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Claim Construction Arguments Not Made to the PTAB Are Forfeited on Appeal

| David C. O’HairHans L. Mayer

IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC

Before Taranto, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: Claim construction arguments are forfeited if not raised before the PTAB.

The PTAB sustained the final rejection of Google Technology Holdings LLC’s (“Google”) claims as obvious. Google appealed.

On appeal, Google argued that the PTAB’s claim interpretations were incorrect and improperly resulted in the claims being found obvious. The Federal Circuit found that Google failed to raise its claim construction arguments rebutting obviousness to the PTAB or during examination; therefore, Google forfeited its ability to raise its claim construction arguments on appeal. Google argued that an exception appliedthat because the PTAB sua sponte construed terms in Google’s claims, Google should be allowed to raise a rebuttal construction before the Federal Circuit. The Federal Circuit rejected this argument finding that Google should have raised its preferred claim construction argument before the Board and that any attempt to do so for the first time before the Federal Circuit “deprives the Board . . . of its important role in reviewing the rejection of patent applications.” The Federal Circuit also noted that its holding was important to discourage future litigants from concealing new arguments until the appellate stage. Thus, the Federal Circuit affirmed the PTAB’s obviousness determination.

Editor: Paul Stewart