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Patent Infringement Suit Revived Against Google

By William Vogeler, Esq. on March 15, 2018 | Last updated on March 21, 2019

Everybody knows how to 'google,' but not everybody knows a 'googol.'

That happens sometimes when a word becomes so popular that another gets lost in usage. "Google," the company, has also eclipsed another company with its cloud messaging.

SimpleAir owns a '433 patent relating to push notification technology, which allows messages to pop up on devices without opening a separate application. SimpleAir won an appeal against Google for infringement of related patents, but is still under the long shadow of Google's popular cloud.

Claim Preclusion

In 2016, a federal judge dismissed SimpleAir's claims against Google based on claim preclusion and the Kessler doctrine. Under the doctrine, a manufacturer of a product which has been found not to infringe a patent may preclude the patent owner from asserting it.

But in SimpleAir, Inc. v. Google LLC, the U.S. Federal Circuit Court of Appeal revived the plaintiff's lawsuit based on two junior patents. Even though SimpleAir had sued and lost over Google's cloud messaging before, the issues were not exactly the same.

Google had argued the patents were subject to a terminal disclaimer, which limited the junior patents of the '433 family, saying the "child patent involves the same cause of action as its parent."

But, the appeals panel said, "a court may not presume that assertions of a parent patent and a terminally-disclaimed continuation patent against the same product constitute the same cause of action."

Kessler Doctrine

The Federal Circuit also said the Kessler doctrine "does not bar a party from asserting infringement based on activity occurring after the judgment in the earlier suit."

The appellate judges emphasized that its holding was limited to the distinction between the parent and the children of the '433 patent. The trial judge erroneously presumed that "filing a terminal disclaimer during prosecution of a continuation patent implies that the continuation patent is patentably indistinct from its parent."

"Our holding in this case is limited to that error," the panel said. "A district court cannot presume that a terminally disclaimed continuation patent presents the same cause of action as a parent patent based on the filing of the terminal disclaimer alone."

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