SimpleAir, Inc. v. Google Inc.
MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 9/2/2016. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SIMPLE AIR, INC.,
CASE NO. 2:16-CV-388-JRG
MEMORANDUM OPINION AND ORDER
Before the Court is Defendant Google Inc.’s Corrected Motion to Dismiss (Dkt. No. 17).
In this case, the fourth iteration of SimpleAir v. Google, SimpleAir once again asserts that
Google’s Cloud Messaging and Cloud to Device Messaging services (collectively, “GCM”)
infringe its patents related to push notification technology. Google seeks dismissal under two
related theories: (1) that claim preclusion doctrines bar SimpleAir’s infringement claims because
the patents-in-suit could have and should have been brought against Google in a prior lawsuit
that arose from the same operative facts as the present action; and (2) that the Kessler doctrine
bars SimpleAir’s infringement claims against products already adjudged to be non-infringing in
the prior lawsuits. Having carefully considered the parties’ arguments, the Court is persuaded
that these doctrines effectively bar SimpleAir’s claims, and accordingly, Google’s motion should
A. SimpleAir I
On September 15, 2011, SimpleAir filed its first patent infringement suit against Google,
alleging that GCM infringed U.S. Patent Nos. 7,035,914 and 6,021,433. SimpleAir, Inc. v.
Google Inc., Case No. 2:11-cv-416-JRG (“SimpleAir I”). After dropping the ’433 Patent from the
case, SimpleAir proceeded to trial on the ’914 Patent. After the first trial, the jury found that the
asserted claims were infringed and valid, but was unable to reach a decision on damages. The
Court accepted the jury’s unanimous decision on infringement and validity but ordered a new
trial on the issue of damages. The parties subsequently retried damages issue before a new jury,
and that jury awarded $85 million to SimpleAir. On appeal, however, the Federal Circuit
reversed the infringement verdict and ruled that Google did not infringe the ’914 Patent as a
matter of law. SimpleAir Inc. v. Sony Ericsson Mobile Comm’ns AB, 820 F.3d 419 (Fed. Cir.
B. SimpleAir II/III
On November 4, 2013 and January 8, 2014, SimpleAir filed two new lawsuits against
Google, which the Court consolidated. SimpleAir, Inc. v. Google Inc., Case No. 2:13-cv-937;
SimpleAir, Inc. v. Google Inc., Case No. 2:14-cv-11 (collectively “SimpleAir II/III”). There,
SimpleAir asserted U.S. Patent Nos. 8,572,279 and 8,601,154 against Google’s GCM—the same
product accused in SimpleAir I. The ’279 and ’154 Patents have the same title (“System and
Method for Transmission of Data”) and the same specification as the ’914 Patent. Moreover, the
’279 and ’154 Patents are both continuations of Application No. 11/409,396, which itself is a
continuation of the application that matured into the ’914 Patent. During the prosecution of all
three of these patents, SimpleAir filed a terminal disclaimer to avoid an obvious type doublepatenting rejection.
After dismissing its claims based on the ’154 Patent, SimpleAir proceeded to trial on the
’279 Patent. The jury returned a verdict of non-infringement, and the Court entered a final
judgment in accordance with the verdict.
C. SimpleAir IV
On April 8, 2016, after SimpleAir I and SimpleAir II/III had been resolved in Google’s
favor, SimpleAir filed the present action against Google (SimpleAir IV). This time, SimpleAir
asserts that GCM (the same product accused in the preceding suits) infringes U.S. Patent Nos.
8,639,838 and 8,656,048. Both of these patents issued during the earliest stages of SimpleAir
II/III; the ’838 Patent issued before and the ’048 Patent issued just days after SimpleAir filed its
First Amended Complaint in SimpleAir II/III.
Just like the ’914, ’279, and ’154 Patents (against which Google prevailed in the
preceding cases), the ’838 and ’048 Patents are titled “System and Method for Transmission of
Data” and share the same specification. The patents-in-suit share a common application with the
’279 and ’154 Patents—which are continuations of the ’914 Patent. Further, like the patents
asserted in SimpleAir II/III, the ’838 and ’048 Patents are subject to terminal disclaimers, which
SimpleAir filed to overcome an obvious type double-patenting rejection.
A. Rule 12(b)(6)
A party may move to dismiss a claim for a “failure to state a claim upon which relief can
be granted.” Fed. R. Civ. P. 12(b)(6). When a Court considers a Rule 12(b)(6) motion it must
assume that all well-pleaded facts are true and must view them in a light most favorable to the
non-moving party. Bowlby v. City of Aberdeen, 681 F.3d 215, 218 (5th Cir. 2012). The Court
must decide whether those facts state a claim for relief that is plausible on its face. Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the pleaded
factual content allows the court to draw the reasonable inference that the defendant is liable for
the misconduct alleged.” Bowlby, 681 F.3d at 217 (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009)). Claim preclusion and the Kessler doctrine are properly adjudicated at the motion-todismiss stage. Senju Pharm. Co., Ltd. v. Apotex Inc., 746 F.3d 1344, 1346 (Fed. Cir. 2014)
(affirming dismissal on claim preclusion grounds); Adaptix, Inc. v. Amazon.com, Inc., 2015 WL
4999944 (N.D. Cal. Aug. 21, 2015) (granting dismissal under the Kessler doctrine).
B. Claim Preclusion
Claim preclusion is a mixed question of regional circuit law and Federal Circuit law.
Senju, 746 F.3d at 1348. Courts must look to the law of the regional circuit for “guidance
regarding the principles of claim preclusion”; however, “whether a particular cause of action in a
patent case is the same as or different from another cause of action has special application to
patent cases,” and courts should therefore apply Federal Circuit law to such issues. Id. “Claim
preclusion bars the litigation of claims that have been litigated or should have been raised in an
earlier suit.” Duffie v. United States, 600 F.3d 362, 372 (5th Cir. 2010). The test for claim
preclusion has four elements: (1) the parties in the subsequent action are identical to, or in privity
with, the parties in the prior action; (2) the judgment in the prior case was rendered by a court of
competent jurisdiction; (3) there has been a final judgment on the merits; and (4) the same claim
or cause of action is involved in both suits. Id. To evaluate the fourth element, courts have
adopted the “transaction test,” which focuses on whether the two cases “are based on the same
nucleus of operative facts.” Houston Professional Towing Assoc. v. City of Houston, 812 F.3d
443, 447 (5th Cir. 2016). It is the “nucleus of operative facts, rather than the type of relief
requested, substantive theories advanced, or types of rights asserted that defines the claim.” Id.
C. Kessler Doctrine
“There exists a separate and distinct doctrine, known as the Kessler Doctrine, that
precludes some claims that are not otherwise barred by claim or issue preclusion.” Brain Life,
LLC v. Elekta Inc., 746 F.3d 1045, 1055–56 (Fed. Cir. 2014). Originating from the Supreme
Court’s decision in Kessler v. Eldred, 206 U.S. 285 (1907), the Kessler Doctrine “fills the gap
between . . . preclusion doctrines . . . allowing an adjudged non-infringer to avoid repeated
harassment for continuing its business as usual post-final judgment in a patent action where
circumstances justify that result.” Brain Life, 746 F.3d at 1056. The Kessler Doctrine grants “a
limited trade right which is ‘the right to have that which [a court has determined] it lawfully
produces freely bought and sold without restraint or interference. It is a right which attaches to
its product—to a particular thing—as an article of lawful commerce.’” MGA, Inc. v. General
Motors Corp., 827 F.2d 729, 734 (Fed. Cir. 1987) (quoting Rubber Tire Wheel Co. v. Goodyear
Tire & Rubber Co., 34 S. Ct. 403, 418–19 (1914)).
A. Claim Preclusion
The first three elements of the doctrine of claim preclusion are not in dispute. (See Mot.
at 8; Resp. at 6.) SimpleAir is accusing the same defendant (Google) of infringement based on
the same systems and services (GCM) that were previously adjudged on the merits to be noninfringing. The only remaining dispute is whether the claims asserted in SimpleAir IV arise from
the same nucleus of operative facts as the prior cases between these parties.
In this suit, SimpleAir asserts the ’048 and ’838 Patents. These patents were not asserted
in any prior case against Google. Citing Federal Circuit law, SimpleAir contends that claim
preclusion never applies to patents not previously asserted because “each patent asserted raises
an independent and distinct cause of action.” (Resp. at 12 (quoting Kearns v. Gen. Motors
Corp., 94 F.3d 1553, 1555 (Fed. Cir. 1996).) Notwithstanding this apparent bright-line rule,
Google contends that the transaction test has been adopted by the Federal Circuit and is adequate
to properly bar assertion of the ’048 and ’838 Patents. See Senju, 746 F.3d at 1349 (“[A] cause of
action is defined by the transactional facts from which it arises, and the extent of the factual
While Kearns remains intact, subsequent decisions by the Federal Circuit suggest that its
general rule is not absolute but can be subject to appropriate exceptions under the transaction
approach to claim preclusion. For instance, in Abbey v. Mercedes Benz of North America, Inc.,
the Federal Circuit explained that “Kearns provides that normally when patents are not included
in a suit, they are not before a court, and while preclusion may attach to certain issues, causes of
action based on patents that are not included in a suit are ordinarily not captured, and therefore
precluded, by judgments that pertain to other patents.” 138 F. App’x 304, 307 (Fed. Cir. 2005)
In Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., the Federal Circuit held that res
judicata barred assertion of patent claims added in reexamination six years after the initial
lawsuit was filed because the claims “relate to the same set of transactions as those litigated in
the [prior actions].” 672 F.3d 1335, 1340 (Fed. Cir. 2012). The court reasoned:
[T]here is no force to Aspex’s argument that the reexamination of the ’545 patent
created entirely new causes of action on which Aspex could freely sue, even
though it had previously had an opportunity to sue on the corresponding original
claims of the ’545 patent. Aspex could have sought relief for infringement of
original claim 23 of the ’545 patent in the previous litigation . . . but it elected not
to do so. To allow Aspex to pursue amended claim 23 and new claim 35 in this
case would thus present a clear instance of “claim splitting,” which is forbidden
by the principles of res judicata.
Id. at 1341 (citation omitted).
Two years later, the Federal Circuit reaffirmed its stance on claim preclusion in Senju. In
addition to considering whether the patents overlapped, the court also considered whether there
was “overlap of the product or process accused in the instant action with the product or process
accused in the prior action.” Senju, 746 F.3d at 1349 (emphasis in original). The court concluded
that the accused products and processes are “essentially the same” and reaffirmed the holding in
Aspex (claims emerging from reexamination do not create a new cause of action). Id. at 1352–53.
The court further noted that the plaintiff was effectively seeking a “do over” or “a second bite at
the apple” by reasserting substantially similar patent claims against the same party and the same
product. Id. at 1353.
SimpleAir contends that the Federal Circuit’s holdings in Aspex and Senju are inapposite
because those cases considered patent claims emerging from reexamination, not terminally
disclaimed continuation patents such as the ’048 and ’838 Patents. (See Resp. at 13–15.)
Notwithstanding this distinction, the Court is persuaded that the transactional approach to claim
preclusion endorsed by both the Federal Circuit and the Fifth Circuit is broad enough to bar
SimpleAir’s claims in this case.
Setting aside the fact that the ’048 and ’838 Patents bear different patent numbers than
the patents asserted in SimpleAir I–III, the underlying invention is the same. Like the ’914, ’279,
and ’154 Patents against which Google prevailed in the preceding cases, the ’838 and ’048
Patents are titled “System and Method for Transmission of Data” and share the same
specification. The patents-in-suit share a common application with the ’279 and ’154 Patents—
which are continuations of the ’914 Patent.
The factual overlap between this and the prior litigations is amplified by the terminal
disclaimers that SimpleAir filed to overcome a double-patenting rejection of its continuation
applications. The non-statutory “obviousness type” double patenting doctrine was developed “to
prevent a patent owner from extending his exclusive right to an invention through claims in a
later-filed patent that are not patentably distinct from the earlier filed patent.” Procter & Gamble
Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 999 (Fed. Cir. 2009). A patentee may overcome
such a rejection by filing a terminal disclaimer under 35 U.S.C. § 253, disclaiming “any terminal
part of the term of the patent,” thereby guaranteeing that the second patent would expire at the
same time as the first patent. In re Longi, 759 F.2d 887, 894 (Fed. Cir. 1985). The practical result
of terminal disclaimer is that the subsequently issued patent “shall thereafter be considered as
part of the original patent . . . .” 35 U.S.C. § 253(a).
Even in Kearns, the case principally relied on by SimpleAir, the general proposition that
“[e]ach patent asserted raises an independent and distinct cause of action” advances from the
premise that “each patent, by law, covers a[n] independent and distinct invention.” 94 F.3d at
1556. Yet, continuation applications are inherently dependent upon the parent applications, as
they share a common specification, and the PTO deemed the patents-in-suit to be patentably
indistinct variations of the same invention claimed by the previously asserted patents.
In addition to preventing an impermissible extension of a patent monopoly, the “second
rationale” of a terminal disclaimer “is to prevent multiple infringement suits by different
assignees asserting essentially the same patented invention.” In re Hubbell, 709 F.3d 1140, 1145
(Fed. Cir. 2013) (emphasis added). To prevent such efforts by multiple assignees, terminal
disclaimers must “[i]nclude a provision that any patent granted on that application or any patent
subject to the reexamination proceeding shall be enforceable only for and during such period that
said patent is commonly owned with the application or patent which formed the basis for the
judicially created double patenting.” 37 C.F.R. § 1.321(c)(3).
While this safeguard prevents successive lawsuits brought by multiple assignees of
essentially the same patented invention, it does not prevent a single patentee from engaging in
similar conduct. However, for precisely the same reasons that multiple assignees are precluded
from filing multiple lawsuits asserting “patents claiming patentably indistinct variations of the
same invention” against a single defendant, traditional preclusion doctrines are broad enough to
shield similar successive lawsuits by a single patentee against a single defendant. See MPEP §
804 (9th ed. Nov. 2015).
Aside from the factual overlap between the series of patents asserted by SimpleAir,
another touchstone of the claim preclusion doctrine is whether the claims in the present action
could have been brought in the prior action. Brain Life, 746 F.3 at 1053 (“[C]laim preclusion
bars both claims that were brought as well as those that could have been brought.”); Duffie, 600
F.3d at 372 (“Claim preclusion bars the litigation of claims that either have been litigated or
should have been raised in an earlier suit.”). Here, it is undisputed that SimpleAir could have
included the ’838 and ’048 Patents in SimpleAir II/III. The ’838 Patent issued before and the
’048 Patent issued just days after SimpleAir filed its First Amended Complaint in that case.
Rather than amend its complaint to add claims covering essentially the same invention, however,
SimpleAir made the decision to delay filing this suit until just days after the Federal Circuit
reversed the jury’s verdict in SimpleAir I. This was clearly an intentional and strategic decision.
In this context, Aspex and Senju are even more problematic for SimpleAir because in those cases
the claims emerging from reexamination—unlike the continuation claims asserted in this
action—could not have been brought in the initial suits.
This Court finds that claim preclusion bars SimpleAir from bringing this action.
B. Kessler Doctrine
It is well settled that “a party who sues a tortfeasor is ordinarily not barred by a prior
judgment from seeking relief for discrete tortious action by the same tortfeasor that occurs
subsequent to the original action.” Aspex, 672 F.3d at 1335 (citing Lawlor v. Nat’l Screen Serv.
Corp., 349 U.S. 322, 328 (1955)). Since the doctrine of claim preclusion does not bar
SimpleAir’s claims relating to Google’s post-judgment actions, Google argues that the Court
should apply the Kessler Doctrine to fill the gaps.
The Kessler Doctrine “fills the gap between . . . preclusion doctrines . . . allowing an
adjudged non-infringer to avoid repeated harassment for continuing its business as usual postfinal judgment in a patent action where circumstances justify that result.” Brain Life, 746 F.3d at
1056. The Court is persuaded that the present circumstances justify application of the Kessler
Doctrine. Through the final resolution of three prior lawsuits, Google’s GCM has acquired the
status of a non-infringing product. See id. (“The principle that, when an alleged infringer prevails
in demonstrating noninfringement, the specific accused device(s) acquire the ‘status’ of a
SimpleAir argues that the Kessler Doctrine is inapplicable in this case because the ’838
and ’048 Patents “were never previously asserted.” (Resp. at 20.) However, for the same reasons
that the doctrine of claim preclusion applies in this case, the circumstances justify application of
the Kessler Doctrine to SimpleAir’s assertion of terminally disclaimed continuation patents. A
litigant’s strategic decisions have consequences, and judicial decisions must have finality.
Recognizing that any court’s determination that there exists the same “nucleus of
operative facts” between separate lawsuits requires a thoughtful recounting of the totality of the
circumstances with an honest contextual review of the conduct of the parties, both their acts and
omissions, this Court is left with the conviction that, in this case, SimpleAir should be barred
from pursuing SimpleAir IV.
Apparently concerned about the optics of its litigation strategy, SimpleAir assured the
jury in SimpleAir I that the Court would prevent duplicative lawsuits:
They say that SimpleAir has filed other lawsuits against Google. One, two, three.
And they’re suggesting to you that in each one of those lawsuits we’re going to
come back and ask for another hundred something million dollars and keep
collecting and collecting and collecting. Do you think that the court’s going to let
that happen? Do you think that another jury is going to let that happen? That isn’t
how it works.
(SimpleAir I, January 17, 2014 A.M. Trial Tr. at 112:21–113:4.) This Court is persuaded now,
just as the jury was persuaded in 2014, that indeed: that isn’t how it works. The doctrine of claim
preclusion bars SimpleAir from now suing the same defendant and accusing the same products
by asserting nothing more than slightly different shades of the same invention.
Further, application of the Kessler Doctrine is warranted in this case, and its extension to
these facts prevents an unjust gap existing between the claim preclusion discussed above and
inconsistent post-final judgment conduct by SimpleAir.
Strategic decisions by litigants have consequences, and courts are obligated not to allow
such strategies to chip away at the foundational principle of judicial finality. Finality gives birth
to reliability, and without a reasonable level of reliability the Law ceases to be the guiding light
intended by our Founders to both illuminate and circumscribe the conduct of our citizens and
Based on the foregoing, SimpleAir’s claims of patent infringement of the ’838 and ’048
Patents against Google’s GCM are barred in their entirety. Accordingly, Google’s Corrected
Motion to Dismiss (Dkt. No. 17) is GRANTED.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 2nd day of September, 2016.
UNITED STATES DISTRICT JUDGE
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