By Brian Craig, J.D.
Google failed to present claim construction arguments before the PTAB and could not present the arguments for the first time on appeal in its dispute over a video-on-demand patent.
In an application submitted by Google Technology Holdings LLC for a patent relating to streaming video content, the U.S. Court of Appeals for the Federal Circuit has ruled that Google forfeited certain claim construction arguments by failing to raise the arguments in proceedings before the Patent Trial and Appeal Board (PTAB). The Federal Circuit held that allowing a party to raise new arguments for the first time on appeal would encourage "sandbagging." The Federal Circuit found no exceptional circumstances to consider new arguments for the first time on appeal and declined to hear Google’s new arguments for claim construction (In re Google Technology Holdings LLC, November 13, 2020, Chen, R.).
Google submitted U.S. Patent Application No. 15/179,765 (’765 application) relating 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. The proposed invention presents a solution for determining how to stream content to set-top boxes (STBs) and where to store the content among the content servers. Claim 2 describes the particular server to store the content depending on "a network penalty." The patent examiner rejected the claims concluding that the claims would have been obvious based on prior art references. Google appealed this final rejection to the Board. The Board affirmed the examiner’s obviousness rejections. The Board did not put forth any explicit construction of the term "network penalty" in its decision, nor did Google argue for one. Google appealed the Board’s decision.
Forfeiture. The Federal Circuit held that Google forfeited the claim construction arguments by failing address the arguments before the Board. The Federal Circuit clarified the difference between waiver and 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. The Federal Circuit held that a position not presented in the tribunal under review will not be considered on appeal in the absence of exceptional circumstances. Google never presented its claim construction arguments to the Board. Because Google failed to present these claim construction arguments to the Board, Google forfeited both arguments.
Google argued that the Board construed the term "cost" and thus, because it "passed upon" on the issue, Google was not barred from appealing that construction. The Federal Circuit declined to hear Google’s new arguments as to the construction of "cost." Google failed to provide 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."
Allowing Google to press, on appeal, a specific claim construction that it did not present to the Board would deprive the Board, an expert body, of its important role in reviewing the rejection of patent applications.
Google also argued that the issue of the construction of "network penalty" was one of law fully briefed and consistent with Google’s position before the Board. The Federal Circuit held that once an examiner has made a prima facie case for rejecting the application claims, the applicant is provided with an opportunity to submit any saving claim construction it believes may be grounds for reversing the rejection both to the examiner and potentially again, to the Board. The burden lies with the applicant to present this argument in the initial instances. An applicant who does not take those opportunities and is then further disappointed by a Board claim construction should be encouraged to avoid waste of appellate resources and instead take the rout of filing new or amended claims.
Sandbagging. The Federal Circuit also found that considering arguments for the first time on appeal encourages the practice of "sandbagging" or suggesting or permitting, for strategic reasons, that the lower tribunal pursue a certain course, and later—if the outcome is unfavorable—claiming that the course followed was reversible error. The court held that allowing new claim construction arguments for the first time on appeal would only encourage litigants to engage in sandbagging.
Thus, the Federal Circuit affirmed the decision of the Board rejecting the patent application.
This case is No. 19-1828.
Attorneys: Kathryn Schleckser Kayali (Williams & Connolly LLP) for Google Inc. Daniel Kazhdan for the USPTO.
Companies: Google Inc.
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