Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in In re Google Technology Holdings LLC, No. 2019-1828 (November 13, 2020). The Court clarified the distinction between waiver and forfeiture, and held that Google’s failure to make its claim construction arguments before the Patent Trial and Appeal Board (“PTAB”) forfeited those arguments on appeal. The Court affirmed the PTAB’s rejection of Google’s patent application under 35 U.S.C. § 103.
Google filed a patent application relating to video-on-demand systems. The examiner rejected the claims as obvious, and Google appealed the final rejection to the PTAB. Google argued the cited prior art references did not disclose certain claim elements, including the “cost” and “network penalty” elements, but never proposed any explicit constructions of those claim terms. The PTAB affirmed, finding Google had failed to rebut the collective teachings of the prior art. The PTAB did not explicitly construe the terms “cost” and “network penalty.” Google appealed, arguing to the Federal Circuit that the PTAB’s decision was premised on erroneous implicit constructions of “cost” and “network penalty.” The PTAB responded that Google had waived its claim construction arguments by failing to present them below.
The Federal Circuit affirmed. The Court sua sponte clarified the distinction between waiver and forfeiture. It recognized that its prior opinions “have not always been precise when discussing the doctrines of waiver and forfeiture,” and that it has primarily used the term “waiver” when applying the doctrine of “forfeiture.” But the doctrines are distinct. While forfeiture “is the failure to make the timely assertion of a right,” waiver is “the intentional relinquishment or abandonment of a known right.” The Court concluded that the PTAB’s waiver argument was properly interpreted as a forfeiture argument. It held Google forfeited its claim construction arguments by failing to raise them before the PTAB.
The Court noted it had the discretion to consider Google’s forfeited arguments in the first instance, but declined to exercise that discretion. The Court explained that Google had not provided any reasonable explanation as to why it never raised its claim construction arguments to the examiner or the PTAB, and concluded that Google’s arguments below were “hardly more than a pastiche of block quotes from the claims and references.” Accordingly, there were no “exceptional circumstances” that would merit consideration of Google’s claim construction arguments on appeal in the first instance.