Case: 22-1093   Document: 86     Page: 1   Filed: 02/16/2024




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

        PROMPTU SYSTEMS CORPORATION,
                   Appellant

                            v.

    COMCAST CABLE COMMUNICATIONS, LLC,
                    Appellee
             ______________________

                       2022-1093
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2018-
 00344.
                  ______________________

                     SUA SPONTE
                 ______________________

     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., 

 (Fed. Cir.
 2014); see also Medtronic, Inc. v. Teleflex Life Sciences Ltd.,
 

, 906–07 (Fed. Cir. 2023). It is “fundamentally
 unfair to allow a party to use incorporation to exceed word
 count.” Microsoft, 

. 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, 

). 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