by Dennis Crouch
Google v. Hammond Development, — F.4th — (Fed. Cir. 2022)
We have an important IPR collateral estoppel decision from the Federal Circuit. The basic outcome here is that issues litigated and decided in one IPR will be seen as fixed and finally decided as between the parties in future IPRs. For family member patents, the courts will ask if the first case answered the same patentability questions at issue as the second case. Preclusion decisions should not be taken lightly because they bar a party the opportunity to defend its rights in court.
Hammond sued Google for infringing a family of three patents and that case is still pending in Waco. Google responded with three IPR petitions. For two of the patents, the PTAB sided entirely with Google and found the claims obvious. Hammond did not appeal those findings. In the third patent–the one at issue here on appeal–the PTAB issued a split decision with six of the thirty claims surviving, including claim 18 in US10270816.
Google’s argument on appeal: Google argues that the issues of patentability with regard to claim 18 of the ‘816 are identical to those already decided by the PTAB in its prior decision invalidating a parallel claim in a family-member patent. Since the issue was already litigated and decided in the first case, Hammond is estopped from relitigating that same issue.
The two patent claims are not identical, but are quite close. Here, the Federal Circuit found that to be good enough based upon prior precedent that issue preclusion can still apply despite language differences in the claims. The question is whether the differences “materially alter the question of invalidity. Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013).
Here, the appellate court identified the differences in the claims and found them insignificant. That conclusion appears shaky somewhat shaky. My reading of the claims is that the previously invalidated claim required certain activities on “one or more application servers.” On the other hand, the claim at issue now expressly divides the activities between a “first application server” and a “second application server.” Thus, for these elements, the already invalidated claim is broader and, in my view, shouldn’t preclude the patentee from arguing those differences. In its analysis, the appellate panel satisfied itself by pointing to a conclusion in the first case that “distributing software applications across multiple servers was well known to the artisan.” But, that conclusion does not appear to directly implicate the specific first and second server configuration as claimed. But, the Federal Circuit is the one that decides, not Crouch.
Collateral estoppel questions always involve at least two cases, and the question is whether some decision in the first case precludes relitigation of an issue in the second case. Federal Circuit doctrine bars the party from re-litigating an issue of fact or law if the following four elements are met:
- The issue in the second case is identical to one decided in the first action;
- The issue was actually litigated in the first action;
- Resolution of the issue was essential to a final judgment
in the first action; and - The party being estopped had a full and fair opportunity to litigate the issue in the first action.
In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994) (in the context of litigation). In this case, the patentee admitted element 2-4, and only challenged the first prong. As noted above, the appellate panel disagreed and found the first prong met.
Timing is a big issue in these cases. The general rule is that issue preclusion attaches as soon as the first case is made final. At times, that “made final” element can be a bit confusing–does it apply at the point of the final written decision by the PTAB, once the Director denies review, or only once all appeals are exhausted? Here, the Federal Circuit did not address that issue since the appeals in the first case had already been exhausted (Hammond did not appeal). Once the first case is final, collateral estoppel will immediately apply and preclude arguments even in parallel ongoing litigation.
The collateral estoppel decision eliminates two more of Hammond’s claims, but the patentee still has four claims that have survived. Hammond may still see this as a partial win. When it comes to patent litigation, the patentee needs just one claim able to run the gauntlet of validity, enforceability, and infringement. We’ll see how that works once the case moves forward before Judge Albright.
Broadcast DOC:
Bystander Intervention to Support the LGB TQIA+ community
DOC
Good Morning and Happy Holidays!
As we enter the holiday season, it is more important than ever that all of our colleagues feel welcome at the Department of Commerce. As we strive to elim inate LGB TQIA+ haras sment, it is crucial to know how to intervene in a helpful way when you witness it. To teach these best practices, the Office of Civil Rights and Commerce PRIDE, the Department’s LGB TQIA+ and Ally ERG, are hosting a virtual Bystander Intervention training on December 15, 2022, from 2-3pm ET with Right To Be. Right To Be is a nonprofit that seeks to elim inate hara ssment in all forms and seeks to build a world where everyone has the Right To Be who they are, wherever they are.
This one-hour interactive training will teach you Right To Be’s 5Ds of bystander intervention methodology. We’ll start by discussing the types of disrespect that LGB TQIA+ folks are facing right now — from microaggressions to violence — using a tool we call the “spectrum of disrespect.” You’ll learn what to look for, and how bystander intervention positively impacts individuals and communities. We’ll talk through five strategies for intervention: distract, delegate, document, delay, and direct, and how to prioritize your safety while intervening. We’ll have time in the end for practice, and you’ll leave feeling more confident intervening the next time you see anti-LGB TQIA+ harassment.
[image regarding bystander intervention]
[event info]
Broadcast DOC:
Bystander Intervention to Support the LGBTQIA+ community
DOC
Good Morning and Happy Holidays!
As we enter the holiday season, it is more important than ever that all of our colleagues feel welcome at the Department of Commerce. As we strive to eliminate LGBTQIA+ harassment, it is crucial to know how to intervene in a helpful way when you witness it. To teach these best practices, the Office of Civil Rights and Commerce PRIDE, the Department’s LGBTQIA+ and Ally ERG, are hosting a virtual Bystander Intervention training on December 15, 2022, from 2-3pm ET with Right To Be. Right To Be is a nonprofit that seeks to eliminate harassment in all forms and seeks to build a world where everyone has the Right To Be who they are, wherever they are.
This one-hour interactive training will teach you Right To Be’s 5Ds of bystander intervention methodology. We’ll start by discussing the types of disrespect that LGBTQIA+ folks are facing right now — from microaggressions to violence — using a tool we call the “spectrum of disrespect.” You’ll learn what to look for, and how bystander intervention positively impacts individuals and communities. We’ll talk through five strategies for intervention: distract, delegate, document, delay, and direct, and how to prioritize your safety while intervening. We’ll have time in the end for practice, and you’ll leave feeling more confident intervening the next time you see anti-LGBTQIA+ harassment.
[image regarding bystander intervention]
Presented by: Commerce PRIDE & The Office of Civil Rights
When:
Where: via Zoom | Click Here! to Register
REGISTRATION INSTRUCTIONS
Early registration is required. After registering, you will receive a confirmation email containing information about joining the webinar.
To request a Reasonable Accommodation, contact . For questions about Commerce PRIDE, contact pride@doc.gov.
This broadcast was authorized by the Office of Civil Rights
Please do not reply to this message. The broadcast email account is not monitored for incoming mail.
Does this case break any new ground? It seems to apply well-established CE law. Or am I missing something?
I respectfully disagree, Dennis, with your apparent assumption that collateral estoppel should require that the claims in the two patents have identical scope. If that were the rule, collateral estoppel would basically cease to exist in the patent context, since it would likely only apply when claims are word-for-word identical across separate patents (which obviously would rarely if ever exist).
I also don’t understand your comment that the differences “shouldn’t preclude the patentee from arguing those differences.” The parties actually litigated those differences at the district court, as the panel opinion relied on explicit factual findings that the allocation of applications across servers was well known and obvious to a POSITA. The panel noted that patentee chose not to challenge those finding on appeal. Either way, the patentee had at least two opportunities in that litigation to argue that the differences in claim scope were significant enough to preclude collateral estoppel.
Chief Judge Moore authored the opinion. Does anyone else think she has changed since becoming Chief Judge, or is it just me?
“ the appellate panel satisfied itself by pointing to a conclusion in the first case that “distributing software applications across multiple servers was well known to the artisan.” But, that conclusion does not appear to directly implicate the specific first and second server configuration as claimed”
Because why?
MM bro, will they or won’t they?
link to twitter.com
But 6, everyone wants to date AOC…
I want them to have a commie-capitalist baby that will heal the breach and bring peace to mankind.
So, the exact same “court” decides an issue inconsistently, precisely where it’s expertise is supposed to lie (i.e., analysis of 103 references). That’s a bit…embarrassing.
Thanks OC, I think that I am following you.
To the notion of, “Thee question is whether the differences “materially alter the question of invalidity.”
The fact of the matter is that one claim DID survive and the other did not.
Would not this BE dispositive (and wouldn’t Google be estopped from their trying to assert otherwise?
Ah wait, the term “re-litigate” threw me. Both of these are still PTAB-related, so “litigate” is not quite the term I was thinking of (with that term constrained to Article III proceedings).
Funny though — Google being the one to advance multiple IPR’s and NOW claiming that what they advanced in one was the same as what they chose to advance in another.
Would not then this be an admission against interests in their choice to attack under separate IPRs?
“Would not then this be an admission against interests in their choice to attack under separate IPRs?”
Well . . . yes it would be.
Then again . . . it is . . . Google, after all.
The CAFC’s Golden Child.
Comments are closed.