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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Finds Claim Construction Arguments Waived on Appeal

Enovsys LLC v. Nextel Communications, Inc. (Fed. Cir. Aug. 3, 2010)

In this case, a split Federal Circuit panel found that defendant had waived its right to argue claim construction on appeal.  The patents at issue related to systems for determining the physical location of a call receiver (such as a cell phone) using a network of space satellites and ground stations as well as systems for disclosing a mobile device's physical location only to authorized requests.

The district court construed various terms of these patents, including "means to resolve" and "pre-authorized."  The "means to resolve" term was found to invoke 112 P 6, and the district court found that the corresponding structure for this term included "connecting circuitry."  The "pre-authorized" term was construed by the district court to mean "authorized to submit a request in advance of determining whether the request will be granted."  At trial, defendant argued that the accused systems lacked connecting circuitry because they did not have the same circuitry shown in one of the figures of one of the patents at issue.  Defendant also disputed at trial whether the accused systems satisfied the "pre-authorized" limitation.

On appeal, defendant argued it was entitled to JMOL on infringement.  Plaintiff argued that defendant waived its arguments.

Regarding the "means to resolve" term, the Federal Circuit found that defendant "never requested the district court construe 'connecting circuitry,' or offered a construction of that term … [t]hough it had ample opportunity to do so, at no time before or during trial did [defendants] object to the district court's claim construction, request clarification, or offer the construction it now advances on appeal."  Regarding the "pre-authorized" term, the court similarly found that defendant "waived its right to argue its new claim construction … by waiting until after the jury returned its verdict … [defendant] never objected to the district court's claim construction or requested clarification as to whether 'pre-authorized' pertained to the network or a particular mobile device."

Judge Newman, in dissent, wrote that "the question is not of claim construction, but of infringement of the claim as construed … [a] district court ordinarily does not resolve all infringement issues through a narrowly targeted claim construction focused on the accused device … [a]ny lapse of precision between fact and law does not lead to 'waiver' of the right to defend or the right to judicial review (although it may affect the standard of review).  It is incorrect, and a negation of the processes of law, to hold that such a defense against infringement was waived because it was not presented, resolved, or appealed as a matter of claim construction."