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In re: Google Technology Holdings LLC (Fed. Cir., Nov. 13, 2020)

The Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's decision maintaining the examiner's final rejection of claims directed to a method of responding to requests to stream contents to set-top boxes.

Recognizing that the court has not always used these terms precisely, the court provided a clarification of the terms 'forfeiture' versus 'waiver' by stating "[w]hereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right."

In this particular case, the court added that "[b]ecause Google failed to present these claim construction arguments to the Board, Google forfeited both arguments." The court clarified that "traditional rule" "permit[s] review of an issue not pressed so long as it has been passed upon" but that "the ultimate decision about whether to hear a claim when it was not raised before the lower tribunal is one that remains within the discretion of the appellate court."

The court explained that it declined to hear Google's arguments about the term "cost" because 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" and that "[a]llowing 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."

The court further added that "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."

Read the case here.

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