Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 1 of 25 Page ID #:2116
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`John Jeffrey Eichmann (CA Bar No. 227472)
`jeff@dovel.com
`Simon Franzini (CA Bar No. 287631)
`simon@dovel.com
`DOVEL & LUNER, LLP
`201 Santa Monica Blvd., Suite 600
`Santa Monica, California 90401
`(310) 656-7066
`(310) 656-7069 fax
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`Attorneys for Defendant
`and Counterclaimant SimpleAir, Inc.
`
`
`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`GOOGLE INC.,
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` Plaintiff,
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`v.
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`SIMPLEAIR, INC., et al.,
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` Defendants.
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`
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`
`
`
`
`
`Case No. LA 2:16-cv-03758 JAK
`(PLAx)
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`SIMPLEAIR’S ANSWER AND FIRST
`AMENDED COUNTERCLAIMS TO
`GOOGLE’S AMENDED COMPLAINT
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`DEMAND FOR JURY TRIAL
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 2 of 25 Page ID #:2117
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`As of the time this document is being filed, Google’s operative complaint in this
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`action is the First Amended Complaint filed by Google on June 30, 2016. Dkt. 18.
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`Pursuant to the Court’s August 20, 2020, Order (Dkt. 127), Defendant and
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`Counterclaimant SimpleAir files this Answer and First Amended Counterclaim.
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`Defendant SimpleAir answers and counterclaims to Plaintiff Google’s Amended
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`Complaint (Dkt. 18).
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`I. ANSWER
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`The paragraphs in this answer are numbered to correspond with the paragraphs
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`in Google’s Amended Complaint. All allegations in the Amended Complaint that are
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`not specifically admitted in this answer are specifically denied.
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`To the extent that the unnumbered introduction to the Amended Complaint
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`contains allegations to which SimpleAir must respond, SimpleAir admits that Google
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`is seeking a declaration that Google does not directly or indirectly infringe U.S. Patents
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`9,356,899 (‘899 Patent) and 9,380,106 (‘106 patent) (collectively, “challenged
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`patents”) and/or that the challenged patents are unenforceable. SimpleAir denies that
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`Google is entitled to the relief it seeks. SimpleAir denies all remaining allegations
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`contained in the un-numbered introduction.
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`Response to “Nature of the Action”1
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`1.
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`SimpleAir admits that Google’s claims arise under the patent laws of the
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`United States and that Google seeks declaratory relief under the Declaratory Judgment
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`Act. SimpleAir admits that it has filed claims of infringement against Google for
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`infringement of the following patents: U.S. Patent Nos. 7,035,914 (the ‘914 Patent),
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`6,021,433 (the ‘433 Patent), 8,601,154 (the ‘154 Patent), 8,572,279 (the ‘279 Patent),
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`8,656,048 (the ‘048 Patent), and 8,639,838 (the ‘838 Patent). SimpleAir admits that
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`the systems and methods that SimpleAir accused of infringing the foregoing patents
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`1 The headings set forth in Google’s Amended Complaint are repeated in this
`Answer for ease of reference. To the extent that the headings in Google’s Amended
`Complaint contain any allegations to which SimpleAir must respond, SimpleAir denies
`each allegation contained in each of the headings of Google’s Amended Complaint.
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 3 of 25 Page ID #:2118
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`include Google Cloud Messaging, GCM for Chrome, Android Cloud to Device
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`Messaging, and Google applications that used such services to deliver instant
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`notifications to Android smartphones and tablets (collectively, “GCM services”).
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`SimpleAir has no actual knowledge of the motivations behind Google’s request for
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`declaratory judgment relief and on that basis denies Google’s allegation that it requests
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`declaratory relief because SimpleAir filed the foregoing actions. SimpleAir admits
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`that the ‘914, ‘433, ‘154, ‘279, ‘048, and ’839 patents are in the same family, are
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`terminally disclaimed to the ‘433 patent, and share a common specification.
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`SimpleAir denies that each of the ‘914, ‘433, ‘154, ‘279, ‘048, and ’839 “are in fact
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`one invention.” SimpleAir denies that it has “engaged in a pattern of filing successive
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`litigation against Google.” SimpleAir admits that a jury returned a verdict of non-
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`infringement of the ‘279 patent, but that verdict is subject to pending post-trial
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`motions. SimpleAir admits that a panel of the Federal Circuit reversed a jury verdict
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`that Google infringes the ‘914 patent and held that Google does not infringe the ‘914
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`patent, but that decision has no impact on the ‘899 and ‘106 patents in this case.
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`SimpleAir denies Google’s allegation that it does not infringe “SimpleAir’s claimed
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`invention” or that any Court or jury made such a determination. SimpleAir denies all
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`remaining allegations of paragraph 1.
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`2.
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`SimpleAir admits that Google seeks a declaratory judgment of non-
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`infringement and unenforceability of the challenged patents. SimpleAir denies the
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`remaining allegations of paragraph 2.
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`3.
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`SimpleAir admits that the ‘899 patent issued on May 31, 2016.
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`SimpleAir admits that the ‘899 patent is in the same family (though not a direct
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`continuation of) the ‘914, ‘433, ‘154, ‘279, ‘048, and ’839 patents. SimpleAir admits
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`that the specification of the ‘899 patent is substantively the same as the specification of
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`the ‘433 patent. SimpleAir admits that the ‘899 patent is terminally disclaimed to the
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`patent term of the ‘433 patent. SimpleAir admits that a copy of the ‘899 patent is
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 4 of 25 Page ID #:2119
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`attached to Google’s Amended Complaint as exhibit A. SimpleAir denies all
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`remaining allegations of paragraph 3.
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`4.
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`SimpleAir admits that the ‘106 patent issued on June 28, 2016.
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`SimpleAir admits that the ‘106 patent is a continuation of the ‘048 patent. SimpleAir
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`admits that the ‘106 patent is in the same family (though not a direct continuation of)
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`the ‘914, ‘433, ‘154, ‘279, and ’839 patents. SimpleAir admits that the specification of
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`the ‘106 patent is substantively the same as the specification of the ‘433 patent.
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`SimpleAir admits that the ‘106 patent is terminally disclaimed to the patent term of the
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`‘433 patent. SimpleAir admits that a copy of the ‘106 patent is attached to Google’s
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`Amended Complaint as exhibit B. SimpleAir denies all remaining allegations of
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`paragraph 4.
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`5.
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`SimpleAir denies that the ‘899 and ‘106 patents are not infringed by and
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`are unenforceable against Google. SimpleAir admits that Google seeks a declaratory
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`judgment of non-infringement and unenforceability of the ‘899 and ‘106 patent.
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`SimpleAir has no actual knowledge of Google’s motivations for seeking declaratory
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`relief and on that basis denies Google’s assertions concerning its motivations for
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`seeking declaratory relief. SimpleAir denies that Google is entitled to the relief it
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`seeks and denies that such relief is necessary to “remove from Google’s GCM services
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`the haze that SimpleAir’s litigation continuously seeks to impose.” SimpleAir denies
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`all remaining allegations of paragraph 5.
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`Response to “The Parties”2
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`6.
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`SimpleAir is informed and believes that the allegations in paragraph 6 are
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`true and on that basis admits them.
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`7.
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`SimpleAir admits that it is a corporation. SimpleAir admits that its
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`principal place of business is in Plano, Texas. SimpleAir admits that John Payne,
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`2 The claims against John Payne and Tim von Kaenel were dismissed without
`prejudice on November 1, 2016. Dkt. 39. Accordingly they are not presently parties.
`3
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`Mike Mirel, Tim von Kaenel, and Seth Weisberg reside in California. SimpleAir
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`denies all remaining allegations of paragraph 7.
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`8.
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`SimpleAir denies that John Payne resides in Los Angeles County; he
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`resides in Orange County. SimpleAir admits that Mr. Payne is a principal of
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`SimpleAir, Inc. and a named inventor and that he has signed declarations submitted
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`during the prosecution of the ‘899 and ‘106 patents and related patents in the same
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`family. SimpleAir denies all remaining allegations of paragraph 8.
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`SimpleAir denies that Tim von Kaenel resides in Los Angeles County; he
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`resides in Orange County. SimpleAir admits that Mr. von Kaenel is a principal of
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`SimpleAir, Inc. and a named inventor and that he has signed declarations submitted
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`during the prosecution of the ‘899 and ‘106 patents and related patents in the same
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`family. SimpleAir denies all remaining allegations of paragraph 9.
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`Response to “Jurisdiction and Venue”
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`10. SimpleAir admits that Google invokes the Declaratory Judgment Act and
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`the patent laws of the United States. SimpleAir denies all remaining allegations of
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`paragraph 10.
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`11. SimpleAir admits that this Court has subject matter jurisdiction over
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`Google’s declaratory judgment claims against SimpleAir. SimpleAir denies that this
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`Court has subject matter jurisdiction over Google’s declaratory judgment claims
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`against Mr. Payne and Mr. von Kaenel. SimpleAir denies that the Declaratory
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`Judgment Act provides an independent source of subject matter jurisdiction.
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`SimpleAir denies all remaining allegations of paragraph 11.
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`12.
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` SimpleAir admits that the Court has personal jurisdiction over SimpleAir.
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`SimpleAir denies all remaining allegations of paragraph 12.
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`13. SimpleAir denies the allegations of paragraph 13.
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`14. SimpleAir denies the allegations of paragraph 14.
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 6 of 25 Page ID #:2121
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`Response to “SimpleAir’s History of Litigation Against Google”
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`15. SimpleAir admits that it filed an action against Google in the Eastern
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`District of Texas in 2011 alleging infringement of the ‘914 and ‘433 patents.
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`SimpleAir admits it alleged in the foregoing case that the Android Cloud to Device
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`Messaging service and Google Cloud Messaging service infringed. SimpleAir admits
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`that it dismissed its infringement allegations as to the ‘433 patent before trial with
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`prejudice, pursuant to an agreement whereby each side agreed to narrow its respective
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`case to streamline trial. SimpleAir admits that it prevailed on infringement and
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`validity in SimpleAir I at trial. SimpleAir admits that a panel of the Federal Circuit
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`reversed certain of the district court’s claim constructions, vacated the jury’s verdict of
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`infringement, and ordered the district court to enter a judgment of non-infringement
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`with respect to the ‘914 patent. SimpleAir admits that exhibit C to Google’s Amended
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`Complaint is a copy of the Federal Circuit’s opinion in SimpleAir I. SimpleAir denies
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`all remaining allegations in paragraph 15.
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`16. SimpleAir admits that Google’s complaint quotes portions of pages 15-17
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`of the Federal Circuit panel opinion in SimpleAir I. SimpleAir denies each of Google’s
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`allegations purporting to describe the Federal Circuit panel’s reasoning and holding
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`and denies that that reasoning and holding are correct. SimpleAir denies the remaining
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`allegations in paragraph 16.
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`17. SimpleAir admits that it filed an action for infringement of the ‘279 patent
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`against Google on November 4, 2013 in the Eastern District of Texas. SimpleAir
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`admits that it filed an action for infringement of the ‘154 and ‘279 patents on January
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`8, 2014 in the Eastern District of Texas. SimpleAir admits that these two lawsuits
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`(collectively, SimpleAir II) were consolidated for all purposes. SimpleAir admits that
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`the GCM services were accused of infringement in SimpleAir II. SimpleAir denies all
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`remaining allegations in paragraph 17.
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`18. SimpleAir admits that it dismissed its infringement allegations as to the
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`‘154 Patent with prejudice pursuant to an agreement whereby each side agreed to
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 7 of 25 Page ID #:2122
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`narrow its respective case to streamline trial. SimpleAir denies the remaining
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`allegations in paragraph 18.
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`19. SimpleAir admits that a jury returned a verdict of non-infringement of the
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`‘279 patent, but that verdict is subject to pending post-trial motions. SimpleAir admits
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`that exhibit D to Google’s complaint is a copy of the verdict sheet in SimpleAir II.
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`SimpleAir admits that exhibit E to Google’s Amended Complaint is a copy of the
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`judgment entered in SimpleAir II. SimpleAir denies all remaining allegations in
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`paragraph 19.
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`20. SimpleAir admits that it filed an action alleging infringement of the ‘048
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`and ‘838 patents against Google in the Eastern District of Texas on April 8, 2016
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`(SimpleAir III). SimpleAir admits that Google Cloud Messaging, GCM for Chrome
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`and Android Cloud to Device Messaging (as well as the Firebase Cloud Messaging
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`service) are accused of infringement in SimpleAir III. SimpleAir admits that the ‘048
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`and ‘838 patents share a specification with and are in the same family as (but not direct
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`continuations of) the ‘914 and ‘279 patents. SimpleAir admits that Google filed a
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`motion to dismiss in SimpleAir III, but denies the allegations and arguments made in
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`that motion (including specifically its patents disclose a “sole invention” that has “now
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`been strategically spread among hundreds of claims across numerous continuation
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`patents”). SimpleAir denies Google is entitled to the relief it seeks in that motion.
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`SimpleAir denies all remaining allegations in paragraph 20.
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`21. SimpleAir admits that a controversy exists between Google and
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`SimpleAir as to whether Google infringes the ‘899 and ‘106 Patents. SimpleAir
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`admits that the ‘899 and ‘106 patents are in the same family as (but not direct
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`continuations of) the ‘433 patent. SimpleAir admits that the ‘899 and ‘106 patents are
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`subject to a terminal disclaimer to the term of the ‘433 patent. SimpleAir denies all
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`remaining allegations in paragraph 21.
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`22. SimpleAir does not know what Google’s expectations are and on that
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`basis denies that “Google fully expects SimpleAir to assert the ‘899 and ‘106 patents
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`against it in future litigation.” SimpleAir denies the remaining allegations in paragraph
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`22.
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`Response to “SimpleAir Obtained The ‘899 Patent and the ‘106
`Patent Through Fraud on the Patent Office”
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`23. SimpleAir denies the allegations of paragraph 23.
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`Response to “SimpleAir Failed to Identify the Real Inventor
`of the ‘899 and ‘106 Patents”
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`24. SimpleAir admits that the Mr. Payne, Mr. von Kaenel, Mr. Odell, Mr.
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`Starr, and Mr. Katz are identified as named inventors on the ‘899 patent and the ‘106
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`patents and on previously-issued patents in the same patent family. SimpleAir denies
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`the remaining allegations of paragraph 24.
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`25. SimpleAir denies the allegations of paragraph 25.
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`26. SimpleAir admits that Google’s Amended Complaint accurately quotes
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`the following sentence from the Acromed case: “[E]ach person claiming to be a joint
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`inventor must have contributed to the conception of the invention.” SimpleAir denies
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`the remaining allegations of paragraph 26.
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`27. SimpleAir denies the allegations of paragraph 27.
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`28. SimpleAir admits that inventor declarations from Mr. Payne, Mr. Von
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`Kaenel, and Mr. Starr were submitted during the prosecution of the ‘899 and ‘106
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`patents. SimpleAir denies the remaining allegations of paragraph 28.
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`29. SimpleAir admits that Mr. Payne and Mr. von Kaenel submitted a
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`declaration of prior invention that included information about the AirMedia Live!
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`commercial embodiment during the reexamination of the ‘914 patent to obtain an
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`earlier priority date. SimpleAir denies the remaining allegations of paragraph 29.
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`30. SimpleAir admits that the passages quoted in paragraph 30 appear in the
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`cited cases. SimpleAir denies the remaining allegations of paragraph 30.
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 9 of 25 Page ID #:2124
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`Response to “SimpleAir Withheld Material Evidence Regarding
`the Appropriate Scope of its Invention and Patent Claims”
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`31. SimpleAir denies the allegations in paragraph 31.
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`32. SimpleAir admits that it filed the application leading up to the ‘899 patent
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`on July 23, 2014. SimpleAir admits that on November 6, 2014 the Patent Office
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`issued a non-final rejection of the application for double patenting over ancestor
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`patents including the ‘914 and ‘279 patents. SimpleAir admits that it filed a terminal
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`disclaimer on November 16, 2014. SimpleAir admits that it filed the application
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`leading up to the ‘106 patent on February 6, 2014. SimpleAir admits that on
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`November 6, 2014 the Patent Office issued a non-final rejection of the application for
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`double patenting over ancestor patents. SimpleAir admits that it filed a terminal
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`disclaimer on October 9, 2014. SimpleAir admits that during the prosecution of the
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`‘899 and ‘106 patents, it submitted prior art including litigation material and material
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`from parallel proceedings before the Patent Office. SimpleAir denies the remaining
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`allegations of paragraph 32.
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`33. SimpleAir admits that it did not submit a copy of the Federal Circuit’s
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`opinion in SimpleAir I to the Patent Office during prosecution of the ‘106 and ‘899
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`patents. SimpleAir denies the remaining allegations of paragraph 33.
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`34. SimpleAir admits that the partial quotes reproduced in Google’s Amended
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`Complaint appear in the Federal Circuit’s opinion in SimpleAir I, but denies that the
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`opinion is correct and also denies Google’s characterization of that opinion. SimpleAir
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`denies the remaining allegations of paragraph 34.
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`35. SimpleAir admits that it did not submit the Federal Circuit’s opinion in
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`SimpleAir I to the Patent Office during the prosecution of the ‘106 and ‘899 patents.
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`SimpleAir admits that it has disclosed litigation documents during the prosecution of
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`its patents. SimpleAir denies the remaining allegations of paragraph 35.
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`36. SimpleAir denies the allegations of paragraph 36.
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 10 of 25 Page ID
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`Response to “SimpleAir is Barred
` from Litigating its Cause of Action Again”
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`37. SimpleAir denies the allegations of paragraph 37.
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`Count One
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`38. Paragraph 38 of Google’s Amended Complaint restates and incorporates
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`by reference the allegations of paragraphs 1-37 of Google’s Amended Complaint.
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`SimpleAir incorporates its responses to the allegations of paragraphs 1-37 above.
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`Except as expressly admitted, SimpleAir denies each of the allegations of paragraph
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`39. SimpleAir admits the allegations of paragraph 39.
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`40. SimpleAir admits the allegations of paragraph 40.
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`41. SimpleAir admits the allegations of paragraph 41.
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`42. SimpleAir admits the allegations of paragraph 42.
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`43. SimpleAir admits the allegations of paragraph 43.
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`44. SimpleAir admits the allegations of paragraph 44.
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`45. SimpleAir denies each of the allegations of paragraph 45.
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`46. SimpleAir admits Google disputes (but not in good faith) its infringement
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`of the ‘899 Patent. SimpleAir denies the remaining allegations of paragraph 46.
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`47. SimpleAir admits that Google seeks a judgment declaring that Google
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`does not infringe the claims of the ‘899 patent, but denies that Google is entitled to the
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`relief it seeks. SimpleAir denies all remaining allegations of paragraph 47.
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`Count Two3
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`48.
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` Paragraph 48 of Google’s Amended Complaint restates and incorporates
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`by reference the allegations of paragraphs 1-47 of Google’s Amended complaint.
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`SimpleAir incorporates its responses to the allegations of paragraphs 1-47 above.
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`3 The claims against John Payne and Tim von Kaenel were dismissed without
`prejudice on November 1, 2016. Dkt. 39. Accordingly Count Two is not presently
`asserted against them.
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`Except as expressly admitted, SimpleAir denies each of the allegations of paragraph
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`48.
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`49. SimpleAir admits Google contends that the ‘899 Patent is unenforceable
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`and that SimpleAir disputes that contention. SimpleAir denies the remaining
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`allegations of paragraph 49.
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`50. SimpleAir admits that Google is seeking a judgment declaring that the
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`claims of the ‘899 patent are unenforceable under the doctrine of inequitable conduct,
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`but denies that Google is entitled to the relief it is seeking. SimpleAir denies the
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`remaining allegations of paragraph 50.
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`51. SimpleAir denies the allegations of paragraph 51.
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`52. SimpleAir admits that Google is seeking a judgment declaring that the
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`claims of the ‘899 patent are unenforceable against it based on the doctrines of
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`estoppel, waiver, res judicata, Kessler, license, and/or exhaustion but denies that
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`Google is entitled to the relief it seeks. SimpleAir denies the remaining allegations of
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`paragraph 52.
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`Count Three
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`53.
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` Paragraph 53 of Google’s Amended Complaint restates and incorporates
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`by reference the allegations of paragraphs 1-52 of Google’s Amended complaint.
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`SimpleAir incorporates its responses to the allegations of paragraphs 1-52 above.
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`Except as expressly admitted, SimpleAir denies each of the allegations of paragraph
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`53.
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`54. SimpleAir admits the allegations of paragraph 54.
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`55. SimpleAir admits the allegations of paragraph 55.
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`56. SimpleAir admits the allegations of paragraph 56.
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`57. SimpleAir admits the allegations of paragraph 57.
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`58. SimpleAir admits the allegations of paragraph 58.
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`59. SimpleAir admits the allegations of paragraph 59.
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`60. SimpleAir denies each of the allegations of paragraph 60.
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 12 of 25 Page ID
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`61. SimpleAir admits Google disputes (but not in good faith) its infringement
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`of the ‘106 Patent. SimpleAir denies the remaining allegations of paragraph 61.
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`62. SimpleAir admits that Google seeks a judgment declaring that Google
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`does not infringe the claims of the ‘106 patent, but denies that Google is entitled to the
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`relief it seeks. SimpleAir denies all remaining allegations of paragraph 62.
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`Count Four4
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`
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`63.
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` Paragraph 63 of Google’s Amended Complaint restates and incorporates
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`by reference the allegations of paragraphs 1-62 of Google’s Amended complaint.
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`SimpleAir incorporates its responses to the allegations of paragraphs 1-62 above.
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`Except as expressly admitted, SimpleAir denies each of the allegations of paragraph
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`63.
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`64. SimpleAir admits Google contends that the ‘106 Patent is unenforceable
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`and that SimpleAir disputes that contention. SimpleAir denies the remaining
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`allegations of paragraph 64.
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`65. SimpleAir admits that Google is seeking a judgment declaring that the
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`claims of the ‘106 patent are unenforceable under the doctrine of inequitable conduct,
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`but denies that Google is entitled to the relief it is seeking. SimpleAir denies the
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`remaining allegations of paragraph 65.
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`66. SimpleAir denies the allegations of paragraph 66.
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`67. SimpleAir admits that Google is seeking a judgment declaring that the
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`claims of the ‘106 patent are unenforceable against it based on the doctrines of
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`estoppel, waiver, res judicata, Kessler, license, and/or exhaustion but denies that
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`Google is entitled to the relief it seeks. SimpleAir denies the remaining allegations of
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`paragraph 67.
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`4 The claims against John Payne and Tim von Kaenel were dismissed without
`prejudice on November 1, 2016. Dkt. 39. Accordingly Count Four is not presently
`asserted against them.
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 13 of 25 Page ID
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`SimpleAir denies that Google is entitled to any of the requested relief and denies
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`Prayer for Relief
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`any allegations made in its prayer for relief. SimpleAir further requests that the Court
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`deny all relief requested by Google, enter a judgment in SimpleAir’s favor on all
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`claims asserted by Google’s Amended Complaint, award damages in SimpleAir’s
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`favor—including attorneys’ fees and costs—and declare this case exceptional.
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`
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`SimpleAir demands a trial by jury of all issues raised in Google’s Amended
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`Jury Demand
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`Complaint.
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`II. COUNTERCLAIMS
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`
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`1.
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`SimpleAir is an inventor-owned technology licensing company that holds
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`eight issued U.S. Patents concerning wireless content delivery, mobile applications,
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`and push notifications, including the ‘899 and ‘106 patents. Defendant Google has
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`infringed these patents by making and using the methods and systems claimed by the
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`patents by developing, offering, operating, using, and putting into service the Google
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`Cloud Messaging (GCM) service, Android Cloud to Device Messaging (C2DM)
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`service, Google Cloud Messaging for Chrome service, and Firebase Cloud Messaging
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`Service (FCM) to send push notifications to Android smartphones and tablets and
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`Chromebooks, as well as apps and app servers that interact with and make use of the
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`foregoing, including (but not limited to) Gmail, Google Now, Calendar, Wallet, Voice,
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`Google+, Hangouts, and News and Weather. SimpleAir seeks reasonable royalty
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`damages for patent infringement.
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`The Asserted Patents
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`2.
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`U.S. Patent No. 9,356,899 was issued on May 31, 2016. Claim 1 recites:
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`Case 2:16-cv-03758-JAK-PLA Document 129 Filed 09/03/20 Page 14 of 25 Page ID
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`Dkt. 18-1 (‘899 patent), col. 32:49-67.
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`3.
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`U.S. Patent No. and 9,380,106 was issued on June 28, 2016. Claim 1
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`recites:
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`Dkt. 18-2 (‘106 patent), col. 32:49-61.
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`No res judicata
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`4.
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`The ‘106 patent does not recite a “data channel” limitation in any of its
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`claims. Similarly, claims 1-16, 25-28, and 30 of the ‘899 patent do not recite a “data
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`channel” limitation. Therefore the 2016 construction by the Federal Circuit of that
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`limitation (and the phase “whether said devices are online or offline from a data
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`channel associated with each device”) in SimpleAir’s ‘914 patent does not affect the
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`construction (or preclude the assertion) of any of these claims. There is similarly no
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`issue preclusion that would result from a final judgment in the case concerning
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`SimpleAir’s ‘279 patent. In that case, Google made three non-infringement
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`arguments. None of these arguments apply to the ‘899 and ‘106 patents because the
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`claims of the ‘899 patent and ‘106 patent do not have the same claim language (i.e., the
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`language in the claims of the ‘279 patent that Google’s non-infringement arguments
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`purported to invoke is not present in the claims of the ‘899 and ‘106 patents). And a
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`finding of non-infringement of the ‘279 patent does not otherwise preclude SimpleAir
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`from proving that Google infringes the ‘899 and ‘106 patents. Kearns v. Gen. Motors
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`Corp., 94 F.3d 1553, 1556 (Fed. Cir. 1996) (“In the case at bar it is not possible to
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`show that the identical issue was presented in the sixteen patents that were not before
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`the Michigan court, as in the five patents that were; for each patent, by law, covers a
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`independent and distinct invention. Further, infringement must be separately proved as
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`to each patent.”).
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`
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`5.
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`In addition, Google cannot defeat this lawsuit under any theory of claim
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`preclusion. “By statutory and common law, each patent establishes an independent
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`and distinct property right … Each patent asserted raises an independent and distinct
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`cause of action.” Id. at 1555. “[N]ormally when patents are not included in a suit,
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`they are not before a court, and while preclusion may attach to certain issues, causes of
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`action based on patents that are not included in a suit are ordinarily not captured, and
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`therefore precluded, by judgments that pertain to other patents…[C]laim preclusion
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`
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`does not apply to the’977 patent because that patent was not part of the first lawsuit.”
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`Abbey v. Mercedes Benz of N. Am., Inc., 138 F. App'x 304, 307 (Fed. Cir. 2005).
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`Furthermore, in 2018 the Federal Circuit held:
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`[W]here different patents are asserted in a first and second suit, a judgment in
`the first suit will trigger claim preclusion only if the scope of the asserted
`patent claims in the two suits is essentially the same. In applying that standard
`to the particular context here, we conclude that claims which are patentably
`indistinct are essentially the same.
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`SimpleAir, Inc. v. Google LLC, 884 F.3d 1160, 1167 (Fed. Cir. 2018). This means that
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`SimpleAir’s assertion of the asserted claims of the Patents-in-Suit is not barred by
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`claim preclusion unless Google can prove that the asserted claims are anticipated by or
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`obvious in light of the earlier asserted claims. Eli Lilly & Co. v. Teva Parenteral
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`Medicines, Inc., 845 F.3d 1357, 1375 (Fed. Cir. 2017) (“A later patent claim is not
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`patentably distinct from an earlier claim if the later claim is obvious over, or
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`anticipated by, the earlier claim.”). Google cannot prove this. Each of the asserted
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`claims of the Patents-in-Suit is patentably distinct from the claims of the earlier
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`SimpleAir patents that were asserted. Exhibit 1 (Goodrich declaration) ¶¶ 123 – 177.
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`
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`6.
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`Accordingly, these patents stand on their own. Moreover, the claims
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`asserted in these counterclaims have merit.
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`Jurisdiction and Venue
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`7.
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`These counterclaims for patent infringement arise out of the patent laws
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`of the United States, 35 U.S.C. §§271 and 281, et seq. The Court has original
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`jurisdiction over this patent infringement action under 28 U.S.C §1338(a).
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`
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`8.
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`Venue is proper in this district because Google is responsible for acts of
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`infringement occurring the Central District of California, and has delivered or caused
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`to be delivered infringing services and products in the Central District of California.
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`Defendant and Counterclaim Plaintiff SimpleAir, Inc.
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`9.
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`SimpleAir is a Texas corporation.
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