Patent Case Summaries December 14, 2022

Patent Case Summaries | Week Ending December 9, 2022

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Google LLC v. Hammond Development International, Inc., No. 2021-2218 (Fed. Cir. (PTAB) Dec. 8, 2022). Opinion by Moore, joined by Chen and Stoll.

Hammond owns a patent directed to a communication system that allows a communication device to remotely execute one or more applications. Google filed an IPR petition challenging all of the claims. In a final written decision, the Patent Trial and Appeal Board agreed with Google as to most of the claims but held that Google failed to prove claims 14–19 would have been obvious. Google appealed.

After Google had filed its IPR petition, but prior to this appeal, the Board issued a final written decision as to a related Hammond patent. The Board held that all challenged claims in the related patent were unpatentable. Hammond did not appeal that decision, thus making that judgment final.

Based on that final judgment, Google argued in the present appeal that collateral estoppel applied, rendering independent claim 14 and dependent claim 18 unpatentable. Because Google raised collateral estoppel for the first time on appeal, the Federal Circuit addressed whether Google had forfeited the argument. The court ruled that the argument was not forfeited because “Google could not have raised its collateral estoppel argument in its [IPR] petition because the preclusive judgment did not yet exist.”

The Federal Circuit next turned to whether the earlier final judgment has preclusive effect in this case. The court noted that “it is well established that collateral estoppel applies to IPR proceedings.” The parties’ dispute centered only on whether the issue being decided here “is identical to one decided in the first action.” Regarding the question of an “identical” issue, the Federal Circuit explained: “It is well established that patent claims need not be identical for collateral estoppel to apply. Rather, collateral estoppel requires that the issues of patentability be identical.”

The Federal Circuit ruled that the patentability issues were identical. The only difference between the claims was language describing the number of application servers, which “does not materially alter the question of patentability.” Thus, collateral estoppel applied, rendering claims 14 and 18 unpatentable.

As to the remaining claims challenged by Google (claims 15–17 and 19), the Federal Circuit stated that “Google failed to raise any collateral estoppel arguments with respect to these claims,” and Google “has failed to convince us that the Board’s determinations should be reversed.” Thus, the court affirmed the Board’s determinations that claims 15–17 and 19 are not unpatentable.

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