SimpleAir, Inc. v. Sony / Google / Motorola / Microsoft


Docket No. 2015-1253

MOORE, REYNA, WALLACH
April 1, 2016

Brief Summary: DC claim construction and infringement reversed (the DC “and SimpleAir would equate ‘data feeds’ with ‘data channel[s],’ but this interpretation is implausible” in view of the specification.)

Summary: Google appealed DC denial of its JMOL with respect to invalidity of the asserted claims of SimpleAir’s US 7,035,914, infringement by Google’s Cloud Messenger Services, and award of damages ($85 million to SimpleAir). In this appeal, Google argued “the claim term ‘a data channel’ is indefinite under the Supreme Court’s intervening decision in Nautilus” (US 2014 (“reasonable certainty”)) or that it “does not infringe under the correct construction of a ‘a data channel’”. “The ultimate construction of claim language is a question of law reviewed de novo, based upon underlying factual determinations reviewed for clear error” (Teva, US 2015 (if the decision relies upon extrinsic evidence, the decision is reviewed for clear error in the factual findings underlying the decision)). The FC panel concluded the DC erred in construing “a data channel” in the claim limitation “instantaneously notifying said [remote] devices of receipt of said preprocessed data whether said devices are online or offline from a data channel associated with each device.” The “online…” phrase was added in an amendment “and the patent’s written description does not include the term ‘data channel’” (“The written description also contains only one instance of the word ‘channel[]’…which, the parties agree, is used in an unrelated context.”) SimpleAir argued “‘[t]he term ‘data channel’ was a well-understood term with different meanings depending on context’ and that in the ‘914 patent ‘it was used in the context of Internet broadcasting’” and that this is supported by the specification (e.g., “‘data feed’ is another way to convey the concept of ‘data channel’”). The DC had found SimpleAir’s position more persuasive, explaining that the other definition “would ‘render the additional language [i.e., from a data channel associated with each device’] redundant.” The FC panel disagreed, noting that “interpretations that render some portion of the claim language superfluous are disfavored” (Power Mosfet, FC 2004; Merck, FC 2005) but that this is “not an inflexible rule that supersedes all other principles of claim construction.” It explained that “[t]he construction that stays true to the claim language and most naturally aligsn with the patent’s description of the invention will be, in the end, the correct construction” (Phillips, FC 2005 (“[c]laims must always be read in light of the specification”)). It concluded the DC “and SimpleAir would equate ‘data feeds’ with ‘data channel[s],’ but this interpretation is implausible” in view of the specification (“Moreover, when the patentee amended the patent in 2004, it chose to use the term ‘data channel,’ which does not appear in the patent’s written description, rather than the term ‘data feed,’ which does” and “[t]he term ‘data feed’ is also used in certain dependent claims” (Univ. Tex., FC 2008 (“Different claim terms are presumed to have different meanings.”)) Thus, the DC construction was reversed as was the finding of infringement. Regarding Google’s Nautilus arguments, the FC panel found “[t]he challenged claim language…[to be] sufficiently definite under the Nautilus standard.”

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