It's been ten days now, so I think I'm sufficiently calmed down to not bring shame and disgrace on the legal profession with excessively intemperate comments on a recent decision. Frankly, the combination of the decision and circumstances leading to it does that all by itself. Before I go any farther, though:
disclosure: The following discussion concerns a litigant and law firm, but not specific counsel, with whom I have had prior unpleasant dealings in other contexts. No names have been changed to protect the SOBs; and I'd be really, really pissed off anyway.
The United States Court of Appeals for the Federal Circuit has just rather definitively demonstrated why, and how, one cannot meaningfully delegate regulation of attorney conduct entirely to courts. And this really is about ethics; there were sanctions at issue.
On 16 February, the CAFC issued two precedential determinations in a dispute regarding a telecommunications/information-transmission patent. The substantive decision (PDF) is somewhat interesting, somewhat overtechnical as to both the law and the subject matter, and doesn't on its face concern attorney misconduct or ethics.1 But, simultaneously, the CAFC issued a precedential order regarding
show[ing] cause why Counsel/Appellee should not be sanctioned for attempting to incorporate by reference multiple pages of argument from the brief in one case into another.
Promptu Sys. Corp. v. Comcast Cable Comms., llc, No. 2022–1093 (Order Discharging OSC) (Fed. Cir. 16 Feb 2024), slip op. at 2. As the Court continued thereafter:
We have repeatedly held that incorporating argument by reference “cannot be used to exceed word count.” Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 910 (Fed. Cir. 2014); see also Medtronic, Inc. v. Teleflex Life Sciences Ltd., 86 F.4th 902, 906–07 (Fed. Cir. 2023). It is “fundamentally unfair to allow a party to use incorporation to exceed word count.” Microsoft, 755 F.3d at 910. That is exactly what would have occurred here had Appellee been allowed to incorporate by reference almost 2,000 words from a brief in a separate case—exceeding the total word count for its response brief in case 22-1093 by more than 1,300 words.
• • • •
Counsel argued that he and Appellee were unaware of our decision in Microsoft until Appellant’s Reply Brief was filed, Show Cause Br. at 3, and had they been aware, they would not have included the incorporation by reference, id. at 4. Microsoft is not only a precedential decision of this Court, but a precedential decision of this Court that admonished the exact same law firm before us now for the exact same behavior. We accept as true Counsel’s claim that he was not aware of the Microsoft decision until the Reply Brief referenced it. When it becomes apparent that a lawyer has violated a court rule, as an officer of the court, it would be best for that lawyer to bring it to the court’s attention and withdraw the improper argument. Here, Appellee was made aware of our case law, but chose to do nothing.
Id., slip op. at 2–3 (hyperlinks added).
So why does this matter? Here, I'm afraid, the CAFC made a critical rhetorical error: It failed to cite the rule establishing the word-count limitation. Federal appellate briefs are limited to 13,000 words (Fed. R. App. Proc. 32(a)(7)(B)(i) (as amended 01 Dec. 2019). Editorially, this is too little, especially in fact-intensive circumstances like patent disputes; but, just like the speed of light and 1970s-gas-saving-55mph, whether it's a good idea is not at issue — it's the law.2 Indeed, the CAFC cites only to a different rule, regarding "incorporation by reference." Instead, it should have cited both…
…but that would have made the fundamental error and misconduct by experienced counsel at a "white shoe" law firm that had been the subject of one of the precedential opinions rejecting this litigation conduct unavoidably obvious.3 It wasn't just erroneous briefing conduct, but the claimed ignorance.
A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness[,] and preparation reasonably necessary for the representation.
Mod. R. Prof. Cond. 1.1.4 I submit that "reading the rules of the court to which one is submitting a brief," and further "reading prior opinions admonishing one's own law firm regarding the rules of the court to which one is submitting a brief," falls so far within the core of "legal knowledge, skill, thoroughness[,] and preparation" that it is not subject to question.
But this leads directly to the much-more-serious, second-order/collateral damage implication. Why would an experienced appellate attorney be "unaware" of prohibitions on cross-references?5 Worse yet, why did no one on the team bring the matter to this attorney's attention? Surely some associate was tasked to double-check quirks; that would, after all, be at least 0.3 or 0.4 billable hours! Leaving aside my dark suspicions (see the disclosure at the top), this points directly to why regulation of attorney conduct cannot be delegated completely to courts. Courts do not have the authority, power, ability, or motivation to change law firm culture — especially not when it extends across multiple firms and the entire billing-culture meme. Those 0.3 or 0.4 billable hours would have been challenged by the client; and, due to "billable hours" pressures across all of "big law" (and especially at white-shoe firms like the one involved here) the associate would instead scurry off trying to bill 2600 hours6 in a way that wouldn't be challenged.
But all of that is inference — astoundingly irritated inference from subject-matter knowledge (but not detailed factual investigation) that required a week to tone this screed down to the point that it wouldn't damage your monitor/phone. It also implicates, a bit, the "there but for the grace of [insert deity] go I" problem with specific judges being responsible for regulating the conduct of attorneys they've seen before and will see again — because even when the conduct smacks the judge in the face, there's still that "familiarity" issue.7
This will not be the last time. Guaranteed.
- OK, at a different level, maybe it is. But it didn't involve an order to show cause regarding sanctions, "just" errors in claim construction by the trial court that proved outcome-determinative below. <SARCASM> There's no possibility of misconduct at all. By anyone… not excluding the attorneys who prosecuted a patent concerning "speech recognition services to a collection of users over a
network that supports cable television and/or video delivery." Id., slip op. at 2, quoting U.S. Pat. No. 7047196.</SARCASM>
And as a further editorial comment, I wish that all judicial opinions regarding patent validity would state the effective date of the application, which would clarify what law(s) might apply… and, to those who actually know the respective fields, just exactly how dubious the assertions of what the "prior art" and "inventive motivation" might have been. Both go directly to the credibility of the opinions, and in particular to ensuring that those who are potentially regulated can understand the law's requirements. This would require no change in law; it would require only that the courts add even a single parenthetical like "(App. Feb. 16, 2001)".
- Which, upon motion, can be increased if a particular matter requires it and counsel can persuasively articulate specific reasons (not just "I'm arrogant, verbose, and will gladly talk the ears off all the corn in Iowa," because that's rather the default in BigLaw). The dockets in these four appeals do not, however, disclose any such motion. Perhaps no such motion was made because courts, both federal and state, express reluctance to grant them; the gander, however, remains unsauced given the verbosity of many judicial opinions (which are not written under the kinds of deadlines imposed on the appellate lawyers). To only slightly mangle a phrase, "Regulated speech-length for thee but not for me."
The irony that counsel may have been incentivized to find another way to incorporate more verbiage by the 2019 reduction in word count for a principal brief — from 14,000 to 13,000 (and the Federal Circuit here notes that it was a "2,000 word" incorporation by reference that would have exceeded the "old" rule by about 300 words, slip op. at 2) — also bears some other consideration. Maybe, just maybe, that reduction was a bad idea, especially since it (needlessly IMNSHO) encourages both inadequate detail in the "statement of facts" and "statement of the case" and, well, shenanigans like this.
- This is not the first time this shark has encountered "palpable ignorance as a rationale to avoid sanctions" protestations from white-shoe law firms. One of the individual miscreants in one of those incidents continues to give continuing legal education presentations on the underlying issue(s) and has been frequently quoted in the not-precisely-proprietary-but-definitely-not-generally-available "legal newspapers" on this subject. It reflects a fundamental problem with legal ethics: The standards are too low, and lawyers tend to live down to them. Even — perhaps especially — purported leaders of the profession.
- This rule is substantively identical in the relevant jurisdictions (DC, New York, and Virginia). I've quoted the ABA "model" version because it's substantively identical everywhere else, too.
- Or, for that matter, a "sophisticated" client, and in particular this one, which has an in-house legal department with a metric boatload of lawyers and has had thousands of federal appellate briefs submitted on its behalf — hell, it has had at least twenty appellate briefs submitted on its behalf to this court since the Microsoft decision in 2014, several relating not to this patent but to the subject matter of this patent (voice recognition systems and implementation). Inferring client knowledge and approval is not unwarranted, albeit at this stage neither supported nor refuted by evidence… which would probably be undiscoverable as privileged anyway.
- For those doing the math at home, that's not 2600 hours worked during the year, but billed — that is, billing out 50 hours a week directly to clients. Time spent in firm meetings, and doing recruiting and interviewing of prospective hires, and getting continuing education, and doing general-awareness reading, and researching a matter only to discover a conflict preventing any representation buried in the research, and doing pro bono work… don't count. The reason that big-firm lawyers shrivel up to ash if struck by sunlight is that the time spent exposed to sunlight isn't billable. Plus, ya know, the whole vampire thing.
- One might well question exactly how 28 U.S.C. § 455(b)(1) does, or should, apply when what's under consideration is not "a party" but "a party's lawyer's in-court conduct." Here, I think there's an infinitely-reflexive self-awareness problem warned against extensively in my first profession and entirely ignored in my second. "Trust, but verify" requires that "verification" both occur… and be independent and credible. Not to mention that "trust" be credible in the first instance (we are dealing with lawyers here…).