On November 13, 2020, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) sustaining the rejection of the Examiner’s final rejection of various claims under 35 U.S.C. §103 in an application by Google. In clarifying the difference between the doctrines of “waiver” and “forfeiture,” the CAFC held that Google had forfeited the arguments put forth on appeal because those arguments were not presented to the Examiner or PTAB. Therefore, the CAFC affirmed the PTAB’s decision.
Google’s application related 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.” Independent claim 1 was directed to a method to responding to requests to stream content to set-top boxes from various content servers. In appealing the rejection of independent claim 1 to the PTAB, Google broadly argued in lengthy block quotes that the cited references did not disclose most of the features from claim 1. Google also argued that the cited references did not disclose the features of evicting items from a cache in a manner which minimized a “network penalty,” as recited in dependent claim 2.
The PTAB was not persuaded by Google’s arguments, and found that the cited references taught the concept of distributing content based on a “cost” which was “based on a network impact.” The PTAB found the Examiner”™s broad interpretation of the term “cost,” in view of the cited references, was consistent with the application”™s specification. Furthermore, the PTAB noted that Google had not cited to a definition of “cost” or “network impact,” in the specification which would have precluded the Examiner’s interpretation. Finally, the PTAB also sustained the rejection of claim 2, finding that Google’s attempt to attack certain references individually did not consider the teachings of the references in combination.
On appeal, Google argued that the PTAB had erred in its construction of the terms “cost” and “network penalty” in view of the explicit definitions in the specification. Googled argued that because the PTAB had relied on incorrect interpretations of the claim terms, the PTAB’s decision was incorrect. The PTAB argued that Google had waived its arguments regarding claim construction of those terms because those arguments were not presented to the PTAB.
In addressing each party’s arguments, the CAFC first noted the distinction between waiver and forfeiture. The CAFC stated “forfeiture is the failure to make the timely assertion of a right,” while “waiver is the ‘intentional relinquishment or abandonment of a known right.'” Here, the CAFC found Google had failed to raise its arguments regarding claim construction of the terms “cost,” and “network penalty,” to the Examiner or to the PTAB. Therefore the CAFC found that, intentional or not, Google had forfeited those arguments, stating that “a position not presented in the tribunal under review will not be considered on appeal in the absence of exceptional circumstances.” Accordingly, the CAFC declined to hear Google’s new arguments as to the proper construction of “cost,” and found that Google had not provided any reasonable explanation as to why it never argued to the Examiner or to the PTAB why a particular construction should be afforded to the term. Similarly, the CAFC held that Google had not suggested any particular definition of “network penalty,” to the Examiner or PTAB and had also forfeited its arguments pertaining to claim 2.
The CAFC’s decision serves as a reminder to applicants that arguments regarding patentability of a claim, such as claim construction, should be presented to both the Examiner as well as the PTAB once an Examiner makes a prima facie case for rejecting an application. Instead of presenting new arguments on appeal, the CAFC encouraged applicants “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.”