A Decision Poised To Pivot On Credibility

• Published date: 06 July 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Marshall, Gerstein & Borun LLP
• Author: Mr Sandip H. Patel

The Federal Circuit's recent decision in Google LLC v. IPA Technologies, Inc., Appeals 2021-1179, -1180, and -1185 (Fed. Cir. May 19, 2022), offers three instructive reminders. First, a publication disqualified from consideration as prior art during prosecution may be resurrected as prior art during an AIA trial. Second, the burden of producing evidence is not static, but rather one that shifts among trial participants. Third, when presented with a "highly relevant evidentiary conflict"-like conflicting fact-witness testimony-the Patent Trial and Appeal Board must resolve it "and make appropriate findings of fact." Google, Slip Op. at 11. When it doesn't do this, it's getting the case back.

Resurrecting Prior Art Isn't Easy

A long time ago, two patents issued after the two named inventors (Messrs. Martin and Cheyer) persuaded the Patent Office that an earlier publication they authored with a third person (Dr. Moran) was not prior art. The publication described some of the underlying technology embodied in the claims of the patents. Unsurprisingly, the Patent Office's examiner rejected the claims. After all, the examiner had no evidence as to who among the three conceived the underlying technology. If it was Dr. Moran, the rejection would remain sound because, then, the inventive entity of the patents (two people) would be different from the three authors of the publication. But if one or both of the named inventors was responsible, then the rejection could not be sustained. See generally, In re Katz, 687 F.2d 450, 454-56 (CCPA 1982) (explaining how an applicant may disqualify a co-authored publication from consideration as prior art under 35 USC ' 102(a)).

The inventors submitted declarations summarily concluding that each was a co-inventor of the claimed invention and that Dr. Moran was "not a co-inventor." The inventors, however, offered no evidence that they understood the legal concept of inventorship. More significant, the declarations did not explain who among the three was responsible for having invented the underlying technology reported in the publication and on which the examiner relied to reject the claims. See In re DeBaun, 687 F.2d 459, 462 (Fed. Cir. 1982) (concluding that declarations are insufficient where "they fail to allege facts showing the necessary diligence and/or reduction to practice of the invention now claimed"); see also, In re Katz, 687 F.2d at 455 ("What is required is a reasonable showing supporting the basis for the...