SIMPLEAIR, INC. v. GOOGLE LLC
pleAir filed terminal disclaimers for each child patent to
overcome obviousness-type double patenting rejections at
the U.S. Patent and Trademark Office (“PTO”). The
terminal disclaimers require the child patents to expire
on the same day as the ’433 patent, see 35 U.S.C. § 253(b),
and also require the child patents to be “commonly owned
with the application or patent which formed the basis” for
the obviousness-type double patenting rejection, see 37
C.F.R. § 1.321(c)(3). The child patents issued over the
course of eight years between 2006 and 2014.
SimpleAir filed its first lawsuit against Google in
2011, asserting the ’433 patent and a continuation, U.S.
Patent 7,035,914 (the “’914 patent”). SimpleAir dismissed
its action based on the ’433 patent with prejudice, but the
parties proceeded to trial on the ’914 patent. A jury found
the ’914 patent not invalid and infringed by Google’s GCM
services, see SimpleAir, Inc. v. Google Inc., 70 F. Supp. 3d
747, 752 (E.D. Tex. 2014), but on appeal we reversed the
district court’s claim construction ruling, vacated the jury
verdict, and remanded with instructions to enter judg-
ment of noninfringement, SimpleAir Inc. v. Sony Ericsson
Mobile Commc’ns AB, 820 F.3d 419, 421 (Fed. Cir. 2016)
(“SimpleAir I”).
While SimpleAir I was proceeding, SimpleAir filed
two more complaints asserting that GCM infringed two
other continuations, U.S. Patents 8,572,279 (the “’279
patent”) and 8,601,154 (the “’154 patent”). The district
court consolidated the actions, and SimpleAir dismissed
its action based on the ’154 patent with prejudice. The
parties proceeded to trial on the ’279 patent, the jury
returned a verdict of noninfringement, and the district
court entered final judgment in accordance with the
verdict, SimpleAir, Inc. v. Google Inc., No. 2:14-cv-11
(E.D. Tex. Nov. 4, 2015) (“SimpleAir II/III”).
The present case arises from SimpleAir’s fourth com-
plaint asserting infringement by GCM, this time of U.S.