High Court denies the petition of Viringo on patent lawsuit against Google

US Supreme CourtOn October 5th 2015 the Supreme Court of the United States denied the petition for writ of certiorari to the United States Court of Appeals for the Federal Circuit filed by Viringo Inc. in May 14th.

The Chief Justice took no part in the consideration or decision of the petition. By the denial, all the asserted US patent numbers 6.314.420 and 6.775.664 claim remain invalid for obviousness as formerly ruled by the Federal Circuit.

From ringtones developer to patent families buyer

Two Israeli entrepreneurs launch their technology company in 2006. Both contribute their own specialization to the company: the venture capitalist his funds and the mobile software developer his own tech skills.

Mid 2000s is the Golden Age of internet. Biggest tech trends and developments are launched in 2006 along with Viringo’s founding.

In 2006 Facebook and other big social media’s platforms see the light as well as Twitter, PlayStation3 and Wii. Google buys YouTube to make it the video platform we know and Apple’s iTunes celebrates in such a Disneyan way its billionth sold song rewarding the downloader with a 20-inch Mac, 10 iPods, an iTunes gift card worth of 10.000 $ in addition to an entitled scholarship at the Juilliard School of Music.

Viringo is best known for Facetones

For its part, Viringo is essentially a mobile app developer whose biggest success is Facetones, an app that matches the ringtones of incoming calls with a slideshow of Facebook’s pictures of the caller.

It is also known for other various social related apps and for Video Remix, a program that enables users to remix licensed music videos. Viringo sails on still waters into the tech market until its reputation boosted thanks to a famous billionaire.

A billionaire at Viringo

Indeed, one morning in 2012, shares of Viringo opened 29% higher after rumors that at least a million shares of the company have been purchased by Mark Cuban, a polyhedral self-made businessman who started to make affairs just twelve years old and that, from NBA to TV shows, still keeps turning his activities into gold.

2012 is exciting time for Viringo. Counting on a renewed celebrity, Viringo enters into a merger with Innovative Protect, or best known as I/P, an intellectual property company.

This operation is far so important for Viringo’s business, to be worth the honor to ring the bell at the New York Stock Exchange. Gradually, Viringo finds the way to raise million on million: buying patent families rather than developing mobile software. Among its clients Lycos and Nokia, two of the greatest tech companies of the time.

This activity means dollars as well as issues and so much under both these aspects Viringo grows, that it is now named after “patent troll”.

The case summoned up to High Court

On July 2012 Viringo Inc., merged into I/P Engine Inc. that spent the name, sued AOL Inc, Google, IAC Search & Media, Gannett & Co and Target Corp for patent infringement before US District Court for the Eastern District of Virginia.

On November 6th 2012 the Court entered a judgement against defendants for the claims were infringed and not anticipated, and Google was ordered to pay 1,36% of US AdWords sales.

The US Court of Appeals for the Federal Circuit overturned the verdict on August 15th 2014. Viringo appealed to the United States Supreme Court filing petition for a writ of certiorari. The High Court on October 5th, 2015 denied the petition.

Two methods and one filtering

Before all sets of proceedings, plaintiff’s and defendants’ arguments remained untouched. From US District Court to Supreme Court, Viringo has been alleging infringement of US patents n. 6.314.420 and n. 6.775.664 against Google and its customer AOL, IAC, Target and Gannett claiming ownership of patents relating to a method for filtering internet search results based both on content and collaboration.

Content-based filtering can decide relevance extracting terms from an information while collaborative filtering determines relevance through feedbacks from users.

Plaintiff’s argues AdSense and AdWords are based upon acquired Lycos’ patents

According to I/P Enigne Inc. complaint, Google’s services of advertisement display, AdWords and AdSense, infringed claims of both patents.

The filtering technology used in both Google’s services, accordingly to the plaintiff, is covered by two patents acquired by Viringo from Lycos. Additionally, in Court of Appeal’s instance, Viringo motions for review of doctrine of laches applied to the case because it is wrongly limiting the period of due damages and it seeks recovery damages prior to September 2011.

Viringo, then, counterclaims against obviousness finding because it would not have been obvious to a person of ordinary skill in the art that relevant results are a combination of content and collaborative data through user’s search query, and against anticipation finding because the Defendant’s description of prior patents is related to a ranking system and not to a filtering one, as required by the asserted claims.

The Supreme Court was submitted with Amicus Curiae Brief filed by nonprofit Boston Patent Law Association to grant VIringo’s writ of certiorari, but no third party was admitted due to denial of petition.

Patent claims are invalid says Google

Google as defendant, that is covering defence and related costs for its customers, has been seeking declaratory judgements of non-infringement and counterclaims for the invalidity of both asserted patent claims, being them anticipated and obvious in view of three different US patents.

Defendant argues that no infringement can be ruled since AdWords and AdSense do not require filtering combination of content and feedback data to work, nor a demand search.

About 30.5$ million damages

Yet, I/P Engine for Viringo should expect no damages for failure to prove credible evidence of them.

Before the Court of Appeal, Google additionally argues that patents claims are obvious as a matter of law, because this two information filtering method is well-known in the art, and that the prior art explicitly showed the advantages to include the user’s query in this double-techniques filtering process.

Furthermore, Google files motion for a new trial, judgement as a matter of law on non-infringement, and invalidity of the awarded recovering damages for any infringement occurred after September 2011.

Supreme Court of United States denial of petition

Since Supreme Court of United States limited its verdict to denial of petition filed by I/P Engine without further details, United States Court of Appeals for the Federal Circuit’s conclusions remain valid.

The Court of Appeal reverses the judgment of the US District Court but does not reach judgment upon infringement and damages being the asserted claims obvious as a matter of law.

Reviving Federal Court’s conclusions

On the case’s merits, the Court of Appeal targets I/P Engine’s arguments weakness in so far using an individual user’s search query for filtering is a technique widely applied in the prior art and conventionally used by search engines.

The asserted patents claims are ruled anticipated and obvious mostly under Culliss system.

Obviousness and anticipation

This patented system clearly states that analysis of information for relevance to a user’s search query is obtained from combined content and collaborative data, describing both content-based and collaborative feedback methods.

Neither the Court accepts the plaintiff’s objection of Culliss patent being about ranking and not filtering, due to the conducted expertise during the trial that explained how “the standard way of filtering is to rank things and pick all items above a threshold”.

Along with Culliss prior art, the Court concludes for obviousness upon the common-sense criteria because a skilled artisan would likewise “have suggested retaining the query for use in the filtering process”.

As to the findings of the first instance jury, the Court states that the founding about being one of the invention claimed independently invented before or simultaneously as the named patent, proves obviousness and consequently asserted patent claims are invalid.

No further determination was granted about damages statement but it still deserves a mention. The jury of Virgina, where the first trial was set, found Google liable of patent infringement ordering it to pay a 30,5$ in damages along with an ongoing royalty, subsequently set at a final rate of 6,5% on a part of Google’s AdWords revenues.

US and EU patent law compared                                                                                                          

The US Court of Appeal decision touches interesting levels of US patent law. It shows what is needed in trial to achieve an obviousness determination.

The first factual finding that must occur is the so called prior art, or the information available about an invention before a given date.

Secondly, the level of ordinary skill needed by a person to come up with that invention in that field. In US patent law, evaluation of both findings is required to assess obviousness and therefore invalidity of an asserted patent claim while EU patent law lays upon the ordinary skill parameter for an invention to be assessed patentable or not.

“Patent troll” and “Non-Practicing Entity” as parties in patent litigations

Viringo is said to be a “Non-Practicing Entity” or a company without a real tech business except for patent litigation, usually filed against big companies in order to obtain million or billion damages for alleged patent law infringements.

Patent law actions are now growing in statistics. One of the most recent has been sued against Google by Eolas Technologies before Northern District of California.

Many other big internet companies like Amazon or Apple are defending themselves against alleged violation or copy of claimed patents and Microsoft settle a patent lawsuit just with Viringo in May 2014.

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