In Re GOOGLE TECHNOLOGY HOLDINGS LLC

Case: 19-1828 Document: 57 Page: 1 Filed: 11/13/2020

United States Court of Appeals

for the Federal Circuit

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IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC,

Appellant

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2019-1828

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Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. 15/179,765.

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Decided: November 13, 2020

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KATHRYN SCHLECKSER KAYALI, Williams & Connolly

LLP, Washington, DC, argued for appellant. Also repre-

sented by ANDREW V. TRASK; TIMUR ENGIN, Google Inc.,

Mountain View, CA.

DANIEL KAZHDAN, Office of the Solicitor, United States

Patent and Trademark Office, Alexandria, VA, argued for

appellee Andrei Iancu. Also represented by MICHAEL S.

FORMAN, THOMAS W. KRAUSE, FARHEENA YASMEEN

RASHEED.

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Before TARANTO, CHEN, and STOLL, Circuit Judges.

CHEN, Circuit Judge.

Google Technology Holdings LLC (Google) appeals the

decision of the Patent Trial and Appeal Board (Board)

sustaining the examiner’s final rejection of claims 1–9, 11,

Case: 19-1828 Document: 57 Page: 2 Filed: 11/13/2020

2 IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC

14–17, 19, and 20 of U.S. Patent Application No.

15/179,765 (’765 application) under pre-AIA 35 U.S.C. §

103. 1 Because we conclude that Google has forfeited its

arguments put forth on appeal, we affirm.

BACKGROUND

The ’765 application relates 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.” J.A. 51. The application describes a

three-level system that includes (i) a complete content li-

brary stored at a remote, master server referred to as a

video server office (VSO), (ii) several smaller, partial-con-

tent libraries at local servers referred to as video home of-

fices (VHOs), and (iii) individual users at set-top boxes

(STBs). See id. at 44–45, 51–53. Different VHOs will store

at least some different content so that when a particular

VHO local to an STB lacks certain requested content, the

system may stream that requested content from either a

different VHO or the VSO. See id. at 54. The proposed

invention presents a solution for determining how to

stream content to STBs and where to store said content

among the content servers, be it at one or more of the VHOs

or at the VSO. See id. at 54–55.

Claim 1 describes a method of responding to requests

to stream content to STBs from various content servers,

i.e., VHOs and the VSO, based on the relative costs of the

network impact of fetching the content from the various

servers, which have the requested content. Claim 2 de-

pends from claim 1 and further describes determining at

which particular server/s to store the content depending on

“a network penalty.”

1 All references to § 103 throughout the opinion refer

to the pre-AIA version because the application’s priority

date is before March 16, 2013.

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IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC 3

Claims 1 and 2 of the ’765 application are representa-

tive. They recite in relevant part:

1. A method comprising:

receiving, by a processing apparatus at a first con-

tent source, a request for content;

in response to receiving the request, determining

that the content is not available from the first con-

tent source;

in response to determining that the content is not

available from the first content source, determin-

ing that a second content source cost associated

with retrieving the content from a second content

source is less than a third content source cost asso-

ciated with retrieving the content from a third con-

tent 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, . . .

2. The method of claim 1, further comprising:

determining that there is not sufficient memory to

cache the content at the first content source; and

selecting one or more items to evict from a cache at

the first content source to make available sufficient

memory for the content, wherein the selection of the

items to evict minimizes a network penalty associ-

ated with the eviction of the items, wherein the net-

work penalty is based on sizes of the content and the

items, and numbers of requests expected to be re-

ceived for the content and the items.

’765 application at claims 1 and 2 (emphases added).

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The examiner rejected the claims under § 103. 2 J.A.

115, 155. The examiner determined that claim 1 would

have been obvious in view of Costa 3 and Scholl 4 and claim

2 would have been obvious in view of Costa, Scholl, Alle-

grezza 5, and Ryu. 6 J.A. 157, 161. The examiner found that

Costa discloses all limitations of claim 1 except one, and

Scholl discloses this remaining limitation, i.e., determina-

tion of the content route. J.A. 158, 195. The examiner also

explained that Allegrezza and Ryu disclose the additional

limitations in claim 2, because Allegrezza teaches caching

content and minimizing a network penalty based on the

number of requests expected to be received for the content

and the items and Ryu teaches minimizing a network pen-

alty based on the size of the content and the items. J.A.

162.

Google appealed this final rejection to the Board. As to

claim 1, Google contended that “the cited references do not

teach or suggest [most of the claim limitations].” J.A. 206

(referencing almost the entire third and fourth paragraphs

of claim 1). Largely quoting the claim language and refer-

ences, Google suggested that Costa teaches only “randomly

distributing a first set of videos for storage, distributing a

second set of videos to all of the central offices for storage

locally, and distributing a third set of videos to a particular

central office based on at least one demographic of view-

ers,” id. at 208, and Scholl teaches only a “determination

according to some rules,” id. at 210 (internal quotation

marks omitted). Google similarly averred that the cited

2 The claims were also initially rejected for double

patenting, but that rejection was resolved with Google’s fil-

ing of a terminal disclaimer. See J.A. 156.

3 U.S. Patent Application Publication 2004/0143850.

4 U.S. Patent No. 8,023,319.

5 U.S. Patent Application Publication 2004/0103437.

6 U.S. Patent No. 8,087,056.

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references did not teach the limitations of claim 2. Id. at

211. Again, relying on block quotes from the claim lan-

guage and the references, Google asserted that Allegrezza

merely teaches the storage of a content file through com-

parison to a demand threshold, id. at 212, and Ryu “merely

mentions classifying stored content into high-capacity and

low-capacity content,” id. at 213.

The Board affirmed the examiner’s obviousness rejec-

tions. The Board interpreted Google’s arguments for claim

1 as suggesting that Costa and Scholl do not teach “distrib-

uting content based on ‘costs’ which are ‘based on a net-

work impact.’” J.A. 7 (quoting claim 1). The Board was

unpersuaded, finding the examiner’s broad reading of

“costs,” as disclosed by Costa and Scholl, to be entirely con-

sistent with the application’s specification. Id. at 8–10.

Utilizing the broadest reasonable interpretation standard,

the Board explained that “costs” “based on a network im-

pact” encompassed costs “in terms of load, storage space,

time/latency, predicted traffic (i.e., amount of data trans-

mitted over time), or monetary costs.” Id. at 10 (citing the

application’s written description). The Board, agreeing

with the examiner, then found that Costa teaches costs

based on “redundancy, distance, or congestion,” and Scholl

teaches “costs based on proximity, time, and/or number of

nodes,” id. at 9, and therefore, the “combination of Costa

and Scholl teaches or suggests the method of distributed

content management and fetching recited in claim 1,” id.

Of note, the Board explained that “[Google] ha[d] not cited

to a definition of ‘costs’ or ‘network impact’ in the [s]pecifi-

cation that would preclude the [e]xaminer’s broader read-

ing.” Id. at 10.

The Board then assessed Google’s arguments for claim

2, and again, agreed with the examiner. The Board con-

cluded that the collective teachings of the combination of

Costa, Scholl, Allegrezza, and Ryu disclose all the limita-

tions of claim 2. J.A. 11–12. The Board summarized

Google’s arguments as unpersuasive inasmuch as they

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suggested only “the shortcomings in the teachings of Alle-

grezza and Ryu individually,” because the examiner “re-

lie[d] on a properly made combination of [all the

references].” Id. at 11. Particularly, the Board explained

that “[Google’s] response to the [e]xaminer’s findings in

this regard [we]re conclusory, fail[ed] to specifically ad-

dress the [e]xaminer’s findings . . . , and [we]re thus unper-

suasive.” Id. at 12. The Board concluded that Google failed

to rebut the collective teachings and suggestions of the ap-

plied references. Id. Of consequence, the Board did not put

forth any explicit construction of the term “network pen-

alty” in its decision, nor did Google argue for one. Id. at

10–13.

Google appeals to our court from the Board’s decision.

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A)

and 35 U.S.C. § 141(a).

DISCUSSION

As an initial matter, we recognize that our court’s opin-

ions have not always been precise when discussing the doc-

trines of waiver and forfeiture. The court seemingly has

used the terms interchangeably at times. Compare In re

Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (“Because the

appellant failed to argue his current interpretation of the

prior art below . . . we hold that appellant has waived [this

argument].”), and In re Baxter Int’l, Inc., 678 F.3d 1357,

1362 (Fed. Cir. 2012) (“We agree with the PTO that Baxter

waived its arguments regarding the [means for] limitation

in claim 30 by failing to timely raise them before the

Board.”), with Nuvo Pharms. (Ireland) Designated Activity

Co. v. Dr. Reddy’s Labs. Inc., 923 F.3d 1368, 1378 (Fed. Cir.

2019) (concluding that “Nuvo’s argument was not raised

below and thus is forfeited” and citing in support of this

proposition TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356,

1363 (Fed. Cir. 2017), which utilized the term “waiver”).

It is well established that “[w]aiver is different from

forfeiture.” United States v. Olano, 507 U.S. 725, 733

Case: 19-1828 Document: 57 Page: 7 Filed: 11/13/2020

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(1993). 7 “Whereas forfeiture is the failure to make the

timely assertion of a right, waiver is the ‘intentional relin-

quishment or abandonment of a known right.’” Id. (quoting

Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional ci-

tations omitted). The two scenarios can have different con-

sequences for challenges raised on appeal, id. at 733–34,

and for that reason, it is worth attending to which label is

the right one in a particular case.

By and large, in reviewing this court’s precedent, it is

evident that the court mainly uses the term “waiver” when

applying the doctrine of “forfeiture.” 8 The parties in the

case at hand, understandably, have done just the same.

Specifically, the Patent Office contends that “Google never

made [its claim construction lexicography] arguments to

the Board, so it waived them.” Appellee’s Br. at 18. We

interpret the Patent Office to be arguing that Google’s

7 We are reminded of this passage from Justice

Scalia in Freytag v. Commissioner:

The Court uses the term “waive” instead of “for-

feit.” The two are really not the same, although our

cases have so often used them interchangeably that

it may be too late to introduce precision.

501 U.S. 868, 894 n.2 (1991) (Scalia, J., concurring in part

and concurring in judgment) (citation omitted). Two years

after this observation from Justice Scalia, in an opinion in

which he joined, the Supreme Court elucidated that this

distinction is of some import. See Olano, 507 U.S. at 733

(discussing the differing consequences that attach to

waiver and forfeiture and citing Justice Scalia’s footnote

from Freytag).

8 Though previous cases may have used the term

“waiver” instead of “forfeiture,” their holdings are good law

for a case, like this one, involving the issue of forfeiture.

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failure to raise its lexicography arguments, inadvertent or

not, compels a finding of forfeiture. We agree.

On appeal, Google posits the following: “[T]he Board

err[ed] when it construed the claim terms ‘cost associated

with retrieving the content’ and ‘network penalty’ in con-

tradiction to their explicit definitions in the specification.”

Appellant’s Br. at 2. More specifically, Google argues that

“cost” in claim 1 is “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,” id. at 39 (internal quotation

marks omitted) (citing paragraph 67 of the written descrip-

tion), and “network penalty” in claim 2 is a specific formula

based on the size of the content and items, expected re-

quests for the content and items, and fetch cost for the con-

tent and items, see id. at 42 (quoting paragraphs 79–81 of

the written description). Therefore, Google argues, be-

cause the Board relied on the incorrect constructions of

these two terms, the Board’s decision upholding the rejec-

tions was incorrect.

Meritorious or not, Google never presented these argu-

ments to the Board. And therein lies the problem. Because

Google failed to present these claim construction argu-

ments to the Board, Google forfeited both arguments. We

have regularly stated and applied the important principle

that a position not presented in the tribunal under review

will not be considered on appeal in the absence of excep-

tional circumstances. See, e.g., Nuvo Pharm., 923 F.3d at

1378; Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d

1318, 1323 (Fed. Cir. 2008). We see no exceptional circum-

stances justifying a departure from that principle here.

Google presents two main reasons as to why this court

should exercise its discretion to hear its forfeited argu-

ments on appeal: (1) the Board in its decision sua sponte

construed the term “cost” and thus, because it “passed

upon” on the issue, Google is not barred from appealing

that construction; and (2) the issue of the construction of

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“network penalty” is one of law fully briefed (now) and con-

sistent with Google’s position before the Board. We are un-

persuaded.

In support of its first contention, Google cites United

States v. Williams for the “traditional rule” that “permit[s]

review of an issue not pressed so long as it has been passed

upon.” Appellant’s Reply Br. at 3 (citing United States v.

Williams, 504 U.S. 36, 41 (1992)). We agree with this

premise. Yet even though review may be “permit[ted],”

Williams, 504 U.S. at 41 (emphasis added), 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, see id. at 44–45 (ex-

plaining that the decision to undertake review of an issue

not pressed by the appellant below is a “permissible exer-

cise of [the court’s] discretion”).

In this instance, we decline to hear Google’s new argu-

ments as to the construction of “cost.” Google has not pro-

vided any reasonable explanation as to why it never argued

to the examiner during the iterative examination process

or later to the Board for a particular construction of the

term “cost,”—an argument that is now the linchpin to its

claims’ patentability. Accord Watts, 354 F.3d at 1368

(“Watts has shown no reason why we should excuse his fail-

ure to raise this argument before the Board.”). Allowing

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. See id. at 1367. Moreover, Google

has not explained how the Board’s understanding of “cost”

altered the theory underlying the examiner’s rejection or

otherwise was a surprising, unexpected departure.

Google cites Conoco, Inc. v. Energy & Environmental

International, L.C., 460 F.3d 1349 (Fed. Cir. 2006), as an

example of our court reviewing a district court’s sua sponte

claim construction. But nothing in that opinion contradicts

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the Supreme Court’s articulation of the “passed upon” doc-

trine as permissive, discretionary, and context-driven.

Whatever other differences there may be, the context of an

infringement determination after a bench trial is quite dif-

ferent from the context of a Board unpatentability determi-

nation after examination—the latter context is iterative.

Once an examiner has made a prima facie case for rejecting

the application claims, the applicant is provided with an

opportunity to submit any saving claim construction it be-

lieves may be grounds for reversing the rejection both to

the examiner and potentially again, to the Board. The bur-

den lies with the applicant to present this argument in the

initial instances. An applicant who does not take those op-

portunities and is then further disappointed by a Board

claim construction should be encouraged to avoid waste of

appellate resources and instead take the intra-PTO route

of filing new or amended claims (perhaps through a contin-

uation application) containing language that makes the de-

sired scope clear, thereby serving the goal of facial clarity

of patent claims.

In sum: 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 rea-

sons, that the [lower tribunal] pursue a certain course, and

later—if the outcome is unfavorable—claiming that the

course followed was reversible error.” Freytag, 501 U.S. at

895 (Scalia, J., concurring in part and concurring in judg-

ment). We decline to entertain Google’s effort here, for it

would only encourage litigants to engage in more of this

type of behavior.

As to Google’s second argument, that its construction

of “network penalty” on appeal is consistent with its argu-

ments below, we disagree. Put frankly, Google’s argu-

ments before the Board were hardly more than a pastiche

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IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC 11

of block quotes from the claims and references. See J.A.

211–13. Even under the most generous of readings,

Google’s arguments below did not suggest any definition of

“network penalty,” let alone the highly particularized defi-

nition it presents on appeal. Consistent with the aforemen-

tioned reasoning for Google’s claim 1 arguments, we

conclude that Google forfeited its claim 2 argument as to

the construction of “network penalty” because Google failed

to raise this argument in proceedings before the Board. In

the absence of exceptional circumstances, we decline to ad-

dress the merits of Google’s proposed claim constructions.

CONCLUSION

We have considered Google’s remaining arguments and

find them unpersuasive. For the reasons stated, we affirm

the Board’s decision upholding the rejection of claims 1–9,

11, 14–17, 19, and 20 of the ’765 application.

AFFIRMED