Failure to Present Arguments Doomed Appeal

Intellectual Property Law

In In re: Google Technology Holdings LLC,1 the Federal Circuit held that Google forfeited its claim construction arguments made on appeal to the Patent Trial and Appeal Board (Board). The court explained that whether these arguments were meritorious or not, Google never presented them to the Board, and therefore forfeited them.

Google Technology Holdings LLC (Google) appealed the ruling of the Board affirming the rejection of claims 1–9, 11, 14–17, 19 and 20 of U.S. Patent Application No. 15/179,765 (’765 application) as unpatentable for obviousness under 35 U.S.C. § 103.2

The ’765 application was directed to a method and system for transmitting content in a distributed cache video-on-demand system. Claim 1 recited a method of replying to requests to stream content to set-top boxes (STBs) from content servers, depending on the comparative costs of the network impact of obtaining the content from the content servers that requested the content. Claim 2 further recited ascertaining which content server or servers to store the content on based on a network penalty.3

1. A method comprising:

receiving, by a processing apparatus at a first content source, a request for content;

in response to receiving the request, determining that the content is not available from the first content source;

in response to determining that the content is not available from the first content source, determining that a second content source cost associated with retrieving the content from a second content source is less than a third content source cost associated with retrieving the content from a third content source, wherein the second content source cost is determined based on a network impact to fetch the content from the second content source to the first content source, ...4

2. The method of claim 1, further comprising:

determining that there is not sufficient memory to cache the content at the first content source; and

selecting one or more items to evict from a cache at the first content source to make available sufficient memory for the content, wherein the selection of the items to evict minimizes a network penalty associated with the eviction of the items, wherein the network penalty is based on sizes of the content and the items, and numbers of requests expected to be received for the content and the items.5

The examiner decided that claim 1 would have been obvious in view of prior art references Costa and Scholl, and claim 2 would have been obvious in view of prior art references Costa, Scholl, Allegrezza and Ryu.6

Google appealed the rejection to the Board, and the Board affirmed. Based on the broadest reasonable interpretation criterion, the Board reasoned that “costs … based on a network impact” included, for example, load or storage space costs or monetary costs. Significantly, the Board reasoned that Google failed to identify any definition in the specification of “costs” or “network impact” that was inconsistent with the examiner’s broader interpretation.7

On appeal, the Federal Circuit affirmed, agreeing with the Board that Google failed to disprove the prior art references, and neither the Board nor Google put forth any specific interpretation for the claim language “network penalty.”8 The court explained: “We interpret the Patent Office to be arguing that Google’s failure to raise its lexicography arguments, inadvertent or not, compels a finding of forfeiture. We agree.”9

Google argued, however, that the Board incorrectly interpreted the claim language “cost associated with retrieving the content” and “network penalty” in a manner that contradicted their specific definitions provided by the specification. Google asserted that therefore, since the Board used the incorrect interpretations, the Board’s conclusion affirming the rejections was improper.10

The Federal Circuit rejected Google’s arguments and explained that it was too late because Google forfeited these arguments:

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. We 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. . . . We see no exceptional circumstances justifying a departure from that principle here.11

The Federal Circuit explained that Google did not supply any rational justification as to why it never provided a specific interpretation during ex parte examination or afterward to the Board for the term “cost,” which it now considered “the linchpin to its claims’ patentability.”12 The Federal Circuit explained: “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.”13

In addition, the court reasoned as follows:

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 intra-PTO route of filing new or amended claims (perhaps through a continuation application) containing language that makes the desired scope clear, thereby serving the goal of facial clarity of patent claims.14

Therefore, the court held the following:

In sum: we are, as an appellate court, charged in this instance with reviewing the Board’s conclusions. “The very word ‘review’ presupposes that a litigant’s arguments have been raised and considered in the tribunal of first instance. To abandon that principle is to encourage the practice of ‘sandbagging’: 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.” . . . We decline to entertain Google’s effort here, for it would only encourage litigants to engage in more of this type of behavior.15

Accordingly, the Federal Circuit affirmed the Board’s conclusion sustaining the rejection of the ’765 application claims.16

Key Lessons:

The Federal Circuit rejected Google’s claim interpretation arguments for not being asserted during the administrative patent prosecution process or before the Board on appeal. The court emphasized that a patent applicant who does not set forth a claim construction and is then likewise dissatisfied by the Board’s claim construction should be dissuaded from wasting appellate resources. The court recommended that applicant instead continue prosecution within the Patent Office by filing new or amended claims. The applicant could then provide key claim constructions to support its arguments and ensure that the prosecution record is clear if appellate review becomes necessary.

The overall takeaway from the Federal Circuit is that appellants are expected to develop all arguments or appeal grounds in a timely manner and in advance of appeal to ensure all arguments are fully developed.


Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.


1 In re: Google Technology Holdings LLC, 980 F.3d 858, 2020 U.S.P.Q.2d 11465, 2020 WL 6685948 (Fed. Cir. 2020).

2 Id., 980 F.3d at 859.

3 Id., 980 F.3d at 860.

4 Id., 980 F.3d at 860 (quoting U.S. Patent Application No. 15/179,765 at cl. 1) (emphases added by court).

5 Id., 980 F.3d at 860 (quoting U.S. Patent Application No. 15/179,765 at cl. 2) (emphases added by court).

6 Id., 980 F.3d at 860–61.

7 Id., 980 F.3d at 861.

8 Id., 980 F.3d at 861–62.

9 Id., 980 F.3d at 863.

10 Id., 980 F.3d at 863.

11 Id., 980 F.3d at 863.

12 Id., 980 F.3d at 863.

13 Id., 980 F.3d at 864.

14 Id., 980 F.3d at 864.

15 Id., 980 F.3d at 864 (quoting Freytag v. Commissioner of Internal Revenue, 501 U.S. 868, 895, 111 S. Ct. 2631, 2647 (1991) (Scalia, J., concurring in part and concurring in judgment)).

16 Id., 980 F.3d at 864–65.

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