Kewazinga Corp. v. Google LLC

Background

Kewazinga Corp. alleged that Google LLC infringed U.S. Patent Nos. 9,055,234, 6,522,325, and 6,535,226 through Google Street View. The patents concern methods and systems using cameras to provide navigable telepresence, allowing remote viewing of an environment.

In 2013, Kewazinga and a licensee sued Google over the ’226 and ’325 Patents. The earlier case was dismissed without prejudice because the complaint had not been served. Kewazinga’s filing opposing dismissal said the parties had been engaged in settlement discussions and that Kewazinga did not intend to serve Google; it also expressly accepted dismissal without prejudice. Before that filing, Kewazinga had reaffirmed its belief that Google infringed the patents.

After the 2013 case ended, Google closed its related legal processes, including releasing a preservation hold and stopping work concerning possible validity challenges and design-around options. Kewazinga did not assert the patents against Google or communicate directly with Google until filing this case more than six years later. The ’234 Patent issued in 2015. In 2018, Google retained Stroock, the law firm that had represented Kewazinga in the earlier patent litigation, for a separate copyright lawsuit involving Google and other defendants. Google employees discussed whether that retention could prevent Stroock from representing Kewazinga in a new patent case.

Motions and Legal Standard

Google moved for summary judgment on its affirmative defense of equitable estoppel. Kewazinga cross-moved for summary judgment that equitable estoppel did not apply. Summary judgment is appropriate when there is no genuine dispute about a material fact and the moving party is entitled to judgment as a matter of law.

Equitable estoppel is a defense that can completely bar a patent-infringement claim. Google had to prove three elements by a preponderance of the evidence: Kewazinga engaged in misleading conduct that reasonably suggested it would not assert the patents; Google relied on that conduct; and Google would suffer substantial prejudice if Kewazinga’s claims continued. Because the defense is equitable, the court—not a jury—decides it when the record presents no trial-worthy factual dispute.

On summary judgment, when the alleged misleading conduct consists of an omission or failure to act, Google had to show that the evidence supported only one possible conclusion: that Kewazinga would not pursue infringement claims.

Court’s Analysis

The court ruled that Google had not proved the required misleading conduct. Kewazinga’s acceptance of dismissal in the earlier case did not establish that it abandoned its patent claims because the dismissal was expressly without prejudice, the parties had been discussing settlement, and Kewazinga had recently reaffirmed its infringement position.

The court also held that Kewazinga’s more than six years of silence and delay, standing alone, were insufficient. The cases on which Google relied involved additional affirmative misleading conduct, such as misrepresentations, repeated communications that omitted infringement concerns, or failure to respond after the accused party disclosed an alternative design. Google identified no comparable affirmative misleading conduct by Kewazinga here.

The court further rejected Google’s reliance on the Stroock representation. Even assuming Kewazinga was responsible for statements made by Stroock in connection with the 2018 copyright lawsuit, Google’s own internal emails showed that Google believed Stroock’s representation of Google might create a conflict preventing Stroock from representing Kewazinga. Those emails did not show that Google reasonably inferred that Kewazinga would never sue.

The court reached the same conclusion as to the ’234 Patent. Although conduct before a patent issues may be considered in evaluating equitable estoppel, Google identified no evidence supporting estoppel for the ’234 Patent but not the other patents.

Because Google failed to establish misleading conduct, the court did not address the remaining equitable-estoppel issues of reliance, prejudice, or unclean hands.

Disposition

Judge Lorna G. Schofield denied Google’s motion for summary judgment on equitable estoppel and granted Kewazinga’s cross-motion on the same defense. The Clerk was directed to close those motions. The court lifted the stay on all discovery except discovery concerning equitable estoppel and claim construction, and directed the parties to propose next steps and deadlines for additional discovery. The opinion did not resolve whether Google infringed the patents.