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Claim Preclusion Requires Analysis that Claims in Newly Asserted Patents are Patently Indistinct from Claims in Previously Adjudicated Patents
On March 12, 2018, a Federal Circuit panel of Judges Lourie, Reyna, and Chen issued a unanimous decision in SimpleAir, Inc. v. Google LLC, Case No. 2016-2738. This case was on appeal from the United States District Court for the Eastern District of Texas in No. 2:16-cv-00488-JRG. The panel vacated the district court's claim preclusion order, and remanded to determine whether formal claim construction was necessary to resolve whether the asserted claims were patentably indistinct from the claims in previously adjudicated patents.
SimpleAir, Inc. (SimpleAir) owns a family of patents directed to push notification technology. The parent patent and child patents in the family all share a common specification and also claim priority from the same provisional application. To overcome obviousness-type double patenting rejections during prosecution of the child patents, SimpleAir filed terminal disclaimers which required the child patents to expire the same day as the parent patent, and be commonly owned with the parent patent. SimpleAir brought a series of lawsuits involving the family of patents against Google, LLC (Google). Each lawsuit accused Google's Cloud Messaging and Cloud to Device Messaging Services (GCM), and the first three lawsuits resulted in judgment of noninfringement.
In the fourth lawsuit, the district court dismissed SimpleAir's complaint under Rule 12(b)(6) as barred by claim preclusion and the Kessler doctrine. The district court noted that the asserted patents shared the same title and specification with the previously adjudicated patents, and made a number of findings implicating the underlying policies of claim preclusion, such as the fact that SimpleAir engaged in strategic delay in bringing its fourth suit against Google.
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