IP Law Daily, PATENT—E.D. Tex.: Google and YouTube may have infringed SimpleAir patents on transmitting data to remote devices, (Sep 28, 2015)

By Mark Engstrom, J.D.

Technology licensing company SimpleAir could proceed with infringement claims against Google and YouTube, defendants that allegedly infringed two SimpleAir patents that described systems and methods of transmitting data to remote computing devices, the federal district court in Marshall, Texas, has ruled (SimpleAir, Inc. v. Google Inc., September 25, 2015, Gilstrap, R.). Because the claims of both patents satisfied the Supreme Court’s Alice test, the defendants’ motion for summary judgment was denied.

Background. SimpleAir sued Google and YouTube for the infringement of two U.S. patents (Patent Nos. 8,572,279 and 8,601,154), both of which were titled “System and method for transmission of data.” Google and YouTube sought summary judgment of non-infringement because the patents were, in the defendants’ view, unpatentable abstract ideas.

The court applied the two-step analysis that the U.S. Supreme Court described in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Under Alice, the courts: (1) ask whether the claims at issue were directed to a patent-ineligible concept, such as a law of nature, natural phenomenon, or abstract idea, and (2) consider the elements of each claim, both individually and as an ordered combination, and ask whether any “additional elements” created an “inventive concept” that “transform[ed] the nature of the claim” into a patent-eligible application.

If the answer to the first question was “no” or the answer to both questions was “yes,” the claims were patent eligible. If the answer to the first question was “yes” and the answer to the second question was “no,” the claims were not patent eligible.

Step one. The court decided that the asserted patents were not directed to an abstract idea. Instead, they were directed to the patent-eligible methods and systems of “using a central broadcast server” to package and transmit “data from an online information source to remote computing devices.” The patent claims were therefore patent eligible

Step two. Even if the court found that the patents were directed to the abstract idea of “packaging and transmitting information,” as the defendants had proposed, the court concluded that the claim limitations were sufficient to ensure that the asserted patents were “significantly more” than patents on an abstract idea.

The court rejected the defendants’ argument that, because the data-transmission steps could be carried out using “standard prior art protocols, carriers, and networks,” the claimed invention was “well-understood, routine, and purely conventional.”

The case is No. 2:14-cv-00011-JRG.

Attorneys: Christin K. Cho (Dovel & Luner) for SimpleAir, Inc. Charles Kramer Verhoeven (Quinn, Emanuel, Urquhart & Sullivan, LLP) for Google Inc. and YouTube LLC.

Companies: SimpleAir, Inc.; Google Inc.; YouTube LLC.

Cases: Patent TexasNews