Google LLC v. Ipa Technologies Inc. ( 2022 )


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  • 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.
    ______________________
    Case: 21-1179     Document: 48      Page: 2    Filed: 05/19/2022
    2                        GOOGLE LLC   v. IPA TECHNOLOGIES INC.
    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
    Case: 21-1179     Document: 48     Page: 3    Filed: 05/19/2022
    GOOGLE LLC   v. IPA TECHNOLOGIES INC.                      3
    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
    1   Because the patents at issue were filed before
    March 16, 2013, pre-AIA provisions apply. 
    35 U.S.C. § 100
    (note).
    Case: 21-1179    Document: 48      Page: 4    Filed: 05/19/2022
    4                       GOOGLE LLC   v. IPA TECHNOLOGIES INC.
    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:
    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.
    Case: 21-1179     Document: 48     Page: 5   Filed: 05/19/2022
    GOOGLE LLC   v. IPA TECHNOLOGIES INC.                      5
    (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.
    Case: 21-1179    Document: 48      Page: 6    Filed: 05/19/2022
    6                       GOOGLE LLC   v. IPA TECHNOLOGIES INC.
    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
    Case: 21-1179     Document: 48      Page: 7    Filed: 05/19/2022
    GOOGLE LLC   v. IPA TECHNOLOGIES INC.                        7
    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
    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.
    Case: 21-1179     Document: 48      Page: 8    Filed: 05/19/2022
    8                        GOOGLE LLC   v. IPA TECHNOLOGIES INC.
    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
    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.
    Case: 21-1179     Document: 48     Page: 9    Filed: 05/19/2022
    GOOGLE LLC   v. IPA TECHNOLOGIES INC.                      9
    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.
    Case: 21-1179    Document: 48      Page: 10    Filed: 05/19/2022
    10                      GOOGLE LLC   v. IPA TECHNOLOGIES INC.
    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
    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.
    Case: 21-1179     Document: 48       Page: 11   Filed: 05/19/2022
    GOOGLE LLC   v. IPA TECHNOLOGIES INC.                       11
    “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
    Case: 21-1179    Document: 48    Page: 12     Filed: 05/19/2022
    12                     GOOGLE LLC   v. IPA TECHNOLOGIES INC.
    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.
    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).
    

Document Info

Docket Number: 21-1179

Filed Date: 5/19/2022

Precedential Status: Precedential

Modified Date: 5/19/2022