Further to this previous article suggestion about waiver, I found these quotes from Federal Circuit case law to be interesting. Some of the cases concern the Federal Circuit noting that the specification is often intrinsic evidence in patent cases and how that affects the waiver determination.
We reject Magseis’ contention that Seabed waived certain arguments concerning the prosecution history by failing to raise them below. The doctrine of waiver does not preclude a party from supporting its original claim construction with new citations to intrinsic evidence of record. See Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1346 (Fed. Cir. 2001). Seabed’s arguments on appeal 1290*1290 do not change the scope of the construction it advanced below, i.e., that “internally fixed within” does not exclude gimbaled geophones. J.A. 446-51. And Magseis does not claim that Seabed’s arguments rely on intrinsic evidence that was not in the record below. Accordingly, we see no waiver.
Seabed Geosolutions (US) Inc. v. MAGSEIS FF LLC, 8 F. 4th 1285, 1289-90 (Fed. Cir. 2021)(Chief Judge Moore writing for the court).
The concerns expressed above in Finnigan and Sage would certainly preclude a party from changing its claim construction, that is, the scope of its claim construction, on appeal. However, those concerns would not necessarily preclude a party from proffering additional or new supporting arguments, based on evidence of record, for its claim construction. As Finnigan indicates, the concerns in waiver relate to issues such as: (1) whether the claim construction and arguments on appeal are consistent with those tendered at trial; (2) whether there is a clear presentation of the issue to be resolved; (3) whether there was an adequate opportunity for response and evidentiary development by the opposing party at trial; and (4) whether there is a record reviewable by the appellate court that is properly crystallized around and responsive to the asserted argument. It is evident that a party’s proffer of additional support from a specification, for an existing claim construction, will not violate these concerns. This follows from the fact that the parties and the district court are assumed to be familiar with the specification because it is admitted into evidence in its entirety and is vital to the process of construing the claims, as described earlier. Thus, the emphasis of different aspects of the specification will not detract from the clarity of the claim construction issue on appeal, nor necessitate additional discovery or testimony. Accordingly, we hold that arguments that are based on a specification in evidence and that are in support of an existing claim construction are not barred by the doctrine of waiver for the sole reason that they were not first presented to the trial court.
Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F. 3d 1323, 1347 (Fed. Cir. 2001)(emphasis added).
We have held that “arguments that are based on a specification in evidence and that are in support of an existing claim construction are not barred by the doctrine of waiver for the sole reason that they were not first presented to the trial court.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1347 (Fed. Cir. 2001); see also Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1289 (Fed. Cir. 2021) (“The doctrine of waiver does not preclude a party from supporting its original claim construction with new citations to intrinsic evidence of record.”). Medytox acknowledges that the Board did not, in the first instance, address the intrinsic record in its claim construction analysis of the responder rate limitation. Appellant’s Br. 34 n.9. We note, however, that even if we agreed to analyze the intrinsic record for the first time on appeal, it would not change our holding on claim construction because the parties’ constructions do not substantively differ. We, therefore, decline to decide the forfeiture issue.
Medytox, Inc. v. GALDERMA SA, 71 F. 4th 990 (Fed. Cir. 2023)
[3] Globus asks us to ignore Life Spine’s Figure 40 arguments because they were supposedly not made to the Board. As Life Spine correctly observes, however, “[t]he doctrine of waiver does not preclude a party from supporting its original claim construction with new citations to intrinsic evidence of record.” Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1289 (Fed. Cir. 2021); see also Medytox, Inc. v. Galderma S.A., 71 F.4th 990, 997 (Fed. Cir. 2023) (“We have held that arguments that are based on a specification in evidence and that are in support of an existing claim construction are not barred by the doctrine of waiver for the sole reason that they were not first presented to the trial court.”) (internal quotation marks omitted).
LIFE SPINE, INC. v. GLOBUS MEDICAL, INC., Appeal No. 2024-2167) (Fed. Cir. June 4, 2026)(footnote 3).