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New Argument Could Not Be Raised for the First Time on Appeal

May 21, 2008

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Last Month at the Federal Circuit - June 2008

Judges: Michel, Newman, Moore (author)

[Appealed from: E.D. Tex., Judge Davis]

In Golden Bridge Technology, Inc. v. Nokia, Inc., No. 07-1215 (Fed. Cir. May 21, 2008), the Federal Circuit affirmed the district court’s grant of SJ of invalidity, holding that a party could not present a new argument on appeal.

Golden Bridge Technology, Inc. (“Golden Bridge”) asserted U.S. Patent No. 6,574,267 (“the ’267 patent”), directed to a mobile communication system, against Lucent Technologies, Inc. (“Lucent”). After a claim construction hearing, the parties reached agreement on the construction of certain terms. A district court granted SJ that the asserted claims were anticipated by two references, the Häkkinen and IS-95A references.

On appeal, the only argument that Golden Bridge advanced as to whether the Häkkinen reference anticipated was an argument that was never presented to the district court. The Federal Circuit held that it would not hear an argument that was raised for the first time on appeal. It thus affirmed the district court’s judgment that the ’267 patent was anticipated by the Häkkinen reference. In light of that holding, it did not reach the issue of whether the ’267 patent was anticipated by the IS-95A reference.

In its analysis, the Court noted that Golden Bridge had multiple opportunities to raise its argument that one of the claim elements was missing from the reference. Instead, Golden Bridge argued that a different claim element was missing from the reference. The Court held that it could not sanction the iterative process that Golden Bridge would like to pursue of raising a new issue on appeal after losing on its other issue at the district court.

The Court noted that it is the general rule that a federal appellate court does not entertain arguments not presented to the district court except in limited circumstances. Those circumstances include: (1) when new legislation intended to be retroactive is passed while an appeal is pending; (2) when there is a change in the jurisprudence of the reviewing court or the Supreme Court after consideration of the case by the lower court; (3) appellate courts may apply the correct law even if the parties below did not argue it and the court below did not decide it, but only if an issue is properly before the court; and (4) when a party appeared pro se. The district court held that none of those circumstances were present. Rather, the only explanation offered by Golden Bridge for why the Federal Circuit should consider its new argument on appeal was that it had new appellate counsel. The Court held that “[n]ew appellate counsel does not present an exceptional case or circumstance in which our declining review will result in injustice.” Slip op. at 7.

The Court also noted that in asking it to decide whether the Häkkinen reference disclosed a particular limitation for the first time on appeal, Golden Bridge was improperly asking the Court to make factual findings. The Federal Circuit also rejected Golden Bridge’s argument that Toxgon Corp. v. BNFL, Inc., 312 F.3d 1379 (Fed. Cir. 2002), required the Court to remand a case where both parties seek to introduce new arguments regarding factual distinctions between the claims and the prior art. The Federal Circuit disagreed with Golden Bridge’s characterization of Toxgon, however, stating that their decision to remand in Toxgon was not based on the fact that both parties made new arguments on appeal, but rather was mandated by their reversal of the district court’s dismissal for lack of subject matter jurisdiction. The Court therefore declined to remand the case to decide an argument as to what a prior art reference discloses when that argument, without any justification, was raised for the first time on appeal.