Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 82
`
`Date: June 1, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`IPR2019-00731
`Patent 7,069,560 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
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 82
`
`Date: June 1, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`IPR2019-00731
`Patent 7,069,560 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
`
`
`
`
`
`
`
`IPR2019-00731
`Patent 7,069,560 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 73 (“Final Dec.”). The Federal Circuit remanded to address whether a
`cited reference was prior art under § 102(a) to the challenged claims of U.S.
`Patent No. 7,069,560 B1 (“the ’560 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 28 of the
`’560 patent is unpatentable by a preponderance of evidence.
`
`A. Background
`Petitioner, Google LLC (“Google”), filed a Petition challenging
`claims 26–35, 47, and 48 (“the original challenged claims”) of the ’560
`Patent (Paper 1 (“Petition” or “Pet.”), 4–5), and IPA Technologies Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 6). We instituted trial
`on all grounds of unpatentability. Paper 11 (“Dec. on Inst.”), 34–35. Patent
`Owner filed a Request for Rehearing of our decision granting institution
`(Paper 13) 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).
`After institution, Patent Owner filed a Response (Paper 41, “PO
`Resp.”), Petitioner filed a Reply (Paper 58, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 65, “PO Sur-reply”). Patent Owner filed a Motion
`
`2
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`to Exclude (Paper 66) and Petitioner filed an opposition (Paper 69) to which
`Patent Owner replied (Paper 71). A combined oral hearing for this inter
`partes review and related cases (IPR2019-00728, IPR2019-00730, IPR2019-
`00733, and IPR2019-00734) was held on June 4, 2020, a transcript of which
`appears in the record in each case. Paper 72 (“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. 26. 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 26, 30.
`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
`
`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”).
`
`3
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`against the full anticipating disclosure, to render
`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 Remand Brief (Paper 82, “PO
`Remand”).
`
`B. Remaining Challenged Claim
`On May 16, 2023, following the completion of related inter partes
`review proceedings, a Certificate issued cancelling claims 1–27, 29–49, and
`52 of the ’560 patent. Microsoft Corp. v. IPA Techs. Inc., IPR2019-00835,
`Paper 53 (PTAB May 16, 2023) (835 Trial Certificate). 2 The cancellation of
`claims 1–27, 29–49, and 52 of the ’560 patent removes claims 26, 27, 29–
`35, 47, and 48 from the present case. See id. Therefore, claim 28 is the sole
`remaining claim at issue in this remanded proceeding.
`Analyzing the full record in view of the Federal Circuit’s remand
`decision, we address the remaining ground at issue in this Remand Final
`Written Decision below, which is summarized in the following table:
`
`
`2 See Microsoft Corp. v. IPA Techs. Inc., No. 2021-1412, 2022 WL 989403
`at *1 (Fed. Cir. Apr. 1, 2022) (nonprecedential); Microsoft Corp. v. IPA
`Techs. Inc., IPR2019-00835, Paper 42 (PTAB Oct. 15, 2020) (Final Written
`Decision); Microsoft Corp. v. IPA Techs. Inc., IPR2019-00836, Paper 50
`(PTAB Dec. 22, 2022) (Final Written Decision on Remand); Microsoft
`Corp. v. IPA Techs. Inc., IPR2019-00837, Paper 42 (PTAB Oct. 22, 2020)
`(Final Written Decision).
`
`4
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`28
`
`103(a)
`
`Martin, 3 Farley4
`
`
`See id.; Dec. on Inst. 7–9, 35; see Pet. 4–5.
`
`C. Related Proceedings
`The parties inform us that the ’560 patent is presently 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. 1–2; Paper 4, 2. The Petition was filed concurrently
`with petitions filed in IPR2019-00731 and IPR2019-00732, and various
`petitions filed against U.S. Patent No. 6,851,115 (“the ’115 patent”), from
`which the ’560 patent is a continuation. Pet. 2–3; Paper 4, 2–3; see
`Ex. 1001, [63]. Institution of an inter partes review was denied in IPR2019-
`00732. As noted above, the ’560 patent was also addressed in Microsoft
`Corp. v. IPA Techs. Inc., No. 2021-1412, 2022 WL 989403, at *1 (Fed. Cir.
`Apr. 1, 2022) (nonprecedential); Microsoft Corp, IPR2019-00835, Paper 42
`(PTAB Oct. 15, 2020) (Final Written Decision); Microsoft Corp., IPR2019-
`00836, Paper 50 (PTAB Dec. 22, 2020) (Final Written Decision on
`
`
`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”).
`4 Jim Farley, JAVA DISTRIBUTED COMPUTING, 1st ed., 1998 (Ex. 1020,
`“Farley”).
`
`5
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`Remand); Microsoft Corp. v. IPA Techs. Inc., IPR2019-00837, Paper 42
`(PTAB Oct. 15, 2020) (Final Written Decision)
`
`D. The ’560 Patent and Illustrative Claims
`The ’560 patent is titled, “Highly scalable software-based architecture
`for communication and cooperation among distributed electronic agents”
`and describes “software-based architectures for communication and
`cooperation among distributed electronic agents” using “interagent
`communication languages enabling client agents to make requests in the
`form of arbitrarily complex goal expressions that are solved through
`facilitation by a facilitator agent.” Ex. 1001, 1:20–25. Figure 4 of the ’560
`patent is reproduced below.
`
`
`
`6
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`Figure 4 depicts the structure of an exemplary distributed agent system of
`the ’560 patent. Id. at 6:38–44. Figure 4 shows that system 400 includes
`facilitator agent 402, user interface agents 408, application agents 404, and
`meta-agents 406. Id. The ’560 patent describes that system 400 is organized
`“as a community of peers by their common relationship” to facilitator agent
`402 (id. at 6:41–44), which is “a specialized server agent that is responsible
`for coordinating agent communications and cooperative problem-solving”
`(id. at 6:46–48).
`The ’560 patent discloses that 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 10:53–61. Such cooperation among agents is achieved
`via messages expressed in a common language, called the Interagent
`Communication Language (“ICL”). Id. at 10:61–11:7.
`Referencing Figure 3 (not reproduced herein) and Figure 4, the ’560
`patent describes a preferred embodiment for the operation of a distributed
`agent system. Id. at 7:24–50. The ’560 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. For example, a natural language agent may
`register the characteristics of its available natural language vocabulary. Id.
`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.
`
`7
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`Id. at 7:36–45. The client agent parses this request, processes it, and returns
`answers or status reports to the facilitator. Id.
`Referencing Figures 5 and 6 (not reproduced herein), the ’560 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 7:64–8:14. The ’560 patent illustrates
`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 8:15–28.
`The translated ICL expression is then routed by facilitator agent 402 to
`appropriate agents, e.g., calendar agent 434, to execute the request. Id.
`Finally, results are sent back to UI agent 408 for display. Id.
`Claim 28 depends from independent cancelled claim 26. Claims 26
`and 28 are reproduced below.
`26. A distributed facilitator agent functionally distributed
`across at least two computer processes, the distributed facilitator
`agent arranged to coordinate cooperative task completion within
`a distributed computing environment having a plurality of
`autonomous service-providing electronic agents, the distributed
`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 request in order
`to interpret a compound goal set forth therein, the service request
`formed according to an Interagent Communication Language
`(ICL), the ICL including 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, the facilitating engine further operable to
`
`8
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`generate a goal satisfaction plan associated with the compound
`goal, wherein the goal satisfaction plan involves:
`using reasoning to determine sub-goal requests based on non-
`syntactic decomposition of the base goal and using said
`reasoning to co-ordinate and schedule efforts by the service-
`providing electronic agents for fulfilling the sub-goal requests in
`a cooperative completion of the base goal.
`
`28. A facilitator agent as recited in claim 26 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, 32:26–51, 32:58–61.
`
`A. Testimonial Evidence
`In support of its unpatentability contentions, Petitioner relies on the
`Declaration of Dr. Dan R. Olsen Jr. (Ex. 1002) 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 co-inventors on the ’560 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 ’560 patent. Ex. 1004, 221–24 (37 C.F.R.
`§ 1.132 declarations); Ex. 2039 (37 C.F.R. § 1.132 declarations).
`
`II. ANALYSIS
`
`A. Relevant Principles of Law
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claim is
`
`9
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`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
`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.’”
`
`
`5 With respect to the fourth Graham factor, the parties do not present
`arguments or evidence regarding objective indicia of non-obviousness.
`
`10
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`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. 8 (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. See generally PO Resp. Thus,
`we continue to find that a person of ordinary skill in the art at the time of the
`invention of the ’560 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.
`
`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
`
`11
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019); 83 Fed. Reg.
`51340, 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
`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
`
`
`6 The page numbers for the Martin reference refer to Petitioner’s inserted
`page numbers in the bottom, left-hand corner of each page.
`
`12
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`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, 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.
`
`13
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`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 Farley (Ex. 1020)
`Farley is a publication titled JAVA Distributed Computing. Ex. 1020.
`Farley describes agents or objects distributed across multiple processes. Id.
`at 4. Farley discloses that the term “agent [is used in] a general way to refer
`to significant functional elements of a distributed application. . . . Agents
`can be distributed across multiple processes, and can be made up of multiple
`objects and threads in these processes.” Id. at 3.
`
`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 ʼ560 patent (Cheyer and Martin)
`and their [SRI] co-worker (Moran).” PO Resp. 1; Ex. 1011. “Both the ’560
`patent and Martin relate to work done on the Open Agent Architecture
`project at SRI, and large portions of the ’560 and Parent ’115 application
`and the Martin reference are identical or almost identical.” PO Resp. 1;
`compare Ex. 1001, with Ex. 1011, 10–29.
`
`14
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`Martin was considered during prosecution of the parent ’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 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 and ’560 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 and ’560 patents,
`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 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]
`
`15
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`. . . , 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
`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
`
`16
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`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)).
`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
`
`17
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`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
`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.
`
`18
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`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,
`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
`
`19
`
`
`
`IPR2019-00731
`Patent 7,069,560 B1
`inventive contribution at issue (Duncan Parking, 914 F.3d at 1359), Patent
`Owner argues that Petitioner’s evidence and
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
