Contentguard Holdings, Inc. v. Google, Inc.
701 F. App'x 963
Fed. Cir.2017Background
- ContentGuard sued Google in E.D. Tex., alleging infringement of five patents (digital rights management); before trial it narrowed to specific asserted claims.
- After claim construction and trial, a jury found Google did not infringe; the district court entered final judgment for Google.
- Both parties moved for JMOL or a new trial; the district court denied those motions.
- On appeal ContentGuard conceded that this Court’s companion Apple decision on the term “usage rights” controls claim construction and noninfringement here, leaving only the new-trial issue.
- ContentGuard contends the district court erred by allowing Google to present an improper "practicing the prior art" / prosecution-disclaimer defense; Google conditionally cross-appealed but would withdraw if noninfringement is affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Google was allowed to mount a "practicing the prior art" defense such that a new trial is required | ContentGuard: Google argued noninfringement by comparing accused products to prior art (impermissible defense to literal infringement); this warranted a new trial | Google: Presented distinctions between accused system and the patents, not an impermissible practicing-the-prior-art defense; relied on expert comparisons and claim-by-claim evidence | Affirmed: Court found no abuse of discretion. Google did not present an improper practicing-the-prior-art defense and the jury was properly instructed to compare the accused products to the claims only. |
| Whether ContentGuard preserved its practicing-the-prior-art objection | ContentGuard: Framed objection below as prosecution disclaimer and now includes practicing-the-prior-art claim on appeal | Google: Objection below was prosecution-disclaimer, not practicing-the-prior-art; appellant failed to raise the proper ground to the district court | Affirmed: ContentGuard waived the practicing-the-prior-art argument by not asserting it below; appellate review declined for unpreserved ground. |
Key Cases Cited
- SSL Servs., LLC v. Citrix Sys., Inc., 769 F.3d 1073 (Fed. Cir.) (standards for reviewing motions for a new trial and evidentiary rulings)
- Industrias Magromer Cueros y Pieles S.A. v. La. Bayou Furs Inc., 293 F.3d 912 (5th Cir.) (new-trial denial reviewed for abuse of discretion; verdict must have complete absence of supporting evidence to find abuse)
- U.S. Bank Nat’l Ass’n v. Verizon Commc’ns, Inc., 761 F.3d 409 (5th Cir.) (evidentiary rulings reviewed for abuse of discretion and reversed only if had substantial effect on outcome)
- Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330 (Fed. Cir.) (discussing “practicing the prior art” and permissible discussion of prior art where defendant presents claim-by-claim evidence)
- Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357 (Fed. Cir.) (there is no practicing-the-prior-art defense to literal infringement)
- Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575 (Fed. Cir.) (plaintiff need not disprove that accused device is adoption of combined prior art teachings)
- Singleton v. Wulff, 428 U.S. 106 (U.S.) (appellate courts generally do not consider issues not passed upon below)
- SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir.) (declining to consider undeveloped arguments; appellee bears burden to develop appellate arguments)