IP Law Daily, PATENT—Fed. Cir.: Request for en banc review denied in suit against Google over security patents, (Jul 19, 2023)

By Brian Craig, J.D.

The Federal Circuit rejected the inventor’s request for a full panel review of its opinion invalidating security patents and setting aside a $20 million jury verdict.

The U.S. Court of Appeals for the Federal Circuit has denied an inventor’s petition for a panel rehearing or full panel review of an April panel decision invalidating four reissue patents directed to protecting a computer from malicious software and nullifying a Texas jury’s $20 million damages award against Google. In denying the inventor’s request for a review by the full panel, the Federal Circuit declined to hear the inventor’s claims that the earlier opinion adopted an overly-strict original-patent test and that the opinion erred in analyzing the written description requirement (Cioffi v. Google Inc., July 17, 2023, per curiam).

Litigation history. Inventor Alfonso Cioffi and the heirs of his late co-owner partner, filed suit against Google, accusing its Chrome browser of infringing several claims of four related patents directed to protecting a computer from malicious software. The inventor claimed that Google infringed four reissue patents. On February 10, 2017, a jury returned a unanimous verdict against Google and awarded damages of $20 million in the form of a running royalty. The court later ordered Google to pay an ongoing royalty for future infringement. In March 2018, the court denied Google’s motion for a new trial on all issues. The court concluded, however, that a new bench trial was required on issues concerning validity of the patents based on the original patent requirement and the rule against recapture. Following the bench trial, on August 16, 2021, the district court held that the reissue patents were not invalid because Google failed to prove by clear and convincing evidence that a first and a second "web browser process" were originally claimed by the original patent. On April 18, 2023, a three-judge panel for the Federal Circuit invalidated the reissue patents, thus nullifying a Texas jury’s $20 million damages award against Google. The inventor filed a petition seeking en banc review based on two main issues arguing that the opinion adopted an overly strict original-patent test and that the opinion erred in analyzing the written description requirement.

Original patent test. The inventor first argued that the opinion adopted an overly strict original-patent test. The inventor also argued that the opinion’s word-for-word test conflicts with settled authority. The petition for rehearing asked the full panel to consider what is the proper construction of Section 251’s requirement that, upon certain conditions being met, the Patent Office shall reissue the patent for the invention disclosed in the original patent. Google, in its opposition, contended that the appeal turned on the original-patent requirement of Section 251, and not the ordinary Section 112 written-description standard or a “word-for-word” test. Google also argued that the inventor’s argument that narrowed claims always satisfy the original-patent requirement is new, legally erroneous, and factually mistaken.

Written description. The inventor also argued that the three-judge panel opinion overlooked that the patent expressly discloses two web browser processes to meet Section 112’s written description requirement. The petition argued that the opinion conflicts with the established genus-species case law. In response, Google argued that the panel correctly rejected the inventor’s argument that the original patent disclosed two web browser processes. This was the dispositive question on appeal, Google contended. Google argued that the petition simply re-hashes the inventor’s theory that generically disclosing interactive network processes should be considered sufficient disclosure of each member species.

Short of review by the U.S. Supreme Court, the decision denying the petition for en banc review likely ends the decade long infringement suit.

Attorneys: William E. Davis (The Davis Firm, PC) Eric Benisek (Vasauez Benesek & Lindgren LLP) for Alfonso Cioffi, Melanie Rozman, Megan Rozman and Morgan Rozman. Andrew Dufresne (Perkins Coie LLP) and Darin W. Snyder (O’Melveny & Myers LLP) for Google LLC.

Companies: Google LLC

Cases: Patent TechnologyInternet FedCirNews GCNNews