Federal Circuit Makes it Hard to Waive Claim Construction Arguments

Harris Corp. v. Ericsson (Fed. Cir. 2005).

Harris owns the patent on a signal decoder that uses an estimator to compensate for transmission interference.  A jury found that Ericsson infringed the Harris patent.  Ericsson appealed — arguing for JMOL based on faulty claim construction.

On appeal, Ericsson asked the CAFC to take a fresh look at claim construction — arguing that the Means-Plus-Function term “time domain processing means” had been improperly interpreted in light of a case (WMS Gaming) that was decided at the Federal Circuit after the claim construction.  Harris, on the other hand, argued that Ericsson waived the WMS Gaming argument by failing to advance it at trial or object to the jury instructions.

Choice of law: The CAFC determined that waiver of a claim construction argument to be intimately associated with patent rights, and thus, that Federal Circuit law should apply to such questions.

Waiver Analysis: The CAFC found that it has “case-by-case discretion over whether to apply waiver” but that if Ericsson’s arguments on appeal was “the same concept” as that argued before the district court then there would be no waiver.  Following Gaus v. Conair. Because the appellate panel found Ericsson’s claim construction argument on appeal to be only a “slight change” from that argued at the district court and thus that there was no waiver.

Dissent: In a dissenting opinion, Judge Gajarsa argued that Ericsson’s argument on appeal was a complete “paradigm shift” from what it argued at trial and that Ericsson had at least “ten opportunities . . . to make its [new] claim construction arguments.”

Now, on appeal, Ericsson awakens to the benefit of WMS Gaming and argues for the first time that it controls. . . . The verdict of a jury will not ordinarily be set aside for error not brought to the attention of the trial court.”

Concluding with a policy analysis, Judge Gajarsa finds that the majority holding “improperly encourages parties to take their chances on a high stakes, potentially cost saving argument at trial, while proliferating new arguments on appeal. For various reasons this court already has a high reversal rate on claim construction issues, which tends to encourage appeals and, perhaps, discourage trial courts from heavily investing in claim constructions below. The court’s holding will only intensify this problem, and further distort the proper trial-appellate relationship regarding claim construction.”