On Monday, March 12th, the Court of Appeals for the Federal Circuit issued a decision in SimpleAir v. Google, which revives patent claims covering push notification technologies that were dismissed from a complaint filed by SimpleAir in the Eastern District of Texas. The Federal Circuit reversed and remanded the lower court’s decision, finding that two asserted patents that are continuations from parent patents were not barred by either claim preclusion or the Kessler doctrine.
The patents at issue in this particular case before the Federal Circuit are:
- U.S. Patent No. 8639838, titled System and Method for Transmission of Data. Issued in January 2014, it covers a system for transmitting data to selected remote computing devices including a server system using multiple software subsystems that receive data from information providers, build data blocks from parsed data, assign addresses for the data blocks and prepare the data blocks for transmission as messages to selected remote devices.
- U.S. Patent No. 8656048, same title as the ‘838 patent. Issued in February 2014, it claims a method for transmitting data to selected remote computing devices that provides for up-to-the-minute broadcasts of notification centric information messages to users of selected devices.
These patents were asserted by SimpleAir against Google in a fourth case filed by SimpleAir which alleged patent infringement caused by Google’s cloud messaging services. The previous three cases ended in judgments of non-infringement in Google’s favor and each case has involved patents from a patent family covering push notification tech. Each of the SimpleAir patents, including the ‘838 and ‘048 patents, are continuations from U.S. Patent No. 6021433 which claims priority from a 1996 provisional patent application and expired in January 2017. During prosecution at the U.S. Patent and Trademark Office, SimpleAir filed terminal disclaimers on all continuations from the ‘433 patent to overcome obviousness-type double patenting rejections, giving the continuation patents the same expiration date as the ‘433 patent.
In the SimpleAir case which includes the ‘838 and ‘048 patents, the district court dismissed the infringement claims in a pre-trial motion under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. The district court concluded that, because the ‘838 and ‘048 patents had the same title and specification as the patents previously asserted in other SimpleAir cases, and because of the terminal disclaimers filed during patent prosecution, the underlying invention was the same and the patents-in-suit were indistinct from the other patents which Google was found to not infringe.
On appeal, SimpleAir argued that the Eastern Texas court erred in barring assertion of the ‘838 and ‘048 patents through claim preclusion because each patent asserted raises an independent and distinct cause of action, citing to the Federal Circuit’s 1996 decision in Kearns v. General Motors. A common specification and terminal disclaimers were not enough to presume that distinct patents cover the same invention, SimpleAir alleged. Although the Federal Circuit agreed with Google’s contentions that there is substantial overlap in the asserted patents, “ultimately we agree with SimpleAir that the overlap discussed in the record before us is not sufficient to sustain the district court’s holding of claim preclusion.” The district court never actually analyzed the claims at issue in the patent, an inquiry which the Federal Circuit found was necessary to determine that the patents do cover the same underlying invention.
Appellee Google had argued that, while comparison of patent claims might be required for deciding issue preclusion, which bars a party from relitigating an issue already decided by the court, such comparison was not required for claim preclusion under the precedent set by the Federal Circuit in its 2014 decision of Senju Pharmaceutical v. Apotex. In that case, the Federal Circuit barred patent infringement claims through claim preclusion on a patent which had previously been asserted against the defendants but had been reexamined and had claims amended prior to the second lawsuit. The Federal Circuit decided that, while Senju involved a reexamination process that prevented the patent owner from broadening the claims, there was nothing preventing the terminally-disclaimed continuation patents from having claims with an expanded scope over the parent patent.
Google also argued that, if claim preclusion did not bar SimpleAir’s infringement claims, than the Kessler doctrine barred them. This doctrine, stemming from a 1907 decision by the U.S. Supreme Court in Kessler v. Eldred, has been used to protect a party’s rights to continue a practice accused of infringement if an earlier judgment found that essentially the same activity did not infringe the patent. While the Federal Circuit has relied on the Kesler doctrine to bar patent assertion against similar activities or products found not to infringe, the doctrine has not been applied to bar a broader set of rights than would have been barred by claim preclusion.
“In effect, Google asks us to subsume claim preclusion within a more expansive, sui generis Kessler doctrine,” Judge Alan Lourie wrote for the panel. “But the Kessler doctrine just fills a particular temporal gap between preclusion doctrine it does not displace them.” (citation omitted).
The Federal Circuit’s decision, however, only asks the district court to analyze claims on remand and the language of its decision seems to indicate that the district court could very well bar SimpleAir’s infringement claims after such an analysis. If, on remand, the district court finds that the ‘838 and ‘048 patents are patentably indistinct from previously adjudicated claims asserted against Google’s cloud messaging services, the Federal Circuit notes that the Kessler doctrine would then apply to the case.
Similarly, during its discussion on claim preclusion, the Federal Circuit disagreed with SimpleAir’s argument on appeal that the ‘838 and ‘048 child patents constitute causes of action separate from an earlier adjudication of parent patents. SimpleAir had argued that claim preclusion cannot bar it from an infringement action because the ‘838 and ‘048 patents issued after the date that complaints were filed in earlier infringement suits against Google. “[W[hether the ’838 and ’048 continuation patents present the same cause of action as previously litigated depends on the scope of their claims, not on their dates of issuance,” the Federal Circuit found.