Golden Bridge Technology, Inc. v. Nokia, Inc.

• Decision Date: 21 May 2008
• Docket Number: No. 2007-1215.,2007-1215.
• Parties: GOLDEN BRIDGE TECHNOLOGY, INC., Plaintiff-Appellant, v. NOKIA, INC., Defendant, and Lucent Technologies, Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

527 F.3d 1318

GOLDEN BRIDGE TECHNOLOGY, INC., Plaintiff-Appellant, v. NOKIA, INC., Defendant, and Lucent Technologies, Inc., Defendant-Appellee.

No. 2007-1215.

United States Court of Appeals, Federal Circuit.

May 21, 2008.

Duncan C. Turner, Badgley-Mullins Law Group, PLLC, of Seattle, WA, argued for plaintiff-appellant.

David A. Nelson, Latham & Watkins LLP, of Chicago, IL, argued for defendant-appellee. With him on the brief was David C. McKone.

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, 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 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 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 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, 96 S.Ct. 2868, 49 L.Ed.2d 826 (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."). Whil...