May 20, 2022

Somebody’s Wrong: PTAB Must Resolve Conflicting Factual Testimony During IPR

Before Dyk, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary: For purposes of determining whether a reference was prior art, the Board has an obligation to resolve fundamental testimonial conflicts.

Google petitioned for inter partes review of two of IPA Technologies’ patents. Google argued that the IPA patents would have been obvious over Martin, an academic paper that included both the inventors and non-inventor Douglas Moran as authors. During prosecution, the Examiner identified Martin as prior art, and issued a rejection under 35 USC 102(a). In response, the Applicant submitted inventor declarations asserting that Dr. Moran was not a co-inventor of the claimed subject matter otherwise disclosed in Martin. The Examiner withdrew rejections because the invention was not “by others,” and thus outside the scope of section 102(a). Google’s petition nevertheless relied on Martin, and Google attempted to establish Martin as prior art based on Dr. Moran’s contribution to inventorship reflected in Martin. After a trial, the Board concluded that Google had not provided sufficient support to explain how Dr. Moran’s contributions to the Martin reference established that he was part of the inventive entity, and entered final written decisions holding the challenged claims not unpatentable.

Google appealed. On appeal, the Federal Circuit observed that the parties agreed that the Board’s holding was based on insufficient corroboration of Dr. Moran’s inventorship. The court explained that co-authorship on a paper does not presumptively make the co-author a co-inventor, but that co-authorship is still “significant corroborating evidence that a co-author contributed to the invention.” As such, the Federal Circuit concluded Dr. Moran’s testimony was sufficiently corroborated by his being named as a co-author, as well as his role in a related project and his being named on a related patent. Because sufficient evidence of corroboration existed, the court concluded that the Board erred by not addressing the inventorship issue on the merits. The Federal Circuit also observed that it was not a “tenable position“ for the Board to find both Dr. Moran’s and the inventors’ conflicting testimony credible. The Federal Circuit remanded for the Board to resolve this “highly relevant evidentiary conflict and make appropriate findings of fact.” Finally, the court rejected IPA’s argument that the Board’s decision could be affirmed regardless since even if Dr. Moran was an inventor he could be added to the patent, which would remove Martin as prior art. Because IPA Technologies had not sought correction of the inventorship of the patents, the Federal Circuit held IPA’s argument unavailing. The vacated and remanded for further proceedings.

Editor: Paul Stewart

Written by: Christopher L. Lewis & Jeremiah S. Helm, Ph.D.