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Simpleair, Inc. v. Google LLC

United States Court of Appeals, Federal Circuit

March 12, 2018

SIMPLEAIR, INC., Plaintiff-Appellant
v.
GOOGLE LLC, Defendant-Appellee

         Appeal from the United States District Court for the Eastern District of Texas in No. 2:16-cv-00488-JRG, Judge J. Rodney Gilstrap.

          John Jeffrey Eichmann, Dovel & Luner, LLP, Santa Monica, CA, argued for plaintiff-appellant. Also represented by Gregory S. Dovel, Simon Franzini.

          Charles Kramer Verhoeven, Quinn Emanuel Ur-quhart & Sullivan, LLP, San Francisco, CA, argued for defendant-appellee. Also represented by Carl G. Anderson, Jordan Ross Jaffe; Miles Davenport Freeman, Los Angeles, CA.

          Before Lourie, Reyna, and Chen, Circuit Judges.

          Lourie, Circuit Judge.

         SimpleAir, Inc. ("SimpleAir") appeals from the order of the United States District Court for the Eastern District of Texas dismissing SimpleAir's complaint under Rule 12(b)(6) as barred by claim preclusion and the Kess-ler doctrine. SimpleAir, Inc. v. Google Inc., 204 F.Supp.3d 908, 915 (E.D. Tex. 2016) ("SimpleAir IV"). Because the district court erred by presuming that terminally-disclaimed continuation patents are patentably indistinct variations of their parent patents without analyzing the scope of the patent claims, we vacate the district court's order and remand for further proceedings consistent with this opinion.

         Background

         SimpleAir initiated a series of patent infringement lawsuits over six years ago against Google's Cloud Messaging and Cloud to Device Messaging Services (collectively, "GCM"). Thus far, the litigation has resulted in three judgments of noninfringement in Google's favor. Each case has involved one or more patents from a family of patents owned by SimpleAir directed to push notification technology. The question in this case is whether claim preclusion or the Kessler doctrine bars SimpleAir's fourth suit asserting additional terminally-disclaimed continuation patents from this family against Google and its GCM services.

         The parent patent of this family is U.S. Patent 6, 021, 433 (the "'433 patent"), which was filed January 24, 1997, claimed priority from a provisional application filed January 26, 1996, issued February 1, 2000, and expired January 24, 2017. The rest of SimpleAir's patents asserted against GCM are children of 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. During prosecution, Sim- pleAir filed terminal disclaimers for each child patent to overcome obviousness-type double patenting rejections at the U.S. Patent and Trademark Office ("PTO"). The terminal disclaimers require the child patents to expire on the same day as the '433 patent, see 35 U.S.C. § 253(b), and also require the child patents to be "commonly owned with the application or patent which formed the basis" for the obviousness-type double patenting rejection, see 37 C.F.R. § 1.321(c)(3). The child patents issued over the course of eight years between 2006 and 2014.

         SimpleAir filed its first lawsuit against Google in 2011, asserting the '433 patent and a continuation, U.S. Patent 7, 035, 914 (the "'914 patent"). SimpleAir dismissed its action based on the '433 patent with prejudice, but the parties proceeded to trial on the '914 patent. A jury found the '914 patent not invalid and 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 we 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. Patents 8, 572, 279 (the "'279 patent") and 8, 601, 154 (the "'154 patent"). The district court consolidated the actions, and SimpleAir dismissed its action based on the '154 patent with prejudice. The parties proceeded to trial on the '279 patent, the jury returned a verdict of noninfringement, and the district court entered final judgment in accordance with the verdict, SimpleAir, Inc. v. Google Inc., No. 2:14-cv-11 (E.D. Tex. Nov. 4, 2015) ("SimpleAir II/III").

         The present case arises from SimpleAir's fourth complaint asserting infringement by GCM, this time of U.S. Patents 8, 639, 838 (the "'838 patent") and 8, 656, 048 (the "'048 patent"). Like the '914, '154, and '279 patents, the '838 and '048 patents are linked with the '433 patent by continuation applications and are terminally-disclaimed to it.

         The district court dismissed both complaints under Rule 12(b)(6) as barred by claim preclusion and the Kess-ler doctrine. SimpleAir IV, 204 F.Supp.3d at 915. The only element of claim preclusion in dispute was whether the present case and the previous cases involved the same claim or cause of action. The district court held that they did because the '838 and '048 patents shared the same title and specification with the previously adjudicated continuation patents, and the filing of a terminal disclaimer to overcome the PTO's obviousness-type double patenting rejections indicated that the PTO believed the content of the patents in suit to be patentably indistinct from the earlier patents. Id. at 913. That led the district court to conclude that the underlying invention claimed by the various child patents was the same. Id. In its order, the district court never compared the claims of the '838 and '048 patents to those of the previously adjudicated patents. Id.

         Furthermore, the district court found that there was no dispute that SimpleAir could have included the '838 and '048 patents in SimpleAir II/III, as the '838 patent issued before, and the '048 patent issued only a few days after, SimpleAir filed its first amended complaint in that case. Id. at 914. By failing to amend its complaint to include these two patents, and instead filing a new suit just after our decision in SimpleAir I, the district court found that SimpleAir made a "strategic decision." Id.

         The district court also observed that the PTO's regulation requiring common ownership of terminally-disclaimed continuation patents and their parent patents functioned to prevent successive lawsuits brought by multiple assignees, id. at 913 (citing In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013)), but did not prevent successive suits by a single patentee. The district court reasoned that traditional claim preclusion principles could rectify this apparent inconsistency. Id. at 914.

         Additionally, the district court held that the Kessler doctrine barred SimpleAir's assertion of the '838 and '048 patents against Google's provision of GCM services occurring after the ...


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