UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`GOOGLE LLC
`Petitioner
`v.
`IPA TECHNOLOGIES INC.
`Patent Owner
`____________________
`Case IPR2019-00728
`Patent No. 6,851,115
`____________________
`PETITIONER’S BRIEF ON REMAND
`
`
`
`
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`GOOGLE LLC
`Petitioner
`v.
`IPA TECHNOLOGIES INC.
`Patent Owner
`____________________
`Case IPR2019-00728
`Patent No. 6,851,115
`____________________
`PETITIONER’S BRIEF ON REMAND
`
`
`
`
`
`Case IPR2019-00728
`
`TABLE OF CONTENTS
`I.
`Introduction ...................................................................................................... 1
`The Federal Circuit’s Decision ........................................................................ 1
`II.
`III. The Duncan Factors Demonstrate That the Martin Reference Qualifies
`as Prior Art ....................................................................................................... 3
`A.
`The Portions of the Martin Reference That Were Relied Upon
`as Prior Art ............................................................................................ 3
`The Degree to Which Those Portions Were Conceived By Dr.
`Moran .................................................................................................... 5
`1.
`Dr. Moran’s Testimony Is Well Supported ................................ 5
`2. Mr. Cheyer and Mr. Martin’s Testimony Should Not be
`Credited Over Dr. Moran’s Testimony ....................................... 8
`The Significance of Dr. Moran’s Contribution Measured
`Against the Full Anticipation Disclosure of the Martin
`Reference .............................................................................................12
`IV. Conclusion .....................................................................................................12
`
`
`
`B.
`
`C.
`
`i
`
`
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`Case IPR2019-00728
`
`I.
`
`INTRODUCTION
`
`Petitioner Google LLC submits this brief on remand to address the question
`
`of whether the Martin reference qualifies as prior art under Duncan Parking
`
`Technologies, Inc. v. IPS Group, Inc., 914 F.3d 1347 (Fed. Cir. 2019). See Order
`
`on Conduct of Proceedings on Remand (“Order”), Paper 79, at 3-4 (Sept. 2, 2022).
`
`As discussed below, a preponderance of the evidence shows that the Martin
`
`reference qualifies as prior art. Dr. Moran’s testimony regarding his contributions
`
`to the claimed facilitator was detailed, well-supported, and should be credited over
`
`conflicting, unsupported testimony by Mr. Cheyer and Mr. Martin.
`
`II. THE FEDERAL CIRCUIT’S DECISION
`
`As the Federal Circuit observed, “[t]he Martin reference describes the OAA
`
`project developed at SRI.” Slip Opinion in Appeal Nos. 2021-1179, -1180, -1185
`
`(Fed. Cir. May 19, 2022), available as Paper 78 (“Slip op.”), at 3. The Martin
`
`reference was co-authored by three individuals: Mr. Martin and Mr. Cheyer, who
`
`are both named inventors of the challenged patent, and Dr. Moran. Slip op. at 2-3.
`
`“Dr. Moran was the most senior computer scientist on the OAA team, worked on
`
`the OAA team for five years, authored five papers relating to OAA, and was
`
`named as a joint inventor on U.S. Patent No. 6,859,931 … , which is a
`
`continuation-in-part of [U.S. Patent No. 6,851,115].” Slip op. at 6.
`
`The Federal Circuit focused specifically on the “facilitator concept recited in
`
`1
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`Case IPR2019-00728
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`the Martin reference,” and Dr. Moran’s testimony regarding his contributions to
`
`the facilitator. Slip op. 7-8; see also Ex. 1007 at ¶ 39. As the court explained,
`
`“[t]he 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 in,
`
`and relevant to, the challenge to particular claims.” Slip op. 9. And the court in
`
`fact found that “Dr. Moran’s testimony as to his technical contributions was
`
`sufficiently corroborated by his being named as a co-author on the Martin
`
`reference, his role within the OAA project, Cheyer’s acknowledgement of Dr.
`
`Moran’s technical contributions to the OAA project, and Dr. Moran’s being named
`
`on the related ’931 patent.” Slip op. 10; see also id. (explaining that “[a]lthough
`
`coauthorship does not presumptively make a co-author a coinventor … it is
`
`significant corroborating evidence that a co-author contributed to the invention”).
`
`Even though Dr. Moran’s testimony was corroborated, the Federal Circuit
`
`explained that “[t]he issue in this case was … whether [Dr. Moran’s] testimony
`
`should ultimately be credited over Cheyer and Martin’s conflicting testimony.”
`
`Slip op. 10. The court made clear that “[t]he § 1.132 declarations by Martin and
`
`Cheyer [filed during prosecution], standing alone, were insufficiently focused on
`
`the Duncan question to raise a fact issue.” Slip op. 10 n.5. Nonetheless, the
`
`Federal Circuit remanded with instruction to the Board to “resolve this highly
`
`relevant evidentiary conflict and make appropriate findings of fact.” Slip op. 11.
`
`2
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`Case IPR2019-00728
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`III. THE DUNCAN FACTORS DEMONSTRATE THAT THE MARTIN
`REFERENCE QUALIFIES AS PRIOR ART
`In order to determine whether a reference like the Martin reference qualifies
`
`as prior art “by another,” Duncan requires the Board to:
`
`(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.
`
`Slip op. 5 (quoting Duncan, 914 F.3d at 1358). The Federal Circuit’s decision
`
`already confirms that much of the Duncan framework is met. The critical question
`
`on remand relates to factor (2), and specifically “whether [Dr. Moran’s] testimony”
`
`regarding his contributions to the facilitator described in the Martin reference and
`
`recited in the claims “should ultimately be credited over Cheyer and Martin’s
`
`conflicting testimony.” Slip op. 10. Nonetheless, Google addresses the entire
`
`Duncan framework below, as suggested in the Board’s order. Order at 3. The
`
`evidence overwhelmingly confirms that the Martin reference qualifies as prior art.
`
`A. The Portions of the Martin Reference That Were Relied Upon as
`Prior Art
`Dr. Moran testified that he contributed to and helped conceive the material
`
`contained in at least sections 2.5, 3, 4, 4.1, 4.2, 4.3, 4.4, and 4.5 of the Martin
`
`3
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`Case IPR2019-00728
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`reference. Ex. 1007 at ¶ 39. The petition extensively relied on those sections to
`
`demonstrate the unpatentability of the challenged patents. See, e.g., Pet. at 18-23
`
`(relying on Sections 2.5, 3, 4.1, and 4.5); Pet. at 23-27 (relying on Sections 3, 4,
`
`4.2, and 4.5); Pet. at 27-35 (relying on Sections 4.1, 4.3, 4.4, and 4.5); Pet. at 35-37
`
`(relying on Section 4.1); Pet. at 37 (relying on Section 4.1); Pet. at 37-41 (relying
`
`on Sections 4.1 and 4.4); Pet. at 41-42 (relying on Section 4.1); Pet. at 42-45
`
`(relying on Sections 3, 4.1, 4.4, and 4.5).
`
`The Board, however, may focus specifically on Dr. Moran’s contributions to
`
`the claim limitations directed to the facilitator, which would be sufficient to find
`
`that the Martin reference qualifies as prior art. See, e.g., Ex. 1007 at ¶ 39 (“I had
`
`substantial experience in distributed systems, and contributed to the conception of
`
`distributed technologies that are at the core of the OAA paper, e.g., as described at
`
`Sections 2.5 and 3 of the OAA paper. … In particular, I played a significant role
`
`regarding the distributed agent-based approach, and in particular using a facilitator,
`
`as described in the OAA paper at Section 4 and 4.1-4.5.”). As the Federal Circuit
`
`explained, while “Dr. Moran also claimed to ‘play[] a significant role in the
`
`approach of using recursion to decompose base goals into subgoals that were then
`
`dispatched to agents,’ … it is unnecessary to address this claim because a joint
`
`inventor need not contribute to every aspect of a prior art reference.” Slip op. 8
`
`n.4. Thus, the Federal Circuit found that the Board need only address this assertion
`
`4
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`Case IPR2019-00728
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`regarding recursion “[i]f, on remand, joint inventorship is not found as to the
`
`relied-on portions of the Martin reference for the facilitator claim limitation.” Id.
`
`B.
`
`The Degree to Which Those Portions Were Conceived By Dr.
`Moran
`“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
`
`in, and relevant to, the challenge to particular claims.” Slip op. 9. As such, the
`
`central question in determining the degree to which Dr. Moran conceived of the
`
`relied-upon portions of the Martin reference is whether his testimony “should
`
`ultimately be credited over Cheyer and Martin’s conflicting testimony.” Slip op.
`
`10. The evidence overwhelmingly supports Dr. Moran.
`
`Dr. Moran’s Testimony Is Well Supported
`1.
`As an initial matter, Dr. Moran is listed as a co-author of the Martin
`
`reference. Ex. 1011 at 10. This in itself “is significant corroborating evidence that
`
`[Dr. Moran] contributed to the invention” described in the Martin reference. Slip
`
`op. 10. And as the Federal Circuit has explained, there is no “explicit lower limit
`
`on the quantum or quality of inventive contribution required for a person to qualify
`
`as a joint inventor.” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed.
`
`Cir. 2004). “People may be joint inventors … even though each does not make the
`
`same type or amount of contribution. … The statute does not set forth the
`
`5
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`Case IPR2019-00728
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`minimum quality or quantity of contribution required for joint inventorship.”
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`Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994).
`
`In addition, Dr. Moran was not speaking as a stranger to the OAA system
`
`described in the Martin reference. “Dr. Moran was the most senior computer
`
`scientist on the OAA team” and “worked on the OAA team for five years.” Slip
`
`op. at 6. Dr. Moran explained that he left the original assignee of the patent, SRI,
`
`on good terms, Ex. 1153 at 66:15-25, did not realize his testimony could harm the
`
`validity of the patent, id. at 19:11-14, but felt a moral obligation to testify “as a
`
`scientist and worrying about the correctness of the literature and the attributions,”
`
`id. at 67:1-11; see also id. at 44:6-9 (“I did not feel I needed to contact SRI because
`
`… I was providing a statement of fact, which would be neutral.”).
`
`Dr. Moran’s testimony was thorough. In his declaration, immediately after
`
`documenting his contributions, he explained that “[a]s discussed above, e.g., in
`
`Sections II and III, my personal experiences and background helped me conceive
`
`of and add such contributions to the OAA paper.” Ex. 1007 at ¶ 39. And in those
`
`sections of his declaration, he meticulously described his education and past work
`
`experiences, id. at ¶¶ 5-22, discussed the OAA project generally, how it came to
`
`be, and his involvement in it, id. at ¶¶ 23-34, and specifically addressed various
`
`aspects of the Martin reference, id. at ¶¶ 35-39.
`
`Dr. Moran explained, among other things, how his past experiences
`
`6
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`Case IPR2019-00728
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`contributed to his ability to help conceive of the facilitator. Id. at ¶¶ 25, 28-31.
`
`Those past experiences included his work on multimodal conferencing
`
`applications, id. at ¶¶ 13-16, and natural language processing systems, id. at ¶¶ 17-
`
`18; see also id. at ¶¶ 19-22. This is notable since one article describing the OAA
`
`system, including the facilitator, listed Dr. Moran as the lead author, listed Mr.
`
`Cheyer as the second author, and did not even include Mr. Martin as an author.1
`
`Ex. 1174 at 1 (identifying authorship), 2 (“The natural language system produces a
`
`logical form representing the user’s request and passes it to the Facilitator agent,
`
`which decomposes it into requests that can be handled by the individual
`
`application agents.”). This article explained that the OAA project “grew out of two
`
`interrelated research projects” that Dr. Moran—but not Mr. Cheyer or Mr.
`
`Martin—was involved in. Id. at 1 (identifying references [5] and [6] as describing
`
`these projects); see also id. at 4 (identifying Dr. Moran as an author of references
`
`
`1 The fact that Mr. Meyer is not even listed as an author is telling. See Allergan,
`
`Inc. v. Apotex Inc., 754 F.3d 952, 969 (Fed. Cir. 2014) (the fact that a named
`
`inventor “was not listed as a co-author at all” in a related article, while “not
`
`dispositive in itself,” is relevant and indicative of there being “no evidence … that
`
`[patent owner’s] explanation of the [prior-art] references [was] in any way
`
`consistent with the content of the articles and the nature of the publications”).
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`7
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`Case IPR2019-00728
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`[5] and [6]). And those projects related to a “multimedia conferencing system”
`
`and “natural language” processing, like Dr. Moran referred to in his declaration.
`
`Id. at 1. Mr. Cheyer, when confronted with this evidence at deposition, resorted to
`
`implausibly disagreeing with his own article. Ex. 2037 at 78:23-79:12 (Mr. Cheyer
`
`asserting that he “would not agree in the characterization of Open Agent
`
`Architecture grew out of those works” as described in the article). The facilitator
`
`agent is likewise described in another article directed to the OAA system—an
`
`article in which Dr. Moran is identified as the lead author. Ex. 1170 at 1
`
`(identifying Dr. Moran as lead author), 2, 4-6, 8 (discussing the facilitator agent);
`
`see also Ex. 1176 at 2 (third-party publication from 1996 identifying Dr. Moran as
`
`the “senior computer scientist” at SRI working on the OAA project).
`
`Dr. Moran’s testimony in this case was also not new. He had consistently
`
`described his role on the OAA team for many years, including when the Martin
`
`reference published. See Ex. 2020 at 9 (Internet Archive website from 1998
`
`showing Dr. Moran’s role in the OAA team); Ex. 1177 at 3 (same); Ex. 1153 at
`
`77:16-78:21 (testimony regarding the same); see also Ex. 2020 at 3 (curriculum
`
`vitae published in 2003 describing Dr. Moran’s role in the OAA team); Ex. 1177 at
`
`6 (same); Ex. 1153 at 78:22-79:10, 79:16-81:13 (testimony regarding the same).
`
`2. Mr. Cheyer and Mr. Martin’s Testimony
`Should Not be Credited Over Dr. Moran’s Testimony
`Mr. Cheyer and Mr. Martin gave conflicting, inconsistent testimony that
`
`8
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`Case IPR2019-00728
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`lacked any corroboration. The lack of corroboration itself is fatal, since
`
`corroboration is a requirement imposed upon inventors of the patent, including
`
`those who claim sole inventorship of subject matter of a reference with multiple
`
`co-authors. See EmeraChem Holdings, LLC v. Volkswagen Grp. Of Am., Inc., 859
`
`F.3d 1341, 1345-48 (Fed. Cir. 2017). While Mr. Cheyer and Mr. Martin signed off
`
`on confusing, conclusory declarations during prosecution that “Douglas B. Moran
`
`is not a co-inventor of the subject matter described in the subject matter disclosed
`
`and claimed in the instant application,” Ex. 1005 at 222, 224, the Federal Circuit
`
`made clear that these prosecution declarations, “standing alone, were insufficiently
`
`focused on the Duncan question to raise a fact issue.” Slip op. 10 n.5. The lack of
`
`corroboration is particularly notable given that IPA worked together with SRI and
`
`had access to SRI’s resources.
`
`Mr. Cheyer and Mr. Martin’s testimony actually contradicted the
`
`contemporaneous evidence. As discussed above, for example, Mr. Cheyer
`
`disagreed with what was written about the origins of the OAA system in an article
`
`where he was listed as a co-author. Supra Section II.B.1. And after being
`
`confronted with the evidence supporting Dr. Moran’s testimony, Mr. Martin agreed
`
`that Dr. Moran “may have made contributions to the technological development of
`
`… agents used with OAA,” Ex. 2038 at 116:2-8; see also id. at 117:7-119:10,
`
`which would have included the facilitator agent.
`
`9
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`
`
`Case IPR2019-00728
`
`IPA has previously pointed to source code files submitted during
`
`prosecution to support Mr. Cheyer and Mr. Martin’s testimony. Patent Owner’s
`
`Response, Paper 41 at 19-20. However, IPA provided no evidence to explain the
`
`significance, if any, of the listing of authors in the source code files, or the date
`
`when the listing was compiled. The authorship listing in the source code files may
`
`have, for example, simply been provided to match the named inventors. Even if
`
`the authorship listing was not designed to simply match the named inventors, the
`
`source code simply confirms Dr. Moran’s testimony. He explained in his
`
`declaration that, as a result of a nerve injury, he “did little programming for OAA
`
`after 1995.” Ex. 1007 ¶ 33; Ex. 2038 at 71:1-6. One does not need to write source
`
`code to conceive of the ideas implemented with that code. Indeed, the submission
`
`of source code is unnecessary in support of a patent because “normally, writing
`
`code for such software is within the skill of the art.” See Fonar Corp. v. Gen. Elec.
`
`Co., 107 F.3d 1543, 1549 (Fed. Cir. 1997). IPA’s argument, if anything, tells a
`
`story of IPA (and Mr. Cheyer and Mr. Martin) overemphasizing the importance of
`
`coding, and missing the significance of inventive ideas that Dr. Moran provided for
`
`Mr. Cheyer and Mr. Martin to implement through code.
`
`IPA has previously suggested that Dr. Moran should not be believed because
`
`his employment agreement with SRI required him to disclose all discoveries and
`
`inventions. Patent Owner’s Response, Paper 41 at 43-45. But IPA’s argument is
`
`10
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`
`
`Case IPR2019-00728
`
`contradicted by the behavior of Mr. Cheyer and Mr. Martin, who were also
`
`employees of SRI, and did not submit any invention disclosure for the patent-at-
`
`issue here even though they are named inventors. This shows that, at least as a
`
`practical matter, SRI employees did not “disclose all discoveries.” Paper 59 at 18-
`
`19 (explaining how IPA and SRI failed to produce any relevant invention
`
`disclosures by the named inventors); Paper 66 at 13 (failing to dispute that the
`
`named inventors did not submit an invention disclosure); see also Paper 57
`
`(ordering IPA and SRI to produce such invention disclosures).
`
`IPA has also previously asserted that “[u]nlike Moran, who was paid for his
`
`testimony, both Cheyer’s and Martin’s testimony are unbiased as both confirmed
`
`they (1) were not paid for their testimony, (2) are not affiliated with Patent Owner,
`
`and (3) have no financial stake in the outcome of the IPR proceeding or the
`
`associated litigations.” Patent Owner’s Response, Paper 41 at 48. This is doubly
`
`incorrect. Dr. Moran was not “paid for [his] testimony,” but simply reimbursed for
`
`his time. Ex. 1007 at ¶ 3; see also Ex. 1153 at 23:6-8. On the other hand, when
`
`Mr. Martin was asked at deposition whether he “recall[ed] anyone from SRI
`
`suggesting” that he had “an obligation to cooperate with IPA in this action,” SRI’s
`
`attorney refused to let him answer, even though Mr. Martin was not an SRI
`
`employee, and had not been for many years. Ex. 2038 at 81:13-82:19; see also Ex.
`
`1180 at 1, 3, 5, 7, 10 (discussing Mr. Cheyer and Mr. Martin’s obligation to help
`
`11
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`Case IPR2019-00728
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`“enforce” SRI’s patents). Additionally, the technology at issue purportedly led to
`
`Siri, which was co-created by Mr. Cheyer, and which Mr. Martin was also
`
`involved in. Patent Owner’s Response, Paper 41 at 1; Ex. 2037 at 25:18-23, 26:7-
`
`8; Ex. 1181 at 2. At the same time, at least Mr. Cheyer was incorrectly told by IPA
`
`that Dr. Moran was claiming he should have been named as an inventor of the
`
`patent-at-issue. Ex. 2037 at 52:3-13. As such, IPA likely incorrectly led Mr.
`
`Cheyer (and perhaps also Mr. Martin) to believe that he stood to bear substantial
`
`financial risk and/or loss of recognition with respect to his development of Siri.
`
`C. The Significance of Dr. Moran’s Contribution Measured Against
`the Full Anticipation Disclosure of the Martin Reference
`Dr. Moran’s contribution was substantial. As discussed above, his insights
`
`were instrumental in the development of the facilitator recited in the claims. And
`
`the facilitator is a key component of the Martin reference, “responsible for
`
`coordinating agent communications and cooperative problem-solving.” Ex. 1011
`
`at 14. Indeed, the Federal Circuit made clear that, if Dr. Moran is found to have
`
`contributed to the conception of the facilitator, that would end the inquiry and
`
`qualify the Martin reference as prior art. Slip op 8 n.4.
`
`IV. CONCLUSION
`
`The evidence overwhelmingly demonstrates that the Martin reference
`
`qualifies as prior art under the Duncan framework.
`
`
`
`12
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`
`
`Dated: September 16, 2022
`
`Case IPR2019-00728
`
`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`Petitioner’s Counsel
`
`
`
`
`13
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`Case IPR2019-00728
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 16th day of September 2022, a copy of the
`
`foregoing Petitioner’s Brief on Remand was served by electronic means upon the
`
`following:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Sarah E. Spires
`Paul J. Skiermont
`Sadaf R. Abdullah
`Mieke K. Malmberg
`Jaime K. Olin
`Sheetal S. Patel
`IPA_SDTeam@skiermontderby.com
`
`
`Dated: September 16, 2022
`
`
`
`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`Petitioner’s Counsel
`
`
`
`
`
`
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