Aventis Pharma S.A. v. Hospira and Apotex (CAFC 2011-1018, -1047) precedential; Mayer, Prost, and Moore (author)

Aventis sued Apotex for patent infringement. That case was consolidated with another suit against Hospira Inc. involving the same patents. On September 27, 2010, the district court entered final judgment in favor of Apotex and Hospira, finding that all the asserted claims of the patents in suit were invalid for obviousness and unenforceable due to inequitable conduct. Aventis appealed to this court. Apotex filed a "protective" crossappeal to preserve its ability to challenge the district court's finding that some of the asserted claims were not invalid for double-patenting, in the event that this court vacated and reversed the district court's judgment finding Apotex's patents invalid for obviousness and unenforceable due to inequitable conduct.

On November 1, 2010, Aventis contacted Apotex and requested that it voluntarily withdraw the "protective" cross-appeal. Aventis explained that our Practice Notes to Federal Rule of Appellate Procedure 28.1 explicitly warn against filing a cross-appeal that does not seek to modify or overturn the judgment of the trial court. Aventis also pointed out that our precedent in TypeRight indicates that it is improper to use a cross-appeal to seek review of either non-infringement or alternative invalidity arguments when the relevant claims of a patent are found invalid. TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1156-57 (Fed. Cir. 2004). Aventis advised Apotex that if forced to move for dismissal of the crossappeal, Aventis will seek the attorneys' fees and costs incurred in connection with the dismissal.

Apotex emailed back "that it still believed its cross-appeal was proper." Not so.

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. A crossappeal 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." Bailey v. Dart Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002); see also TypeRight, 374 F.3d at 1156 ("A party may crossappeal if adversely affected by the appealed judgment in some particular which it seeks to have modified."). In Bailey we explained that 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." Bailey, 292 F.3d at 1362.

There we have it. An appellant gets an opening brief (14,000 word limit), with appellee response (likewise). But the appellee gets the last word, with a reply brief (7,000 word limit). A cross-appeal would let the appellee word up the appellant by 9,500 words, and throw in the last squib.

Our practice with respect to cross-appeals does not limit the arguments that can be presented on appeal. Attorneys are free to devote as much of their responsive briefing as needed to flesh out additional arguments and alternative grounds for affirming the judgment on appeal. Id. They are not free, however, to game the system by filing a cross-appeal to obtain the final word: this is neither fair to the appellant nor an efficient use of the appellate process.

Microsoft was the gamer in Typeright, cross-appealing after an asserted patent against it was found invalid. Citing case law back to 1939, the CAFC there stated:

A party that is not adversely affected by a judgment lacks standing to appeal... [A] cross-appeal is proper only when acceptance of the argument advanced "would result in a reversal or modification of the judgment rather than an affirmance."

Here's an argument sure to raise a hackle with a CAFC panel.

Apotex incorrectly argues that our practice is in material conflict with other circuits. Other circuits may allow a conditional cross-appeal as a means to raise additional arguments which do not expand the scope of the judgment. We also provide the opportunity to raise additional arguments, but require parties to raise such arguments in their primary briefing. Thus, parties appearing before us have the same substantive opportunity to make their arguments, although the means used to do so differs in form.

To the nub.

Turning to the case at hand, the district court held all asserted claims invalid for obviousness and both patents in suit unenforceable, yet Apotex nevertheless filed a cross-appeal regarding (1) additional claims for invalidity and (2) claims of non-infringement directed to the same claims. "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 noninfringement." TypeRight, 374 F.3d at 1157. Our precedent is clear: the conditional cross-appeal is improper, and we grant the motion to dismiss.

Apotex's conduct in this case is particularly egregious given that Aventis explained that TypeRight prohibits exactly the type of cross-appeal filed. Given an opportunity to withdraw the improper cross-appeal, Apotex instead claimed it could distinguish TypeRight from the present case. Apotex's distinctions are unavailing: merely styling their appeal as a conditional cross-appeal does not distinguish TypeRight.

Exception makes the rule.

As Apotex points out, we have not sua sponte struck every improperly filed cross-appeal. This infrequent leniency is not an invitation to flaunt our practice and precedent, and the improper use of a cross-appeal directly contrary to our precedent may meet with sanctions.

Cross-appeal dismissed. Apotex's request for attorneys' fees and costs will be considered "in due course."