CAFC Agrees Google Failed to Show Unpatentability of Claims for Merging Search Engine Results

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today in Google LLC v. Valtrus Innovations Ltd., affirming a Patent Trial and Appeal Board (PTAB) final written decision that found Google did not demonstrate the unpatentability of claims 1 through 23 of a patent on merging search-result lists. The court rejected arguments that the Board relied on legally insufficient evidence to corroborate an inventor’s conception testimony and that substantial evidence did not support a finding of reasonably continuous diligence.

Google filed a petition for inter partes review (IPR) of U.S. Patent No. 6,728,704, owned by Valtrus Innovations Ltd. The patent claims methods and computer-readable memory for merging, or instructing a computer to merge, search-result lists from multiple search engines. Claim 1 recites querying multiple search engines, selecting and scoring entries from each result list, assigning each list a representative value, and merging the lists based on those values.

Google asserted four obviousness grounds, each combining U.S. Patent No. 6,711,569 (Bushee) with one or more additional references, namely Voorhees, Koppel, and Tso. Bushee was filed on July 24, 2001, approximately five weeks before the application that resulted in the ‘704 patent was filed on August 27, 2001. Valtrus responded that the inventors conceived of the invention before Bushee’s filing date, so Bushee did not qualify as prior art under pre-America Invents Act 35 U.S.C. Section 102(e). The alleged conception date was marked confidential, and the CAFC found identifying the exact date unnecessary to resolve the appeal.

The Board agreed with Valtrus, relying on a declaration from co-inventor Dr. Tsaparas, files containing the original invention disclosures, and the original metadata for those files, which the Board found corroborated the declaration. The Board also credited Valtrus’s expert analysis, and determined that Valtrus established an invention date before Bushee’s filing date and diligence from just before that date until a constructive reduction to practice on August 27, 2001. Google appealed, and the CAFC exercised jurisdiction under 28 U.S.C. Section 1295(a)(4)(A).

Google argued that the Board erroneously relied on the Disclosure Documents and disclosure metadata to corroborate Dr. Tsaparas’s declaration, since each was within Dr. Tsaparas’s control. The CAFC explained that proving conception through inventor testimony requires evidence beyond the inventor’s own statements and documents, evaluated under the “rule of reason.” The corroboration requirement exists to prevent fraud.

The CAFC found that “the disclosure metadata generated by Microsoft Word was not authored by Dr. Tsaparas.” In Global Health Solutions LLC v. Selner, the CAFC held that “metadata is independent of [an inventor’s] own statements and documents.” The CAFC distinguished the metadata from unwitnessed laboratory notebooks, emails, and drawings, which cannot corroborate conception testimony alone, and found the authorship and timestamp information consistent with the conception date in the declaration.

Counsel for Google acknowledged at oral argument that independent corroboration would be satisfied in a similar situation and that corroboration does not require a human. The CAFC stated, “The disclosure metadata independently corroborates Dr. Tsaparas’s inventor testimony,” and concluded that substantial evidence supported the Board’s finding that the Disclosure Documents and the metadata provided separate corroboration.

Google disputed diligence only for the period from August 8, 2001, to August 27, 2001, when the law firm filed the application, which Google characterized as approximately 11 business days. A reference can be antedated under pre-AIA Section 102(e) by showing conception before the reference’s filing date and reasonably continuous diligence until the patent owner’s filing date. The CAFC explained that a patent owner need not show continuous diligence, and that the analysis is meant to assure, in light of the evidence as a whole, that “the invention was not abandoned or unreasonably delayed.”

Dr. Tsaparas was based in Ontario, Canada, and his August 8, 2001, signature, the latest of the four inventors’ signatures, required time to be returned by mail to the law firm’s California offices. Dr. Cole opined that law firms need several weeks or more to draft and finalize a patent application. The CAFC also cited D’Amico v. Koike for the principle that attorneys and their clerical and stenographic staff cannot be presumed to begin and perform their work immediately. These facts, which the CAFC described as non-speculative, provided substantial evidence supporting the Board’s finding that there was no abandonment or unreasonable delay during the approximately 11 business days at issue.

Google argued that a two-day period without diligent activity was sufficient in In re Mulder for the applicant to lose his conception date. The CAFC found that reliance was misplaced, since In re Mulder stated that focusing on the brevity of a gap is misleading, and the draft application there had been prepared for nearly three months with no activity of any kind in the United States. Valtrus accounted for the entire period requiring diligence, including the disputed period, through timestamp evidence showing the inventors and a law firm working together in the United States to complete, execute, and file the application.

Ultimately, Google’s remaining arguments were unpersuasive, and the CAFC affirmed the Board’s determination that Google did not demonstrate that claims 1 through 23 of the ‘704 patent are unpatentable.