Federal Circuit sheds light on corroboration standards for testimony in IPR proceedingsJune 13, 2022

On May 19, 2022, in Google LLC v. IPA Technologies Inc., the Court of Appeals for the Federal Circuit (“Federal Circuit”) vacated and remanded the Patent Trial and Appeal Board’s (“PTAB”) decision that Google LLC (“Google”) had not shown relevant claims challenged in three inter partes reviews (“IPR”) to be unpatentable. The Federal Circuit vacated and remanded the PTAB’s decision, indicating that the PTAB “failed to resolve fundamental testimonial conflicts in concluding that the relied-upon reference was not prior art”.

The appeal to the Federal Circuit comes from three IPR decisions in which claims from U.S. Patent Nos. 6,851,115 (“the ‘115 patent”) and 7,069,560 (“the ‘560 patent”) were challenged. The ‘115 and ‘560 patents are directed to “software-based architecture . . . for supporting cooperative task completion by flexible, dynamic configurations of autonomous electronic agents.” More particularly, the ‘115 and ‘560 patents disclose “one or more facilitators” that broker communication and cooperation between agents by using “strategic reasoning” to generate “a goal satisfaction plan” to complete goals created by users and/or “service requesting agents”.

The issue in this case centered around whether a particular reference constitutes prior art for the ‘115 and ‘560 patents. The ‘115 patent was filed on January 5, 1999, and the ‘560 patent was filed on March 17, 1999. Both of the patents list David L. Martin and Adam J. Cheyer as inventors. The underlying technology disclosed in the patents, known as Open Agent Architecture (“OAA”), was conceived at SRI International (SRI) where Martine and Cheyer were employees. A third SRI employee, Dr. Douglas B. Moran, co-authored an academic paper (“the Academic Paper”) with Martin and Cheyer that was published at a conference taking place March 23-25, 1998. The Academic Paper described the OAA technology developed at SRI as well as some of the technology included in the claims of the ‘115 and ‘560 patents. The Academic Paper was used by the Examiner as a prior art reference to reject several of the claims of the ‘115 and ‘560 patents during their prosecution. To overcome these rejections during prosecution, SRI argued that Moran was not a co-inventor of the Academic Paper, nor of either of the ‘115 or ‘560 patents. SRI then argued that since Moran was not a co-inventor of the Academic Paper, the inventorship of the Academic Paper and the ‘115 and ‘560 patents have the same inventive entity (Martin and Cheyer), and, therefore, under pre-AIA law, the Academic Paper is not prior art as to the ‘115 and ‘560 patents. The Examiner then withdrew the rejections based on the Academic Paper, and ultimately the patents were granted. Subsequently, the patents were assigned to IPA Technologies, Inc. (“IPA”).

In February of 2019, Google petitioned for institution of an IPR challenging several claims of the ‘115 and ‘560 patents wherein the petition relied on the Academic Paper. Google argued that the Academic Paper was prior art as applied to the ‘115 and ‘560 patents because the inventive entity of the Academic Paper differed from that of the patents. Google argued that the inventive entity of the Academic Paper included Martin, Cheyer, and Moran, while the inventive entity of the challenged patents included only Martin and Cheyer since they were the two listed inventors. The PTAB instituted an IPR and held after the trial proceedings that Google “ha[d] not provided sufficient support to explain how Dr. Moran’s contribution [wa]s sufficient to establish he [wa]s an inventive entity with respect to the [Academic Paper] by a preponderance of the evidence”. Thus, the PTAB held that Google failed to establish that the Academic Paper was prior art. Therefore, since each of Google’s grounds for unpatentability of the challenged patents relied on the Academic Paper, it was concluded that none of the challenged claims were unpatentable. Google appealed the decision to the Federal Circuit.

Upon appeal, the Federal Circuit first agreed with the PTAB in that the PTAB did not err in requiring Google to “establish the [Academic Paper] was prior art ‘by another’ 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.” However, while the PTAB held that Moran’s testimony was not corroborated, the Federal Circuit disagreed. The Federal Circuit noted that Moran’s testimony may have established that he was a co-inventor of the relevant portions of the Academic Paper. The Federal Circuit held that Moran’s testimony regarding his technical contributions was adequately corroborated based on the fact that he was named as a co-author of the Academic Paper, his role as part of the OAA project at SRI, the fact that Cheyer acknowledged Moran’s technical contributions to the OAA project, and the fact that Moran was named as an inventor on a patent that was a continuation-in-part of the application resulting in the ‘115 patent.  The Federal Circuit went on to note that corroborating an inventor’s testimony for the purposes of determining inventorship is a well-established principle. However, it is not necessary for the inventor to “produce contemporaneous documentary evidence” in order to corroborate testimony. Additionally, a high degree of corroboration is not required. The Federal Circuit further indicated that the PTAB should not have focused on whether Moran’s testimony was adequately corroborated, but rather should have focused on resolving the conflicts between Moran’s testimony and the testimony of Cheyer and Martin. Thus, the PTAB erred in its failure “to resolve this highly relevant evidentiary conflict and make appropriate findings of fact.”

IPA also put forth an additional argument upon appeal that the Federal Circuit should affirm the patentability of the claims at issue because if Moran is considered an inventor of the Academic Paper, he should also be listed as an inventor of the ‘115 and ‘560 patents. In that case, the inventive entity of the Academic Paper would be the same as those of the ‘115 and ‘560 patents (Martin, Cheyer, and Moran) such that the Academic Paper would not be prior art. The Federal Circuit noted that IPA cannot raise this argument as a defense without actually correcting the inventorship of the ‘115 and ‘560 patents.

Based on the foregoing, the Federal Circuit vacated and remanded the PTAB’s decision. The Federal Circuit’s opinion sheds light on the standards for corroboration of testimony when determining inventorship in IPR proceedings. The Federal Circuit held that a high degree of corroboration is not required, and that production of contemporaneous documentary evidence is not required for adequate corroboration of testimony.

Joseph M. Hallman is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Joseph directly via email at joseph.hallman@ipmvs.com

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