Collateral Estoppel between IPRs | Patently-O

by Dennis Crouch

Google v. Hammond Improvement, — F.4th — (Fed. Cir. 2022)

Now we have an vital IPR collateral estoppel resolution from the Federal Circuit. The essential end result right here is that points litigated and determined in a single IPR shall be seen as mounted and at last determined as between the events in future IPRs.  For member of the family patents, the courts will ask if the primary case answered the identical patentability questions at challenge because the second case.  Preclusion choices shouldn’t be taken frivolously as a result of they bar a celebration the chance to defend its rights in courtroom.

Hammond sued Google for infringing a household of three patents and that case remains to be pending in Waco.  Google responded with three IPR petitions. For 2 of the patents, the PTAB sided totally with Google and located the claims apparent.  Hammond didn’t enchantment these findings.  Within the third patent–the one at challenge right here on enchantment–the PTAB issued a break up resolution with six of the thirty claims surviving, together with declare 18 in US10270816.

Google’s argument on enchantment: Google argues that the problems of patentability with regard to say 18 of the ‘816 are an identical to these already determined by the PTAB in its prior resolution invalidating a parallel declare in a family-member patent.   Because the challenge was already litigated and determined within the first case, Hammond is estopped from relitigating that very same challenge.

The 2 patent claims should not an identical, however are fairly shut.  Right here, the Federal Circuit discovered that to be adequate based mostly upon prior precedent that challenge preclusion can nonetheless apply regardless of language variations within the claims. The query is whether or not the variations “materially alter the query of invalidity. Ohio Willow Wooden Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013).

Right here, the appellate courtroom recognized the variations within the claims and located them insignificant.  That conclusion seems shaky considerably shaky. My studying of the claims is that the beforehand invalidated declare required sure actions on “a number of software servers.”  Alternatively, the declare at challenge now expressly divides the actions between a “first software server” and a “second software server.”  Thus, for these components, the already invalidated declare is broader and, for my part, shouldn’t preclude the patentee from arguing these variations.   In its evaluation, the appellate panel happy itself by pointing to a conclusion within the first case that “distributing software program purposes throughout a number of servers was well-known to the artisan.”  However, that conclusion doesn’t seem to instantly implicate the precise first and second server configuration as claimed.  However, the Federal Circuit is the one which decides, not Crouch.

Collateral estoppel questions all the time contain a minimum of two instances, and the query is whether or not some resolution within the first case precludes relitigation of a difficulty within the second case.  Federal Circuit doctrine bars the get together from re-litigating a difficulty of truth or legislation if the next 4 components are met:

  1. The problem within the second case is an identical to 1 determined within the first motion;
  2. The problem was really litigated within the first motion;
  3. Decision of the difficulty was important to a remaining judgment
    within the first motion; and
  4. The get together being estopped had a full and truthful alternative to litigate the difficulty within the first motion.

In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994) (within the context of litigation).  On this case, the patentee admitted component 2-4, and solely challenged the primary prong.  As famous above, the appellate panel disagreed and located the primary prong met.

Timing is a giant challenge in these instances.  The final rule is that challenge preclusion attaches as quickly as the primary case is made remaining.  At instances, that “made remaining” component is usually a bit complicated–does it apply on the level of the ultimate written resolution by the PTAB, as soon as the Director denies evaluation, or solely as soon as all appeals are exhausted?  Right here, the Federal Circuit didn’t deal with that challenge for the reason that appeals within the first case had already been exhausted (Hammond didn’t enchantment).  As soon as the primary case is remaining, collateral estoppel will instantly apply and preclude arguments even in parallel ongoing litigation.

The collateral estoppel resolution eliminates two extra of Hammond’s claims, however the patentee nonetheless has 4 claims which have survived.  Hammond should still see this as a partial win. In relation to patent litigation, the patentee wants simply one declare capable of run the gauntlet of validity, enforceability, and infringement.  We’ll see how that works as soon as the case strikes ahead earlier than Choose Albright.