Trials@uspto.gov
`571-272-7822
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` Paper 74
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` Date: September 2, 2020
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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
`Determining No Challenged Claims Unpatentable
`Denying and Dismissing Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2019-00728
`Patent 6,851,115 B1
`
`INTRODUCTION
`I.
`In this inter partes review, Google LLC (“Petitioner”) challenges
`claims 61–70 of U.S. Patent No. 6,851,115 B1 (“the ’115 Patent,” Ex. 1001),
`which is assigned to IPA Technologies Inc. (“Patent Owner”). Paper 1
`(“Petition” or “Pet.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the reasons
`discussed below, we determine that Petitioner has not demonstrated the
`unpatentability of claims 61–70.
`
`A. Procedural History
`Petitioner filed a Petition challenging claims 61–70 of the ’115 Patent
`(Pet. 4–5), and Patent Owner filed a Preliminary Response (Paper 6). We
`instituted trial on all grounds of unpatentability. Paper 11 (“Dec. on Inst.”),
`22. Patent Owner filed a Request for Rehearing of our decision granting
`institution (Paper 14) that was denied by our Decision Denying Patent
`Owner’s Request (Paper 40). Patent Owner’s request for Precedential
`Opinion Panel (POP) review was also denied (Paper 26).
`During trial, 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, “PO Sur-reply”). Patent Owner filed a Motion to
`Exclude (Paper 67), Petitioner filed an opposition (Paper 70) to which Patent
`Owner replied (Paper 72). A combined oral hearing for this inter 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.”).
`
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`IPR2019-00728
`Patent 6,851,115 B1
`B. Instituted Grounds of Unpatentability
`We instituted inter partes review of claims 61–70 of the ’115 patent
`on the following grounds:
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`61, 63–70
`
`62
`
`103(a)1
`
`103(a)
`
`Martin,2 Kohn
`
`Martin, Kohn,3 Pollock4
`
`
`Dec. on Inst. 7–8, 36; see Pet. 4–5.
`Petitioner relies on the Declaration of Dr. Dan R. Olsen Jr. (Ex. 1002)
`and the Declaration from Dr. Douglas B. Moran (Ex. 1007).
`
`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
`
`1 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.
`2 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,” ”the Martin reference”).
`3 U.S. Patent No. 6,088,689 to Kohn issued July 11, 2000, filed Nov. 29,
`1995 (Ex. 1012, “Kohn”).
`4 U.S. Patent No. 5,706,406 to Pollock issued Jan. 6, 1998, filed May 22,
`1995 (Ex. 1013, “Pollock”).
`
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`IPR2019-00728
`Patent 6,851,115 B1
`(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.
`
`D. The ’115 Patent and Illustrative Claim
`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
`is organized “as a community of peers by their common relationship” to
`
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`IPR2019-00728
`Patent 6,851,115 B1
`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.
`
`Referencing Figures 5 and 6 (not reproduced herein), the ’115 Patent
`describes an exemplary embodiment where user interface agent 408 runs on
`
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`IPR2019-00728
`Patent 6,851,115 B1
`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 user
`interface (UI) 408, UI 408 sends the request to facilitator agent 402, which
`in turn asks natural language (NL) 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.
`Of the challenged claims, only claim 61 is independent. Claim 61 is
`illustrative of the challenged claims and is 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
`a content layer comprising one or more of goals, triggers and
`data elements associated with the events; and
`
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`IPR2019-00728
`Patent 6,851,115 B1
`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.
`Ex. 1001, 35:4–29.
`
`II. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Olsen, opines 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. Patent Owner does not
`dispute Dr. Olsen’s assessment of the level of ordinary skill in the art.
`See generally PO Resp.
`Based on the current record, we find Petitioner’s proposal consistent
`with the level of ordinary skill in the art reflected by the prior art of record.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we adopt
`Petitioner’s unopposed position as to the level of ordinary skill in the art.
`
`B. 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
`efforts of distributed collections of autonomous agents.” Ex. 1011, 105
`
`
`5 The page numbers for the Martin reference refer to the Petitioner-inserted
`page numbers in the bottom, left-hand corner of each page.
`
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`IPR2019-00728
`Patent 6,851,115 B1
`(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,
`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
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`IPR2019-00728
`Patent 6,851,115 B1
`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.
`
`C. Martin as Prior Art Under 35 U.S.C. § 102(a)
`We instituted inter partes review on each of the grounds presented in
`the Petition, all of which rely on Martin (Ex. 1011), a 1998 proceeding
`article listing David L. Martin, Adam J. Cheyer, and Douglas B. Moran as
`authors. See Pet. 11–16; Dec. on Inst. 8–23, 36. Petitioner asserts that
`Martin is prior art under 35 U.S.C. § 102(a) because (1) it is a printed
`publication that was accessible to the public by November 1998 (Pet. 7–8)
`and (2) describes “the work of a different inventive entity than the inventive
`entity of the ’115 patent” (id. at 11). The parties do not dispute the printed
`publication status of Martin. Patent Owner argues that Martin does not
`qualify as prior art because Petitioner has failed to provide evidence and
`argument under the proper inquiry to show that the portions of the Martin
`reference relied on as prior art represent the work by another; namely
`Douglas Moran. PO Resp. 8–10.
`
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`IPR2019-00728
`Patent 6,851,115 B1
`As each of the grounds rely on Martin, our decision turns on whether
`Martin qualifies as prior art under 35 U.S.C. § 102(a). Because we
`determine below that Petitioner has not shown by a preponderance of the
`evidence that there is not a common inventive entity between Martin and the
`’115 Patent, we find that Petitioner has failed to show that Martin qualifies
`as prior art under 35 U.S.C. § 102(a).
`1. Martin Reference Background
`Martin 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
`(“OAA”) 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 ’198 application (which 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 affidavits
`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 (37 C.F.R. § 1.132 affidavits), 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–
`
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`IPR2019-00728
`Patent 6,851,115 B1
`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
`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 (OAA) 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 the 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. Analysis
`An inventor’s own work is not prior art under 35 U.S.C. § 102(a).
`See Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); In re
`
`11
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`IPR2019-00728
`Patent 6,851,115 B1
`Katz, 687 F.2d 450, 454 (CCPA 1982). The Federal Circuit has stated that
`“[t]he question of whether a reference is a work of others for the purposes of
`§ 102(a) is, like that of inventorship, a question of law based on underlying
`facts.” Allergan, 754 F.3d at 969 (citing Ethicon, Inc. v. U.S. SurgicalCorp.,
`135 F.3d 1456, 1460 (Fed. Cir. 1998)). In determining whether a reference
`is the work of the challenged patent’s named inventor(s), the inquiry focuses
`on whether the relevant content of the reference—“which includes the
`design, trial, and analysis of results”— was solely the work of the
`inventor(s). See Allergan, 754 F.3d at 969. In the context of 35 U.S.C.
`§ 102(e) addressing whether an invention described in a patent granted on an
`application for patent was “by another,” the Federal Circuit has further
`explained that “[w]hat is significant [in this inquiry] is not merely the
`differences in the listed inventors, but whether the portions of the reference
`relied on as prior art, and the subject matter of the claims in question,
`represent the work of a common inventive entity.” Riverwood Int’l Corp. v.
`R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003) (citing In re
`DeBaun, 687 F.2d 459, 462 (CCPA 1982)) (emphasis added); cf.
`EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341,
`1345–47 (Fed. Cir. 2017) (discussing Katz and DeBaun as informing the
`determination whether a published patent application describes the work of
`“another” under § 102(e)). In Riverwood, the Federal Circuit noted that the
`inquiry in DeBaun, which was an appeal from the PTO in which a patent
`reference was asserted as prior art regarding patentability, “applies to the use
`of a reference in a post-issuance validity challenge.” Riverwood, 324 F.3d at
`1356 (citing de Graffenried v. United States, 20 Cl. Ct. 458, 467 (1990)).
`
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`Patent 6,851,115 B1
`Thus, the relevant question for determining whether Martin qualifies
`as prior art under § 102(a) is who invented the subject matter disclosed in the
`Martin reference relied upon by Petitioner. See DeBaun, 687 F.2d at 462
`(when reviewing the Examiner’s rejection based on a patent issued to the
`applicant and another person, “[t]he proper subject of inquiry was . . . who
`invented the subject matter disclosed by (the reference) which was relied on
`to support the rejection” (emphasis added) (citation omitted)).
`Petitioner bears the burden to demonstrate, by a preponderance of the
`evidence, that the challenged claims are unpatentable. 35 U.S.C. § 316(e)
`(2018). In an IPR proceeding based on prior art, this burden necessarily
`includes the burden to establish that the references relied upon qualify as
`prior art.
`Patent Owner argues that Petitioner fails to produce sufficient
`evidence that Moran conceived of the subject matter in the Martin reference
`and that such subject matter supports the obviousness of the challenged
`claims. PO Resp. 7–8, 16–17. Patent Owner also argues that Petitioner
`failed to produce the required corroborating evidence necessary to establish
`that Dr. Moran invented and conceived of anything in the ’115 Patent and
`Dr. Moran’s declaration is vague as to the subject matter invented in the
`Martin reference. Id. at 35–39.
`Petitioner replies that Dr. Moran’s contribution is “sufficient to render
`[the Martin reference] prior art.” Pet. Reply 3–4. Specifically with respect
`to the Moran Declaration, Petitioner states:
`Dr. Moran described his background experience that put him in
`a position to contribute to Martin (Ex. 1007 at ¶¶ 5–22), his deep
`involvement in the OAA project from which Martin originated
`(id. at ¶¶ 23–34), and his particular contributions to and
`involvement with the publication of Martin (id. at ¶¶ 35–39). He
`
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`IPR2019-00728
`Patent 6,851,115 B1
`stepped through Martin and outlined the sections he knew he
`contributed to the conception of, which included Sections 2.5, 3,
`4, and 4.1–4.5. (Id. at ¶ 39.) These are not sections that are
`irrelevant to Google’s analysis, as IPA has suggested. (Response
`at 9–10.) The petition repeatedly cited and relied upon these
`sections throughout its analysis of the claims. (See, e.g., Pet. at
`21–45 (citing pages of Martin corresponding to these sections).)
`Pet. Reply 3–4. In sum, Petitioner states that Dr. Moran made a technical
`contribution to the Martin reference that “contributed to the conception” of
`Martin and identified the sections to which he contributed.
`As we stated in the Institution Decision:
`[T]he relevant question here for determining whether Martin
`qualifies as prior art under § 102(a) is who invented the subject
`matter disclosed in the Martin reference relied upon by
`Petitioner. See DeBaun, 687 F.2d at 462 . . . . If the subject
`matter disclosed in the Martin reference was invented by Adam
`J. Cheyer and David L. Martin, and no other—that is, Douglas
`B. Moran is not a co-inventor of the subject matter described in
`the Martin reference, despite the fact that he is listed as a co-
`author on the face of the reference—then the Martin reference
`and the ’115 patent would represent the work of a common
`inventive entity, namely, Adam J. Cheyer and David L. Martin.
`If, on the other hand, Douglas B. Moran is a co-inventor of the
`subject matter described in the Martin reference relied upon by
`Petitioner, there is no commonality of inventorship . . . and the
`Martin reference would qualify as prior art under § 102(a) as the
`work of “another.”
`Dec. on Inst. 11–12. We address the parties’ contentions below.
`Although the named authors of the article are indicative of a
`contribution to Martin, the Federal Circuit instructs us that authorship of an
`article alone does not establish inventorship of the pertinent subject matter
`disclosed in the article. See Katz, 687 F.2d at 455; see also DeBaun, 687
`F.2d at 463 (noting that for co-inventors of a prior art reference joint or solo
`
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`inventorship is not presumed). Although Dr. Moran provides testimony that
`authors to SRI papers made significant contributions and that the Martin
`reference was derived from his writings and presentations, authorship in this
`case is not conclusive of inventorship. See Ex. 1007 ¶ 37 (“Much of the
`writing in the OAA paper is mine, either directly borrowed from or derived
`from papers, presentations and proposals that I wrote.”). Authorship is
`instructive here but does not resolve what portions of the invention
`Dr. Moran contributed to the Martin reference sufficient to establish
`invention of the relied-upon subject matter in the reference. Accordingly,
`we turn to the evidence produced during trial to support the Moran
`Declaration statements that Dr. Moran contributed to the Martin reference.
`The evidence introduced at trial has not sufficiently or persuasively
`addressed Dr. Moran’s testimony regarding his contribution to the Martin
`reference. We note that Dr. Moran did not review the challenged patent in
`preparation of his testimony. Ex. 1153, 28:7–29:7. Thus, Dr. Moran’s
`declaration statements solely address his recollection and the contents of the
`Martin reference. Id.6
`
`
`6 Patent Owner asserts that Dr. Moran has memory gaps, lacks details, and
`was paid for his participation (PO Resp. 31–34, 48), unlike Messrs. Martin
`and Cheyer who have no financial stake in IPR proceeding, were not paid,
`and have no bias (id. at 48). Petitioner responds that Cheyer and Martin may
`be biased by pressure from SRI and are under obligation to help enforce
`SRI’s patents. Pet. Reply 15. We find the testimony of Dr. Moran,
`Mr. Martin, and Mr. Cheyer to be credible with respect to the facts cited
`herein. In addition, both parties cited evidence regarding SRI employment
`agreements regarding invention disclosures and the lack of such disclosures
`for the ’115 Patent. PO Resp. 42–43; Pet. Reply 18. We do not find the lack
`of such disclosures germane to our inquiry.
`
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`Dr. Moran’s testimony provides detail regarding his background
`contribution to the OAA project in general, but neither his declaration nor
`his deposition testimony explains how this foundation is reflected in his
`contribution to the inventorship of the Martin reference beyond supporting
`foundational concepts. See Ex. 1007 ¶¶ 23–34 (OAA project), 35–39 (OAA
`paper); Ex. 1153, 27:21–28:6. Dr. Moran’s contributions to the Martin
`reference are described as stemming from his “experience operating a
`computer facility at SRI and working in computer security” that yielded his
`“substantial experience in distributed systems.” Ex. 1007 ¶ 39. Petitioner
`cites Dr. Moran’s testimony in arguing that such experience allowed
`Dr. Moran to “contribute[] to the conception of distributed technologies that
`are at the core of [the Martin reference]” but Petitioner does not connect
`Dr. Moran’s experiences and contentions to the substance of the Martin
`reference or connect those “technologies at the core” beyond broad
`categories. Id. (emphasis added); Pet. Reply 3–4. Specifically, neither the
`Petition nor the Petitioner’s Reply identifies how the “distributed
`technologies that are at the core of the [Martin reference]” equate to
`conception or inventorship with respect to the 14 pages of material identified
`in Martin. See Pet. Reply 3–4; Ex. 1007 ¶ 39 (identifying Ex. 1011, 13–17,
`17–24 as sections to which Dr. Moran contributed). We agree that evidence
`supports that Dr. Moran worked on and contributed to systems incorporated
`into OAA (Ex. 1007 ¶¶ 23–34; Ex. 2038, 90:10–18:16, 94:24–95:17 (Martin
`testimony)). Although Patent Owner admits that “large portions of the
`’115 application and the Martin reference are identical or almost identical”
`(PO Resp. 1), similarity and authorship is not sufficient to presume
`inventorship by a preponderance of the evidence. In other words,
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`IPR2019-00728
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`Dr. Moran’s testimony that he contributed to background work of the OAA
`project is not inconsistent with the assertion that the specific disclosure in
`Martin that is relied on in Petitioner’s challenge is the sole work of the two
`named-inventors of the ’115 Patent.
`The parties vigorously contest whether Dr. Moran’s claims are
`sufficiently corroborated. PO Resp. 26–30; Pet. Reply 4–10; PO
`Sur-reply 9–10. Patent Owner contends that the Moran declaration, dated
`twenty years after the prosecution of the ’115 Patent, lacks necessary
`corroboration needed to invalidate a patent. PO Resp. 8, 26–31 (citing
`Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1366, 1369 (Fed.
`Cir. 1999) (stating that “[t]he law has long looked with disfavor upon
`invalidating patents on the basis of mere testimonial evidence absent other
`evidence that corroborates that testimony” and “corroboration is required of
`any witness whose testimony alone is asserted to invalidate a patent,
`regardless of his or her level of interest”)). “Generally, ‘[c]orroboration is
`required of any witness whose testimony alone is asserted to invalidate a
`patent.’ This requirement stems from the suspect nature of oral testimony
`concerning invalidating events.” Lazare Kaplan Int’l, Inc. v. Photoscribe
`Techs., Inc., 628 F.3d 1359, 1374 (Fed. Cir. 2010) (quoting TypeRight
`Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004)
`(citation omitted)). The cases Patent Owner cites are those where
`documents such as the Martin reference are not at issue and testimony
`provides the sole basis for the invalidating prior use or disclosure. Lazare
`Kaplan, 628 F.3d at 1374; Finnigan Corp., 180 F.3d at 1369. Although
`contemporary corroboration is not required in every case, it remains a well-
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`Patent 6,851,115 B1
`established principle in Federal Circuit case law that claims of inventorship
`require support. See EmeraChem, 859 F.3d at 1345–46.
`Petitioner argues that Dr. Moran’s technical contributions to OAA are
`corroborated by Moran’s co-authorship of the Martin reference,
`contemporaneously authored OAA papers (Pet. Reply 5–7 (citing Ex. 1170,
`1; Ex. 1174, 1); Pet. Reply 8 (citing Ex. 2020, 3 (Moran CV))); his listing as
`an inventor on a related OAA patent (Pet. Reply 7–8 (citing Ex. 2002,
`code (75) (listing Dr. Moran as co-inventor)); and the testimony of
`Messrs. Cheyer and Martin (Ex. 1153, 78:22–79:10, 79:16–81:13 (Martin
`deposition testimony); Pet. Reply 12–13 (citing Cheyer and Martin
`testimony)). We credit this evidence to the extent it shows that Dr. Moran
`made technical contributions to OAA. Pet. Reply 5–8. Thus, we agree with
`Petitioner that sufficient evidence supports the technical contributions of
`Dr. Moran to OAA, including admission by Mr. Martin that Dr. Moran made
`such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at
`73:3–73:15); contemporaneous papers (see, e.g., Exs. 1170, 1174), and U.S.
`Patent No. 6,859,931 (“the ’931 Patent”) (Ex. 2002). See Pet. Reply 5–7, 8,
`12–13. The level of such contribution and whether it is significant such that
`it evidences invention of subject matter of Martin is what is lacking from
`that evidence introduced at trial. See, e.g., Ex. 2038, 115:14–119:10
`(deposition of Mr. Martin regarding Dr. Moran’s contribution); Ex. 2037,
`94:11–13, 111:3–10 (Mr. Cheyer acknowledging that Dr. Moran contributed
`technical ideas).
`Petitioner asserts that “the Board should disregard the inventor
`declarations in the prosecution history of the ’115 Patent and should treat
`Martin as a prior art reference under § 102(a).” Pet. 16. In this case,
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`Petitioner asserts that Rule 1.132 affidavits should be disregarded in light of
`Dr. Moran’s testimony regarding his technical contribution to the Martin
`reference. Pet. Reply 3–4; Pet. 11–16; Ex. 1007 ¶¶ 37–39. Although
`Dr. Moran (Ex. 1007 ¶ 39) and Messrs. Martin and Cheyer assert that
`Dr. Moran made technical contributions, such evidence does not provide
`sufficient foundation to find those contributions were inventive by a
`preponderance of the evidence.
`With respect to the ’931 Patent (a continuation-in-part from the
`’115 Patent), which names Dr. Moran along with Messrs. Martin and Cheyer
`and Mr. William Mark as co-inventors, the parties dispute the importance of
`this fact to Dr. Moran’s testimony regarding the Martin reference. See
`Ex. 2002, codes (63), (75); PO Resp. 20–23, 45–46; Pet. Reply 2–3, 7–8.
`Patent Owner argues that the ’931 Patent undermines the Moran declaration,
`which fails to mention the patent as an inventive contribution (PO Resp. 45–
`46), and indicates that the Examiner’s awareness of Moran as a named
`inventor that bolsters the reliability of the Rule 1.132 affidavits (id. at 21–
`22). We agree with Petitioner (Pet. Reply 7–8) that the’931 Patent supports
`that Dr. Moran made inventive contributions to the ’931 Patent and that
`patent relates to the OAA project (Ex. 2038, 111:2–12), but Petitioner offers
`insufficient evidence showing what those inventive contributions were in the
`’931 Patent or how they relate to Dr. Moran’s contributions to the Martin
`reference. Petitioner argues that the ’931 Patent corroborates Dr. Moran’s
`testimony that he was actively involved in developing the system described
`in the Martin reference and that both the ’931 Patent and the Martin
`reference are “directed to distributed objects and an agent registry in the