On Friday, February 11th, Alphabet Inc. (NASDAQ:GOOGL) subsidiary Google was hit with a jury verdict for $20 million in damages awarded to one inventor and the family members of a deceased co-inventor for the infringement of three reissue patents covering malware protection software. The infringement suit targeted Google’s Chrome web browsers for laptops and mobile platforms as well as the sale of Google’s hardware products having that software pre-installed. The case was decided in the U.S. District Court for the Eastern District of Texas (E.D. Tex.). (Interesting to note that, in contrast to much of the other patent litigation filed and tried in E.D. Tex., all four plaintiffs actually live within the district court’s geographic area of jurisdiction.)
Alfonso Cioffi and the daughters of Al Rozman first filed suit against Google in E.D. Tex. back in February 2013. The original complaint listed four reissue patents being asserted by the plaintiffs, including:
- U.S. Patent No. RE43103, titled System and Method for Protecting a Computer System from Malicious Hardware. It claims a portable computer-based system capable of executing instructions using a common operating system and protect critical files from malicious attacks via a network of one or more computers.
- U.S. Patent No. RE43500, same title as ‘103 patent. It claims a similar computer system which is configured to ensure that a malware program downloaded from a network and executing on a electronic data processor is incapable of initiating access to a memory space.
- U.S. Patent No. RE43528, same title as ‘103 patent. It claims a method of operating a computer system capable of exchanging data across a network of one or more computers comprising first and second web browser processes operating on respective first and second electronic data processors and capable of accessing data in respective first and second memory spaces.
- U.S. Patent No. RE43529, same title as ‘103 patent. It claims a method for generating data for display of website content on a portable computer employing a common operating system in a secure manner.
In the official complaint filed in E.D. Tex., the plaintiffs alleged that individual end-users of Chrome products directly infringed upon claims of all four reissue patents asserted. The alleged infringement was made possible by Google’s marketing of a series of identified software services and hardware products, including Google Chrome for Android, several Chromebook models and multiple Nexus devices. The plaintiffs also argued that Google was willful in its infringement as the company was notified by the plaintiffs about the possible infringement of at least the ‘528 and ‘529 patents three months before the plaintiffs filed suit, during which time Google continued to sell the infringing products.
The first decision by E.D. Tex. in this case found an asserted claim of the ‘103 patent to be invalid as indefinite and both parties stipulated to noninfringement of all other asserted claims. The plaintiffs appealed this result and in November 2015, the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) decided that E.D. Tex. erred in construing a pair of terms, reversing the E.D. Tex. decision and remanding the case back to that lower court. As appellants, Cioffi and the Rozmans challenged E.D. Tex.’s construction of the terms “web browser process” and “critical file.”
The term “web browser process” was first drafted during the prosecution process for the reissue patent in order to limit the claims to a web browser and not browsers for video games or word processors, which were given as examples by the examiner. E.D. Tex. had construed this term as “a process that can access data on websites.” At the Markman hearing, Google agreed to this preliminary construction on the understanding that the claim term requires “direct” access to website data. E.D. Tex. also found the term “critical file” to be indefinite because it held that whatever made a user feel that a file was critical was subjective in nature. On appeal, the appellants argued that nothing inherent in the term “web browser process” indicated the “direct” access requirement and Fed. Cir. found that there was nothing in the patent prosecution history which constituted a disavowal of “indirect” access. As to the construction of “critical files” to mean “critical user files,” Fed. Cir.’s analysis of the term found that experts on both sides agreed on an objective and well-understood meaning for “critical file” which avoided the subjectivity of “critical user files,” making the term “critical file” definite and not invalid.
The $20 million awarded in the recent E.D. Tex. jury trial in this case was awarded as a rolling royalty and not a lump monetary sum, according to coverage of the verdict published by Law360.