Back to News list

Keker & Van Nest Defeats Patent Troll in Marshall, Texas


Google Customers Covered By Patent Agreement, Jury Rules

A Texas federal jury handed a win to Google Inc. on Thursday after determining that a patent infringement lawsuit filed by Beneficial Innovations Inc. against a number of Google's customer companies violated a licensing agreement it had with the technology giant.

Google was seeking only nominal damages in the case, which the jury granted in the amount of $1, as the company's chief objective in the suit was to show that the settlement agreement it struck with Beneficial applied to the companies that were later named in the subsequent suit.

The jury found that Beneficial's suit against Advance Publications Inc., ALM Media Properties LLC, American Media Inc., Inc. and Demand Media Inc. for their use of Google's DoubleClick ad serving product flouted the settlement, as each of those companies were customers of Google.

"Beneficial went back on the terms of its own license agreement, suing our customers for simply using our licensed services," a Google spokesman said in an e-mailed statement Monday. "This is a great outcome that the jury worked hard to get right.”

The case has its roots in pair of lawsuits filed by Las Vegas-based Beneficial against Google and a number of other parties in 2007 and 2009 alleging the infringement of several patents covering online advertising technology.

After several years of litigation, U.S. District Judge John T. Ward dismissed Google and its subsidiary YouTube LLC from the cases in November 2010 at Beneficial's request, following a licensing agreement that gave Google and its customers licenses to two of the patents asserted against it.

Less than a year later, Beneficial filed a complaint against numerous companies for infringement of the same two patents covered by the agreement with Google. In addition to the five Google customers named in Thursday's jury verdicts, Beneficial's suit targeted Inc., Expedia Inc., Village Voice Media Holdings LLC and others.

Google then intervened in the case several months later, alleging that Beneficial had broken the settlement agreement by filing the suit against the Google customers.

“Under the settlement agreement, Google’s customers are licensed under the licensed patents as long as the use of the licensed patents would constitute direct or indirect infringement by Google,” the company said in its intervenor complaint. “By bringing the instant action against the accused Google partners, Beneficial has violated the license given to the accused Google partners under … the settlement agreement.”

Beneficial did not immediately respond to requests for comment on the jury verdict Monday.

The patents-in-suit are U.S. Patent Numbers 6,712,702 and 7,496,943.

Google is represented by Christa M. Anderson and Jennifer A. Huber of Keker & Van Nest LLP; E. Danielle T. Williams and D. Clay Holloway of Kilpatrick Townsend & Stockton LLP; and Michael E. Jones of Potter Minton PC.

Beneficial is represented by S. Calvin Capshaw and Elizabeth L. DeRieux of Capshaw DeRieux LLP; David E. Rosen of Murphy Rosen LLP; and Gregory S. Dovel and Julien Adams of Dovel & Luner LLP.

The case is Google Inc. v. Beneficial Innovations Inc., case number 2:11-cv-00229, in the U.S. District Court for the Eastern District of Texas.