Google reverses $20m patent verdict over Chrome anti-malware technology
Appeals court finds patents invalid over differences in re-issued versions | Verdict overturns decision of jury and district court.
Google has overturned a patent infringement verdict over anti-malware web browser technology that would have seen it pay out $20 million as well as continuing royalties to the patent holders.
On Tuesday, April 18, the US Court of Appeals for the Federal Circuit declared three patents belonging to inventors Alfonso Cioffi and Allen Rozman invalid because they contained subject matter not originally disclosed. This handed a win to Google, which stood accused of infringing the patents through its Chrome web browsers.
The suit was brought by Cioffi and the daughters of the late Rozman in 2013, who alleged that Google had infringed four claims across three patents: US numbers RE43,500, RE43,528 and RE43,529. Each patent is a reissue of number 7,484,247 and all are directed to “the use of multiple processors or processes in a computer system to prevent malware obtained over a network from accessing certain data stored on the computer”.
In 2017, a jury at the Eastern Texas federal court determined that Google had infringed the patents, and awarded $20 million to the plaintiffs plus ongoing royalties, estimated at around $7 million for the next nine years, Reuters reported.
Section 251 infringement
However, Google argued that the asserted claims were invalid under 35 U.S.C. § 251 because the subject matter of the reissue claims was not disclosed in the original patent (in violation of the ‘original patent’ requirement) and reclaimed subject matter surrendered during prosecution of the original patent (violating the ‘rule against recapture’).
Specifically, the original patent requirement was not satisfied because there was “no clear and unequivocal disclosure in the ‘247 patent of an embodiment that comprises two web browser processes” as recited in the asserted claims, Google said.
Upon review of Google’s post-trial submissions, the district court determined that the issue of invalidity under section 251 was for the court to decide instead of the jury. However, the court rejected Google’s arguments on the issue, concluding that Google “had failed to prove by clear and convincing evidence that the asserted claims were invalid under section 251”.
The appeals court has now reversed that decision, finding in Google’s favour that the patents were invalid and therefore not infringed. There must be an “express disclosure” of the “exact embodiment claimed on reissue”, the court said, citing Antares v Medac Pharma.
As the re-issued claims were missing an express disclosure of an embodiment containing two web browser processes, the asserted claims were invalid under section 251, the appeals court found.
Google spokesperson José Castañeda said the company appreciated the decision, reported Reuters.
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