United States Court of Appeals
for the Federal Circuit
__________________________
AVENTIS PHARMA S.A. AND
SANOFI-AVENTIS U.S., LLC,
Plaintiffs-Appellants,
v.
HOSPIRA, INC.,
Defendant-Appellee,
and
APOTEX INC. AND APOTEX CORP.,
Defendants-Cross Appellants.
__________________________
2011-1018, -1047
__________________________
Appeals from the United States District Court for the
District of Delaware in consolidated case nos. 07-CV-0721
and 08-CV-0496, Chief Judge Gregory M. Sleet.
__________________________
ON MOTION
__________________________
Before PROST, MAYER, and MOORE, Circuit Judges.
MOORE, Circuit Judge.
ORDER
Aventis Pharma S.A. and Sanofi-Aventis U.S., LLC
(Aventis) move to dismiss appeal no. 2011-1047 as an
AVENTIS PHARMA v. HOSPIRA 2
improper cross-appeal. Apotex Inc. and Apotex Corp.
(Apotex) oppose. Aventis replies.
Aventis sued Apotex for patent infringement. That
case was consolidated with another suit against Hospira
Inc. involving the same patents. On September 27, 2010,
the district court entered final judgment in favor of Apo-
tex and Hospira, finding that all the asserted claims of
the patents in suit were invalid for obviousness and
unenforceable due to inequitable conduct. Aventis ap-
pealed to this court. Apotex filed a “protective” cross-
appeal to preserve its ability to challenge the district
court’s finding that some of the asserted claims were not
invalid for double-patenting, in the event that this court
vacated and reversed the district court’s judgment finding
Apotex’s patents invalid for obviousness and unenforce-
able due to inequitable conduct.
On November 1, 2010, Aventis contacted Apotex and
requested that it voluntarily withdraw the “protective”
cross-appeal. Aventis explained that our Practice Notes
to Federal Rule of Appellate Procedure 28.1 explicitly
warn against filing a cross-appeal that does not seek to
modify or overturn the judgment of the trial court.
Aventis also pointed out that our precedent in TypeRight
indicates that it is improper to use a cross-appeal to seek
review of either non-infringement or alternative invalidity
arguments when the relevant claims of a patent are found
invalid. TypeRight Keyboard Corp. v. Microsoft Corp., 374
F.3d 1151, 1156-57 (Fed. Cir. 2004). Aventis advised
Apotex that if forced to move for dismissal of the cross-
appeal, Aventis will seek the attorneys’ fees and costs
incurred in connection with the dismissal.
In an email dated November 3, 2010, Apotex ex-
plained that it still believed its cross-appeal was proper,
and claimed (without citation or explanation) that
TypeRight could be distinguished. It also claimed (again
without citation) that Federal Circuit precedent sup-
3 AVENTIS PHARMA v. HOSPIRA
ported their position, and that other appellate courts
allow conditional cross-appeals. Aventis subsequently
moved to dismiss the cross-appeal.
Our precedent consistently warns against the im-
proper use of a cross-appeal to reach issues that do not
otherwise expand the scope of the judgment. A cross-
appeal may only be filed “when a party seeks to enlarge
its own rights under the judgment or to lessen the rights
of its adversary under the judgment.” Bailey v. Dart
Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002); see
also TypeRight, 374 F.3d at 1156 (“A party may cross-
appeal if adversely affected by the appealed judgment in
some particular which it seeks to have modified.”). In
Bailey we explained that an unwarranted cross-appeal
“unnecessarily expands the amount of briefing,” and also
gives “the appellee an unfair opportunity to file the final
brief and have the final oral argument, contrary to estab-
lished rules.” Bailey, 292 F.3d at 1362.
Our practice with respect to cross-appeals does not
limit the arguments that can be presented on appeal.
Attorneys are free to devote as much of their responsive
briefing as needed to flesh out additional arguments and
alternative grounds for affirming the judgment on appeal.
Id. They are not free, however, to game the system by
filing a cross-appeal to obtain the final word: this is
neither fair to the appellant nor an efficient use of the
appellate process.
Apotex incorrectly argues that our practice is in mate-
rial conflict with other circuits. Other circuits may allow
a conditional cross-appeal as a means to raise additional
arguments which do not expand the scope of the judg-
ment. We also provide the opportunity to raise additional
arguments, but require parties to raise such arguments in
their primary briefing. Thus, parties appearing before us
have the same substantive opportunity to make their
AVENTIS PHARMA v. HOSPIRA 4
arguments, although the means used to do so differs in
form.
Turning to the case at hand, the district court held all
asserted claims invalid for obviousness and both patents
in suit unenforceable, yet Apotex nevertheless filed a
cross-appeal regarding (1) additional claims for invalidity
and (2) claims of non-infringement directed to the same
claims. “Where, as here, the district court has entered a
judgment of invalidity as to all of the asserted claims,
there is no basis for a cross-appeal as to either (1) addi-
tional claims for invalidity or (2) claims of non-
infringement.” TypeRight, 374 F.3d at 1157. Our prece-
dent is clear: the conditional cross-appeal is improper,
and we grant the motion to dismiss.
Apotex’s conduct in this case is particularly egregious
given that Aventis explained that TypeRight prohibits
exactly the type of cross-appeal filed. Given an opportu-
nity to withdraw the improper cross-appeal, Apotex
instead claimed it could distinguish TypeRight from the
present case. Apotex’s distinctions are unavailing:
merely styling their appeal as a conditional cross-appeal
does not distinguish TypeRight.
Similarly, Apotex’s argument that TypeRight is lim-
ited to cases where the trial court previously declined to
reach the other grounds for affirming the judgment is
incorrect. TypeRight explains, as a general matter, that a
finding of invalidity means there is “no basis for a cross-
appeal” of non-infringement or additional claims of inva-
lidity. TypeRight, 374 F.3d at 1157. In TypeRight, we
struck the offending portions of Microsoft’s briefing and
treated Microsoft’s arguments as alternate grounds for
affirming the judgment. While we ultimately declined to
reach Microsoft’s arguments for the first time on appeal,
id. at 1160, that decision was unrelated to our decision to
dismiss the cross-appeal. As such, Apotex’s arguments
distinguishing TypeRight are without merit.
5 AVENTIS PHARMA v. HOSPIRA
As Apotex points out, we have not sua sponte struck
every improperly filed cross-appeal. This infrequent
leniency is not an invitation to flaunt our practice and
precedent, and the improper use of a cross-appeal directly
contrary to our precedent may meet with sanctions. We
understand Aventis plans to seek attorneys’ fees and costs
incurred in connection with the motion to dismiss Apo-
tex’s improper cross-appeal, and will evaluate its request
in due course.
In sum, Apotex’s cross-appeal is improper because, if
successful, it would not expand the scope of the judgment
in Apotex’s favor. Bailey, 292 F.3d at 1362. Apotex may,
consistent with our practice and precedent, raise these
arguments in its appellees’ brief if it so chooses. We have
considered Apotex’s remaining arguments and find them
to be unpersuasive.
Accordingly,
IT IS ORDERED THAT:
(1) Aventis’s motion to dismiss is granted. Appeal no.
2011-1047 is dismissed.
(2) The appellees’ briefs are due within 40 days of the
date of filing of this order.
FOR THE COURT
March 24, 2011 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: George F. Pappas, Esq.
James F. Hurst, Esq.
Arthur M. Dresner, Esq.
s20