August 28, 2020 - Federal Circuit Insights

Observations on Cancelled Argument Cases: Appellees Always Win, Right? (Mostly)

Next week is Court week.  Readers may remember that, after the Court released the September calendar, we predicted that the submission trend would continue.  Were we right?  Sort of. 

Cases were submitted (including one of our cases, as appellee).  But far fewer cases were submitted for next week’s arguments than any of the Court’s previous telephonic sittings.  All told, the Court cancelled oral argument in just eight cases out of the thirty-six originally scheduled for argument.  Both the number of cases and the cancellation percentage (22%) were lower than any previous month since the Federal Circuit went “remote.” 

Once again, PTAB cases were the relative losers for argument—three of the nine PTAB cases (33%) had arguments cancelled, compared to two of the seventeen district court cases (12%).  But that 33% PTAB cancellation statistic is still much lower than the 77% figure in July and the 55% figure in August

En Banc Chart

We don’t know the reason why so few cases had cancelled arguments for September.  It could just be the mix of cases and panels in this particular month.  Or it could be consistent with our co-editor Seth Lloyd’s earlier observation that fewer cases being submitted might reflect the Court becoming “more comfortable with telephonic arguments over time” and “drift[ing] back to its usual practice of hearing argument in most cases where both parties are represented by counsel.”  Regardless, as remote arguments will continue in October, we will continue to look for trends.

In addition to looking at how many arguments were cancelled, we decided to take another look at how appellees did when an argument was cancelled.  As we noted before, appellees do well (in general) and particularly so when argument is cancelled.  But because the affirmance rate is not 100%, appellees are clearly losing some cases solely on the papers. 

As advocates, we became curious if anything could be discerned from those losses.  After all, some circuits are known to reverse or vacate decisions without argument (take the Sixth Circuit, for example), but many others are far more likely to hold argument when an appeal might lead to such a result.  Holding argument when the judgment below might be disturbed gives the appellee the opportunity to address any concerns the court might have and to respond to arguments the appellant might have refined in its reply.

Hoping to find some answers, we looked beyond the data and took a deeper dive into the 12 cases in which the Court cancelled oral argument and did not affirm since the Federal Circuit started telephonic oral arguments.  But since Federal Circuitry takes a data-driven approach, here are some statistics first:

  • Overall affirmance rate:  70.9%
  • Overall district court affirmance rate:  66.0%
  • Overall PTAB affirmance rate:  78.8%
  • Cancelled argument affirmance rate (to date):  88.2% (15 not decided)
  • Cancelled argument district court affirmance rate:  88.5% (4 not decided)
  • Cancelled argument PTAB affirmance rate:  88.1% (6 not decided)

One thing that jumps out from these statistics is that the affirmance rate is pretty consistent across district court and PTAB appeals when oral arguments are cancelled.  That’s a contrast to the overall affirmance rates for all cases, where the PTAB is affirmed at a much greater rate.  Also, the 88% cancelled argument affirmance rate after five months of telephonic arguments is slightly lower than the 92% affirmance rate we calculated after just the first three months.  Our co-editor Seth wondered whether the then-undecided cases “may bring the affirmance average closer to the historical average,” since “delayed decisions may be more likely to involve some relief for the appellant.”  That appears to have happened to some extent—some of those cases have since been decided and did bring down the affirmance rate, but only by a bit.

Diving a bit deeper into the cases themselves, we learned that several of these appellee “losses” had unique circumstances or were not losses at all.  Two were straight vacate and remands, and the third was similar to one.  One involved an Arthrex remand, so while the appellee “lost,” that result was preordained and oral argument couldn’t have changed that outcome.  Another was a per curiam vacate and remand for the TTAB to decide the effect of the Supreme Court’s Booking.com decision, without substantively addressing any issues.  And in a third appeal, the Court vacated and remanded in a patent owner’s IPR appeal because the PTAB failed to consider secondary considerations evidence “[f]or reasons analogous to those expressed” in an earlier appeal between the same two parties.  In that case, the appellee had acknowledged that the PTAB’s treatment of secondary considerations was similar in both IPRs.

Two other cases are, for all practical purposes, wins for the appellees.  In Inserso, the government was the appellee in a Court of Federal Claims appeal; the key takeaway for our purposes is this line:  “We agree that judgment in favor of the government is appropriate, but on a different ground.”  In other words, it’s hard to say the appellee didn’t win, because the Federal Circuit simply instructed the Court of Federal Claims to enter judgment (again) in the appellee’s favor.  Similarly, in McRO, the appellees did not really lose anything and appeared to get exactly what they wanted.  The Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement for the defendants-appellees, and it vacated and remanded on counterclaims of invalidity.  Notably, after cancelling argument but before submitting the case, the Federal Circuit asked the parties to respond to written questions about how to address invalidity given non-infringement.  In responding to those questions, the defendants signaled a willingness to withdraw their counterclaims anyway.

Of course, that leaves seven additional cases in which the appellees did apparently “lose”—five patent, one Court of Federal Claims, and one veteran’s.  It’s a bit harder to explain away the absence of argument without looking at the nitty gritty details.  Even doing so, we didn’t find much of a pattern; it may be that the panels just viewed them as straightforward cases.  Three of the patent cases involved incorrect claim constructions; one involved the PTAB’s failure to explain its reasoning; the last one involved a more nuanced issue on pre-suit damages (in a precedential opinion no less).  Interestingly, the Court of Federal Claims and veteran’s appeals were both precedential opinions. 

Overall, that means that out of the five precedential decisions in which the Court cancelled argument and did not affirm, three were non-IP appeals.  In fact, all three non-IP appeals with cancelled arguments and non-affirmances were precedential decisions.  Regardless, the key takeaway seems to be that when oral argument is cancelled, it’s very likely good news for the appellee.  But don’t entirely count those chickens before they hatch.

Some parting tidbits:

  • Judges O’Malley and Stoll each authored three of the eleven “signed” decisions, and Judge Taranto authored two.  So those three judges authored 72.7% of those decisions.
  • Only one case had a dissent, by Judge Reyna; see our earlier analysis on Judge Reyna being a prolific dissenter.
  • Judge Lourie was on five of the twelve cases; see our earlier analysis on Judge Lourie being one of the more likely judges to be on a panel cancelling oral argument.

Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship