Tech company seeks to block Google from adding patents to court win
Google should be prevented from updating a court verdict to deliver a judgment of non- infringement of two patents, according to a complaint by Personalized Media Communications (PMC) that accuses the tech company of trying to block further suits.
In the opposition filed on Thursday, January 7, at the US District at the Eastern District of Texas, PMC contested Google’s motion to correct the judgment and urged Judge Rodney Gilstrap to dismiss it.
The dispute arose in March 2019 when PMC sued Google for infringing six of its patents, including US numbers 7,865,920 and 9,674,560, that covered methods and systems for digital signal processing, which enable adaptive streaming.
Adaptive streaming allows internet video content providers to serve users with content tailored to each specific user’s device and internet connection. Without adaptive streaming, streaming Internet video content can suffer from poor quality and delivery delays.
According to the complaint, PMC and Google began negotiating a possible patent licence approximately ten years ago and had frequently engaged in protracted efforts to discuss Google’s infringement of and a possible licence to Google of PMC’s patents.
Over the years, Google continued to express interest in licensing PMC’s patents, but never took a licence to any of PMC’s patents, said the media company.
PMC stated that: “To the extent that any infringing step is performed by YouTube... Google directs and controls such infringing.”
However, shortly after the court entered a claim construction order on April 3 last year, PMC notified Google it intended to drop and not pursue its claims related to the ’560 and ’920 patents.
Google turns up the pressure
On November 12, 2020, Google secured a victory over PMC when Judge Gilstrap ruled that it had not infringed four of the disputed patents, US numbers, 7,747,217, 7,769,344, 8,601,528, and 8,739,241.
But Google further protested PMC's initial complaint alleging infringement of the ’560 and ’920 patents, arguing that these patents should also be included in the court’s judgment.
Last week, PMC held that a “patentee’s announcement that it is no longer pursuing particular claims, coupled with its ceasing to litigate them, [i]s sufficient to remove those claims from the case,” and that there was no need to include them in a final judgment.
It further argued that Google’s motion was premised on the false notion that PMC’s claims of infringement of the ’560 and ’920 patents were live issues at the time of trial, insisting that case precedent set by the US Court of Appeals for the Federal Circuit should preclude Google from succeeding in its motion.
“The premise of Google’s motion is directly contradicted by the undisputed facts and by controlling authority that Google does not even address in its motion,” said PMC.
The court’s judgment, which included only patent claims that were actually litigated at trial, did not have “clerical mistakes” nor “oversight or omissions”, and Google had cited no authority whatsoever to support its arguments that the judgment should have included the non-litigated patents, the company added.
PMC also took issue with Google’s suggestion there was something improper about PMC having withdrawn its ’560 and ’920 claims with prejudice against Netflix as part of negotiated stipulation with Netflix, without having done the same with Google.
The company argued that it attempted to negotiate a stipulation regarding its ’560 and ’920 claims against Google, in exchange for Google’s withdrawal of its petitions related to the ’560 and ’920 patents.
“But Google insisted on PMC waiving its right to pursue any claims from the ’560 or ’920 patents against Google, even those that have never been at issue in this case,” said PMC.
According to PMC, the two companies were unable to agree to dismissal language and PMC simply stopped litigating the ’560 and ’920 patents—deciding to withdraw those claims from the case without prejudice.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
Failed start-up Quibi escapes patent injunction
