TVIIM, LLC v. MCAFEE, INC.: March 21, 2017. Before Prost, Clevenger, Reyna.


  • A party cannot argue on appeal that claim terms have “more than one ordinary meaning” if the argument was not raised in the first instance at trial.
  • Potential error by a jury regarding non-infringement is harmless where a finding of invalidity is upheld.

Procedural Posture:

After a jury verdict of non-infringement and invalidity, TVIIM appealed the jury verdict as well as N.D. Cal.’s denials of a motion for JMOL and a motion for a new trial. CAFC affirmed.


  • Claim Construction – Waiver: The CAFC held that “[a] party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below. Moreover, litigants waive their right to present new claim construction disputes if they are raised for the first time after trial.” Citing Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1358–59 (Fed. Cir. 2006). TVIIM argued on appeal that the jury rendered an inconsistent verdict of infringement and invalidity because the terms “as a result of/in response to,” “various utility functions,” and “reporting the discovered vulnerabilities” have more than one ordinary meaning. TVIIM did not seek construction of any of the three terms at trial. TVIIM thus waived its right to a new claim construction dispute.
  • Standard of Review: The CAFC held that motions for JMOL and a new trial are reviewed under the law of the regional circuit, here the Ninth Circuit. In the Ninth Circuit, a district court must uphold a jury’s verdict “if it is supported by substantial evidence.” Denial of a motion for a new trial is reviewed for abuse of discretion. The CAFC held that a reasonable mind might accept McAffee’s expert’s testimony over TVIIM’s opposing arguments or TVIIM’s expert’s testimony. The jury’s finding of invalidity was thus supported by substantial evidence, and the district court did not abuse its discretion in denying a new trial.
  • Harmless Error: The CAFC held that because the jury’s invalidity determination could be proper under an ordinary meaning construction, the CAFC need not address TVIIM’s arguments regarding an “inconsistent verdict.” TVIIM conceded that substantial evidence supports a finding of either non-infringement or invalidity but not both. This concession was found to be determinative because even if the CAFC were to find an inconsistent verdict, substantial evidence supported the jury’s verdict of invalidity, rendering the infringement finding moot.