Case: 21-1179 Document: 48 Page: 1 Filed: 05/19/2022
United States Court of Appeals for the Federal Circuit ______________________
GOOGLE LLC, Appellant
v.
IPA TECHNOLOGIES INC., Appellee ______________________
2021-1179, 2021-1180, 2021-1185 ______________________
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019- 00728, IPR2019-00730, IPR2019-00731. ______________________
Decided: May 19, 2022 ______________________
NAVEEN MODI, Paul Hastings LLP, Washington, DC, argued for appellant. Also represented by ARVIND JAIRAM, STEPHEN BLAKE KINNAIRD, JOSEPH PALYS, DANIEL ZEILBERGER; MICHAEL C. HENDERSHOT, Jones Day, Palo Alto, CA.
STEVEN WAYNE HARTSELL, Skiermont Derby LLP, Dal- las, TX, argued for appellee. Also represented by JAIME OLIN, PAUL SKIERMONT, SARAH ELIZABETH SPIRES; MIEKE K. MALMBERG, Los Angeles, CA. ______________________
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Before DYK, SCHALL, and TARANTO, Circuit Judges. Dyk, Circuit Judge. Google LLC (“Google”) appeals three inter partes re- view (“IPR”) decisions of the Patent Trial and Appeal Board (“Board”) concluding that Google had not shown the chal- lenged claims in U.S. Patent Nos. 6,851,115 (“the ’115 pa- tent”) and 7,069,560 (“the ’560 patent”) to be unpatentable. Because the Board failed to resolve fundamental testimo- nial conflicts in concluding that the relied-upon reference was not prior art, we vacate the decisions and remand for further proceedings consistent with this opinion. BACKGROUND The ’115 and ’560 patents relate to a “software-based architecture . . . for supporting cooperative task completion by flexible, dynamic configurations of autonomous elec- tronic agents.” J.A. 95; see also J.A. 131. In particular, the patents disclose that “[c]ommunications and cooperation between agents are brokered by one or more facilitators” and that “[t]he facilitators employ strategic reasoning for generating a goal satisfaction plan to fulfill arbitrarily com- plex goals by users and service requesting agents.” J.A. 95. Both patents list David L. Martin and Adam J. Cheyer as inventors. Claim 22 of the ’560 patent, which is representa- tive for purposes of the discussion in this opinion, requires, among other things, a “facilitator agent” that performs var- ious functions. ’560 patent, col. 31, l. 61–col. 32, l. 16. The patent applications resulting in the ’115 and ’560 patents were filed on January 5, 1999, and March 17, 1999 respectively. The underlying technology, known as the Open Agent Architecture (“OAA”), was conceived at SRI International (“SRI”) in the 1990s. Martin, Cheyer, (both SRI employees) and a third SRI employee, Dr. Doug- las B. Moran, had earlier co-authored an academic paper entitled “Building Distributed Software Systems with the Open Agent Architecture” (“the Martin reference”) that
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was published in the Proceedings of the Third Interna- tional Conference on the Practical Application of Intelli- gent Agents and Multi-Agent Technology, which took place March 23–25, 1998. The Martin reference describes the OAA project developed at SRI and, significantly for present purposes, at least some of the technology embodied in the claims of the ’115 and ’560 patents. During the prosecution of the ’115 patent, various claims were rejected based on the Martin reference, which the examiner identified as being prior art. In response, SRI contested the prior art status of the reference by submit- ting inventor declarations by Martin and Cheyer under 37 C.F.R. § 1.132, asserting that Dr. Moran was “not a co-in- ventor of the subject matter described in the subject matter disclosed and claimed in the instant application[s].” J.A. 11172–75. If Dr. Moran was not a co-inventor of the Martin reference, the Martin reference was not prior art because it was made by the same inventive entity as the ’115 and ’560 patents and not “by others.” 35 U.S.C. § 102(a) (pre-AIA). 1 After receiving the declarations, the examiner withdrew the rejections based on the Martin ref- erence and continued examining the applications. The pa- tents were granted and ultimately assigned to appellee IPA Technologies, Inc. (“IPA”). In February 2019, Google petitioned the Board for inter partes review of various claims of the ’115 and ’560 patents, relying primarily on the Martin reference to argue that the claims would have been obvious. Google contended that the Martin reference was prior art as work “by others” be- cause it described the work of an inventive entity (Martin, Cheyer and Dr. Moran) different from the inventive entity of the challenged patents (Martin and Cheyer). The Board
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instituted review but concluded after the trial proceedings that Google “ha[d] not provided sufficient support to ex- plain how Dr. Moran’s contribution [wa]s sufficient to es- tablish he [wa]s an inventive entity with respect to the Martin reference by a preponderance of the evidence” and that Google thus failed to “establish[] that Martin was prior art under § 102(a) to the ’560 Patent.” J.A. 26. 2 Be- cause each of Google’s grounds in its petition relied on the Martin reference, the Board concluded that Google did not establish that any of the challenged claims was unpatent- able. Google appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION I We review the Board’s legal determination de novo and any underlying factual findings for substantial evidence. Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1357 (Fed. Cir. 2019). “[W]hether a reference is a work of others for the purposes of § 102(a) is, like that of inventorship, a question of law based on underlying facts.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 969 (Fed. Cir. 2014) (citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)). Joint inventors need “not physically work together or at the same time, . . . make the same type or amount of con- tribution, or . . . make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. § 116(a). A joint inventor must simply:
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(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that con- tribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art. In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018) (quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)). Accordingly, “to decide whether a reference patent is ‘by another’ . . . , the Board must”: (1) determine what portions of the reference patent were relied on as prior art to anticipate the claim limitations at issue, (2) evaluate the degree to which those portions were conceived ‘by another,’ and (3) decide whether that other person’s contri- bution is significant enough, when measured against the full anticipating disclosure, to render him a joint inventor of the applied portions of the reference patent. Duncan Parking, 914 F.3d at 1358 (quoting pre-AIA 35 U.S.C. § 102(e)). Google argues that the Board improperly imposed a burden on Google to prove that the Martin reference has a different inventive entity than the challenged patents. In response, IPA argues that the Board correctly placed the burden on Google to show what Dr. Moran contributed to the Martin reference. The term “burden of proof” has been used to describe two distinct concepts: the burden of persuasion and the burden of production. The burden of persuasion is “the ul- timate burden assigned to a party who must prove some- thing to a specified degree of certainty.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir.
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2008). In an IPR, “the burden of persuasion is on the peti- tioner to prove ‘unpatentability by a preponderance of the evidence,’ and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)). In contrast, the burden of production, or “going forward with evidence,” is a shifting one, “the allocation of which de- pends on where in the process of trial the issue arises.” Id. at 1379 (quoting Tech. Licensing, 545 F.3d at 1327). The burden of production may be met either by “producing ad- ditional evidence” or by “presenting persuasive argument based on new evidence or evidence already of record.” Tech. Licensing, 545 F.3d at 1327. With respect to the burden of production, the record contains evidence and arguments from Google and IPA in support of their respective positions on the prior art status of the Martin reference. Google, as the petitioner, had the ultimate burden of persuasion to prove unpatentability by a preponderance of the evidence and this burden never shifted. We see no error with the Board’s requiring that Google establish the Martin reference was prior art “by an- other” by showing that Dr. Moran made a significant enough contribution to the portions relied on to invalidate the challenged patents to qualify as a joint inventor of those portions. We next address whether Google satisfied its burden. II Dr. Moran was the most senior computer scientist on the OAA team, worked on the OAA team for five years, au- thored five papers relating to OAA, and was named as a joint inventor on U.S. Patent No. 6,859,931 (“the ’931 pa- tent”), which is a continuation-in-part of the application that resulted in the ’115 patent. The ’931 patent claims appear to be directed at the same computer architecture as the ’115 and ’560 patents with an additional “bridge agent” capable of communicating with and incorporating other
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distributed component systems. E.g., ’931 patent, col. 33, l. 4–col. 34, l. 10. Although Dr. Moran did “little program- ming for OAA after 1995” due to a nerve injury, he claims that he “conducted code reviews and design sessions” on top of his primary responsibility for “presentations, demon- stration scenarios, funding proposals and research publica- tions.” J.A. 3665. According to Cheyer, Dr. Moran “helped solve specific problems, mostly at the application level” in the OAA project. J.A. 8790. The Board found that Dr. Mo- ran contributed “supporting foundational concepts” to the OAA project. J.A. 17. It is evident that Dr. Moran made general technical contributions to the OAA project. But that is not the relevant inquiry. To be a joint inventor of the Martin reference, as recognized in Duncan Parking, he must have made an inventive contribution to the portions of the reference relied on and relevant to establishing obvi- ousness. See 914 F.3d at 1358. 3 Here, Google claims that the description in the Martin reference of using a facilitator is, in part, grounds for find- ing that the Martin reference rendered the claims obvious, and that Dr. Moran made an inventive contribution to the facilitator concept recited in the Martin reference. Specifi- cally, Dr. Moran claimed to “play[] a significant role regard- ing the distributed agent-based approach, and in particular using a facilitator, as described in the [Martin reference] at
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Section 4 and 4.1–4.5.” J.A. 3692. 4 Section 4.5 of the Mar- tin reference states: Facilitation plays a central role in OAA. At its core, our notion of facilitation is similar to that proposed by Genesereth [] and others. In short, a facilitator maintains a knowledge base that records the capa- bilities of a collection of agents, and uses that knowledge to assist requesters and providers of services in making contact. But our notion of facil- itation is also considerably stronger in three re- spects. J.A. 3954 (internal citation omitted). The reference then identifies three ways in which its facilitator differs from the prior art: “transparent delegation,” “handling of com- pound goals” via delegation, optimization, and interpreta- tion, and using “strategies and advice given by the requesting agent.” J.A. 3954–55. These concepts found
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their way into the specification of the ’560 patent. See ’560 patent, col. 19, ll. 14–62. When asked about Dr. Moran’s contributions to OAA, Cheyer acknowledged Dr. Moran’s assistance with tech- nical problems “at the application level” but stated that Dr. Moran did not “influenc[e] core OAA architecture or struc- ture.” J.A. 8790–91. Cheyer describes Dr. Moran’s state- ments about “having multiple facilitator architectures and a recursive structure” as a “mischaracterization of his role” because those concepts “clearly existed before he ever be- came involved with the project,” dating back to “the very first OAA paper.” J.A. 8819–22. Martin testified that he and Cheyer were responsible for the technical details in the Martin reference, and that Dr. Moran’s role on OAA was “administrative.” J.A. 8889. When presented with other articles relating to technical as- pects of OAA listing Dr. Moran as an author, Martin acknowledged that Dr. Moran “may have made contribu- tions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA” but with the caveat that these were topics that were “not necessarily part of OAA per se.” J.A. 8907. The testimony of Dr. Moran, if credited, might well es- tablish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims. However, the Board did not complete the full Duncan analysis. Instead, it ap- pears to have concluded that Dr. Moran’s testimony was insufficiently corroborated, “agree[ing] with Patent Owner that Dr. Moran’s [claimed contributions to the Martin ref- erence were] . . . not supported by additional evidence at trial,” and that the “record lack[ed] sufficient supporting evidence to establish the contributions of Dr. Moran and Messrs. Cheyer and Martin, beyond the Rule 1.132 decla- rations.” J.A. 22–23.
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Both parties appear to agree that the Board held Dr. Moran’s testimony was insufficiently corroborated. Con- trary to the Board’s decision, the record reveals more than adequate corroboration of Dr. Moran’s testimony. While the majority of corroboration cases involve issued patents, our cases have also required corroboration of testimony that an individual is an inventor of a potentially invalidat- ing prior art reference that is not a patent. Allergan, 754 F.3d at 969. While “corroborating an inventor’s testimony is a well-established principle in our case law” for purposes of determining inventorship, it is not the case that “an in- ventor must produce contemporaneous documentary evi- dence . . . to support his or her declaration” or that a “high degree of corroboration . . . is required across the board.” EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1346–47 (Fed. Cir. 2017). Although co- authorship does not presumptively make a co-author a co- inventor, e.g., In re Katz, 687 F.2d 450, 455 (CCPA 1982); Allergan, 754 F.3d at 969, it is significant corroborating ev- idence that a co-author contributed to the invention. Here, Dr. Moran’s testimony as to his technical contributions was sufficiently corroborated by his being named as a co-author on the Martin reference, his role within the OAA project, Cheyer’s acknowledgement of Dr. Moran’s technical contri- butions to the OAA project, and Dr. Moran’s being named on the related ’931 patent. The issue in this case was not lack of corroboration for Dr. Moran’s testimony, but rather whether his testimony should ultimately be credited over Cheyer and Martin’s conflicting testimony during the IPR proceedings. 5 Instead of resolving the conflicts, the Board stated that it found
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“the testimony of Dr. Moran, Mr. Martin, and Mr. Cheyer credible with respect to the facts cited herein.” J.A. 17 n.10; see also IPA Br. at 37 (“The Board found all the wit- nesses credible . . . .”); id. at 66 (The Board found that “all the witnesses, including [Dr.] Moran, were ‘credible.’”). This was not a tenable position for the Board to take. The Board was required to resolve this highly relevant eviden- tiary conflict and make appropriate findings of fact. III IPA argues that we can nonetheless affirm because it is inconsistent for Google to claim “that [Dr.] Moran alleg- edly contributed invalidating subject matter to the Martin [reference], yet is correctly excluded as a named inventor of the Patents-at-Issue” because “[i]f the Martin [reference] discloses the key limitations of the inventions claimed in the Patents-at-Issue and [Dr.] Moran, in fact, contributed to the inventive subject matter in the Martin [reference], then, by extension, [Dr.] Moran would have also contrib- uted inventive subject matter to the Patents-at-Issue.” IPA Br. at 46. Of course, if Dr. Moran were a joint inventor on both the Martin reference and the patents-at-issue, then the Martin reference would no longer be prior art “by an- other.” But the named inventors on the patents, Cheyer and Martin, are presumptively “the true and only inven- tors.” Ethicon, 135 F.3d at 1460. IPA cannot raise this argument as a defense without actually seeking correction of inventorship of the patents, which it has not. See Pannu, 155 F.3d at 1350 (“[A] patent with improper inventorship does not avoid invalidation simply because it might be cor- rected under section 256. Rather, the patentee must claim entitlement to relief under the statute and the court must give the patentee an opportunity to correct the inventor- ship.”); Horizon Meds. LLC v. Alkem Labs. Ltd., 2021 WL 5315424, at *3 (Fed. Cir. 2021) (effort to correct
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inventorship of issued patent to avoid pre-AIA 35 U.S.C. § 102(a) prior art). 6 CONCLUSION We vacate the Board’s decisions and remand for fur- ther proceedings consistent with this opinion. VACATED AND REMANDED COSTS No costs.
Footnotes
[1] Because the patents at issue were filed before March 16, 2013, pre-AIA provisions apply. 35 U.S.C. § 100 (note).
[2] Because Google’s arguments regarding the prior art status of the Martin reference were the same across the three IPR proceedings and that is the sole issue on appeal, unless otherwise noted, we cite only the materials corre- sponding to IPR2019-728 challenging the ’560 patent.
[3] The portions of the reference being considered must be relied upon and relevant to establishing obvious- ness. Otherwise, a party challenging a patent could artifi- cially alter the inventive entity for comparison by citing extraneous portions of a multi-inventor prior art reference, thereby making it “by others” even if the portions of the reference necessary for establishing obviousness had the same inventive entity as the challenged patent.
[4] Dr. Moran also claimed to “play[] a significant role in the approach of using recursion to decompose base goals into subgoals that were then dispatched to agents, e.g., as described in the [Martin reference] at Sections 2.5 and 4.1– 4.2.” J.A. 3692. For our purposes, it is unnecessary to ad- dress this claim because a joint inventor need not contrib- ute to every aspect of a prior art reference, but rather need only make a “contribution [] significant enough, when measured against the full anticipating disclosure, to render him a joint inventor of the applied portions of the [prior art] reference.” Duncan Parking, 914 F.3d at 1358. If, on re- mand, joint inventorship is not found as to the relied-on portions of the Martin reference for the facilitator claim limitation, the Board may have to address the recursion portions of the reference, including Dr. Moran’s role in those portions and what bearing those portions have on the challenged patent claims.
[5] The § 1.132 declarations by Martin and Cheyer, standing alone, were insufficiently focused on the Duncan question to raise a fact issue. See EmeraChem, 859 F.3d at 1345–46.
[6] The Manual of Patent Examining Procedure (“MPEP”) similarly advises applicants that a pre-AIA 35 U.S.C. § 102(a) rejection can be overcome “by adding the coauthors as inventors to the application” assuming the statutory requirements are met. MPEP § 2132.01(I) (9th ed. Rev. 10, June 2020).