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IP Alert: Failure to Raise Claim Construction Issue at Jury-Instruction Phase Constituted Forfeiture

June 9, 2022

On May 20, in Michael Philip Kaufman v. Microsoft Corporation, the Federal Circuit issued an opinion illustrating the importance of raising claim construction disputes at trial to avoid forfeiting arguments in post-verdict motions and appeals. The court upheld a jury verdict of infringement over Microsoft’s challenge that there were unresolved claim construction issues. The court found that Microsoft’s failure to preserve the issues, including in the jury-instruction phase, constituted forfeiture. The case also implicates practical questions such as: Do the parties have to raise all claim construction arguments during the claim construction phase of the case? When is it too late to raise a new claim construction argument? If a court’s rules limit the number of terms to be construed, will a party be estopped from having additional terms construed later in the case? What must a party do to preserve a claim construction issue for appeal?

Kaufman’s patent covered methods for using a computer to automatically generate an end-user interface for working with data in a relational database. The claims recited “a processor for automatically generating an end-user interface.” Microsoft argued during claim construction that the plain and ordinary meaning of “automatically” permits some user intervention. Microsoft later argued at summary judgment that “automatically” meant “no human labor required,” but Microsoft did not propose a construction that identified the scope of actions in the overall process that had to be automatic and what actions a developer could perform manually. Microsoft also argued at summary judgment that there was an open claim construction dispute that needed to be resolved before trial. After further discussion, however, the parties appeared to agree that “automatically” meant that no separate developer input occurred. As a result, the district court found that there was no actual dispute regarding the meaning of “automatically” and denied Microsoft’s motion for summary judgement of noninfringement. A jury found Microsoft liable for infringement. The district court further denied Microsoft’s post-verdict motions for judgment as a matter of law and for a new trial.

Microsoft argued on appeal that the district court erred by not ordering a new trial, because, under O2 Micro International v. Beyond Innovation Technology (“02 Micro”), clarification of the construction of “automatically” could have reasonably led the jury to a different verdict. Although the Federal Circuit acknowledged the requirement under O2 Micro that the trial judge, not the jury, must resolve claim construction disputes, the Federal Circuit stated that an O2 Micro issue does not necessarily arise whenever further claim construction could resolve the dispute. Rather, a party must “sufficiently request further construction of the relevant limitation” to raise an actual dispute. If there was no indication that the court was aware of the supposed dispute, a party is considered to have forfeited the O2 Micro issue and cannot resurrect its argument on appeal by pointing to ambiguous statements in the record.

Applying these principles, the court found that Microsoft could not rely on its own ambiguous statements at different phases in the case. Microsoft did not include a definition of the scope of the “automatically” requirement in its proposed jury instructions and did not point to anything in the charge conference that raised the issue. The court noted that in the claim construction phase, Microsoft did not request a construction of “automatically.” And, while Microsoft asserted a need for a construction of “automatically” in summary judgment briefing, it never clearly articulated that a construction was needed regarding the scope of the term, nor did it offer the district court a construction that would have resolved the scope issue. In short, the court reasoned that although Microsoft may have touched on the issue at different points in the case, Microsoft never clearly articulated the dispute or proposed a construction to resolve that dispute.

This case highlights the importance of clearly and timely articulating claim construction arguments. Timely raising arguments does not necessarily mean during claim construction or at summary judgment. Claim construction issues may be timely even if they are raised in the context of proposing jury instructions, and, moreover, must be raised at that time to preserve the issue if they were not clearly raised and resolved earlier. It isn’t enough to raise the specter of a dispute; the best practice is for litigants to set forth the dispute, identify how it relates to the scope of the claim, and provide a construction that purports to resolve the dispute. Otherwise, a party risks forfeiting the argument, as Microsoft did in this case. Litigants should also revisit claim construction issues throughout a case. All of this requires carefully and thoroughly developing case strategies early on to anticipate infringement and validity arguments that may require claim construction, clearly articulating any claim construction disputes and proposing constructions that address the disputes, and being vigilant as the case progresses to be sure that claim construction disputes are preserved on appeal.

For more information on this ruling, please contact Fitch Even partner Joseph F. Marinelli, author of this alert. 

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