980 F.3d 858
Fed. Cir.2020Background
- The ’765 application claims a distributed video-on-demand caching system with three tiers: a master video server office (VSO), multiple local video home offices (VHOs), and set-top boxes (STBs).
- Claim 1 concerns choosing a content source for streaming based on relative "costs" determined by "network impact." Claim 2 adds cache-eviction selecting to minimize a "network penalty" based on sizes and expected requests.
- The examiner rejected claims under pre-AIA 35 U.S.C. § 103 as obvious over Costa, Scholl, Allegrezza, and Ryu; the Board affirmed, reading "costs" and "network impact/penalty" broadly consistent with the specification.
- Google appealed, arguing on appeal that the Board erred by construing "cost" and "network penalty" contrary to specific definitions/formulas in the specification (bottleneck-link cost and a precise penalty formula).
- Google never presented those specific claim-construction/lexicography arguments to the examiner or the Board. The Federal Circuit held Google forfeited those arguments and declined to address them, affirming the Board.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Google may raise on appeal claim-construction arguments for "cost" that it did not present to the Board | Google: Board construed "cost" too broadly; spec defines it as bottleneck-link transfer cost, so Board erred | PTO/Board: Google never advanced that construction before the Board; forfeited argument | Forfeited — Court refused to consider the new construction and affirmed the Board |
| Whether the appellate court should exercise discretion to consider a forfeited construction of "network penalty" and take up a sua sponte construction | Google: Williams/passed-upon doctrine and consistency with prior briefing justify review | PTO/Board: Review is discretionary; applicant must raise constructions during iterative PTO proceedings; no exceptional circumstances here | Forfeited — Court declined discretionary review and refused to address the proposed precise formula |
Key Cases Cited
- In re Watts, 354 F.3d 1362 (Fed. Cir. 2004) (failure to raise argument before the Board leads to forfeiture on appeal)
- In re Baxter Int’l, Inc., 678 F.3d 1357 (Fed. Cir. 2012) (arguments not timely raised before the Board are waived/forfeited)
- Nuvo Pharms. (Ireland) v. Dr. Reddy’s Labs. Inc., 923 F.3d 1368 (Fed. Cir. 2019) (positions not presented below are forfeited on appeal)
- TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356 (Fed. Cir. 2017) (same principle on forfeiture of arguments not raised below)
- United States v. Olano, 507 U.S. 725 (U.S. 1993) (distinguishing forfeiture from waiver; forfeiture is failure to timely assert a right)
- Freytag v. Commissioner, 501 U.S. 868 (U.S. 1991) (discussion of waiver/forfeiture terminology and appellate principles)
- United States v. Williams, 504 U.S. 36 (U.S. 1992) (passed-upon doctrine: appellate review of issues not pressed below is permissive and discretionary)
- Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349 (Fed. Cir. 2006) (example of appellate claim construction review where issue arose at trial)
- Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318 (Fed. Cir. 2008) (court will not consider arguments on appeal that were not raised before the Board)