Waiver of Claim Construction Arguments NPT v. RIM, Harris v
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Waiver of Claim Construction Arguments: NPT v. RIM, Harris v. Ericsson, and SanDisk v. Memorex Mark D. Alleman firstname.lastname@example.org NPT, Inc. v. Research In Motion, Ltd., 392 F.3d 1336 (Fed. Cir. 2004) (Linn) At issue – interpretation of claim term ―email system‖ RIM argues for the first time on appeal that ―email system‖ requires a ―pull technology‖ At Markman hearing before district court, RIM argued an ―opposite interpretation‖ Court held that ―presenting proposed claim constructions which alter claim scope for the first time on appeal invokes the doctrine of waiver as to the new claim constructions, ‖ citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1370 (Fed. Cir. 2002); Interactive Gift Express, 256 F.3d at 1346. Court found: ―For the first time on appeal, RIM is attempting to add a pull technology limitation to the claim that it did not raise before the district court. Because RIM failed to raise before the district court the argument that the claim should be limited to pull technology, the argument was waived, and we decline to address it on the merits.‖ SanDisk Corp. v. Memorex Products, Inc., ___ F.3d ___ (Fed. Cir. 2005) (Gajarsa) Background ‗987 patent relates to flash memory architecture. Claims recite that Flash EEprom memory to be grouped into partitioned sectors Claim construction ruling from prior litigation required that each memory cell in the Flash EEprom memory to be grouped into partitioned sectors. Sandisk cited this ruling in a preliminary injunction brief in this litigation. Defendants assert that this prior claim construction ruling requires every memory cell in the Flash EEprom memory to be grouped into partitioned sectors. Summary judgment: Trial court ruled that the claims in issue did not cover Defendant‘s Flash memory system in which some EEprom memory cells are grouped into sectors that are not partitioned into user and overhead data portions. Sandisk appeals the order granting summary judgment, and argues for the first time on appeal that that the claims cover devices that include at least some, but not all, partitioned memory cells. Defendant asserts that Sandisk‘s new argument is prohibited by judicial estoppel, since it is different than Sandisk‘s arguments in prior litigation and the preliminary injunction. SanDisk Corp. v. Memorex Products, Inc., ___ F.3d ___ (Fed. Cir. 2005) (cont.) Claim 1. A method of operating a computer system including a processor and a memory system, wherein the memory system includes an array of non- volatile floating gate memory cells partitioned into a plurality of sectors that individually include a distinct group of said array of memory cells that are erasable together as a unit, comprising: providing said memory array and a memory controller within a card that is removably connectable to the computer system, said controller being connectable to said processor for controlling operation of the array when the card is connected to the computer system, partitioning the memory cells within the individual sectors into at least a user data portion and an overhead portion . . . . SanDisk Corp. v. Memorex Products, Inc., ___ F.3d ___ (Fed. Cir. 2005) (cont.) Judicial Estoppel Definition Court notes that ―Judicial estoppel is an equitable doctrine that prevents a litigant from ―perverting‖ the judicial process by, after urging and prevailing on a particular position in one litigation, urging a contrary position in a subsequent proceeding – or at a later phase of the same proceeding – against one who relied on the earlier position.‖ SanDisk Corp. v. Memorex Products, Inc., ___ F.3d ___ (Fed. Cir. 2005) (cont.) Judicial Estoppel Analysis Court cites factors in New Hampshire v. Maine, 532 U.S. 742, 749 (2001), to determine whether to apply judicial estoppel: (1) the party‘s later position must be ―clearly inconsistent‖ with the earlier position; (2) the party must have succeeded in persuading a court to adopt the earlier position in the earlier proceeding; and (3) the courts consider ―whether the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped.‖ SanDisk Corp. v. Memorex Products, Inc., ___ F.3d ___ (Fed. Cir. 2005) (cont.) Judicial Estoppel Analysis (cont.) Court declined to apply judicial estoppel, noting: (1) Sandisk‘s position is not clearly inconsistent with prior positions – Lexar found to involve a different dispute about claim terms— whether the memory cells were partitioned into single user and data portions, not whether every memory cell was partitioned. SanDisk‘s position in the preliminary injunction brief did not rely on Lexar construction for the premise that every cell be partitioned. (2) Equities do not favor limiting evolution of arguments after preliminary injunction phase, since record not fully developed and opportunities to revisit issues exist Court observed this is ―precisely what happened‖ here – SanDisk would not have proffered its arguments in the preliminary injunction, had it known more about Defendant‘s products Harris Corp. v. Ericsson, Inc., ___ F.3d ___ (Fed. Cir. 2005) (Prost) Background US Pat. No. 4,635,338; claims 1, 2, 33 – ―communications system‖ comprising: time domain processing means for simulating the time domain effect of said dispersive medium on signals transmitted through it by deducing prescribed characteristics of said medium, and for producing estimates of said information signals in accordance with a preselected relationship between said prescribed characteristics of said simulated effect and said known and received signals Ericsson asserted that these claims were limited to a two-step process for dealing with intersymbol interference, and that its products dealt with intersymbol interference in one step. District court held that § 112 ¶ 6 applied, and that ―symbol processor 37‖ in the specification was the corresponding structure that performed the claimed function of the time domain processing means. Jury instructions stated that either one or two step process would infringe. Jury found literal infringement and determined $61,250,000 in damages (later reduced to $43,270,150). Harris appealed. Harris Corp. v. Ericsson, Inc., ___ F.3d ___ (Fed. Cir. 2005) (cont.) Fast Array Processor 37A calculates the effect of the medium and applies it to the received symbols. ‘338 patent, col. 15, ll. 2-6. Processor 37B examines the . . . estimates and compares these codes with those corresponding to the code values capable of being transmitted. Col. 15, ll. 13-17. Harris Corp. v. Ericsson, Inc., ___ F.3d ___ (Fed. Cir. 2005) (cont.) Ericsson’s argument on appeal On appeal, Ericsson argues for the first time that WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) should be applied. WMS Gaming Rule: the ―corresponding structure‖ for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification. Under WMS Gaming, claims 1, 2, and 33 would require a two step process, because the only algorithm disclosed in the specification utilizes a two step process. Harris Corp. v. Ericsson, Inc., ___ F.3d ___ (Fed. Cir. 2005) (cont.) Fed Cir. decision WMS Gaming The WMS Gaming algorithm rule should have been applied. (―Because the district court was unaware of our decision in WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999), it did not limit the scope of claims 1, 2, and 33 to a particular algorithm.‖) Waiver - Choice of Law Fed. Cir. Law controls (―Because the ability to make claim construction arguments on appeal is intimately bound up with patent enforcement, we hold that Federal Circuit law controls waiver in the context of claim construction arguments.‖) Harris Corp. v. Ericsson, Inc., ___ F.3d ___ (Fed. Cir. 2005) (cont.) Fed. Cir. Waiver Analysis 1. Compare Ericsson‘s appellate and trial court arguments to determine if they are different. Answer: YES, the arguments are different. Ericsson argued for 2- step interpretation before district court, but NOT based on the WMS Gaming rationale that the two-step algorithm described in the patent is ―corresponding structure‖ for the means claim. 2. Ask whether the change in Ericsson‘s argument is so insubstantial that it represents ―the same concept‖ that Ericsson raised before the district court, in which case there would be no waiver. See Gaus v. Conair Corp., 363 F.3d 1284, 1287-88 (Fed. Cir. 2004). Answer: YES, Ericsson‘s two-step argument now is essentially the same concept it argued at trial. So, waiver does not apply. Harris Corp. v. Ericsson, Inc., ___ F.3d ___ (Fed. Cir. 2005) (Dissent by Gajarsa) Dissent (Gajarsa) Claim construction briefs were filed by Ericsson at the lower court level five months after WMS Gaming decision came down. Ericsson had 10 opportunities to bring forth the WMS Gaming argument prior to appeal, and did not.