Indivior v. Dr. Reddy’s (Fed. Cir. 2018) [DrReddysOrder]
This “case” is actually a consolidation of 14 filed-appeals that collectively stem from six different district court cases involving three sets of appellants. In his consolidation order, the Federal Circuit Clerk Peter Marksteiner wrote:
The above-captioned appeals appear to be related. We consolidate the appeals, and thus one set of briefs should be filed for the appeals.
Order of November 1, 2017.
Rather than filing a single consolidated brief, the appellant’s filed three (Dr. Reddy’s; Teva + Watson; and IntelGenX + Par). Although each brief individually complied with the Federal Circuit’s 14,000 word limit — relied upon co-appellant briefs by incorporating-by-reference arguments made by co-appellants. For instance, Dr. Reddy’s brief explains: “The asserted claims of the ’514 patent are invalid as indefinite. DRL adopts by reference Par’s arguments on this issue.” The patentee then asked for extra space in its brief to respond to all of the arguments.
In a new (non-precedential) order, the clerk has attempted to resolve the issue by striking the briefs filed and demanding a single joint opening brief <18,000 words and then allowing the patentee to also file an expanded responsive brief.
One problem with the Court’s approach here is that it made no determination as to whether the incorporation-by-reference was problematic in this situation. In particular, Federal Rule Appellate Procedure 28(i) permits incorporation by reference in consolidated cases involving multiple appellants or appellees. In a parallel case, the 8th Circuit indicated that incorporation-by-reference in this situation does not count toward the word-limit. In re Target Corp. Customer Data Security Breach Litig., 855 F.3d 913 (8th Cir. 2017) (“Nothing in Rule 28(i) suggests that parts of briefs adopted by reference should be treated as literally incorporated into a party’s principal brief for wordcount purposes.”). In Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014), the Federal Circuit barred a party from incorporating-by-reference (finding the incorporated argument waived). However, that case did not fall under R. 28(i) and so is distinguishable from this situation.