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 fundamental consequence right here is that points litigated and determined in a single IPR might be seen as fastened and eventually 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 subject because the second case.  Preclusion choices shouldn’t be taken evenly as a result of they bar a celebration the chance to defend its rights in court docket.

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

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

The 2 patent claims usually are not equivalent, however are fairly shut.  Right here, the Federal Circuit discovered that to be ok based mostly upon prior precedent that subject 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 court docket 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 utility servers.”  Alternatively, the declare at subject now expressly divides the actions between a “first utility server” and a “second utility server.”  Thus, for these parts, 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 immediately implicate the particular 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 at the least 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 reality or legislation if the next 4 parts are met:

1. The problem within the second case is equivalent to 1 determined within the first motion;
2. The problem was truly litigated within the first motion;
3. Decision of the difficulty was important to a closing 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 an enormous subject in these instances.  The final rule is that subject preclusion attaches as quickly as the primary case is made closing.  At instances, that “made closing” 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 assessment, or solely as soon as all appeals are exhausted?  Right here, the Federal Circuit didn’t tackle that subject for the reason that appeals within the first case had already been exhausted (Hammond didn’t attraction).  As soon as the primary case is closing, 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. On the subject of patent litigation, the patentee wants simply one declare in a position to 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.