by Dennis Crouch
In re Google Technology Holdings LLC (Fed. Cir. 2020)
Decision authored by Judge Chen and joined by Judges Taranto and Stoll
This is an ex parte appeal of a patent office refusal to grant a patent to Google on its U.S. Pat. App. No. 15/179,765 (distributed caching of content for video-on-demand). The examiner rejected the claims as obvious and that was affirmed by the PTAB. On appeal here the Federal Circuit affirms on forfeiture grounds:
Because we conclude that Google has forfeited its arguments put forth on appeal, we affirm.
Slip Op. Most of the opinion actually focuses on the legal distinction between “waiver” and “forfeiture,” primarily citing to the 1993 Supreme Court Case of US v. Olano and its predecessor Johnson v. Zerbst (1938).
Waiver is different from forfeiture. Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the “intentional relinquishment or abandonment of a known right.”
Olano, quoting Johnson. The difference between these two terms is somewhat parallel to that of laches and equitable estoppel. Laches can apply to bar a claim in situations where a plaintiff unreasonably delayed in making the claim (much like a statute-of-limitations). Equitable Estoppel, on the other hand, requires some action by the plaintiff – a misleading statement or conduct – that was detrimentally relied upon.
Here, on appeal Google argues that the PTAB erred in its claim construction of Google’s claim terms of “cost” of delivering data and “network penalty.” However, Google did not present those particular arguments to the PTAB and thus forfeited them:
Meritorious or not, Google never presented these arguments to the Board. And therein lies the problem. Because Google failed to present these claim construction arguments to the Board, Google forfeited both arguments.
The basic rule here is that “a position not presented in the tribunal under review will not be considered on appeal in the absence of exceptional circumstances.” In this case, the court found no such exceptional circumstances.
Sua Sponte by the Court: Note here, the forfeiture is a bit tricky because apparently neither Google nor the Patent Examiner requested or briefed claim construction of the “Cost” term before the Board. Rather the Board construed the terms sua sponte. On appeal, the Federal Circuit found that in this situation it had discretion regarding whether or not to hear the appeal, but declined to do so. The court reasoned that Google should have argued the claim construction issue if it thought the issue important.
Google has not provided any reasonable explanation as to why it never argued to the examiner during the iterative examination process or later to the Board for a particular construction of the term “cost,”—an argument that is now the linchpin to its claims’ patentability. Allowing Google to press, on appeal, a specific claim construction that it did not present to the Board deprives the Board, an expert body, of its important role in reviewing the rejection of patent applications. Moreover, Google has not explained how the Board’s understanding of “cost” altered the theory underlying the examiner’s rejection or otherwise was a surprising, unexpected departure.
Slip Op. The court admitted that in other cases it has reviewed issues raised sua sponte by the PTAB — but that such review has always been discretionary.