Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit

Mark Simon Davies has provided attorneys with an indispensable guide to briefing and arguing cases before the Federal Circuit.
Publisher: Matthew Bender

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2018 Edition
ISBN: 9781522155607
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ISBN: 9781522139461
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Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit, 2018 Edition authored by Mark Simon Davies: The need for a legal Elements of Style aimed at U.S. patent litigators has long been acknowledged by patent law attorneys and judges within the Federal Circuit. The United States Court of Appeals for the Federal Circuit has recently embarked on a campaign to improve the quality of briefing.

With the 2018 Edition of Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit, Mark Davies has provided attorneys with an indispensable guide to briefing and arguing cases before the Federal Circuit. In the ten years since the First Edition of this book, the need for high-quality appellate briefs at the Federal Circuit has intensified. When the First Edition was published in 2008, the Supreme Court had already repeatedly faulted the Federal Circuit for inventing “formalistic” rules, using “jargon,” and failing to harmonize patent law with other areas of law. Unfortunately, more recent Supreme Court cases make precisely the same three points.

This 2018 Edition is another effort at helping parties and their representatives present patent arguments in a fashion that the appellate court will adopt and the Supreme Court accept. As before, the structure of the book is designed to match the chronological process of writing an appellate brief. After some preliminary comments on writing, the book chapters track the various sections of an opening brief required (or permitted) by the federal rules. Separate chapters address other types of briefs and filing mechanics and the final chapters address oral argument and rehearing petitions. The appendix to this book includes complete copies of the principal briefs discussed along with several other documents on proper formatting and style. The contested mixture of law and technology, of democracy and progress, is a fortunate place to spend one’s career. Law changes slowly, and much of the basic guidance for writing appeal briefs today is the same as it would have been when the patent laws were written hundreds of years ago. Technology, of course, moves quickly in comparison, and presenting relevant legal arguments requires staying current with complex factual changes. The aim with this 2018 Edition is to help all lawyers contribute to an effective presentation to the Federal Circuit, a presentation that advances the client’s interests by working within the Supreme Court’s–and thus the Federal Circuit’s–expectations of sound appellate briefing.


“Mark Davies recently authored the user manual for Federal Circuit appeals. From its 300 spiral-bound pages, you can tell that the book is designed to serve the appellate attorney during the process of crafting a brief. Davies argued dozens of appeals as a DOJ appellate attorney and is now doing the same at Orrick in DC. The book is very easy to read and understand, and it does an especially good job of providing concrete advice on how to draft an effective and clearly written brief while staying within the rules. If you have an appeal pending, you better use this book.”—Dennis D. Crouch, Editor of nation’s leading patent law blog, Patently-O, and Co-Director of the Center for Intellectual Property & Entrepreneurship and Associate Professor of Law at the University of Missouri School of Law

“This work, by one of the leading appellate lawyers, is an indispensable combination of intellectual-property issues and appellate strategy. In an easy- to-use format that tracks the Federal Rules of Appellate Procedure, Mark Davies distills his unique background in both high-stakes appellate practice and patent law to assist the patent litigator prepare a clear and effective Federal Circuit brief that best advances the client’s cause. This highly readable work includes both the nuts and bolts of appellate practice, as well as numerous substantive suggestions about effective presentation and argumentation. This book is an invaluable work for every patent litigator.”—Walter E. Dellinger III, Chairman of the Appellate Practice at O’Melveny & Myers LLP, former Acting Solicitor General of the United States, and Duke University Douglas B. Maggs Professor Emeritus of Law

“Mark Davies has written an updated guide to the critical patent appeal process at the Federal Circuit. The Federal Circuit resolves hundreds of complex patent cases a year, and in doing so the appellate court reads and listens to arguments that are shaped by sophisticated practices as well as highly technical rules. Mark’s book explains both the basic and the nuances of this context, and provides a practitioner’s insights on how to make persuasive arguments before the Federal Circuit.”—Thomas W. Krause, Deputy Solicitor, United States Patent & Trademark Offıce

“An indispensable guide, from one of the nation’s leading Federal Circuit litigators. Mark Davies offers concrete, practical tips and loads of useful samples, drawn from his experience arguing scores of appeals — and often winning cases against the odds. If you want to win, read this book.”—E. Joshua Rosenkranz, Partner, Orrick, Supreme Court & Appellate Practice

“Patent Appeals (by Mark Davies) is a ’must read’ for someone handling their first appeal before the Federal Circuit. It is also a helpful guide to experienced Federal Circuit practitioners. Everyone can take away a few helpful tips by simply browsing the book. It is organized well, easy to read, and provides real examples. This is not surprising given Mark’s expertise in both (i) general appellate practice, and (ii) patent appellate practice, which few attorneys have. The first edition was great; this edition is even better.”—John M. Whealan, Deputy General Counsel for IP Law and Solicitor, United States Patent & Trademark Offıce and Associate Dean of Intellectual Property, GW Law

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Table of contents



CHAPTER 1  Appellate Writing

CHAPTER 2  Preliminaries

CHAPTER 3  The Introduction

CHAPTER 4  The Jurisdictional Statement

CHAPTER 5  Statement of the Issues

CHAPTER 6  Statement of the Case

CHAPTER 7  Argument

CHAPTER 8  Answering Briefs

CHAPTER 9  Reply Briefs

CHAPTER 10  Filing the Brief and the Joint Appendix

CHAPTER 11  Amicus Curiae Briefs

CHAPTER 12  Oral Argument

CHAPTER 13  Panel Rehearing and Rehearing En Banc

APPENDIX A  Sample Opening Brief

APPENDIX B  Sample Answering Brief

APPENDIX C  Sample Reply Brief

APPENDIX D  Sample Amicus Brief

APPENDIX E  Sample 28(j) Letters

APPENDIX F  Case Cheat Sheet

APPENDIX G  Sample Petition for Panel Rehearing and Rehearing En Banc

APPENDIX H  Sample Petition for Rehearing En Banc

APPENDIX I  Top Ten Most Common Errors in Briefs and Motions

APPENDIX J  Requirements And Suggestions For Typography In Briefs And Other Papers