“The CAFC asserted that allowing Google to press a specific claim construction on appeal that it did not present to the Board would deprive the Board of its role in reviewing the rejection of patent applications.”

GoogleOn November 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. Patent and Trademark Office, Patent Trial and Appeal Board (Board) in In re: Google Technology Holdings LLC. In particular, the CAFC upheld a decision of the Board affirming a patent examiner’s final rejection and holding that Google forfeited the arguments put forth on appeal.

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USPTO Rejection and PTAB Analysis

Google’s U.S. Patent Application No. 15/179,765 was directed to “distributed caching for video-on-demand systems, and in particular to a method and apparatus for transferring content within such video- on-demand systems.” During prosecution, the examiner finally rejected the claims of the ‘795 application as being obvious under Section 103. Google appealed the final rejection to the Board, asserting that the cited references did not teach or suggest the claim limitations and “relying on block quotes from the claim language and the references.” Google argued that the cited references, Costa and Scholl, did not teach “distributing content based on ‘costs’ which are ‘based on a network impact,’” as recited in claim 1. The Board rejected Google’s argument and found the examiner’s broad reading of “costs,” to be consistent with the application’s specification. The Board explained that “costs” “based on a network impact” encompassed costs “in terms of load, storage space, time/latency, predicted traffic (i.e., amount of data trans- mitted over time), or monetary costs.” In affirming the examiner’s conclusion that a “combination of Costa and Scholl teaches or suggests the method of distributed content management and fetching recited in claim 1,” the Board explained that Google did not cite to a definition of “costs” or “network impact” in the specification that would preclude the examiner’s broad reading of these terms. Google appealed to the CAFC.

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Federal Circuit Review

Initially, the CAFC explained that difference between waiver and forfeiture is well established and noted that “forfeiture is the failure to make the timely assertion of a right [and] waiver is the ‘intentional relinquishment or abandonment of a known right.’” The CAFC further explained that “it is evident that the [CAFC] mainly uses the term ‘waiver’ when applying the doctrine of ‘forfeiture,’ and the parties in the present case did the same. For example, the CAFC noted that the Board asserted that “Google never made [its claim construction lexicography] arguments to the Board, so it waived them.” The CAFC interpreted the Board’s statement to mean that Google’s “failure to raise its lexicography arguments, inadvertent or not, compels a finding of forfeiture.”

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On appeal, Google argued that the Board erroneously construed the claim terms  “cost associated with retrieving the content” and “network penalty” to mean something contradictory to the definitions in the specification. Accordingly, Google argued that the Board’s decision to uphold the examiner’s rejections was incorrect. Noting that Google did not present the arguments to the Board, the CAFC asserted that Google forfeited both arguments. Citing Nuvo Pharm. v. Dr. Reddy’s Laboratory, the CAFC noted that they have “regularly stated and applied the important principle that a position not presented in the tribunal under review will not be considered on appeal in the absence of exceptional circumstances.”

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The CAFC rejected both of Google’s arguments on appeal, i.e. “(1) the Board in its decision sua sponte construed the term ‘cost’ and thus, because it ‘passed upon’ on the issue, Google is not barred from appealing that construction; and (2) the issue of the construction of ‘network penalty’ is one of law fully briefed (now) and consistent with Google’s position before the Board.” Citing United States v. Williams, the CAFC noted that even though review may be permitted to hear a claim when it was not raised before the lower tribunal, the ultimate decision “is one that remains within the discretion of the appellate court.” The CAFC asserted that allowing Google to press a specific claim construction on appeal that it did not present to the Board would deprive the Board of its role in reviewing the rejection of patent applications. The CAFC explained that they are an appellate court “charged in this instance with reviewing the Board’s conclusions” and entertaining Google’s efforts would only lead other litigants to engage in similar behavior.

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With respect to Google’s argument that its construction of “network penalty” on appeal was consistent with its arguments below, the CAFC disagreed and stated that “[e]ven under the most generous of readings, Google’s arguments below did not suggest any definition of ‘network penalty,’ let alone the highly particularized definition it presents on appeal.”

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Thus, the CAFC concluded that Google forfeited its argument as to the construction of “network penalty” by failing to raise the argument before the Board. The CAFC affirmed the Board’s decision upholding the rejection of the claims of the ’765 application.

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