By Cheryl Beise, J.D.
A jury’s award of $85 million in damages to SimpleAir for Google’s infringement of a 1996 data transmission patent has been vacated by the U.S. Court of Appeals for the Federal Circuit because the federal district court in Marshall, Texas, erred in construing key claim terms (SimpleAir, Inc. v. Sony Ericsson Mobile Communications AB, April 1, 2016, Wallach, E.). Applying the correct constructions of the term “a data channel” and the associated phrase “whether said devices are online or offline from a data channel associated with each device,” no reasonable jury could find infringement under the correct constructions, the appeals court determined.
SimpleAir, Inc., an inventor-owned technology licensing company, filed a patent infringement suit against Google Inc. in 2011, alleging that Google’s Cloud Messenger and Cloud to Device Messenger services infringed independent claim 1, and dependent claims 2, 3, 7, and 22 of U.S. Patent No. 7,035,914 (’914 patent). The ’914 patent is entitled “A System and Method for Transmission of Data” and claims priority to 1996. The invention involves the wireless broadcasting of “notification centric information,” such as a notification alerting a user that an email message has been received.
On January 18, 2014, a jury found that Google’s accused services infringed the ’914 patent, and that the asserted claims were not invalid. Because the jury was unable to agree on the amount of damages, a new trial on damages was held in March. That jury awarded $85 million in damages to SimpleAir. On September 30, 2014, the district court denied Google’s motions for judgment as a matter of law (JMOL) with respect to invalidity, infringement, and damages. On December 10, 2014 (here and here), the district court again denied Google’s motions for a new trial and its renewed motion for JMOL.
On appeal, Google asserted the claim term “a data channel” was indefinite under the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), or alternatively, that Google did not infringe under the correct construction of “a data channel.”
Construction of “data channel.” The final step of independent claim 1 of the ’914 patent recites, “instantaneously notifying said [remote] devices of receipt of said preprocessed data whether said devices are online or offline from a data channel associated with each device” (emphasis added). The italicized language was added in a 2004 amendment. The patent’s written description does not mention the term “data channel” and contains only one instance of the word “channel,” which was used in an unrelated context.
Google argued that the term “data channel” in claim 1 must indicate “a path that does not include the attached receiver,” because the claim recites “notifying said devices … whether said devices are online or offline from a data channel associated with each device.” Google reasoned that “whatever communication path the devices ‘are online or offline from’ must be different from the communication path the receivers use to notify the devices” because, if a path were capable of transmitting information to a device, the device would not be “offline” from that particular path. The distinction between the two paths was important, Google explained, because the accused mobile devices used the same path through the receiver to receive messages as well as other Internet data.
For its part, SimpleAir argued that “data channel” was analogous to a television channel such that users can “‘tune in to the relevant channel … [which is] accessed by specialized software on the user’s remote computing device.” Under SimpleAir’s interpretation, the “remote devices” of claim 1 “have one or more ‘data channels’ ‘associated with’ [them] (i.e., ‘associated’ by installed software).” According to SimpleAir, the specification’s reference to “data feeds” (as used in the phrase “[a] user can register and subscribe to receive broadcasts” of “data feeds”) is another way to convey the concept of “data channel.”
Accepting SimpleAir’s position, the district court construed “data channel” as “one or more communication channels or paths for accessing or viewing a category or subcategory of information that is provided by an information source over a communications network.” In concluding that “a data channel is not merely a network connection or path between the computing device and the Internet,” the district court relied on he written description of U.S. Patent No. 6,021,433 (the ’433 patent), a continuation application of which led to the ’914 patent. The district court construed the larger phrase—“whether said devices are online or offline from a data channel associated with each device”—to mean “whether the remote computing devices are or are not connected via the Internet or another online service to a data channel associated with each computing device at the time the preprocessed data is received by the receivers.” This construction ensured that the additional language “from a data channel associated with each device” was not redundant.
The district court’s construction was incorrect, the Federal Circuit determined. First, while interpretations that render some portion of the claim language superfluous are disfavored, claims must always be read in light of the specification, the court said. Second, the person having ordinary skill in the art (PHOSITA) is deemed to read a claim term not only in the context of the particular claim in which it appears, but in the context of the entire patent, including the specification.
The court explained that at the time of the claimed invention in 1996, a PHOSITA would understand that a key aspect of the invention is the ability of a remote device to receive notifications even when it is not connected to the Internet by traditional means. Accordingly, the claim term “whether said devices are online or offline from a data channel associated with each device” is properly construed to mean “whether said devices are or are not connected to the Internet (or some other online service) via a data channel associated with each device.” Moreover, as Google asserted, it was evident that the invention contemplates the use of two distinct paths.
Finally, the district court’s interpretation equating “data feeds” with “data channels” was implausible, the court said. According to the written description, the data feeds are provided to the central broadcast server, not directly to the remote device. Thus, the term “data feeds” is “properly understood to refer to the first step of claim 1, i.e., ‘transmitting data from an information source to a central broadcast server,’ not the final step, which includes the ‘data channel’ term,” the court explained. Moreover, when the patentee amended the patent in 2004, it chose to use the term “data channel,” which does not appear in the patent’s written description, rather than the term “data feed,” which does, the court noted.
The district court’s constructions of “data channel” and “whether said computing devices are online or offline from a data channel associated with each device” were reversed, the jury’s verdicts and associated orders vacated, and the case remanded, with instructions to enter judgment of no infringement in favor of Google.
Indefiniteness. Google also contended “the term ‘a data channel’ rendered all claims indefinite” under Nautilus because “the patent does not explain what ‘offline from a data channel’ means.” However, as properly construed, the challenged claim language was sufficiently definite under the Nautilus standard, the court decided.
The case is No. 2015-1251.
Attorneys: Gregory Dovel (Dovel & Luner, LLP) for SimpleAir, Inc. Charles Kramer Verhoven (Quinn Emanuel Urquhart & Sullivan, LLP) and Carl G. Anderson and Daryl Joseffer (King & Spalding LLP) for Google Inc.
Companies: SimpleAir, Inc.; Google Inc.
MainStory: TopStory Patent FedCirNews
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