In the latest development in the ongoing patent battle between Google and SimpleAir Inc., a Federal Circuit panel agreed with SimpleAir that Google waived a claim construction it asserted on appeal because Google had failed to argue that construction before the PTAB.

SimpleAir originally asserted a series of patents against Google, including U.S. Patent No. 8,601,154 (“the ’154 patent”) directed to a data communication system connecting on-line networks with on-line and off-line computers. Google challenged the validity of the ’154 patent in an IPR. The PTAB determined the challenged claims of the ’154 patent were not invalid, concluding that Google failed to identify in the prior art “a central broadcast server,” recited in the challenged claims. Google appealed the PTAB’s final written decision, and argued that the PTAB erred in its interpretation of this limitation.

On appeal, Google argued the limitation should be interpreted to mean a server configured to receive data from one or more information sources. The PTAB had construed the claim to require a server configured to receive data from a plurality of information sources. However, SimpleAir argued that Google waived its argument against the PTAB’s applied construction because Google failed to articulate its construction advanced on appeal before the PTAB—thereby effectually agreeing with the PTAB’s construction, according to SimpleAir. The court agreed, sustaining the PTAB’s construction even while noting that Google’s identified prior art teaching a central broadcast server would have invalidated the claim under Google’s preferred claim construction.

The court first noted that three district courts previously construed “central broadcast server” to mean a server configured to receive data from a plurality of information sources. Further, while acknowledging that Google made statements in its IPR petition indicating resistance to the district courts’ construction, including Google noting that the Board may adopt a broader construction than that reached by the district courts and stating that “the ‘central broadcast server’ in the ’154 patent receives data from “‘the information source’ instead of a plurality of information sources,” the court determined that Google “did not … insist or even request that the PTAB apply a differing construction.” The court noted that, even after the PTAB adopted the district court construction in its IPR institution decision, Google did not appear to disagree with the adopted construction during the IPR proceedings, including in statements made at an oral hearing. The court additionally recognized that Google did not specifically ask for a different claim construction and instead, on multiple occasions, expressly assented to the adopted claim construction.

[A] party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below.

As a result, the court concluded that Google waived its objection to the PTAB’s construction of central broadcast server, reaffirming that “a party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below, … [and that] litigants waive their right to present new claim construction disputes if they are raised for the first time after trial” (quoting Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1358–59 (Fed. Cir. 2006)). The court therefore affirmed the PTAB’s decision that refused to cancel the challenged claims of the ’154 patent.

A party’s statements during trial that may later be characterized as “vague insinuations” or “seeds of doubt” and indicative of an alternative view may not be sufficient to put its opponent on notice of the alternative view. In view of this decision, therefore, a party in an AIA trial should carefully consider and unequivocally advance desired claim constructions during the trial to avoid the risk of waiving alternative claim constructions.