waiver : CAFC Alert


| January 6, 2021

In Re: Google Technology holdings LLC

November 13, 2020

Chen (author), Taranto, and Stoll


The Federal Circuit affirmed the PTAB’s final decision that claims of Google’s patent application are unpatentable as obvious.  The Federal Circuit found that since Google did not present its claim construction arguments before the PTAB in the first instance, Google forfeited these arguments and could not present again before the CAFC.  The CAFC did not find any exceptional circumstances justifying considering these arguments before the CAFC.


Google Technology Holdings LLC (“Google”) appeals from the decision of the PTAB, where the PTAB affirmed the examiner’s final rejection of claims 1-9, 11, 14-17, 19, and 20 of the U.S. Patent Application No. 15/179,765 (‘765 application) under §103. 

The ‘765 application is directed 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.”  This application discloses a solution for how to determine streaming content to set-top boxes (STBs) and where to store the content among various content servers (video home offices (VHOs) or video server office (VSO)). 

Claims 1 and 2 are representative claims of the ‘765 application and reproduced as follows:

1. A method comprising:

receiving, by a processing apparatus at a first content source, a request for content;

in response to receiving the request, determining that the content is not available from the first content source;

in response to determining that the content is not available from the first content source, determining 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, . . .

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 associated with the eviction of the items, wherein the network penalty is based on sizes of the content and the items, and numbers of requests expected to be received for the content and the items.        

Independent claim 1 recites a method of responding to requests to stream contents to STBs from content servers based on a cost of a network impact of fetching the content from the various content servers.  Claim 2 recites a method of determining at which particular server(s) to store the content based on a network penalty.

During prosecution of the ‘765 application, the examiner rejected claim 1 in view of the Costa and Scholl references.  The examiner rejected claim 2 in view of the Costa, Scholl, Allegrezza, and Ryu references. 


           Google appealed the final rejection to the PTAB.  Google argued that the cited references do not teach or suggest the claimed limitations (by “largely quoting the claim language and references” and “relying on block quotes from the claim language and the references”).

            However, the PTAB affirmed the examiner’s obviousness rejections.

            With regard to independent claim 1, the PTAB noted that because Google failed to cite a definition of “cost” or “network impact” in the specification that would preclude the examiner’s broad interpretation, the PTAB agrees with the examiner’s rejection that the combination of the cited references teaches or suggests the claimed limitation of independent claim 1.

            With regard to claim 2, the PTAB noted that Google’s response were “conclusory,” and that Google “failed to rebut the collective teachings and suggestions of the applied references.”  Instead, the PTAB argued that Google’s arguments focused merely on the shortcomings in the teachings of the cited references individually.  Therefore, the PTAB agreed with the examiner.

            Google did not introduce any construction of the term “network penalty” before the PTAB.


            First of all, the CAFC noted that “waiver is different from forfeiture.”  United States v. Olano, 507 U.S. 725, 733 (1993).  The CAFC noted that “whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)).

            Google argued to the CAFC that “[T]he Board err[ed] when it construed the claim terms ‘cost associated with retrieving the content’ and ‘network penalty’ in contradiction to their explicit definitions in the specification.”  Therefore, Google argued that since the PTAB relied on the incorrect constructions of these two terms, the PTAB decision was not correct.

            However, the CAFC noted that Google did not present these arguments to the PTAB.  In other words, the CAFC noted that Google forfeited these arguments. 

            Google also argued to the CAFC that the CAFC should exercise its discretion to hear its forfeited arguments on appeal because (1) the PTAB sua sponte construed the term “cost”; and (2) the claim construction issue of “network penalty” is one of law fully briefed before the CAFC.

            However, the CAFC noted that both arguments are not persuasive.  The CAFC argued that Google did not provide any reasonable explanation as to why it never argued to the examiner during the prosecution or later to the PTAB.  Also, the CAFC argued that since Google forfeited its argument for “network penalty” before the PTAB, Google’s second argument is not persuasive as well. 

            Therefore, the PTAB affirmed the PTAB’s decision upholding the rejection of the claims of the ‘765 application.


  • Applicant should make sure to present all arguments before the PTAB prior to an appeal to the CAFC.
  • Factual issues v. legal issues: the CAFC applies significant deference to the PTAB on the factual issues (i.e., what the cited references teach and whether those teachings meet the claim limitations); the CAFC reviews legal questions without deference. 
  • There are benefits for an appeal to the CAFC: if the claim rejections are reversed, the prosecution is terminated, and the appealed claims are allowed without narrowing the claims (MPEP 1216.01 I.B and I.D).

Applicant’s failure to request claim construction under §112, 6th paragraph may invoke waiver of such claim construction

| January 23, 2013

In re Avid Identification Systems, Inc.

January 8, 2013

Panel:  Lourie, Clevenger and Bryson.  Opinion by Lourie.  Dissent by Clevenger.


The Examiner rejected claims of a patent at issue, and the PTO board maintained the rejection finding that a means-plus function limitation was found in prior art where its broadest reasonable meaning was given.  CAFC affirmed the PTO decision, and denied the Applicants’ request for a claim construction under § 112, 6th paragraph, instead of the broadest reasonable interpretation.  CAFC reasoned that the Applicants waived that claim construction by failing to raise the issue during the procedure in the PTO.  The dissenting opinion pointed out that the claim construction according to § 112, 6th paragraph is mandatory as the statutory requirement where the claim term clearly invokes the application of § 112, 6th paragraph.

出願人はクレームが自明であるとして拒絶した特許庁審判部の判断を不服として、CAFCに控訴した。問題のクレームには、ミーンズプラスファンクション(”means for”の用語を用いた限定 )を記載がある。そのような記載があると通常、特許法112条第6パラグラフの適用があり、その機能限定は明細書に開示されている構造もしくはそれと均等な構造を記載していると限定解釈される。しかしながら、本件では、特許庁審査官および審判部は、そのミーンズプラスファンクションの限定を、一般的な構造限定のときのように合理的な範囲で最も広い意味(broadest reasonable meaning)の基準を用いて解釈した。この広い解釈に基づいてその機能限定は先行技術に記載されていると特許庁は判断した。この経緯に関してCAFCは、出願人は特許庁の手続きにおいて112条第6パラグラフの適用を自ら主張しなかったためその機会を放棄したと判断し、出願人の主張を退けた。CAFC裁判官の1人は、112条第6パラグラフの適用は制定法上の要求であり、出願人や審査官が同法に基づく限定解釈を要求しなくても先ずその解釈を採用すべきであるとの反対意見を述べた。

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