Case: 21-2218 Document: 40 Page: 1 Filed: 12/08/2022
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`
`
` United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GOOGLE LLC,
`Appellant
`
`v.
`
`HAMMOND DEVELOPMENT INTERNATIONAL,
`INC.,
`Appellee
`______________________
`
`2021-2218
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`00081.
`
`______________________
`
`Decided: December 8, 2022
`______________________
`
`J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP, Washington, DC, argued for ap-
`pellant. Also represented by ERIKA ARNER, SYDNEY
`KESTLE; KEVIN D. RODKEY, Atlanta, GA; DANIEL C.
`TUCKER, Reston, VA.
`
` TIMOTHY EDWARD GROCHOCINSKI, Nelson Bumgardner
`Conroy PC, Orland Park, IL, argued for appellee. Also rep-
`resented by CHARLES AUSTIN GINNINGS.
` ______________________
`
`
`

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`Case: 21-2218 Document: 40 Page: 2 Filed: 12/08/2022
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`2
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`GOOGLE LLC v.
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.
`
`Before MOORE, Chief Judge, CHEN and STOLL, Circuit
`Judges.
`
`MOORE, Chief Judge.
`Google LLC (Google) appeals from an inter partes re-
`view final written decision in which the Patent Trial and
`Appeal Board held that Google failed to prove claims 14–19
`of U.S. Patent No. 10,270,816 would have been obvious.
`For the following reasons, we reverse in part and affirm in
`part.
`
`BACKGROUND
`A
`Hammond Development International, Inc. (Ham-
`mond) owns the ’816 patent, which discloses a communica-
`tion system that allows a communication device to
`remotely execute one or more applications. ’816 patent at
`1:20–24. Claims 14 and 18 are representative:
`14. A communication system, comprising:
`a plurality of application servers;
`a first communication link coupled to the
`plurality of application servers, the first
`communication link comprising a data con-
`nection;
`a first one of the plurality of application
`servers configured to execute a first applica-
`tion to establish a communication session
`with at least one communication device
`coupled to the first communication link in
`response to a request from the at least one
`communication device to establish the com-
`munication session;
`a second one of the plurality of application
`servers coupled to a second communication
`link, the second one of the plurality of serv-
`ers either (a) configured to receive a second
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`Case: 21-2218 Document: 40 Page: 3 Filed: 12/08/2022
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`GOOGLE LLC v.
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.
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`3
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`application from at least one repository
`having a database maintaining the second
`application over the second communication
`link, or (b) configured to cause an execution
`of the second application via the second
`communication link;
`wherein the second communication link
`comprises a data connection;
`wherein the second one of the plurality of
`application servers is configured to execute
`or cause the execution of the second appli-
`cation remote from the at least one commu-
`nication device;
`wherein at least one of the plurality of ap-
`plication servers is configured to communi-
`cate a request for processing service to the at
`least one communication device; and
`wherein the request for processing service
`is communicated to the at least one commu-
`nication device over the first communica-
`tion link.
`18. The communication system of claim 14, wherein the
`request for processing service comprises an instruction
`to present a user of the at least one communication de-
`vice voice data or audio data.
`
`Google petitioned for IPR of all claims of the ’816 patent
`but did not assert the same grounds against all claims.
`Google alleged independent claim 1 would have been obvi-
`ous in view of Gilmore, Dhara, and Dodrill. As relevant
`here, it argued Gilmore and Dodrill together taught
`claim 1’s limitations reciting “the application server is con-
`figured to transmit . . . a request for processing service . . .
`to the at least one communication device” and “wherein the
`request for processing service comprises an instruction to
`present a user of the at least one communication device the
`voice representation,” which the Board and parties refer to
`
`

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`Case: 21-2218 Document: 40 Page: 4 Filed: 12/08/2022
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`4
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`GOOGLE LLC v.
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.
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`as the first and second “request for processing service” lim-
`itations, respectively. Google alleged independent claim
`14, which also recites the first request for processing ser-
`vice limitation, would have been obvious in view of Gilmore
`and Creamer. Google reintroduced Dodrill in its argu-
`ments concerning claims 18 and 19, which depend from
`claim 14 but also recite the second request for processing
`service limitation. Specifically, Google alleged claim 18
`would have been obvious in view of Gilmore, Creamer, and
`Dodrill and claim 19 would have been obvious in view of
`Gilmore, Creamer, Dodrill, and Ladd.
`On June 4, 2021, the Board held claims 1–13 and 20–30
`would have been obvious over combinations including Gil-
`more and Dodrill. In particular, the Board found the com-
`bination of Gilmore and Dodrill teaches both request for
`processing service limitations. The Board determined that
`Google failed to show claim 14 would have been obvious in
`view of Gilmore and Creamer. The Board found that Gil-
`more and Creamer did not teach or suggest claim 14’s first
`request for processing service limitation. Having found a
`failure of proof as to independent claim 14, the Board held
`that Google also failed to show dependent claims 15–17
`were unpatentable. For dependent claims 18 and 19, the
`Board interpreted Google’s petition as relying on Dodrill to
`teach only the second request for processing service limita-
`tion recited in claim 18, since Google had not relied on Do-
`drill to teach the first request for processing service
`limitation of claim 14. Because Gilmore and Creamer did
`not teach the first request for processing service limitation,
`the Board held that Google failed to show claims 18 and 19
`were unpatentable.
`
`B
`Google previously petitioned for IPR of Hammond’s
`U.S. Patent No. 9,264,483. The ’816 and ’483 patents are
`related and share the same specification. On April 12,
`2021, the Board issued a final written decision determining
`all challenged claims of the ’483 patent would have been
`
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`Case: 21-2218 Document: 40 Page: 5 Filed: 12/08/2022
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`GOOGLE LLC v.
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.
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`obvious based on prior art combinations that included Gil-
`more and Dodrill. Specifically, the Board found that Gil-
`more and Dodrill teach or suggest both request for
`processing service limitations, which are also in, amongst
`others, claim 18 of the ’483 patent. Hammond did not ap-
`peal the Board’s final written decision invalidating the
`challenged claims of the ’483 patent, and it became final on
`June 14, 2021. 37 C.F.R. § 90.3.
`Google appeals the Board’s determination that claims
`14–19 of the ’816 patent are not unpatentable. We have
`jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`Google argues the Board’s determination that claim 18
`of the ’483 patent is unpatentable renders claim 18 of the
`’816 patent unpatentable based on collateral estoppel. We
`agree. The parties agree that the patentability of claim 14
`of the ’816 patent rises and falls with claim 18 of the ’816
`patent. Thus, we also hold claim 14 unpatentable. We do
`not agree, however, with Google’s argument that depend-
`ent claims 15–17 and 19 would have been obvious based on
`the Board’s findings as to parallel dependent claims.
`I
`We review the Board’s conclusions of law de novo and
`its findings of fact for substantial evidence. In re NuVasive,
`Inc., 841 F.3d 966, 971 (Fed. Cir. 2016). The ultimate ques-
`tion of collateral estoppel is a legal question, which we re-
`view de novo. Ohio Willow Wood Co. v. Alps S., LLC, 735
`F.3d 1333, 1341 (Fed. Cir. 2013). Like many legal doc-
`trines, however, collateral estoppel may implicate underly-
`ing facts, which we review for substantial evidence.
`A
`Before addressing the merits of the parties’ arguments,
`we first consider whether Google forfeited its collateral es-
`toppel argument. We conclude it did not. Although Google
`did not raise its present collateral estoppel argument in its
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`Case: 21-2218 Document: 40 Page: 6 Filed: 12/08/2022
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`GOOGLE LLC v.
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.
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`petition, that omission does not result in forfeiture in this
`case. The preclusive judgment on which Google now relies,
`the ’483 patent final written decision, issued on April 12,
`2021, and became final on June 14, 2021, both of which oc-
`curred well after Google filed its petition in the ’816 IPR.
`Thus, Google could not have raised its collateral estoppel
`argument in its petition because the preclusive judgment
`did not yet exist. In such circumstances, Google did not
`forfeit its collateral estoppel argument by raising it for the
`first time on appeal. Soverain Software LLC v. Victoria’s
`Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1315 (Fed.
`Cir. 2015) (noting collateral estoppel “applies even though
`the precluding judgment . . . comes into existence while the
`case as to which preclusion is sought . . . is on appeal”).
`B
`We now turn to whether the ’483 decision has preclu-
`sive effect in this case. It is well established that collateral
`estoppel applies to IPR proceedings. Papst Licensing
`GMBH & Co. KG v. Samsung Elecs. Am., Inc., 924 F.3d
`1243, 1251 (Fed. Cir. 2019) (“[T]he issue preclusion doc-
`trine can apply in this court to the Patent Trial and Appeal
`Board’s decision in an IPR once it becomes final.”). The
`party seeking to invoke collateral estoppel must show:
`(1) the issue is identical to one decided in
`the first action; (2) the issue was actually
`litigated in the first action; (3) resolution of
`the issue was essential to a final judgment
`in the first action; and (4) [the party
`against whom collateral estoppel is being
`asserted] had a full and fair opportunity to
`litigate the issue in the first action.
`In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994).
`Here, the parties dispute only the first requirement:
`whether the issues are identical. It is well established that
`patent claims need not be identical for collateral estoppel
`to apply. Soverain Software,778 F.3d at 1319. Rather,
`
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`Case: 21-2218 Document: 40 Page: 7 Filed: 12/08/2022
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`GOOGLE LLC v.
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.
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`7
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`collateral estoppel requires that the issues of patentability
`be identical. Ohio Willow Wood, 735 F.3d at 1342. Thus,
`collateral estoppel may apply even if the patent claims “use
`slightly different language to describe substantially the
`same invention,” so long as “the differences between the
`unadjudicated patent claims and adjudicated patent claims
`do not materially alter the question of invalidity.” Id.
`Whether the differences between the patent claims mate-
`rially alter the question of patentability is a legal conclu-
`sion based on underlying facts.
`Google argues claim 18 of the ’816 patent and claim 18
`of the ’483 patent present identical issues of patentability
`such that collateral estoppel applies. We agree. Both
`claims recite a communication system which allows a com-
`munication device to remotely execute one or more applica-
`tions, wherein an application server communicates a
`request for processing service to the communication device
`and that request includes an instruction to present the
`user with voice or audio data. Compare ’816 patent at
`14:47–15:10, 15:21–24, with ’483 patent at 14:3–33, 56–62.
`The only difference between the claims is the language de-
`scribing the number of application servers. Claim 18 of the
`’816 patent requires “a first one of the plurality of applica-
`tion servers configured to execute a first application” and
`“a second one of the plurality of application servers . . . ei-
`ther (a) configured to receive a second application . . . or
`(b) configured to cause an execution of the second applica-
`tion.” ’816 patent at 14:52–65. Claim 18 of the ’483 patent
`instead recites “one or more application servers” and re-
`quires “the at least one application server” is operable to
`perform the remaining functionality. ’483 patent at 14:6–
`10, 17–25.
`For purposes of this appeal, this difference does not
`materially alter the question of patentability. The Board
`found the “plurality of servers” limitation of claim 18 of the
`’816 patent would have been obvious, explaining that “dis-
`tributing software applications across multiple servers was
`well known to the artisan” and crediting Google’s expert
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`Case: 21-2218 Document: 40 Page: 8 Filed: 12/08/2022
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`GOOGLE LLC v.
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.
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`testimony that an artisan “‘would have found it obvious to
`host each of’ Gilmore’s applications ‘on separate servers
`(each executing its own “application”).’” J.A. 82–83;
`J.A. 2274–77 ¶¶ 242, 244, 247–251. Hammond does not
`challenge these factual findings on appeal. Accordingly,
`this difference is immaterial to our patentability analysis
`in the context of collateral estoppel. See, e.g., Soverain
`Software, 778 F.3d at 1319–20 (holding that the unadjudi-
`cated claim’s additional limitation did not materially alter
`the question of patentability because it simply involved the
`“routine incorporation of [i]nternet technology into existing
`processes,” which would have been obvious). We conclude
`claim 18 of the ’816 patent and claim 18 of the ’483 patent
`are materially identical for purposes of collateral estoppel.
`Since the issues of patentability of claim 18 of the ’483
`patent and claim 18 of the ’816 patent are identical and the
`other elements of collateral are undisputed, collateral es-
`toppel applies and we accordingly hold claim 18 of the ’816
`patent unpatentable.1 Further, the parties agree that if
`claim 18 is unpatentable, then independent claim 14 is as
`well. Oral Arg. at 30:25–30:47, 32:34–33:25, 37:00–37:08.
`Accordingly, by agreement of the parties, we hold claim 14
`unpatentable.2
`
`
`
`1 Because we hold collateral estoppel applies to
`claim 18, we do not reach Google’s remaining argument
`that the Board’s determinations with respect to claims 1
`and 18 of the ’816 patent are inconsistent.
`2 While Google did not challenge claim 14 based on
`the same combination of prior art asserted against claim
`18, Hammond does not argue that Google’s collateral estop-
`pel arguments are limited to the references asserted in its
`petition. See Oral Arg. at 30:25–30:47, 32:34–33:25, 37:00–
`37:08. Thus, we do not consider the impact of the grounds
`raised in Google’s petition on the patentability of claim 14.
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`Case: 21-2218 Document: 40 Page: 9 Filed: 12/08/2022
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`GOOGLE LLC v.
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.
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`C
`Google next argues that dependent claims 15–17 and
`19 should fall because the Board found similar limitations
`in parallel dependent claims would have been obvious over
`the same prior art combinations. However, Google failed
`to raise any collateral estoppel arguments with respect to
`these claims and, unlike claim 14, there was no admission
`that, if claim 18 is unpatentable, claims 15–17 and 19 are
`unpatentable as well. See Oral Arg. at 33:26–33:47. The
`Board held that Google failed to show these dependent
`claims would have been obvious. Google, who bears the
`burden on appeal, has failed to convince us that the Board’s
`determinations should be reversed. Accordingly, we affirm
`the Board’s determinations that claims 15–17 and 19 are
`not unpatentable.
`
`CONCLUSION
`Because collateral estoppel renders claim 18 unpatent-
`able and the parties agree that the patentability of claim
`14 rises and falls with claim 18, we reverse the Board’s de-
`terminations with respect to these claims. The Board’s de-
`termination that claims 15–17 and 19 are not unpatentable
`is affirmed.
`REVERSED IN PART AND AFFIRMED IN PART
`COSTS
`
`No costs.
`
`