The Federal Circuit has resurrected a trio of Google inter partes reviews (IPRs) against two patents asserted against it by IPA Technologies Inc., a Quarterhill Inc. subsidiary. On May 19, the court issued a precedential decision that faulted the Patent Trial and Appeal Board (PTAB) for failing to follow the correct standard in determining that a published article was not prior art—a dispute that hinged on the extent of one author’s inventive contributions under the pre-America Invents Act (AIA) first-to-invent system. The decision follows another setback against IPA Technologies last October, when a Delaware judge ruled that Amazon did not infringe the same two patents just before a scheduled trial.

IPA Technologies has waged its campaign in waves of litigation starting in October 2016, suing Google (1:18-cv-00318) alongside Microsoft (1:18-cv-00001) in February and January 2018, respectively. The plaintiff’s complaint against Google alleged infringement of six patents (6,523,061; 6,742,021; 6,757,718; 6,851,115; 7,036,128; 7,069,560) generally related to speech-based control over electronic resources through the provision of Google Assistant, Google Feed/Google Now, and Google Search, targeting features related to providing context-specific information based on conversational user input. All of the asserted patents originated with research institute SRI International, a spin-off of which—Siri, Inc., the developer of the Siri digital assistant—was later acquired by Apple.

A series of validity challenges would later chip away at the list of patents-in-suit. In April 2018, Google moved to dismiss claims asserting the ‘061, ‘021, and ‘718 patents under Alice. Soon after, Microsoft and fellow campaign defendant Amazon filed their own motions that additionally challenged certain claims from the ‘115, ‘128, and ‘560 patents, from which Delaware District Judge Richard G. Andrews had previously invalidated other claims as patent ineligible.

In January 2019, Judge Andrews addressed all three motions in a single order that invalidated all claims from the ‘021, ‘061, and ‘718 patents as directed to the abstract idea of “retrieving electronic data in response to a spoken request and transmitting the retrieved data to a user” without the addition of a sufficient inventive concept. However, Judge Andrews denied the motions as to the ‘115, ‘128, and ‘560 patents, disagreeing with the three defendants that the patents are directed to the abstract idea of “breaking tasks down and delegating them to appropriate actors”. Rather, he concluded that the patents’ subject matter is not abstract, with the challenged claims instead “directed to improvements of the underlying computer functionality in a distributed computing environment”. As for the invalidated ‘021, ‘061, and ‘718 patents, shortly after the Alice ruling, IPA Technologies filed notices of abandonment of contest in a series of IPRs against the patents from Microsoft, leading the PTAB to enter adverse judgments. Meanwhile, the plaintiff apparently opted not to appeal the court’s patent eligibility ruling.

Google also brought a set of IPRs of its own, including some filed in late 2017 and early 2018 against the ‘128, ‘115, and ‘560 patents prior to their invalidation under Alice. The company challenged the remaining patents in another group of IPRs brought in February 2019. Of its four IPRs against the ‘128 patent, two (IPR2019-00733, IPR2019-00734) were instituted, and in October 2020, the PTAB issued final written decisions invalidating all challenged claims (1-12, 20-22, 41, 42, 44, and 45). According to Google’s motion to stay the district court case pending IPR, which Judge Andrews granted in January 2020, those invalidity rulings left only “dependent claims 23-27 and 40” in suit—claims that the company characterized as “duplicative”, stating that IPA Technologies disclosed them as being asserted after Google filed the IPRs. The Federal Circuit summarily affirmed the PTAB’s invalidity decisions as to the ‘128 patent in March 2022.

Also filed in February 2019 were the IPRs just addressed on appeal against the ‘115 patent (IPR2019-00728) and the ‘560 patent (IPR2019-00730, IPR2019-00731). As noted above, all three petitions asserted combinations of prior art that depended on a non-patent reference—an academic paper published in March 1998 discussing the “Open Agent Architecture” (OAA) technology described by the two patents, which were filed in January and March 1999. The paper was authored by three SRI International employees: David L. Martin and Adam J. Cheyer, the patents’ two named inventors; and Douglas B. Moran, not named on the patents. Subsequent filings have referred to the publication as the “Martin paper”.

An issue first raised during the prosecution of the patents was whether the paper qualified as prior art. Since the patents were filed before March 16, 2013, they fall under the pre-AIA first-to-invent system. As a result, the applicable rule for determining prior art status flows from the substantially different, pre-AIA version of 35 USC Section 102, which relevantly establishes in subsection (a) that a person is not entitled to a patent if “the invention was . . . patented or described in a printed publication . . . before the invention thereof by the applicant for patent”. Courts have since read a “by another”/“by others” limitation into pre-AIA Section 102(a), such that a publication by the same inventors (or a subset thereof) does not qualify as prior art. That limitation does not necessarily apply, however, when the alleged list of inventors or authors involves an additional party, depending on the party’s contributions to the relevant subject matter.

Here, during prosecution, Martin and Cheyer filed declarations asserting that Moran was “not a co-inventor of the subject matter described in the subject matter disclosed and claimed in the instant application[s]”, and was thus not a part of the same “inventive entity” (set of inventors)—meaning that the Martin paper was not prior art. The examiner agreed and withdrew those rejections, after which the patents ultimately issued.

Google took the opposite position in its IPR petitions against the ‘151 and ‘560 patents, arguing that the Martin paper was work “by others” because its “inventive entity”—Martin, Cheyer, and Moran—was different from the one named on the patents, Martin and Cheyer on their own. The PTAB rejected this argument, concluding that the company “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 Martin reference by a preponderance of the evidence” and that Google had therefore not “established that Martin was prior art under § 102(a) to” the two challenged patents.

Ruling on appeal on May 19 (2021-1179), the Federal Circuit determined that the PTAB had properly imposed the burden of persuasion on this issue on Google as the IPR petitioner. However, the court took issue with the manner in which the PTAB reached its determination as to the extent of Moran’s contributions. Here, the Federal Circuit noted that the applicable standard for whether a reference patent is “by another” is its 2019 decision in Duncan Parking Technologies v. IPS Group, which 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.

Thus, for Moran “[t]o 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 obviousness”, the Federal Circuit explained. To that end, the court noted that Moran—who was his team’s most senior computer scientist, authored several papers on the technology described in the patents, and was a named coinventor of a related continuation patent (6,859,931)—testified that he played a “significant role” in conceiving the “facilitator”, an aspect of the “distributed agent-based approach” underpinning the claimed invention. As discussed in the paper, that facilitator differed from prior art by incorporating three key concepts that were ultimately included in the ‘560 patent’s specification. The other inventors, though, minimized Moran’s role in their own testimony: Cheyer testified in part that Moran helped with “technical problems “at the application level” but that he did not “influenc[e] core OAA architecture or structure”; while Martin testified that Moran’s role was “administrative”, with his contributions in related substantive areas “not necessarily part of OAA per se”.

Yet according to the court, the PTAB did not properly consider this record. “The testimony of Dr. Moran, if credited, might well establish 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”. Rather, the PTAB merely concluded, in brief fashion, that Moran’s claimed contributions 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 declarations”.

The Federal Circuit disagreed with the PTAB’s conclusory findings as to the lack of corroboration of Moran’s contributions: “Contrary to the Board’s decision, the record reveals more than adequate corroboration of Dr. Moran’s testimony”, in particular 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”.

That said, the Federal Circuit noted that the real issue was not the corroboration of Moran’s testimony, “but rather whether his testimony should ultimately be credited over Cheyer and Martin’s conflicting testimony during the IPR proceedings”. The court found that the PTAB did not attempt to resolve those conflicts, merely stating that it found the testimony of all three witnesses to be 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”, the court held.

The Federal Circuit then rejected IPA Technologies’ counterargument that if Moran had in fact contributed to the inventive subject matter in the Martin reference, he would “by extension” have also made such a contribution to the patents themselves—under which scenario the “inventive entity” would be the same, and the Martin paper would not be prior art. The plaintiff could not raise this defense, the court concluded, because it had not asserted a claim of correction of inventorship in its complaint. Having dispensed with that defense, the court concluded by vacating the Board’s final decisions and remanding for further proceedings.

As noted above, the court’s decision follows another setback against IPA Technologies last October, when Judge Andrews dismissed one of its other cases just before trial. In that ruling, Judge Andrews granted summary judgment for Amazon, ruling that the company did not infringe the ‘115 and ‘560 patents through its Alexa voice assistant—concluding that the product did not meet a key claim limitation. Meanwhile, the Microsoft case also remains stayed pending IPR, though IPA Technologies moved on May 13 to lift that stay over the defendant’s objection. That motion cites a set of late 2020 decisions by the PTAB that upheld some of the claims challenged by Microsoft from the ‘115 and ‘560 patents. As noted by the plaintiff, in April 2022, the Federal Circuit issued decisions on appeal that affirmed as to some of the upheld claims from each patent but reversed and remanded as to the others. Microsoft has allegedly requested that the plaintiff agree to drop the remanded claims. The stay in the Google case is still in place, with no attempt to lift it reflected in the docket.

For more on the Amazon litigation, see “With Trial Looming, Delaware Judge Issues Noninfringement Ruling for Amazon in Quarterhill Case” (October 2021).