Written by: Alistair J. McIntyre & Brandon G. Smith

GOOGLE LLC v. HAMMOND DEVELOPMENT INTERNATIONAL, INC.

Before Moore, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: Collateral estoppel applies to IPRs where differences in claims do not materially alter the question of patentability.

Google filed an IPR on Hammond’s ’816 patent, which is related to and shares a specification with the ’483 patent. The PTAB determined that Google failed to meet its burden to show that Claim 18 of the ’816 patent was unpatentable.

Google had successfully challenged Hammond’s ’483 patent in another IPR, including Claim 18 of that patent. The PTAB’s decision in the ’483 patent IPR became final during the pendency of the ’816 patent IPR. Claim 18 of the ’816 patent was identical to Claim 18 of the ’483 patent, except for “language describing the number of application servers.”

Google appealed the PTAB’s decision regarding the ’816 patent IPR, arguing that the PTAB’s determination that Claim 18 of the ’483 patent was unpatentable rendered Claim 18 of the ’816 patent unpatentable based on collateral estoppel.

The Federal Circuit agreed. The court reasoned that collateral estoppel had long applied to IPR proceedings and that patent claims need not be identical for collateral estoppel to apply. The court reasoned that collateral estoppel may apply even if the claim language between the two patents is different, so long as “the difference between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.” The court agreed with Google that Claim 18 of the ’816 patent and Claim 18 of ’483 patent presented identical issues of patentability, finding that the differences between claims would have been obvious and therefore did not materially alter the patentability analysis. Accordingly, the court reversed the PTAB’s determination as to Claim 18.

Editor: Paul Stewart