate courts review the decisions of trial courts based on the factual record developed below and generally do not review issues not first presented to the lower tribunal. Thus, a party may seriously limit its options available on appeal by failing to raise an issue below. Usually, there are trade-offs associated with deciding whether to raise an issue. Litigators should evaluate these trade-offs carefully. Far too often, however, short-sighted litigators never examine those trade-offs at all. In fact, many fail to recognize that such an issue even exists, allowing it to pass unnoticed. By the time the issue finally comes into clear view on appeal, the appellate court likely will not address it.
Raise and Preserve Issues for Appeal
In a very real sense, preparing for an appeal begins in the district court. A careful practitioner, therefore, will be sure to consider all options and their associated risks as the trial progresses. Collaborating with an experienced appellate litigator during the district court proceedings is perhaps the best way to ensure that no option goes unexplored. Keeping that in mind, much of this article is devoted to the basics that every trial practitioner should know. And the most basic tenet is that a practitioner should properly raise and preserve issues for appeal.
Note, however, that limited means do exist for raising issues and presenting evidence not initially presented to the trial court. For example, when a trial court renders its decision on summary judgment, the adversely affected party may request reconsideration to provide further evidence or legal arguments.1 If the trial court denies that request but considers it on the merits, at least one may reasonably argue to the U.S. Court of Appeals for the Federal Circuit that it should consider the new evidence and arguments on appeal. On the other hand, the opposing party should argue waiver to avoid actually waiving the waiver issue.
As another example, the Federal Circuit may take judicial notice of certain adjudicative facts not presented to the trial court.2 In general, such evidence must be universally known or widely available to the public.3 For example, the Federal Circuit has taken judicial notice of, inter alia, dictionary definitions, the Manual of Patent Examining Procedure (MPEP), court orders, common knowledge, and U.S. Patent and Trademark Office (PTO) decisions.4 Outside of these limited avenues, however, one should not expect the Federal Circuit to consider claims or evidence either waived or not presented in the district court. Thus, wise practitioners should abandon any such claim or evidence before the trial court only for sound, strategic reasons, not because of oversight.
Offer Sufficient Evidence to Support the Trial Court's Factual Findings on Appeal
A party that fails to introduce sufficient evidence during trial may suffer the consequences on appeal. Because appellate courts do not usually review evidence not presented to the lower tribunal, the evidentiary record developed below should be adequate to sustain the trial court's decision. Yet trials (especially jury trials) typically call for simplified and efficient presentations of evidence. Clearly, a fundamental tension exists between those two objectives. That tension is particularly palpable when the evidence is highly technical or when its presentation is very involved.
Although to some extent such issues may be resolved by effectively using evidence summaries,5 evidence summaries are not a panacea for diffusing the tension between obtaining an optimal evidentiary record for appeal and winning a jury verdict. Note that an effective advocate must not only introduce favorable evidence into the record, but also must attempt to keep unfavorable evidence out. Trade-offs are inherent in those latter efforts as well. For example, consider an opposing counsel who makes an evidentiary error that introduces information harmful to your position. Meanwhile, the judge and jurors appear inattentive and anxious for a reprieve from opposing counsel's presentation. They probably did not understand opposing counsel's point anyway. Objecting, particularly if the error was minor, may appear obstructionist. Depending on the severity of the mistake, objecting may or may not be wise. How to resolve the tension is not necessarily obvious.
It is therefore important to note that the Federal Circuit almost never reverses a district court's evidentiary rulings.6 Not only must a party challenging such a ruling show both abuse of discretion and substantial prejudice,7 it must do so in light of the trial court's "great latitude in passing on the admissibility of evidence."8 Similarly, the Federal Circuit is extremely unlikely to interfere with a district court's discovery ruling. Knowing those trends simplifies certain decisions, but it does not eliminate the inherent trade-offs involved. Much to their detriment, many practitioners only recognize one side of the equation: They only think about what can be gained at trial, not what may be given up on appeal. By the time the other half of the equation comes into view, it is too late to reverse course. The issue will have been permanently waived. Although every detail need not find its way into the record, attentive counsel should always remember to ensure the basic sufficiency of the record.
Avoid Waiver
As noted above, appellate courts review the decisions of trial courts based on the factual record developed below. As a corollary to that principle, if a party does not notify the trial judge when it believes that the trial court has erred, that party generally cannot later raise the issue on appeal. Rather, it should give notice to the trial court of any alleged defect so that the court has an opportunity to rectify its own errors in the first instance.9 Thus, failing to point out an alleged error made by the district court during trial may preclude reliance on that error for appeal.
Waiver can occur in many ways. For example, a party may fail to object to a jury instruction or to the admission of a certain piece of evidence. Or a party may fail to file a timely motion for JMOL or for a new trial. Avoiding waiver often can mean the difference between success and failure on appeal. The prospect of waiver should therefore be a factor in every decision made while proceeding in the district court. And whenever a party does waive an issue, it should be both voluntary and for a sound strategic purpose. Indeed, failure to raise a potentially dispositive issue may not only irrevocably waive the issue, it may render the responsible attorney liable for malpractice.10
Avoid Mistakes and Raise Issues or Introduce Evidence That Might Otherwise Not Be Raised
Mandamus
The All Writs Act,11 which dates back to the Judiciary Act of 1789, permits a party to approach the Federal Circuit for relief by way of writ at any time during the pendency of its case in the district court. One such writ—the writ of mandamus—petitions an appellate court to order a district court judge to perform a ministerial act or duty.12 Of course, mandamus is not referred to as an "extraordinary writ"13 without reason. "The remedy of mandamus is a drastic one, to be invoked only in extraordinary situations."14 Accordingly, to qualify for a writ of mandamus, a party must demonstrate that it "lack[s] adequate alternative means to obtain the relief [it] seek[s]" and "that [its] right to issuance of the writ is 'clear and indisputable.'"15 In other words, a mandamus order is justifiable only in "exceptional circumstances amounting to a judicial 'usurpation of power.'"16Note, however, that several issues frequently arising in patent litigation may, on occasion, merit a mandamus order. One such issue is an order to transfer a case, either by the trial court pursuant to 28 U.S.C. §1404(a) or by the Judicial Panel on Multi-District Litigation pursuant to 28 U.S.C. §1407. Because such transfer orders are not appealable, petitions for writ of mandamus are the only way to obtain review.
Prior to the new joinder rules introduced by the America Invents Act (AIA),17 an interesting trend had emerged in the Federal Circuit: Despite historically granting very few writs of mandamus regarding transfer, the Federal Circuit targeted the notoriously plaintiff-friendly Eastern District of Texas,18 directing nine such writs to that court between 2008 and mid-2011.19 Meanwhile, it issued no similar writs to judges in other districts. In late 2011, however, the Federal Circuit showed that the Eastern District of Texas was not alone. Applying Third Circuit law, the Federal Circuit issued a similar writ to a judge in the District of Delaware. The order emphasized that "[w]hen a plaintiff brings its charges in a venue that is not its home forum, . . . that choice of forum is entitled to less deference" than it ordinarily would be.20 In that case, for example, the plaintiff was a holding company based in Bermuda and incorporated in Delaware. But other than the plaintiff's incorporation there, none of the parties had any ties to Delaware. The defendant was based in Northern California. Similarly, an entity related to the plaintiff—the company at which the inventive activity occurred—also was based in northern California. The Federal Circuit ordered the judge to transfer the case to the Northern District of California, noting that the district court "placed too much emphasis on the plaintiff's choice of forum."21 Thus, a party accused of infringement under similar circumstances may consider filing a motion to transfer under Section 1404(a), followed if necessary by a petition for writ of mandamus in the Federal Circuit.Because of new procedures enacted under the AIA,22 issues involving joinder are now important as well. Note that a party believing it has been joined improperly may seek severance under Rule 21. If successful, venue and personal jurisdiction then become easier to challenge. Shortly after the new joinder provisions became effective, the Federal Circuit addressed this very issue. The court determined that Federal Circuit law governs the availability of mandamus for motions to sever and transfer under the new joinder statute.23 As the court explained, independent defendants may be joined under the new statute "if there is substantial evidentiary overlap in the facts giving rise to the cause of action against each defendant."24 This means that "[u]nless there is an actual link between the facts underlying each claim of infringement, independently developed products using differently sourced parts are not part of the same transaction, even if they are otherwise coincidentally identical."25 Nevertheless, to the extent that pretrial issues of claim construction and invalidity may be adjudicated together, the multi-district litigation procedures of 28 U.S.C. §1407 remain available.26 Although the trend currently is that plaintiffs targeting multiple defendants file separate suits against the individual defendants, defendants may nevertheless voluntarily waive the new joinder rules if they wish to consolidate their case with another.27 Given these added complexities regarding orders of joinder and severance—issues for which mandamus is the only available relief—parties should be especially attentive or risk waiving those issues early on in their cases.
A writ of mandamus also may be appropriate when challenging trial court rulings on the disclosure of privileged information. Mandamus is appropriate in such matters when "(1) there is raised an important issue of first impression, (2) the privilege would be lost if review were denied until final judgment, and (3) immediate resolution would avoid the development of doctrine that would undermine the privilege."28
A writ of mandamus also may be appropriate to challenge a trial court's decision to grant or deny a motion to disqualify a party's counsel. As are all mandamus orders, these are rare.
Although the foregoing highlights the most common uses for mandamus petitions in patent litigation, others certainly exist. Again, a petition for a writ of mandamus petitions an appellate court to order a district court judge to perform a ministerial act or duty.29 Thus, any time a district court clearly fails to perform its duties, a writ of mandamus may be appropriate.
For example, following judgment, a district court judge once ordered that "no party in this case [may] file anything further before this Court."30 That placed the aggrieved party in a precarious position. It could either file post-trial motions to preserve its right to appeal, risking a contempt charge, or it could comply with the judge's order and sacrifice its ability to appeal. Instead of making that impossible choice, the aggrieved party petitioned for a writ of mandamus with the Federal Circuit, requesting that the prohibitive part of the judge's order be vacated. The Federal Circuit granted the petition, freeing the aggrieved party to file post-trial motions without any danger of a contempt charge.
As another example, the Federal Circuit issued a writ of mandamus ordering the district court to dismiss a plaintiff's complaint under the False Markings Statute31 with leave to amend.32 The district court had applied the heightened pleading standards of Rule 9(b) to the complaint, but it denied the defendant's motion to dismiss the claim for insufficiency under those standards. The Federal Circuit first addressed the issue of whether Rule 9(b) applied. After deciding that it did, the court agreed with the petitioner that the plaintiff's complaint was inadequate under Rule 9(b). The court emphasized two primary reasons for issuing the writ. First, "trial courts ha[d] been in considerable disagreement on th[e] issue [of the applicability of Rule 9(b) to false marking allegations], resulting in inconsistent results across the country."33 Second, it was a "basic and undecided" question in the Federal Circuit.34 Under analogous circumstances, a writ of mandamus also may be appropriate.35
Spectator Evidence of Jury Prejudice
Sometimes, critical issues and evidence may not be clear from the record. The intangibles of the courtroom atmosphere will seldom appear in the record unless an attorney makes sure that they are documented and entered into evidence. An example illustrates this point.36 During one jury trial, an attorney in his question to a witness erroneously included the wrong month for a date of disclosure. While seated at the counsel's table, Halliburton's corporate counsel (and a key witness) shook his head several times, gestured, and mouthed protests regarding the erroneous date. The trial judge (the same trial judge compelled by mandamus to permit post-trial motions37) believed corporate counsel was coaching the witness and admonished him, unintentionally within hearing of the jury. The judge then banished him from the trial and from Galveston, TX altogether.38 In truth, a large exhibit blocked the view between the witness and Halliburton's corporate counsel so that they could not see one another at all. Yet the jury saw and heard the judge's admonition and subsequently found that Halliburton had willfully infringed the plaintiff's patent. Without proper corroboration from spectators, those prejudicial events would have gone undocumented on the record, or at least the record would have appeared very one-sided. To remedy the situation, Halliburton's trial team obtained sworn affidavits from courtroom spectators and entered them into the evidentiary record. They later used that evidence to move for a new trial during post-trial briefing. The Federal Circuit reversed the jury verdict, ruling that no reasonable jury could have found infringement.39 Atmospheric evidence of this sort that may help to demonstrate jury prejudice can be vital, and it should not be overlooked when appropriate.Motion for Reconsideration May Be too Late
Rule 59(e) permits a party to request that the trial court reconsider and amend its judgment. However, a party has only 28 days from the entry of an adverse judgment to file a Rule 59(e) motion,40 and extensions are unavailable.41 It is therefore critical to file a motion to reconsider within the allotted time frame and before stripping the district court of jurisdiction by filing a notice of appeal.In one example, a small company was a declaratory judgment defendant that responded to a motion both for attorney fees and to dismiss its infringement counterclaim by opposing only the motion to dismiss. The court then entered a judgment dismissing the infringement counterclaim and awarding attorney fees against it in the district court.42 The company immediately filed a notice of appeal, but the Federal Circuit stayed the appeal pending the district court's determination of the amount of attorney fees owed. After the district court ruled on the amount—$537,541.60, against a defendant with only $1M in annual sales—the plaintiff filed a motion to enter the judgment. At the end of the period for response, the court granted the plaintiff's motion. Although the defendant's attorneys then responded by filing a motion to amend the judgment, arguing for the first time that awarding attorney fees was erroneous, it was too late. As the district court noted, the company essentially made "an overdue motion for reconsideration and ask[ed] the Court to overrule its prior decision."43 The Federal Circuit agreed, ruling that the first appeal "divested the district court of jurisdiction over the fee award."44
Avoid Waiving Waiver
Waiver occurs when a party fails to preserve or raise an issue in the trial court within the proper time frame. One must be careful not to miss an opportunity to point out that the opposition is trying to revive an issue it has waived. Missing such an opportunity can lead to a waiver of the opposition's waiver. For example, consider an opponent that states during trial that it has no objection to a particular jury instruction. Later, during post-trial motions, that opponent changes its mind and alleges that the instruction was erroneous. If one fails to point out the opponent's prior waiver in a response, the trial court may grant the opponent's motion, either failing to spot the issue or simply refusing to raise it sua sponte. As another example, consider that to move for judgment as a matter of law after a jury verdict a party must have moved on the same grounds before the case was presented to the jury. If an adversely affected party files a post-verdict motion without having filed the corresponding prerequisite motion, the nonmoving party can waive the defect by failing to point out the movant's prior waiver. Moreover, because the waiver will not have been raised before the district court, one can be precluded from raising the waiver on appeal. Although fairly infrequent, this issue can—and certainly does—arise.45 Thus, in addition to paying attention to one's own potential waivers, a careful practitioner also will keep a watchful eye out for an opponent's waivers.
Motions for JMOL
Rule 50 governs motions for judgment as a matter of law. Two basic types of Rule 50 motions exist: (1) pre-verdict motions for JMOL under Rule 50(a), and (2) renewed (i.e., post-judgment) motions for JMOL under Rule 50(b). A pre-verdict motion for JMOL under Rule 50(a) asks a court to rule that "a reasonable jury would not have a legally sufficient evidentiary basis to find for the [non-moving] party on that issue."46 Because the Seventh Amendment prevents a court from re-examining factual determinations made by a jury, Rule 50(a) motions may be filed only before the case has been submitted to a jury.47 Moreover, a Rule 50(a) motion may be made only after a party has been fully heard on an issue.48 Thus, a movant may properly request JMOL under Rule 50(a) at only two points during trial: (1) immediately following the close of the plaintiff's case and (2) immediately after the close of all evidence.49 As indicated above, filing a proper Rule 50(a) motion during trial is critical because failing to do so will eliminate the option of filing a renewed motion for JMOL under Rule 50(b) after trial, absent a waiver by the nonmoving party. Filing a renewed Rule 50(b) motion is what enables the trial court's denial of a motion for JMOL to serve as the basis for an appeal.
Following an adverse jury decision, one should promptly consider filing a renewed motion for JMOL under Rule 50(b). A Rule 50(b) motion is appropriate where no reasonable jury could have reached its conclusion based on a proper application of the law to the facts in evidence. Once a party has filed a proper Rule 50(b) renewed motion for JMOL, the trial court may simply let the prior judgment stand, or it may direct entry of judgment as a matter of law.50 If the trial court lets the prior judgment stand, the movant may appeal. The trial courts and the Federal Circuit all apply the same standards of review to Rule 50(b) motions.51 Both review the jury's factual determinations for substantial evidence, and the Federal Circuit does so de novo.52
Substantial evidence exists when reasonable minds can come to the conclusion at issue after examining evidence taken from the record as a whole.53 Only when a court is convinced that reasonable persons could not have reached a verdict for the non-moving party should it grant a motion for JMOL.54 In conducting that inquiry, "the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine the credibility of witnesses, and must not substitute its choice for that of the jury."55 If a minimum quantum of evidence exists from which a jury might reasonably have reached its conclusion, a motion for JMOL based on jury error must be denied.56
When filing motions for JMOL, the prudent practitioner must take care to avoid several traps for the unwary. For example, a post-trial motion for JMOL under Rule 50(b) is improper unless the movant initially filed a Rule 50(a) motion during trial.57 Because a Rule 50(b) motion is technically just a renewal of a Rule 50(a) motion,58 the former cannot exist without the latter. For the same reason, the Rule 50(b) motion cannot contain any issues not raised in the initial Rule 50(a) motion.59 Accordingly, a party must file a new Rule 50(a) motion at the close of all evidence if it has introduced any new evidence subsequent to filing an earlier Rule 50(a) motion.60 The new evidence cannot be re-examined on review otherwise. A Rule 50(a) motion also must be specific enough to allow the nonmoving party an opportunity to cure any defects in proof that might otherwise preclude it from taking the case to the jury.61 The motion should specify the judgment sought, as well as both the law and the facts that entitle the movant to the judgment.62 Finally, a party actually must remember to renew its pre-verdict motion for JMOL on time. The Rules of Civil Procedure set the deadline at 28 days from the entry of judgment,63 and extensions are not permitted.64 If a party files a Rule 50(b) motion outside of that time frame, the trial court's denial of the earlier Rule 50(a) motion cannot form the basis of an appeal.65 All issues raised in the earlier motion would be considered waived.
Thus, if contemplating an appeal, best practices dictate that one should: (1) always file a Rule 50(a) motion for JMOL following the close of all evidence, even if one filed an earlier Rule 50(a) motion; (2) be specific regarding the judgment sought, as well as the facts and law that entitle the movant to JMOL; (3) be sure to include in the Rule 50(a) motion all issues that may warrant consideration on appeal; and (4) make sure to file the Rule 50(b) motion within 28 days of the entry of judgment.
Motions for New Trial
When renewing a motion for JMOL, one should also, in the alternative, move for a new trial under Rule 59. If a court grants a renewed motion for JMOL under Rule 50(b), it also must conditionally rule on any motion for a new trial.66 The trial court may grant a new trial motion at its discretion if the judge believes that the verdict clearly contradicted the evidence in the case67 or if a prejudicial error affected the outcome of the case.68 But note that a conditional new trial order does not affect the finality of the judgment;69 it simply serves as a fallback option—an insurance policy of sorts. If an appellate court reverses the JMOL without a conditional new trial order in place, the original verdict will be left intact. On the other hand, if a conditional new trial order is in place, the remedy is a new trial. Thus, filing an alternative Rule 59 motion for a new trial is wise when filing a Rule 50(b) motion.
Although conditional new trial motions should be filed in conjunction with Rule 50(b) motions, new trial motions are themselves more widely applicable. In particular, they can be quite useful when new evidence is discovered, or when challenging erroneous jury instructions or excessive damages. Following an action tried without a jury, Rule 59 enables the trial court to "open the judgment if one has been entered, take additional testimony, amend findings of fact and conclusions of law or make new ones, and direct entry of a new judgment."70 Analogously, following an action tried before a jury, a court may grant a new trial motion "where the verdict is against the weight of the evidence, damages are excessive, or the trial was not fair to the moving party for some other reason."71 Moreover, a court may order a new trial, sua sponte, "for any reason that would justify granting one on a party's motion."72 Like Rule 50(b) motions, new trial motions under Rule 59 must be filed within 28 days of judgment,73 and extensions are not available.74
As most matters discussed in this article, new trial motions do not involve matters unique to patent law. They are therefore governed by the law of the regional circuit in which the trial court resides.75 Nevertheless, the relevant laws "appear[] to be common to all circuits."76 For example, a party challenging a jury instruction must show that the instruction was prejudicial.77 In the Federal Circuit, a party must show that "(1) it made a proper and timely objection to the jury instructions, (2) those instructions were legally erroneous, (3) the errors had prejudicial effect, and (4) it requested alternative instructions that would have remedied the error."78
As the foregoing implies, one must be careful to preserve grounds for a new trial. For example, if a party forgets to make proper objections to jury instructions under Rule 51, it will be precluded from seeking a new trial on the basis of those instructions.79 Thus, a careful practitioner will be sure to preserve all grounds that may potentially warrant a new trial.
Motions to Amend Findings
Rule 52 motions are post-judgment motions regarding findings and conclusions made by a court, as opposed to findings and conclusions made by a jury.80 They often accompany Rule 59 motions for new trial81 because the moving party, in both cases, is essentially asking the trial court to re-open the case, albeit through alternative means. In general, a trial court overseeing an action tried without a jury or with an advisory jury "must find the facts specially and state its conclusions of law separately."82 Those findings and conclusions may be stated on the record after the close of evidence or in a written opinion filed by the court.83 A Rule 52 motion is proper when the trial court's factual findings lack the specificity necessary for an appellate court to understand the basis for the trial court's conclusions.84 A Rule 52 motion is not, however, a mechanism one may use simply to re-litigate old matters or to advance new legal theories.85
Like other post-trial motions, not filing a Rule 52 motion in the appropriate circumstances can have consequences. For example, although a party can always attack a trial court's finding as being "clearly erroneous" on appeal,86 it cannot necessarily argue that those findings lack specificity unless it first filed a Rule 52 motion.87 Consider two situations. In the first, the challenger does not suggest that the trial court's findings are too incomplete to support its conclusion, only that those findings are clearly wrong. In the second, the challenger does not necessarily suggest that the trial court's findings are wrong, only that those findings are too incomplete to support the court's decision. An appealing party in the first situation always may make its argument, but an appealing party in the second situation cannot make its argument without first filing a Rule 52 motion.88 If successful on appeal, the result will be a remand for further findings.89 Thus, a Rule 52 motion should certainly be used when a party wishes to challenge a court's findings for lack of specificity or completeness. As several courts have noted, "[i]t would seem that if a party is not willing to give a trial judge the benefit of suggested findings and conclusions, he is not in the best of positions to complain that the findings made and conclusions stated are incomplete."90
Note that the challenging party bears the burden of pointing out any of the trial court's findings or conclusions that warrant further consideration.91 Moreover, a proper Rule 52 motion includes a reasonable basis showing that the trial court's findings were incomplete.92 As with motions for new trial and renewed motions for JMOL, motions to amend filings must be filed within 28 days of the trial court's judgment,93 and extensions are unavailable.94
Like Rule 52, Rule 59(e) permits a court to amend its determinations. According to the Supreme Court, the draftsmen of Rule 59(e) "had a clear and narrow aim" to permit district courts the opportunity to rectify their own mistakes during the period immediately following the entry of judgment.95 It "is not a vehicle for reopening judgments to present information that was long possessed by the movant and that was directly relevant to the litigation."96 Rather, a motion to alter or amend judgment "must rely on one of three major grounds: '(1) an intervening change in controlling law; (2) the availability of new evidence [not available previously]; [or] (3) the need to correct clear error [of law] or prevent manifest injustice.'"97 Thus, Rule 59(e) motions typically are appropriate only when a court has misunderstood the facts, a party's position, or the controlling law.98
Endnotes
1 See discussion of Rule 60(b) in the second part of this article.
2 Fed. R. Evid. 201.
3 See id. 201(b) ("A judicially noticed fact must be one not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.").
4 See Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002) (taking judicial notice of the MPEP); Genentech, Inc. v. Int'l Trade Comm'n, 122 F.3d 1409, 1417 n.7 (Fed. Cir. 1997) (taking judicial notice of a court's order); Hoganas A.B. v. Dresser Indus., 9 F.3d 948, 954 n.27 (Fed. Cir. 1993) (taking judicial notice of a patent not submitted to the trial court); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 897 F.2d 511, 514 n.3 (Fed. Cir. 1990) (taking judicial notice of a PTO correspondence that was part of the public record); BVD Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 728 (Fed. Cir. 1988) ("Courts may take judicial notice of facts of universal notoriety, which need not be proved, and of whatever is generally known within their jurisdictions." (quoting Brown v. Piper, 91 U.S. (1 Otto) 37, 42 (1875)); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1447 (Fed. Cir. 1984) ("If necessary, we take judicial notice that a 'pressure sensitive adhesive' is permanently tacky" (footnote omitted)).
5 See Fed. R. Evid. 1006.
6 See, e.g., Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1260-61 (Fed. Cir. 2004). But see, e.g., Patent Rights Prot. Grp., LLC v. Video Gaming Techs., Inc., 603 F.3d 1364, 1371-72 (2010) ("[W]e conclude that the district court's denial of Patent Rights' request for jurisdictional discovery resulted in actual and substantial prejudice to Patent Rights—premature dismissal of Patent Rights' suit—and therefore constituted an abuse of discretion.").
7 Chiron at 1260.
8 United States v. Kearney, 560 F.2d 1358, 1369 (9th Cir. 1977).
9 See Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1361 (Fed. Cir. 2004) ("[O]bjections point out to a district court its alleged error so that the district court has the first opportunity to correct the error." (citing Palmer v. Hoffman, 318 U.S. 109, 119 (1943)).
10 See, e.g., Gunn v. Minton, No. 11-1118, 2013 WL 610193 (Feb. 20, 2013).
11 28 U.S.C. §1651(a) (2012).
12 See, e.g., Marbury v. Madison, 5 U.S. 137, 157 (1803).
13 Will v. United States, 389 U.S. 90, 98 (1967).
14 Kerr v. United States Dist. Court, 426 U.S. 394, 402 (1976).
15 Mallard v. United States Dist. Court, 490 U.S. 296, 309 (1989).
16 Will, 389 U.S. at 95.
17 Leahy-Smith America Invents Act, H.R. 1249, 112th Cong. (2011).
18 The Eastern District of Texas often is regarded as a particularly plaintiff-friendly district. See Julie Creswell, "So Small a Town, So Many Patent Suits," N.Y. Times, Sept. 24, 2006 §3, at 1 ("Among the weightier issues behind the mushrooming of [the Eastern District of Texas's] patent docket is whether the elements that have made it expand—hungry plaintiffs' lawyers, speedy judges and plaintiff-friendly juries—are encouraging an excess of expensive litigation that is actually stifling innovation.").
19 See In re Stanley, Nos. 2011-m962, -m964, -m967 (Fed. Cir. Apr. 6, 2011) (per curiam) (nonprecedential); In Re Verizon Bus. Network Servs., Inc., No. 2011-m956, 2011 WL 1026623 (Fed. Cir. Mar. 23, 2011); In re Acer America Corp., 626 F.3d 1252 (Fed. Cir. 2010); In re Microsoft Corp., 630 F.3d 1361 (Fed. Cir. 2010) (per curiam); In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010); In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009); In re Hoffmann-La Roche, Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008).
20 In reLink_ A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011) (per curiam).
21 Id.
22 See 35 U.S.C. §299(b) (2012) ("[A]ccused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.").
23 In re EMC Corp., 677 F.3d 1351, 1354 (Fed. Cir. 2012) (granting the defendant's petition for mandamus).
24 Id. at 1358.
25 Id. at 1359.
26 Id. at 1360.
27 See 35 U.S.C. §299(c) (2012) ("A party that is an accused infringer may waive the limitations set forth in this section with respect to that party.").
28 In re Regents of Univ. of California, 101 F.3d 1386, 1388 (Fed. Cir. 1996) (citing Schlagenhauf v. Holder, 379 U.S. 104, 110 (1964)); see also generally In re EchoStar Comm. Corp., 448 F.3d 1294 (Fed. Cir. 2006); In re Pioneer Hi-Bred Int'l, Inc., 238 F.3d 1370 (Fed. Cir. 2001); In re Spalding Sports Worldwide, Inc., 203 F.3d 800 (Fed. Cir. 2000).
29 Marbury, 5 U.S. 137.
30 Order, In re Halliburton Co., Misc. No. 371, 1993 WL 118929, at *1 (Fed. Cir. Mar. 12, 1999).
31 35 U.S.C. §292 (2006).
32 In re BP Lubricants USA, Inc., Misc. No. 960, slip op. at 11 (Fed. Cir. Mar. 15, 2011).
33 Id.
34 Id.
35 Note, however, that the False Marking statute has since been amended to restrict the availability of qui tam actions. Compare 35 U.S.C. §292 (2012) with 35 U.S.C. §292 (2006). Nevertheless, if analogous legal circumstances arise, a petition for writ of mandamus may be the appropriate vehicle through which to resolve them.
36 See generally Brief for Appellant Halliburton Co., Wardlaw v. Halliburton Co., 1994 WL 592561 (Fed. Cir. Aug. 9, 1993) (No. 93-1322).
37 See supra n.31 and accompanying text.
38 See Brief for Appellant Halliburton Co., Wardlaw, 1994 WL 592561, at *23 ("I won't have anybody in my courtroom flagging answers to a witness on my stand. That is subordination of perjury, and I will have you indicted for that kind of thing. You're going to get the hell out of my courtroom now. You will vacate these premises. You are not going to be in this trial again. Do you understand me?").
39 Wardlaw v. Halliburton Co., No. 93-1322, 1994 WL 592561, at *6 (Fed. Cir. Oct. 31, 1994).
40 Fed. R. Civ. P. 59(e).
41 Id. 6(b)(2).
42 See generally L.E.A. Dynatech, Inc. v. Allina, 49 F.3d 1527 (Fed. Cir. 1995) (affirming the district court); Order Denying Defendants/Counter-Plaintiffs' Motion to Amend April 30, 1993 Order Granting Dismissal and Fees, L.E.A. Dynatech, Inc. v. Allina, No. 91-219-CIV-T-17B (M.D. Fla. Apr. 14, 1994); Defendants/CounterPlaintiffs' Motion to Amend April 30, 1993 Order Granting Dismissal and Fees, L.E.A. Dynatech, Inc. v. Allina, 91-219-CIV-T-17B (M.D. Fla. March 8, 1994).
43 Order Denying Defendants/Counter-Plaintiffs' Motion, supra n.43, at 3.
44 L.E.A. Dynatech, 49 F.3d at 1531.
45 See, e.g., ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1343-44 (Fed. Cir. 2012) ("[W]hen a party fails to make a Rule 50(a) motion, but brings a Rule 50(b) motion, the nonmoving party may only raise waiver on appeal if it also did so in opposing the Rule 50(b) motion. ClearValue's opposition to Pearl River's Rule 50(b) motion did not raise waiver. As a result, we hold that ClearValue cannot argue waiver on appeal and that Pearl River is not barred from presenting its invalidity arguments." (citations omitted)); United States v. Delgado-Garcia, 374 F.3d 1337, 1340 (D.C. Cir. 2004) ("[T]hese pleas waived all of appellants' claims. However, the government does not advance the argument that the unconditional pleas waived appellants' claim . . . The government has thus waived its waiver argument on that point."); United States v. Hollingsworth, 27 F.3d 1196, 1203 (7th Cir. 1994) (en banc) ("If Hollingsworth waived entrapment by putting all his eggs in the 'fundamental fairness' basket—and maybe he did waive it—the government bailed him out by waiving waiver."); United States v. Malin, 908 F.2d 163, 167 (7th Cir.) (finding that the government had waived waiver to objections involving evidence and jury instruction), cert. denied, 498 U.S. 991 (1990).
46 Fed. R. Civ. P. 50(a)(1).
47 See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107 (Fed. Cir. 2003) ("In view of a litigant's Seventh Amendment rights, it would be constitutionally impermissible for the district court to re-examine the jury's verdict and to enter JMOL on grounds not raised in the pre-verdict JMOL.").
48 Fed. R. Civ. P. 50(a)(1).
49 Cf. id.; Echeverria v. Chevron USA, Inc., 931 F.3d 607, 612 (Fed. Cir 2004) ("Because the purpose of Rule 50 is, in part, to weigh the sufficiency of the evidence before the case is submitted to the jury, it is essential that the nonmoving party be permitted to present all of its evidence.").
50 Fed. R. Civ. P. 50(b).
51 DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1309 (Fed. Cir. 2006) ("[The Federal Circuit] reviews a trial court's JMOL rulings after a jury verdict by reapplying the district court's own standard.").
52 Jurgens v. McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991) ("We first presume that the jury resolved the underlying factual disputes in favor of the verdict winner and leave those presumed findings undisturbed if they are supported by substantial evidence. Then we examine the legal conclusion de novo to see whether it is correct in light of the presumed jury fact findings." (internal citations omitted)).
53 Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984), cert. denied, 469 U.S. 857 (1984).
54 Id.
55 Id.
56 Odetics, Inc. v. Storage Techs. Corp., 185 F.3d 1259, 1269 (Fed. Cir. 1999).
57 See, e.g., Monsanto Co. v. EI DuPont de Nemours & Co., No. 4:09-cv-00686-ERW, slip op. at 13 (E.D. Mo. Nov. 2, 2012) ("The law on this issue is clear. Permitting Pioneer to make its motions for judgment as a matter of law for the first time in its post-trial briefs would be fundamentally prejudicial to Monsanto, as Pioneer's failure to argue these motions in a timely fashion deprived Monsanto of the opportunity to cure any deficiency in its case before the jury returned its verdict.").
58 See Fed. R. Civ. P. 50(b) ("If the court does not grant a motion for judgment as a matter of law made under Rule 50(a), the court is considered to have submitted the action to the jury subject to the court's later deciding the legal questions raised by the motion."); supra note 48 and accompanying text.
59 See generally Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098 (Fed. Cir. 2003) (refusing to review an obviousness issue because the appellant did not raise the issue in its Rule 50(a) motion).
60 See Johnson v. Bekins Van Lines Co., 808 F. Supp. 545, 547 (E.D. Tex. 1992) ("[A] motion [for JMOL] may be made at the close of the evidence offered by the movant's opponent, but if the movant later introduces evidence, then the motion must be renewed at the close of all evidence."), aff'd mem., 995 F.2d 221 (5th Cir. 1993), cert. denied, 510 U.S. 977 (1993).
61 Duro-Last, 321 F.3d at 1105.
62 Fed. R. Civ. P. 50(a)(2).
63 Id. 50(b).
64 Id. 6(b)(2). Rule 50(b) motions are tied to Fed. R. App. P. 4, thereby implicating the appellate timeline. That is why extensions are not permitted.
65 See Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394, 401 (2006) ("[T]he 'requirement of a timely application for judgment after verdict is not an idle motion' because it 'is . . . an essential part of the rule, firmly grounded in principles of fairness.'" ( quoting Johnson v. New York, New Haven & Hartford R.R. Co., 344 U.S. 48, 52 (1952))).
66 Fed. R. Civ. P. 50(c)(1).
67 Gasperini v. Center for Humanities, Inc., 518 U.S. 415, 433 (1996) ("'The trial judge in the federal system,' we have reaffirmed, 'has . . . discretion to grant a new trial if the verdict appears to [the judge] to be against the weight of the evidence.'" (alterations in original) (quoting Byrd v. Blue Ridge Rural Elec. Coop., 356 U.S. 525, 540 (1958))).
68 R.R. Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1511 (Fed. Cir. 1984) ("[Under the circumstances of this case], review for sufficiency of evidence is extremely limited or non-existent, [and] prejudicial legal error must be shown to have occurred in the conduct of the trial.").
69 Fed. R. Civ. P. 50(c)(2).
70 Id. 59(a)(2).
71 Oscar Mayer Foods Corp. v. Conagra, Inc., 869 F. Supp. 656, 660 (W.D. Wis. 1994), aff'd on other grounds, 45 F.3d 443 (Fed. Cir. 1994), cert. denied, 516 U.S. 812 (1995).
72 Fed. R. Civ. P. 59(d).
73 Id. 59(b), (d), (e).
74 Id. 6(b)(2). Rules 59(b), 59(d), and 59(e) motions are tied to Fed. R. App. P. 4, thereby implicating the appellate timeline. That is why extensions are not permitted.
75 Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1374 (Fed. Cir. 2001).
76 Vulvan Eng'g Co. v. Fata Aluminum Co., 278 F.3d 1366, 1379 (Fed. Cir. 2002).
77 Biodex Corp. v. Loredan Biomed., Inc., 946 F.2d 850, 853-54 (Fed. Cir. 1991) ("There is no dispute among the circuits, nor in our own jurisprudence, that a judgment should be altered 'because of a mistake in jury instructions only if the error was prejudicial' and that we must 'look to the entire jury charge . . . to determine whether the instructions fairly stated the legal principles to be applied by the jury.'" (quoting Smiddy v. Varney, 665 F.2d 261, 265 (9th Cir. 1981), cert. denied, 459 U.S. 829 (1982))).
78 Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1281 (Fed. Cir. 2000) (internal citations omitted).
79 See Advanced Display, 212 F.3d at 1281-82.
80 Fed. R. Civ. P. 52(a), (b).
81 9A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure §2582 (2d ed. 1994); see also Fed. R. Civ. P. 52(b) ("The motion may accompany a motion for new trial under Rule 59.").
82 Fed. R. Civ. P. 52(a)(1).
83 Id.
84 See Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed. Cir. 1997) ("Rule 52(a)'s purpose is, inter alia, to provide the appellate court with an adequate basis for review.").
85 See Consolidated Aluminum Corp. v. Foseco Int'l, Ltd., 910 F.2d 804, 814 (Fed. Cir. 1990) ("A remand, with its accompanying expenditure of additional judicial resources in a case thought to be completed, is a step not lightly taken and one that should be limited to cases in which further action must be taken by the district court or in which the appellate court has no way open to it to affirm or reverse the district court's action under review." (emphasis added)).
86 Fed. R. Civ. P. 52(a)(6).
87 See Evans v. Suntreat Growers & Shippers, Inc., 531 F.2d 568, 570 (Temp. Emer. Ct. App. 1976) ("Appellants rightly contend that [their failure to file a proper Rule 52 motion] does not prevent them from attacking a finding which is erroneous. But . . . they cannot complain of lack of specificity in the findings, when they proposed nothing to this effect.").
88 See id.; United States v. Tosca, 18 F.3d 1352, 1355 (6th Cir. 1994) ("It is a general principle of appellate jurisprudence that a party desiring more particularized findings at the trial court level must request them from the trial court."); Hollinger v. United States, 651 F.2d 636, 640-41 (9th Cir. 1981) ("[T]he government failed to move the district court to amend its findings or make additional findings. Thus the government cannot now complain of the lack of specificity in the finding. The government can, however, raise the question of sufficiency of the evidence to support the finding of total disability whether or not the government objected to the finding.").
89 See Icicle Seafoods, Inc. v. Worthington, 475 U.S. 709, 714 (1986) ("If the Court of Appeals believed that the District Court had failed to make findings of fact essential to a proper resolution of the legal question, it should have remanded to the District Court to make those findings.").
90 Sonken-Galamba Corp. v. Atchison, T. & S. F. Ry., 34 F. Supp. 15, 16 (W.D. Mo. 1940), aff'd, 124 F.2d 952 (8th Cir. 1942), cert. denied, 315 U.S. 822 (1942); accord Tosca, 18 F.3d at 1355 ; Reliance Finance Corp. v. Miller, 557 F.2d 674, 681-82 (9th Cir. 1977); see also Glaverbel Société Anonyme v. Northlake Mktg. & Supply Co., 45 F.3d 1550, 1555 (Fed. Cir. 1995) ("When a party remains silent after full trial and decision and then complains about incomplete findings, the appellate tribunal should ascertain whether any absent findings not only were essential to resolution of the issue, but were not made by the trial judge." (citing Consolidated Aluminum, Evans, and Tosca favorably)); Consolidated Aluminum, 910 F.2d at 814 n.9 ("Rule 52(b) . . . provides for post-judgment motions for findings not made. Counsel should not simply ignore that rule and head off to the appellate court to seek a remand for the making of those same findings.").
91 See Glaverbel, 45 F.3d at 1556 ("It was not the trial judge's burden, but that of [the defendant], to point out any aspects requiring particular attention.").
92 See id. ("[A]n assertion that findings were incomplete must include a reasonable basis . . . ").
93 Fed. R. Civ. P. 52(b).
94 Id. 6(b)(2). Rule 52(b) motions are tied to Fed. R. App. P. 4, thereby implicating the appellate timeline. That is why extensions are not permitted.
95 White v. New Hampshire Dep't of Emp't Sec., 455 U.S. 445, 450 (1982).
96 Ajinomoto Co., Inc. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1350 (Fed. Cir. 2000); see also Monsanto Co. v. EI DuPont de Nemours & Co., No. 4:09-cv-00686-ERW, slip op. at 14–15 (E.D. Mo. Nov. 2, 2012) ("[Certain sections] of Pioneer's brief, although purportedly brought under Fed. R. Civ. P. 59(e), are not asking for remittur on grounds that the verdict was clearly excessive; resulted from passion, bias or prejudice; or was so excessive to shock the judicial conscience of the court. Rather, these sections argue that the damages award must be set aside because it was based on inadmissible evidence that should not have been presented to the jury. Basically, in the argument of these sections, Pioneer is asking this Court to determine that there was not a sufficient basis for submission of damages to the jury . . . Pioneer has waived its ability to have this Court consider whether the jury's award is supported by the evidence by failing to file a pre-verdict JMOL on damages. Accordingly, [the relevant sections of Pioneer's brief] shall be stricken." (citation omitted)); Alcon Research, Ltd. v. Barr Labs., Inc., No. 09-318-LDD, slip op. at 13–14 (D. Del. Mar. 16, 2012) ("The parties paid scant attention to this issue in their post-trial briefs . . . Now, Barr has filed a Rule 59 motion and a lengthy supporting memorandum citing no fewer than twenty-two (22) cases and arguing that our resolution of the matter constituted a clear error of law that we must correct to prevent manifest injustice. This stretches the bounds of permissible Rule 59 practice. Rule 59(e) is properly used for error correction, not litigation in the first instance. However, since the parties did raise this issue at trial and in their post-trial briefs, albeit in a cursory manner, we will reach the merits of Barr's motion." (citations omitted)).
97 N. River Ins. Co. v. CIGNA Reinsurance Co., 52 F.3d 1194, 1218 (3d Cir. 1995) (alterations in original) (quoting Natural Res. Def. Council v. EPA, 705 F. Supp. 698, 702 (D.D.C. 1989)); accord Servants of Paraclete v. Does, 204 F.3d 1005, 1012 (10th Cir. 2000); 389 Orange St. Partners v. Arnold, 179 F.3d 656, 665 (9th Cir. 1999); GenCorp, Inc. v. Am. Int'l Underwriters, 178 F.3d 804, 834 (6th Cir. 1999); Collison v. Int'l Chem. Workers Union, Local 217, 34 F.3d 233 (4th Cir. 1994).
98 Servants of Paraclete, 204 F.3d at 1012.
©2013 Wolters Kluwer. Originally published by Intellectual Property & Technology Law Journal. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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