Fed Circuit rejects Google’s patent revival bid
Google has failed to convince the US Court of Appeals for the Federal Circuit that the Patent Trial and Appeal Board (PTAB) erred in rejecting its patent application covering video streaming technology.
In a precedential decision handed down Friday, November 13, the Federal Circuit concluded that Google had forfeited the arguments it put forth on appeal because it didn’t raise them before the PTAB.
According to an examiner, patent application US number 15/179,765 was obvious in light of prior art. On appeal, the PTAB affirmed the obviousness rejections.
Google subsequently appealed against the decision, arguing that the examiner’s rejection of the claims was incorrect as it rested upon two erroneous claim constructions.
“We interpret the Patent Office to be arguing that Google’s failure to raise its lexicography arguments, inadvertent or not, compels a finding of forfeiture. We agree,” said Circuit Judge Raymond Chen, on behalf of the court.
According to the Federal Circuit, Google’s arguments—whether they are meritorious or not—were not presented to the PTAB and so Google forfeited them.
“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 exceptional circumstances,” added Chen.
He explained that the Federal Circuit, as an appellate court, is charged in this instance with reviewing the board’s conclusions.
Citing Justice Antonin Scalia in Freytag v Commissioner, the court said: “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 reasons, that the [lower tribunal] pursue a certain course, and later—if the outcome is unfavourable—claiming that the course followed was reversible error.”
Chen said the court declined to “entertain Google’s effort” as it would encourage litigants to engage in more of this type of behaviour.
The PTAB’s decision, which upheld the rejection of claims 1–9, 11, 14–17, 19, and 20 of the ‘765 application, was affirmed.
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