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 appellant. 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: 1 Filed: 02/16/2024
PROMPTU SYSTEMS CORPORATION v.

COMCAST CABLE COMMUNICATIONS, LLC

2

Before MOORE, Chief Judge, PROST and TARANTO, Circuit 

Judges. 

PER CURIAM. 

O R D E R

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 (“Counsel”) of the firm of Weil, Gotshal, & Manges LLP represented 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.” Microsoft 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 incorporate by reference almost 2,000 words from a brief in a 

separate case—exceeding the total word count for its response brief in case 22-1093 by more than 1,300 words. 

Counsel argued that Appellee’s intent behind the incorporation by reference was to “enhance efficiency,” “streamline the briefing,” and “save the time and resources of the 

Court.” Show Cause Br. at 2. Requiring the Court to crossreference arguments from multiple briefs in multiple, separate 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: 2 Filed: 02/16/2024
PROMPTU SYSTEMS CORPORATION v. COMCAST CABLE 

COMMUNICATIONS, LLC

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attempted. Reply Br. at 28–29 (citing Microsoft, 755 F.3d 

at 910). It is not only an inefficient use of this Court’s resources, 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 admonished 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, Appellee 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. Microsoft seems clear. Medtronic seems clear. These cases 

hold it is improper to exceed the word count through incorporation 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 Microsoft in which his own law firm was admonished for exactly the same improper conduct. While we will not award 

sanctions in this case, future litigants should appreciate 

Case: 22-1093 Document: 86 Page: 3 Filed: 02/16/2024
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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 permitted 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 permitted if it would result in exceeding the applicable word 

count. 

 

February 16, 2024

 Date

FOR THE COURT

 

 

Case: 22-1093 Document: 86 Page: 4 Filed: 02/16/2024