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Google’s Bid To Nix Malware Patents Falls Short At Bench Trial

September 7, 2021 by in Articles

By Andrew Karpan

Law360 (August 27, 2021, 6:13 PM EDT) — U.S. District Judge Rodney Gilstrap has turned down Google’s efforts to throw out malware protection patents after a jury in 2017 found that the tech giant infringed them and should pay $20 million, concluding that some of Google’s invalidity arguments were contradictory.

The Thursday ruling came down more than three years after Judge Gilstrap agreed to give Google LLC another chance to prove that the reissue of patents owned by inventor Alfonso Cioffi and the family of his late partner were invalid on the basis of an invalidity argument Google had based on patent reissue law.

A jury already found that a component of Google’s Chrome web browser infringed a collection of Cioffi’s patents and ordered the tech giant to pay up $20 million back in 2017, the seeming conclusion to a lawsuit Cioffi has been waging in Texas federal court since 2013.

“After four years and an appeal, we finally got our day in court,” Cioffi’s attorney Eric Benisek of Vasquez Benisek & Lindgren LLP told Law360 four years ago.

But Google had asked for a new trial and Judge Gilstrap said he would narrowly look at the issue of whether or not the patents could be invalidated by Section 251 of the Patent Act, a subject he said did not require a separate evidentiary hearing. In Thursday’s ruling, Judge Gilstrap ultimately shot down Google’s efforts to use the law — which covers how patents are reissued — to throw out the three patents that Cioffi had asserted.

“Google’s [Section] 251 arguments regarding web browser processes are contradictory,” he wrote.

The tech giant had argued both that the original version of the patent did not clearly disclose one of the web browser processes it covered but had, separately, contended that the patent did disclose those processes in the company’s argument that the older patent covering those processes was improperly reissued.

“While the exact term ‘web browser process’ does not appear in the … patent specification, Google has not presented clear and convincing evidence demonstrating that those skilled in the art would not recognize the first and second ‘web browser processes’ recited in the asserted claims as being disclosed,” Judge Gilstrap wrote.

Thursday’s ruling is not the only loss Google suffered in the past month in the eight-year-old patent row.

On Aug. 11, the Patent Trial and Appeal Board issued a ruling reversing a number of rejections Google initially won from a patent examiner on a trio of ex parte review petitions on the patents at issue in the case. Cioffi has told Judge Gilstrap that one of the patent claims the PTAB kept alive “alone supports the entire jury verdict and ongoing royalty.”

Back in 2017, Judge Gilstrap had outlined how he would be setting that royalty rate for the remaining five years the patents are eligible as well as the years that have passed since then.

Representatives for the parties did not immediately respond to requests for comment on the ruling.

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

The plaintiffs are represented by Eric W. Benisek, Robert S. McArthur, Richard C. Vasquez and Jeffrey T. Lindgren of Vasquez Benisek & Lindgren LLP, Charles Ainsworth and Robert Christopher Bunt of Parker Bunt & Ainsworth PC and William Davis III of The Davis Law Firm.

Google is represented by Darin S. Snyder, Luann L. Simmons, David S. Almeling, Mark Liang, John X. Zhu and Mishima Alam of O’Melveny & Myers LLP, Stephanie P. Skaff and Eugene Y. Mar of Farella Braun & Martel LLP and Michael E. Jones and Patrick C. Clutter of Potter Minton PC

The case is Alfonso Cioffi et al. v. Google LLC, case number 2:13-cv-00103, in the U.S. District Court for the Eastern District of Texas, Marshall Division.

–Additional reporting by Daniel Siegal, Cara Salvatore and Cara Bayles. Editing by Rich Mills.