In a legal saga entwined with the intricacies of reissue patents and a hefty $20 million infringement verdict, the U.S. Supreme Court dealt a decisive blow on Monday by rejecting a petition lodged by inventors Alfonso Cioffi and the estate of co-inventor Allen Rozman. The duo had fervently contested the Federal Circuit’s decision to invalidate their three anti-malware reissue patents, which allowed Google to sidestep the substantial infringement penalty.
$20M Google Case : Battle Over Reissue Patents Unfolds
In their October 16 petition, Cioffi and Rozman contended that the Federal Circuit erred in invalidating their reissue patents, a legal recourse employed by patent owners to rectify errors in their patents. This process involves canceling the original patent, rectifying the errors, and maintaining the same expiration timeline as the original patents.
Federal Circuit’s Strict Standard
The crux of the matter lies in the Federal Circuit’s stance, articulated in April, that reissue patents can only broaden the original patent if the original’s specification explicitly discloses the exact embodiment covering the broadened claim. This, according to Cioffi and Rozman’s estate, is an unduly narrow interpretation compared to the broader standard set by the Supreme Court in its 1942 U.S. Industrial Chemical, Inc. v. Carbide & Carbon Chemicals Corp. decision. Under this precedent, the owner must demonstrate that the broadened claims were “intended to have been covered and secured by the original.”
Decade-Old Battle Against Google
The roots of this legal clash extend a decade, with the inventors alleging that Google’s Chrome web browser infringes their anti-malware patents. In 2017, a jury in the Eastern District of Texas sided with the inventors, refusing to invalidate the patents and awarding them a substantial $20 million victory.
$20M Google Case : Google’s Tactical Maneuver
However, Google, unfazed by the setback, contested the scope of the reissue patents. Chief U.S. District Judge Rodney Gilstrap remained unmoved by Google’s arguments, but the Federal Circuit intervened, declaring the patents invalid. Notably, Google had waived its response, adding a layer of perplexity to the legal chessboard.
Silence Reigns as Supreme Court Takes a Stand
As the Supreme Court delivered its final verdict by refusing the inventors’ petition, silence enveloped the legal arena. Counsel for Cioffi and Rozman, as well as representatives for Google, remained tight-lipped, offering no immediate comment.
Patent Details and Legal Representatives
The patents at the heart of the dispute are U.S. Patent Nos. RE43,500; RE43,528; and RE43,529. Eric Benisek and Robert McArthur of Vasquez Benisek & Lindgren LLP represent Cioffi and Rozman’s estate, while Google is defended by Dan Bagatell of Perkins Coie LLP.
