Tensions are rising between Google and Massachusetts-based Skyhook Wireless, a small company in the location-positioning field that, in parallel to suing Google for patent infringement, complained about bullying tactics. Skyhook recently stepped up its patent assertions against Google, resulting in a consolidated, bloated case involving 98 patent claims pending in the District of Massachusetts. Now Google has made an unusual aggressive move by asking the court on Monday to impose sanctions on Skyhook for violation of Rule 11, i.e., for bringing claims so frivolous that it had no good-faith reason to believe that these can ever succeed. If Google's motion succeeded, one of Skyhook's patents-in-suit will be dismissed without prejudice and Skyhook would have to bear "costs and attorneys' fees incurred in connection with [the] motion". Here's Google's motion (this post continues below the document):
The patent Google claims Skyhook is asserting in bad faith is U.S. Patent No. 8,031,657 on a "server for updating location beacon database". It's a continuation of a previously-asserted patent, U.S. Patent No. 7,414,988 (same title). The '988 patent was found invalid by the court, so Skyhook needs a successful appeal to resuscitate it. And Judge Rya Zobel has construed certain disputed terms of the earlier patents-in-suit, which is why Google believes Skyhook simply must know that the newly-asserted '657 patent can't possibly be found infringed: it was granted in 2011, and Google says that prior to the granting of this patent is stopped collecting access point data with cars (such as the Street View cars), which is the kind of systemic scanning with vehicles that Google claims is an indispensable requirement for an infringement finding under the court's construction of the related '988 patent.
Counsel for Skyhook stresses that his client and its legal team don't take allegations of sanctionable conduct likely, and disagrees with Google's lawyers that whatever happened with respect to the '988 patent makes it impossible for Skyhook to prevail on the '657 patent. Google attached to its motion for sanctions the related correspondence, and I've uploaded three of those documents to Scribd:
A May 22, 2013 email Skyhook's counsel sent to Google's counsel in response to an early draft of the motion finally filed yesterday. In that response Skyhook's counsel says Google misreads the court's claim construction and points to differences between the '657 and '988 patents. For example, the older ('988) patent contains the term "avoid(s) arterial bias", while the '657 patents merely relates to the reduction of arterial bias. Another difference is that the '657 patent only requires "a plurality of Wi-Fi access points in the target area" to be included in a database, the earlier patent required "substantially all" access points to be included. Also, Skyhook argues that, with "well over 200 million Android smartphones and tablets [that] have now been activated in the US", and Google's past data collection with CityBlock vehicles, the data collected by Google on access points is "systematic, or at a minimum, equivalent to systematic", which would satisfy another claim limitation. Skyhook's counsel claims that "the claims of the 657 patent, as well as all other asserted Skyhook patents, were and are infringed by Google, both before and after Google asserts it ceased its CityBlock collection of Wi-Fi access point data".
In a June 6 letter Google's counsel insists that Skyhook withdraw the '657 patent from this case or else there would be a motion for sanctions. Among other things, Google argued that "reduce arterial bias" and "avoid arterial bias" are synonymous, and that Skyhook's infringement contentions are based on a claim construction that runs counter to an express disavowal of claim scope in the shared specification of the '657 and '988 patents.
Yesterday Skyhook's counsel responded to Google's lawyers and said that they simply disagree, but that doesn't mean that Skyhook is acting in bad faith:
"We are in receipt of your letter to me dated June 6, 2013 and have considered it carefully. The points you make are claim construction and infringement arguments with which we disagree. Those disagreements do not justify the Rule 11 motion that you say you intend to file. Such a motion would be without merit and inappropriate. Skyhook reserves all rights should Google proceed with filing its threatened motion."
After this exchange, Google went ahead and filed its motion, against Skyhook is now going to defend itself vigorously. After the court has ruled on this, we'll know whose credibility has ultimately taken a hit.
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