The Art of Preservation in Patent Infringement Lawsuits: The Benefits of Appellate Counsel in the Trial Court

Presented at the American Intellectual Property Law Association, 2006 Mid-Winter Institute, February 1-4, 2006.


In 2005, the Federal Circuit Court of Appeals granted some form of relief in 67% of patent infringement cases appealed after trial. With such a high reversal rate, the last thing any practitioner wants to read in a Federal Circuit opinion is that the golden argument on appeal has been waived. Having a good appellate lawyer assist at trial can help avoid waiver while allowing the trial lawyers to focus on the merits of the case, the judge, and the jury. This paper highlights the procedural steps to preserving issues for appeal in patent infringement lawsuits and provides strategical suggestions on how best to use these steps (and an appellate lawyer) during the litigation process.

General Principles Governing Error Preservation
Absent exceptional circumstances, a party may not raise an argument on appeal unless it was first raised in the trial court. Specifically, to preserve an argument for appeal, the complaining party must state the argument clearly to the district court so that the court may make an informed ruling. While this standard sounds simple enough, a substantial body of case law has developed around this basic procedure. For instance, how distinct must an objection be? When is it sufficient to simply point out the error, and when must it be corrected? And, at what point must the objection be made?

The answers to these questions vary depending upon the procedural posture of the case and the jurisdiction governing the procedural standards. On procedural questions, the Federal Circuit has stated that it will defer to "the law of the regional circuit in which the appeal from the district court would usually lie." However, noting the significance to Federal Circuit law of preserving error in the context of patent infringement cases, the circuit court applies its own standards to preservation questions when the issue being raised is uniquely one of patent law. Thus, whether a pre-verdict JMOL directed to inequitable conduct and the on-sale bar defense is sufficient to preserve the right to raise a post-verdict JMOL on the broader question of obviousness, pertains uniquely to patent law and is governed by Federal Circuit standards.

The complete article appears in the PDF below.


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