A recent Law 360 story by Tiffany Hu, “Fed. Circ. Backs Google’s PTAB, Atty Fee Wins on Video IP,” reports that the Federal Circuit handed a win to Google in backing the Patent Trial and Appeal Board’s (PTAB) invalidation of claims in a video delivery patent, while separately affirming $820,000 in attorneys’ fees to the tech giant in a related infringement case. The panel in a one-line order summarily affirmed the PTAB’s May 2017 decisions finding that Google had shown several claims in Vedanti Systems Ltd.’s patent covering video delivery technology to be invalid as obvious based on patents issued more than two decades ago.
In a separate order, the panel affirmed a California federal judge’s October 2017 decision awarding Google $820,000 in attorneys’ fees in a case brought by Max Sound Corp., which had claimed to hold a license to the patent and sued Google, YouTube and another company in 2014 for alleged infringement.
Eric W. Buether, an attorney for Max Sound, told Law360 that he was disappointed by the Federal Circuit’s decision to award the attorneys’ fees, noting that the company had presented several arguments but that the panel issued its ruling without providing an opinion. “This was not a frivolous appeal that was a simple application of a simple rule,” Buether said. “We’re very frustrated and disappointed that we don’t feel we got the explanation that we think these parties deserve in why they lost on such substantial issues.”
After Max Sound filed suit in 2014, Google had challenged the patent in inter partes reviews, alleging that the claims were obvious in light of prior art. The district court case was dismissed after U.S. District Judge Edward J. Davila found that Max Sound lacked standing because it didn’t hold the necessary rights to the patent, a finding that the Federal Circuit later affirmed. In May 2017, the PTAB issued decisions invalidating parts of the patent for being obvious, rejecting Vedanti’s defense that the patent’s claims were distinct from the earlier patents due to the specific way the earlier patents use data from certain regions to collect and transmit pixel information.
That October, Judge Davila held that Google was entitled to attorneys’ fees because its behavior — which included opposing the tech giant’s attempt to bifurcate the proceedings to deal first with the standing issue — was exceptional, warranting such fees. Max Sound had also ignored a series of roadblocks along the way, including fighting Vedanti and trying to join it as an involuntary plaintiff in the action, the judge said. The company had been “no less than willfully blind” as to its ability to bring the suit, he said.
On appeal, Max Sound had argued that "such hindsight analysis of the reasonableness of Max Sound’s litigation behavior is an abuse of discretion which the court must guide the lower courts to avoid.” The company also argued that it had added Vedanti as a defendant after it refused to voluntarily join as a co-plaintiff, making it a proper party to the case. However, the panel affirmed Judge Davila’s ruling a few days after oral arguments, as well as the board’s invalidation of the patent at issue.
The cases are Vedanti Licensing Ltd. v. Google LLC and Max Sound Corp. et al. v. Google LLC et al., case numbers 17-2169 and 18-1039, in the U.S. Court of Appeals for the Federal Circuit.