Google gets $85 million ‘push notification’ infringement verdict tossed

April 21, 2016

REUTERS/Mark BlinchAn $85 million award against Google for infringing a data communications patent with technology used in more than 190 million Android mobile devices has been vacated by the top patent appeals court.

Texas-based patent licensor SimpleAir had won the infringement verdict based on faulty claim construction, the U.S. Court of Appeals for the Federal Circuit said.

SimpleAir had convinced a jury that the so-called push notification technology incorporated into Google Cloud Messaging on Android devices was violating of patent law.

SimpleAir’s patent covered a method for preprocessing data on a central server, transmitting the preprocessed data to a remote computer and instantaneously notifying the remote device about the data received, even if the device had no Internet connection.

Google’s cloud-based messaging services on Android operating systems require an Internet presence, a specification lacking in the patent, the Federal Circuit said.

The panel remanded the case to enter a judgment of non-infringement and awarded appellate court costs to Google.

Real-time notifications

SimpleAir is the exclusive assignee of U.S. Patent No. 7,035,914, which discloses a way of transmitting real-time notifications, such as an alert about new email messages or the local weather, to remote computing devices.

In September 2009 SimpleAir filed suit in the U.S. District Court for the Eastern District of Texas, accusing a slew of companies, including Apple and The Weather Channel Interactive Inc., of infringing the ‘914 patent, its parent and two others.

Two years later, it filed a similar suit against Google, Microsoft Corp., Sony Ericsson Mobile, among other mobile device companies, accusing them of infringing the ‘914 patent and its parent, but not the other two patents.

While SimpleAir reached settlement agreements with most of the defendants in both suits, allegations remained against Google and Microsoft.

In May 2013, U.S. District Judge Rodney Gilstrap adopted most of the claim construction from the previous case’s Markman order, whereby the magistrate judge had interpreted the claim language. SimpleAir Inc. v. Microsoft Corp., No. 11-cv-416, 2013 WL 2242163 (E.D. Tex. May 21, 2013).

About six months later, Microsoft also settled the case, leaving Google the only defendant at trial.

In January 2014 a jury found Google had infringed SimpleAir’s ‘914 patent, but could not agree on damages. A few months later, a different jury ruling only on damages awarded SimpleAir $85 million. SimpleAir Inc. v. Google Inc., Nos. 11-cv-416 and 13-cv-587, 2014 WL 7406345 (E.D. Tex. May 13, 2014).

Google moved for judgment as a matter of law on the infringement issue, saying SimpleAir failed to prove the Android operating systems infringed the ‘914 patent.

Judge Gilstrap denied the motion. SimpleAir Inc. v. Google Inc., 70 F.Supp.3d 747 (E.D. Tex. 2014).

Google also challenged the $85 million damages award, claiming the amount was outrageously high and unsupported, but Judge Gilstrap denied that motion as well. SimpleAir Inc. v. Google Inc., 77 F. Supp. 3d 569 (E.D. Tex. 2014).

‘Data channel’

On appeal, the three-judge Federal Circuit panel said the District Court’s construction of an online “data channel” was incorrect.

The ‘914 patent claims a priority date going back to at least 1996, a time when people usually connected to the Internet via modem or telephone line and then disconnected their devices, the opinion said.

It uses language from the parent patent about instantaneously notifying computing devices of preprocessed data whether the computing devices are on or off, the panel said.

Later, SimpleAir amended the language to state that the method instantaneously notifies computing devices about preprocessed data whether the computing devices are online or offline from a data channel associated with the device, the panel said.

“It is evident that the invention contemplates the use of two distinct paths, such that the data channel from which the device is offline must be different from the communication path used to receive notifications,” the opinion said.

Because Google’s services are all Internet-based, infringement would be impossible, the panel said.

In reversing the court’s construction of those terms, the panel vacated the jury verdicts and remanded the case with instructions to enter a judgment in favor of Google.

SimpleAir Inc. v. Sony Ericsson Mobile Communications AB et al., No. 15-1251, 2016 WL 1274445 (Fed. Cir. Apr. 1, 2016).

SimpleAir Blog