Appeals court spares Google from $20m patent payout over Chrome

Chocolate Factory can afford some staples now, or?

Six years after a jury decided otherwise, Google has convinced an appeals court to reverse a $20 million patent judgment against the web giant.

For the record, $20 million represents less than three hours of Google parent Alphabet's annual $60 billion profit, in a case that kicked off a decade or so ago.

A US Court of Appeals decision [PDF], handed down Tuesday, not only reversed a 2017 ruling that found Google Chrome had ripped off four anti-malware patents, but also that three of the patents (which were reissues of the first) were invalid because they contained details that weren't included in the original patent. 

The patents, which describe methods for sandboxing web browser processes to mitigate malicious code that may be unwittingly fetched and run, were issued to Alfonso Cioffi and the now-dead Allen Rozman, who both sued Google in 2013.

Google's Chrome does indeed use a sandbox design that tries to contain and minimize damage from bad code, though whether that approach infringed the patents was up for debate. Google certainly didn't agree, and sought to kill off the litigation against it.

The case was dismissed from a federal district court in 2014, with Judge J. Rodney Gilstrap agreeing with Google that the language in the patent wording about process separation wasn't clear enough to support an infringement claim against the Chrome browser and its sandbox. Cioffi and Rozman's surviving family didn't give up in their legal battle, and in 2017 a jury decided the pair were due $20 million for patent infringement and ongoing royalties for use of their inventions in Google Chrome. 

The matter went to appeals, and now a trio of circuit judges have said they agreed with that 2014 dismissal, with the web browser process language still a major sticking point. The three-judge panel made its decision in favor of Google unanimously. 

"We appreciate the court's decision invalidating these patents," Google spokesperson José Castañeda told The Register. "We'll continue building new innovations that benefit consumers."

Semantics, and then some

Much of the argument in the appeal ruling centered on the patents' use of the words "web browser process." Google claimed the patents did not clearly enough describe the necessity of isolating multiple web browser processes from each other to provide a sandbox environment. Process separation is a basic but key pillar of sandboxing, a technique Chrome uses to protect users.

If malicious code is able to run in one browser process, that shouldn't affect other processes running on the same machine. If the patents don't fully describe what Chrome's doing under the hood to keep stuff isolated, can there really be a claim of infringement?

Thing is, the patents do make mention of multiple processes: the plaintiffs pointed, as an example, to a figure in the paperwork they said made "a clear and unequivocal disclosure of an embodiment having two web browser processes." 

The appeals panel disagreed, finding it required a "skilled artisan" to make that call. At any rate, that's not the ultimate reason the appeals court tossed away the jury's findings: the patents themselves failed to conform to law. 

The court said that the main reason for reversing the 2017 trial outcome was that three of the reissued patents, used to support the claim against Google, were invalid because they included new information specific to web browsers. From what we can tell, the original filing in the mid-2000s was broad and mentioned web browsers as one of various example applications. In 2012, this was reissued with specific references to web browsers, and then in 2013 Google was sued for infringing those patents.

Google wasn't happy about that.

According to the patent law in questioned in the case, the web giant may have a point in that the patents were no good. 30 USC § 251, which covers the reissuing of patents, states that "no new matter shall be introduced into the patent for reissue." Because the reissued patents added crucial language about web browsers, they can't be used to support a case against Chrome.

And the original patent's wording has failed to convince judges that Chrome was infringing.

That's great news for Google: it almost had to pay out 0.007 percent of its yearly revenue ($283b in 2022), plus royalties, to one engineer and the surviving family of another. Now it can put that cash back in reserves, shore up stationery budgets, and foot other expenses amid tech industry upheaval. ®