Law School Canons: All Roads Lead to Rome: Preserving an Issue for Appeal

Editor’s Note: Avery Welker is a rising 2L at Mizzou and likely a future patent attorney. He authors a series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to  – Dennis Crouch

By Avery Welker

There are plenty of places in a jury trial that lead to appellate review. One popular way is, of course, objecting to jury instructions. However, that isn’t the only road that leads to Rome! NetScout[1] chose a different route against Packet Intelligence LLC (“Packet Intelligence” | Plaintiff-Appellee). Packet Intel. LLC v. NetScout Sys., Inc., 965 F.3d 1299 (Fed. Cir. 2020), cert. denied, 209 L.Ed.2d 552 (Apr. 19, 2021)[2].

NetScout had lost a case against Packet Intelligence in the Eastern District of Texas in 2018. Id. at 1303. Packet Intelligence owns three patents at issue in the district court case: US 6,665,725, US 6,839,751, and US 6,954,789 (the “asserted patents”). Id. At their core, the patents involve packet transmission and monitoring in a computer network. Id.

Packet Intelligence asserted these patents in a jury trial against NetScout’s “G10” and “GeoBlade” products. Id. at 1304. NetScout unsuccessfully brought invalidity defenses, and the jury found all asserted patents’ claims infringed, awarding pre- and post-suit damages, along with enhanced damages. Id. at 1304-05. Upon appeal, the Federal Circuit affirmed all aspects of the district court’s judgment save for vacating the pre-suit damages award. Id. at 1303.

For NetScout, a little bit of Civil Procedure went a long way (to the tune of $3,500,000; Id. at 1313) in arguing against the pre-suit damages. Getting to appeal is half the battle. Most casebooks for my 1L year exclusively taught the law to me through the lens of appellate review, just like many other 1Ls across the United States. So, it makes sense that one of the first things that I learned in my 1L was how a case got to an appellate review at all!  Preservation is the key, and sometimes the method matters, as it did here.

NetScout chose one of the many other paths to appeal, using a Rule 50 motion for judgment as a matter of law on the issue of pre-suit damages. Fed. R. Civ. P. 50 (2020); Packet Intel. LLC, 965 F.3d at 1313. In doing so, NetScout brought a sufficiency of the evidence argument: Packet Intelligence failed to bring sufficient evidence that an unmarked product did not practice one of the asserted patents. Packet Intel. LLC, 965 F.3d at 1313. The district court denied this motion. Id.

To rebut the motion on appeal, Packet Intelligence argued that Federal Circuit case law supported the notion that the evidentiary burden belonged to NetScout to prove that the product at issue practiced the asserted patent claims because NetScout did not object to the jury instructions on the issue. Id. However, the Federal Circuit quickly dismissed this argument:

As a preliminary matter, we disagree that the failure to object decides this matter. We are bound by the law, not by the jury charge, even if the charge was not objected to. And NetScout’s failure to object to the district court’s jury instruction does not render the instruction law of the case for evaluating the sufficiency of the evidence.

Id. (Internal citations removed).

The court noted further that NetScout had the original burden for this issue of identifying an unmarked product that allegedly practiced an asserted patent, that NetScout, in fact, met this burden, and that Packet Intelligence’s presented evidence was insufficient to rebut NetScout’s evidence of an unmarked product. Id. at 1313-14.

Packet Intelligence’s attempt to shift the burden reflects an interesting appellate strategy for fighting a sufficiency of the evidence argument. However, failing to object to a jury instruction does not preclude an argument regarding the sufficiency of the evidence. Id. at 1313 and citations therein. NetScout’s choice of their road to Rome – a sufficiency of the evidence argument – served its purpose well and is a compelling example that highlights the importance of internalizing the rules of civil procedure. It might just save a few million dollars one day!

[1] “NetScout” is the collective label for NetScout Systems, Inc. and NetScout Systems Texas, LLC, Defendants-Appellants.

[2] See here for a previous Patently-O post regarding this case and its outcome authored by Dennis Crouch.

One thought on “Law School Canons: All Roads Lead to Rome: Preserving an Issue for Appeal

  1. 1

    I get that the Supreme Court’s Boyle decision seems to leave the path for an appeal open, but in reality, I think both Boyle and this decision are more of a cautionary tale than a guide for how to do things. Objecting to the jury instructions is a critical step in preserving these kinds of arguments, and even though in some cases you may be able to circumvent that, you won’t always get away with it. NetScout had a path here, but this seems to me to be a unique sort of issue that had to do with the burdens of proof where the district court completely flipped that burden and so that was dispositive.

    The Federal Circuit waiver jurisprudence on a number of issues has been lax, particularly when it comes to the failure to object to claim construction as part of the jury instructions. And maybe it will always stay that way. But I don’t think you can take that as a given.

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