Case: 22-1093 Document: 86 Page: 1 Filed: 02/16/2024
United States Court of Appeals
for the Federal Circuit
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PROMPTU SYSTEMS CORPORATION,
Appellant
v.
COMCAST CABLE COMMUNICATIONS, LLC,
Appellee
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2022-1093
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00344.
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SUA SPONTE
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JACOB ADAM SCHROEDER, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Palo Alto, CA, for appel-
lant. Also represented by JOSHUA GOLDBERG, Washington,
DC; JOSEPH MICHAEL SCHAFFNER, Reston, VA.
MARK ANDREW PERRY, Weil, Gotshal & Manges LLP,
Washington, DC, for appellee. Also represented by JOSHUA
HALPERN; IAN ANTHONY MOORE, New York, NY; JAMES L.
DAY, JR., Farella Braun & Martel LLP, San Francisco, CA.
______________________
Case: 22-1093 Document: 86 Page: 2 Filed: 02/16/2024
2 PROMPTU SYSTEMS CORPORATION v.
COMCAST CABLE COMMUNICATIONS, LLC
Before MOORE, Chief Judge, PROST and TARANTO, Circuit
Judges.
PER CURIAM.
ORDER
On January 11, 2024, this Court heard oral argument
in four related cases: Promptu Sys. Corp. v. Comcast Cable
Commc’ns, LLC, Nos. 19-2368 (consolidated with 19-2369),
20-1253, 22-1093, and 22-1939. Mr. Mark Perry (“Coun-
sel”) of the firm of Weil, Gotshal, & Manges LLP repre-
sented Appellee. At oral argument, Counsel was asked to
submit a brief within 10 days, no more than 10 pages, to
show 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.
We have repeatedly held that incorporating argument
by reference “cannot be used to exceed word count.” Mi-
crosoft 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 in-
corporate by reference almost 2,000 words from a brief in a
separate case—exceeding the total word count for its re-
sponse brief in case 22-1093 by more than 1,300 words.
Counsel argued that Appellee’s intent behind the incor-
poration by reference was to “enhance efficiency,” “stream-
line the briefing,” and “save the time and resources of the
Court.” Show Cause Br. at 2. Requiring the Court to cross-
reference arguments from multiple briefs in multiple, sep-
arate cases does not increase efficiency nor does exceeding
the word count. But we accept this mistake was made in
good faith by Appellee at the time of briefing.
In its Reply Brief, Appellant argued that our case law
prohibits the incorporation by reference Appellee
Case: 22-1093 Document: 86 Page: 3 Filed: 02/16/2024
PROMPTU SYSTEMS CORPORATION v. COMCAST CABLE 3
COMMUNICATIONS, LLC
attempted. Reply Br. at 28–29 (citing Microsoft, 755 F.3d
at 910). It is not only an inefficient use of this Court’s re-
sources, but unfair Appellant had to spend any of its reply
brief or oral argument preparation addressing Appellee’s
improper argument.
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 ad-
monished 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, Ap-
pellee was made aware of our case law, but chose to do
nothing.
We hoped not to have to write this order. Rule 28 of
the Federal Rules of Appellate Procedure seems clear. Mi-
crosoft seems clear. Medtronic seems clear. These cases
hold it is improper to exceed the word count through incor-
poration by reference. But Counsel argued to this Court
that we “ha[ve] apparently never ruled (one way or the
other) on incorporation of arguments from the same party’s
brief in a companion appeal set for argument before the
same panel.” Show Cause Br. at 4. Since Appellee has
made this argument, it gets this Order.
Counsel’s position is unreasonable given this Court’s
prior opinions. We accept as true Counsel’s argument that
he was unaware of this court’s precedential decision in Mi-
crosoft in which his own law firm was admonished for ex-
actly the same improper conduct. While we will not award
sanctions in this case, future litigants should appreciate
Case: 22-1093 Document: 86 Page: 4 Filed: 02/16/2024
4 PROMPTU SYSTEMS CORPORATION v.
COMCAST CABLE COMMUNICATIONS, LLC
that: (1) it is improper to incorporate material from one
brief by reference into another unless in compliance with
Fed. R. App. P. 28; (2) in no event is such incorporation per-
mitted if it would result in exceeding the applicable word
count; and (3) violating these provisions in the future will
likely result in sanctions.
IT IS ORDERED THAT:
Parties may not incorporate by reference arguments
into one brief from another unless in compliance with Fed.
R. App. P. 28, and in no event is such incorporation permit-
ted if it would result in exceeding the applicable word
count.
FOR THE COURT
February 16, 2024
Date