Patent suit against Google revived in precedential decision
The US Court of Appeals for the Federal Circuit has vacated a decision which prevented Google from being sued over two patents related to its messaging services.
Circuit judge Alan Lourie delivered the precedential verdict yesterday, March 12.
SimpleAir, a licensing company, initiated a series of patent infringement complaints related to Google’s cloud messaging in 2011. So far they have resulted in three judgments of non-infringement in Google’s favour.
SimpleAir owns US patent number 6,021,433, relating to push notification technology, which allows messages to pop up on devices without the corresponding application having to be open.
The patents SimpleAir asserted against Google are linked to the ‘433 patent by continuation application.
In 2016 the US District Court for the Eastern District of Texas barred SimpleAir from asserting two patents against Google (8,639,838 and 8,656,048, both children of the ‘433 parent patent) on the grounds of claim preclusion and the Kessler doctrine.
Under claim preclusion a party is barred from re-litigating a claim or defence that has already been litigated. The Kessler doctrine allows the manufacturer of a product which has been found not to infringe a particular patent to preclude the patent owner from asserting it.
As the ‘838 and ‘048 patents have the same title and specification as the already adjudicated continuation patents (in the three non-infringement judgments), the district court held that the underlying invention claimed by the various junior patents was identical. It did not compare the claims of the two patents to those previously adjudicated.
On appeal, SimpleAir argued that claim preclusion only applies when the “earlier and later cases involve the same cause of action” and “each patent asserted raises an independent and distinct cause of action”. It said the two junior patent claims were “materially different” from the previously litigated patents.
As the ‘838 and ‘048 patents were never litigated in prior actions against Google’s messaging services, the district court erred in barring the assertion of them based only on the title and specification, the licensing company claimed.
Google argued that because the two patents were subject to a terminal disclaimer whereby SimpleAir limited the junior patents of the ‘433 family as they were obvious from the parent patent, the “child patent involves the same cause of action as its parent”.
The appeals court agreed with SimpleAir, finding that the district court erred in its presumption that the “terminally continuation patents are patentably indistinct variations of their parent patents” without considering the scope of the patent claims.
Terminal disclaimers provide a “strong clue”, rather than a presumption, that “claims in the continuation lack a patentable distinction over the parent patent”. “The claim preclusion analysis requires comparing the patents’ claims”, Lourie continued.
With regard to the Kessler doctrine, the appeals court said it “does not bar a party from asserting infringement based on activity occurring after the judgment in the earlier suit”.
It vacated the district court’s decision and ordered it to re-evaluate the matter, taking into account the claims of the relevant patents.
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