By Jason Rantanen
Aventis Pharma S.A. v. Hospira (Fed. Cir. 2011) (precedential order) Download 11-10181047 order
Panel: Prost, Mayer, and Moore (author)
The Federal Circuit has repeatedly warned about improper cross-appeals. Last week, the court issued a precedential order expressing its frustration with appellees who engage in this practice in violation of the court's clear rules, threatening sanctions should future parties continue to disregard its warning.
Aventis is in the process of appealing a judgment finding all of the asserted claims of the patents involved in its infringement suits against Apotex and Hospira invalid for obviousness and unenforceable due to inequitable conduct. In response, Apotex filed a cross-appeal to preserve its ability to challenge the district court's ruling that some of the asserted claims were not invalid on another ground, double-patenting, and to argue noninfringement. After Apotex declined to withdraw its cross appeal, Aventis filed a motion to dismiss.
The motions panel was unsympathetic to Apotex. "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 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.”" Slip Op. at 3 (quoting Bailey v. Dart Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002). Apotex's conduct was particularly egregious because it was exactly the type of cross-appeal that the court previously ruled improper in TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004). That rule, the CAFC noted, is clear. "Where  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." Slip Op. at 4, quoting TypeRight at 1157.
After concluding that Apotex's attempts to distinguish TypeRight were without merit, the court issued a strongly-worded warning about the practice of filing improper cross-appeals:
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. We understand Aventis plans to seek attorneys’ fees and costs incurred in connection with the motion to dismiss Apotex’s improper cross-appeal, and will evaluate its request in due course.
Slip Op. at 5.
Why do parties file cross appeals?
Although parties may file improper cross appeals because they are legitimately concerned about waiving the ability to challenge a district court ruling, cross-appeals also give appellees procedural benefits. In a typical Federal Circuit appeal, the appellant is permitted to file a 14,000 word opening and a 7,000 word reply brief while the appellee may file one 14,000 word opposition brief. When a cross-appeal is involved, the appellee may file a 16,500 word opposition brief and a 7,000 word cross-appeal reply (the appellant is allotted 14,000 words for its reply). This give the appellee an extra 9,500 words – a precious commodity – along with the last word on the cross-appeal issues. But obtaining this advantage in contravention of the rules constitutes gaming the system – and as the court in Aventis noted, "this is neither fair to the appellant nor an efficient use of the appellate process." Slip Op. at 3.
Apotex likely got off lucky. If the court had waited until the briefing was complete, Apotex could have had its cross-appeal arguments disregarded altogether, even those it could have raised as alternate grounds for affirmance. As the court noted, however, Apotex will now be able to make those arguments in its appellees' brief if it so chooses. And should the court decline to grant Aventis's request for attorneys' fees and costs, its opinion may have little deterrant effect – unless the court steps up enforcement or imposes some noteworthy sanction for blatantly improper cross appeals, appellants may continue to flaunt its practice in order to gain the procedural advantage a cross-appeal offers.