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., 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 exac