Waiver of Claim Construction Arguments NPT v. RIM, Harris v

							Waiver of Claim Construction
Arguments: NPT v. RIM, Harris v.
Ericsson, and SanDisk v. Memorex



Mark D. Alleman
alleman@ahmrt.com
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.