Trials@uspto.gov
`571-272-7822
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` Paper 83
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`Date: June 1, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`IPR2019-00728
`Patent 6,851,115 B1
`____________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Remaining Challenged Claim Unpatentable
`Denying In Part and Dismissing In Part Patent Owner’s Motion to Exclude
`35 U.S.C. §§ 144, 318
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`571-272-7822
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` Paper 83
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`Date: June 1, 2023
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`IPR2019-00728
`Patent 6,851,115 B1
`____________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Remaining Challenged Claim Unpatentable
`Denying In Part and Dismissing In Part Patent Owner’s Motion to Exclude
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`
`
`IPR2019-00728
`Patent 6,851,115 B1
`
`INTRODUCTION
`I.
`This Remand Decision is a final written decision on remand from the
`United States Court of Appeals for the Federal Circuit, which vacated and
`remanded our original Final Written Decision in this inter partes review.
`See Google LLC v. IPA Techs. Inc., 34 F.4th 1081, 1089 (Fed. Cir. 2022);
`Paper 74 (“Final Dec.”). The Federal Circuit remanded for the Board to
`address whether a cited reference was prior art under § 102(a) to the
`challenged claims of U.S. Patent No. 6,851,115 B1 (“the ’115 patent,”
`Ex. 1001). Id.
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R. §
`42.73. For the reasons discussed below, Petitioner has demonstrated by a
`preponderance of the evidence that the remaining challenged claim 60 of the
`’115 patent is unpatentable by a preponderance of evidence.
`
`A. Background
`Petitioner, Google LLC (“Google”), filed a Petition seeking inter
`partes review of claims 61–70 of the ’115 patent, which is assigned to IPA
`Technologies Inc. (“Patent Owner” or “IPA”). Paper 1 (“Petition” or
`“Pet.”), 4–5. Patent Owner filed a Preliminary Response (Paper 6).
`Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter
`partes review of the challenged claims. Paper 11 (“Dec. on Inst.”).
`After institution, 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, “Sur-reply”). Patent Owner filed a Motion to
`Exclude (Paper 67) and Petitioner filed an opposition (Paper 70) to which
`Patent Owner replied (Paper 72). A combined oral hearing for this inter
`
`2
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`IPR2019-00728
`Patent 6,851,115 B1
`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.”).
`We issued a Final Written Decision finding that Petitioner Google had
`not established that the Martin1 reference that was asserted in all challenged
`grounds was prior art under § 102(a). Final Dec. 25. Accordingly, we found
`that Google failed to show any of the challenged claims were unpatentable
`as each of the challenged grounds rely on the Martin reference. Id. at 25, 29.
`On May 19, 2022, the Federal Circuit issued an opinion vacating and
`remanding our Final Written Decision finding that “the Board did not
`complete the full . . . analysis” required by Duncan Parking Technologies,
`Inc. v. IPS Group, Inc., 914 F.3d 1347, 1357 (Fed. Cir. 2019), with respect
`to the § 102(a) prior art status of the asserted reference. Google, 34 F.4th at
`1087. Specifically, with respect to the Martin reference, the Federal Circuit
`instructs us that,
`“to decide whether a reference patent is ‘by another’ . . . , the
`Board must”:
`(1) determine what portions of the reference patent
`were relied on as prior art to anticipate the claim
`limitations at issue, (2) evaluate the degree to
`which those portions were conceived ‘by another,’
`and (3) decide whether that other person’s
`contribution is significant enough, when measured
`against the full anticipating disclosure, to render
`
`
`1 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” or “the Martin reference”).
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`3
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`Patent 6,851,115 B1
`him a joint inventor of the applied portions of the
`reference patent.
`Id. at 1085 (quoting Duncan Parking, 914 F.3d at 1358 (quoting pre-AIA 35
`U.S.C. § 102(e)) (alteration in original)). On June 28, 2022, the Federal
`Circuit issued its mandate. See Paper 77. With our authorization (Paper 79),
`in September 2022, the parties filed additional briefing limited to addressing
`the remanded prior art issue. See Petitioner’s Brief on Remand (Paper 81,
`“Pet. Remand”); Patent Owner’s Responsive Brief on Remand (Paper 82,
`“PO Remand”).
`
`B. Remaining Challenged Claim
`In a related challenge to the ’115 patent, the Federal Circuit affirmed a
`Board decision finding claims 61, 62, and 64–70 unpatentable. Microsoft
`Corp. v. IPA Techs. Inc., No. 2021-1412, 2022 WL 989403, at *1 (Fed. Cir.
`Apr. 1, 2022) (nonprecedential); see also Microsoft Corp. v. IPA Techs. Inc.,
`IPR2019-00814, Paper 44 at 171 (PTAB Nov. 5, 2020) (Final Written
`Decision) (finding, inter alia, claims 61, 62, and 64–70 of the ’115 patent
`unpatentable). In a subsequent remand decision, the Board found claim 63
`of the ’115 patent was not unpatentable. Microsoft Corp. v. IPA Techs. Inc.,
`IPR2019-00814, Paper 52 at 47–48 (PTAB Dec. 2, 2022) (Final Written
`Decision on Remand). Claims 61, 62, and 64–70 have been canceled. Id. at
`Paper 55, 2 (814 Trial Certificate) (canceling claims 1–8, 11–28, 48–62, and
`64–89 of the ’115 patent). Thus, although Petitioner Google challenged
`claims 61–70 of the ’115 patent in this proceeding, claim 63 is the sole
`remaining claim at issue in this remanded proceeding.
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`IPR2019-00728
`Patent 6,851,115 B1
`Analyzing the full record in view of the Federal Circuit’s remand
`decision, we address below the remaining ground at issue in this Remand
`Final Written Decision, which is summarized in the following table.
`
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`63
`
`103(a)2
`
`Martin, 3 Kohn4
`
`
`See id.; Dec. on Inst. 7–8, 36; see Pet. 4–5.
`
`
`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
`(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. As
`
`
`2 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.
`3 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” or ”the Martin reference”).
`4 U.S. Patent No. 6,088,689 to Kohn issued Jul. 11, 2000, filed Nov. 29,
`1995 (Ex. 1012, “Kohn”).
`
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`Patent 6,851,115 B1
`noted above, the ’115 patent was also addressed in Microsoft, IPR2019-
`00814, Paper 52 at 47–48 (PTAB Dec. 2, 2022) (Final Written Decision on
`Remand) and Microsoft, No. 2021-1412, 2022 WL 989403 (Fed. Cir. Apr. 1,
`2022).
`
`D. The ’115 Patent and Illustrative Claims
`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
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`Patent 6,851,115 B1
`is organized “as a community of peers by their common relationship” to
`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.
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`IPR2019-00728
`Patent 6,851,115 B1
`
`Referencing Figures 5 and 6 (not reproduced herein), the ’115 patent
`describes an exemplary embodiment where user interface (UI) agent 408
`runs on 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 UI
`agent 408, UI agent 408 sends the request to facilitator agent 402, which in
`turn asks natural language 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.
`Claim 63 depends from independent claim 61. Claims 61 and 63 are
`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
`
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`IPR2019-00728
`Patent 6,851,115 B1
`a content layer comprising one or more of goals, triggers and
`data elements associated with the events; and
`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.
`63. A facilitator agent as recited in claim 61 wherein the agent
`registry includes a symbolic name, a unique address, data
`declarations, trigger declarations, task declarations, and
`process characteristics for each active agent.
`Ex. 1001, 35:4–29, 35:35–38.
`
`E. Testimonial Evidence
`In support of its unpatentability contentions, Petitioner relies on the
`Declaration of Dr. Dan R. Olsen Jr. (Ex. 1002, “Olsen Declaration” or
`“Olsen Decl.”) and the Declaration of Dr. Douglas B. Moran (Ex. 1007).
`Petitioner submits Patent Owner’s cross-examination deposition testimony
`of Dr. Moran (Ex. 1153), who is named as an author of the Martin reference.
`Patent Owner deposed and Petitioner cross-examined Mr. Adam J. Cheyer
`(Ex. 2037) and Mr. David L. Martin (Ex. 2038), who are both listed as
`inventors on the ’115 patent and named as co-authors of the Martin
`reference. In addition, both parties cite the 37 C.F.R. § 1.132 declarations of
`Messrs. Cheyer and Martin submitted in the prosecution history of the ’115
`patent. Ex. 1004, 221–24 (37 C.F.R. § 1.132 declarations); Ex. 2039 (37
`C.F.R. § 1.132 declarations).
`
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`
`II. ANALYSIS
`A. Relevant Principles of Law
`To prevail in challenging Patent Owner’s claim, Petitioner must
`demonstrate by a preponderance of the evidence that the claim is
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, objective indicia of
`non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). 5
`
`
`5 With respect to the fourth Graham factor, the parties do not present
`arguments or evidence regarding objective indicia of non-obviousness.
`
`10
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`IPR2019-00728
`Patent 6,851,115 B1
`An obviousness determination requires finding “both ‘that a skilled
`artisan would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
`68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (holding
`that in an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”). Further,
`“[t]o satisfy its burden of proving obviousness, a petitioner cannot employ
`mere conclusory statements. The petitioner must instead articulate specific
`reasoning, based on evidence of record, to support the legal conclusion of
`obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`(Fed. Cir. 2016).
`
`B. Level of Ordinary Skill in the Art
`In our Final Written Decision, we found Petitioner’s proposal
`consistent with the level of ordinary skill in the art reflected by the prior art
`of record. Final Dec. 7 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). On
`appeal the parties did not challenge this finding and we see no reason to
`depart from this determination on remand. Thus, we continue to find 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.
`
`11
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`
`C. Claim Construction
`In an inter partes review, we apply the same claim construction
`standard that would be used in a civil action under 35 U.S.C. § 282(b),
`following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019); 83 Fed. Reg.
`51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying this standard, claim
`terms are generally given their ordinary and customary meaning, as would
`be understood by a person of ordinary skill in the art, at the time of the
`invention and in the context of the entire patent disclosure. Phillips, 415
`F.3d at 1312–13. The parties do not propose a construction for any claim
`term. Petitioner avers that no express constructions are required (Pet. 17),
`and Patent Owner concurs and provides no express constructions (Prelim.
`Resp. 5; PO Resp.).
`Based on the final record, we determine no claim terms require
`express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in
`controversy need to be construed, and “only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
`Techs. in the context of an inter partes review).
`
`D. Asserted Prior Art Overview
`1. 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
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`efforts of distributed collections of autonomous agents.” Ex. 1011, 106
`(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,
`
`
`6 The page numbers for the Martin reference refer to Petitioner’s inserted
`page numbers in the bottom, left-hand corner of each page.
`
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`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
`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.
`
`2. Overview of Kohn (Ex. 1012)
`Kohn describes a Multiple-Agent Hybrid Control Architecture
`(MAHCA) which uses agents to analyze, design, and implement intelligent
`control of distributed processes. Ex. 1012, [57]. According to Kohn, a
`single agent can be configured to control a local process, or a network of
`agents can be configured to control more complex, distributed processes. Id.
`Kohn describes that the network of multiple agents interact through
`messages to create a global behavior. Id. For example, each individual
`agent may take local actions in accordance with local and global constraints.
`Id. at 16:20–22. Also, a network of cooperating control agents may
`
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`implement local control actions to synchronize attainment of global goals.
`Id. at 16:23–25.
`
`E. Martin as Prior Art Under 35 U.S.C. § 102(a)
`1. Martin Reference Background
`The Martin reference 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
`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 application that 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 declarations 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 (§ 1.132 declarations), 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, 221–24.
`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
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`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 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 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. Our Final Written Decision and The Federal Circuit’s Decision
`In our Final Written Decision, we determined that Petitioner provided
`insufficient evidence to establish that the Martin reference was the work of
`another. Final Dec. 23–25. Specifically, we found the evidence insufficient
`to credit Dr. Moran’s declaration and testimony regarding his contribution to
`the Martin reference over Patent Owner’s competing evidence and testimony
`from Messrs. Cheyer and Martin that asserted that Dr. Moran did not make a
`
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`technical contribution to the Martin reference. Id. In so doing, we found
`that Petitioner did not carry its burden to establish Dr. Moran’s sufficient
`contribution to the Martin reference to qualify as a joint inventor. Id.
`The Federal Circuit found “no error with the Board’s requiring that
`Petitioner 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.” Google, 34 F.4th at 1086. However, the
`Federal Circuit found that in finding the testimony of Dr. Moran,
`Mr. Martin, and Mr. Cheyer credible (Final Dec. 15 n.6), we failed to
`resolve the various conflicts in testimony and make certain findings of fact
`under the Duncan analysis to credit Messrs. Cheyer and Martin or
`Dr. Moran with respect to the joint inventor inquiry for the Martin reference.
`Google, 34 F.4th at 1086.
`With respect to the joint inventor inquiry into the Martin reference,
`the Federal Circuit states that:
`Joint inventors need “not physically work together or at
`the same time, . . . make the same type or amount of contribution,
`or . . . make a contribution to the subject matter of every claim of
`the patent.” 35 U.S.C. § 116(a). A joint inventor must simply:
`(1) contribute in some significant manner to the
`conception or reduction to practice of the invention,
`(2) make a contribution to the claimed invention
`that is not insignificant in quality, when that
`contribution is measured against the dimension of
`the full invention, and (3) do more than merely
`explain to the real inventors well-known concepts
`and/or the current state of the art.
`In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018) (quoting
`Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)).
`
`17
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`Patent 6,851,115 B1
`Accordingly, “to decide whether a reference patent is ‘by
`another’ . . ., the Board must”:
`(1) determine what portions of the reference patent
`were relied on as prior art to anticipate the claim
`limitations at issue, (2) evaluate the degree to which
`those portions were conceived ‘by another,’ and
`(3) decide whether that other person’s contribution
`is significant enough, when measured against the
`full anticipating disclosure, to render him a joint
`inventor of the applied portions of the reference
`patent.
`Duncan Parking, 914 F.3d at 1358 (quoting pre-AIA 35 U.S.C.
`§ 102(e)).
`Google, 34 F.4th at 1085. Having reviewed the record and the Final Written
`Decision, the Federal Circuit focused on Dr. Moran’s claim of contributions
`to the facilitator concept recited in Section 4.5 (Facilitation) of the Martin
`reference, which found their way into the specification of the challenged
`patents. Id. at 1087 (comparing the Martin reference and the challenged
`patent’s specification) (citing Ex. 1011, 23–24 (Section 4.5); U.S. Patent No.
`7,069,560 B1 (“the ’560 patent”), 19:14–62); see Ex. 1001, 18:56–19:36. In
`further addressing the testimony and evidence, the Federal Circuit
`characterized the joint inventorship inquiry as requiring Google to “show[]
`that Dr. Moran made a significant enough contribution to the portions [of the
`Martin reference] relied on to invalidate the challenged patents to qualify as
`a joint inventor of those portions.” Google, 34 F.4th at 1086.
`Thus, the Federal Circuit instructs us that the issue on remand is
`“whether [Dr. Moran’s] testimony should ultimately be credited over Cheyer
`and Martin’s conflicting testimony during the IPR proceedings” (id. at 1088)
`as “[t]he § 1.132 declarations by Martin and Cheyer [in the prosecution
`
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`history], standing alone, were insufficiently focused on the Duncan question
`to raise a fact issue” (id. at 1088 n.5).
`3. Parties’ Contentions on Remand
`With respect to the Duncan analysis, the parties do not dispute the
`portions of Martin that Petitioner cites and relies upon in the Petition. See
`Pet. Remand 3–4; PO Remand 2. Accordingly, we focus our inquiry on the
`second and third prongs of Duncan: “(2) . . . the degree to which those
`portions were conceived ‘by another,’ and (3) decide whether that other
`person’s contribution is significant enough, when measured against the full
`anticipating disclosure, to render him a joint inventor of the applied portions
`of the reference patent.” Duncan Parking, 914 F.3d at 1358.
`Petitioner argues that under Duncan Parking, a preponderance of the
`evidence supports that Dr. Moran contributed to the facilitator in Martin.
`Pet. Remand 1. Petitioner asserts that Dr. Moran identified that he
`contributed to and helped conceive of Sections 2.5, 3, 4, 4.1, 4.2, 4.3, 4.4,
`and 4.5 of the Martin reference and that these sections were extensively
`relied on in the Petition. Id. at 3–4 (citing, inter alia, Ex. 1007 ¶ 39;
`Pet. 18–23 (relying on Sections 2.5, 3, 4.1, and 4.5)). With respect to the
`second requirement of the Duncan Parking inquiry, Petitioner argues that
`the evidence, properly credited as discussed by the Federal Circuit, supports
`the degree to which Dr. Moran conceived of the portions of the Martin
`reference. Pet. Remand 5–8 (citing Ex. 1011 (listing Dr. Moran as coauthor
`of Martin); Ex. 1007 ¶¶ 5–22, 23–34, 35–39 (background on the OAA
`project and the Martin reference); Ex. 1174, 1–2 (article describing the OAA
`system, including the facilitator, and listing Dr. Moran as the lead author,
`Mr. Cheyer as second author, but not including Mr. Martin)). In addition,
`
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`IPR2019-00728
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`Petitioner argues that the last prong of Duncan Parking (the significance of
`the contribution measured against the full disclosure) is met, as Dr. Moran’s
`contribution was substantial and instrumental in development of the
`facilitator. Pet. Remand 12 (citing Ex. 1011, 14).
`Patent Owner responds that Petitioner fails to show any substantive
`analysis concerning the second and third Duncan steps, i.e., steps that
`demonstrate Dr. Moran’s specific contributions to the facilitator in the
`Martin reference or in the aspects relied on in the Petition. Pet. Remand 1.
`Patent Owner argues that Petitioner has failed to cure the deficiency in the
`Petition by ignoring the central inquiry, by failing to “identify[] to what
`degree (if any) Dr. Moran conceived of specific aspects of the facilitator
`described in Martin that are also relied upon in the petition.” Id. at 3.
`Unlike the analysis in Duncan, where there was detailed testimony of the
`inventive contribution at issue (Duncan Parking, 914 F.3d at 1359), Patent
`Owner argues that Petitioner’s evidence and testimony offers no substantive
`details regarding Dr. Moran’s contributions beyond the general statement
`that Dr. Moran “played a significant role regarding the distributed agent-
`based approach, and in particular
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