Use It or Lose It: Claim Construction and In re Google Tech Holdings LLC
Posted on Nov 19, 2020 in Articles
In In re Google Tech Holdings LLC, the Federal Circuit upheld the Patent Trial and Appeal Board (PTAB)’s decision sustaining the examiner’s final rejection of Google’s claims, as Google failed to assert its claim construction arguments before the PTAB. The decision reminds practitioners and applicants of the importance of clearly defining claim elements and timely asserting claim construction arguments before the USPTO.
Google’s claims related to a method of responding to requests to stream content from content servers to set-top boxes. Google’s claim 1 disclosed a processing apparatus that—once it received a request for content—would determine if the content was not available. If so, the apparatus determines “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, . . . .” Google’s dependent claim 2 disclosed a method to determine the servers on which to store content based on minimizing a “network penalty” corresponding to the content, items, and numbers of requests expected to be received for the content.
The examiner rejected the claims under 35 U.S.C. § 103 for obviousness. Google appealed this rejection to the PTAB, arguing the cited references did not teach the claimed limitations. However, the PTAB affirmed the examiner’s rejection, finding the cited §103 references disclosed “costs” and a “network penalty” in accordance with Google’s invention. Google did not argue for a particular claim construction for either term before the Board.
On appeal, Google argued the PTAB erred by construing the two terms “in contradiction to their explicit definitions in the specification.” Rather, Google asserted “cost” should be defined as “the cost of the path . . . defined by the bottleneck link in that path, which is the link that takes the longest to transfer item I” and “network penalty” should be defined as a specific formula based on size of items, content of items, expected requests, and fetch cost of the content and items.
The Federal Circuit affirmed the decision of the PTAB. The court began its analysis by citing the legal differences between waiver and forfeiture, stating “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 court refused to consider Google’s claim constructions regardless of their merit, as Google forfeited these arguments when it did not present them before the PTAB. The court further noted that while it had discretion to consider Google’s claim construction, it elected not to do so, as “[a]lowing 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.”
Particularly, the Federal Circuit hoped its refusal to consider arguments not put forth before the PTAB would encourage applicants to utilize the USPTO’s appeal channels more effectively rather than clogging the federal court system. Further, the Federal Circuit hoped to discourage “sandbagging,” where litigants only pursue a certain course at the appeals level when their lower court strategies prove ineffective. The Google decision serves as a reminder to practitioners to put forth all persuasive arguments—particularly claim construction—as early as possible in the litigation process. Moreover, the decision encourages applicants to pay closer attention to selecting terms of art, defining the elements of their claims, and ensuring that practitioners are aware of these definitions as early as possible.
 2020 U.S. App. LEXIS 35647 (Fed. Cir. Nov. 13, 2020).
 Id. at *1.
 Id. at *1-2.
 Id. at *3.
 Id. at *3 (quoting the ‘765 application at Claim 1).
 Google Tech Holdings, 2020 U.S. App. LEXIS 35647 at *3 (citing the ‘765 application at Claim 2).
 Id. at *4.
 Id. at *6.
 Id. at *7 (stating “Of consequence, the Board did not put forth any explicit construction of the term ‘network penalty’ in its decision, nor did Google argue for one”).
 Google Tech Holdings, 2020 U.S. App. LEXIS 35647 at *9.
 Id. at *14.
 Id. at *8 (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)).
 Id. at *10.
 Id. at *11.
 Google Tech Holdings, 2020 U.S. App. LEXIS 35647 at *12-13.
 Id. at *13.