Forfeiture, waiver, or Disclaimer

Fed. Cir. clarifies "waiver" and "forfeiture," affirms PTAB and Examiner rejections (11/16/20)

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).

Patentee's statements at IPR raises prosecution disclaimer (posted 05/12/17)

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:

A patent owner's preliminary response filed prior to an institution decision and a patent owner's response filed after institution are both official papers filed with the PTO and made available to the public. In both official papers, the patent owner can define claim terms and otherwise make representations about claim scope to avoid prior art. . . . Regardless of when the statements are made during the proceeding, the public is “entitled to rely on those representations when determining a course of lawful conduct. . . .”
[. . .]
In conclusion we hold that statements made by a patent owner during an IPR proceeding, whetehr before or after an institution decision, can be considered for claim construction and relied upon to support a finding of prosecution disclaimer.“

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.”

Arguments that claims do not stand or fall together not raised in district court are forfeited (01/27/07)

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.

Abbott plays "fast and loose with rules of discovery"; No abuse of discretion in excluding expert testimony (01/19/08)

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.

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