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ARTICLE · 21 DECEMBER 2022

Applying Collateral Estoppel In IPRs

McDermott Will & Emery
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The US Court of Appeals for the Federal Circuit considered whether a dependent claim invalidated by collateral estoppel also invalidates its parental independent claim. Google LLC v. Hammond Devel. Int'l, Inc...

United StatesIntellectual Property
Alexandra Cavazos, PhD
Alexandra Cavazos, PhD

The US Court of Appeals for the Federal Circuit considered whether a dependent claim invalidated by collateral estoppel also invalidates its parental independent claim. Google LLC v. Hammond Devel. Int'l, Inc., Case No. 21-2218 (Fed. Cir. Dec. 8, 2022) (Moore, C.J.; Chen, Stoll, JJ.)

The dispute began when Hammond Development sued Google, alleging that Google infringed several of Hammond's patents on automated voice response systems. In response, Google filed multiple inter partes reviews (IPRs), one of which targeted Hammond's '483 patent. In that proceeding, the Patent Trial & Appeal Board (Board) held that all claims of the '483 patent were obvious. Hammond did not appeal the decision in this IPR, which then became final, but only after Google filed an IPR against another of Hammond's patents—the '816 patent. The '816 and '483 patents are in the same family and share the same specification. In the later-filed IPR, the Board found claims 14 through 19 of the

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