Do you have a tendency to rely on substantive footnotes in your briefs? If so, consider this a warning.
A Stern Warning from the Bench
It is generally advisable not to bury key points in footnotes or rely on references to other documents in briefs. But, when a tribunal says something like the following, it is definitely time to take notice:
“Incorporation by reference amounts to a self-help increase in the length of the brief and is a pointless imposition on the court’s time. A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”
These are the words of the Patent Trial and Appeal Board (PTAB) in its recent influential decision, Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454 (PTAB, Aug. 29, 2014), quoting DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999) (internal quotations omitted).
The PTAB quoted DeSilva in refusing to consider arguments that the petitioner had incorporated by reference into its brief. The petitioner used footnotes to incorporate significant chunks of a 250-page declaration—chunks which included “numerous pages of claim charts,” among other things. While the petitioner provided citations to specific portions of the incorporated document, the PTAB found this inadequate to overcome its disdain for the practice (“the…incorporation by reference . . . impos[es] on our time by asking us to sift through over 250 pages . . . to locate the specific arguments corresponding to the numerous paragraphs cited to support Petitioner’s assertions”).
Relying on DeSilva, the PTAB went on to specifically state that it would not be considering the arguments referenced in the petitioner’s footnotes.
Incorporate by Reference? Perhaps Not.
The message is pretty clear, then. If you have something to say, say it in your brief. If your arguments do not fit within the applicable page limitations, figure out a way to say what is most important while cutting out the rest. But, whatever you do, do not ask the court to go outside of the brief to find your arguments. Not only will it not do so, but it may deride you – on the record, no less – in the process.
When Substantive Footnotes Make Sense
We all know the general rule: If an argument or fact is important enough to include in a brief, it belongs in the body of the brief, not in a footnote. I think this is sound advice, though I also believe that certain situations justify substantive footnotes.
These are two examples of when I think a lengthier footnote makes sense:
- When a sub-argument or explanation is necessary to your discussion but does not fit within the structure of your primary argument; and,
- When you want to remind the court about something you said earlier in the brief.
In the second scenario, a “See Section X, supra” may suffice under certain (or even most) circumstances. But, if you are sixty pages in and referring back to something you wrote fifty-five pages ago, adding some context to remind the judge what you said without requiring him or her to shuffle back through to the beginning might be worthwhile.
Do you have other thoughts? Examples?