Posts Tagged: "SimpleAir v. Google"

SimpleAir v. Google: Consider the Scope of the Claims in a Claim Preclusion Analysis

On March 12, 2018, the Federal Circuit held in SimpleAir, Inc. v. Google LLC, No. 2016-2738, that a terminal disclaimer does not raise a presumption that a continuation patent is patentably indistinct from its parent patent.  In SimpleAir, the issue was whether an action asserting infringement of two patents was barred by claim preclusion or the Kessler doctrine when the same activity had been judged not infringing in earlier litigations involving other patents in the same family, all of which were related as continuations, and all of which included terminal disclaimers to the ultimate parent patent.  The Federal Circuit held that notwithstanding the terminal disclaimers, the district court could not simply rely on a presumption that the claims were patentably indistinct, and instead must compare the scope of the claims to determine whether claim preclusion or the Kessler doctrine applies. 

Preclusion Applies Only If Scope of Patent Claims in Both Suits are Essentially the Same

In SimpleAir v. Google, The district court found claim preclusion applied because the patents at issue had the same title and specification as previously litigated patents, SimpleAir files a terminal disclaimer to overcome obviousness-type double patenting, and Simple Air could have included the newly asserted patents in its previous actions. However, the district court never compared the claims of the patent at issue to the claims of the previously litigated patents.