IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
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No First Place Trophy Here: Public Demo at Trade Show Found Invalidating

by | Feb 23, 2023 | ,

Addressing the public use bar of pre-America-Invents-Act (AIA) 35 U.S.C. § 102(b), the US Court of Appeals for the Federal Circuit affirmed a district court’s decision to invalidate a patent because the patent owner’s disclosure of a prior art device at a trade show more than one year before the patent’s priority date was an invalidating prior public use. Minerva Surgical, Inc. v. Hologic, Inc., Case No. 21-2246 (Fed. Cir. Feb. 15, 2023) (Prost, Reyna, Stoll, JJ.)

Minerva sued Hologic for infringement of a patent directed to surgical devices for a procedure called endometrial ablation, which stops or reduces abnormal uterine bleeding. The patent had a priority date of November 7, 2011, and the asserted claim included the term “the inner and outer elements have substantially dissimilar material properties” (SDMP term). The district court construed the SDMP term to mean that the “inner and outer frame elements have different thickness and different composition.”

On completion of discovery, Hologic moved for summary judgment of invalidity, arguing that the asserted patent claims were anticipated under the public use bar of pre-AIA § 102(b). According to Hologic, more than a year before the patent’s priority date, Minerva brought a device called Aurora to the 38th Global Congress of Minimally Invasive Gynecology sponsored by the American Association of Gynecologic Laparoscopists (AAGL 2009)—an event dubbed the “Super Bowl of the industry.” During the AAGL 2009 conference, Minerva had a booth with 15 fully functional Aurora devices, gave a presentation discussing the Aurora devices and distributed brochures. In light of the record, the district court granted summary judgment that the asserted claims were anticipated under the public use bar. Minerva appealed.

Minerva raised three arguments on appeal. First, Minerva argued that disclosure of the Aurora device at AAGL 2009 was not a “public use” because Minerva “merely displayed” the device. Second, Minerva argued that there was no disclosure of the “invention” of the asserted claim because the Aurora device disclosed at AAGL 2009 lacked the SDMP term. Third, Minerva argued that the invention was not “ready for patenting” because Minerva was still improving the SDMP technology at the time of AAGL 2009, so the device did not function for its intended purpose of ablating “live human” tissue. The Federal Circuit addressed each argument in turn.

The Federal Circuit found that the district court had correctly determined that the Aurora device at AAGL 2009 was a “public use” since it was shown to individuals other than the inventor under no limitation, restriction or obligation of confidentiality. The undisputed record showed that Minerva pitched the Aurora device to various sophisticated industry members, who were allowed, without confidentiality obligations, to scrutinize the Aurora device closely enough to recognize and understand the SDMP technology Minerva later sought to patent.

The Federal Circuit also concluded that the Aurora device disclosed the SDMP term. The Court found that the inventors conceived of the SDMP technology before AAGL 2009 and that documentation about the Aurora device from before and shortly after the event [...]

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Review Delayed Is Not Review Denied

by | Feb 16, 2023 | ,

Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written decision, the US Court of Appeals for the Federal Circuit concluded that the statute imposes no such requirement. CyWee Group Ltd. v. Google LLC et al., Case Nos. 20-1565, -1567 (Fed. Cir. Feb. 8, 2023) (Prost, Taranto, Chen, JJ.).

In 2018, Google filed two IPR petitions challenging certain claims of CyWee’s patents. The Board issued its final written decisions in January 2020, determining that all challenged claims were unpatentable for obviousness. CyWee appealed to the Federal Circuit in March 2020. In addition to challenging the patentability decision, CyWee challenged the appointment of Board administrative patent judges (APJs) as unconstitutional in view of the Appointments Clause. In March 2021, the Court affirmed the Board’s decisions and rejected CyWee’s constitutional challenge. The Court issued its mandate on June 10, 2020.

Eleven days later, the Supreme Court of the United States issued its decision in United States v. Arthrex, Inc., holding that APJs’ power to render final patentability decisions unreviewable by an accountable principal officer gave rise to an Appointments Clause violation but this violation could be remedied by, among other things, remanding to the acting PTO Director to decide to rehear the case. In response to a request from CyWee, the Federal Circuit recalled the mandate and remanded “for the limited purpose of allowing CyWee the opportunity to request Director rehearing of the final written decisions,” and required CyWee to inform the Court within 14 days of any decision denying rehearing. On remand, the Commissioner for Patents denied rehearing and ordered that the already-issued final written decisions were final decisions of the PTO. CyWee appealed.

CyWee contended that the post-Arthrex, mandated review by the PTO Director was untimely—and thus violative of due process—because the PTO Director did not have the ability to review the institution decision and final written decision within their respective three-month and one-year statutory deadlines. The Federal Circuit disagreed, calling CyWee’s contentions “meritless.” Rather, the Court found that because the PTO Director had permissibly delegated to the Commissioner for Patents authority to render institution and final decisions to the Board, those decisions were timely so long as the PTO Director’s delegees rendered them within the statutorily prescribed periods. By contrast, the PTO Director’s final review authority—a constitutional necessity born from Arthrex—has no similar statutory deadline.

CyWee also argued that the PTO Director’s later review was too late to satisfy a general requirement that the PTO Director consider the effect of regulations on the PTO’s ability to timely complete instituted IPRs. The Federal Circuit rejected this argument too, finding that even if the statute imposed a general timeliness requirement that was subject to judicial review, nothing about the process afforded to CyWee would have violated such a requirement.

With a different spin on the timeliness issue, CyWee also argued that the Board’s extension [...]

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Prior Art Citation to Inventors’ Report Not “By Another” for § 102(e)

by | Aug 25, 2022 | ,

The US Court of Appeals for the Federal Circuit found that a prior art patent’s summarization of a report authored by the inventors of a patent challenged under inter partes review (IPR) did not constitute a disclosure “by another” under pre-America Invents Act § 102(e). LSI Corp. v. Regents of Univ. of Minnesota, Case No. 21-2057 (Fed. Cir. Aug. 11, 2022) (Dyk, Reyna, Hughes, JJ.)

The Regents of the University of Minnesota (UMN) sued LSI Corporation and Avago Technologies (collectively, LSI) for infringement of a patent related to methods for reducing errors in binary data sequences. LSI petitioned for IPR, challenging several claims of the asserted patent and arguing that they were anticipated by two prior art references, Okada and Tsang. Tsang made reference to a “Seagate Annual Report” that was published by the inventors of the asserted patent, and which was later embodied in the patent’s application.

The Patent Trial & Appeal Board (Board) found that one of the challenged claims was anticipated by Okada. The Board also found that LSI had not shown that the other challenged claims were rendered unpatentable by either Okada or Tsang and further rejected an invalidity (anticipation) theory first raised by LSI during oral arguments as untimely (while noting that the argument failed even if timely raised). The Board determined that the Tsang reference was not “by another” under § 102(e) because LSI’s petition relied solely on material that was originally disclosed in the inventor’s Seagate Annual Report. LSI appealed the Board’s determinations relating to invalidity based on Okada or Tsang.

The Federal Circuit noted that LSI did not challenge the Board’s untimeliness determination and rejected LSI’s argument that it did not need to because the Board nevertheless reached a merits decision on the argument. The Court cited to its 2016 decision in Intelligent Bio-Systems v. Illumina Cambridge, which held that “the Board’s rejection of arguments on the ground that they were newly raised in a reply brief was not an abuse of discretion even though the Board went on to address the merits.”

Turning to the § 102(e) issue, the Federal Circuit first explained that an invention is anticipated under § 102(e) if the invention is described in a patent application filed “by another,” but a patent owner may overcome such anticipation by establishing that the relevant prior art disclosure describes the owner’s invention. Describing the history of the Tsang reference and the patent under review, the Court explained that the inventors originally submitted a Seagate Annual Report to Seagate, a UMN collaborator. Tsang, a Seagate employee, received the report and quickly filed a patent application for an improvement on the methods described in the report. This application listed only Tsang as inventor and made direct reference to the Seagate Annual Report.

The Federal Circuit then addressed whether LSI’s IPR petition relied on Tsang’s improvement to the inventors’ report or simply on Tsang’s summary of the inventors’ report. The Court explained that while LSI’s petition relied on both Tsang’s summary of the [...]

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Clarification or Raising the Bar? PTO Director Issues New Guidance for Discretionary PTAB Denials

by | Jun 30, 2022 | ,

On June 21, 2022, US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a memorandum addressing interim procedures for discretionary denials in America Invents Act (AIA)-post grant proceedings at the Patent Trial & Appeal Board (Board). In 2020, in order to minimize the potential conflict between the Board and parallel district court proceedings, the PTO designated the Board’s opinion in Apple v. Fintiv as precedential. Since Fintiv, the Board has issued several discretionary denials of institution based on parallel proceedings in district (and in some cases other administrative) courts. Director Vidal’s memo seeks to provide additional guidance on the PTO’s interpretation of Fintiv and its progeny and addresses multiple factors that were previously left to individual administrative law judge (ALJ) interpretation.

The memo includes rendering an initial evaluation of the merits of the petition. In particular, the Board will not deny institution of an inter partes review (IPR) or post-grant review (PGR) under Fintiv when a petition presents compelling evidence of unpatentability. This standard is higher than the institution standard, which requires only that “there is a reasonable likelihood that petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” While the memo does not elaborate on the evidence required to meet this compelling standard, numerous decisions were cited as illustrative. (See: e.g., Illumina Inc. v. Trs. of Columbia Univ., IPR2020-00988, Paper 20 (PTAB Dec. 8, 2020); Synthego Corp. v. Agilent Techs., Inc., IPR2022-00402, Paper 11 (May 31, 2022); Samsung Elecs. Co. v. Scramoge Tech., Ltd., IPR2022-00241, Paper 10 (June 13, 2022).)

Additionally, Director Vidal confirmed that Fintiv does not apply to parallel proceedings before the International Trade Commission nor where there has been a stipulation not to pursue the same grounds in a district court proceeding. The stipulation applies to grounds that are actually raised in the petition and any grounds that could have reasonably been raised in the petition, suggesting that there may be some dispute later in the district court proceeding about what grounds “could have reasonably been raised in the petition.”

Finally, the memo clarified the second factor of the Fintiv analysis: the speed with which the district court case may go to trial and be resolved. The Board will consider not only the scheduled trial date, but also the median time-to-trial for the particular district court, number of cases before the specific district court judge and the speed and availability of other dispositions.

Practice Note: While the standard for institution has not changed, the new compelling standard effectively ups the bar for any IPR, PGR or covered business method (CBM) proceedings where there is a parallel district court case. Prior to filing a new petition, patent challengers should objectively weigh the merits of their challenge or consider stipulating not to pursue the same invalidity grounds in the parallel district court proceeding.



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Attempts to Appeal Institution Decision Is SIPCOed

by | Feb 18, 2021 | ,

Reinforcing the impact of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the US Court of Appeals for the Federal Circuit reiterated that the Patent Trial and Appeal Board’s threshold determination as to whether it will institute a proceeding under the America Invents Act (AIA), in this instance a Covered Business Method (CBM) review, is not appealable because it is closely tied to the institution decision. cxLoyalty, Inc. v. Maritz Holdings Inc., Case Nos. 20-1307, -1309 (Fed. Cir. Feb. 8, 2021) (Prost, C.J.)

cxLoyalty petitioned for CBM review of a patent owned by Maritz. The patent relates to a system and method for permitting a loyalty program customer to redeem loyalty points for rewards offered by vendors without human intervention. A participant (i.e., a customer) uses a graphical user interface (GUI) to communicate with a web-based vendor system (e.g., an airline reservation system). An application programming interface (API) facilitates information transfer between the GUI and the vendor system.

The Board instituted CBM review and concluded that the original claims in the patent were ineligible for patenting under 35 USC § 101, but that the proposed substitute claims were patent eligible. The Board found the original and substitute claims amounted “to a fundamental economic practice long prevalent in commerce” and therefore were directed to abstract ideas. However, the Board found that, unlike the original claims, the substitute claims contained an inventive concept. cxLoyalty appealed the Board’s ruling as to the substitute claims. Maritz cross-appealed the Board’s determination that the patent was eligible for CBM review and the Board’s ruling as to the original claims.

The Federal Circuit quickly disposed of Maritz’s challenge to the CBM-eligibility of the patent, citing to its 2020 SIPCO v. Emerson decision. In SIPCO, the Court held that Thryv made clear that the Board’s threshold determination as to whether a patent qualifies for CBM review is a non-appealable decision. Whether CBM review is an available mechanism is conditioned on whether the patent qualifies, since patents that are directed to “technological inventions” are excluded from CBM review. Because the determination of whether a patent qualifies for CBM review is inextricably tied to the decision to institute, it is not appealable. SIPCO was decided after briefing but before oral argument of this case. Indeed, Maritz’s counsel acknowledged during oral argument that SIPCO foreclosed Maritz’s CBM eligibility challenge.

As to the merits, the Federal Circuit agreed with the Board that both the original and substitute claims were directed to patent-ineligible subject matter under § 101. Maritz argued that the claim features of permitting a participant to redeem points for rewards “without knowing that the actual transaction is a currency transaction at less than the perceived price” saved the claims from being merely abstract ideas. The Court disagreed. After applying the Alice/Mayo two-step analysis, the Court found that 1) the claims were directed to abstract ideas, and 2) the claims merely recited generic and conventional computer components or functionality for carrying out the abstract [...]

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If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice

by | Feb 11, 2021 | ,

The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board cannot sua sponte invalidate a claim as anticipated under § 102 unless that specific statutory ground had previously been noticed. M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., Case No. 20-1160 (Fed. Cir. Feb. 1, 2021) (Bryson, J.)

In response to M & K Holdings’ suit for patent infringement, Samsung filed an inter partes review (IPR) petition seeking cancellation of all claims of the asserted patent as obvious. The patent is directed to an efficient method for compressing video files by “decoding a moving picture in inter prediction mode,” using a motion vector to quantify where “reference pictures are used to estimate motion of a current block” over the video duration. Samsung’s petition relied on references generated in connection with the Joint Collaborative Team on Video Coding (JCT-VC), which established industry standards for high-efficiency video coding (HEVC). All three prior art references were uploaded to JCT-VC’s website before the critical date.

After the Board held all claims of the patent unpatentable, M & K appealed, arguing that the Board erred by relying on references that do not qualify as prior art printed publications under 35 USC § 102, and by finding claim 3 anticipated when the petition for IPR asserted only obviousness as to that claim.

Public Accessibility and Printed Publications

M & K argued that a person of ordinary skill could not have located two of the three prior art references by exercising reasonable diligence, and therefore the Board’s holding that those references were publicly accessible was erroneous. Specifically, M & K argued that the structure and search capabilities of the JCT-VC website (requiring navigating to the JCT-VC landing page, clicking on the “All meetings” link and selecting a particular meeting in order to access documents, without any explanation that the “All meetings” label contains a document repository, and with no search functionality on the landing page or the “All meetings” page) meant that even if a user happened to navigate to a meeting page of the website, the user could not search documents by content, but could search only by date, title and number.

The Federal Circuit disagreed, explaining that public accessibility does not require a website’s landing page to have search functionality. Instead, “given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located [the references] through reasonable diligence.” The Court agreed that substantial evidence supported that interested users could have done so.

Regardless of whether the website described itself as a document repository, the Federal Circuit noted that a skilled artisan browsing the JCT-VC website would understand that it was structured to serve the JCT-VC’s purpose of developing HEVC standards through member meetings and communications. Therefore, a skilled artisan browsing the JCT-VC website would have realized that documents are hosted [...]

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PTO: Board to Align Indefiniteness Approach in AIA and District Court Proceedings

by | Jan 21, 2021 |

On January 6, 2021, US Patent and Trademark Office (PTO) Director Andrei Iancu, Commissioner for Patents Andrew Hirshfeld and Chief Administrative Patent Judge Scott Boalick issued a memorandum to the members of the Patent Trial and Appeal Board to align the Board’s approach when deciding indefiniteness issues under 35 USC § 112 in America Invents Act (AIA) post-grant proceedings more closely with district court proceedings. The memo was issued under the PTO director’s authority to set forth binding agency guidance to govern the Board’s interpretation of statutory provisions. The memo cited to similar recent changes to the approach to claim construction in such proceedings, and stated that aligning “the indefiniteness approach [used] in AIA post-grant proceedings [to district court proceedings] will promote consistency and efficient decision making among coordinate branches of government that decide similar issues in co-pending proceedings.” The instructed approach, per the Supreme Court of the United States’ 2014 decision in Nautilus, applies to post grant review (PGR) and inter partes review (IPR) proceedings, but not to indefiniteness (or claim construction) issues decided outside the context of AIA reviews.

Post-AIA 35 USC § 112(b) (and pre-AIA § 112, second paragraph) require that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” Claims not meeting this requirement are invalid for indefiniteness and may be determined indefinite during PTO examination, on appeal from examination and during AIA post-grant proceedings. In 2014 the US Court of Appeals for the Federal Circuit approved the PTO’s long-standing approach to assessing indefiniteness during patent prosecution in its per curiam In re Packard decision that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” At the time, this approach was used agency-wide to analyze questions of indefiniteness, in complement with the office’s broadest reasonable interpretation approach to claim construction.

Despite the Supreme Court’s decision in Nautilus that a claim is unpatentable for indefiniteness if the claim, read in light of the specification delineating the patent and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention, the PTO reaffirmed its intent to follow Packard in examination (whether original, appeals or reexamination). In 2018, in the interest of consistency and efficiency, the PTO changed its claim construction standard for post-grant trial proceedings to review a claim of a patent, or a claim proposed in a motion to amend, from the broadest reasonable interpretation to the same Phillips standard that would be used to construe the claim in a district court action.

The memorandum noted that there has been some confusion as to whether the Packard or Nautilus standard should apply in AIA proceedings. While parties to such proceedings argued for one or the other, neither the Board nor the Federal Circuit ruled as to which standard applied. Now, in the interest of clarity, consistency and efficiency, and to “lead to greater [...]

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PTAB Designates Three Opinions as Precedential

by | Dec 17, 2020 | ,

In RPX Corp. v. Applications in Internet Time, LLC, Case Nos. IPR2015-01750, -01751, -01752 (Oct. 2, 2020) (Boalick, CAPJ) (designated precedential on Dec. 4, 2020), the Patent Trial and Appeal Board (Board) terminated institution of RPX’s petitions for inter partes review (IPR) because Salesforce—served with a complaint more than one year before—should have been named as a real party-in-interest (RPI) to the proceedings. As a result, RPX’s petition was time-barred under § 315(b).

The Board’s determination came after remand from the Federal Circuit, which vacated the Board’s prior finding that Salesforce was not an RPI. (IP Update, Vol. 21, No. 8). The Federal Circuit instructed the Board to use the common law understanding of “real party-in-interest” and a “flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a pre-existing, established relationship with the petitioner.” On remand, the Board took additional discovery to examine the relationship between RPX and Salesforce, including RPX’s business model, Salesforce’s relationship with RPX, whether RPX represents Salesforce’s interests in invalidating the patents, and the significance of the fact that Salesforce and RPX had overlapping Board members. After considering the relationship, the Board found the evidence pointed clearly toward a common interest—between RPX and its members—in invalidating the patents in IPR proceedings. It found RPX could not avoid the time bar under § 315(b), or estoppel under § 315(e) for its members, by creating the appearance that RPX acts independently of its members’ interests when filing IPR petitions.

In SharkNinja Operating LLC v. iRobot Corp., Case No. IPR2020-00734 (Oct. 6, 2020) (Melvin, APJ) (designated precedential on Dec. 4, 2020), the Board declined to address—for purposes of institution—the patent owner’s claim that the IPR petition failed to name an alleged RPI under § 312(a)(2)’s requirement that a petition “identif[y] all real parties-in-interest.” iRobot alleged that JS Global was an unnamed RPI because it was intertwined with SharkNinja’s business and was in a position to fund and exercise control over the IPR petition. The Board declined to reach a determination on the issue because it would have no impact on the proceeding, absent evidence that (1) JS Global was a time-barred or an otherwise estopped entity whose addition to the petition would result in its dismissal under § 315 or (2) SharkNinja’s omission of JS Global was done in bad faith. Even if SharkNinja was mistaken in its decision not to name JS Global as an RPI, the Board’s precedent would allow SharkNinja to correct the mistake during the proceeding.

In Apple Inc. v. Uniloc 2017 LLC, Case No. IPR2020-00854 (Oct. 28, 2020) (Quinn, APJ) (designated precedential on Dec. 4, 2020), the Board exercised its discretion to deny Apple’s motion for joinder because it would have resulted in a “serial attack” on Uniloc’s patent. Apple had previously filed an IPR petition on the same patent, alleging various grounds of invalidity. The Board denied institution because it failed to show a reasonable likelihood [...]

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Covered Business Method Threshold Review Is Not Appealable

by | Nov 24, 2020 | ,

The US Court of Appeals for the Federal Circuit found that in view of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the Patent Trial and Appeal Board’s threshold determination that a patent qualifies for covered business method (CBM) review is closely tied to the institution decision and is therefore not appealable. SIPCO, LLC v. Emerson Electric Co., Case No. 18-1635 (Fed. Cir. Nov. 17, 2020) (Chen, J.)

SIPCO owns a patent directed to a communication device that uses a two-step communications path, where a remote device first communicates through a low-power wireless connection to an intermediate node, which in turn connects to a central location. Emerson filed a CBM petition arguing that the claims were obvious over the prior art. The Board instituted a CBM review and issued a final written decision finding the challenged claims obvious over the prior art. SIPCO appealed.

SIPCO argued that the Board overstepped its authority to institute a CBM review because the patent was directed to a “technological invention” and was statutorily excluded from CBM review. The Federal Circuit initially found that the Board’s threshold analysis was flawed because it focused solely on the second portion of the “technological invention” definition set forth in 37 CFR § 42.301(b). The Court vacated the Board’s decision and remanded for it to consider both parts of the definition, and to reconsider whether the patent qualified for CBM review (IP Update, Vol. 22, No. 20).

Emerson filed a petition for a writ of certiorari in the Supreme Court, arguing that the Board’s decision to institute a CBM review is not appealable under the “no appeal” provision of 35 USC § 324(e). The Supreme Court granted the petition, vacated the Federal Circuit opinion and remanded for further consideration in light of the Supreme Court’s decision in Thryv, which found that the one-year time bar for instituting an inter partes review is bound up with the decision to institute and therefore is not appealable under a similar “no appeal” provision.

On remand, the Federal Circuit found that Thryv made clear that the Board’s threshold determination as to whether a patent qualifies for CBM review is a decision that is non-appealable. Availability of the CBM review process is conditioned on whether the patent qualifies for CBM review, and patents that are directed to “technological inventions” are excluded from CBM review. The Court concluded that the determination of whether a patent qualifies for CBM review is inextricably tied to the decision to institute and is thus not appealable. Turning to the merits, the Court found the Board’s claim construction correct and its obviousness determination supported by substantial evidence.

Practice Note: In a footnote, the Federal Circuit recognized that Thryv implicitly abrogated the Court’s prior practice of reviewing whether the Board’s institution determination breached the limits of the Board’s authority.



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Wave Goodbye to Lost Arguments: Waiver Versus Forfeiture Law

by | Nov 24, 2020 | ,

The US Court of Appeals for the Federal Circuit concluded that a patent owner forfeited claim construction arguments on appeal by not presenting them first to the Patent Trial and Appeal Board for consideration. In re: Google Tech. Holdings LLC, Case No. 19-1828 (Fed. Cir. Nov. 13, 2020) (Chen, J.)

Google submitted an application to the US Patent and Trademark Office (PTO) seeking patent claims covering certain means and methods for transferring content to video-on-demand systems. During examination, the examiner rejected Google’s proposed claims based on obviousness in light of certain references. After receiving a final rejection, Google appealed to the Board, relying heavily on block quotes from the references and proposed claims to argue that the examiner improperly found obviousness.

The Board affirmed the examiner’s rejection. Applying the broadest reasonable interpretation standard, the Board construed two claim terms: “costs” and “network impact.” In defining those terms, the Board noted that Google had not, in the course of appealing the examiner’s decision, “cited to a definition of ‘costs’ or ‘network impact’ in the [s]pecification that would preclude the [e]xaminer’s broader reading.” Google appealed.

Google argued that the Board erred in its constructions. The Federal Circuit never reached the merits, however, instead concluding that Google had not properly presented its arguments first to the PTO. The Court described the oft-forgotten difference between waiver (the voluntary and knowing relinquishment of a right) and forfeiture (the failure to make a timely assertion of a particular right). This case, the Court reasoned, was an example of forfeiture, because Google had failed to urge the claim constructions to the PTO in the first instance.

Google contended that the Federal Circuit should nonetheless review the Board’s determination, because the Board actually ruled on the claim constructions and those issues were ripe for decision before the Court. The Court rejected these arguments, largely because Google identified no excuse for failing to raise the issue earlier, and because the Board’s final decision was not unexpected in the course of the proceedings.

Practice Note: Ultimately, the Court’s opinion presents one approach (perhaps not one consistently followed) regarding what an appellant must do in order to maintain its right to review. Appellees seeking to foreclose appellate review should consider whether, regardless of the Board’s ultimate decision, the appellant appropriately pressed the arguments on the error for which it later seeks appellate review.



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