In Google LLC, v. IPA Technologies Inc, [2021-1179, 2021-1180, 2021-1185] (May 19, 2022), the Federal Circuit vacated the PTAB decision that Google had not shown the challenged claims in U.S. Patent Nos. 6,851,115 and 7,069,560 to be unpatentable.

During the prosecution of the ’115 patent, various claims were rejected based on the Martin reference, which the examiner identified as being prior art. In response, SRI contested the prior art status of the reference by submitting inventor declarations by Martin and Cheyer under 37 C.F.R. §1.132, asserting that Dr. Moran was “not a co-inventor of the subject matter described in the subject matter disclosed and claimed in the instant application[s].”
If Dr. Moran was not a co-inventor of the Martin reference, the Martin reference was not prior art because it was made by the same inventive entity as the ’115 and ’560 patents and not “by others.” 35 U.S.C. § 102(a) (pre-AIA).1 After receiving the declarations, the examiner withdrew the rejections based on the Martin reference and continued examining the applications. The patents were granted and ultimately assigned to appellee IPA
Technologies, Inc. (“IPA”).

Google petitioned the Board for inter partes review of various claims of the ’115 and ’560 patents, relying the same Martin reference, and contending that the Martin reference was prior art as work “by others” because it described the work of an inventive entity (Martin,
Cheyer and Dr. Moran) different from the inventive entity of the challenged patents (Martin and Cheyer). The Board instituted IPR, but concluded that Google had not provided sufficient support that Moran was a co-inventor, and dismissed the Petition. On appeal, Google argued that the Board improperly put the burden on Google to provide that the Martin reference had a different inventive entity than the challenged patents.

The Federal Circuit noted that the term “burden of proof” has been used to describe two distinct concepts: the burden of persuasion and the burden of production. The burden of persuasion is “the ultimate burden assigned to a party who must prove something to a specified degree of certainty.” In an IPR, “the burden of persuasion is on the petitioner
to prove ‘unpatentability by a preponderance of the evidence,’ and that burden never shifts to the patentee.” In contrast, the burden of production, or “going forward with evidence,” is a shifting one, “the allocation of which depends on where in the process of trial the issue arises.” The burden of production may be met either by “producing additional evidence” or by “presenting persuasive argument based on new evidence or evidence already of record.”

The Federal Circuit said that Google, as the petitioner, had the ultimate burden of persuasion to prove unpatentability by a preponderance of the evidence and this burden never shifted. It found no error with the Board’s requiring that Google establish the Martin reference was prior art “by another” by showing that Dr. Moran made a significant enough contribution to the portions relied on to invalidate the challenged patents to qualify as a joint inventor of those portions.

Turning to the question of whether Google satisfied its burden, the Federal Circuit said that it is evident that Dr. Moran made general technical contributions to the project, but that that was not the relevant inquiry. To be a joint inventor of the Martin reference, Dr. Moran must have made an inventive contribution to the portions of the reference relied upon and relevant to establishing obviousness. The Federal Circuit said that the testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google. The Federal Circuit found, however, that the Board
did not complete the full Duncan analysis. Instead, it appeared to the Federal Circuit that the Board concluded that Dr. Moran’s testimony was insufficiently corroborated.

The Federal Circuit found that although coauthorship does not presumptively make a co-author a coinventor, it is significant corroborating evidence that a co-author contributed to the invention. Thus, the Federal Circuit said, the issue was not lack of corroboration for
Dr. Moran’s testimony, but rather whether his testimony should ultimately be credited over Cheyer and Martin’s conflicting testimony during the IPR proceedings. The Federal Circuit said that instead of resolving the conflicts, the Board stated that it found the testimony of Dr. Moran, Mr. Martin, and Mr. Cheyer credible. The Federal Circuit thus vacated the Board’s decision, and remanded,