Google, LLC v. Hammond Development International, Inc., No. 21-2218 (Fed. Cir. 2022)
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Google previously petitioned for inter partes review (IPR) of Hammond’s 483 patent, which is related to and shares the same specification as the 816 patent, disclosing a communication system that allows a communication device to execute one or more applications remotely. The Patent Trial and Appeal Board determined that all challenged claims of the 483 patent would have been obvious based on prior art combinations that included Gilmore and Dodrill. Hammond did not appeal and the decision became final.
Google petitioned for IPR of all claims of the 816 patent but did not assert the same grounds against all claims. The Board held claims 1–13 and 20–30 would have been obvious over combinations of prior art, including Gilmore and Dodrill; Google failed to show claim 14 would have been obvious in view of prior art (Gilmore and Creamer) and also failed to show dependent claims 15–19 were unpatentable.
The Federal Circuit reversed in part. 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. Claim 14 of the 816 patent rises and falls with claim 18 and is, therefore, unpatentable. The court rejected Google’s argument that dependent claims 15–17 and 19 would have been obvious based on the Board’s findings as to parallel dependent claims.
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