Google v. Hammond: IPR and Collateral Estoppel

On December 8 2022, the Federal Circuit in Google LLC v. Hammond Development Int’l, Inc. affirmed in part and reversed in part the PTAB’s final written decision of an IPR holding that Google failed to prove that certain claims of Hammond’s U.S. Patent No. 10,270,816 would have been obvious.¹  The Federal Circuit held that some of the claims at issue were unpatentable based on collateral estoppel.²

Hammond owns the ’816 patent, which discloses “a communication device to remotely execute one or more applications.”³  Google petitioned for IPR of all 30 claims of the ’816 patent but did not assert the same grounds against all claims.⁴  On June 4, 2021, PTAB held that claims 1-13 and 20-30 of the ’816 patent would have been obvious, but that Google failed to prove that claims 14-19 were unpatentable.⁵

Google had previously petitioned for IPR of Hammond’s U.S. Patent No. 9,264, 483.⁶  The ’816 and ’483 patents share the same specification.⁷  On April 12, 2021, PTAB issued a final written decision holding that all challenged claims of the ’483 patent would have been obvious.⁸  Hammond did not appeal this decision, which became final on June 14, 2021.⁹

Google appealed PTAB’s determination that claims 14-19 of the ’816 are not unpatentable.¹⁰

The Federal Circuit first considered whether Google forfeited its collateral estoppel argument.¹¹  The Federal Circuit concluded that Google did not forfeit its collateral estoppel argument:

Although Google did not raise its present collateral estoppel argument in its petition, that omission does not result in forfeiture in this case. The preclusive judgment on which Google now relies, the ’483 patent final written decision, issued on April 12, 2021, and became final on June 14, 2021, both of which occurred well after Google filed its petition in the ’816 IPR. Thus, Google could not have raised its collateral estoppel argument in its petition because the preclusive judgment did not yet exist. In such circumstances, Google did not forfeit its collateral estoppel argument by raising it for the first time on appeal.¹²

The Federal Circuit then considered whether the PTAB’s decision regarding the ’483 patent had preclusive effect in the present case with respect to the ’816 patent claims at issue.¹³  The party invoking collateral estoppel must show:  “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.”¹⁴

The only dispute between the parties was whether the issues in the present case are “identical” to that of the PTAB’s determination regarding the ’483 patent.¹⁵  Google argued that claim 18 of the ’816 patent and claim 18 of the ’483 patent present identical issues of patentability such that collateral estoppel applied.¹⁶  The Federal Circuit agreed with Google and explained that

Both claims recite a communication system which allows a communication device to remotely execute one or more applications, wherein an application server communicates a request for processing service to the communication device and that request includes an instruction to present the user with voice or audio data. The only difference between the claims is the language describing the number of application servers. Claim 18 of the ’816 patent requires “a first one of the plurality of application servers configured to execute a first application” and “a second one of the plurality of application servers . . . either (a) configured to receive a second application . . . or (b) configured to cause an execution of the second application.” Claim 18 of the ’483 patent instead recites “one or more application servers” and requires “the at least one application server” is operable to perform the remaining functionality. . . . this difference does not materially alter the question of patentability.¹⁷

Accordingly, the Federal Circuit concluded that “claim 18 of the ’816 patent and claim 18 of the ’483 patent are materially identical for purposes of collateral estoppel.”¹⁸  “Since the issues of patentability of claim 18 of the ’483 patent and claim 18 of the ’816 patent are identical . . . , collateral estoppel applie[d and rendered] claim 18 of the ’816 patent unpatentable.”¹⁹  Additionally, because the parties agreed that the patentability of claim 14 of the ’816 patent would rise or fall with claim 18 of the ’816 patent, the Federal Circuit also held claim 14 unpatentable.²⁰

Google further argued that “claims 15-17 and 19 should fall because the [PTAB] found similar limitations in parallel dependent claims would have been obvious over the same prior art combinations.”²¹  But the Federal Circuit stated that “Google failed to raise any collateral estoppel arguments with respect to these claims and, unlike claim 14, there was no admission that, if claim 18 is unpatentable, claims 15–17 and 19 are unpatentable as well.”²²  Accordingly, the Federal Circuit affirmed PTAB’s decision that claims 15-17 and 19 of the ’816 patent are not unpatentable.²³

The main takeaway of the Hammond-decision is that if differences in claim language between an adjudicated claim and an unadjudicated claim “do not materially alter the question of patentability,” the claims may be deemed “identical” for the purposes of collateral estoppel.