Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

Google LLC v. Hammond Development International, Inc., Appeal No. 2021-2218 (Fed. Cir. Dec. 8, 2022)

In the only precedential patent decision this week, the Federal Circuit issued a decision concerning the effect of collateral estoppel in an inter partes review (IPR) based on a previous IPR decision. The Court affirmed an obviousness finding where the Patent Trial and Appeal Board's (PTAB) prior, final, unappealed written decision concerning a related patent would have been dispositive of obviousness over the patent at issue.

The ’816 patent at issue “discloses a communication system that allows a communication device to remotely execute one or more applications.” Google petitioned for IPR of all claims of the ’816 patent, asserting all claims would have been obvious in view of several combinations of prior art. “On June 4, 2021, the Board held claims 1-13 and 20-30 would have been obvious over combinations.” The PTAB further determined that Google failed to show claims 14-19 would have been unpatentable as obvious. Google appealed the PTAB’s final written decision as to claims 14-19. Google previously petitioned for IPR of a related patent—the ’483 patent. The ’816 patent and the ’483 patent share ‎the same specification. Several months prior to the PTAB’s finding on the ’816 patent, the PTAB issued a ‎final written decision finding all challenged claims of the ’483 patent would have been obvious. Hammond did ‎not appeal the PTAB’s final written decision on the ’483 patent, and that decision became final on June 14, 2021.

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By Annie White

Edited by Nika Aldrich and Scott D. Eads, at Schwabe, Williamson & Wyatt