IP Law Daily, PATENT—Fed. Cir.: Security patents supporting $20 million jury award against Google held invalid, (Apr 18, 2023)

By Cheryl Beise, J.D.

The asserted claims of four reissue patents failed to satisfy the original patent requirement of 35 U.S.C. § 251.

Four reissue patents directed to protecting a computer from malicious software have been invalidated by the U.S. Court of Appeals for the Federal Circuit for violation of the original patent requirement, ending a decade long infringement suit and nullifying a Texas jury’s $20 million damages award against Google LLC. The reissue patents did not satisfy the original patent requirement of 35 U.S.C. § 251 because the specification of the original patent did not clearly and unequivocally disclose an embodiment containing two “web browser processes” recited in the asserted claims. It was not enough that a skilled artisan would be able to infer that the embodiment claimed on reissue was described in the original patent’s specification. The original patent must contain an “express disclosure” of the “exact embodiment claimed on reissue” (Cioffi v. Google, LLC, April 18, 2023, Bryson, W.).

Litigation history. In 2013, inventor Alfonso Cioffi and the heirs of his late co-owner partner Allen Rozman filed suit against Google, accusing its Chrome browser of infringing several claims of four related patents directed to protecting a computer from malicious software, U.S. Reissue Patent Nos. RE43, 500 (the ’500 patent), RE43, 528 (the ’528 patent), and RE43, 529 (the ’529 patent). Each asserted patent was entitled “System and Method for Protecting a Computer System from Malicious Software” and was a reissue derived from U.S. Patent No. 7,494,247 (the ’247 patent). The ’247 patent discloses “a means of isolating the network interface program [e.g., a web browser] from the main computer system such that the network interface program does not share a common memory storage area with other programs.”

On August 28, 2014, the district court issued its claim construction order. Based on the construction, the district court held one patent claim to be invalid as indefinite, and the parties stipulated to noninfringement of all of the other asserted claims. In November 2015, the Federal Circuit reversed the district court’s construction of two key terms—“web browser process” and “critical file”—and reinstated the infringement action. The Federal Circuit construed the term “web browser process” to mean a “process that can access data on websites” either directly or indirectly.

On February 10, 2017, a jury returned a unanimous verdict against Google, concluding that the asserted claims were infringed and that Google did not prove invalidity under the original patent requirement of 35 U.S.C. § 251. The jury 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 rejected Google’s motion for a new trial on all issues, but the court concluded that a new bench trial was required on issues concerning validity of the patents based on the original patent requirement. 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.

Google appealed, arguing that the asserted claims were invalid under 35 U.S.C. § 251 because the subject matter of the reissue claims was not disclosed in the original patent in violation of the “original patent” requirement and reclaimed subject matter surrendered during prosecution of the original patent in violation of the “rule against recapture.” Google also argued that the district court erred in denying its motion for judgment as a matter of law that Google did not infringe the asserted claims.

Original patent requirement. Section 251(a) of the Patent Act provides that the USPTO Director may grant a reissue patent “for the invention disclosed in the original patent.” In order to satisfy the original patent requirement, the Federal Circuit has held that the specification of the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” See Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1351 (Fed. Cir. 2019).; see also Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014). In other words, the exact embodiment claimed on reissue must be expressly disclosed in the specification.

Google argued that the asserted claims did not satisfy the original patent requirement because the specification of the ’247 patent did not clearly and unequivocally disclose an embodiment containing two “web browser processes,” as recited in the asserted claims.

Cioffi countered that the original patent requirement was satisfied because the embodiment disclosed in Figure 6 and column 14 of the ’247 patent discloses two web browser processes. The embodiment depicted in Figure 6 contains an “interactive network process” that includes an exchange of “interactive network process status data” between P2 and P1. The district court agreed with Cioffi, relying on the testimony of Cioffi’s expert, Dr. Hubert Dunsmore, who opined that “those skilled in the art reading Column 14 [of the ’247 patent specification] would understand that P1 and P2 can refer to two processes, both of which are accessing data from the Internet, which thus meets the Court’s construction of ‘web browser process.’

The Federal Circuit, however, sided with Google. The district court’s reliance on expert testimony to explain what the disclosures in the ’247 patent specification would “convey to a person of ordinary skill in the art” did not show that the specification of the ’247 patent clearly and unequivocally discloses, on its face, the use of two web browser processes. The Federal Circuit identified three inferences a skilled artisan would need to draw from the Figure 6 embodiment to arrive at the embodiments recited in the asserted claims: (1) that an “interactive network process,” as described in column 14 of the specification, includes web browsing; (2) that the “interactive network process status data” described in column 14 of the ’247 patent specification includes website data; and (3) that a web browser process could be executed on P1 in the first place.

“Under the standard applied by the district court, a disclosure of a broad embodiment in the original patent specification would represent a clear and unequivocal disclosure of a narrow embodiment that was not expressly described in the specification, as long as the narrow embodiment was nevertheless encompassed by the broad disclosure,” the Federal Circuit said. “That standard is more lenient than the one we have adopted in our cases applying the original patent requirement.”

The Federal Circuit explained that its precedent requires more than that a skilled artisan be able to “infer” that the embodiment claimed on reissue was described in the specification of the original patent. There must be an “express disclosure” of the “exact embodiment claimed on reissue.” “An express disclosure of an embodiment containing two web browser processes ‘is exactly what was missing here,’” said the court.

The Federal Circuit reversed the district court’s judgment that the asserted claims are not invalid under the original patent requirement of 35 U.S.C. § 251. The court did not reach Google’s other arguments.

The case is No. 2018-1049.

Attorneys: Christian John Hurt (The Davis Firm, PC) for Alfonso Cioffi, Melanie Rozman, Megan Rozman and Morgan Rozman. Andrew Dufresne (Perkins Coie LLP) for Google LLC.

Companies: Google LLC

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