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A Cross-Appeal Is Improper When It Would Not Expand the Scope of a District Court Judgment in Favor of the Cross-Appellant

11-1018, -1047
March 23, 2011

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Last Month at the Federal Circuit - April 2011

Judges: Prost, Mayer, Moore (author)

[Appealed from: D. Del., Chief Judge Sleet]

In Aventis Pharma S.A. v. Hospira, Inc., Nos. 11-1018, -1047 (Fed. Cir. Mar. 24, 2011), the Federal Circuit granted Aventis Pharma S.A. and Sanofi-Aventis U.S., LLC’s (collectively “Aventis”) motion to dismiss Apotex Inc. and Apotex Corp.’s (collectively “Apotex”) improper cross-appeal because, if successful, the cross-appeal would not expand the district court’s judgment in Apotex’s favor.

Aventis separately sued Apotex and Hospira, Inc. (“Hospira”) for infringing the same patents.  After consolidating the two cases, the district court entered final judgment in favor of Apotex and Hospira, finding that all asserted claims of the patents-in-suit were invalid for obviousness and unenforceable due to inequitable conduct.  The district court, however, also found some of the asserted claims not invalid for double patenting.  Aventis appealed to the Federal Circuit, and Apotex filed a “protective” cross-appeal to preserve its ability to challenge the district court’s double-patenting finding if the Federal Circuit reversed the obviousness and inequitable conduct judgments.

Prior to filing its motion to dismiss, Aventis contacted Apotex and requested that Apotex voluntarily withdraw its cross-appeal, citing the Federal Circuit’s Practice Notes to Federal Rule of Appellate Procedure 28.1 and TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151 (Fed. Cir. 2004).  Aventis explained that the Court’s Practice Notes warn against filing a cross-appeal that does not seek to modify or overturn the judgment of the trial court.  Aventis also noted that TypeRight instructed against using a cross-appeal to seek review of either noninfringement or alternative invalidity arguments when the relevant claims of a patent are found invalid.  Apotex rejected Aventis’s request, stating that it believed its cross-appeal was proper and claiming that TypeRight could be distinguished (without providing any citation or explanation).  Apotex also claimed, without citation, that the Court’s precedent supported its position and that other appellate courts allow conditional cross-appeals.  Aventis subsequently moved to dismiss.

The Federal Circuit began by noting:  “Our precedent consistently warns against the improper use of a cross-appeal to reach issues that do not otherwise expand the scope of the judgment.”  Slip op. at 3.  The Court explained that a cross-appeal may only be filed “when a party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary under the judgment.”  Id. (quoting Bailey v. Dart Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002)).  The Court also explained the rationale behind its practice—“an unwarranted cross-appeal ‘unnecessarily expands the amount of briefing,’ and also gives ‘the appellee an unfair opportunity to file the final brief and have the final oral argument, contrary to established rules.’”  Id. (quoting Bailey, 292 F.3d at 1362).  The Federal Circuit noted that its practice does not limit the arguments that can be presented on appeal and that the responsive briefing is the proper means for raising alternative grounds for affirming a judgment.  In the Court’s view, this opportunity is thus substantively the same as that provided in other appellate circuits, even if the means used to do so differs in form.

Turning to the case at hand, the Federal Circuit reiterated that although the district court held all asserted claims invalid for obviousness and all patents-in-suit unenforceable for inequitable conduct, Apotex nevertheless filed a cross-appeal regarding (1) additional claims for invalidity and (2) claims of noninfringement directed to the same patent claims.  The Court stated that its precedent is clear: “‘Where, as here, the district court has entered a judgment of invalidity as to all of the asserted claims, there is no basis for a cross-appeal as to either (1) additional claims for invalidity or (2) claims of
non-infringement.’”  Id. at 4 (quoting TypeRight, 374 F.3d at 1157).  The Federal Circuit also rejected Apotex’s attempt to distinguish TypeRight, finding Apotex’s conduct particularly egregious because Aventis had explained that TypeRight prohibited the precise type of cross-appeal filed by Apotex.  Finally, the Court noted that even though it has not sua sponte struck every improperly filed cross-appeal, “[t]his infrequent leniency is not an invitation to flaunt [the Court’s] practice and precedent, and the improper use of a cross-appeal directly contrary to [the Court’s] precedent may meet with sanctions.”  Id. at 5. 

Accordingly, because Apotex’s cross-appeal, if successful, would not expand the scope of the district court’s judgment in Apotex’s favor, the Federal Court granted Aventis’s motion and dismissed Apotex’s improper cross-appeal.