United States Court of Appeals for the Federal Circuit
2007-1215
GOLDEN BRIDGE TECHNOLOGY, INC.,
Plaintiff-Appellant,
v.
NOKIA, INC.,
Defendant,
and
LUCENT TECHNOLOGIES, INC.,
Defendant-Appellee.
Duncan C. Turner, Badgley-Mullins Law Group, PLLC, of Seattle,
Washington,argued for plaintiff-appellant.
David A. Nelson, Latham & Watkins LLP, of Chicago, Illinois, argued for
defendant-appellee. With him on the brief was David C. McKone.
Appealed from: United States District Court for the Eastern District of Texas
Judge Leonard Davis
United States Court of Appeals for the Federal Circuit
2007-1215
GOLDEN BRIDGE TECHNOLOGY, INC.,
Plaintiff-Appellant,
v.
NOKIA, INC.,
Defendant,
and
LUCENT TECHNOLOGIES, INC.,
Defendant-Appellee.
Appeal from the United States District Court for the Eastern District of Texas in case no.
2:05-CV-151, Judge Leonard Davis.
___________________________
DECIDED: May 21, 2008
___________________________
Before MICHEL, Chief Judge, NEWMAN and MOORE, Circuit Judges.
MOORE, Circuit Judge.
Plaintiff-Appellant, Golden Bridge Technology, Inc. (Golden Bridge) appeals the
decision of the United States District Court for the Eastern District of Texas granting
summary judgment that claims 13 and 23 of U.S. Patent No. 6,574,267 (’267 patent),
which is assigned to Golden Bridge, are anticipated by PCT Publication No.
WO9746041 to Häkkinen et al. (Häkkinen) and a May 1995 version of a Code Division
Multiple Access (CDMA) standard called “Mobile Station-Base Station Compatibility
Standard for Dual-Mode Wideband Spread Spectrum Cellular System,” TIA/EIA/IS-95A
(IS-95A). We affirm the judgment of the district court that claims 13 and 23 are
anticipated by the Häkkinen reference. Because we affirm the district court judgment of
invalidity on the basis of the Häkkinen reference, we do not address the invalidation
based upon the IS-95A reference.
BACKGROUND
The mobile communication system described in the ’267 patent employs a
CDMA scheme, where multiple mobile phones communicate at the same time with the
same base station over the same frequency range by using different numerical
“spreading codes” in their transmissions. 1 If too many mobile phones are transmitting
simultaneously at high power levels, the mobile phones can interfere with each other.
Therefore, there is a need to have each mobile phone transmit only as loudly as
necessary to be heard by the base station. The ’267 patent claims a technique to
achieve this result, the gradual ramping up of the power signal in a CDMA system.
After Golden Bridge filed suit against Lucent, the district court held a claim
construction hearing, and the parties shortly thereafter reached agreement on the
construction of certain claim terms at issue in this appeal. Lucent and Nokia filed a
motion for summary judgment that the asserted claims of the ’267 patent were
anticipated by the IS-95A and Häkkinen references. The motion was referred to a
Magistrate Judge, who, after conducting a hearing and reviewing extensive briefing,
1
Spreading codes enable the mobile phones and the base station to
distinguish a particular wireless communication from other concurrent communications.
See ’267 patent col.5 ll.4-7 and ll.28-30.
2007-1215 2
recommended a finding of invalidity of the asserted claims of the ’267 patent as being
anticipated under 35 U.S.C. § 102(b) by each the IS-95A reference and the Häkkinen
reference. Golden Bridge objected and filed another brief articulating the reasons that
the Häkkinen reference did not anticipate. Based upon further review and analysis of
the evidentiary record, the district court adopted the Magistrate’s Report and
Recommendation. The district court then entered summary judgment of invalidity from
which Golden Bridge now appeals.
DISCUSSION
This court reviews a ruling of summary judgment de novo. Liebel-Flarsheim Co.
v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed. Cir. 2007). Although anticipation under 35
U.S.C. § 102 is a question of fact, it may be decided on summary judgment if the record
reveals no genuine dispute of material fact. See Gen. Elec. Co. v. Nintendo Co., 179
F.3d 1350, 1353 (Fed. Cir. 1999). The moving party, Lucent, is entitled to summary
judgment “if the pleadings, the discovery and disclosure materials on file, and any
affidavits show that there is no genuine issue as to any material fact and that the
movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). The district
court held that Lucent presented sufficient evidence to show that it is entitled to
summary judgment that claims 13 and 23 were anticipated, and that Golden Bridge did
not “set out specific facts showing a genuine issue for trial” to avoid summary judgment.
See id. 56(e).
The only argument that Golden Bridge advances on appeal with regard to
whether the Häkkinen reference anticipates—that the Häkkinen reference does not
disclose “synchronization prior to the transmission of the preamble . . . in the uplink
2007-1215 3
direction”—is an issue of fact never presented to the district court. See Para-Ordnance
Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995) (stating what a
prior art reference discloses is a question of fact).
Golden Bridge does not contend that this alleged distinction between the claims
and the prior art was subsumed in either its claim construction arguments presented to
the district court or its arguments to distinguish the Häkkinen reference presented to the
district court. Instead, Golden Bridge unequivocally admits that its factual contention is
an entirely new argument raised for the first time on appeal and never presented to the
district court. See Reply Br. 18 (Golden Bridge “concedes that it has presented a new
argument. . . .”); id. at 19 (Golden Bridge has “introduced a new distinction between the
claimed invention and the prior art.”); Oral Arg. at 1:43 (“We do concede that is a new
argument.”).
Claim construction was completely resolved with regard to the “synchronization
prior to the transmission” limitation prior to the motion for summary judgment. In its
summary judgment motion, Lucent contended that the Häkkinen reference taught all the
claim limitations of claims 13 and 23. It presented expert testimony demonstrating how
each limitation, including the synchronization limitation, was present in the Häkkinen
reference. Golden Bridge opposed the motion for summary judgment of anticipation by
the Häkkinen reference solely on the issue that “the random access procedure
disclosed and claimed in the ’267 patent differs from the procedure described in the
Häkkinen publication in the manner in which the mobile station determines whether to
re-transmit the preamble.” It focused solely on what it termed “the preamble interruption
2007-1215 4
limitation.” It never even mentioned the synchronization limitation, which is indisputably
distinct from the preamble interruption limitation. 2
Golden Bridge admits that it never argued to the district court that the Häkkinen
reference failed to disclose the “synchronization prior to transmission” limitation.
Further, Golden Bridge does not argue to this court that it was in any way prevented
from raising this argument in opposition to the summary judgment motion. In fact,
Golden Bridge had multiple opportunities to present its arguments regarding why the
Häkkinen reference failed to anticipate its claims. It filed an opposition to the summary
judgment motion in which it detailed its arguments regarding the Häkkinen reference,
but never mentioned the synchronization limitation. It then filed an opposition to the
Magistrate’s Recommendation of invalidity based upon the Häkkinen reference, in
which it again detailed its arguments, but never mentioned the synchronization
limitation. At any of these points, Golden Bridge could have, and should have, raised its
contention that the Häkkinen reference fails to teach the synchronization limitation of
claims 13 and 23. Golden Bridge chose to focus its argument at all times exclusively on
the preamble interruption limitation. Rather than appealing that issue, Golden Bridge
now raises a new and entirely different ground on appeal—that the Häkkinen reference
does not teach “synchronization prior to transmission.” We cannot sanction the iterative
process Golden Bridge would like to pursue. It would be unfair to allow Golden Bridge
to bring some arguments distinguishing the Häkkinen reference during proceedings at
2
The preamble interruption limitation focuses on transmission. The
synchronization limitation focuses on what must happen prior to transmission.
2007-1215 5
the district court and then, only after those arguments have been completely rejected, 3
bring entirely different arguments on appeal for the first time.
“[I]t is the general rule . . . that a federal appellate court does not consider an
issue not passed upon below.” Singleton v. Wulff, 428 U.S. 106, 120 (1976). Our
precedent generally counsels against entertaining arguments not presented to the
district court. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir.
1997) (“In short, this court does not ‘review’ that which was not presented to the district
court.”). While appellate courts are given the discretion to decide when to deviate from
this general rule of waiver, see Singleton, 428 U.S. at 121, we have explained that
“prudential considerations” articulated by the Supreme Court counsel against hearing
new arguments for the first time on appeal absent limited circumstances, see Forshey v.
Principi, 284 F.3d 1335, 1353-54 (Fed. Cir. 2002) (quoting Hormel v. Helvering, 312
U.S. 552, 556-57 (1941)).
In Forshey, this court articulated an exemplary set of limited circumstances in
which hearing arguments for the first time on appeal is appropriate: (1) “[w]hen new
legislation is passed while an appeal is pending, courts have an obligation to apply the
new law if Congress intended retroactive application even though the issue was not
decided or raised below,” 284 F.3d at 1355; (2) “when there is a change in the
jurisprudence of the reviewing court or the Supreme Court after consideration of the
case by the lower court,” id. at 1356; (3) “appellate courts may apply the correct law
even if the parties did not argue it below and the court below did not decide it, but only if
3
Although it is not relevant to our determination of waiver of the argument
related to the synchronization limitation, we do note that Golden Bridge completely
2007-1215 6
an issue is properly before the court,” id.; (4) “where a party appeared pro se before the
lower court, a court of appeals may appropriately be less stringent in requiring that the
issue have been raised explicitly below,” id. at 1357. None of these circumstances are
present here, and Golden Bridge has pointed to no other special circumstances that
would counsel in favor of considering its new argument on appeal in the first instance.
There is no reason why Golden Bridge could not have raised the issue of whether the
synchronization limitation was disclosed in the Häkkinen reference during the summary
judgment proceedings either before the magistrate judge or before the district court
judge. This limitation in no way depends upon or derives from the decision proffered
below. This was exactly what was at issue throughout the summary judgment
proceedings. 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. Golden Bridge offers no arguments which
warrant our deviation from this general rule, and no interest of justice that demands our
consideration of an issue it could have, but failed to, raise below.
The only explanation offered by Golden Bridge for why this court should consider
this new argument on appeal is that it has new appellate counsel. Substitution of new
appellate counsel is not one of, or even in proportion to, the limited circumstances
outlined in Forshey. New appellate counsel does not present an exceptional case or
circumstance in which our declining review will result in injustice. To hold otherwise
abandoned the preamble interruption limitation arguments (the arguments made below)
on appeal and has therefore waived any appeal of that determination.
2007-1215 7
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.
In asking us to decide whether the Häkkinen reference discloses synchronization
prior to transmission, not only does Golden Bridge ask us to decide a new issue raised
for the first time on appeal, but also is asking an appellate court to make factual
findings. We decline to determine what a prior art reference discloses, a fact finding, in
the first instance on appeal. 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 . . . .”).
Finally, Golden Bridge argues that if we will not decide the issue raised for the
first time on appeal, this court should remand the case to the district court to consider its
new argument because Lucent also presents new arguments and new evidence on
appeal. Golden Bridge contends that Toxgon Corp. v. BNFL, Inc., 312 F.3d 1379, 1384
(Fed. Cir. 2002), requires this court to remand to the district court a case where both
parties seek to introduce new arguments regarding the factual distinctions between the
claims and the prior art. Toxgon does not stand for such a proposition. In Toxgon, we
reversed the district court’s dismissal for lack of subject matter jurisdiction. This
reversal warranted a remand to the district court to consider the merits of the case. The
defendants in Toxgon urged this court to affirm the dismissal, rather than remand the
case, by ruling on summary judgment on their affirmative defense. We noted that such
a ruling would entail deciding numerous factual issues presented for the first time on
appeal and hence, we declined to do so. Instead, we instructed the parties to submit
the new evidence to the district court after remand. Our decision to remand the case to
2007-1215 8
the district court was not based on the fact that both parties in Toxgon made new
arguments on appeal, but instead was mandated by our reversal of the district court’s
dismissal for lack of subject matter jurisdiction. Our instruction regarding the new
evidence was simply a matter of course in light of remand.
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. For the foregoing reasons, we affirm the judgment of
the district court that claims 13 and 23 are invalid as anticipated by the Häkkinen
reference. In light of this holding, we do not reach the issue of whether the IS-95A
reference would have also resulted in invalidity.
AFFIRMED
2007-1215 9