Federal Circuit Requires Preservation of Claim Construction Objection or Lose it.

The U.S. Court of Appeals for the Federal Circuit has emphasized the need for litigants to preserve any objections they might have to the district court's claim construction in order to preserve the issue for appeal, as well as the need for a challenger to patent validity to be cognizant of its burden in order to support a jury verdict of anticipation or obviousness. Koito Mfg. v. Turn-Key Tech., Case No. 03-1565, -1603 (Fed. Cir. Aug. 25, 2004) (Gajarsa, J.).

Turn-Key owned U.S. Patent No. 5,045,268 (the `268 patent) directed to a method of strengthening injection-molded plastics by cross-laminating layers of plastics. Koito brought a declaratory judgment action against Turn-Key, seeking judgment that the `268 patent was declared invalid, unenforceable, and not infringed by Koito's products. After the Markman hearing, a jury found Turn-Key's patent invalid and not infringed. Turn-Key appealed.

During appeal, Turn-Key attempted to object to the claim construction applied by the district court consistently throughout the litigation. However, the Federal Circuit found that Turn-Key had failed to preserve its claim construction argument and did not object to the jury's instructions regarding claim terms. Turn-Key did not preserve its objections and was not permitted to contest the district court's claim construction. Citing Abbott Labs. v. Syntron Bioresearch, Inc., the Court found that if Turn-Key had wanted a different construction it should have objected at trial.

With regard to validity, Koito introduced into evidence at trial a reference, but otherwise failed to provide any testimony or other evidence that demonstrated to the jury how that reference met the limitations of the claims of the `268 patent or how the reference enabled one of the ordinary skill in the art to practice the claimed invention. Koito did not even mention the reference after introducing it into evidence. Rather, Koito's expert offered a conclusion of invalidity relating to a quintet of prior art patents that included the reference in question.

The Federal Circuit explained that testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element and explain in detail how each claim element is disclosed in the prior art reference. Testimony that is ...