Millions of Papers, Papers for Me

Stuck in the 19th Century, the Federal Circuit Rule 30(a) requires appellants to submit six paper copies of the appendix to the briefs. In a recent filing, pro se appellant Urvashi Bhagat asked the court to waive this requirement in favor of another form of out-dated technology known as “CDROM.”  Bhagat’s argument is that the 1,000+ pages of her appendix, would be cost prohibitive, unwieldy, and an unwarranted consumption of paper.   The copying and delivery cost here really is several thousand dollars — easily outweighing the $500 appeal filing fee.

In any event, the Federal Circuit has rejected the motion: “The motion is denied.  Six paper copies of the joint appendix will be due in accordance with Federal Circuit Rule 30(a)(5).” [CDROMBRIEF] [DenialCDROM]

Despite my suggestion that paper is archaic – I’ll readily admit that I also usually prefer a set of well-tabbed binders over a large PDF — except for keyword searching.  I also don’t have a CDROM device.  Perhaps my difficulty with electronic form is that I do not have the right software/tech on hand – suggestions?

48 thoughts on “Millions of Papers, Papers for Me

  1. I prefer clay tablets when attorneys submit arguments to me. It keeps the arguments short and precise.

    Did anyone consider why one might keep it this way, paper, for the reasons I just stated above?

    You lawyers love to drone on and on and on and on and on and on…..before one makes a ruling.

    1. I prefer clay tablets when attorneys submit arguments to me. It keeps the arguments short and precise.

      That’s smart. Of course, you could just impose a word count limit, like the Federal Circuit does.

  2. What we need is something like Google Glass that would create a virtual desktop that we could put books on, get closer to by moving closer or by using hand motions – with the ability to write on documents by using a virtual pen.

    We see this in movies all the time. It is about time that we made fiction, fact.

      1. Anon, interesting question and I would like to answer it by saying I saw the movie Passengers tonight. Let me say that that was one of the best science fiction films I have ever seen because, in addition to having great acting and a good story, it stuck amazingly close to science fact in its portrayal of a future starship traveling between stars because it had extended before it a shield designed to vaporize debris before it could strike the ship. According to the movie, the ship was traveling at half the speed of light, which is quite fast considering that the speed of light is 671 million mph.

        One might argue that but I am saying here is completely beyond science because no one can construct a shield as illustrated in the movie. However, I believe I know how to construct such a shield. Does anybody else know how it could be done?

    1. That’s “just software” and not eligible under 101. So, no one will make the sort of investment needed. Sorry. Go sit on the bench there, next to the jet packer wanna bes.

  3. 1) “Millions of pages, pages for me” sounds closer to the song

    2) A USB DVD drive is 20 USD. Suggestion would be to buy one.

    3) Why can’t people just upload pdfs of the document to the internets?

  4. I agree that paper has its benefits, but a blanket rule of six hard copies of everything seems excessive.

  5. Dennis:
    You have hit on another inexcusable practice of the CAFC (in addition to the Rule 36 affirmances).
    Attorneys spend a huge amount of time haggling over what to include in the appendix, and any supplemental appendix, and in coordinating with professional printers regarding the proper format, delivery, and service of the appendix and the many copies (usually far more than six) of the appendix. Further, citations to the record in the appeal briefs must be to the appendix page numbers, which requires an attorney to wade through the appendix ad nauseum to find the pages evidencing support for the citation.
    In addition, the CAFC requires the preparation of a completely separate appendix and copies devoid of confidential information subject to any protective order.
    Once a few trees have been obliterated in depositing many copies of the appendices at the CAFC, the copies usually go unread and to waste.
    Since the USPTO and the district courts all use electronic filing and since CAFC has behind-the-scenes access to entire record in the lower tribunals, including all confidential material, the citation in appeal briefs could be to the docket entry number in the lower tribunal and the associated page numbers. In the infrequent event there is a dispute or uncertainty about a relevant part of the record, the CAFC may electronically find the needed record.
    I estimate that each year over a hundred million dollars are wasted on attorneys fees in preparing, printing, and citing to the appendix and tens of millions of dollars are wasted in printing charges.
    The CAFC should be castigated for continuing such an archaic, indefensible practice.

    Bob Purcell

  6. The blog post author admits that he “usually prefer[s] a set of well-tabbed binders over a large PDF — except for keyword searching.” The question is not whether it is preferable to have an electronic copy OR a paper copy; it’s whether it is preferable to have ONLY an electronic copy vs. BOTH paper and electronic. If the author agrees that it’s preferable and convenient to have both, the follow-up question becomes who should bear the burden of printing the paper copies–the parties or the clerk’s office. I suggest that it should be the parties–the ones who are responsible for choosing how many hundreds of pages goes into the briefs and joint appendix. Moreover, the court usually awards costs (of printing) to the prevailing party, so in that sense the party most responsible for the headache (and typically least deserving of our sympathy) bears or defrays the cost of printing paper copies.

  7. Are the people who think physical copies with tabs have advantages over PDF documents unfamiliar with the use of “Bookmarks” in a PDF. For example, the chapters of the MPEP available from the USPTO website in PDF form include Bookmarks for each section that make it really easy to navigate around each chapter.

    This bookmark feature is also useful in navigating through the consolidated rules and laws PDFs, also available from the USPTO website.

    The PDF bookmarks are even easier to use than physical cabs, because you can easily scroll through them and, because they are not limited by the size of a physical tab, can include the full title of the MPEP, 37 CFR section or Title 35 Section for which they act as virtual tabs.

    1. This lengthy post explains the process he followed to comply with the court’s rules on his own rather than paying a printer a few thousand dollars.

      Those paper requirements are the kind of unbelievable, disgusting, extreme an@l-retentive, borderline psy ch0 tic rules-for-the-sake-of-rules cr@p that none of the Justices can defend. But someone should continually ask them to defend it until they come to terms with how obnoxious their procedures really are and begin to feel ashamed about them, as any reasonable human being would.

    2. The last “question presented” in the Greenspan petition was “Whether, this Court’s [the Supreme Court’s] Rules regarding document submission (e.g. Rule 33.1) and the various conflicting rules of lower courts serve the interests of justice in an age of instantaneous and costless information transmission over the internet.”

  8. The CAFC is ridiculous with its paper filing requirements. They didn’t even accept electronic filing until a few years ago. As a former clerk, I can tell you that I preferred electronic copies because they’re text searchable, and they didn’t clutter my office. The district courts are way ahead of the the CAFC in terms of electronic filing.

    1. The CAFC amended its rules last year to require a specific format for appendix pagination and cites to appendix materials in briefs (e.g., Appx001-Appx009). The reason for this specific format is that the court has software that will link the citations in the electronic version of briefs to the pages in the electronic version of the appendix.

      Given that change, the requirement for 6 paper copies seems even more archaic. Nevertheless, I’m sure there are at least a few judges who still work off of paper copies.

  9. Yes Dennis, totally agree, but the Federal Circuit is the best of the lot. They allow excerpting after briefing is complete, for a narrowly targeted joint appendix with just the important pages.

    I’m just completing a filing now in another (unnamed) U.S. circuit court. The appendix must be 27 volumes of paper, times three. I spoke with the responsible clerk’s office official simply asking if their court would be receptive to a motion to “use the Federal Circuit’s appendix rules” — that is, “please don’t make me kill all these trees!” The 27 volumes would reduce down to two to four, at worst. After the deputy checked with higher-ups, the answer came back: Such a motion would be denied. They want the paper.

  10. How else will they justify bilking the public for PACER, if they don’t have to pay anyone to scan all those documents in?

    1. Ha, funny. But the litigants themselves have to upload the pdfs to PACER. The expense on the court side is paying somebody to send out notices telling you that your filing was noncompliant because the 18th copy of your Certificate of Interest isn’t text-searchable.

  11. I think the bigger issue is the size of the party’s submissions… 1000+ pages is a *lot* for a judged to take in, regardless of the complexity of the case. The copying costs are just a byproduct of an excessively long submission.

    Despite their archaic nature, the existing rules encourage brevity. More should be done to limit the size of counsel’s submissions.

    1. My view is that the appendix is the evidence that supports your arguments on appeal. If a judge *might* want to look at some piece of evidence, then you need to cite to it and include it in the appendix. This is why you end up with lengthy appendix submissions in complex cases with a lot of issues.

      While technically under the rules the record on appeal is the record in the district court, as a practical matter, if you don’t include something in the appendix, the CAFC judges will never see it (or even think that it might exist).

  12. Quick comment, as I will be too busy to comment at greater length. Probably the only electronic “standard” that is almost universally used is PDF.

    Remember the posting on the Lexmark-related economic model had a link to a preprint on SSRN by Ivus, Lai and Sichelman. If you downloaded and started to read it, were you instantly alerted, from the first page of text or so that the document was almost certainly not generated using MS Word or equivalent software?

    Hint: if I am not mistaken (and I don’t think I am), the fonts are Computer Modern.

  13. Our offices have been paperless since some years before I joined our firm in 1999. I therefore have nearly two decades of paperless office experience.

    Our outgoing letters are signed with a pen, even though they are subsequently scanned and e-mailed. A standing joke is: “I’m afraid I can’t sign that letter!. Why not? I have not got a pen handy!”

    With references and other documents, my strong preference is for a PDF file. You can scan through the file page by page more rapidly than a WORD document. An electronic marker pen is provided by which significant passages can be highlighted and the marked up copy can be saved. You may be lucky and have a document with underlying text so that you can keyword search, although the patent specification copies downloadable from esp@cenet do not yet have this format. But if there is no underlying text, character recognition software will easily create a WORD file if needed.

    Presumably a 1000 page appendix would have a number of individual items. Each item could be saved as a separate pdf file, advantageously in category-related directories. The file and directory names could be customised for ease of navigation and finding of critical items which could also be copied to a separate small key items directory.

    Famously, Justice Douglas used to write many of his opinions on plane trips. If he were working today, he could copy the papers on a case to his laptop, and if he needed to take them home he could copy them to a PEN-drive which he could put in his pocket. Much better than a heavy briefcase with three lever-arch files of paper.

    Justice needs to find its way into the late 20th century, if not the 21st century.

    1. Nah, just take a quick trip to the local university coffee shop and offer some pizzas. Over the weekend, all of your problems will be solved.

  14. Movin’ to the country … c’mon, did no one else catch the reference? We’re going to eat a lot of peaches.

  15. Why can’t the appendix be created/converted into .pdf format and uploaded to the court’s web site?

    1. The Appendix IS required to be filed via ECF. Not sure if this Pro Se party has that access (or if there is an exception to the rule for Pro Se parties), but the paper copy requirement is in addition to e-filing via ECF in the Federal Circuit.

      The paper requirement is not unique to the Federal Circuit. The Kraft Foods merits brief and amici briefs in support of Kraft Foods that this blog doesn’t want to cover (despite providing full coverage and analysis of the TC Heartland briefs and their amici briefs and with the oral argument this upcoming Monday) had a requirement of 40 paper copies each be filed with the Supreme Court, presumably so that each Justice and their Clerks has hard copies readily accessible to them.

      Getting appellate courts into the 21st century, sadly, does not happen overnight.

        1. I was referring to the fact that the day after the TC Heartland amici briefs were submitted, a lengthy analysis of those briefs was posted here, yet nothing (so far? ever?) when the Kraft amici briefs were submitted on March 8, of which there were many and they are interesting in their own right. It is surprising that the blog has provided so much coverage and analysis of the TC Heartland v Kraft Foods case in general, but no analysis of the Kraft Foods brief and the briefs of the amici.

          1. I think that you are looking for something called “objective coverage.”

            (at least as far as intensity of coverage of any particular side of an issue)

            That is great in theory, but alas, in practice, this site cannot be viewed as a neutral source of “patent law” (let alone, be “America’s leading patent law source” in any neutral or objective manner).

            That would have to be some other “ecosystem.”

            As it is, one has to take the source – and its biases – as one finds it.

              1. Your complaint is basically that you would like the authors of this blog to read and summarize the 12 briefs on Kraft’s side of the TC Heartland case. It’s been 2 weeks you say, and because they read and summarized the briefs on the other side of the case a month ago, they somehow owe you this service.

                I’m suggesting that they owe you nothing. “You should ask for your money back” is a common retort to blog commenters who complain that a blog doesn’t cater more to the commenter’s interest. It’s a large internet. This blog does a great job of covering the things the authors choose to cover (for whatever reason). If I want to see great coverage of things the authors do not choose to cover, I might look elsewhere.

                link to scotusblog.com

                1. Your complaint is basically that you would like the authors of this blog to read and summarize the 12 briefs on Kraft’s side of the TC Heartland case

                  Nothing of the sort, dcl.

                  Maybe you try to read what is actually stated.

                  common retort to blog commenters who complain that a blog doesn’t cater more to the commenter’s interest.

                  You rather miss the point that the professed purpose of the blog is not being met – you accuse me of having some other “interest,” when you cannot even bother to try to keep up….

      1. Pro se parties are specifically prohibited from filing electronically. FCR 25(c)(2). In fact, the court routinely denies pro se parties’ motions for leave to file electronically, even for attorneys who have CM/ECF credentials.

  16. Dennis said:
    Perhaps my difficulty with electronic form is that I do not have the right software/tech on hand – suggestions?

    What I think is needed for prosecution: intuitive (but I am willing to learn), easy to use (e.g., not Adobe or Microsoft Paint), able to accurately recreate handwritten notes or annotations, and still enough screen space to see everything*. Plus, shareble between users without loss of information or ability to continue annotations (or delete prior annotations).
    *Everything: the spec (at readable size) alongside the figure(s) without changing input device.

    A single Ipad won’t due (let alone considering the security issues).

    I prefer handwriting my notes. I occasionally digitally annotate prior art figures to more clearly communicate to the Examiners or, heaven forbid, my own figures if the technology is truly complex. (I keep hearing about this prosecution history disclaimer thing; Are there any litigators here that will confirm or deny such?)

    Regarding, litigation: I have no idea, but digital copies would seem easier, as I imagine it only requires highlighting, tabbing, and notes for commentary. Adobe does all that pretty well.

    That said, it still isn’t as easy as looking at a stack of paper in a binder for colored tabs/labels and quickly opening to the exact page out of the binder.

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