Forfeiture, waiver, or Disclaimer

In In re Google Technology Holdings LLC, the Federal Circuit affirmed the PTAB ruling that the Examiner's rejection of claims directed to a distributed storage system was proper. The decision turned on a claim construction first introduced in the PTAB ruling. Before the Federal Circuit, Google argues, “[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.” The Federal Circuit considers the point forfeited by Google since it never presented these arguments to the Board. Google, however, presents two reasons why the forfeited arguments should be heard: (1) The Board sua sponte construed the term “cost” and thus, because it “passed upon” the issue, Google is not barred from appealing that construction and (2) the issue of construction of “network penalty” is one of law fully briefed (now) and consistent with Google's position before the Board. The Federal Circuit, however, declined to hear Google's new argumetns as to the construction of “cost” because Google had not provided 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 “cost.”

In its ruling, the Federal Circuit clarified the distinction between waiver and forefeiture, stating that, “[w]hereas forfeiture is the failure to make a timely assertion of a right, waiver is the intentional relinquishment or abandonment of a known right. The two scenarios can have different consequences for challenges raised on appeal, and for that reason, it is worth attending to which label is the right one in a particular case” (internal quotes and citations omitted, emphasis added).

• Summary news article (paywall)

In Aylus Networks v. Apple, the USFC upheld the lower court's finding of non-infringement based on a narrow claim construction of the phrase, “wherein the [control point proxy] logic is invoked to negotiate media content delivery between the [media server] and the [media receiver]” set forth in claim 2 of the litigated patent, RE 44,412. In upholding the lower court's ruling, the USFC addressed for the first time “whether statements made by a patent owner during an IPR proceeding can be relied upon to support a finding of prosecution disclaimer during claim construction.” Stated the court:

The USFC then explained that they agreed with the district court that multiple statements made by the patent owner, such as “the CPP logic exclusively handles the negotiation of media content delivery between the MS and the MR,” according to the USFC, “constitute a clear and unmistakable surrender of methods invoking the control point logic [as opposed to the control point proxy] in the negotiation of media content delivery between the MS and the MR if the MS and MR are both in communication with the UE via a local wireless network.”

In Halliburton Energy Services, Inc. v. M-I LLC, the Fed. Cir. affirmed the district court's grant of summary judgment. In addition to considerable rulings on substantive matters, the court held that Halliburton, by failing to properly and sufficiently raise the issue at the district court level, forfeited arguments that dependent claims contained sufficient additional structure so that did not stand or fall with the independent claim on indefiniteness grounds. See Footnote 2, Slip Op. p. 8.

• Patent in suit: 6,887,832

In Innogenics v. Abbott Laboratories, the Federal Circuit was highly critical of Abbott's lawyers, and ruled against Abbott on a variety of grounds. With respect to procedural grounds, the Fed. cir. upheld the district courts JMOL verdict of literal infringement by Abbott because it agreed with the district court that Abbott forfeited its sole argument as to literal infringement because it raised by Abbott for the first time in a proposed jury instruction at 9:30 p.m. on the night before the trial. Deriving its procedural law from the Seventh Circuit in this case, forfeited arguments are rarely reached on appeal. However, the Fed. Cir. went on to note that Abbott's arguments lacked merit.