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Federal Circuit Reverses $20M Patent Infringement Award
05/09/2023On April 18, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision by the United States District Court for the Eastern District of Texas holding that certain claims of three reissued U.S. patents were not invalid under 35 U.S.C. § 251. Cioffi v. Google LLC, No. 2018-1049 (Fed. Cir. Apr. 18, 2023). The CAFC panel (Reyna, Bryson, and Taranto) reviewed the district court’s decision de novo and reversed the district court, concluding that the asserted claims failed to satisfy the “original patent” requirement.
Cioffi sued Google for infringing four claims across three patents, all of which are directed to preventing network originated malware from accessing certain data stored on the computer using multiple processors or processes. Google argued, inter alia, that the asserted claims of these reissued patents were invalid under 35 U.S.C. § 251 because the subject matter was not disclosed in the original patent (the “original patent” requirement). After a four-day trial, a jury found that the asserted claims were valid and infringed and awarded $20 million in damages. Google moved for judgment as a matter of law on several issues, including invalidity under § 251.
The district court agreed that it—not the jury—should decide Google’s invalidity challenge, but was unpersuaded by Google’s invalidity arguments, holding that Google failed to prove invalidity by clear and convincing evidence. Google appealed.
The CAFC explained that, under the “original patent” requirement, the Supreme Court has long held that reissued claims must have been part of the invention that was sought to be covered by the original patent, citing Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42-43 (1893). The CAFC stated that it has interpreted the original patent requirement strictly, citing its prior determinations that “the exact embodiment claimed on reissue” must be “expressly disclosed in the specification.” Disclosure of a broad embodiment in the original patent, but not a narrow embodiment in the reissued claims, fails this test.
The CAFC further explained that, even if a skilled artisan could infer the narrow embodiment of a reissued claim based on the original description, that alone would not satisfy the requirement. “There must be an express disclosure of the exact embodiment claimed on reissue.” (Emphasis added, internal quotations and citations omitted).
Accordingly, the CAFC held that, because the specific claims asserted against Google are not specifically disclosed in the original patent specification, the asserted claims are invalid under the original patent requirement. Patentees seeking patent reissue and anyone assessing reissued claims should carefully consider the original patent requirement as further explained in Cioffi.
