The first five articles in this series discussed the importance of the initial casting of the IP litigation team, the first steps in laying the groundwork to ensure that ongoing litigation expenses are controllable and predictable, and some ideas for trial that can significantly reduce litigation costs. This article provides some ideas for limiting costs during an appeal and other litigation matters in the future.
Now that your trial is over and you have hopefully received a favorable jury verdict, you can relax if the other side is not going to appeal. However, if the opposing party is going to appeal your favorable verdict, or if you did not receive a favorable verdict, your next steps will be important in determining how much the appeals process could cost your company.
Should you appeal?
If you receive an unfavorable final decision on the merits you will have to decide whether to appeal or to accept the decision. Before you incur the additional expenses associated with the appeal, you should work with outside counsel to honestly evaluate your chances of success on appeal. For example, even though you might feel the judge committed errors, were those errors significant enough to rise to the level of reversible error? Lower courts are generally given significant discretion by appellate courts, and establishing that reversible error occurred can be an uphill battle. One notable exception to this overall deference is in the patent arena, however: the Federal Circuit Court of Appeals has a relatively high rate of reversal of district courts on often case-dispositive issues such as claim construction, patent validity and infringement. If you determine that the district court likely committed reversible error, and that this error was outcome-determinative, then an appeal may be warranted.
If you or the opposing party appeals
Some cost-saving measures are highly effective at mitigating costs during the appeal process, regardless of whether you are the appellant or the appellee.
First, as fully explored in the fifth article in this series, you should work with outside counsel to choose your arguments carefully. Going with the “kitchen sink” approach is never a good idea. Although it might be tempting to fully explain every error the judge made, you should resist this temptation and focus your time and efforts on your most effective arguments, with particular attention to any errors that were outcome-determinative. By including too many arguments on appeal, not only brief-writing and brief-preparation costs are increased, but you may inadvertently irritate the appellate judge.
Second, working in a cooperative manner with opposing counsel can also save costs in the appeals process. For example, many jurisdictions allow counsel for appellant and appellee to submit a joint appendix to the appellate court. Appendices can be very time consuming and expensive to create, but those costs may be shared if the parties agree on a joint submission.
Third, although it might seem counterintuitive, counsel may save expense by hiring a third-party vendor that specializes in assisting outside counsel in the formatting and binding of the appellate briefs and appendices. For example, some circuits require that each appellant and appellee submit numerous bound hard copies of their briefs. Certain vendors specialize in this process and can be much cheaper to use when compared with using outside counsel for the same tasks. Likewise, the vendors are generally very familiar with the numerous local rules for that circuit’s appellate court and are quite effective at ensuring compliance with all the local rules such that the briefs are accepted on the first go-round and the need for costly reprints is avoided.
Fourth, counsel should determine if oral argument is truly necessary. In many circuits oral argument is rarely granted. Moreover, many practitioners suspect that oral argument is frowned upon by the appellate judges, who are confident that the case may be decided on the briefs and see the oral argument as a waste of time. Michael A. Wolff writes in From the Mouth of a Fish: An Appellate Judge Reflects on Oral Argument, “We are at a point in our history when oral argument in appellate courts has greatly shrunk.” Similarly, Warren D. Wolfson in Oral Argument: Does It Matter? pointed to “a growing disdain for oral arguments.”
Finally, after the litigation has fully concluded, inside and outside counsel should evaluate what worked and what didn’t, and if applicable, how to avoid the problem in the future. For example, inside and outside counsel should have honest conversations with each other to determine what strategies were successful, what ideas should have been pursued, and what level of value outside counsel provided throughout the litigation process. Second, if similar litigation involving similar issues may be possible in the future, outside counsel should prepare a summary memorandum describing key successful arguments or other tips and tricks that proved helpful. This summary could be referenced by a new litigation team by quickly updating new counsel and preventing unnecessary work.
Last, if inside counsel has not already consulted with outside counsel to identify any internal problems or policies that contributed to the existence or expense of the litigation, the conclusion of the case is a good time to assess these policies or occurrences. By assessing and improving corporate policies, future lawsuits may well be avoided.