TAKEAWAY: A finding of unpatentability in an earlier IPR may preclude survival of similar claims in a later IPR
In Google v. Hammond Development International (Fed. Cir., December 8, 2022), the Federal Circuit held that a decision invalidating claims of a first patent in an earlier inter partes review (IPR) precluded upholding claims of a related patent in a later IPR involving the same parties.
The dispute arose when Hammond, the patent owner, sued Google in the Western District of Texas for infringement of three related patents. Google subsequently filed petitions for IPR challenging claims of each of the three patents. The USPTO’s Patent Trial and Appeal Board (PTAB) found all challenged claims of Hammond’s U.S. Patent No. 9,264,483 invalid in April 2021. Hammond did not appeal that decision, thereby allowing it to become final.
In another IPR, the PTAB upheld claim 18, among other claims, of Hammond’s U.S. Patent No. 10,270,816 in a written decision issued in June 2021. Google appealed that decision to the Federal Circuit and argued that collateral estoppel stemming from the IPR of the ’483 patent precluded the PTAB’s later finding. Specifically, Google argued that the PTAB had already decided the issues of patentability for claim 18 of the ‘816 patent in its prior decision.
The parties disputed whether the issues of patentability were identical between the ’483 patent and the ’816 patent. Of note, claim 18 of the ’816 patent recited “a first one of the plurality of application servers” and “a second one of the plurality of application servers,” each configured in a particular way, whereas claim 18 of the ’483 patent recited “one or more application servers” operable to perform the same functionality. The Federal Circuit agreed with Google, acknowledging some differences between the claims but concluding the differences “[did] not materially alter the question of patentability.” The Federal Circuit also determined that Google had not forfeited its collateral estoppel argument because the PTAB decisions issued after it had filed its petition and the argument could not have been raised earlier.
The panel’s decision raises considerations for patent practitioners during examination and in post-grant challenges. Before the PTAB, practitioners should be aware of proceedings involving related patents and the similarities between claims of those patents. Whether a party wishes to distance itself from, or align more closely with, a previous PTAB decision, practitioners should consider bolstering the record with evidence, such as expert testimony, as to whether differences between the claims are material to patentability. Such evidence could support or refute a collateral estoppel argument, such as the argument advanced by Google.
For practitioners prosecuting families of related patents, the Federal Circuit’s decision provides another reason among many to vary claim scope between applications in a meaningful way.