In January, Google won a jury trial against a so-called "patent troll" called Beneficial Innovations, which sued dozens of media companies over online ad patents.
But it wasn't a defensive win in which Google lawyers were laying out arguments about why they didn't infringe a patent. Instead, Google had gone on the offensive and said that Beneficial's 2011 patent lawsuit against a dozen major media companies was a breach of contract.
Google had already paid for a license, and then Beneficial went ahead and sued lots of companies that were simply users of Google's Doubleclick ad tech. (Beneficial's targets included Advance Publications, which owns Conde Nast and is the parent company of Ars Technica.)
"Beneficial went back on the terms of its own license agreement, pursuing our customers for simply using our licensed services," said a Google spokesperson at that time.
Google only won nominal damages of $1 and a judicial order stopping Beneficial from going after more Doubleclick customers.
Now, the judge overseeing the case has ruled that Google can also collect some attorneys' fees. In a 16-page order (PDF), US District Judge Rodney Gilstrap found that Google was the prevailing party on the issue of breach of contract and that the company's fee request was reasonable.
Gilstrap ordered Google to be paid a total of just more than $1.3 million in fees. That number is down $101,324.50 from what Google had asked for, because Gilstrap found that Google wasn't entitled to include the costs of its expert witness into the fee total.
Gaming and ad patents
The money isn't a significant amount to a company as big as Google, but beating a patent troll on what is sometimes seen as their "home turf" in East Texas is still significant. It will be a kind of trophy case that Google can use to show other trolls that it's willing to fight back hard if they overstep—and that it may be the troll, not a big tech defendant, writing a check at the end of the day.
Beneficial is owned by Sheldon Goldberg, a Nevada lawyer who became one of the earliest well-known "patent trolls" after claiming he had patented tournament-style card games online. The Goldberg patent on a "network gaming system" became notorious when he started pursuing license fees from small gaming websites and was one of 10 patents featured in the Electronic Frontier Foundation's "Patent Busting Project" for "crimes against the public domain."
The two patents asserted in this case were Nos. 6,712,702, a "continuation" of the notorious network gaming patents, and 7,496,943, on a system for presenting advertising.
The patents were used to sue a long list of media companies, including Advance Publications; ALM Media, which owns The American Lawyer magazine and legal newspapers and websites; American Media, which owns websites for Playboy, Flex, Fit Pregnancy, and Shape; Rodale, which publishes websites for Men’s Health, Runner’s World, and Bicycling; Scripps Interactive, which is responsible for Food Network, HGTV, and DIY Network; Demand Media; Viacom; Village Voice Media; AutoTrader.com; and Amazon.
In past lawsuits, Beneficial has gone after other well-known media names including CNET, The New York Times, and The Washington Post, and job sites like CareerBuilder.