The failure to assert invalidity below cannot, in these
circumstances, be deemed a waiver of that defense. The Court has
recognized that to be effective a waiver must be "an intentional
relinquishment or abandonment of a known right or privilege,"
Johnson v. Zerbst, 304 U. S. 458,
304 U. S. 464
(1938), and we have frequently allowed parties to raise issues for
the first time on appeal when there has been a significant change
in the law since the trial. This principle has most often been
applied in proceedings relating to criminal prosecutions, [
Footnote 1] but it has also been
invoked in purely civil cases. [
Footnote 2] The principle has not been limited to
constitutional issues, and the Court has permitted consideration on
appeal of statutory arguments not presented below. [
Footnote 3] In deciding whether such
Page 397 U. S. 588
new arguments can be considered, we have primarily considered
three factors: first, whether there has been a material change in
the law; second, whether assertion of the issue earlier would have
been futile, and third, whether an important public interest is
served by allowing consideration of the issue. It is clear to me
that all these criteria are met in this case.
Undoubtedly our decision in
Lear was a major change in
the field of patent law. The Court implicitly recognized this fact
by overruling the estoppel holding in
Automatic Radio. It
is also clear that the trial court was satisfied that applicable
law precluded the assertion of invalidity by patent licensees,
[
Footnote 4] and thus earlier
argument on the point would have been futile. Finally, and most
importantly, an overriding public interest would be served by
allowing petitioner to challenge the validity of this patent. Last
Term, we unanimously held that
"the public's interest in the elimination of specious patents
would be significantly prejudiced if the retroactive effect of
[
Lear] were limited in any way."
Lear, supra, at
395 U. S. 674
n.19. I do not understand how today's decision can be reconciled
with that statement. Although analytically this case may present a
question of waiver, and not retroactivity, the public interest that
the Court felt required full retroactivity in
Lear is an
equally compelling reason for allowing petitioner's attack now in
spite of the concessions below. I would vacate the judgments below
and remand the case to the District Court for a determination of
the validity of the patent in issue.
[
Footnote 1]
See White v. Maryland, 373 U. S.
59 (1963);
cf. McConnell v. Rhay, 393 U. S.
2 (1968);
Tehan v. Shott, 382 U.
S. 406 (1966);
Linkletter v. Walker,
381 U. S. 618,
381 U. S.
622-629 (1965);
Griffin v. California,
380 U. S. 609
(1965).
[
Footnote 2]
Curtis Publishing Co. v. Butts, 388 U.
S. 130,
388 U. S.
142-145 (opinion of HARLAN, J.),
388 U. S. 172
n. 1 (separate opinion of BRENNAN, J.) (1967);
Rosenblatt v.
Baer, 383 U. S. 75
(1966);
Uebersee Finanz-Korp. v. McGrath, 343 U.
S. 205,
343 U. S. 213
(1952);
Hormel v. Helvering, 312 U.
S. 552,
312 U. S.
556-557 (1941).
[
Footnote 3]
In
Hormel v. Helvering, supra, the Court allowed the
Commissioner of Internal Revenue to rely on § 22(a) of the Revenue
Act of 1934 although his argument before the Board of Tax Appeals
had rested solely on §§ 166 and 167. We did so because of the
intervening decision in
Helvering v. Clifford,
309 U. S. 331
(1940).
[
Footnote 4]
App. 52a, 129a.