United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC,

Appellant

______________________

2019-1828

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 15/179,765.

______________________

Decided: November 13, 2020

______________________

KATHRYN SCHLECKSER KAYALI, Williams & Connolly 

LLP, Washington, DC, argued for appellant. Also represented by ANDREW V. TRASK; TIMUR ENGIN, Google Inc., 

Mountain View, CA.

 DANIEL KAZHDAN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

appellee Andrei Iancu. Also represented by MICHAEL S.

FORMAN, THOMAS W. KRAUSE, FARHEENA YASMEEN 

RASHEED.

 ______________________

Before TARANTO, CHEN, and STOLL, Circuit Judges.

CHEN, Circuit Judge.

Google Technology Holdings LLC (Google) appeals the 

decision of the Patent Trial and Appeal Board (Board) 

sustaining the examiner’s final rejection of claims 1–9, 11, 

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2 IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC

14–17, 19, and 20 of U.S. Patent Application No. 

15/179,765 (’765 application) under pre-AIA 35 U.S.C. § 

103.1 Because we conclude that Google has forfeited its 

arguments put forth on appeal, we affirm.

BACKGROUND

The ’765 application relates to “distributed caching for 

video-on-demand systems, and in particular to a method 

and apparatus for transferring content within such videoon-demand systems.” J.A. 51. The application describes a 

three-level system that includes (i) a complete content library stored at a remote, master server referred to as a 

video server office (VSO), (ii) several smaller, partial-content libraries at local servers referred to as video home offices (VHOs), and (iii) individual users at set-top boxes 

(STBs). See id. at 44–45, 51–53. Different VHOs will store 

at least some different content so that when a particular 

VHO local to an STB lacks certain requested content, the 

system may stream that requested content from either a 

different VHO or the VSO. See id. at 54. The proposed 

invention presents a solution for determining how to 

stream content to STBs and where to store said content 

among the content servers, be it at one or more of the VHOs

or at the VSO. See id. at 54–55.

Claim 1 describes a method of responding to requests 

to stream content to STBs from various content servers, 

i.e., VHOs and the VSO, based on the relative costs of the

network impact of fetching the content from the various 

servers, which have the requested content. Claim 2 depends from claim 1 and further describes determining at

which particular server/s to store the content depending on 

“a network penalty.”

1 All references to § 103 throughout the opinion refer 

to the pre-AIA version because the application’s priority 

date is before March 16, 2013.

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IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC 3

Claims 1 and 2 of the ’765 application are representative. They recite in relevant part:

1. A method comprising:

receiving, by a processing apparatus at a first content source, a request for content; 

in response to receiving the request, determining 

that the content is not available from the first content source;

in response to determining that the content is not 

available from the first content source, determining that a second content source cost associated 

with retrieving the content from a second content

source is less than a third content source cost associated with retrieving the content from a third content source, wherein the second content source cost 

is determined based on a network impact to fetch 

the content from the second content source to the 

first content source, . . .

2. The method of claim 1, further comprising:

determining that there is not sufficient memory to 

cache the content at the first content source; and

selecting one or more items to evict from a cache at 

the first content source to make available sufficient 

memory for the content, wherein the selection of the 

items to evict minimizes a network penalty associated with the eviction of the items, wherein the network penalty is based on sizes of the content and the 

items, and numbers of requests expected to be received for the content and the items.

’765 application at claims 1 and 2 (emphases added). 

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4 IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC

The examiner rejected the claims under § 103.2 J.A. 

115, 155. The examiner determined that claim 1 would 

have been obvious in view of Costa3 and Scholl4 and claim 

2 would have been obvious in view of Costa, Scholl, Allegrezza5, and Ryu.6 J.A. 157, 161. The examiner found that 

Costa discloses all limitations of claim 1 except one, and

Scholl discloses this remaining limitation, i.e., determination of the content route. J.A. 158, 195. The examiner also 

explained that Allegrezza and Ryu disclose the additional 

limitations in claim 2, because Allegrezza teaches caching 

content and minimizing a network penalty based on the 

number of requests expected to be received for the content 

and the items and Ryu teaches minimizing a network penalty based on the size of the content and the items. J.A.

162.

Google appealed this final rejection to the Board. As to 

claim 1, Google contended that “the cited references do not 

teach or suggest [most of the claim limitations].” J.A. 206 

(referencing almost the entire third and fourth paragraphs 

of claim 1). Largely quoting the claim language and references, Google suggested that Costa teaches only “randomly 

distributing a first set of videos for storage, distributing a 

second set of videos to all of the central offices for storage 

locally, and distributing a third set of videos to a particular 

central office based on at least one demographic of viewers,” id. at 208, and Scholl teaches only a “determination 

according to some rules,” id. at 210 (internal quotation

marks omitted). Google similarly averred that the cited 

2 The claims were also initially rejected for double 

patenting, but that rejection was resolved with Google’s filing of a terminal disclaimer. See J.A. 156.

3 U.S. Patent Application Publication 2004/0143850.

4 U.S. Patent No. 8,023,319.

5 U.S. Patent Application Publication 2004/0103437. 6 U.S. Patent No. 8,087,056.

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IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC 5

references did not teach the limitations of claim 2. Id. at 

211. Again, relying on block quotes from the claim language and the references, Google asserted that Allegrezza 

merely teaches the storage of a content file through comparison to a demand threshold, id. at 212, and Ryu “merely 

mentions classifying stored content into high-capacity and 

low-capacity content,” id. at 213.

The Board affirmed the examiner’s obviousness rejections. The Board interpreted Google’s arguments for claim 

1 as suggesting that Costa and Scholl do not teach “distributing content based on ‘costs’ which are ‘based on a network impact.’” J.A. 7 (quoting claim 1). The Board was 

unpersuaded, finding the examiner’s broad reading of 

“costs,” as disclosed by Costa and Scholl, to be entirely consistent with the application’s specification. Id. at 8–10. 

Utilizing the broadest reasonable interpretation standard, 

the Board explained that “costs” “based on a network impact” encompassed costs “in terms of load, storage space, 

time/latency, predicted traffic (i.e., amount of data transmitted over time), or monetary costs.” Id. at 10 (citing the 

application’s written description). The Board, agreeing 

with the examiner, then found that Costa teaches costs 

based on “redundancy, distance, or congestion,” and Scholl 

teaches “costs based on proximity, time, and/or number of 

nodes,” id. at 9, and therefore, the “combination of Costa 

and Scholl teaches or suggests the method of distributed 

content management and fetching recited in claim 1,” id. 

Of note, the Board explained that “[Google] ha[d] not cited 

to a definition of ‘costs’ or ‘network impact’ in the [s]pecification that would preclude the [e]xaminer’s broader reading.” Id. at 10.

The Board then assessed Google’s arguments for claim 

2, and again, agreed with the examiner. The Board concluded that the collective teachings of the combination of 

Costa, Scholl, Allegrezza, and Ryu disclose all the limitations of claim 2. J.A. 11–12. The Board summarized 

Google’s arguments as unpersuasive inasmuch as they 

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suggested only “the shortcomings in the teachings of Allegrezza and Ryu individually,” because the examiner “relie[d] on a properly made combination of [all the 

references].” Id. at 11. Particularly, the Board explained 

that “[Google’s] response to the [e]xaminer’s findings in 

this regard [we]re conclusory, fail[ed] to specifically address the [e]xaminer’s findings . . . , and [we]re thus unpersuasive.” Id. at 12. The Board concluded that Google failed 

to rebut the collective teachings and suggestions of the applied references. Id. Of consequence, the Board did not put 

forth any explicit construction of the term “network penalty” in its decision, nor did Google argue for one. Id. at

10–13.

Google appeals to our court from the Board’s decision. 

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) 

and 35 U.S.C. § 141(a).

DISCUSSION

As an initial matter, we recognize that our court’s opinions have not always been precise when discussing the doctrines of waiver and forfeiture. The court seemingly has 

used the terms interchangeably at times. Compare In re 

Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (“Because the 

appellant failed to argue his current interpretation of the 

prior art below . . . we hold that appellant has waived [this 

argument].”), and In re Baxter Int’l, Inc., 678 F.3d 1357, 

1362 (Fed. Cir. 2012) (“We agree with the PTO that Baxter 

waived its arguments regarding the [means for] limitation 

in claim 30 by failing to timely raise them before the 

Board.”), with Nuvo Pharms. (Ireland) Designated Activity 

Co. v. Dr. Reddy’s Labs. Inc., 923 F.3d 1368, 1378 (Fed. Cir. 

2019) (concluding that “Nuvo’s argument was not raised 

below and thus is forfeited” and citing in support of this 

proposition TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356, 

1363 (Fed. Cir. 2017), which utilized the term “waiver”). 

It is well established that “[w]aiver is different from

forfeiture.” United States v. Olano, 507 U.S. 725, 733 

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(1993).7 “Whereas forfeiture is the failure to make the 

timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting 

Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised on appeal, id. at 733–34, 

and for that reason, it is worth attending to which label is 

the right one in a particular case. 

By and large, in reviewing this court’s precedent, it is 

evident that the court mainly uses the term “waiver” when 

applying the doctrine of “forfeiture.”8 The parties in the 

case at hand, understandably, have done just the same. 

Specifically, the Patent Office contends that “Google never 

made [its claim construction lexicography] arguments to 

the Board, so it waived them.” Appellee’s Br. at 18. We 

interpret the Patent Office to be arguing that Google’s 

7 We are reminded of this passage from Justice 

Scalia in Freytag v. Commissioner:

The Court uses the term “waive” instead of “forfeit.” The two are really not the same, although our 

cases have so often used them interchangeably that 

it may be too late to introduce precision.

501 U.S. 868, 894 n.2 (1991) (Scalia, J., concurring in part 

and concurring in judgment) (citation omitted). Two years 

after this observation from Justice Scalia, in an opinion in 

which he joined, the Supreme Court elucidated that this 

distinction is of some import. See Olano, 507 U.S. at 733 

(discussing the differing consequences that attach to 

waiver and forfeiture and citing Justice Scalia’s footnote 

from Freytag). 

8 Though previous cases may have used the term 

“waiver” instead of “forfeiture,” their holdings are good law 

for a case, like this one, involving the issue of forfeiture.

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failure to raise its lexicography arguments, inadvertent or 

not, compels a finding of forfeiture. We agree.

On appeal, Google posits the following: “[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.” 

Appellant’s Br. at 2. More specifically, Google argues that 

“cost” in claim 1 is “the cost of the path . . . defined by the 

bottleneck link in that path, which is the link that takes 

the longest to transfer item I,” id. at 39 (internal quotation

marks omitted) (citing paragraph 67 of the written description), and “network penalty” in claim 2 is a specific formula 

based on the size of the content and items, expected requests for the content and items, and fetch cost for the content and items, see id. at 42 (quoting paragraphs 79–81 of 

the written description). Therefore, Google argues, because the Board relied on the incorrect constructions of

these two terms, the Board’s decision upholding the rejections was incorrect.

Meritorious or not, Google never presented these arguments to the Board. And therein lies the problem. Because 

Google failed to present these claim construction arguments to the Board, Google forfeited both arguments. 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. See, e.g., Nuvo Pharm., 923 F.3d at

1378; Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 

1318, 1323 (Fed. Cir. 2008). We see no exceptional circumstances justifying a departure from that principle here.

Google presents two main reasons as to why this court 

should exercise its discretion to hear its forfeited arguments on appeal: (1) the Board in its decision sua sponte

construed the term “cost” and thus, because it “passed 

upon” on the issue, Google is not barred from appealing 

that construction; and (2) the issue of the construction of 

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IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC 9

“network penalty” is one of law fully briefed (now) and consistent with Google’s position before the Board. We are unpersuaded.

In support of its first contention, Google cites United 

States v. Williams for the “traditional rule” that “permit[s] 

review of an issue not pressed so long as it has been passed 

upon.” Appellant’s Reply Br. at 3 (citing United States v. 

Williams, 504 U.S. 36, 41 (1992)). We agree with this 

premise. Yet even though review may be “permit[ted],” 

Williams, 504 U.S. at 41 (emphasis added), the ultimate 

decision about whether to hear a claim when it was not 

raised before the lower tribunal is one that remains within 

the discretion of the appellate court, see id. at 44–45 (explaining that the decision to undertake review of an issue 

not pressed by the appellant below is a “permissible exercise of [the court’s] discretion”). 

In this instance, we decline to hear Google’s new arguments as to the construction of “cost.” Google has 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 the 

term “cost,”—an argument that is now the linchpin to its 

claims’ patentability. Accord Watts, 354 F.3d at 1368 

(“Watts has shown no reason why we should excuse his failure to raise this argument before the Board.”). Allowing

Google to press, on appeal, a specific claim construction 

that it did not present to the Board deprives the Board, an 

expert body, of its important role in reviewing the rejection 

of patent applications. See id. at 1367. Moreover, Google 

has not explained how the Board’s understanding of “cost” 

altered the theory underlying the examiner’s rejection or 

otherwise was a surprising, unexpected departure. 

Google cites Conoco, Inc. v. Energy & Environmental 

International, L.C., 460 F.3d 1349 (Fed. Cir. 2006), as an 

example of our court reviewing a district court’s sua sponte

claim construction. But nothing in that opinion contradicts 

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10 IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC

the Supreme Court’s articulation of the “passed upon” doctrine as permissive, discretionary, and context-driven. 

Whatever other differences there may be, the context of an 

infringement determination after a bench trial is quite different from the context of a Board unpatentability determination after examination—the latter context is iterative. 

Once an examiner has made a prima facie case for rejecting 

the application claims, the applicant is provided with an

opportunity to submit any saving claim construction it believes may be grounds for reversing the rejection both to 

the examiner and potentially again, to the Board. The burden lies with the applicant to present this argument in the 

initial instances. An applicant who does not take those opportunities and is then further disappointed by a Board 

claim construction should be encouraged to avoid waste of 

appellate resources and instead take the intra-PTO route 

of filing new or amended claims (perhaps through a continuation application) containing language that makes the desired scope clear, thereby serving the goal of facial clarity 

of patent claims. 

In sum: we are, as an appellate court, charged in this 

instance with reviewing the Board’s conclusions. “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 unfavorable—claiming that the 

course followed was reversible error.” Freytag, 501 U.S. at

895 (Scalia, J., concurring in part and concurring in judgment). We decline to entertain Google’s effort here, for it 

would only encourage litigants to engage in more of this 

type of behavior.

As to Google’s second argument, that its construction 

of “network penalty” on appeal is consistent with its arguments below, we disagree. Put frankly, Google’s arguments before the Board were hardly more than a pastiche 

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of block quotes from the claims and references. See J.A. 

211–13. Even under the most generous of readings, 

Google’s arguments below did not suggest any definition of 

“network penalty,” let alone the highly particularized definition it presents on appeal. Consistent with the aforementioned reasoning for Google’s claim 1 arguments, we 

conclude that Google forfeited its claim 2 argument as to 

the construction of “network penalty” because Google failed 

to raise this argument in proceedings before the Board. In 

the absence of exceptional circumstances, we decline to address the merits of Google’s proposed claim constructions.

CONCLUSION

We have considered Google’s remaining arguments and 

find them unpersuasive. For the reasons stated, we affirm 

the Board’s decision upholding the rejection of claims 1–9, 

11, 14–17, 19, and 20 of the ’765 application.

AFFIRMED

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