The View From Above: How Intellectual Property Cases Are Won and Lost on Appeal
By Casey Scott McKay ·
An appeal is not a second trial, and the single most consequential fact about appellate practice is that the questions available on appeal were decided months or years earlier by what trial counsel did and did not say. This article explains the machinery that governs the second look in intellectual property cases: which court hears the appeal and why the Federal Circuit's exclusive patent jurisdiction produces a different body of law from the regional circuits, when a judgment becomes final enough to appeal, how the standard of review silently decides most cases before the briefs are written, and the difference between an issue preserved and an issue forfeited. It looks at why claim construction reversals fell after the Supreme Court instructed appellate courts to defer to subsidiary factual findings, why discretionary rulings on fees and injunctions are so hard to disturb, and why the harmless error doctrine defeats appellants who win the legal argument and lose the appeal anyway. The practical thesis is unglamorous: appeals are won in the trial court, by lawyers who make records rather than arguments.
IP and Technology > Patent Litigation | Article | Published 28 November 2023 - Updated 13 April 2025 | Casey Scott McKay - marksy.us
Summary. An appeal is not a second trial, and the single most consequential fact about appellate practice is that the questions available on appeal were decided months or years earlier by what trial counsel did and did not say. This article explains the machinery that governs the second look in intellectual property cases: which court hears the appeal, when a judgment becomes final enough to appeal, how the standard of review silently decides most cases before the briefs are written, and the difference between an issue preserved and an issue forfeited. It looks at why claim construction reversals fell after the Supreme Court instructed appellate courts to defer to subsidiary factual findings, and why the harmless error doctrine defeats appellants who win the legal argument and lose the appeal anyway. The practical thesis is unglamorous: appeals are won in the trial court, by lawyers who make records rather than arguments.
Keywords: appellate practice · standard of review · issue preservation · Federal Circuit · de novo review · clear error · abuse of discretion · claim construction appeal · final judgment rule · interlocutory appeal · harmless error · waiver and forfeiture · appellate record · notice of appeal · en banc review · certiorari
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