By Cheryl Beise, J.D.
In a fourth infringement action filed by SimpleAir, accusing Google’s cloud messaging services of infringing related push-notification patents stemming from the same parent application, the federal district court in Marshall, Texas, erred in finding that the doctrine of claim preclusion barred the present suit, the U.S. Court of Appeals for the Federal Circuit has held. The claim preclusion analysis requires comparing the patents’ claims along with other relevant transactional facts and a district court "cannot presume that a terminally-disclaimed continuation patent presents the same cause of action as a parent patent based on the filing of the terminal disclaimer alone," the court said. The district court also erred in dismissing the case under the Kessler doctrine, which bars assertion of claims against essentially the same products made or sold after a judgment of noninfringement The Kessler doctrine does not apply to activity predating the earlier judgment (SimpleAir, Inc. v. Google, LLC, March 12, 2018, Lourie, A.).
Prior litigation. Beginning in 2011, SimpleAir initiated a series of patent infringement lawsuits against Google’s Cloud Messaging and Cloud to Device Messaging Services (collectively, "GCM"), asserting infringement of a series of related patens directed to push notification technology. In each case, the asserted patents were children of U.S. Patent 6,021,433 (the "’433 patent"), linked by continuation applications (collectively, the "child patents"). The child patents all share a common specification with the ’433 patent and also claim priority from the 1996 provisional application. The present case was the fourth SimpleAir brought against Google.
In the first action, a jury found U.S. Patent No. 7,035,914 (the ’914 patent) was infringed by Google’s GCM services, see SimpleAir, Inc. v. Google Inc., 70 F. Supp. 3d 747, 752 (E.D. Tex. 2014), but on appeal the Federal Circuit reversed the district court’s claim construction ruling, vacated the jury verdict, and remanded with instructions to enter judgment of noninfringement, SimpleAir Inc. v. Sony Ericsson Mobile Commc’ns AB, 820 F.3d 419, 421 (Fed. Cir. 2016) ("SimpleAir I"). While SimpleAir I was proceeding, SimpleAir filed two more complaints asserting that GCM infringed two other continuations, U.S. Patent Nos. 8,572,279 (the ’279 patent) and 8,601,154 (the ’154 patent). The district court consolidated the cases, and SimpleAir dismissed its action based on the ’154 patent with prejudice. The parties proceeded to trial on the ’279 patent, and the jury returned a verdict of noninfringement, and the district court entered final judgment in favor of Googe SimpleAir, Inc. v. Google Inc., No. 2:14-cv-11 (E.D. Tex. Nov. 4, 2015) ("SimpleAir II/III").
Present action. In the present action, SimpleAir asserted Google’s GCM infringed U.S. Patents 8,639,838 (the ’838 patent) and 8,656,048 (the ’048 patent). Like the previously asserted patents, the ’838 and ’048 patents are linked with the ’433 patent by continuation applications and are terminally-disclaimed to it. In September 2016, the district court dismissed both complaints under Rule 12(b)(6) as barred by claim preclusion and the Kessler doctrine. SimpleAir appealed both findings.
Claim preclusion. The doctrine of claim preclusion forecloses successive litigation of the same cause of action, whether or not relitigation of the cause of action involved the same issues as the earlier suit. The only issue on appeal was whether the present case and the previous cases involved the same claim or cause of action. SimpleAir argued that the district court erred in barring assertion of the ’838 and ’048 patents under claim preclusion, based solely on the fact that the patents, like the previously adjudicated child patents, shared a common specification with and terminal disclaimers to a common parent patent.
While there was "substantial overlap" with this case and SimpleAir I–III, the Federal Circuit found that the record was insufficient to support claim preclusion. In particular, the district court erred in concluding that the underlying invention claimed by the various child patents was the same without first analyzing the’838 and ’048 claims in comparison with the claims of the previously litigated patents.
Google cited Senju Pharm. Co., Ltd. v. Apotex Inc., 746 F.3d 1344 (Fed. Cir. 2014) to support the district court’s rulings. However, Senju was distinguishable because it involved the litigation of reexamined claims, which could not be legally broader than their predecessors. "[U]nlike the case of reexamined claims, claims of terminally-disclaimed continuation patents could ‘provide larger claim scope to a patentee than the patentee had under’ the parent patent," the Federal Circuit explained. In this regard, continuation patents are more similar to reissue patents, the court said. Adopting the "essentially the same" standard relevant to claim preclusion, the Federal Circuit held that "where different patents are asserted in a first and second suit, a judgment in the first suit will trigger claim preclusion only if the scope of the asserted patent claims in the two suits is essentially the same."
Google also argued that that filing terminal disclaimers settled the issue of claim preclusion in this case. The Federal Circuit disagreed. While the filing of a terminal disclaimer is "very relevant," it was not conclusive. A terminal disclaimer is a "strong clue" that the claims in the continuation lacked a patentable distinction over the parent, but "a district court cannot presume that a terminally-disclaimed continuation patent presents the same cause of action as a parent patent based on the filing of the terminal disclaimer alone," the court said. The claim preclusion analysis requires comparing the patents’ claims along with other relevant transactional facts.
The court rejected SimpleAir’s contention that claim preclusion cannot bar SimpleAir from initiating a new suit because the ’838 and ’048 patents issued after SimpleAir filed its complaints in the prior suits. The question of whether these patents present the same cause of action as previously litigated depends on the scope of their claims, not on their dates of issuance, the court said.
In this case, the primary difference between the claims of the ’838 and ’048 patents and those in the prior litigations was the language "whether the selected remote computing devices are online or offline to the information providers of the received data," as compared to "whether said computing devices are online or offline from a data channel associated with each device." Given these similarities between the ’838 and ’048 patent claims and those of the previously adjudicated patents, the appeals court left it to the district court’s discretion on remand whether formal claim construction would be necessary to resolve whether the ’838 and ’048 claims are essentially the same as, i.e., patentably indistinct from, those of the previously adjudicated parent patents.
Kessler doctrine. The district court also held that the Kessler doctrine barred SimpleAir’s assertion of the ’838 and ’048 patents against Google’s provision of GCM services occur- ring after the judgment in SimpleAir II and SimpleAir III. The Kessler doctrine—from Kessler v. Eldred, 206 U.S. 285 (1907)—precludes assertions of a patent against even post-judgment activity if the earlier judgment held that "essentially the same" accused activity did not infringe that patent.
The Kessler doctrine protects "an adjudged noninfringer" from "repeated harassment for continuing its business as usual post-final judgment." The Federal Circuit noted that it has applied the Kessler doctrine only to bar assertion of claims against essentially the same products made or sold after a judgment of noninfringement in the earlier case—products that claim preclusion could not reach because of their timing. The court has not applied the Kessler doctrine to activity predating the earlier judgment, as advocated by Google. If the district court on remand finds that that the asserted claims are precluded with respect to Google’s pre-judgment GCM services, the Kessler doctrine would also bar SimpleAir’s assertions of the patents against Google’s provision of essentially the same GCM services post-judgment, the court noted.
The case is No. 2016-2738.
Attorneys: John Jeffrey Eichmann (Dovel & Luner, LLP) for SimpleAir, Inc. Charles Kramer Verhoeven (Quinn Emanuel Urquhart & Sullivan, LLP) for Google LLC.
Companies: SimpleAir, Inc.; Google LLC
MainStory: TopStory Patent TechnologyInternet FedCirNews
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