“The Board was required to resolve this highly relevant evidentiary conflict and make appropriate findings of fact.” – CAFC
The U.S. Court of Appeals for the Federal Circuit (CAFC) today vacated and remanded three decisions of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that had found Google failed to prove the relevant claims of IPA Technologies, Inc.’s patents to be unpatentable. The CAFC found that the PTAB “failed to resolve fundamental testimonial conflicts in concluding that the relied-upon reference was not prior art.”
The patents in question are U.S. Patent Nos. 6,851,115 (“the ’115 patent”) and 7,069,560 (“the ’560 patent”). They cover “a software-based architecture . . . for supporting cooperative task completion by flexible, dynamic configurations of autonomous electronic agents.” Specifically, 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 complex goals by users and service requesting agents.” The patents list David L. Martin and Adam J. Cheyer as inventors.
At issue was an academic paper authored by Martin, Cheyer and Douglas Moran, titled “Building Distributed Software Systems with the Open Agent Architecture” (OAA) (the “Martin reference”). The Martin reference describes the OAA project and “at least some of the technology embodied in the claims of the ’115 and ’560 patents.” During prosecution, SRI International, where the underlying technology of the patents was originally conceived, argued in response to the examiner’s rejection of various claims based on the Martin reference that Moran was “not a co-inventor of the subject matter described in the subject matter disclosed and claimed in the instant application[s],” which meant the reference could not be prior art as it was “made by the same inventive entity as the ’115 and ’560 patents and not ‘by others.’” The examiner ultimately withdrew the rejections and granted the patents, which were later assigned to IPA Technologies.
Google petitioned for inter partes review (IPR) of a number claims of both patents in February 2019, relying on the Martin reference to prove the claims obvious and arguing the reference was prior art as work “by others.” The PTAB concluded that Google had not proven that Moran was an inventive entity by a preponderance of the evidence, however, and thus failed to show that the Martin reference was prior art.
In its discussion on appeal, the CAFC explained that the PTAB did not err in putting the ultimate burden of persuasion with respect to proving that the Martin reference was prior art “by another” on Google, but said the Board failed to conduct the proper analysis set out in Duncan Parking Techs., Inc. v. IPS Grp., Inc. That analysis requires the Board to:
(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 contribution is significant enough, when measured against the full anticipating disclosure, to render him a joint inventor of the applied portions of the reference patent.
Here, the PTAB agreed with IPA that Moran’s testimony was insufficiently corroborated, his claimed contributions to the Martin reference unsupported by additional evidence at trial and that the record lacked sufficient supporting evidence to establish his contributions. But the CAFC said “[c]ontrary to the Board’s decision, the record reveals more than adequate corroboration of Dr. Moran’s testimony.” Specifically, “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 contributions to the OAA project, and Dr. Moran’s being named on the related ’931 patent.”
The issue the Board failed to address was whether Moran’s testimony should have been credited over Cheyer’s and Martin’s conflicting testimony during the IPRs, but instead the Board merely said it found all of the witnesses credible. “This was not a tenable position for the Board to take. The Board was required to resolve this highly relevant evidentiary conflict and make appropriate findings of fact,” said the CAFC.
The court also dismissed IPA’s argument that it was inconsistent for Google to argue that Moran contributed invalidating subject matter to the patents but to agree he was correctly excluded as a named inventor on the patents at issue. The CAFC said that IPA could not raise this argument as a defense without seeking correction of inventorship on the patents.