New Counsel On Appeal Does Not Overcome Waiver of Novelty Argument

PatentLawPic303Golden Bridge Tech. v. Nokia and Lucent Tech. (Fed. Cir. 2008)

Golden Bridge’s patent covers a CDMA mobile communication scheme that gradually ramps-up the communication power signal in order to avoid interference with other mobile phones.  On summary Judgment, the E.D.Texas court held that Golden Bridge’s patent CDMA mobile communication scheme asserted claims were anticipated by the prior art.

Anticipation is a question of fact normally decided by a jury. However, it may be amenable to summary judgment “if the record reveals no genuine dispute of material fact.”

Waiver of Novelty Argument: On appeal, Golden Bridge argued that the prior art does not disclose a claimed synchronization element. That factual contention, however, was only first presented on appeal. Finding that Golden Bridge had ample opportunity to raise the contention at the district court level, the CAFC found that any appeal on the synchronization issue had been waived.

“There is no reason why Golden Bridge could not have raised the issue of whether the synchronization limitation was disclosed in the H√§kkinen [prior art] reference during the summary judgment proceedings either before the magistrate judge or before the district court judge. . . Golden Bridge cannot simply choose to make its arguments in iterative fashion, raising a new one on appeal after losing on its other at the district court. This is an appellate court and as such we abide by the general rule that new arguments will not be decided in the first instance on appeal.

New Counsel: Golden Bridge argued that it should be given another opportunity to raise the issue because it had hired new counsel on appeal. The appellate panel quickly rejected that argument — holding that “[n]ew appellate counsel does not present an exceptional case or circumstance in which our declining review will result in injustice. To hold otherwise would open the door to every litigant who is unsuccessful at the district court to simply hire new counsel and then argue he should get to raise new issues on appeal.”

Not Fact Finders: Although not directed at any particular colleagues, Judge Moore’s opinion here strongly re-states the the limited role of the Federal Circuit as an appellate panel: “Appellate courts review district court judgments; we do not find facts. Middleton v. Dep’t of Def., 185 F.3d 1374, 1383 (Fed. Cir. 1999) (‘[A]s an appellate court, we may not find facts . . . .’).”

Notes:

  • Based on a request by Nokia, the patent is concurrently under reexamination at the USPTO.

11 thoughts on “New Counsel On Appeal Does Not Overcome Waiver of Novelty Argument

  1. 11

    Appellate attorneys are general litigators, how do you find fault with earlier counsel and then hire a bunch of folks that wouldn’t know their arse from a patent…wow.

  2. 10

    In order for a trial court to find anticipation doesn’t it have to make findings of facts regarding the prior art and all limitations of the patent in question, including the claimed synchronization element? Thus, the issue of whether the prior art anticipated the synchronization element was necessarily an issue at the trial court and the appellate court could review the finding of fact at least on the clearly erroneous standard?

  3. 9

    Has anyone looked at the anticipation argument closely enough to see if the new argument on appeal had any legs, even if it had been raised properly at the district court? I’m no good at understanding telecommunications, but I can use a cell phone.

  4. 8

    According to the CAFC opinion, appellant’s attorney was Duncan C. Turner, Badgley-Mullins Law Group, PLLC, of Seattle, Washington.

  5. 6

    “Lordy, please tell me this appeal was handled on a contingency basis.”

    I’m no litigator, but surely you don’t take an appeal on a contingency basis when the best outcome you can hope for is a remand. Do you?

    My understanding is that GoldenBridge is a firm formed expressly for the purpose of generating and enforcing telecommunications patents. I can’t imagine that they’re willing to give away one-third of the prize. I bet they pay their lawyers by the hour.

  6. 5

    hard x 3:

    The underlying factual determinations for obviousness are questions of fact. Obviousness, given the facts determined by the factfinder, is a question of law.

    Anticipation has no similar dual inquiry — either all the elements are there or they are not. Question of fact, no legal determination needed.

  7. 4

    Let me get this straight…

    Obviousness is a question of law and anticipation is a question of fact???!!

    I must be mistaken; someone please correct me!

  8. 3

    Let me get this straight…

    Obviousness is a question of law and anticipation is a question of fact???!!

    I must be mistaken; someone please correct me!

  9. 2

    Let me get this straight…

    Obviousness is a question of law and anticipation is a question of fact???!!

    I must be mistaken; someone please correct me!

  10. 1

    “We decline to remand this case to the district court to decide an argument as to what a prior art reference discloses when that argument, without **any** justification, is raised for the first time on appeal.”

    Lordy, please tell me this appeal was handled on a contingency basis.

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