Federal Circuit Asks Whether Prior Art Reference Is “By Another”
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  • Federal Circuit Asks Whether Prior Art Reference Is “By Another”

    On May 20, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”), remanding for the PTAB to resolve a factual dispute over inventorship that it had left unaddressed.  Google LLC v. IPA Technologies Inc., No. 2021-1179 (Fed. Cir. May 19, 2022).

    At issue were two patents, U.S. 6,851,115 (“the ’115 patent”) and U.S. 7,069,560 (“the ’560 patent”), related to Open Agent Architecture (“OAA”), a software-based architecture for the cooperative completion of tasks by autonomous electronic agents.  OAA in general was conceived at SRI International in the 1990s by three employees: Martin, Cheyer, and Moran. But the ’115 and ’560 patents, drawn specifically to a “facilitator” feature of OAA, did not name Moran as an inventor.

    Nevertheless, all three employees were named as authors on an academic paper disclosing the facilitator feature less than a year prior to the patents’ priority dates.  Using this reference (“the academic paper”) as prior art under Pre-AIA 35 U.S.C. § 102(a), Google petitioned for inter partes review of the patents. Because Pre-AIA 35 U.S.C. § 102(a) references must be “known or used by others,” the validity of the patent depended on whether the academic paper was by a different “inventive entity.”

    To decide whether a reference is by a different inventive entity, the PTAB must use the three-part test from Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1358 (Fed. Cir. 2019):  (1) Determine what portions of the reference 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.

    Moran testified that he had been responsible for the facilitator feature.  Martin testified that Moran’s role was “administrative.” And Cheyer described Moran’s testimony as a “mischaracterization of his role.” However, the PTAB did not decide whose testimony to credit, instead deciding that Moran’s testimony as an inventor on the reference was insufficiently corroborated. Thus, the academic paper was not “by another,” and the patents were not invalid.

    Google appealed, and the CAFC vacated the judgement; Moran’s testimony was sufficiently corroborated by his appearance as a named author of the academic paper.  The issue that the PTAB should have decided was whether Moran’s testimony should be credited over Cheyer and Martin’s conflicting testimony.

    Competing arguments for upholding or reversing the decision of the PTAB were rejected.  No burden shifting (see Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015)) applies to create a presumption that a co-author is a joint inventor, and no burden was on the patent owner to prove that the listed inventors were the source of the anticipating disclosures. The CAFC also rejected the argument that the patent should be valid because inventorship could easily have been corrected to include Moran; named inventors “are presumptively “the true and only inventors.”