By Ryan Davis

Law360 (April 6, 2023, 9:57 PM EDT) — Google’s attempt to escape a $20 million verdict for infringing anti-malware patents with its Chrome browser faced a skeptical Federal Circuit on Wednesday, with judges questioning the company’s claim that violations of the rules for reissued patents should sink the judgment.

Arguments in the long-running case hinged on whether Eastern District of Texas Judge Rodney Gilstrap correctly rejected Google’s position that the reissued patents owned by inventors Alfonso Cioffi and Allen Rozman are invalid for claiming technology that was not clearly and unequivocally disclosed in their originally issued patent.

That “original patent requirement” for reissued patents was not met in this case, Google attorney Andrew Dufresne of Perkins Coie LLP told the panel, because the patents at issue cover two “web browser processes” that were not found in the first patent, which instead describes “logical processes.”

That term can refer to “just about anything that a computer does,” Dufresne said, so it’s “not enough to provide the clear and explicit and unequivocal disclosure of two web browser processes, which is required in this case when it’s a reissue patent.”

He pointed to U.S. Supreme Court precedent that he said shows that the wording of the original patent must directly spell out what is claimed in the reissue patent, although the Federal Circuit judges questioned whether the rule was as stringent as he suggested.

“Does it have to be that clear on its face?” U.S. Circuit Judge Jimmie Reyna said. “Or cannot a person of ordinary skill in the art use logic to deduce that … the logical processes encompass a web browser?”

Google maintains that after it introduced the Chrome browser with anti-malware features, the inventors sought reissued patents that specifically mentioned browsers because they knew their original patent did not cover Chrome.

But U.S. Circuit Judge Richard Taranto highlighted language in the original patent that he said clearly indicates that logical processes do include web browsing. Specifically, the patent describes processes with access to a network and lists browsing, gaming and instant messaging as examples, he noted.

“There is not really any work to be done to put those things together,” Judge Taranto told Dufresne. “Tell me what’s wrong with that view.”

The attorney replied that the internet is only one type of network, and many other applications use networks beyond web browsers, so that wording was not sufficient under the original patent requirement, which he said has a “much higher bar” than similar rules elsewhere in patent law.

Judge Taranto countered by suggesting that when the original patent was filed nearly two decades ago, the way it talks about networks and the dangers of malware would be understood as referring to browsing the worldwide web.

“In 2004, if I read something that says there are millions and millions of people out there on networks doing all kinds of things, how could that not be a reference to web browsers?” the judge said.

Christian Hurt of The Davis Firm PC, representing Cioffi and the family of the late Rozman, argued during his presentation that the idea that the patent covers web browsers is “not something that we’re having to make up — it’s actually expressly in the patent in a number of places.”

“Those of skill would read that and know the point of this patent is predominantly focused on browsing the web,” he said.

The suit has taken a circuitous route since it was filed in 2013. Judge Gilstrap dismissed the case in 2014, after the parties agreed that Google did not infringe under his interpretation of the patent claims. The Federal Circuit revived the case the following year, ruling the judge’s claim construction was wrong.

After the U.S. Supreme Court declined to hear Google’s appeal of that ruling, the case returned to Marshall, Texas, for trial. A jury found in 2017 that Google infringed and should pay $20 million.

The jurors considered and rejected Google’s claim that the patents are invalid for violating the rules for reissued patents. But Judge Gilstrap later held that the reissue rules involve questions that must be decided by a judge, not a jury. He held a bench trial on the issue and, in 2021, also shot down Google’s arguments, leading to the appeal.

U.S. Circuit Judges Richard Taranto, William Bryson and Jimmie Reyna sat on the panel for the Federal Circuit.

The patents-in-suit are U.S. Patent Nos. RE43,500; RE43,528; and RE43,529.

Cioffi is represented by Christian Hurt and William Davis of The Davis Firm PC and Eric Beisek of Robert McArthur of Vasquez Benisek & Lindgren LLP.

Google is represented by Andrew Dufresne, Dan Bagatell and Nathan Kelley of Perkins Coie LLP and Darin Snyder, David Almeling, Luann Simmons and Mark Liang of O’Melveny & Myers LLP.

The case is Cioffi v. Google LLC, case number 18-1049, in the U.S. Court of Appeals for the Federal Circuit.

–Editing by Gemma Horowitz.