No new arguments on appeal — not an ironclad rule

The general rule in patent cases before the Court of Appeals for the Federal Circuit is that no new arguments are to be presented that could have been presented at the district court. The court summarized its position on this issue last year in Golden Bridge Technology v. Nokia, where it stated:

“[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 (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.”). While appellate courts are given the discretion to decide when to deviate from this general rule of waiver, see Singleton, 428 U.S. at 121, we have explained that “prudential considerations” articulated by the Supreme Court counsel against hearing new arguments for the first time on appeal absent limited circumstances, see Forshey v. Principi, 284 F.3d 1335, 1353-54 (Fed. Cir. 2002) (quoting Hormel v. Helvering, 312 U.S. 552, 556-57 (1941)).

In Forshey, this court articulated an exemplary set of limited circumstances in which hearing arguments for the first time on appeal is appropriate: (1) “[w]hen new legislation is passed while an appeal is pending, courts have an obligation to apply the new law if Congress intended retroactive application even though the issue was not decided or raised below,” 284 F.3d at 1355; (2) “when there is a change in the jurisprudence of the reviewing court or the Supreme Court after consideration of the case by the lower court,” id. at 1356; (3) “appellate courts may apply the correct law even if the parties did not argue it below and the court below did not decide it, but only if an issue is properly before the court,” id.; (4) “where a party appeared pro se before the lower court, a court of appeals may appropriately be less stringent in requiring that the issue have been raised explicitly below,” id. at 1357.

Therefore, the following exchange between counsel for the appellee and Chief Judge Michel at oral argument in Bowling v. Hasbro caught my ear. Essentially, counsel for appellee noted that the appellant was asserting a new claim construction on appeal that could have been presented below. Chief Judge Michel appeared more open to the court entertaining such a new argument than the above quote from Golden Bridge might suggest. [Listen]

You can listen to the entire oral argument  [Here].

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