President Trump’s administrative agencies are working hard to lock-in policy changes before the major shift expected in January.  The Patent Office is no different. The changes here (except those implementing court precedent) are ones that the next administration could change, but the implementation Final Rules and Precedential Decision create administrative hurdles.

Final Rules on PTAB Practice: A new set of final rules has now been published and will become effective on January 8, 2021. [Rules].

• Eliminating Presumption in Favor of Petitioner’s Evidence: During the institution stage, there is currently a presumption in favor of the petitioner involving testimonial evidence. 37 C.F.R. § 42.108(c) states that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute [a] review.’’  The change eliminates that presumption and going forward the Board will simply consider and weigh all presented evidence according to the institution standard.
• Right to a sur-reply: this rule provides the patentee with the right to get-in the last word in the institution-stage briefing.  The new rules also allows the patent owner to respond to a decision to institute.  These changes have already been adopted by the Board, but are now codified within the Rules.
• SAS: The new rules also implement the requirements of SAS barring partial institution (either all challenged claims are reviewed, or no claims are reviewed).

[Rule Change]

New Precedential Decisions: The PTAB (operating under the guidance of Dir. Iancu) has designated three recent institution related decisions as Precedential.  These decisions are important for locking-in the Board’s approach because the Federal Circuit no longer has authority (Thryv) to guide the scope and procedure of IPR institutions.

• RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) (Finding that Salesforce is a real-party-in-interest of RPX, and thus that RPX is time-barred from petitioning for IPR).
• SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential) (Board only needs to resolve real-party-in-interest disputes that would impact the time-bar).
• Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020) (precedential) (Denying institution/joinder of Apple’s copycat petition as a serial challenge; applying the General Plastics model.)

[PTO Description and Links to Cases].  It is easier for the next admin to make changes to these precedential decisions than it is to change rulemaking, but would at least be done in a public manner.

GS Cleantech v. Adkins Energy LLC (Supreme Court 2020)

This pending petition for certiorari focuses on the civil procedure question: What is the standard for review of a partial summary judgment that is not reopened at trial?  Normally summary judgment is reviewed de novo on appeal, but this is a case where the Federal Circuit switched the standard.

The patentee here intentionally failed to disclose its its pre-filing sales-activity to the PTO during prosecution. Those prior sales barred patenting of a number of claims (on sale bar) and the remaining were found unenforceable (inequitable conduct).  That outcome was affirmed on appeal by the Federal Circuit and the court denied a petition for rehearing (without opinion).  Now comes the petition for writ of certiorari. Prof. Hricik and I have both written about the Federal Circuit decision:

• David Hricik, “The Many Mistakes in the Panel Decision in GS CleanTech Corp v. Adkins”;
• David Hricik, “Will the Court Correct the Mess that is GS CleanTech Corp. v. Adkins Energy LLC”;
• Dennis Crouch, “They Chose Advocacy over Candor”.

Here is the relevant procedure at the district court:

• Summary Judgment of Invalidity: A number of claims found invalid based upon the GS-Cleantech’s pre-filing commercial offer for sale (made after the invention was ready for patenting).
• Bench Trial for Inequitable Conduct: The remaining claims were found unenforceable due to inequitable conduct at trial.  Inequitable conduct requires a showing of both intent-to-deceive and that the deception was material to patentability.  At trial, the district court relied upon its summary judgment determination as evidence of materiality.

When appealed, inequitable conduct determinations are generally reviewed for abuse of discretion — providing substantial deference to the district court determination.  The patentee argued that things should be different on the issue of materiality – particularly on the issue of whether the undisclosed prior sales rendered the claims invalid.  The difference here, is that issue was decided on summary judgment, and summary judgment is generally reviewed de novo on appeal.

The Federal Circuit gave full deference — noting that the district court “held an eight-day bench trial in which materiality was squarely before it.”  Further, the district court did not simply apply its prior summary judgment determination but rather it incorporated the summary judgment evidence and admitted additional relevant evidence, including previously unheard testimony relating to materiality and ultimately “confirmed” its summary judgment determination in finding materiality.  On appeal, the Federal Circuit found this sufficient to move the on-sale determination fully under the abuse-of-discretion shelter of the inequitable conduct trial and identified the patentees arguments as lacking nuance. (“This argument is jejune.”).

The patentee also directly appealed the summary judgment of invalidity, but the appellate panel did not hear that issue (which it would have given de novo review). Rather, the appellate panel found the issue moot based upon the unenforceability holding.

All that sets up the current petition for writ of certiorari:

Until the Federal Circuit’s decision in this patent case, every Circuit had held that an issue resolved on partial summary judgment, and not reopened at trial, must be reviewed de novo. Here, the district court resolved the issue of patent invalidity on partial summary judgment, and did not reopen it at trial. Yet, the Federal Circuit expressly refused to review the issue de novo, and instead reviewed it under the “abuse of discretion” standard governing review of the decision at trial.

The question presented is: Whether the Federal Circuit, in cases arising under the Patent Act, may depart from the uniform rule of the other Circuit Courts that an issue resolved on partial summary judgment, and not reopened at trial, must be reviewed de novo on appeal.

[Petition]

Australian Therapeutic Supplies Pty. v. Naked TM (Fed. Cir. 2020) (en banc)

NAKED TM holds the registration for the mark NAKED that it uses to sell its luxury condoms.  However, by the time NAKED TM started its business, Australian Therapy was already selling its NAKED condoms to US customers over the internet.  In the early 2000s, the companies reached some form of a tacit agreement — although without an express contract.  Since 2003, Australian has continued to sell NAKED condoms in the US, but the TTAB found that it was never more than 48 consumers per year.

The appeal here stems from Australian Therapy’s cancellation proceeding that ended when the TTAB found the petitioner lacked standing under 15 U.S.C. § 1064 (petition to cancel may be filed by “any person who believes that he is or will be damaged … by the registration of a mark …”).  The TTAB particularly found a binding contract between the parties where Australian Therapy gave-up its rights to use the mark in the US: 

The evidence shows that the parties reached an agreement. The mutuality of intent to contract is satisfied because the parties recognized their trademark issue and they communicated and exchanged offers to resolve it. The consideration for the contract is Petitioner’s agreement not to use or register the NAKED trademark for condoms in the United States and Respondent’s agreement not to use or register the NUDE trademark for condoms.

The Board explained also that Australian must show a “proprietary rights in its unregistered mark” in order to have standing under the statute.

On appeal, the Federal Circuit reversed — holding a cancellation petition may be filed by any party who demonstrates “a real interest in the cancellation proceeding and a reasonable belief of damage regardless.” It does not require evidence of a “proprietary interest in an asserted unregistered mark.”  Here, the court found a real-interest based on the fact that Australian had filed to register its marks, and had demonstrated a belief of damage because the USPTO refused registration of both the ’237 and ’589 applications based on a likelihood of confusion with Naked’s registered mark, U.S. Registration No. 3,325,577.”

At that point, NAKED TM petitioned for en banc rehearing on two questions:

I. Whether a petitioner who has forfeited its rights in a mark pursuant to a valid settlement agreement has a real interest in the proceedings and a reasonable belief of harm for the registration of said mark so as to support a finding of statutory standing under 15 U.S.C. § 1064 to challenge the registration of the mark; and

II. Whether a petitioner in the TTAB is required to establish the pleaded basis for its standing at the commencement of an action, or whether this Court may rely on an argument that has been waived by a party in finding a basis for standing in the TTAB.

The Federal Circuit has now denied the rehearing, although the case includes an interesting dissent from Judge Wallach. Wallach argues that the decision in Australian Therapy:

1. Conflicts with our case law requiring a “legitimate commercial interest” to have a valid cause of action under 15 U.S.C. § 1064, see Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1274 (Fed. Cir. 2014) (following Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014)., noting that a petitioner must have a “legitimate commercial interest sufficient to confer standing”);
2. Undermines our case law favoring the enforcement of settlement agreements, see Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 965 (C.C.P.A. 1979) (“If there [is] a policy favoring challenges to trademark validity, it too has been viewed as outweighed by the policy favoring settlements.”); and
3. Raises questions as to the impact of Supreme Court precedent on our statutory standing jurisprudence, see Lexmark, 572 U.S. at 128 n.4 (noting that statutory standing does not implicate Article III subject matter jurisdiction), 134 (providing “a direct application of the zone-of-interests test and the proximate-cause requirement [to] suppl[y] the relevant limits on who may sue”).

AusTherapy v. Naked.

The USPTO has made its new Patent Center available to all users — although still in beta form.

• The Center: https://patentcenter.uspto.gov/#!/
• Info: https://www.uspto.gov/patents-application-process/patent-center

The Patent Center is designed as a more streamlined tool electronic filing of patent applications that combines EFS-Web and PAIR. For now, the PTO is planning to keep those avenues available until the Patent Center achieves full functionality and stability.

The Patent Act indicates that patents should be treated as if “personal property” and that both patents and patent applications are “assignable in law by an instrument in writing.” 35 U.S.C. 261.  Section 102 also suggests that the claimed invention may already be “owned” prior to filing. 35 U.S.C. 102(b)(1)(C).

A disclosure [in a prior-filed patent application] shall not be prior art to a claimed invention under subsection (a)(2) if … [T]he subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

Id. The reference to ownership of pre-filing inventions suggests a property right, but does not expressly define that right.  In its 2011 decision, the Supreme Court offered the clue “that inventors have the right to patent their inventions.” Bd. of Trustees of Leland Stanford Junior U. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).  In Stanford v. Roche, the court also offered some cases for discussion:

• Gayler v. Wilder, 51 U.S.(10 How. 477), 493 (1851) (“the discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires”);
• Solomons v. United States, 137 U.S. 342 (1890) (“whatever invention [an inventor] may thus conceive and perfect is his individual property”);
• United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933) (an inventor owns “the product of [his] original thought”).

Despite these old cases, it is remains unclear to me what does it mean to “own” a “claimed invention” before the patent application is on file.  What law applies?

US vs. Arthrex, 19-1434 (Supreme Court 2020).

Earlier this year the Supreme Court granted writ of certiorari on the PTAB appointments clause issues stemming from the Federal Circuit’s determination that (1) PTAB judges were Officers of the United States who should have been appointed by the President (rather than by the Secretary of Commerce), but (2) the appointments problem was curable by eliminating any statutory job security held by the judges (this reduced them to “inferior officers” who are properly appointed by a head of department, such as the Secretary of Commerce).  The court agreed to hear the first two questions, but not the third (regarding waiver/forfeiture).

1. Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head.
2. Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.
3. Whether the court of appeals in Arthrex erred by adjudicating an Appointments Clause challenge that had not been presented to the agency.

July 22, 2020 Memorandum for the United States.

The case involves three parties.

• Arthrex, whose patent is being challenged in inter partes review. Arthrex brought the appointments clause challenge, but strongly disagrees with the severing “cure.”
• Smith & Nephew, the IPR petitioner. Smith & Nephew fundamentally argues that the the PTAB judges are at most inferior officers and thus were properly appointed.
• US Gov’t intervened in the lawsuit to defend the PTAB decision, and also argues that PTAB judges are inferior officers.

The first round of merits briefing has been filed by the US and Smith&Nephew.  As discussed below, neither party addressed the second question — they will have an opportunity to do so after Arthrex files its opening brief later this month. Additional amicus briefs are expected this week.

• Opening Brief for the United States
• Opening Brief for S&N
• Amicus Brief from Prof. John Harrison

US Gov’t Brief:  In its brief, the US argues strongly that PTAB administrative patent judges “are inferior officers whose appointment Congress permissibly vested in the Secretary of Commerce.”  US Government did not address the second question of curing the Appointments problem.

For its analysis, the US attempted to align its argument with the Supreme Court’s approach in Edmond v. United States, 520 U.S. 651 (1997) (Inferior officers must be “directed and supervised at some level by others who were appointed by Presidential nomination with the advice and consent of the Senate.”).

The Gov’t brief walks through the ways that the Secretary of Commerce and USPTO Director (both presidential appointees) possess authority to direct and supervise PTAB judges:

• The Secretary (in consultation with the PTO director) appoints the judges.
• The Secretary can remove the judges for “efficiency” purposes and that includes “failing to follow their supervisors’ instructions.”
• The PTO Director has “unfettered power to decide which adjudicators will sit on any Board panel.”
• The PTO Director has power to “promulgate regulations governing Board proceedings; issue binding policy directives, including instructions regarding how the patent laws and USPTO policies apply to particular fact patterns; and determine which Board decisions are precedential and therefore binding on future panels.”
• “The Director has additional prerogatives regarding the conduct of individual proceedings. He may decide unilaterally whether a particular inter partes or post-grant review will proceed at all, and he possesses substantial authority over any rehearings that the Board may grant.”

Role of Rulemaking: Note here that that one important question arises regarding the extent that the Director has “given-up” authority by rulemaking and by tradition.  Under the promulgated regulations as currently in operation, the PTO Director has delegated substantial authority to the PTAB and to the Chief Judge.  An important example of this is that the PTAB determines institution decisions. A question for the Court will be the extent that those prior rulemakings should be considered when analyzing the officer-status of PTAB judges.

Mechanical Turks: In its opinions, the Federal Circuit also analyzed the situation using Edmond. In its brief, the US asserts that the court’s approach is “deeply flawed.”  Most importantly, the US argues that Edmond should be seen as providing for a flexible and open ended analysis of the level of supervision and control; whereas the Federal Circuit followed a more “mechanistic” of distilling Edmond into three discrete criteria and then focusing solely on those.

Burdensome: An additional important criteria here has to do with the burdensome nature of having the President Nominate and the Senate Confirm a large number of administrative officials. From 1836-1975, the patent judges (then called examiners-in-chief) were appointed by the President.  However, the expansion of the patent system (and administrative state in general) began to identify those appointments as an unneeded burden on the President and thus shifted their appointment to the Secretary of Commerce.  I expect that some members of the court – such as Justice Gorsuch – will see this justification as carrying little weight.

Parker v. Apple (Fed. Cir. 2020) (non-precedential order)

The Federal Circuit has dismissed Parker’s pro se appeal as frivolous.  Parker described the facts of the case as follows:

On October 29, 2018 Raevon Parkerwent to the Apple Store in the Saint Louis Galleria for a malfunction of his cellular device. The attendant in the Apple Store fixed the device but kept it by deceiving the Plaintiff knowing that it was the first phone to have new features [created by Parker himself].

The damages that the plaintiff is seeking is a trillion dollars.

Parker first sued in Missouri state court asking for $2 trillion and $900 USD as well as return of his priceless phone.  The Missouri court dismissed on the pleadings for failure to state a claim. Later, Parker refiled in Federal Court and that case was also dismissed.

You may have heard of district court’s certifying questions for appeal under 28 U.S.C. 1292(b).  In this case, the district court issued a reverse-certification — certifying that any appeal by Mr. Parker should not be taken in good faith.  Still, Parker appealed.

On appeal to the Federal Circuit, Parker made a takings claim — arguing that his 5th Amendment rights were violated by Apple — “his property was taken for public use and he had not been compensated.”  Despite widespread concern over Apple’s monopolistic practices, Apple is not the government and is not bound by the 5th Amendment takings clause or is incorporation under the 14th Amendment.  Thus, the Federal Circuit dismissed the case and denied Parker’s fee waiver petition (Proceedings in forma pauperis).  The Federal statute guiding the court’s approach to in forma pauperis proceedings indicates that the court should dismiss any case where “the action or appeal is frivolous.”  28 U.S.C. § 1915(e)(2)(B).  Following that guidance the the court has dismissed Parker’s appeal.

= = = =

I will note that the current value of Apple’s publicly traded shares is $2 billion trillion.

by Dennis Crouch

A lot has changed since President Reagan signed the Computer Fraud and Abuse Act of 1984 (CFAA) and amended it in 1986.  Still, the CFAA remains Federal Law’s primary anti-hacking statute and provides for both civil and criminal penalties.  The most-oft used provision reads as follows:

(a)Whoever … (2) intentionally accesses a computer without authorization or exceeds authorized access, and thereby obtains … (C) information from any protected computer … shall be punished.

18 U.S.C. 1030(a). The broad and potentially uncertain scope of “exceeds authorization” is the Focus of the Supreme Court’s November 30, 2020 oral arguments in Van Buren v. United States.

As a police officer, Mr. Van Buren was authorized to search the Georgia Crime Information Center database, but only for police business. As part of a broader FBI sting, Van Buren agreed to and did-actually search the database at the request of private citizen (Albo).  In particular, Albo paid Van Buren $6,000 to search the license-plate records of a prostitute that Albo was considering hiring.

A jury convicted Van Buren for both wire-fraud and computer-fraud.  On appeal, the 11th Circuit overturned the wire-fraud verdict on faulty jury instructions (ordering a new trial); but affirmed the computer fraud conviction despite the “vague language of the CFAA.”  U.S. v. Van Buren, 940 F.3d 1192 (11th Cir. 2019), cert. granted, 140 S. Ct. 2667 (2020).   The Supreme Court granted certiorari on the following question:

Whether a person who is authorized to access information on a computer for certain purposes violates Section 1030(a)(2) of the Computer Fraud and Abuse Act if he accesses the same information for an improper purpose.

[Petition].  The statute does provide a definition:

(6) the term “exceeds authorized access” means to access a computer with authorization and to use such access to obtain or alter information in the computer that the accesser is not entitled so to obtain or alter;

18 U.S.C.A. § 1030(e)(6). Martin’s simple statutory argument: As a police officer, he was authorized to access and obtain the license-plate information, even if he did so here for an inappropriate reason.  The 11th Circuit disagreed and followed its prior precedent in U.S. v. Rodriguez (11th Cir. 2010). Rodriguez is a closely parallel case of an SSA employee who conducted personal searches on the SSA databases. In that case, the 11th Circuit affirmed the CFAA conviction.

One underlying issue here is that the 11th Circuit’s approach seemingly makes it a federal crime for an individual to obtain information after violation of a terms-of-use.  The government argues that prosecutorial discretion is sufficient to avoid these concerns and that the statute should be “specifically and  authorized” individuals, not the general public.

So.  The government argues that its statutory interpretation turns on the word “so” as used in the statute.  I’m still struggling with how that argument works.

= = = =

Read the Transcript and Listen to the Audio.  The outcome here is a bit unclear to me, but I expect the Supreme Court to at least offer a set of limiting principles for the statute — if not going as far as suggested by Van Buren.  That said, I would not be surprised with a 7-2 Sotomayor decision favoring Van Buren. That outcome would then serve as notice to Congress to update the 35-year-old law.

The government repeatedly worked to draw an analogy between the information at issue here and property rights.  The case may turn on the extent that the Supreme Court finds that analogy appropriate.  In particular, the government will likely win if we think of exceeding access as a form of “stealing information” as parallel to that of a brick-and-mortar store employee taking money from the till.  The employee has access to the money, but exceeds access by taking it out.

Network-1 Techs., Inc. v. Hewlett-Packard Co. (Fed. Cir. Nov. 20, 2020) (modified opinion) (US6218930 – providing power via ethernet cable)

This case has gone back-and-forth several times.  Here are a few highlights:

• PTAB instituted IPR on likelihood of invalidity, but then concluded the claims were not proven invalid.
• Later, in the infringement lawsuit, jury found the claims invalid.
• Judge Schroeder (E.D.Tex.) rejected the jury verdict – holding that HP was estopped from challenging validity under 35 U.S.C. § 315(e)(2). (Granting renewed motion for JMOL under R.50(b).)
• Then on appeal, the Federal Circuit vacated JMOL but did not expressly reinstate the jury verdict – seemingly leaving that for Judge Schroeder to decide what to do. (Sept 2020 decision).

An additional problem with Judge Schroeder’s decision below is that he did not rule on Network-1’s conditional motion for new trial as required by R.50(c):

If the court grants a renewed motion for judgment as a matter of law, it must also conditionally rule on any motion for a new trial by determining whether a new trial should be granted if the judgment is later vacated or reversed.

Fed. R. Civ. Pro. R. 50(c).  In addition to the new trial motion, Judge Schroeder also made no ruling on other substantive JMOL motions filed by Network-1.

The remand order demanded the district court proceed in a manner “consistent” with the appellate decision.  However, Network-1 foresaw some conflict and argument regarding how that order might be interpreted.  In particular, HP wants the district court to simply reinstate the Jury Verdict of invalidity; while Network-1 wants the district court to rule on its alternative JMOL motions or alternatively order a new trial on validity.  As such, Network-1 petitioned the Federal Circuit for a clarifying order:

To avoid any possible confusion on remand, Network-1 respectfully asks the panel to clarify that its remand includes deciding Network-1’s motion for a new trial and addressing Network-1’s remaining arguments for JMOL on validity— including significant evidentiary shortcomings that no court has yet to address given the district court’s estoppel ruling.

Network-1 Petition for panel rehearing.

The court has granted the petition and now expressly stated:

We therefore remand to the district court for further proceedings consistent with this opinion, which include ruling in the first instance on Network-1’s entitlement to JMOL (notwithstanding this court’s holding on estoppel) and its new-trial motion.

Modified opinion (underlined portion is the new part).  The court also explained that the appellate panel “will not consider either Network-1’s alternative grounds for JMOL or its new-trial motion in the first instance.”

In its briefing, HP explained its position that Network-1 had forfeited its right to make its renewed-JMOL motions on sufficiency of the validity evidence because Network-1 had failed to raise that particular challenge in its R.50(a) motion.

[A] party that fails to move for judgment as a matter of law under Rule 50(a) on the basis of insufficient evidence at the conclusion of all of the evidence waives its right to file a post-verdict Rule 50(b) motion, and also waives its right to challenge the sufficiency of the evidence on appeal.

Moss v. Princip, 913 F.3d 508, 522 (5th Cir. 2019).  In its rehearing order, the Federal Circuit did not decide the forfeiture issue, which will be open for debate back before the District Court.  (Note issue of waiver vs forfeiture).

Network-1 had requested that the Federal Circuit order the district court to consider “Network-1’s previously asserted substantive grounds for JMOL” and did not mention the forfeiture issue.  Although not entirely clear, it appears that this requested order might have overcome the potential waiver.  The Federal Circuit was careful to require only examination of Network-1’s “entitlement to JMOL” without requiring that the merits of the motion be considered.

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.

Slip Op.

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.