Trials@uspto.gov Paper 73
571-272-7822 Entered: September 16, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
GOOGLE LLC,
Petitioner,
v.
IPA TECHNOLOGIES INC.,
Patent Owner.
____________
IPR2019-00731
Patent 7,069,560 B1
____________
Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
BART A. GERSTENBLITH, Administrative Patent Judges.
JEFFERSON, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
Denying and Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a)
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I. INTRODUCTION
In this inter partes review, Google LLC (“Petitioner”) challenges
claims 26–35, 47, and 48 (“the challenged claims”) of U.S. Patent No.
7,069,560 B1 (“the ’560 Patent,” Ex. 1001), which is assigned to IPA
Technologies Inc. (“Patent Owner”). Paper 1 (“Petition” or “Pet.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
arguments raised during the trial in this inter partes review. For the reasons
discussed below, we determine that Petitioner has not demonstrated the
unpatentability of the challenged claims.
A. Procedural History
Petitioner filed a Petition challenging claims 26–35, 47, and 48 of the
’560 Patent (Pet. 4–5), and Patent Owner filed a Preliminary Response
(Paper 6). We instituted trial on all grounds of unpatentability. Paper 11
(“Dec. on Inst.”), 34–35. Patent Owner filed a Request for Rehearing of our
decision granting institution (Paper 13) that was denied by our Decision
Denying Patent Owner’s Request (Paper 40). Patent Owner’s request for
Precedential Opinion Panel (POP) review was also denied (Paper 26).
During trial, Patent Owner filed a Response (Paper 41, “PO Resp.”),
Petitioner filed a Reply (Paper 58, “Pet. Reply”), and Patent Owner filed a
Sur-reply (Paper 65, “PO Sur-reply”). Patent Owner filed a Motion to
Exclude (Paper 66), and Petitioner filed an opposition (Paper 69) to which
Patent Owner replied (Paper 71). A combined oral hearing for this inter
partes review and related cases (IPR2019-00728, IPR2019-00730, IPR2019-
00733, and IPR2019-00734) was held on June 4, 2020, a transcript of which
appears in the record in each case. Paper 72 (“Tr.”).
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B. Instituted Grounds of Unpatentability
We instituted inter partes review of the challenged claims of the
’560 Patent on the following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
47, 52 103(a)1 Martin2
26, 28–35 103(a) Martin, Farley3
27 103(a) Martin, Farley, Pollock4
48 103(a) Martin, Farley, White5
Dec. on Inst. 7–9, 35; see Pet. 4–5.
Petitioner relies on the Declaration of Dr. Dan R. Olsen Jr. (Ex. 1002)
and the Declaration of Dr. Douglas B. Moran (Ex. 1007).
1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
’560 Patent has an effective filing date prior to the effective date of the
applicable AIA amendments, we refer to the pre-AIA versions of §§ 102 and
103.
2 David L. Martin, Adam J. Cheyer, Douglas B. Moran, Building Distributed
Software Systems with the Open Agent Architecture, PROCEEDINGS OF THE
THIRD INTERNATIONAL CONFERENCE ON THE PRACTICAL APPLICATION OF
INTELLIGENT AGENTS AND MULTI-AGENT TECHNOLOGY 355 (1998)
(Ex. 1011, “Martin”).
3 Jim Farley, JAVA DISTRIBUTED COMPUTING, 1st ed., 1998 (Ex. 1020,
“Farley”).
4 U.S. Patent No. 5,706,406 to Pollock issued Jan. 6, 1998 (Ex. 1013,
“Pollock”).
5 U.S. Patent No. 5,603,031 to White et al. issued Feb. 11, 1997 (Ex. 1026,
“White”).
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C. Related Proceedings
The parties inform us that the ’560 Patent is presently the subject of
the following district court litigation: IPA Techs. Inc. v. Google LLC, No.
1:18-cv-00318 (D. Del.); IPA Techs. Inc. v. Microsoft Corp., No. 1:18-cv-
00001 (D. Del.); and IPA Techs. Inc. v. Amazon.com, Inc., No. 1:16-cv-
01266 (D. Del.). Pet. 1–2; Paper 4, 2. The Petition was filed concurrently
with petitions in IPR2019-00730 and IPR2019-00732, and various petitions
filed against U.S. Patent No. 6,851,115 (“the ’115 patent”), from which the
’560 Patent is a continuation. Pet. 2–3; Paper 4, 2–3; see Ex. 1001, [63].
Institution of an inter partes review was denied in IPR2019-00732.
D. The ’560 Patent and Illustrative Claims
The ’560 Patent, which is a continuation of the ’115 Patent, describes
“software-based architectures for communication and cooperation among
distributed electronic agents” using “interagent communication languages
enabling client agents to make requests in the form of arbitrarily complex
goal expressions that are solved through facilitation by a facilitator agent.”
Ex. 1001, 1:20–25. Figure 4 of the ’560 Patent is reproduced below.
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Figure 4 depicts the structure of an exemplary distributed agent system of
the ’560 Patent. Id. at 6:38–44. Figure 4 shows that system 400 includes
facilitator agent 402, user interface agents 408, application agents 404, and
meta-agents 406. Id. The ’560 Patent describes that system 400 is
organized “as a community of peers by their common relationship” to
facilitator agent 402 (id. at 6:41–44), which is “a specialized server agent
that is responsible for coordinating agent communications and cooperative
problem-solving” (id. at 6:46–48).
The ’560 Patent discloses that cooperation among agents is structured
around a three-part approach as follows: (1) providers of services register
their capabilities specifications with a facilitator; (2) requesters of services
construct goals and relay them to the facilitator; and (3) the facilitator
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coordinates the efforts of the appropriate service providers in satisfying
these goals. Id. at 10:53–61. Such cooperation among agents is achieved
via messages expressed in a common language, called the Interagent
Communication Language (“ICL”). Id. at 10:61–11:7.
Referencing Figure 3 (not reproduced herein) and Figure 4, the ’560
Patent describes a preferred embodiment for the operation of a distributed
agent system. Id. at 7:24–50. The ’560 Patent describes that, when invoked,
a client agent makes a connection to a facilitator, e.g., facilitator agent 402,
and registers with the facilitator a specification of the capabilities and
services it can provide. Id. For example, a natural language agent may
register the characteristics of its available natural language vocabulary. Id.
When facilitator agent 402 receives a service request and determines that
registered services 416 of one of its client agents will help satisfy a goal of
the request, the facilitator sends that client a request expressed in ICL 418.
Id. at 7:36–45. The client agent parses this request, processes it, and returns
answers or status reports to the facilitator. Id.
Referencing Figures 5 and 6 (not reproduced herein), the ’560 Patent
describes an exemplary embodiment where user interface agent 408 runs on
a user’s laptop, accepting user input, sending requests to facilitator agent 402
for delegation to appropriate agents, and displaying the results of the
distributed computation. Id. at 7:64–8:14. The ’560 Patent illustrates that,
when the question “What is my schedule?” is entered on user interface (UI)
408, UI 408 sends the request to facilitator agent 402, which in turn asks
natural language (NL) agent 426 to translate the query into ICL. Id. at 8:15–
28. The translated ICL expression is then routed by facilitator agent 402 to
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appropriate agents, e.g., calendar agent 434, to execute the request. Id.
Finally, results are sent back to UI agent 408 for display. Id.
Of the challenged claims, claims 26 and 47 are independent.
Claims 26 and 47 are illustrative and reproduced below.
26. A distributed facilitator agent functionally distributed
across at least two computer processes, the distributed facilitator
agent arranged to coordinate cooperative task completion within
a distributed computing environment having a plurality of
autonomous service-providing electronic agents, the distributed
facilitator agent comprising:
an agent registry that declares capabilities of service-
providing electronic agents currently active within the
distributed computing environment; and
a facilitating engine operable to parse a service request in
order to interpret a compound goal set forth therein, the service
request formed according to an Interagent Communication
Language (ICL), the ICL including a layer of conversational
protocol defined by event types and parameter lists associated
with one or more of the events, wherein the parameter lists
further refine the one or more events, the facilitating engine
further operable to generate a goal satisfaction plan associated
with the compound goal, wherein the goal satisfaction plan
involves:
using reasoning to determine sub-goal requests based on
non-syntactic decomposition of the base goal and using said
reasoning to co-ordinate and schedule efforts by the service-
providing electronic agents for fulfilling the sub-goal requests in
a cooperative completion of the base goal.
47. A facilitator agent for coordinating cooperative task
completion within a distributed computing environment having
a plurality of autonomous service-providing electronic agents,
the facilitator agent comprising:
a registry of capabilities of the service-providing
electronic agents; and
a facilitating engine operable to determine a set of sub
goals necessary to accomplish a base goal, and then allocate such
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sub-goals to those agents capable of accomplishing the sub-goals
as determined by the registry, said facilitating agent further
capable of initiating a direct peer to peer communication between
a service-requesting agent and a service-providing agent of at
least one sub-goal, and said facilitating agent being distinct from
service-providing agents; and
wherein the service-providing agent and the service-
requesting agent communicate using an Interagent
Communication Language (ICL), the ICL includes a layer of
conversational protocol defined by event types and parameter
lists associated with one or more of the events, wherein the
parameter lists further refine the one or more events.
Ex. 1001, 32:26–51, 34:18–40.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner’s declarant, Dr. Olsen, opines that a person of ordinary skill
in the art at the time of the invention of the ’560 Patent would have had at
least a Bachelor’s degree in computer science, electrical engineering, or a
similar discipline, and one to two years of work experience in networked
computer systems or a related area. Ex. 1002 ¶ 14; Pet. 5. Patent Owner
does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the
art. See generally PO Resp.
Based on the current record, we find Petitioner’s proposal consistent
with the level of ordinary skill in the art reflected by the prior art of record.
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we adopt
Petitioner’s unopposed position as to the level of ordinary skill in the art.
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B. Overview of Martin (Ex. 1011)
Martin relates to the Open Agent Architecture (OAA), which “makes
it possible for software services to be provided through the cooperative
efforts of distributed collections of autonomous agents.” Ex. 1011, 106
(Abstract). According to Martin, “[c]ommunication and cooperation
between agents are brokered by one or more facilitators, which are
responsible for matching requests, from users and agents, with descriptions
of the capabilities of other agents.” Id.
Figure 1 of Martin is reproduced below.
Figure 1 depicts the structure typical of a small OAA system, showing a user
interface agent, several application agents, and meta-agents, organized as a
community of peers by their common relationship to a facilitator agent. Id.
at 14. Figure 1 also shows an Interagent Communication Language (“ICL”).
Id. at 16, Fig. 1.
6 The page numbers for the Martin reference refer to the Petitioner-inserted
page numbers in the bottom, left-hand corner of each page.
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According to Martin, cooperation among the agents of an OAA
system is achieved via messages expressed in a common language,
Interagent Communication Language (ICL). Id. at 17. Martin describes
“Mechanisms of Cooperation” as follows.
Cooperation among the agents of an OAA system is achieved via
messages expressed in a common language, ICL, and is normally
structured around a 3-part approach: providers of services
register capabilities specifications with a facilitator; requesters of
services construct goals and relay them to a facilitator, and
facilitators coordinate the efforts of the appropriate service
providers in satisfying these goals.
Id.
According to Martin, all agents that are not facilitators are called
client agents. Id. at 16. Martin describes that when invoked, a client agent
makes a connection to a facilitator. Id. at 16–17. Upon connection, an agent
informs the facilitator of the services it can provide. Id. at 17. When the
agent is needed, the facilitator sends it a request expressed in ICL. Id. The
agent parses this request, processes it, and returns answers or status reports
to the facilitator. Id.
C. Martin as Prior Art Under 35 U.S.C. § 102(a)
We instituted inter partes review on each of the grounds presented in
the Petition, all of which rely on Martin (Ex. 1011), a 1998 proceeding
article listing David L. Martin, Adam J. Cheyer, and Douglas B. Moran as
authors. See Pet. 18–69; Dec. on Inst. 9–24, 30–35. Petitioner asserts that
Martin is prior art under 35 U.S.C. § 102(a) because (1) it is a printed
publication that was accessible to the public by November 1998, and (2)
describes “the work of a different inventive entity than the inventive entity
of the ’560 patent.” Pet. 11–12. The parties do not dispute the printed
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publication status of Martin. Patent Owner argues that Martin does not
qualify as prior art because Petitioner has failed to provide evidence and
argument under the proper inquiry to show that the portions of the Martin
reference relied on as prior art represent the work by another; namely
Douglas Moran. PO Resp. 8–11.
As each of the grounds rely on Martin, our decision turns on whether
Martin qualifies as prior art under 35 U.S.C. § 102(a). Because we
determine below that Petitioner has not shown by a preponderance of the
evidence that there is not a common inventive entity between Martin and the
’560 Patent, we find that Petitioner has failed to show that Martin qualifies
as prior art under 35 U.S.C. § 102(a).
1. Martin Reference Background
Martin discussed above is a conference paper titled “Building
Distributed Software Systems with the Open Agent Architecture,” and was
published in 1998. Ex. 1011, 1, 10. Martin was “authored by three SRI
employees— the two inventors of the ʼ560 Patent (Cheyer and Martin) and
their [SRI] co-worker (Moran).” PO Resp. 1; Ex. 1011. “Both the
’560 Patent and Martin relate to work done on the Open Agent Architecture
(‘OAA’) project at SRI, and large portions of the ’560 [Patent] and Parent
’115 application [that issued as the ’115 Patent, from which the ’560 Patent
is a continuation] and the Martin reference are identical or almost identical.”
PO Resp. 1; compare Ex. 1001, with Ex. 1011, 10–29.
Martin was considered during prosecution of the parent ’115 Patent.
The Examiner initially rejected claims of the ’198 application (which issued
as the ’115 Patent) under § 102(a) based on Martin. Ex. 1004, 453, 454–68.
Patent Owner overcame the rejection by submitting Rule 1.132 affidavits
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from the named inventors, Messrs. Cheyer and Martin, attesting that they
alone invented the subject matter disclosed and claimed in the parent ’115
Patent application. Pet. 12; Ex. 1004, 221–24 (37 C.F.R. § 1.132 affidavits),
212–13. Cheyer and Martin also attested that Dr. Moran was not an inventor
of the subject matter disclosed and claimed in the ’115 Patent. Ex. 1004,
221–24. The Examiner withdrew the rejections based on Martin in the next
Office Action. Id. at 187–202.
In support of Petitioner’s contention that Martin is the work of another
and lacks a common inventive entity with the parent ’115 Patent and
therefore the ’560 Patent, Petitioner relies on a Declaration from Dr. Moran
(Ex. 1007) describing his contributions to the Martin reference. Pet. 11–16.
Dr. Moran’s declaration states that he worked on the Open Agent
Architecture (OAA) project at SRI in 1994, becoming the project leader in
August 1994. Ex. 1007 ¶¶ 23, 27. Dr. Moran testifies that he co-authored
the Martin reference with his colleagues David Martin and Adam Cheyer.
Id. ¶ 35. Regarding authorship, Dr. Moran testifies that “[m]uch of the
writing in the OAA paper [the Martin reference] is mine, either directly
borrowed from or derived from papers, presentations and proposals that I
wrote.” Id. ¶ 37. Dr. Moran also states that, based on his experiences he
“contributed to the conception of distributed technologies that are at the core
of the OAA paper [the Martin reference],” including “various networking-
related concepts described in the [Martin reference],” the “distributed
technologies that are at the core of the [Martin reference] . . . , as described
at Sections 2.5 and 3,” and “the distributed agent-based approach, and in
particular using a facilitator, as described in the [Martin reference] at
Section[s] 4 and 4.1–4.5.” Id. ¶ 39.
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Following institution, Patent Owner cross-examined Dr. Moran
(Ex. 1153). Patent Owner deposed and Petitioner cross-examined
Mr. Cheyer (Ex. 2037) and Mr. Martin (Ex. 2038).
2. Analysis
An inventor’s own work is not prior art under 35 U.S.C. § 102(a).
See Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); In re
Katz, 687 F.2d 450, 454 (CCPA 1982). The Federal Circuit has stated that
“[t]he question of whether 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, 754 F.3d at 969 (citing Ethicon, Inc. v. U.S. SurgicalCorp.,
135 F.3d 1456, 1460 (Fed. Cir. 1998)). In determining whether a reference
is the work of the challenged patent’s named inventor(s), the inquiry focuses
on whether the relevant content of the reference—“which includes the
design, trial, and analysis of results”—was solely the work of the
inventor(s). See Allergan, 754 F.3d at 969. In the context of 35 U.S.C.
§ 102(e) addressing whether an invention described in a patent granted on an
application for patent was “by another,” the Federal Circuit has further
explained that “[w]hat is significant [in this inquiry] is not merely the
differences in the listed inventors, but whether the portions of the reference
relied on as prior art, and the subject matter of the claims in question,
represent the work of a common inventive entity.” Riverwood Int’l Corp. v.
R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003) (citing In re
DeBaun, 687 F.2d 459, 462 (CCPA 1982)) (emphasis added); cf.
EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341,
1345–47 (Fed. Cir. 2017) (discussing Katz and DeBaun as informing the
determination whether a published patent application describes the work of
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“another” under § 102(e)). In Riverwood, the Federal Circuit noted that the
inquiry in DeBaun, which was an appeal from the PTO in which a patent
reference was asserted as prior art regarding patentability, “applies to the use
of a reference in a post-issuance validity challenge.” Riverwood, 324 F.3d at
1356 (citing de Graffenried v. United States, 20 Cl. Ct. 458, 467 (1990)).
Thus, the relevant question for determining whether Martin qualifies
as prior art under § 102(a) is who invented the subject matter disclosed in the
Martin reference relied upon by Petitioner. See DeBaun, 687 F.2d at 462
(when reviewing the Examiner’s rejection based on a patent issued to the
applicant and another person, “[t]he proper subject of inquiry was . . . who
invented the subject matter disclosed by (the reference) which was relied on
to support the rejection” (emphasis added) (citation omitted)).
Petitioner bears the burden to demonstrate, by a preponderance of the
evidence, that the challenged claims are unpatentable. 35 U.S.C. § 316(e)
(2018). In an IPR proceeding based on prior art, this burden necessarily
includes the burden to establish that the references relied upon qualify as
prior art.
Patent Owner argues that Petitioner fails to produce sufficient
evidence that Moran conceived of the subject matter in the Martin reference
and that such subject matter supports the obviousness of the challenged
claims. PO Resp. 8–9, 17–18. Patent Owner also argues that Petitioner
failed to produce the required corroborating evidence necessary to establish
that Dr. Moran invented and conceived of anything in the parent ’115 Patent
or the ’560 Patent and Dr. Moran’s declaration is vague as to the subject
matter he invented in the Martin reference. Id. at 36–39, 40.
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Petitioner replies that Dr. Moran’s contribution is “sufficient to render
[the Martin reference] prior art.” Pet. Reply 3–4. Specifically with respect
to the Moran Declaration, Petitioner states:
Dr. Moran described his background experience that put him in
a position to contribute to Martin (Ex. 1007 at ¶¶ 5–22), his deep
involvement in the OAA project from which Martin originated
(id. at ¶¶ 23–34), and his particular contributions to and
involvement with the publication of Martin (id. at ¶¶ 35–39). He
stepped through Martin and outlined the sections he knew he
contributed to the conception of, which included Sections 2.5, 3,
4, and 4.1–4.5. (Id. at ¶ 39.) These are not sections that are
irrelevant to Google’s analysis, as IPA has suggested. (Response
at 9–10.) The petition repeatedly cited and relied upon these
sections throughout its analysis of the claims. (See, e.g., Pet. at
21–45 (citing pages of Martin corresponding to these sections).)
Pet. Reply 3–4. In sum, Petitioner states that Dr. Moran made a technical
contribution to the Martin reference that “contributed to the conception” of
Martin and identified the sections to which he contributed.
As we stated in the Institution Decision:
[T]he relevant question here for determining whether Martin
qualifies as prior art under § 102(a) is who invented the subject
matter disclosed in the Martin reference relied upon by
Petitioner. See DeBaun, 687 F.2d at 462 . . . .
If the subject matter disclosed in the Martin reference was
invented by Adam J. Cheyer and David L. Martin, and no
other—that is, Douglas B. Moran is not a co-inventor of the
subject matter described in the Martin reference, despite the fact
that he is listed as a co-author on the face of the reference—then
the Martin reference and the ’560 patent would represent the
work of a common inventive entity, namely, Adam J. Cheyer and
David L. Martin. If, on the other hand, Douglas B. Moran is a co-
inventor of the subject matter described in the Martin reference
relied upon by Petitioner, there is no commonality of
inventorship between the relied-on subject matter of the prior art
and the claimed subject matter of the ’560 patent and the Martin
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reference would qualify as prior art under § 102(a) as the work
of “another.”
Dec. on Inst. 11–12. We address the parties’ contentions below.
Although the named authors of the article are indicative of a
contribution to Martin, the Federal Circuit instructs us that authorship of an
article alone does not establish inventorship of the pertinent subject matter
disclosed in the article. See Katz, 687 F.2d at 455; see also DeBaun, 687
F.2d at 463 (noting that for co-inventors of a prior art reference joint or solo
inventorship is not presumed). Although Dr. Moran provides testimony that
authors to SRI papers made significant contributions and that the Martin
reference was derived from his writings and presentations, authorship in this
case is not conclusive of inventorship. See Ex. 1007 ¶ 37 (“Much of the
writing in the OAA paper is mine, either directly borrowed from or derived
from papers, presentations and proposals that I wrote.”). Authorship is
instructive here but does not resolve what portions of the invention
Dr. Moran contributed to the Martin reference sufficient to establish
invention of the relied-upon subject matter in the reference. Accordingly,
we turn to the evidence produced during trial to support the Moran
Declaration statements that Dr. Moran contributed to the Martin reference.
The evidence introduced at trial has not sufficiently or persuasively
addressed Dr. Moran’s testimony regarding his contribution to the Martin
reference. We note that Dr. Moran did not review the challenged patent in
preparation of his testimony. Ex. 1153, 28:7–29:7. Thus, Dr. Moran’s
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declaration statements solely address his recollection and the contents of the
Martin reference. Id.7
Dr. Moran’s testimony provides detail regarding his background
contribution to the OAA project in general, but neither his declaration nor
his deposition testimony explains how this foundation is reflected in his
contribution to the inventorship of the Martin reference beyond supporting
foundational concepts. See Ex. 1007 ¶¶ 23–34 (OAA project), 35–39 (OAA
paper); Ex. 1153, 27:21–28:6. Dr. Moran’s contributions to the Martin
reference are described as stemming from his “experience operating a
computer facility at SRI and working in computer security” that yielded his
“substantial experience in distributed systems.” Ex. 1007 ¶ 39. Petitioner
cites Dr. Moran’s testimony in arguing that such experience allowed
Dr. Moran to “contribute[] to the conception of distributed technologies that
are at the core of [the Martin reference]” but Petitioner does not connect
Dr. Moran’s experiences and contentions to the substance of the Martin
reference or connect those “technologies at the core” beyond broad
categories. Id. (emphasis added); Pet. Reply 3–4. Specifically, neither the
7 Patent Owner asserts that Dr. Moran has memory gaps, lacks details, and
was paid for his participation (PO Resp. 32–35, 49), unlike Messrs. Martin
and Cheyer who have no financial stake in IPR proceeding, were not paid,
and have no bias (id. at 49). Petitioner responds that Cheyer and Martin may
be biased by pressure from SRI and are under obligation to help enforce
SRI’s patents. Pet. Reply 15. We find the testimony of Dr. Moran,
Mr. Martin, and Mr. Cheyer credible with respect to the facts cited herein.
In addition, both parties cited evidence regarding SRI employment
agreements regarding invention disclosures and the lack of such disclosures
for the ’115 Patent, ’931 Patent, or the ’560 Patent. PO Resp. 43–45; Pet.
Reply 18–19. We do not find the lack of such disclosures germane to our
inquiry.
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Petition nor Petitioner’s Reply identifies how the “distributed technologies
that are at the core of the [Martin reference]” (Ex. 1007 ¶ 39) equate to
conception or inventorship with respect to the 14 pages of material identified
in Martin. See Pet. Reply 3–4; Ex. 1007 ¶ 39 (identifying Ex. 1011, 13–17,
17–24 as sections to which Dr. Moran contributed). We agree that evidence
supports that Dr. Moran worked on and contributed to systems incorporated
into OAA (Ex. 1007 ¶¶ 23–34; Ex. 2038, 90:10–18:16, 94:24–95:17 (Martin
testimony)). Although Patent Owner admits that “large portions” of the ’560
Patent and the Martin reference are identical or almost identical (PO Resp.
1), similarity and authorship are not sufficient to presume inventorship by a
preponderance of the evidence. In other words, Dr. Moran’s testimony that
he contributed to background work of the OAA project is not inconsistent
with the assertion that the specific disclosure in Martin that is relied on in
Petitioner’s challenge is the sole work of the two named inventors of the
’560 Patent.
The parties vigorously contest whether Dr. Moran’s claims are
sufficiently corroborated. PO Resp. 27–32; Pet. Reply 4–11; PO
Sur-reply 9–10. Patent Owner contends that the Moran declaration, dated
twenty years after the prosecution of the parent ’115 Patent, lacks necessary
corroboration needed to invalidate a patent. PO Resp. 9, 27–32 (citing
Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1366, 1369 (Fed.
Cir. 1999) (stating that “[t]he law has long looked with disfavor upon
invalidating patents on the basis of mere testimonial evidence absent other
evidence that corroborates that testimony” and “corroboration is required of
any witness whose testimony alone is asserted to invalidate a patent,
regardless of his or her level of interest”)). “Generally, ‘[c]orroboration is
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required of any witness whose testimony alone is asserted to invalidate a
patent.’ This requirement stems from the suspect nature of oral testimony
concerning invalidating events.” Lazare Kaplan Int’l, Inc. v. Photoscribe
Techs., Inc., 628 F.3d 1359, 1374 (Fed. Cir. 2010) (quoting TypeRight
Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004)
(citation omitted)). The cases Patent Owner cites are those where
documents such as the Martin reference are not at issue and testimony
provides the sole basis for the invalidating prior use or disclosure. Lazare
Kaplan, 628 F.3d at 1374; Finnigan Corp., 180 F.3d at 1369. Although
contemporary corroboration is not required in every case, it remains a well-
established principle in Federal Circuit case law that claims of inventorship
require support. See EmeraChem, 859 F.3d at 1345–46.
Petitioner argues that Dr. Moran’s technical contributions to OAA are
corroborated by Moran’s co-authorship of the Martin reference,
contemporaneously authored OAA papers (Pet. Reply 5–7 (citing Ex. 1170,
1; Ex. 1174, 1); Pet. Reply 8–9 (citing Ex. 2020, 3 (Moran CV))); his listing
as an inventor on a related OAA patent (Pet. Reply 7–8 (citing Ex. 2002,
code (75) (listing Dr. Moran as co-inventor)); and the testimony of
Messrs. Cheyer and Martin (Ex. 1153, 78:22–79:10, 79:16–81:13 (Martin
deposition testimony); Pet. Reply 12–13 (citing Cheyer and Martin
testimony)). We credit this evidence to the extent it shows that Dr. Moran
made technical contributions to OAA. Pet. Reply 5–8. Thus, we agree with
Petitioner that sufficient evidence supports the technical contributions of
Dr. Moran to OAA, including admission by Mr. Martin that Dr. Moran made
such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at
73:3–73:15), contemporaneous papers (see, e.g., Exs. 1170, 1174), and U.S.
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Patent No. 6,859,931 (“the ’931 Patent”) (Ex. 2002). See Pet. Reply 5–8,
12–14. The level of such contribution and whether it is significant such that
it evidences invention of subject matter of Martin is what is lacking from
that evidence introduced at trial. See, e.g., Ex. 2038, 115:14–119:10
(deposition of Mr. Martin regarding Dr. Moran’s contribution); Ex. 2037,
94:11–13, 111:3–10 (Mr. Cheyer acknowledging that Dr. Moran contributed
technical ideas).
Petitioner asserts that we should “disregard the inventor declarations
in the prosecution history of the parent application of the ’560 Patent and
should treat Martin as a prior art reference under § 102(a).” Pet. 16. In this
case, Petitioner asserts that Rule 1.132 affidavits should be disregarded in
light of Dr. Moran’s testimony regarding his technical contribution to the
Martin reference. Pet. Reply 3–4; Pet. 11–16; Ex. 1007 ¶¶ 37–39. Although
Dr. Moran (Ex. 1007 ¶ 39) and Messrs. Martin and Cheyer assert that
Dr. Moran made technical contributions, such evidence does not provide
sufficient foundation to find those contributions were inventive by a
preponderance of the evidence.
With respect to the ’931 Patent (a continuation-in-part from the parent
’115 Patent), which names Dr. Moran along with Messrs. Martin and Cheyer
and Mr. William Mark as co-inventors, the parties dispute the importance of
this fact to Dr. Moran’s testimony regarding the Martin reference. See
Ex. 2002, codes (63), (75); PO Resp. 22–24, 46–47; Pet. Reply 7–8. Patent
Owner argues that the ’931 Patent undermines the Moran declaration, which
fails to mention the patent as an inventive contribution (PO Resp. 46–47),
and indicates that the Examiner’s awareness of Moran as a named inventor
bolsters the reliability of the Rule 1.132 affidavits (id. at 22–24). We agree
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with Petitioner (Pet. Reply 7–8) that the ’931 Patent supports that Dr. Moran
made inventive contributions to the ’931 Patent and that patent relates to the
OAA project (Ex. 2038, 111:2–12), but Petitioner offers insufficient
evidence showing what those inventive contributions were in the ’931 Patent
or how they relate to Dr. Moran’s contributions to the Martin reference.
Petitioner argues that the ’931 Patent corroborates Dr. Moran’s
testimony that he was actively involved in developing the system described
in the Martin reference and that both the ’931 Patent and the Martin
reference are “directed to distributed objects and an agent registry in the
Interagent Communication Language context.” Pet. Reply 7 (citing
Ex. 2002, 28:60–29:38, 29:50–29:53, 30:1–30:9). We disagree with
Petitioner’s contention that Dr. Moran’s inventive contribution to the
continuation-in-part patent (the ’931 Patent) substantiates the inventive
contribution to the material disclosed and relied on in the Martin reference.
We do not presume that Dr. Moran’s unidentified contributions in the ’931
Patent indicate that Dr. Moran made a pertinent contribution to the Martin
reference. See DeBaun, 687 F.2d at 462. Petitioner’s evidence of record
provides neither persuasive support identifying Dr. Moran’s inventive
contribution to the ’931 Patent, nor how that contribution is related to the
asserted significant involvement in the Martin reference at issue.
See PO Resp. 46–47.
Even assuming arguendo that Petitioner has supported Dr. Moran’s
contribution to the conception of Martin in general, Petitioner has not
persuasively connected Dr. Moran’s technical contributions as being
inventive with respect to the Martin reference. In the background on the
OAA system section of his declaration, Dr. Moran testifies that he
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“conceived of [the specific database agent of the OAA system] likely being
a subsidiary facilitator with multiple agents.” Ex. 1007 ¶ 25. Petitioner’s
argument and evidence produced on the full record fails to explain how Dr.
Moran’s lessons learned from databases and conception in the OAA project
support inventorship with respect to the Martin reference or its application to
the invention of the challenged claims. Pet. 14–15 (citing Ex. 1007 ¶¶ 23–
38, 39 (stating generally that Martin relates to various aspects of the Open
Architecture Project led by Dr. Moran and covers many of his
contributions)); PO Resp. 46–47.
We find that the Petition and Petitioner’s Reply discuss Dr. Moran’s
general contributions to OAA without connecting them specifically to the
Martin reference disclosure and identifying his role in conception. Pet. 10,
14–16 (citing Ex. 1007), Pet. Reply 3–4, 14, 16, 18 (citing Ex. 1007).
Indeed, Dr. Moran’s testimony that he “played a significant role regarding
the distributed agent-based approach, and in particular using a facilitator, as
described in the OAA paper at Section 4 and 4.1–4.5” and “also played 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
OAA paper at Sections 2.5 and 4.1–4.2,” combined with his technological
contributions to OAA does not persuasively support that those significant
contributions include conception with respect to the relied upon aspects of
the Martin reference. Ex. 1007 ¶ 39 (emphases added). We agree with
Patent Owner that Dr. Moran’s “significant role” of “contribut[ing] to the
conception” of technologies at the core of the Martin reference or alleged
conception of the facilitator agent (Ex. 1007 ¶¶ 25, 39) is not supported by
additional evidence at trial and does not specify that such contribution is
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inventive with respect to the pertinent portions of the Martin reference. See
PO Resp. 38–39.
Our finding that Petitioner has failed to establish Dr. Moran’s
pertinent contribution to Martin is supported by case law. In Duncan
Parking Technologies, Inc. v. IPS Group, Inc., 914 F.3d 1347, 1359 (2019),
the Federal Circuit overruled the Board’s decision that the prior art patent
had a common inventive entity based on an inventor’s affidavit. The court
found that a co-inventor’s contribution to a prior art patent was sufficient “in
light of the invention as a whole” based on the technical details of his work
and the work of his co-inventors produced during trial. Id. (discussing
conception details of the asserted inventors). Thus, the Federal Circuit’s
determination was based on the record developed at trial establishing what
each co-inventor executed and conceived and the significance of those
contributions to the invention as claimed in the prior art and challenged
patent. Id.; see also Trans Ova Genetics, LC v. XY, LLC, IPR2018-00250,
Paper 35 at 46–21 (PTAB June 26, 2019) (“Trans Ova Genetics”). In the
present case, our record lacks sufficient supporting evidence to establish the
contributions of Dr. Moran and Messrs. Cheyer and Martin, beyond the Rule
1.132 declarations.8 Although evidence shows Dr. Moran’s contribution
8 Patent Owner and Petitioner dispute the import of the Rule 1.132
declarations from Mr. Cheyer and Mr. Martin (Ex. 1004, 221–24). Pet. 13;
PO Resp. 15–20; Pet. Reply 9–10. Petitioner argues that they address only
the conception and invention of the parent ’115 Patent and not the Martin
reference. Pet. Reply 9–10. Patent Owner asserts that the Examiner
properly disqualified Martin during prosecution based on the affidavits (PO
Resp. 15–18) and that regardless of interpretation Cheyer and Martin
reaffirmed their declarations of inventorship under oath (PO Sur-reply 10–
11). Petitioner does not challenge the sufficiency of the Rule 1.132
affidavits, but asserts that Dr. Moran made a technical contribution to the
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was technical and in the case of the ’931 Patent inventive, the nature of those
contributions in the Martin reference, on the full record before us, are not
shown by a preponderance of the evidence.
Our decision is also informed by EmeraChem Holdings, LLC v.
Volkswagen Group of America, Inc., 859 F.3d 1341, 1345–46 (Fed. Cir.
2017). In EmeraChem, the Federal Circuit rejected that an inventor’s
affidavit alone was sufficient to establish that a reference had a common
inventive entity such that it was therefore removed as prior art. Although
the court addressed the holdings of In re Katz and In re DeBaun and
emphasized that contemporaneous corroboration was not required in all
cases, it found the inventor’s declaration insufficient as it contained naked
assertions insufficient to demonstrate the cited portions of the prior art relied
on were not by another. Id. In the present case, Petitioner’s Moran
declaration contains assertions that are not sufficient alone and not supported
persuasively by the details necessary to demonstrate that the cited sections of
the Martin reference were conceived by Dr. Moran, alone or in some
combination with Messrs. Martin and Cheyer. See Ex. 1007 ¶ 39.
Martin reference that was inventive, making it 102(a) prior art. We do not
understand Petitioner to assert that Dr. Moran is claiming to be an inventor
of the parent ’115 Patent. Cf. Tr. at 14:21–23 (Petitioner counsel stating
“and to be clear . . ., Dr. Moran is not claiming he is the sole inventor,
contributor of the OAA project. All he’s saying is he was one of the key
contributors”); id. at 14:8–15:6. Accordingly, we look to whether Mr.
Cheyer’s and Mr. Martin’s declarations preclude Dr. Moran from making an
inventive contribution to the Martin reference. We consider the Rule 1.132
affidavits as evidence supporting Patent Owner’s arguments that Cheyer and
Martin invented the relied upon disclosures in the Martin reference. PO
Resp. 47–48; PO Sur-reply 10–11; but see also Pet. Reply 9–10
(declarations reiterate Dr. Moran co-authored the Martin reference).
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Petitioner argues that “[i]n balancing the evidence presented, the
question of whether it is more likely than not that Dr. Moran contributed to
the [Martin reference] that bears his name—and which describes the OAA
technology developed by a team he led—is not a close one.” Pet. Reply 3.
The record before us may not be close on whether Dr. Moran contributed to
OAA technology. Yet, the issue before us is who invented the subject matter
disclosed by and relied on in the reference, and not merely who made a
technical contribution to the reference. Dr. Moran characterizes his
contribution as a significant role regarding the core concepts, including
recursion and the distributed agent-based approach (Ex. 1007 ¶ 39), but
Petitioner fails to support his testimony with supporting evidence and
argument to describe how that role was significant to the relied on material
and how that technical contribution includes inventorship. Pet. Reply 2–3.
Our cases have required evidence regarding the content of the contributions
to establish inventorship in a prior art reference.9 See Trans Ova Genetics,
Paper 35 at 14–17; see also Duncan Parking, 914 F.3d at 1359, overruling
Duncan Parking Techs., Inc. v. IPS Grp., Inc., IPR2016-00067, Paper 9 at
9–10 (PTAB Mar. 30, 2016).
Petitioner argues that Dr. Moran’s declaration “stepped through
Martin and outlined the sections he knew he contributed to the conception
of, which included Sections 2.5, 3, 4, and 4.1–4.5.” Pet. Reply 4 (citing
9 Petitioner submits Mr. Cheyer’s videotaped presentation that lists
Dr. Moran among others, on a slide as a contributor to the OAA project.
Pet. Reply 10–11. As Patent Owner notes, this presentation “celebrate[s] all
of the people who were involved” in OAA. Ex. 2037, 116:9–14; PO Sur-
reply 14. We do not find Petitioner’s evidence availing on whether
Dr. Moran made an inventive contribution to the Martin reference.
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Ex. 1007 ¶ 39). Similarly, Petitioner’s counsel framed the question before
us as “determining whether a [prior art] reference is the work of the named
inventors, [as] the inquiry focuses on whether the relevant content of the
reference was solely the work of the inventors.” Tr. at 35:15–17. Petitioner
asserts that they “met that . . . [by] showing that [Martin] is clearly not the
work of the inventors” because “Dr. Moran contributed to . . . key concepts
in the OAA architecture that formed the basis of the Martin paper . . . linked
those contributions to the claims in our petition” and how that evidence
supports unpatentability. Id. at 345:12–18. As we stated above, the question
is not merely one of technical contribution to concepts but whether that
contribution demonstrates that Dr. Moran is an inventive entity with respect
to the Martin reference. Riverwood, 324 F.3d at 1356; EmeraChem, 859
F.3d at 1345–47; DeBaun, 687 F.2d at 462.
Based on the full record, we find that Petitioner has not provided
sufficient support to explain how Dr. Moran’s contribution is sufficient to
establish he is an inventive entity with respect to the Martin reference by a
preponderance of the evidence. Accordingly, we do not find that Petitioner
has established that Martin was prior art under § 102(a) to the ’560 Patent.
Because each of Petitioner’s grounds rely on the Martin reference, Petitioner
has not established that any of the challenged claims are unpatentable under
any of those grounds.
III. MOTION TO EXCLUDE
Exhibit 1153
Patent Owner moves to exclude portions of Exhibit 1153, Petitioner’s
redirect of Dr. Moran, as being outside the scope of Patent Owner’s cross-
examination. Paper 66, 1–2 (moving to exclude Exhibit 1153, 72:10–17,
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73:13–74:1; 75:21–77:9; 77:16–24; 79:16–21; 80:17–24; 81:14–23, 83:10–
20; 84:4–7, 85:5–8; 85:17–21). Petitioner argues that the redirect was
related to Patent Owner’s repeated questions about corroboration and not
beyond. Paper 69, 13–14. Patent Owner asserts that Petitioner fails to show
that the redirect was “directly related” to Patent Owner’s questions.
Paper 71, 5. We do not agree that Petitioner must show such a narrow
relationship. Based on the record in this instance, Petitioner’s redirect
examination was not beyond the scope of Patent Owner’s cross examination
sufficient to warrant excluding portions of Exhibit 1153. We deny Patent
Owner’s request regarding Exhibit 1153.
Exhibits 1158 and 1159
Patent Owner moves to exclude Exhibit 1158, a transcript of
Mr. Cheyer’s videotaped presentation from 2014, as hearsay (Federal Rule
of Evidence 802), lack of authentication (Federal Rules of Evidence 901,
1002), and beyond the scope of the direct examination. Paper 66, 2–7.
Similarly, Patent Owner moves to exclude Exhibit 1159, a still image from
the Cheyer presentation “on the grounds of hearsay, lack of authentication,
misleading, undue prejudice, lack of relevance, and scope. See FRE 401–03,
602, 801–02, 901–02, 1002; 37 C.F.R. § 42.53(d)(5)(ii).” Paper 66, 8–9.
Similar to a district court bench trial, the Board, sitting as a non-jury
tribunal with administrative expertise, is well positioned to determine and
assign appropriate weight to evidence presented, including not relying on it
or giving it no weight. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d
215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the
admissibility of evidence is equally capable of sifting it accurately after it
has been received . . . .”). Because the targeted exhibits were not relied
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upon, Patent Owner’s Motion to Exclude Exhibits 1158 and 1159 is
dismissed as moot.
Exhibits 1170, 1171, and 1172
Exhibits 1170, 1171, and 1172 are published research papers listing
Dr. Moran among the authors. Exs. 1170–1172. Patent Owner moves to
exclude these exhibits for “lack of relevance, prejudice, and because the
exhibits are outside the scope of IPA’s direct examination.” Paper 66, 9–10
(citing Fed. R. Evid. 401–403, 602, 901–902). We disagree with Patent
Owner’s contentions. These exhibits, introduced at Mr. Martin’s cross-
examination, are responsive to direct examination topics (Ex. 2038, 38:8–
39:16) and are not improperly beyond the scope. Paper 69, 8–9. Thus, we
find them relevant to the subjects explored in Mr. Martin’s testimony
regarding Dr. Moran and OAA. Ex. 2038, 38:8–39:16. With respect to their
prejudicial value, the Board affords such testimony due weight. We deny
Patent Owner’s request to exclude Exhibits 1170, 1171, and 1172.
Exhibit 1174
Patent Owner moves to exclude Exhibit 1174, a paper authored by
Dr. Moran, based on “hearsay, lack of relevance, lack of foundation, and
because Exhibit 1174 is outside the scope of IPA’s direct examination. See
FRE 401–03, 602, 801–02, 901–02.” Paper 66, 11–12. Having reviewed
the parties’ contentions (Paper 66, 11–12; Paper 69, 9–10; Paper 71, 3–4),
we find that Petitioner has provided sufficient support for the relevancy of
Exhibit 1174. In addition, we agree with Petitioner that under Federal Rules
of Evidence 807 and 901, Mr. Cheyer was presented with an article he
appeared to have co-authored and addressed its authenticity, which does not
fall within hearsay. Paper 69, 9–10. In addition, Patent Owner used
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Exhibit 1174 at Mr. Cheyer’s deposition. See Ex. 2037, 78:23–79:4; Pet.
Reply 6 n.2. Finally, Mr. Martin’s testimony sufficiently authenticates the
exhibit. Ex. 2038, 107:25–109:8. We deny Patent Owner’s motion to
exclude Exhibit 1174.
Exhibits 1175, 1176, and 1181
Patent Owner moves to exclude Exhibit 1175 based on lack of
relevance and lack of authenticity, Exhibit 1176 based on hearsay, lack of
relevance, and lack of authenticity, and Exhibit 1181 based on hearsay and
lack of authenticity. Paper 66, 12–14.
As stated above, as in a district court bench trial, the Board, sitting as
a non-jury tribunal with administrative expertise, is well positioned to
determine and assign appropriate weight to evidence presented, including
not relying on it or giving it no weight. See, e.g., Donnelly Garment, 123
F.2d at 224 (“One who is capable of ruling accurately upon the admissibility
of evidence is equally capable of sifting it accurately after it has been
received . . . .”). Because the targeted exhibits were not relied upon, Patent
Owner’s Motion to Exclude Exhibits 1175, 1176, and 1181 is dismissed as
moot.
Portions of Cross-Examination in Exhibits 2037 and 2038
Patent Owner moves to exclude portions of Petitioner’s cross
examination of Mr. Cheyer and Mr. Martin as beyond the scope of direct
testimony. Paper 66, 14–15 (citing Ex. 2037, 78:17–79:12); id. at 15 (citing
Ex. 2038, 71:1–6, 90:10–91:6; 94:24–95:17, 117:20–118:2).
Petitioner argues that Mr. Cheyer’s cross-examination was within the
scope of the direct testimony “because it relates to the nature and scope of
Dr. Moran’s contributions to OAA—a topic on which Mr. Cheyer testified
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repeatedly in his direct examination.” Paper 69, 14 (citing Ex. 2037, 27:8–
28:9, 31:16–24, 32:5–13, 33:1–34:25, 37:12–38:7). Similarly, Mr. Martin
testified during direct examination regarding Dr. Moran and OAA.
Paper 69, 15 (citing Ex. 2038, 36:17–21, 45:22–46:2, 43:3–7, 43:24–44:3).
Having reviewed the parties’ contentions, we do not agree that Petitioner’s
inquiries to Mr. Cheyer and Martin were beyond the scope of direct
testimony. We deny Patent Owner’s request to exclude portions of
Exhibits 2037 and 2038.
IV. CONCLUSION
For the reasons discussed above, we conclude that Petitioner has not
demonstrated by a preponderance of the evidence that claims 26–35, 47, and
48 of the ’560 Patent are unpatentable.
The table below summarizes our conclusions:
Claim(s)
35
U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
47, 52 103(a) Martin 47, 52
26, 28–35 103(a) Martin, Farley 26, 28–35
27 103(a) Martin, Farley,
Pollock
27
48 103(a) Martin, Farley,
White
48
Overall
Outcome
26–35, 47, 48
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V. ORDER
In consideration of the foregoing, it is:
ORDERED that claims 26–35, 47, and 48 of the ’560 Patent have not
been shown to be unpatentable;
FURTHER ORDERED that, Patent Owner’s Motion to Exclude is
denied in part, and dismissed in part; and
FURTHERED ORDERED that, because this is a Final Written
Decision, parties to the proceeding seeking judicial review of the Decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.
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PETITIONER:
Naveen Modi
Joseph Palys
Daniel Zeilberger
Arvind Jairam
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
joesphpalys@paulhastings.com
danielzeilberger@paulhastings.com
arvindjairam@paulhastings.com
PATENT OWNER:
Steven Hartsell
Alexander Gasser
Sarah Spires
SKIERMONT DERBY LLP
shartsell@skiermontderby.com
agasser@skiermontderby.com
sspires@skiermontderby.com
