VideoShare, LLC v. Google LLC
6:19-cv-00663
| W.D. Tex. | Oct 8, 2021Background
- VideoShare filed the application that issued as U.S. Patent No. 10,399,341 (ʼ341) as a continuation of earlier patents, and overcame an Examiner’s obviousness-type double-patenting rejection by filing a terminal disclaimer tying the ʼ341 patent’s term to several earlier patents (including the ʼ302 and ʼ608 patents).
- The terminal disclaimer states the ʼ341 patent will not extend beyond the expiration date of the full statutory term of the listed prior patents, and includes a boilerplate qualification saying later events (e.g., invalidation, failure to pay maintenance fees, disclaimer) shortening the prior patents will not shorten the ʼ341 patent.
- The earlier patents (including the ʼ302 and ʼ608) were held invalid before the ʼ341 issued; defendants argue that those invalidations effectively ended the prior patents’ terms and thus ended the ʼ341 term before issuance.
- Defendants moved for judgment on the pleadings under Rule 12(c), arguing the ʼ341 patent had expired and the suit must be dismissed; VideoShare responded that the disclaimer tied the ʼ341 to the prior patents’ full statutory term (20 years from earliest application) and invalidation does not alter that statutory term.
- The court considered patent prosecution history and statutory definitions, rejected defendants’ conflation of invalidity and expiration, found the disclaimer ties the ʼ341 to the prior patents’ full statutory term, and denied the Rule 12(c) motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether invalidation of prior terminal patents before issuance causes expiration of the ʼ341 patent | VideoShare: terminal disclaimer ties ʼ341 to the prior patents’ full statutory term (20 years from earliest application); invalidity does not shorten that term | Google: prior patents were invalidated before ʼ341 issued, so their term ended earlier and ʼ341 expired by virtue of the disclaimer | Court: Rejects Google; invalidity does not equal statutory expiration; disclaimer ties ʼ341 to full statutory term, so ʼ341 remained effective for purposes of pleadings |
| Meaning of “full statutory term” in the terminal disclaimer | VideoShare: means §154 20‑year term measured from earliest application | Google: ambiguous; may include earlier termination events (invalidity, disclaimer, failure to pay) | Court: Interprets “full statutory term” as §154 term (fixed 20‑year measure) |
| Whether Eli Lilly controls to shorten a terminally disclaimed patent when a prior patent is disclaimed/invalidated | VideoShare: Eli Lilly is distinguishable and its footnote is dicta when applied to a terminal disclaimer | Google: Eli Lilly supports that a prior patent’s loss of operative effect can end the later patent’s term | Court: Eli Lilly is narrow/different on facts; its footnote is not dispositive here |
| Appropriateness of dismissal under Rule 12(c) | VideoShare: patent term subsists through statutory measure; case should proceed | Google: ʼ341 expired before damages period; dismissal warranted | Court: Denies Rule 12(c) motion; claims survive the pleadings |
Key Cases Cited
- Doe v. MySpace, 528 F.3d 413 (5th Cir. 2008) (Rule 12(c) evaluated like Rule 12(b)(6))
- In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012) (courts may consider public records, including prosecution history, on dismissal)
- Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018) (patent prosecution history may be considered when deciding dismissal)
- McNeil‑PPC, Inc. v. L. Perrigo Co., 337 F.3d 1362 (Fed. Cir. 2003) (invalidity and expiration are distinct doctrines; patent rights end on invalidity or expiration separately)
- Ortho Pharm. Corp. v. Smith, 959 F.2d 936 (Fed. Cir. 1992) (terminal disclaimer fixes an earlier expiration date onto the later patent)
- Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955 (Fed. Cir. 2001) (addresses double patenting; court treated a footnote re: disclaimer narrowly)
- Novartis Pharm. Corp. v. Breckenridge Pharm. Inc., 909 F.3d 1355 (Fed. Cir. 2018) (purpose of double‑patenting rules is to prevent extending monopoly beyond statutory term)
- The Boeing Co. v. United States, 69 Fed. Cl. 397 (Fed. Cl. 2006) (distinguishing early expiration for failure to pay maintenance fees from the ‘full statutory term’ to which a terminally disclaimed patent is tied)