Joint Appendix Practice

By Jason Rantanen

ClearValue, Inc. v. Pearl River Polymers, Inc. (Fed. Cir. 2011) (nonprecedential order) Download 2011-1078.8-1-11.1

The preparation of joint appendices in connection with Federal Circuit appeals is an instance where rules and practices often collide.  Technically, parties may only include the specific record pages actually referenced in the parties' briefs.  See Federal Circuit Rule 30(a)(2)(B).  With few exceptions, no additional context pages are permitted by the rules.  For example, the joint appendix rules technically preclude the addition of the cover page of motions that contain pages being cited.  Prior art references may not be included in their entirety – only the specific pages that are referenced – unless they are a patent.  And it would be a violation of the rules to include the page before or after a cited page of a textbook or technical manual.  The main exception relates to "transcript pages," for which the rules encourage parties submit sufficient surrounding pages to provide context for a referenced excerpt.  In addition, the court's rules prohibit "indiscrininate referencing in briefs to blocks of record pages," so parties may not include large quantities of the record via broad citation.  FCR 30(a)(2)(C).

In reality, appellants and appelles sometimes disregard these strict rules, and instead make some attempt to provide enough context so that cited materials are meaningful to the court.  Parties risk incurring the court's wrath should they go too far, however, as illustrated by Judge Prost's order in ClearValue.  ClearValue did not simply attempt to provide a few context pages; rather it apparently indiscriminately cited to an entire 195-page training manual, an entire 344-page motion for summary judgment, and an entire 797-page transcript.

This practice violated Federal Circuit Rule 30, and the court ordered ClearValue to reimburse the appellant for its copying costs, to correct its briefs to cite only those pages of the documents that are relevant to the issues it raises, and to prepare a new joint appendix containing only those items cited by the parties in their briefs, along with a few pages before and after the relevant testimony paassages for context. 

While I agree with the court's response in this particular circumstance, given the quantity of likely unnecessary material that ClearValue required be included in the appendix, the court's opinion highlights the jumbled nature of the joint appendix rule.  For some materials (patents and testimony), context is allowable; for everything else, it is not.  Unless there is a good reason to draw this line, perhaps the rule should be revised to apply equally to all materials included in the appendix. 

Thanks to Hal Wegner for pointing out this nonprecedential order in his email newsletter.

4 thoughts on “Joint Appendix Practice

  1. TJ, my completely wild guess is that this rule stemmed from some crazy big JA’s in the ’90s, and some judges and litigants who were really angry about them. Now we’re stuck with an overly restrictive rule.

  2. The irony is that while I was clerking, often the problem was that the joint appendix had far too little context and I was forced to dig through the entire record. I don’t think I was alone in the frustration. I wonder why the judges keep the rule, which I sense is honored in its breach.

  3. That’s surprising because notwithstanding the clear mandate of FRAP 39 the Fed. Cir. will screw a prevailing Appellant out of costs at their mere whimsy, even when the Appellee has not grossly over cited to the record.

  4. This is a very frustrating rule:

    The following must not be included in the appendix
    except by leave of the court, and any motion for
    leave must state the number of pages requested
    to be included:

    (i) briefs and memoranda in their entirety
    (except as otherwise provided in Federal
    Circuit Rule 30);

    – Fed. Cir. R. 30(a)(2)(E)

    I’ve had two cases where the positions a party took in a memo of P&As were important on appeal. I just went ahead and included the memoranda, even though that might have been improper under a strict reading of this rule. No one complained in either case.

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