Collateral Estoppel Is Applicable in IPRs When the Question of Patentability Is the Same
In Google LLC v. Hammond Development International, Inc. Appeal No. 21-2218, the Federal Circuit held that Google filed an IPR on Hammond’s ’816 patent, which related to and shared a specification with Hammond’s ’483 patent. The PTAB determined that Google failed to meet its burden to show that Claim 18 of the ’816 patent was unpatentable.
Google had successfully challenged Hammond’s ’483 patent in another IPR, including Claim 18 of that patent. The PTAB’s decision in the ’483 patent IPR became final during the pendency of the ’816 patent IPR. Claim 18 of the ’816 patent was identical to Claim 18 of the ’483 patent, except for “language describing the number of application servers.”
Google appealed the PTAB’s decision regarding the ’816 patent IPR, arguing that the PTAB’s determination that Claim 18 of the ’483 patent was unpatentable rendered Claim 18 of the ’816 patent unpatentable based on collateral estoppel.
The Federal Circuit agreed. The court reasoned that collateral estoppel had long applied to IPR proceedings and that patent claims need not be identical for collateral estoppel to apply. The court reasoned that collateral estoppel may apply even if the claim language in the two patents is different, so long as “the difference[s] between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.” The court agreed with Google that Claim 18 of the ’816 patent and Claim 18 of ’483 patent presented identical issues of patentability, finding that the differences between the claims would have been obvious and therefore did not materially alter the patentability analysis. Accordingly, the court reversed the PTAB’s determination as to Claim 18 of the ’816 patent.
Claim Directed to Specific, Hardware-Based Data Structure That Enables Technological Improvement Is Patent-Eligible Under § 101
In Adasa Inc. v. Avery Dennison Corporation, Appeal No. 22-1092, the Federal Circuit held that a claim directed to a specific, hardware-based data structure that enables technological improvements is more than an abstract idea and is patent-eligible under 35 U.S.C § 101.
ADASA sued Avery Dennison for patent infringement in the District of Oregon. The district court granted summary judgment in favor of ADASA that the asserted claim was not ineligible under 35 U.S.C § 101 and was neither anticipated nor obvious. Following trial, the district court entered a financial sanction against Avery Dennison for discovery violations, including failing to disclose a number of infringing products until after the jury verdict. Avery Dennison appealed.
The Federal Circuit affirmed the district court’s holding that the asserted claim was directed to eligible subject matter under § 101. Avery Dennison argued that the claim, which recited a system for assigning a serial number to a RFID chip, was directed to the abstract idea of “assigning meaning to a subsection of a data field[.]” The Federal Circuit disagreed and found instead that, setting aside conventional hardware components, the claim is directed to a specific, hardware-based data structure designed to enable technological improvements, and not a mere mental process. The Federal Circuit relied in particular on the way the claimed system provided unique serial numbers.
The Federal Circuit reversed the district court’s grant of summary judgment of no anticipation or obviousness. In particular, the Court held that triable issues of fact existed despite linguistic differences between prior references and the claim. The Federal Circuit also upheld the award of financial sanctions against Avery Dennison, but remanded for reconsideration of the amount because the District Court awarded sanctions based on the total number of infringing products, rather than the number of infringing products that were untimely disclosed.
Factual Disputes Preclude Grant of Summary Judgment of Improper Inventorship
In Plastipak Packaging, Inc. v. Premium Waters, Inc. Appeal No. 21-2244, the Federal Circuit held that
an overwhelming amount of evidence in favor of summary judgment is not sufficient if the nonmoving party presents evidence on which a reasonable factfinder could rely.
Plastipak sued Premium Waters for infringement of various Plastipak patents. Premium Waters moved for summary judgment of invalidity, asserting that the patents were invalid for failure to name Falzoni as a joint inventor. The district court evaluated two groups of patents, each of which contained at least one of two limitations Premium Waters argued Falzoni contributed to. The district court cited an overwhelming amount of evidence pointing to Falzoni’s contributions, including a 3D model Falzoni sent to the named inventors before they filed the patents. The 3D model arguably disclosed both limitations. The district court concluded that any reasonable fact finder would find that Falzoni was an inventor and granted Premium Waters’ motion.
On appeal, the Federal Circuit reversed and remanded. Reviewing de novo, the Federal Circuit concluded that a reasonable factfinder, taking the evidence in the light most favorable to Plastipak as the nonmoving party, could find Falzoni was not an inventor. For one limitation, there was some evidence on record that the named inventors could have conceived of their inventions independent of Falzoni’s 3D model. And with respect to the other limitation, the Federal Circuit found a genuine dispute of material fact as to whether Falzoni contributed anything other than what was already known in the prior art. Thus, a reasonable fact finder could find that Falzoni did not meaningfully contribute to the patents and was not an inventor.