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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Finds Plaintiff Waived Claim Construction Argument at Trial

Lazare Kaplan International, Inc. v. Photoscribe Technologies, Inc. (Fed. Cir. Dec. 22, 2010)

In this case, the Federal Circuit Found that the plaintiff waived its claim construction argument at trial where the parties had agreed on a claim construction, disagreed on the proper test to determine infringement, and did not ask the district court to further construe the claim term.  While other claim construction issues were discussed in this opinion, this post focuses on the waiver issue.  The patents at issue related to using a fixed laser to create a series of microscopic spots on the surface of gemstones such as diamonds.

The waiver issue concerned the claim term "positional accuracy of placement", which the parties agreed means that "during inscription … the center of each spot is within +/- 1.1 microns of the desired position of the spot on the diamond."  At trial, defendants argued that, in order to prove this limitation was infringed, plaintiff needed to show that each graphitized spot on the diamond was placed within +/- 1 micron of a predetermined reference point on the diamond, whereas plaintiff argued that it need only demonstrate that "when you put down a spot" you can put another spot "right next to it."  Neither party had asked the court to further construe this claim term.

Plaintiff argued on appeal that the district court erred by failing to further construe the claim term under O2 Micro.  Defendants argued that the parties did not dispute the construction of the term, but instead only the proper test to determine infringement.  The Federal Circuit agreed with the defendants, finding that the parties dispute "concerns factual questions relating to the test for infringement and not the legal inquiry of the appropriate scope" of the claim term.  The Court also pointed out that even if plaintiff was correct, it waived its argument by not raising it before the district court.  While plaintiff argued that the district court "was aware of the issue," primarily relying on two statements from the district court during trial, the Federal Circuit stated "it was incumbent upon [plaintiff] to raise its claim construction argument before the district court, and, having failed to do so, [plaintiff] cannot now resurrect that argument on appeal by pointing to ambiguous statements in the record."