Trials@uspto.gov Paper 74
571-272-7822 Date: September 2, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
GOOGLE LLC,
Petitioner,
v.
IPA TECHNOLOGIES INC.,
Patent Owner.
____________
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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 61–70 of U.S. Patent No. 6,851,115 B1 (“the ’115 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 claims 61–70.
A. Procedural History
Petitioner filed a Petition challenging claims 61–70 of the ’115 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.”),
22. Patent Owner filed a Request for Rehearing of our decision granting
institution (Paper 14) 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 59, “Pet. Reply”), and Patent Owner filed a
Sur-reply (Paper 66, “PO Sur-reply”). Patent Owner filed a Motion to
Exclude (Paper 67), Petitioner filed an opposition (Paper 70) to which Patent
Owner replied (Paper 72). A combined oral hearing for this inter partes
review and related cases (IPR2019-00730, IPR2019-00731, IPR2019-00733,
and IPR2019-00734) was held on June 4, 2020, a transcript of which appears
in the record in each case. Paper 73 (“Tr.”).
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B. Instituted Grounds of Unpatentability
We instituted inter partes review of claims 61–70 of the ’115 patent
on the following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
61, 63–70 103(a)1 Martin,2 Kohn
62 103(a) Martin, Kohn,3 Pollock4
Dec. on Inst. 7–8, 36; see Pet. 4–5.
Petitioner relies on the Declaration of Dr. Dan R. Olsen Jr. (Ex. 1002)
and the Declaration from Dr. Douglas B. Moran (Ex. 1007).
C. Related Proceedings
According to the parties, the ’115 Patent is 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
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
’115 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,” ”the Martin reference”).
3 U.S. Patent No. 6,088,689 to Kohn issued July 11, 2000, filed Nov. 29,
1995 (Ex. 1012, “Kohn”).
4 U.S. Patent No. 5,706,406 to Pollock issued Jan. 6, 1998, filed May 22,
1995 (Ex. 1013, “Pollock”).
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(D. Del.). Pet. 2; Paper 5, 2. The ’115 Patent was also the subject of a
petition for inter partes review filed by Petitioner in IPR2019-00729. Pet. 3;
Paper 5, 2. Institution of an inter partes review was denied in that case.
D. The ’115 Patent and Illustrative Claim
The ’115 Patent describes “software-based architectures for
communication and cooperation among distributed electronic agents.”
Ex. 1001, 1:27–29. Figure 4 of the ’115 Patent is reproduced below.
Figure 4 depicts the structure of an exemplary distributed agent system of
the ’115 Patent. Id. at 6:25–32. As shown in Figure 4, system 400 includes
facilitator agent 402, user interface agents 408, application agents 404, and
meta-agents 406. Id. at 6:25–28. The ’115 Patent describes that system 400
is organized “as a community of peers by their common relationship” to
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facilitator agent 402 (id. at 6:28–30), which is “a specialized server agent
that is responsible for coordinating agent communications and cooperative
problem-solving” (id. at 6:32–35).
According to the ’115 Patent, 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
coordinates the efforts of the appropriate service providers in satisfying
these goals. Id. at 10:42–47. The ’115 Patent describes that cooperation
among agents is achieved via messages expressed in a common language,
called the Interagent Communication Language (“ICL”). Id. at 10:40–48.
Referencing Figure 3 (not reproduced herein) and Figure 4, the
’115 Patent describes the operation of a distributed agent system in a
preferred embodiment. Id. at 7:13–39. The ’115 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. at 7:15–21. For example, a natural language
agent may register the characteristics of its available natural language
vocabulary. Id. at 7:21–23. 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 7:25–29. The client agent parses this
request, processes it, and returns answers or status reports to the facilitator.
Id. at 7:30–32.
Referencing Figures 5 and 6 (not reproduced herein), the ’115 Patent
describes an exemplary embodiment where user interface agent 408 runs on
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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 7:53–63. As illustration, the ’115 Patent
describes 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 8:4–8. The translated ICL expression is then routed by facilitator
agent 402 to appropriate agents, e.g., calendar agent 434, to execute the
request. Id. at 8:13–15. Finally, results are sent back to UI agent 408 for
display. Id. at 8:15–16.
Of the challenged claims, only claim 61 is independent. Claim 61 is
illustrative of the challenged claims and is reproduced below.
61. A facilitator agent arranged to coordinate cooperative task
completion within a distributed computing environment
having a plurality of autonomous service-providing electronic
agents, the 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 requesting order
to interpret a compound goal set forth therein, the compound
goal including both local and global constraints and control
parameters, the service request formed according to an
Interagent Communication Language (ICL), wherein 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; and
a content layer comprising one or more of goals, triggers and
data elements associated with the events; and
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the facilitating engine further operable to construct a goal
satisfaction plan by using reasoning that includes one or more
of domain-independent coordination strategies, domain-
specific reasoning, and application-specific reasoning
comprising rules and learning algorithms.
Ex. 1001, 35:4–29.
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 ’115 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. 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.
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, 105
5 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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(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.
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
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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. 11–16; Dec. on Inst. 8–23, 36. 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 (Pet. 7–8)
and (2) describes “the work of a different inventive entity than the inventive
entity of the ’115 patent” (id. at 11). The parties do not dispute the printed
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. 8–10.
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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
’115 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 ʼ115 Patent (Cheyer and Martin) and
their [SRI] co-worker (Moran).” PO Resp. 1; Ex. 1011. “Both the
’115 Patent and Martin relate to work done on the Open Agent Architecture
(“OAA”) project at SRI, and large portions of the ’115 application 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 ’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
from the named inventors, Messrs. Cheyer and Martin, attesting that they
alone invented the subject matter disclosed and claimed in the ’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–
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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 ’115 Patent, Petitioner relies
on a Declaration from Dr. Moran (Ex. 1007) describing his contributions to
the Martin reference. Pet. 11–15. 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
testified that he co-authored the Martin reference with his colleagues David
Martin and Adam Cheyer. Id. ¶ 35. Regarding the authorship, Dr. Moran
testified 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.
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
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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
“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)).
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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. 7–8, 16–17. 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 ’115 Patent and
Dr. Moran’s declaration is vague as to the subject matter invented in the
Martin reference. Id. at 35–39.
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
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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 ’115 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 . . . and the
Martin 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
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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
declaration statements solely address his recollection and the contents of the
Martin reference. Id.6
6 Patent Owner asserts that Dr. Moran has memory gaps, lacks details, and
was paid for his participation (PO Resp. 31–34, 48), unlike Messrs. Martin
and Cheyer who have no financial stake in IPR proceeding, were not paid,
and have no bias (id. at 48). 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 to be 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. PO Resp. 42–43; Pet. Reply 18. We do not find the lack
of such disclosures germane to our inquiry.
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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
Petition nor the Petitioner’s Reply identifies how the “distributed
technologies that are at the core of the [Martin reference]” 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
’115 application and the Martin reference are identical or almost identical”
(PO Resp. 1), similarity and authorship is not sufficient to presume
inventorship by a preponderance of the evidence. In other words,
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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 ’115 Patent.
The parties vigorously contest whether Dr. Moran’s claims are
sufficiently corroborated. PO Resp. 26–30; Pet. Reply 4–10; PO
Sur-reply 9–10. Patent Owner contends that the Moran declaration, dated
twenty years after the prosecution of the ’115 Patent, lacks necessary
corroboration needed to invalidate a patent. PO Resp. 8, 26–31 (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
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-
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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 (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.
Patent No. 6,859,931 (“the ’931 Patent”) (Ex. 2002). See Pet. Reply 5–7, 8,
12–13. 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 “the Board should disregard the inventor
declarations in the prosecution history of the ’115 Patent and should treat
Martin as a prior art reference under § 102(a).” Pet. 16. In this case,
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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
’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. 20–23, 45–46; Pet. Reply 2–3, 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. 45–
46), and indicates that the Examiner’s awareness of Moran as a named
inventor that bolsters the reliability of the Rule 1.132 affidavits (id. at 21–
22). We agree 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. 7–8 (citing Ex. 2002,
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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
matter 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. 45–46.
Even assuming arguendo that Petitioner has supported Dr. Moran’s
contribution to the conception of the 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, Dr. Moran testifies that he “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 (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. 1, 9, 14–16
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(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 (emphasis 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
inventive with respect to the pertinent portions of the Martin reference.
See PO Resp. 36–37.
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 filed. 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
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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.7 Although evidence shows
Dr. Moran’s contribution 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.
7 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. 13–24; Pet. Reply 9–10. Petitioner argues that they address only
the conception and invention of the ’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–
16) 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 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 ’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. 46–47; 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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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.
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 [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, however, 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
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on material and how that technical contribution includes inventorship.
Pet. Reply 2. Our cases have required evidence regarding the content of the
contributions to establish inventorship in a prior art reference.8 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
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
8 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 “celebrates all
of the people 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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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 ’115 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 67, 1–2 (moving to exclude Ex. 1153, 72:10–17, 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 70, 13–14. Patent Owner asserts that Petitioner fails to show that the
redirect was “directly related” to Patent Owner’s questions. Paper 72, 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.
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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 67, 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 67, 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
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 67, 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–
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39:16) and not improperly beyond the scope. Paper 70, 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 67, 11–12. Having reviewed
the parties’ contentions (Paper 67, 11–12; Paper 70, 9–10; Paper 72, 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 70, 9–10. In addition, Patent Owner used
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 67, 12–14
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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 67, 14–15 (Ex. 2037, 78:17–79:12); id. at 15 (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
repeatedly in his direct examination.” Paper 70, 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 70, 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.
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IV. CONCLUSION
For the reasons discussed above, we conclude that Petitioner has not
demonstrated by a preponderance of the evidence that claims 61–70 of the
’115 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
61, 63–70 103(a) Martin, Kohn 61, 63–70
62 103(a) Martin, Kohn,
Pollock
62
Overall
Outcome
61–70
V. ORDER
In consideration of the foregoing, it is:
ORDERED that claims 61–70 of the ’115 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
naveenmodi@paulhastings.com
Joseph Palys
josephpalys@paulhastings.com
Daniel Zeilberger
danielzeilberger@paulhastings.com
Arvind Jairam
arvindjairam@paulhastings.com
PATENT OWNER:
Steven Hartsell
shartsell@skiermontderby.com
Alexander Gasser
agasser@skiermontderby.com
Sarah Spires
sspires@skiermontderby.com
