IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Inter Partes Review (IPR)
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PTO Requests Comments on Revisions to AIA Trial Proceedings

by | Apr 27, 2023 | ,

On April 21, 2023, the US Patent & Trademark Office (PTO) announced that it is seeking public input on proposed modifications to the rules of practice for inter partes reviews (IPRs) and post grant reviews (PGRs) before the Patent Trial & Appeal Board to better align the practices with the PTO’s mission to promote and protect innovation and investment in the same and to provide a less expensive alternative to district court litigation to resolve certain patentability issues while also protecting against patentee harassment.

The PTO is considering promulgating rules that the Director—and, by delegation, the Board—will use to do the following:

  • Exercise the Director’s discretion to institute IPRs and PGRs
  • Provide a procedure for separate briefing on discretionary denial that will allow parties to address relevant issues for discretionary denial without encroaching on the page limit to address the merits of a case
  • Give petitioners the ability to pay additional fees for a higher word-count limit
  • Clarify that all settlement agreements, including pre-institution settlement agreements, are required to be filed with the Board.

To create clear, predictable rules where possible, as opposed to balancing tests that decrease certainty, the PTO is considering changes that would provide for discretionary denials of petitions in the following categories, subject to certain conditions and circumstances as discussed further in the Official Notice:

  • Petitions filed by certain for-profit entities
  • Petitions challenging under-resourced patent owner patents where the patentee has brought or is attempting to bring products to market
  • Petitions challenging patent claims previously subject to a final adjudication upholding the patent claims against patentability challenges in district court or in post-grant proceedings before the PTO
  • Serial petitions
  • Petitions raising previously addressed prior art or arguments
  • Parallel petitions
  • Petitions challenging patents subject to ongoing parallel litigation in district court.

The PTO also seeks comments on proposed threshold definitions that apply to one or more of these categories of petitions subject to discretionary denials. Those definitions set forth the criteria used to determine the following:

  • What constitutes a “substantial relationship” between entities sufficient to trigger or avoid discretionary denial
  • When claim sets are deemed to have “substantial overlap” with challenged claims
  • What constitutes “compelling merits” sufficient to trigger an exception to discretionary denial.

For example, one proposal with respect to the “substantial relationship” is a requirement that a patent owner and petitioner disclose anyone with an ownership interest in the patent owner or petitioner, any government funding related to the patent, any third-party litigation funding support, and any stake any party has in the outcome of the America Invents Act (AIA) proceeding or any parallel proceedings on the challenged claims.

Additional changes being considered by the PTO include the following:

  • Absent exceptional circumstances, requiring petitioners to file a stipulation that neither they nor their privy or real parties in interest have filed prior post-grant proceedings (PGRs, IPRs, covered business methods or ex parte reexaminations) on the challenged claims
  • If petitioners’ post-grant proceeding is instituted, requiring that [...]

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Console Yourself: Patent Owner Bears IPR Estoppel Burden

by | Apr 13, 2023 |

Addressing for the first time the standard and burden of proof for the “reasonably could have raised” requirement for inter partes review (IPR) estoppel to apply, the US Court of Appeals for the Federal Circuit concluded that a patent owner bears the burden of proving that an IPR petitioner is estopped from using invalidity grounds that a skilled searcher conducting a diligent search reasonably could have been expected to discover. Ironburg Inventions Ltd. v. Valve Corp., Case Nos. 21-2296; -2297; 22-1070 (Fed. Cir. Apr. 3, 2023) (Lourie, Stark, JJ.) (Clevenger, J., dissenting).

Ironburg sued Valve for infringing Ironburg’s video game controller patent. Valve responded by filing an IPR petition in 2016. The Patent Trial & Appeal Board partially instituted on three grounds but declined to institute on two other grounds (the Non-Instituted Grounds), as was permitted prior to the Supreme Court’s 2018 decision in SAS Institute Inc. v. Iancu. Valve did not seek remand pursuant to SAS, which would have allowed the Board to consider the Non-Instituted Grounds. In the district court litigation, Valve alleged invalidity based on the Non-Instituted Grounds and grounds Valve learned of from a third party’s IPR filed after Valve filed its IPR (the Non-Petitioned Grounds). Ironburg filed a motion asserting that Valve was estopped, pursuant to 35 U.S.C. § 315(e)(2), from asserting both the Non-Instituted Grounds and the Non-Petitioned Grounds. The district court granted Ironburg’s motion in full, removing all of Valve’s invalidity defenses. After trial, the jury returned a verdict finding that Valve willfully infringed the patent. Valve appealed.

35 U.S.C. § 315(e)(2) precludes an IPR petitioner from asserting invalidity during a district court proceeding based on “any ground that the petitioner raised or reasonably could have raised during that [IPR].” The Federal Circuit first addressed the legal standard needed to meet the “reasonably could have raised” requirement for IPR estoppel. The Court found that the “skilled searcher” standard used by several district courts is appropriate, as opposed to a higher “scorched earth” search standard. The “skilled searcher” standard is consistent with the § 315(e)(2) statutory requirement of discovering prior art references that “reasonably could have been raised.”

The Federal Circuit next addressed which party has the burden to prove what prior art references a skilled searcher reasonably would, or would not, have been expected to discover. The district court placed the burden on Valve, the party challenging the patent’s validity, and determined that Valve did not show how difficult it was to find the Non-Petitioned Grounds that Valve did not initially uncover. The Court noted that the third party that did find the Non-Petitioned Grounds may have used a “scorched earth” search, which would make its discovery of the Non-Petitioned Grounds irrelevant to estoppel. The Court concluded that the patent owner has the burden of proving what a skilled searcher reasonably would have found because the patent holder is looking to benefit from estoppel. The Court explained that this conclusion is consistent with the practice of placing the burden on the party asserting [...]

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Disclaiming Claim Scope: Could the Patentee Have Anticipated This?

by | Apr 6, 2023 |

In the most recent decision in the Apple/VirnetX saga, the US Court of Appeals for the Federal Circuit affirmed a remand ruling from the Patent Trial & Appeal Board finding the challenged claims of VirnetX’s patents unpatentable. VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., Case No. 2020-2271 (Fed. Cir. Mar. 30, 2023) (Moore, C.J.; Hughes, Stark, JJ.) (nonprecedential).

VirnetX owns two patents relating to a “secure mechanism for communicating over the internet.” The patents relate to a system in which a DNS module “intercepts . . . and determines whether [a] request is for a secure site.” The system creates a VPN if the proxy determines that the request is for a secure site. If the proxy determines that the request is not for a secure site, it forwards the request to a conventional DNS.

Mangrove, Apple and Black Swamp (collectively, Mangrove) petitioned for inter partes review (IPR) challenging various claims of the patents. The Board found that all the challenged claims were unpatentable as anticipated by Kiuchi or obvious in view of Kiuchi and other references. VirnetX appealed to the Federal Circuit (Mangrove Appeal). In that appeal, the Federal Circuit determined that, contrary to the Board’s finding, when VirnetX distinguished Aventail during reexamination of one of the patents, VirnetX disclaimed “a system in which a client computer communicates with an intermediate server via a singular, point-to-point connection.” As a consequence of the prosecution disclaimer, the Court found that the claims “require[s] direct communication between the client and target computers.” The Court vacated the Board’s decision and remanded the case for the Board to determine further factual questions regarding Kiuchi because “substantial evidence does not support the Board’s finding that the C-HTTP name server of Kiuchi performs the functions of the claimed DNS proxy module.”

Following the Mangrove Appeal, the Board again found that Kiuchi—the only prior art reference at issue in the present appeal—discloses a “secure network” for the transfer of patient information in a hospital setting and teaches a “direct-communication VPN between the client and target.” As a result, the Board concluded that Kiuchi anticipates all the challenged claims. VirnetX again appealed.

The Federal Circuit first addressed the Board’s conclusion that “Kiuchi teaches a direct-communication VPN and is therefore within the scope of the claims of VirnetX’s … patent, and not an indirect-communication VPN, which would have brought Kiuchi within the scope of VirnetX’s disclaimer.” The Court agreed with the Board that “Kiuchi discloses direct communication that satisfies the claimed VPN.” Specifically, “Kiuchi’s user agent does not communicate with the client-side proxy using a singular, point-to-point connection because the user agent addresses the desired endpoint, and the VPN provides the required message routing for the user agent to receive a response from the desired endpoint.” Moreover, the Court reasoned that Kiuchi’s proxy servers forward data packets and that Kiuchi teaches “the ability to address data to a particular computer,” consistent with the scope of the claims.

Next, the Federal Circuit addressed the Board’s [...]

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No One Likes a Sore Winner: IPR Prevailing Party Can’t Appeal

by | Mar 23, 2023 |

Reaffirming precedent, the US Court of Appeals for the Federal Circuit reiterated the rule that the prevailing party in an inter partes review (IPR) cannot appeal a Patent Trial & Appeal Board decision. Termax Co. v. Illinois Tool Works, Inc., Case Nos. 23-1252; -1254 (Fed. Cir. Mar. 8, 2023) (Dyk, Reyna, Chen, JJ.)

Illinois Tool Works (ITW) asserted that Termax had infringed a patent directed to an automobile fastener. Termax challenged the asserted patent by filing a petition for IPR. The petition was granted, and ultimately the Board agreed with Termax that all the challenged claims of ITW were unpatentable. Both parties appealed.

ITW moved to voluntarily dismiss its own appeal and to dismiss Termax’s cross-appeal. Termax opposed, arguing that the Board erred in its construction of certain claim limitations that have also been incorporated into a new ITW patent.

The Federal Circuit dismissed both appeals. Citing what it called a “familiar rule,” the Court stated that the winner in a lower court or other tribunal cannot ordinarily seek relief in the appellate court. The Court was not persuaded by Termax’s argument that the Board erred in its construction of certain claim limitations, noting that Termax sought to appeal the constructions in the hopes that a Federal Circuit decision in its favor would “collaterally estop Illinois Tool Works from asserting those newly issued claims.” However, the Court refused to hear the appeal prematurely, stating that if ITW asserts the claims of its new patent against Termax in the future, Termax can address the issue at that time.

Practice Note: While an IPR can be a powerful tool for accused infringers, it is not without future risks.



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Show Your Work: PTO Director’s Procedure for Issuing Instructions Is Reviewable

by | Mar 23, 2023 |

The US Court of Appeals for the Federal Circuit affirmed the district court’s finding under the Administrative Procedure Act (APA) that the substance of the US Patent & Trademark Office (PTO) Director’s instructions is unreviewable but reversed the finding that the cloak of unreviewability extended to the procedure used in issuing the instructions. Apple v. Vidal, Case No. 22-1249 (Fed. Cir. Mar. 13, 2023) (Lourie, Taranto, Stoll, JJ.)

The creation of the inter partes review (IPR) program opened new avenues for reviewing the validity of patents following issuance. Since the program’s inception, Congress has recognized that there is a possibility of parallel proceedings at the Patent Trial & Appeal Board and in the district court, that such proceedings could result in conflicting decisions and reduced efficiency in the system. However, Congress left it to the discretion of the two branches to work out such situations among themselves.

As one lever to overcome these issues, Congress provided the Director with unreviewable discretion in deciding whether to institute an IPR. Recently, the Director attempted to leverage this power to increase efficiencies and reduce gamesmanship by instructing the Board on what to consider when instituting an IPR.

Apple and four other companies challenged these instructions in the district court. Apple argued that the Director’s instructions violated the APA by being contrary to the IPR provisions, arbitrary and capricious, and issued without the notice-and-comment rulemaking required under the APA.

Following a motion to dismiss, the district court concluded that Apple’s challenges were directed at the Director’s actions, making them unreviewable by the court. Apple appealed.

On appeal, the Federal Circuit considered all three of Apple’s APA challenges to the instructions, along with whether Apple had standing to bring the suit. The Court agreed with the district court that the question of whether an instruction violates the APA by being contrary to the IPR provisions or by being arbitrary and capricious is directed to the substance of the Director’s action and is not reviewable: “§ 314(a) invests the Director with discretion on the question whether to institute review . . . : The determination by the Director whether to institute an inter partes review . . . shall be final and nonappealable.” As the Federal Circuit noted, this conclusion rests on the well-supported need for the PTO Director to give guidance to delegatees on how to make institution determinations.

The Federal Circuit disagreed that the announcement procedure the Director used for issuing the instructions to the Board was unreviewable, however. As the Court noted, the procedure employed by an agency to announce guidelines is “quite apart” from the substance of those guidelines. Given this distinction, the Court concluded that the procedure the Director used to announce the instructions was reviewable: “The government here has not shown that anything in § 314(d) or elsewhere in the IPR statute supplies clear and convincing evidence that there was to be no judicial review of the choice of announcement procedure, a matter for which generally applicable standards exist.”

The [...]

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Compelling Clarity: PTO Director Explains Compelling Merits Test

by | Mar 9, 2023 |

US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a precedential opinion clarifying the standard under which the Patent Trial & Appeal Board (Board) can institute on an inter partes review (IPR) petition despite the Fintiv factors militating toward denial. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242 (PTO Feb. 27, 2023) (Vidal, Dir.) (precedential).

This opinion follows the Director’s Interim Procedure for Discretionary Denials memorandum (Guidance Memo) and her opinion in OpenSky Indus. v. VLSI Tech. In the guidance memo, the Director explained that when there is “compelling evidence of unpatentability,” the Board may decline to exercise its discretion to deny IPR institution.

In this case, Dali Wireless sued CommScope in the district court, alleging infringement of its patent. CommScope filed a petition to institute an IPR proceeding against the asserted patent. The Board granted the petition and instituted an IPR proceeding while the district court litigation was ongoing.

In granting the petition, the Board acknowledged that it would normally perform a Fintiv analysis to determine whether it should deny the petition in light of the parallel district court proceeding. However, considering the Guidance Memo and the “compelling invalidity challenge” presented by the petitioner, the Board skipped the Fintiv analysis and instituted on the petition. The Director instituted sua sponte review.

Recognizing some ambiguity in both OpenSky and the guidance memo, the Director made her decision precedential to clarify:

My Guidance Memo states that “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” Although I now recognize that this instruction could be read to allow for a compelling merits determination as a substitute for a Fintiv analysis, that was not my intent. By that instruction, I intended for PTAB panels to only consider compelling merits if they first determined that Fintiv factors 1–5 favored a discretionary denial . . . . In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution; the Board shall then assess compelling merits. In doing so, the Board must provide reasoning sufficient to allow the parties to challenge that finding and sufficient to allow for review of the Board’s decision.

A determination of whether the petition presents a compelling merits case for invalidity requires a merits case that meets a higher standard than the “reasonable likelihood” test required by 35 U.S.C. § 314(a).

The Director found that the Board’s decision was deficient in both parts of the analysis. The Board did not perform any analysis of the Fintiv factors but instead went straight to a determination of whether the petition presented a compelling invalidity challenge. In connection with that determination, the Board failed to provide any reasoning that explained why it found the merits case presented in the petition compelling.

Finding that the Board’s reasoning was conclusory, the Director vacated the Board’s decision to institute IPR review and remanded for further proceedings consistent with her decision.

Practice Note: Less [...]

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Little Weight Given to Conclusory Expert Declaration That Repeats IPR Petition Verbatim

by | Mar 2, 2023 |

The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration presented conclusory assertions without underlying factual support and repeated verbatim the petitioner’s argument. Xerox Corp. v. Bytemark, Inc., IPR2022-00624 (PTAB Aug. 24, 2022) (Wood, Grossman, Tartal, APJs); Xerox Corp. v. Bytemark, Inc., IPR2022-00624 (Feb 10, 2023) (Vidal, Dir.)

Bytemark owns a patent directed to a method and system for distributing electronic tickets. According to the patent, a user can procure and store an electronic ticket on a device such as a mobile phone, and when the user presents the ticket, the ticket taker can verify the ticket by inspecting a visual object that a human can perceive without a machine scan. In addition to using a validating visual object, the patent teaches data integrity checking to ensure that the ticket data and the software managing that ticket data on the user’s device has not been altered improperly. As to the data integrity concept, the claims of the patent recite a server that is configured to “store in a data record associated with the user account a data value indicating the fraudulent activity” (fraud limitation).

Xerox filed an IPR petition challenging certain claims of the patent as obvious over the Terrell prior art reference in combination with various secondary references. Xerox argued that Terrell disclosed that after fraudulent activity is detected, “the purchaser of the ticket could be blocked from further use of the system or pursued in respect of their potential fraud.” Xerox asserted that a skilled artisan would understand that such blocking would require recording the blocking in a data record associated with that user’s account, and would find it obvious that blocking the account of the purchaser from further use of the system would include storing a data value indicating the fraudulent activity in a data record associated with the user account.

Bytemark responded that Terrell, at most, taught blocking a ticket purchaser from further use of the Terrell system based on potential fraud, but nowhere indicated that this would be achieved by using a data value indicating fraudulent activity, as opposed to some other manner of blocking a user, such as deleting the user’s account or reporting the user for fraud. Bytemark further argued that Xerox’s argument that a skilled artisan would find the fraud limitation obvious was conclusory and an improper attempt to use a skilled artisan’s common knowledge to supply a wholly missing claim limitation without evidentiary support.

The Board agreed with Bytemark, finding that Xerox did not provide sufficient evidence or persuasive reasoning to support either of Xerox’s arguments. The Board explained that Terrell taught blocking the purchaser rather than the account of the purchaser and that it was far from clear that blocking the purchaser would “require” recording the blocking in a record in the purchaser’s account, as opposed to deleting the purchaser’s account altogether. The Board noted that the [...]

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Review Delayed Is Not Review Denied

by | Feb 16, 2023 | ,

Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written decision, the US Court of Appeals for the Federal Circuit concluded that the statute imposes no such requirement. CyWee Group Ltd. v. Google LLC et al., Case Nos. 20-1565, -1567 (Fed. Cir. Feb. 8, 2023) (Prost, Taranto, Chen, JJ.).

In 2018, Google filed two IPR petitions challenging certain claims of CyWee’s patents. The Board issued its final written decisions in January 2020, determining that all challenged claims were unpatentable for obviousness. CyWee appealed to the Federal Circuit in March 2020. In addition to challenging the patentability decision, CyWee challenged the appointment of Board administrative patent judges (APJs) as unconstitutional in view of the Appointments Clause. In March 2021, the Court affirmed the Board’s decisions and rejected CyWee’s constitutional challenge. The Court issued its mandate on June 10, 2020.

Eleven days later, the Supreme Court of the United States issued its decision in United States v. Arthrex, Inc., holding that APJs’ power to render final patentability decisions unreviewable by an accountable principal officer gave rise to an Appointments Clause violation but this violation could be remedied by, among other things, remanding to the acting PTO Director to decide to rehear the case. In response to a request from CyWee, the Federal Circuit recalled the mandate and remanded “for the limited purpose of allowing CyWee the opportunity to request Director rehearing of the final written decisions,” and required CyWee to inform the Court within 14 days of any decision denying rehearing. On remand, the Commissioner for Patents denied rehearing and ordered that the already-issued final written decisions were final decisions of the PTO. CyWee appealed.

CyWee contended that the post-Arthrex, mandated review by the PTO Director was untimely—and thus violative of due process—because the PTO Director did not have the ability to review the institution decision and final written decision within their respective three-month and one-year statutory deadlines. The Federal Circuit disagreed, calling CyWee’s contentions “meritless.” Rather, the Court found that because the PTO Director had permissibly delegated to the Commissioner for Patents authority to render institution and final decisions to the Board, those decisions were timely so long as the PTO Director’s delegees rendered them within the statutorily prescribed periods. By contrast, the PTO Director’s final review authority—a constitutional necessity born from Arthrex—has no similar statutory deadline.

CyWee also argued that the PTO Director’s later review was too late to satisfy a general requirement that the PTO Director consider the effect of regulations on the PTO’s ability to timely complete instituted IPRs. The Federal Circuit rejected this argument too, finding that even if the statute imposed a general timeliness requirement that was subject to judicial review, nothing about the process afforded to CyWee would have violated such a requirement.

With a different spin on the timeliness issue, CyWee also argued that the Board’s extension [...]

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Contingent Statement Doesn’t Unequivocally Abandon Defense of Challenged Claims

by | Jan 12, 2023 |

The Director of the US Patent & Trademark Office (PTO) initiated a sua sponte review of the Patent Trial & Appeal Board’s (Board) adverse judgments in multiple related inter partes review (IPR) proceedings. The PTO Director ultimately ordered that the judgments be vacated and remanded for further consideration. Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124; -01125; -01126; -01129 (Dec. 21, 2022) (Vidal, Dir.)

Apple filed six petitions for IPR, all of which were instituted and assigned to the same panel of Administrative Patent Judges. After institution, Zipit filed responses to two of the IPRs, but not the other four companion IPRs. The Board held a hearing in the two IPRs for which Zipit filed responses. At the end of the hearing, Zipit’s counsel was asked with reference to the four companion IPRs whether Zipit was “not contesting if a final written decision or adverse judgment was entered with respect to those IPRs.” The counsel responded, “correct . . . if the board determines that [Apple has] met their burden of proof with respect to those claims Zipit hasn’t filed any opposition.” Based on this exchange, the Board determined that Zipit abandoned the contests and entered adverse judgments.

The PTO Director initiated review under the interim process for Director review §§ 13, 22, which allows sua sponte Director review, explaining that notice would be given to parties of the proceedings if such a review was initiated. Upon review, the PTO Director did not consider the counsel’s statements to be an “unequivocal abandonment of the contest of these proceedings.” In an IPR, a petitioner has the “burden of proving a proposition of unpatentability by a preponderance of the evidence” and the “burden from the onset to show with particularity why the patent it challenges is unpatentable.” The PTO Director’s interpretation of Zipit’s statements was that “non-opposition was contingent on the Board determining that [Apple] met its burden of proving by a preponderance of the evidence that the challenged claims are unpatentable.”

The PTO Director thus vacated the Board’s adverse judgments and remanded the proceedings to the panel to issue either an order clarifying whether Zipit indeed abandoned the contest or a final written decision addressing the patentability of the challenged claims.



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Applying Collateral Estoppel in IPRs

by | Dec 15, 2022 |

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 ’816 patent nonobvious and patentable. Google appealed.

Claim 14 is an independent claim and claim 18 depends from it. The parties agreed that the patentability of both claims rose and fell together. On appeal to the Federal Circuit, Google argued that claim 18 was invalid under the doctrine of collateral estoppel based on the prior art that rendered claim 18 of the ’483 patent invalid.

A party seeking to invoke collateral estoppel must show the following:

  • The issue is identical to one decided in the first action.
  • The issue was actually litigated in the first action.
  • Resolution of the issue was essential to a final judgment in the first action.
  • The party against whom collateral estoppel is being asserted had a full and fair opportunity to litigate the issue in the first action.

Because the parties had agreed that all but the first of the elements of collateral estoppel were met, collateral estoppel would apply if the issues of patentability were identical between the adjudicated and unadjudicated claims. The Federal Circuit found that slight differences in the claim language of the involved patents were immaterial because they related only to the number of application servers, and Google’s expert had credibly testified that distributing software applications across multiple servers was well known in the art and obvious. Hammond did not mount a substantive challenge to the expert evidence. As the Court noted, “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.’”

Google also attacked the validity of independent claim 14 of the ’816 patent. Although Google’s attack against claim 14 was based on a different combination of references (as compared to claim 18), the Federal Circuit apparently applied collateral estoppel to find claim 14 invalid as well, citing an agreement between the parties that “if claim 18 is unpatentable, then independent claim 14 is as well.”

Finally, Google argued that dependent [...]

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