Simpleair, Inc. v. Sony Ericsson Mobile Communications AB
820 F.3d 419
Fed. Cir.2016Background
- SimpleAir sued Google for infringing claims 1, 2, 3, 7, and 22 of U.S. Patent No. 7,035,914, a system for broadcasting notification-centric information to remote devices that can be online or offline.
- A jury found the asserted claims valid and infringed, and awarded SimpleAir $85 million in damages; the district court denied Google's JMOL motions.
- Key claim language at issue: the final step of claim 1 requires "instantaneously notifying said devices... whether said devices are online or offline from a data channel associated with each device."
- The district court construed "data channel" as "one or more communication channels or paths for accessing or viewing a category or subcategory of information..." and construed the larger phrase to reference connection to the Internet or another online service.
- On appeal the Federal Circuit reconsidered those constructions (and whether the term is indefinite), held the district court erred, adopted different constructions, and concluded that under the correct constructions no reasonable jury could find infringement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of "data channel" | "Data channel" is a well-understood broadcast-style channel (like a TV channel or data feed) tied to categories of information and software on the device. | A "data channel" must be a communication path distinct from the receiver path depicted in Fig.1; if the path could carry data to the device it would not be a channel the device is "offline from." | "Data channel" means any path between the device and the Internet (or other online service) that does not include the attached receiver; district court construction reversed. |
| Construction of "whether said devices are online or offline from a data channel associated with each device" | The phrase refers to being connected to or subscribed to a data channel/category, not mere network connection. | It refers to whether the device is connected via the claimed (distinct) data channel (i.e., the left path) shown in Fig.1. | Means "whether the devices are or are not connected to the Internet (or some other online service) via a data channel associated with each device," and the data channel must be different from the receiver path. |
| Indefiniteness under Nautilus | The term is sufficiently clear as understood in context (data channel = broadcast/data feed concept). | The patent fails to explain "offline from a data channel" and thus is indefinite under Nautilus. | Term is not indefinite; when read in light of the specification a PHOSITA would understand the scope with reasonable certainty. |
| Infringement under corrected constructions | (Implicit) Google’s services infringe under district court’s construction. | Google’s accused system uses the same communication path (the receiver) for notifications and Internet data and thus does not use a distinct data channel as required; therefore no infringement. | Because Google’s uncontested showing that its system uses the receiver path for both notifications and Internet data, no reasonable jury could find infringement under the correct construction; judgment of noninfringement entered on remand. |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (indefiniteness requires reasonable certainty about claim scope)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (claim construction law of fact vs. law; standard of review)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims construed in light of the specification and PHOSITA)
- Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323 (Fed. Cir. 2008) (no remand where no reasonable jury could find infringement under correct construction)
- Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396 (Fed. Cir. 2004) (disfavoring constructions that render claim language superfluous)
- Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) (preference to give meaning to all claim terms)
- Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362 (Fed. Cir. 2008) (different claim terms presumed to have different meanings)