by way of Dennis Crouch
Google v. Hammond Building, — F.4th — (Fed. Cir. 2022)
We have now a very powerful IPR collateral estoppel determination from the Federal Circuit. The fundamental consequence this is that problems litigated and determined in a single IPR will likely be noticed as mounted and in the end determined as between the events in long term IPRs. For relatives member patents, the courts will ask if the primary case responded the similar patentability questions at factor as the second one case. Preclusion choices will have to now not be taken calmly as a result of they bar a celebration the chance to shield its rights in courtroom.
Hammond sued Google for infringing a relatives of 3 patents and that case continues to be pending in Waco. Google replied with 3 IPR petitions. For 2 of the patents, the PTAB sided totally with Google and located the claims glaring. Hammond didn’t attraction the ones findings. Within the 3rd patent–the only at factor right here on attraction–the PTAB issued a break up determination 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 in regards to say 18 of the ‘816 are similar to the ones already determined by way of the PTAB in its prior determination invalidating a parallel declare in a family-member patent. For the reason that factor was once already litigated and determined within the first case, Hammond is estopped from relitigating that very same factor.
The 2 patent claims aren’t equivalent, however are somewhat shut. Right here, the Federal Circuit discovered that to be excellent sufficient primarily based upon prior precedent that factor preclusion can nonetheless follow regardless of language variations within the claims. The query is whether or not the diversities “materially adjust the query of invalidity. Ohio Willow Picket Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013).
Right here, the appellate courtroom recognized the diversities within the claims and located them insignificant. That conclusion seems shaky moderately shaky. My studying of the claims is that the up to now invalidated declare required positive actions on “a number of utility servers.” Alternatively, the declare at factor now expressly divides the actions between a “first utility server” and a “2d utility server.” Thus, for those components, the already invalidated declare is broader and, individually, shouldn’t preclude the patentee from arguing the ones variations. In its research, the appellate panel happy itself by way of pointing to a conclusion within the first case that “distributing instrument packages throughout more than one servers was once widely recognized to the artisan.” However, that conclusion does now not seem to immediately implicate the precise first and 2d server configuration as claimed. However, the Federal Circuit is the one who comes to a decision, now not Crouch.
Collateral estoppel questions at all times contain a minimum of two instances, and the query is whether or not some determination within the first case precludes relitigation of a subject matter in the second one case. Federal Circuit doctrine bars the celebration from re-litigating a subject matter of truth or regulation if the next 4 components are met:
- The problem in the second one case is the same to at least one determined within the first motion;
- The problem was once in truth litigated within the first motion;
- Solution of the problem was once crucial to a last judgment
within the first motion; and - The celebration being estopped had a complete and truthful alternative to litigate the problem 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 simplest challenged the primary prong. As famous above, the appellate panel disagreed and located the primary prong met.
Timing is a large factor in those instances. The overall rule is that factor preclusion attaches once the primary case is made ultimate. From time to time, that “made ultimate” component is usually a bit complicated–does it follow on the level of the overall written determination by way of the PTAB, as soon as the Director denies overview, or simplest as soon as all appeals are exhausted? Right here, the Federal Circuit didn’t cope with that factor for the reason that appeals within the first case had already been exhausted (Hammond didn’t attraction). As soon as the primary case is ultimate, collateral estoppel will in an instant follow and preclude arguments even in parallel ongoing litigation.
The collateral estoppel determination gets rid of two extra of Hammond’s claims, however the patentee nonetheless has 4 claims that experience survived. Hammond might nonetheless see this as a partial win. In relation to patent litigation, the patentee wishes 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 sooner than Pass judgement on Albright.