Last week, the U.S. Court of Appeals for the Federal Circuit issued an order in Google LLC v. Hammond Development International, Inc., No. 2021-2218 (Dec. 8, 2022), reversing-in-part and affirming-in-part a final written decision of the Patent Trial and Appeal Board.
Hammond owns the ’816 patent, which is directed to a communication system that allows a communication device to remotely execute one or more applications. Google petitioned for inter partes review of all claims of the ’816 patent. In its final written decision, the Board held that all claims of the ’816 patent, except claims 14-19, would have been obvious. Google appealed.
On appeal, Google argued collateral estoppel rendered claims 14-19 unpatentable because, in a prior IPR of Hammond’s U.S. Patent No. 9,264,483, the Board held all claims of the ’483 patent unpatentable and Hammond did not appeal. Google argued that the patentability of claims 14-19 of the ’816 patent was tied to the patentability determinations on corresponding claims of the ’483 patent.
The Federal Circuit first addressed whether Google had forfeited the collateral estoppel argument because it was not included in its IPR petition on the ’816 patent. Because the collateral judgment on which Google relied was entered after the date of Google’s IPR petition on the ’816 patent, the Court held Google did not forfeit the argument. Next, the Court addressed whether the elements of collateral estoppel were satisfied. The parties only disputed one element—whether the issues in the first actions were identical to the issues in the second action. The Court explained that the proper inquiry on that element is not whether the patent claims are identical but whether the issues of patentability are identical. The Court concluded that the issues of patentability with respect to claim 18 of the ’816 patent and claim 18 of the ’483 patent were identical. Accordingly, the Court reversed the Board’s decision and held claim 18 of the ’816 patent unpatentable. Because the parties agreed that the patentability of claim 14 rose and fell with the patentability determination on claim 18, the Court also reversed the Board’s decision on that claim. As to claims 15-17 and 19, however, the Court affirmed the Board’s decision that Google had failed to prove that the claims were unpatentable because Google had not demonstrated that the patentability issues as to those claims were identical.