Google's PTAB Loss Over Data Patent Affirmed At Fed. Circ.
By Melissa Daniels
Law360, Los Angeles (March 28, 2017, 4:48 PM EDT) -- A Federal Circuit panel on Tuesday confirmed Google’s rejected inter partes review challenge of a data transmission patent owned by SimpleAir Inc., finding Google was too late to challenge claims construction in its attempt to render the patent obvious.
U.S. Patent No. 8,601,154 is one of several SimpleAir has asserted against Google over the course of several years that Google has in turn challenged. After the U.S. Patent Trial and Appeal Board rejected Google’s challenge to find the patent invalid, Google appealed, arguing the PTAB erred in its claim construction of the term “central broadcast server.”
Writing for the panel, U.S. Circuit Judge Raymond C. Clevenger found that Google’s objection to the claim construction was barred, agreeing with SimpleAir that Google waived its opportunity to suggest other claim construction earlier in the proceeding.
“At no point did Google specifically ask the PTAB to construe the claim term differently than the district courts had,” the panel said. “Indeed, on multiple occasions Google expressly assented to the district court constructions.”
The panel ultimately found Google’s obviousness challenge failed and affirmed the PTAB’s decision.
Google filed its IPR challenge in October 2014, and the decision came down in February 2016.
On appeal, Google argued the PTAB incorrectly defined “central broadcast server” in claim construction. The board defined the term as “one or more servers that are configured to receive data from a plurality of information sources,” but Google’s appeal took issue with the use of the term “plurality,” saying the term contradicts the claim which only requires a single information source.
But SimpleAir argued Google waived its opportunity to challenge claim construction, as it didn’t assert its changes before the PTAB.
In agreeing with SimpleAir on Tuesday, the Federal Circuit panel said the PTAB decision turned on a prior art reference that, in combination with others, could have rendered the ‘154 patent obvious and unpatentable. If Google successfully challenged the claims construction to define “central broadcast server” as a server system configured to just a single information source, it would have matched with the prior art reference, the panel said.
But other courts had construed the “central broadcast server” term in the same fashion, the panel said, including three prior district court litigations. Though Google had made two suggestions in its IPR petition about the board possibly adopting a broader claim construction, it did not “insist or even request that the PTAB apply a differing construction,” the panel said.
“The two comments made in its initial IPR petition were no more than vague insinuations, seeds of doubt that Google perhaps hoped would lead the PTAB to arrive at a different construction on its own volition,” the panel said. “They were insufficient to place SimpleAir and the PTAB on notice of Google’s alternative view.”
Jonas Jacobson of Dovel & Luner LLP told Law360 on Tuesday that Google has now challenged the validity of SimpleAir’s patents in three lawsuits and six PTAB proceedings without any claim getting invalidated.
“The court is faced with a record number of appeals, particularly since the inception of the PTAB, so we appreciate that the panel took the time to write a thorough and thoughtful opinion,” Jacobson said. “This was the right result, procedurally and on the merits.”
The decision comes down almost exactly one year after the Federal Circuit released Google from paying $85 million in damages to SimpleAir after redefining two claims' terms on U.S. Patent No. 7,035,914, another data transmission patent. SimpleAir had sued Google for infringement in September 2011, alleging that Google’s cloud messaging and Android cloud-to-device messaging services infringed the patent.
Representatives for Google didn’t immediately respond to requests for comment on Tuesday.
Judge Clevenger was joined on the panel by U.S. Circuit Judges Timothy B. Dyk and Todd M. Hughes.
The patent-in-suit is U.S. Patent No. 8,601,154.
Google is represented by Jon Wright, Brian Lee, Michael V. Messinger and Joseph E. Mutschelknaus of Sterne Kessler Goldstein & Fox PPLC.
SimpleAir is represented by Jonas Jacobson, John Jeffrey Eichman and Gregory S. Dovel of Dovel & Luner LLP.
The case is Google Inc. v. SimpleAir Inc., case number 16-1901 in the U.S. Court of Appeals for the Federal Circuit.
--Additional reporting by Kevin Penton. Editing by Orlando Lorenzo.
