Tuesday, April 14, 2020

The dissent of Judge Newman raises significant issues in ERICSSON INC. v. TCL COMMUNICATION TECHNOLOGY

Part of Judge Newman's dissent addresses preservation of issues:

Contrary to the panel majority’s theory, the Section
101 issue was not preserved for appeal. The Fifth Circuit
is explicit that an “interlocutory order denying summary
judgment is not to be reviewed,” even after “full trial on the
merits” and even for “purely legal issues,” unless “it is sufficiently preserved in a Rule 50 motion.” Feld Motor
Sports, Inc. v. Traxxas, L.P., 861 F.3d 591, 595–96 & n.4
(5th Cir. 2017); Puga v. RCX Sols., Inc., 922 F.3d 285, 291
n.2 (5th Cir. 2019). The Fifth Circuit stresses that appellate review is available only for issues preserved in a Rule
50 motion. Feld, 861 F.3d at 596.

Other circuits are in accord. See, e.g., Ji v. Bose Corp.,
626 F.3d 116, 127 (1st Cir. 2010) (a party “must restate its
objection” in order “to preserve its challenge for appeal”);
Elm Ridge Expl. Co., LLC v. Engle, 721 F.3d 1199, 1219
(10th Cir. 2013) (a party cannot appeal the denial of its
Rule 50 motion “when it did not renew the motion under
Rule 50(b) after the jury’s verdict”); Duban v. Waverly Sales
Co., 760 F.3d 832, 835 (8th Cir. 2014) (“Litigants must renew summary judgment arguments in Rule 50 motions to
preserve their arguments for appeal.”); Luxottica Grp.,
S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303, 1310 n.1
(11th Cir. 2019) (“[T]he only way to preserve a Rule 50(a)
motion is to renew it under Rule 50(b).”). Although courts
have allowed a few departures in extraordinary circumstances, the case at bar is not asserted to present extraordinary circumstances.


The Federal Circuit has recognized that “[d]enials of
summary judgment are not appealable.” Novo Nordisk
A/S v. Becton Dickinson & Co., 304 F.3d 1216, 1221 (Fed.
Cir. 2002). Our departure today defies this classical procedural rule.
Here, TCL’s pre-trial motion for summary judgment was denied by the district court, no post-trial motion
was filed, and Section 101 was not mentioned in the district
court’s final decision or requested for reconsideration. Yet
the majority accepts this untried and undecided issue for
our appellate decision, and decides it, overriding the judgment entered on the jury verdict. That is not fair and reasonable judicial process.

Of the 101 issue itself, Judge Newman wrote:

The majority appears to require that all of the technologic information in the specification must be recited in the
claims in order to avoid abstractness of the claims. This is
a new requirement for claims, and not only conflicts with
the opportunity to present claims of varying scope, but also
conflicts with the principle that claims are intended to be
concise statements of the patented invention as distinguished from the prior art. See 35 U.S.C. § 112. It is not
the law and is not the practice that every descriptive and
distinguishing detail from the specification must be stated
in the claims.

Section 101 does not impose claim requirements beyond those of Sections 102, 103, 112, and the rest of patent
law. The majority’s new law of claim content brings fresh
uncertainty to an already strained innovation incentive.

Of interest to patent draftsmen, Judge Newman observed:

My colleagues also hold that, despite the technologically detailed claim limitations,
the claims are for an abstract idea because of the final paragraph of the ’510 patent
specification, the terminal boiler-plate beloved of patent
draftsmen. This paragraph concludes the specification as

While what has been described constitute exemplary embodiments of the invention, it should be
understood that the invention can be varied in
many ways without departing from the scope
thereof. For example, although the present invention has been described primarily in connection
with a platform for a mobile terminal for a wireless
telecommunications system, the invention can also
be used in connection with platforms for other
products. Because the invention can be varied in
many ways, it should be recognized that the invention should be limited only insofar as is required by
the scope of the following claims.


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