SimpleAir, Inc. v. Google LLC

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SimpleAir initiated patent infringement lawsuits against Google’s Cloud and Cloud to Device Messaging Services, involving patents from a family of SimpleAir patents directed to push notification technology. The 433 “parent” patent claimed priority from a 1996 provisional application and expired in 2017. The “child” patents share a common specification with the 433 patent and also claim priority from the provisional application. During prosecution, SimpleAir filed terminal disclaimers for each child patent to overcome obviousness-type double patenting rejections. The disclaimers require them to expire with the 433 patent, 35 U.S.C. 253(b), and to be “commonly owned with the application or patent which formed the basis” for the obviousness-type double patenting rejection. Google won judgments of noninfringement in three cases. SimpleAir’s fourth complaint asserted infringement of two additional “child” patents. The court dismissed both complaints as barred by claim preclusion and the Kessler doctrine, which precludes assertions of a patent against post-judgment activity if an earlier judgment held that “essentially the same” accused activity did not infringe. The Federal Circuit reversed. 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. A terminal disclaimer is a “strong clue” but does not give rise to a presumption that a patent subject to a terminal disclaimer is patentably indistinct from its parent patents. View "SimpleAir, Inc. v. Google LLC" on Justia Law