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New appeallate counsel insufficient reason to consider arguments not raised before district court
May 21, 2008
In a decision today, the Federal Circuit affirmed a district court's decision finding two claims of a patent anticipated. The district court, adopting a magistrate judge's Report and Recommendation, held that the claims were invalid and granted summary judgment. After retaining new counsel for the appeal, the patentee argued the prior art did not anticipate the claims based on a claim element not argued before the district court, either to the magistrate judge or when the magistrate judge's report was challenged before the district judge.The Federal Circuit affirmed. The court refused to consider the patentee's new argument on appeal because it had not raised it below. New arguments are typically not considered on appeal, and none of the narrow exceptions to that rule applied to this case. Simply retaining new counsel for appeal was insufficient. As a result, because the patentee had abandoned the arguments it made before the district court regarding anticipation, the court affirmed without addressing the merits of the patentee's arguments.More concerning Golden Bridge Tech. v. Lucent Tech. after the jump.Golden Bridge owns a patent disclosing a Code Division Multiple Access (CDMA) scheme. This allows multiple mobile phones to communicate at the same time with the same base station over the same frequency range by using different numerical codes. Golden Bridge sued Lucent for infringement. Lucent asserted two of the claims (13 and 23) were anticipated by a PCT publication of Häkkinen and a 1995 CDMA standard (IS-95A). Lucent moved for summary judgment, and a magistrate judge recommended a finding of invalidity. Golden Bridge objected and filed another brief as to why the Häkkinen reference did not anticipate, but the district court decided to adopt the recommendation of the Magistrate.On appeal, Golden Bridge abandoned its earlier contentions regarding anticipation and raised an admittedly new argument it had not presented to the district court as to why the claims were not anticipated. The Federal Circuit noted federal appellate courts only consider an issue not raised before the district court in limited circumstances. Those circumstances are:
(1) When new legislation is passed while an appeal is pending, courts have an obligation to apply the new law if Congress intended retroactive application even though the issue was not decided or raised below. (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 did not argue it below and the court below did not decide it, but only if an issue is properly before the court. (4) Where a party appeared pro se before the lower court, a court of appeals may appropriately be less stringent in requiring that the issue have been raised explicitly below.
The situation in the case did not meet any of the exceptions. Golden Bridge also argued the argument was proper because it had new counsel for the appeal, but the court held substitution of new appellate counsel is not a reason to allow the new argument. The court likewise refused to remand the case for a determination of the new argument before the district court, as there was simply no justification for not raising the argument sooner. Because the court declined to consider the new argument, and because Golden Bridge did not offer any other argument as to why the district court erred, the court affirmed the district court's decision that the claims were invalid.To read the full decision in Golden Bridge Tech., Inc. v. Lucent Tech., Inc., click here.
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