Google LLC v. Hammond Development International, Inc., Appeal No. 2021-2218 (Fed. Cir. Dec. 8, 2022)
In the only precedential patent decision this week, the Federal Circuit issued a decision concerning the effect of collateral estoppel in an inter partes review (IPR) based on a previous IPR decision. The Court affirmed an obviousness finding where the Patent Trial and Appeal Board’s (PTAB) prior, final, unappealed written decision concerning a related patent would have been dispositive of obviousness over the patent at issue.
The ’816 patent at issue “discloses a communication system that allows a communication device to remotely execute one or more applications.” Google petitioned for IPR of all claims of the ’816 patent, asserting all claims would have been obvious in view of several combinations of prior art. “On June 4, 2021, the Board held claims 1-13 and 20-30 would have been obvious over combinations.” The PTAB further determined that Google failed to show claims 14-19 would have been unpatentable as obvious. Google appealed the PTAB’s final written decision as to claims 14-19. Google previously petitioned for IPR of a related patent—the ’483 patent. The ’816 patent and the ’483 patent share the same specification. Several months prior to the PTAB’s finding on the ’816 patent, the PTAB issued a final written decision finding all challenged claims of the ’483 patent would have been obvious. Hammond did not appeal the PTAB’s final written decision on the ’483 patent, and that decision became final on June 14, 2021.
Here, “Google argue[d] the Board’s determination that claim 18 of the ’483 patent is unpatentable renders claim 18 of the ’816 patent unpatentable based on collateral estoppel.” The Court agreed, explaining that “the patentability of claim 14 of the ’816 patent rises and falls with claim 18 of the ’816 patent.” The Court found that claim 18 of the ’816 patent and claim 18 of the ’483 patent are materially identical for purposes of collateral estoppel. Thus, the Court held claim 18 of the ’816 patent unpatentable. The parties agreed that if claim 18 is unpatentable, then claim 14 necessarily is as well. As such, the Court held claim 14 unpatentable.
The Court, however, did not agree “with Google’s argument that dependent claims 15-17 and 19 would have been obvious based on the Board’s findings as to parallel dependent claims.” The Court explained that “Google failed to raise any collateral estoppel arguments with respect to [claims 15-17 and 19] and, unlike claim 14, there was no admission that, if claim 18 is unpatentable, claims 15-17 and 19 are unpatentable as well.” Accordingly, the Court affirmed the Board’s determinations that claims 15-17 and 19 are not unpatentable, and reversed the Board’s decision with respect to claims 14 and 18.
The opinion can be found here.
By Annie White
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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.
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