Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 60
`
` Entered: September 19, 2023
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONOS, INC.,
`Petitioner,
`
`v.
`
`IMPLICIT, LLC,
`Patent Owner.
`____________
`
`IPR2018-00766 (Patent 7,391,791 B2)
` IPR2018-00767 (Patent 8,942,252 B2)1
`____________
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. MCSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`MCSHANE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`35 U.S.C. §§ 144, 318; 37 C.F.R. § 42.5(a)
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each
`proceeding. The parties are not authorized to use this style heading for any
`subsequent papers.
`
`
`
`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`I. INTRODUCTION
`At trial, Implicit, LLC (“Patent Owner”) attempted to antedate the
`
`principal prior art reference asserted by Sonos Inc. (“Petitioner”), arguing
`that the originally named inventors had conceived of the invention and
`communicated it to their engineering staff, who then reduced it to practice
`prior to the effective date of the prior art reference. We determined,
`however, that Patent Owner’s evidence was insufficient to establish prior
`conception of the invention and the communication of the invention such
`that any actual reduction to practice could inure to the inventors’ benefit.
`Patent Owner appealed our Final Written Decisions, and while the appeals
`were pending, Patent Owner sought changed inventorship of the patents-at-
`issue and the USPTO issued corrections to inventorship. The United States
`Court of Appeals for the Federal Circuit remanded the cases to us for an
`order addressing what impact, if any, the certificates of correction would
`have on the Final Written Decisions in the cases. Herein, we determine that,
`even in light of the general retroactive effect of 35 U.S.C. § 256, judicial
`estoppel and waiver apply under the specific circumstances of these cases.
`Accordingly, Patent Owner’s certificates of correction of inventorship have
`no impact on the Final Written Decisions.
`II. BACKGROUND
`A. Initial Proceedings Before the Board
`Petitioner filed Petitions requesting inter partes review of claims 1–3,
`6–9, 12, 16, 19, and 23–25 of U.S. Patent No. 7,391,791 B2 (Ex. 1001, “the
`’791 patent”) in IPR2018-00766 (“IPR766”) and for review of claims 1–3, 8,
`11, and 17 of U.S. Patent No. 8,942,252 B2 (Ex. 1001, “the ’252 Patent”) in
`IPR2018-00767 (“IPR767”). IPR766, Paper 1; IPR767, Paper 1. Patent
`Owner filed Preliminary Responses in both cases. IPR766, Paper 6; IPR767,
`
`2
`
`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`Paper 6. On September 19, 2018, in IPR766, we instituted inter partes
`review on the grounds presented in the Petition as to whether claims 1–3, 6–
`9, 12, 16, 19, and 23–25 of the ’791 patent are anticipated by Janevski2 or
`would have been obvious over Janevski alone and in combination with other
`prior art. IPR766, Paper 10. On September 19, 2018, in IPR767, we also
`instituted inter partes review on the grounds presented in the Petition as to
`whether claims 1–3, 8, 11, and 17 of the ’252 patent would have been
`obvious in view of Janevski alone and in combination with other prior art.
`IPR767, Paper 8.
`Trials were conducted in both IPR766 and IPR767. On September 16,
`2019, we entered a Final Written Decision (IPR766, Paper 46, “Final Dec.”
`or “Final Decision”)3 in IPR766, determining that Petitioner had
`demonstrated by a preponderance of the evidence that claims 1–3, 6–9, 12,
`16, 19, and 23–25 of the ’791 patent are anticipated by Janevski or would
`have been obvious over Janevski, alone or in combination with other prior
`art. On September 16, 2019, we also entered a Final Written Decision
`(IPR767, Paper 40) in IPR767, determining that Petitioner had demonstrated
`by a preponderance of the evidence that claims 1–3, 8, 11, and 17 of the
`’252 patent would have been obvious in view of Janevski alone or in
`combination with other prior art.
`An issue addressed in the Final Written Decisions was Patent Owner’s
`assertion that Janevski did not constitute prior art to the challenged claims
`under § 102(e) because the subject matter of the claims was conceived and
`
`2 U.S. Patent No. 7,269,338 B2 (issued September 11, 2007) (Ex. 1007).
`3 Because of the substantial similarities in issues raised and the contents of
`the filings in IPR766 and IPR767, hereafter we refer to the filings of IPR766
`as representative, unless otherwise noted.
`
`3
`
`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`actually reduced to practice prior to Janevski’s filing date of December 11,
`2001. See Final Dec. 11. We determined that the evidence presented by
`Patent Owner was insufficient to carry its burden of production to establish
`conception of the invention and the communication of the invention such
`that any actual reduction to practice could inure to the inventors’ benefit.
`See id. at 17–22.
`B. Proceedings Before the Federal Circuit
`On November 8, 2019, Patent Owner filed Notices of Appeal to the
`Federal Circuit for review of the Final Decisions. See Paper 47. On
`November 30, 2021, the Federal Circuit remanded the cases for the limited
`purpose of allowing Patent Owner the opportunity to request Director review
`of the Final Written Decisions. Ex. 3003. On December 17, 2021, Patent
`Owner petitioned for certificates of correction to add an individual, Guy
`Carpenter, as an inventor to the patents-at-issue. See Paper 62, 5 (“PO
`Remand Br.”). On December 30, 2021, Patent Owner filed requests for
`Director review of the Final Written Decisions (Ex. 3100), which were
`denied on February 7, 2022 (see Paper 53). On March 7, 2022, Patent
`Owner filed Amended Notices of Appeal. See Paper 54.
`On June 9, 2022, at the Federal Circuit, Patent Owner filed a motion
`for remand to await decision on the petitions and then to require the Board to
`consider the effect of changed inventorship. See PO Remand Br. 6. After
`the inventorship correction was granted by the USPTO on August 18, 2022,
`Patent Owner notified the Federal Circuit and reiterated its request for
`remand to the Board. See id. at 6; Ex. 2097 (Certificate of Correction).
`On November 9, 2022, the Federal Circuit issued an Order, taking
`note of the intervening correction of inventorship certificates that Patent
`Owner alleged would serve to moot the appeals. Paper 59. The Federal
`
`4
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`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`Circuit stated that “[a]llowing the PTAB to consider the impact of these
`intervening circumstances on the decisions on appeal in the first instance
`may conserve party and judicial resources.” Id. at 2. The Order directed
`that
`
`[t]hese appeals are remanded for the sole purpose of having the
`PTAB issue an order addressing what, if any, impact the
`certificates of correction would have on the final written
`decisions in these cases. This court retains jurisdiction over the
`appeals.
`
`Id.
`
`C. Proceedings on Remand
`The parties requested a conference call to discuss the procedure on
`remand. On January 25, 2023, a call was convened with counsel for
`Petitioner and Patent Owner. See Ex. 2096. During the call, both parties
`requested briefing, with opening briefs of 15 pages, and agreed that briefings
`were to be directed to the potential retroactive effect of the certificates of
`correction on the Final Written Decisions. Paper 60, 2. Petitioner asserted
`that the briefing should be permitted to identify the issues which had not
`been addressed in the Final Written Decisions, if it was determined that there
`is a retroactive effect of the certificates of correction on our Final Written
`Decisions. Id.
`We permitted additional briefing to address the remand, with
`Petitioner filing an opening brief (Paper 64, “Pet. Remand Br.”), and Patent
`Owner filing an opening brief (Paper 62, “PO Remand Br.”). Petitioner filed
`a responsive brief (Paper 66, “Pet. Remand Resp. Br.”), and Patent Owner
`filed a responsive brief (Paper 65, “PO Remand Resp. Br.”).
`
`5
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`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`D. Issues Related to the Status of Janevski as Prior Art
`Janevski is the primary prior art reference that Petitioner relied upon
`in its challenges to claims in IPR766 and IPR767. See Final Dec. 2–3.
`Patent Owner asserted that Janevski does not constitute prior art to the
`challenged claims under § 102(e) because the subject matter of the claims
`was conceived and actually reduced to practice prior to Janevski’s filing date
`of December 11, 2001. Id. at 11. During the trials, Patent Owner contended
`that Edward Balassanian and Scott Bradley conceived of the inventions of
`the patents at least by December 11, 2001. Id. at 15. Patent Owner asserted
`that the inventors communicated the inventions to an internal engineering
`and development staff, working primarily with engineer Guy Carpenter for
`implementation.4 Id. Patent Owner argued that source code corroborated
`Mr. Balassanian’s testimony concerning the invention’s conception and
`reduction to practice prior to December 11, 2001. Id.
`We determined that the evidence was insufficient to establish the
`conception of the invention and the communication of the invention to Mr.
`
`
`4 The most relevant evidence of record related to these issues is Mr.
`Balassanian’s declaration testimony that:
`Mr. Bradley and I solved the synchronization problem and
`conceived the inventions set forth in the Claims of the Patents.
`We then began working on the implementation of the inventions
`thereafter, as detailed below. We communicated those inventions
`to BeComm’s internal engineering and development staff to
`reduce them to practice. We worked primarily with Guy
`Carpenter, an Engineering Master at BeComm, to implement the
`inventions, as I describe below.
`Ex. 2001 ¶ 33. Also relevant is Mr. Balassanian’s deposition testimony:
`“Q. Did Guy Carpenter contribute to . . . to any conception of the claims? . .
`. THE WITNESS: I don’t believe so.” Ex. 1019, 59:9–18.
`
`6
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`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`Carpenter such that any reduction to practice could inure to the inventors’
`benefit. See Final Dec. 18–22. We therefore found that because Patent
`Owner failed to meet its burden to demonstrate earlier conception of the
`invention such that antedating did not apply, Janevski constituted prior art to
`the challenged claims of the patents under § 102(e). Id. at 22. We found the
`challenged claims unpatentable as anticipated by Janevski or obvious over
`Janevski, alone or in combination with other prior art. Id. at 50.
`Since the time of trial, as discussed above, Patent Owner petitioned
`for and received certificates of correction of inventorship, which name Guy
`Carpenter as an inventor of the patents in the proceedings. See Ex. 2097;
`Paper 62, 5–6. Below we discuss and evaluate the potential impact the
`certificates of correction have on the Final Written Decisions in these cases
`in accordance with the Federal Circuit’s Order.
`III. DISCUSSION
`
`A. 35 U.S.C. § 256
`The parties take differing positions on whether certificates of
`correction have retroactive effect on inventorship under 35 U.S.C. § 256.
`Patent Owner argues that the language of the statute strongly indicates that
`inventorship corrections have retroactive effect because, in contrast to other
`correction provisions, such as §§ 254 and 255, that “contain an explicit
`limitation ‘for causes thereafter arising,’ . . . such prospective-bound
`language is entirely absent from inventorship corrections of § 256.” PO
`Remand Br. 7 (emphasis omitted). Patent Owner argues that under a plain
`language analysis of the statute, the legislative intent of these correction
`provisions is clear: a “Certificate of Correction issued for correction of
`inventorship has retroactive effect.” Id. at 7–8 (quoting Roche Palo Alto
`LLC v. Ranbaxy Labs. Ltd., 551 F. Supp. 2d 349, 357, 359 (D.N.J. 2008)).
`
`7
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`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`Patent Owner asserts that, in addition to the language of the statute,
`case law supports the retroactive effect of inventorship corrections. PO
`Remand Br. 8–11. For example, Patent Owner contends that in SIPCO, the
`Board analyzed the statutory language of § 256 in view of that of § 255 and
`found that § 256 has retroactive effect. Id. at 8–10 (citing Emerson Elec.
`Co. v. SIPCO, LLC, IPR2016-00984, Paper 52 at 17-21 (PTAB Jan. 24,
`2020) (“SIPCO”) (citing to Vikase Corp. v. Am. Nat’l Can Co., 261 F.3d
`1316, 1329 (Fed. Cir. 2001); Roche, 551 F. Supp. 2d at 355)).
`Patent Owner also asserts “that § 256 was enacted as a ‘savings
`Provision’ to attenuate the harsh effects on actual inventors of errors in
`ascertaining proper inventorship.” PO Remand Br. 11 (citing Egenera, Inc.
`v. Cisco Systems, Inc., 972 F.3d 1367, 1377 (Fed. Cir. 2020) (“Egenera”)).
`Patent Owner asserts that provisions such as § 256 should be given liberal
`construction in favor of applicants. Id. at 12 (citing Patterson v. Hauck, 341
`F.2d 131, 138 (CCPA 1965)).
`Petitioner asserts that a certificate of correction for inventorship
`cannot be used to cure a finding of invalidity under 35 U.S.C. §§ 102(a), (b),
`and (e), or 103(a). Pet. Remand Br. 2. More specifically, Petitioner
`contends that “the statute specifies that correcting inventorship can
`overcome invalidity if the invalidity arises from the act of misnaming
`inventors. The act of misnaming inventors invalidates a patent under pre-
`AIA § 102(f).” Id. Petitioner argues that Patent Owner “misreads § 256’s
`invalidity-savings provision as granting it the right to use changed
`inventorship to retroactively address any type of invalidity,” but “[t]he
`language of § 256 does not provide for this.” Id. at 3. In support, Petitioner
`refers to Egenera, where the alleged infringer raised an improper
`inventorship issue under § 102(f) as an invalidity defense. Id. (citing
`
`8
`
`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`Egenera at 1372). Petitioner distinguishes other cases, not having to do with
`inventorship or corrections thereof, from the circumstances here. Id. at 5–6.
`Petitioner further contends that the operative issue “is not whether
`§ 256 applies retroactively in some scenarios, the question is ‘does it apply
`retroactively in this scenario?’” Pet. Remand Resp. Br. 1–2 (emphasis
`omitted). Petitioner asserts that § 256 applies retroactively to misjoinder and
`nonjoinder of inventors, but here “correction does not remove the basis for
`invalidity – it has no direct effect on the §§ 102, 103 invalidity grounds
`here.” Id. at 2. Petitioner argues that the case law cited by Patent Owner in
`its opening remand briefing does not support the retroactive application of
`§ 256. Id. at 2–5.
`Patent Owner responds by arguing that there are precedential Federal
`Circuit decisions that addressed the application of § 256 in cases where
`§ 102(f) was not at issue. PO Remand Resp. Br. 2–4. Patent Owner
`acknowledges that § 102(f) challenges are the most common, but points to
`the Riverwood case, where the Federal Circuit considered the potential
`application of § 256 under an assessment of prior art under § 102(e). Id. at
`2–3 (citing Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356
`(Fed. Cir. 2003)). Patent Owner also relies upon a Google case, which
`considered § 256 under an obviousness analysis with § 102(a) prior art. Id.
`at 3 (citing Google LLC v. IPA Techs, Inc., 34 F.4th 1081, 1088 (Fed. Cir.
`2022)). Patent Owner argues that “Section 256 is thus not limited to validity
`challenges under § 102(f) alone.” Id.
`We begin with the statute. Section 256 states, in relevant part:
`Whenever through error a person is named in an issued patent as
`the inventor, or through error an inventor is not named in an
`issued patent, the Director may, on application of all the parties
`and assignees, with proof of the facts and such other
`
`9
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`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`requirements as may be imposed, issue a certificate correcting
`such error.
`The error of omitting inventors or naming persons who are not
`inventors shall not invalidate the patent in which such error
`occurred if it can be corrected as provided in this section. The
`court before which such matter is called in question may order
`correction of the patent on notice and hearing of all parties
`concerned and the Director shall issue a certificate accordingly.
`35 U.S.C. § 256 (emphasis added). In view of the language of the statute,
`we agree with Patent Owner that it supports the conclusion that a certificate
`of correction of inventorship should apply retroactively in general. Section
`255 states that a certificate of correction “shall have the same effect and
`operation in law on the trial of actions for causes thereafter arising,”
`indicating that the certificate shall only be effective after issuance. In
`contrast, § 256’s statement “shall not invalidate the patent” “if it can be
`corrected” indicates that the correction of inventorship generally has a
`retroactive effect. Id.; 35 U.S.C. § 255; see also SIPCO at 10, 18–21. The
`interpretation of § 256 to allow for retroactivity is also consistent with the
`case law on this issue. See Vikase, 261 F.3d at 1329; Roche, 551 F. Supp. 2d
`at 357–358; Riverwood, 324 F.3d at 1356; Google, 34 F.4th at 1088.
`As to Petitioner’s arguments, generally, that the retroactive effect of
`§ 256 applies only to 102(f) issues, we do not agree. Consideration of the
`Google case is instructive. In Google, the issue the Federal Circuit
`considered was effect of potential correction of inventorship on whether a
`reference would be considered prior art under 102(a) under § 256. Google,
`34 F.4th at 1084, 1088. Similarly, in Riverwood, the Federal Circuit
`considered the potential effect of correction of inventorship to determine
`whether a reference would be prior art under § 102(e) under § 256.
`Riverwood, 324 F.3d at 1355–56.
`
`10
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`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`We next turn to Petitioner’s assertion that Section 256 should not be
`applied under the specific circumstances here because of judicial estoppel
`and waiver.
`B. Judicial Estoppel
`Petitioner argues that judicial estoppel applies here to preclude the
`retroactive effect of § 256. Pet. Remand Br. 6–9. Petitioner asserts that
`judicial estoppel applies against a party when: (1) the party takes a later
`position that is “clearly inconsistent” with an earlier position; (2) the party
`succeeds in persuading a court to adopt the earlier position (which thus
`poses a “risk of inconsistent court determinations”); and (3) the party
`seeking to assert an inconsistent position would derive an unfair advantage
`or impose an unfair detriment on the opposing party if not estopped. Id. at 7
`(citing Transclean Corp. v. Jiffy Lube Intern., Inc., 474 F.3d 1298, 1307
`(Fed. Cir. 2007)). Petitioner contends that all three factors are met because
`Patent Owner asserted that Mr. Balassanian and Mr. Bradley were inventors
`and communicated the invention to Carpenter for his subsequent reduction
`to practice, the Board accepted the premise for the purposes of making
`findings of fact and rulings of law, and Patent Owner now seeks to derive
`the unfair advantage of revisiting the Final Written Decisions. Id. at 7–9.
`In response, Patent Owner argues that estoppel factors 1 and 2 do not
`apply because its previous position was that “Balas[s]annian and Bradley
`were inventors of valid claims because the work of Mr. Carpenter inured to
`their benefit,” but Patent Owner did not “‘succeed in persuading’ the Board
`of its position.” PO Remand Resp. Br. 6 (emphasis omitted). Patent Owner
`asserts that “[b]eing legally wrong, moreover, is not the same as changing
`factual positions.” Id. at 6–7 (emphasis omitted) (citing Cleveland v. Policy
`Mgm’t Sys., 526 U.S. 795, 802 (1999)).
`
`11
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`Relying on Egenera, Patent Owner also contends that “the
`inventorship analysis can even be informed by a tribunal’s view of the
`evidence, thereby provoking a subsequent correction petition.” PO Remand
`Br. 12 (citing Egenera at 1376–78). Because contrary inventorship
`arguments were previously made, but correction was nevertheless permitted
`in Egenera, Patent Owner argues that it “was justified in correcting
`inventorship notwithstanding what it may have argued prior to the Board’s
`extensive factfinding regarding Mr. Carpenter and his contributions.” Id.
`Patent Owner also contends that § 256 “does not limit the time during which
`inventorship can be corrected” and “diligence is not a requirement to correct
`inventorship under section 256.” Id. at 14 (quoting Stark v. Advanced
`Magnetics, Inc., 119 F.3d 1551, 1554 (Fed. Cir. 1997)) (emphasis omitted).
`Petitioner contends that Egenera is distinguishable here because
`“inventorship of Implicit’s patent was not at issue in the IPR proceedings.”
`Pet. Remand Br. 4. Petitioner asserts that Patent Owner’s decision to pursue
`change in inventorship was not informed by Board’s view on the evidence
`on inventorship because “the Board did not conclude, and had no occasion to
`conclude, that Carpenter was either a proper inventor or that he was
`improperly omitted,” nor did Patent Owner ever assert during the IPR
`proceedings that there was an error in inventorship. Id.
`We begin our analysis with the first factor of judicial estoppel. Here,
`there is no dispute that Patent Owner’s assertions and evidentiary testimony
`on the inventorship of the patent, which it raised in the context of its attempt
`to antedate certain prior art, have changed from the time of the trial to the
`position now taken on corrected inventorship. More specifically, at trial,
`Patent Owner explicitly asserted, with the support of the testimony of Mr.
`Balassanian, that Messrs. Balassanian and Bradley conceived of the
`
`12
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`inventions of the patents and communicated those inventions to an internal
`engineering and development staff, including Mr. Carpenter, for
`implementation. Paper 13, 19–20; Ex. 2001 ¶¶ 6, 33, 42, 46; see also Ex.
`1019, 59:9–18. Patent Owner has now changed its position and has sought
`and obtained a correction of inventorship to add Mr. Carpenter as an
`inventor. See PO Remand Br. 5–6; Ex. 2097.
`We do not agree with Patent Owner’s assertion that it “was justified in
`correcting inventorship” because “the subsequently filed corrections reflect
`the Board’s determinations.” See PO Remand Br. 12–13. The Final Written
`Decision analyzed whether there was sufficient evidence in the record to
`corroborate Mr. Balassanian’s testimony on conception and communication
`of the invention to Mr. Carpenter. See IPR2018-00767, Paper 40, 22 (“In
`summary, none of the BeComm internal documents, demonstrations of
`BeComm technology, or BeComm source code corroborate Mr.
`Balassanian’s testimony that he and Mr. Bradley conceived of the
`challenged claims or that they communicated the inventions to Mr.
`Carpenter.”) (emphasis added); see also Final Dec. 19–20 (considering
`documents to determine if they corroborate conception). That is, the issue
`addressed in the Final Written Decisions was not the correct inventorship of
`the patents, but rather the sufficiency of corroborating evidence of
`conception and communication of the invention in order for the inventors to
`benefit from Mr. Carpenter’s work. See Final Dec. 19–20. For instance, the
`document that eventually served as the provisional application, which
`appears to have been written by Mr. Carpenter, was considered only to
`determine whether it corroborated Mr. Balassanian’s testimony. See id.
`Egenera presents a different situation from that here. In Egenera, the
`district court’s intervening claim construction justified the change in
`
`13
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`inventorship. Egenera at 1376–79. The Federal Circuit acknowledged that
`“[i]nventorship . . . can depend on claim construction,” and once claim
`construction was decided, “it was entirely consistent for Egenera” to request
`correction of inventorship. Id.; see also id. at 1376 (“Ultimately,
`inventorship is a legal conclusion premised on underlying factual findings,
`and one that depends on claim construction.” (citing In re VerHoef, 888 F.3d
`1362, 1365 (Fed. Cir. 2018); Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292,
`1302 (Fed. Cir. 2002)) (emphases added)). The Federal Circuit found that
`“the district court’s intervening claim-construction and inventorship
`determinations further justify any seeming inconsistency.” Id. at 1376,
`1379; see also id. at 1379 (“[O]nce those issues were decided [‘a [claim]
`construction that the inventorship question was directly predicated on’], it
`was entirely consistent for Egenera to request an accompanying formal
`correction of inventorship.”).
`Here, however, Patent Owner has not identified any changed legal
`determination upon which inventorship depends that justifies setting aside
`judicial estoppel. The claim construction ruling in Egenera was a legal
`determination that was largely out of Egenera’s control.5 Our determination
`regarding the sufficiency of corroborating evidence, on the other hand, is a
`factual determination based on the documentary evidence of record as
`argued by Patent Owner, and which was in the sole control of Patent Owner.
`Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014) (“We have
`treated the sufficiency of corroboration as a question of fact.”). The
`
`
`5 Indeed, Egenera opposed the district court’s construction. Egenera at 1379
`(“Egenera consistently protested the means-plus-function construction both
`at the district court and on appeal—a construction that that the inventorship
`question was directly predicated on.”)
`
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`documentary evidence in the trial record could be consistent with Patent
`Owner’s assertions during trial that Mr. Balassanian and Mr. Bradley
`conceived of the invention and then communicated that invention to Mr.
`Carpenter (had there been sufficient corroborating evidence of that
`communication). That documentary evidence could also be consistent with
`Patent Owner’s current position that Mr. Carpenter was an inventor all
`along. We made no such determination, however, specifically regarding
`inventorship in our Final Written Decisions, nor do we make such a
`determination now. For example, although we noted in our Final Decision
`that Mr. Carpenter was the apparent author of the document upon which the
`provisional application was based and also the apparent author of the source
`code relied upon by Patent Owner (Final Dec. 20), that determination does
`not mean that Mr. Balassanian and Mr. Bradley were not the correct
`inventors of the challenged patents, nor does it mean that Mr. Carpenter was
`an inventor.6 Indeed, that Mr. Carpenter authored the document and source
`code in question is consistent with Mr. Balassanian’s testimony that Mr.
`Carpenter worked on his behalf in implementing the invention. As seen,
`correct inventorship in this instance does not depend on our determination in
`the Final Decision regarding the sufficiency of corroborating evidence
`presented by Patent Owner. Accordingly, Egenera is distinguishable from
`the situation here.
`Additionally, Patent Owner sought the change of inventorship post-
`trial, and as discussed in Egenera, the Patent Office examines a change of
`inventorship request only for the presence of supporting statements and the
`
`
`6 As we note below, we have not determined whether the source code
`practices the claimed inventions.
`
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`required fee and “[n]o substantive examination occurs, and the PTO does not
`consider the substantive adequacy of the petition.” See Egenera at 1380
`(citing 37 C.F.R § 1.324(b); MPEP § 1481.02). Thus, under Egenera, the
`Patent Office’s grant of a certificate of correction “without more, [does not]
`count[] as ‘persuasion’ . . . for judicial-estoppel purposes,” and is limited to
`a ministerial, rather than a legal, determination. Id.
`
`We are also not persuaded by Patent Owner’s argument that being
`legally wrong about inventorship is not the same as changing factual
`positions. PO Remand Resp. Br. 6–7 (citing Cleveland Policy Mgm’t Sys.,
`526 U.S. at 802). To the extent that Patent Owner is suggesting that its
`initial identification of named inventors is merely “legally wrong” based on
`our determinations in the Final Decisions, rather than factually different, we
`do not agree. The Final Decisions did not make a determination on
`inventorship, that is, as discussed, the Decisions only addressed whether the
`documentary evidence corroborated testimonial evidence of conception and
`communication of the invention. See Final Dec. 20. Patent Owner
`possessed and presented its documentary evidence, including sworn
`inventorship testimony, in support of its antedating assertions at trial. Patent
`Owner’s changed position on inventorship therefore, represents a change in
`factual positions, contrary to its argument. For instance, Mr. Balassanian’s
`testimonial evidence concerning the conception and reduction to practice of
`the invention (Ex. 2001 ¶ 33), which formed the basis for our review of the
`documentary evidential support at trial, is now contrary to the current named
`inventorship. Patent Owner’s positions are clearly inconsistent—at trial,
`Patent Owner asserted a certain inventorship, and Patent Owner then sought
`a different inventorship. Accordingly, the first factor for judicial estoppel is
`met.
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`As to the second factor, whether the party must have succeeded in
`persuading a court (or agency)7 to adopt the earlier position, as discussed
`above, we started with the testimonial evidence on inventorship presented by
`Patent Owner at trial and evaluated other evidence in that light. More
`specifically, the supporting evidence presented to us includes the testimonial
`evidence of Mr. Balassanian, with that testimony stating, for example, “Mr.
`Bradley and I solved the synchronization problem and conceived the
`inventions set forth in the Claims of the Patents,” and “[w]e communicated
`those inventions to BeComm’s internal engineering and development staff to
`reduce them to practice.” Ex. 2001 ¶ 33. Based on the testimonial evidence
`provided, during trial we accepted Patent Owner’s representations as to the
`inventorship of the subject matter of the patents, and considered whether the
`documentary evidence provided corroboration of that testimony under a rule
`of reason—and our associated determinations were directed to the
`sufficiency of the documentary evidence.8 See Final Dec. 18–22.
`Moreover, although Patent Owner argues that it did not “‘succeed in
`persuading’ the Board of its position,” (PO Remand Resp. Br. 6)9, as
`
`
`7 Below we discuss the issue of whether judicial estoppel can be applied in
`an IPR administrative proceeding.
`8 The situation here differs from that in Egenera, where the Federal Circuit
`considered representations made to the PTO under the second factor because
`the district court relied only on the PTO’s acceptance of representations in
`the inventorship petition. Egenera at 1380. Here, in contrast, the Board
`directly considered evidence provided to us by Patent Owner, which, as
`discussed, was part of the trial record.
`9 In Patent Owner’s Rehearing Request for Director Review, Patent Owner
`also argued that “The Board’s Decision identified the specific role that Mr.
`Carpenter played in the process of invention . . . While Implicit argued in the
`trial proceedings that the work of Mr. Carpenter, as a company employee,
`
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