Bring New Claim Construction Arguments to the Appeal at Your Peril

In a case largely significant as a reminder as to what an appellant is (and is not) entitled to argue on appeal, the U.S. Court of Appeals for the Federal Circuit (once again) warned that “a party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below.” Digital-Vending Services International, LLC v. The University of Phoenix, et al., Case No. 11-1216 (Fed. Cir. March 7, 2012) (Rader, C. J.) (Moore, J., dissenting-in-part).

After the district court issued a claim construction order, the defendant, Phoenix, sought summary judgment of non-infringement based on the claim construction. The plaintiff, Digital-Vending, filed a motion seeking clarification of the district court’s construction of the claim term “registered user.” In construing the term, the district court did not adopt either party’s construction but ordered its own construction. The district court granted the defendant’s summary judgment motion and denied the plaintiff’s motion for “clarification.” Digital-Vending appealed.

On appeal, Digital-Vending did not contest the grant of summary judgment based on the district court’s claim construction, but only on the construction itself. In the appeal, Digital-Vending argued for a construction that was different from and narrower than the construction it proposed to the district court; the new construction was also narrower than the construction adopted by the district court. The Federal Circuit refused to even review the argument since it had not been proposed to the trial court.

While the Federal Circuit conceded that it reviews claims construction without deference, it followed with the admonition that “a party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below.” The Federal Circuit rebuffed Digital-Vending argument that under Blackboard v. Desire2Learn, a party is free to seek a claim construction on appeal that is substantially different from the construction it proposed whenever a district court “construed the claim language in a manner different from the construction proposed by either party.” Rather, the Court explained that in Blackboard, “the appellee’s claim construction position on appeal was consistent with its earlier proposed construction” even though inconsistent with a statement made at the Markman hearing. Even based on colloquy, the Federal Circuit explained that the question of waiver was a “difficult one” but ultimately held (in Blackboard) that the appellee had not waived its validity challenge, which relied upon an issue of claim construction. However, in what appears to be an effort to foreclose the issue from arising in the future, the Court very clearly explained that Blackboard “did not hold that a party was free to argue a claim construction different from both its earlier proposed construction and the district court’s construction simply because the district court had not adopted either party’s proposed constructions. To the contrary, this court has often stated that a party may not, as a general rule, change the scope of its claim construction on appeal.”

Ultimately however, the Federal Circuit did reverse the summary judgment based on its own construction of the term “registration server” and remanded.

Judge Moore, in dissent, would have affirmed the district court's claim construction—based on what she regarded to be a clear case of disavowal under the principles articulated in Teleflex v. Ficosa (2002)—and therefore the grant of summary judgment of non-infringement as well.