Docket No. 2016-2738
LOURIE, REYNA, CHEN
March 12, 2018
Brief summary: DC dismissal of SimpleAir’s infringement complaint against Google as barred by claim preclusion vacated and remanded since the DC did not compare “the claims of the ‘838 and ‘048 patents to those of the previously adjudicated patents” and a terminal disclaimer “does not give rise to a presumption” that the terminally disclaimed patent “is patentably indistinct from its parent patents.”
Summary: SimpleAir appealed DC Rule 12(b)(6) dismissal of its complaint “as barred by claim preclusion (“a judgment ‘on the merits’ in a prior suit involving the same parties or their privies bars a second suit based on the same cause of action…whether or not relitigation of the cause of action involves the same issues as the earlier suit” (Lawler, US 1955); New Hampshire, US 2001)) and the Kessler doctrine” (US, 1907 (precluding assertions of a patent against even post-judgment activity if the earlier judgment held that ‘essentially the same’ accused activity did not infringe that patent”, protecting “‘an adjudged non-infringer’ from ‘repeated harassment’”)). Google has obtained three prior judgments of noninfringement of certain members of SimpleAir’s family of patents by Google’s Cloud Messaging and Cloud to Device Messaging Services (“GCM”). The issue here is whether SimpleAir is precluded from this “fourth suit asserting additional terminally-disclaimed continuation patents from this family against Google and its GCM services.” The patents asserted here, US 8,639,838 and 8,656,048, are terminally disclaimed (TD) to US 6,021,433 to overcome obviousness-type double patenting rejections, as were the patents asserted in the prior suits. The DC found SimpleAir to be precluded “because the ‘838 and ‘048 patents shared the same title and specification with the previously adjudicated continuation patents”, the filing of TDs “indicated that the PTO believed the content of the patents in suit to be patentably distinct from the earlier patents”, and SimpleAir could have included the ‘838 and ‘048 patents in at least two of the other suits. The DC also observed that the TD policy requiring common ownership “functioned to prevent successive lawsuits brought by multiple assignees” (In re Hubbel FC 2013), “but did not prevent successive suits by a single patentee” which can be rectified by “traditional claim preclusion principles”. The DC also held that the Kessler doctrine barred SimpleAir’s assertion of the ‘838 and ‘048 patents occurring after two prior judgments but claim preclusion did not. The FC panel applied Fifth Circuit test for claim preclusion (parties identical or “in privity”, earlier judgment by court with jurisdiction, final judgment on the merits, same cause of action (the only disputed element)) and considered the dismissal de novo (Acumed, FC 2008). The FC panel found that the DC erred by failing to compare “the claims of the ‘838 and ‘048 patents to those of the previously adjudicated patents” since “a judgment in [a] first suit will trigger claim preclusion only if the scope of the asserted patent claims in the two suits is essentially the same” (Acumed, FC 2008; Senju, FC 2008 (“claims that emerge from reexamination do not in and of themselves create a new cause of action that did not exist before” (relied on here by Google)). The FC panel acknowledged that a TD is “very relevant” to a showing “that a child patent involves the same cause of action as its parent” and “a strong clue that a patent examiner and, by concession, the applicant, though the claims in the continuation lacked a patentable distinction over the parent”, but explained that it “does not give rise to a presumption” that the terminally disclaimed patent “is patentably indistinct from its parent patents.” Whether formal claim construction is required was left to the DC on remand. The FC also explained that Kessler doctrine may apply, depending on the result of the DC’s claim comparison.