Google Inc. v. Simpleair, Inc.
682 F. App'x 900
| Fed. Cir. | 2017Background
- Google petitioned the PTAB for inter partes review of SimpleAir’s U.S. Patent No. 8,601,154, challenging claims as obvious based on prior art (notably the Yan reference).
- The disputed claim term was “central broadcast server”; the PTAB adopted a broadest reasonable interpretation (BRI) from prior Eastern District of Texas constructions requiring the server to receive data from a plurality of information sources and to process it before transmission.
- Google argued on appeal that the proper BRI construction should permit receipt from a single information source (one or more), which would make Yan more likely to disclose the limitation and require remand.
- At the IPR, Google twice indicated assent to the district court constructions and never expressly requested a different construction; its petition contained only vague suggestions of a different reading and limited oral remarks when the PTAB raised the issue sua sponte.
- The PTAB found Yan did not teach a central broadcast server under the adopted construction and denied Google’s cancellation request; Google appealed both the construction and the PTAB’s application of it.
- The Federal Circuit held Google waived its challenge to the PTAB’s construction for failing to raise it properly below and rejected Google’s arguments that the PTAB improperly imported additional limitations into the construction.
Issues
| Issue | Google’s Argument | SimpleAir’s Argument | Held |
|---|---|---|---|
| Whether the PTAB’s BRI construction requiring receipt from a plurality of information sources was incorrect | Central broadcast server should cover receipt from one or more information sources (not require plurality) | Google waived this construction argument by affirmatively agreeing to district court constructions and failing to timely raise the alternative | Waived; PTAB’s construction sustained |
| Whether the PTAB improperly imported a “direct receipt” requirement when finding Yan did not disclose receiving from multiple sources | Yan teaches servers receiving (even indirectly) from multiple sources, so PTAB misapplied its construction | PTAB found Yan described servers receiving all Netnews from a single local host; this was a factual finding supported by substantial evidence | No legal error; PTAB’s factual finding upheld |
| Whether the PTAB required constituent servers to be “interconnected” to form a central broadcast server | Yan’s separate servers together would meet the plurality requirement even if independent | PTAB found Google failed to show the separate servers were configured to receive from multiple sources or relate as a unified central broadcast server | PTAB did not impose an explicit connectivity requirement; its conclusion that Google did not meet its burden is supported by evidence |
| Whether Google can present a new claim-construction argument on appeal because the PTAB ‘‘actually decided’’ related issues | Google contends appellate consideration is permitted when the issue was effectively decided below | SimpleAir argues waiver and that Google never adequately presented the alternative construction to the PTAB | New construction not permitted on appeal here; waiver applies |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim-construction principles)
- Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349 (Fed. Cir. 2006) (waiver of new claim construction arguments on appeal)
- In re Baxter Int’l, Inc., 678 F.3d 1357 (Fed. Cir. 2012) (appellate review limitations when argument not presented to the Board)
- Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016) (issue preserved if tribunal fairly put on notice)
- MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015) (sparse oral hearing argument may be deemed waived)
- Fresenius USA, Inc. v. Baxter Int’l, 582 F.3d 1288 (Fed. Cir. 2009) (undeveloped arguments can be waived)
- Wallace v. Dep’t of the Air Force, 879 F.2d 829 (Fed. Cir. 1989) (agency issues must be raised with specificity and in time)
- Lifestyle Enter., Inc. v. United States, 751 F.3d 1371 (Fed. Cir. 2014) (discusses what may be appealed as "actually decided")
- Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354 (Fed. Cir. 1999) (argument consistency required between trial and appeal)
- Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001) (trial/appellate arguments must be crystallized for clear adjudication)
- In re Beattie, 974 F.2d 1309 (Fed. Cir. 1992) (what a reference teaches is a factual question)