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In Google Decision, Federal Circuit Widens Patent Challenge Lens

May 24, 2022, 9:15 AM

Google’s recent Federal Circuit win on software patents will benefit patent challengers generally, opening the door to new corroborating evidence to support attacks on inventions as obvious, attorneys say.

The US Court of Appeals for the Federal Circuit held that co-authorship in a relevant publication can corroborate an individual’s claim to be an inventor of a patented innovation. The legal analysis used to confirm inventorship—called the rule of reason—is a flexible standard that still has open questions on what evidence can be used to validate a person’s claim to have been involved with creating an invention.

By allowing authorship to count as corroborating evidence, the Federal Circuit is answering one of those questions, said Michelle Armond, a founding partner at Armond Wilson LLP.

“Why this case is precedential is because it’s filling in a gap that hadn’t been filled in yet,” she said. “This is a very important puzzle piece in the Federal Circuit’s decisions on corroboration.”

Softer Analysis

To quell fears of inaccurate testimony in patent litigation, the US Supreme Court established a corroboration requirement when spoken testimony is used to invalidate a patent. Courts decide corroboration questions using a “rule of reason” analysis, a flexible and fact-specific way to evaluate evidence.

The Federal Circuit clarified that corroborating evidence doesn’t need to be something like a notebook filled with dates regarding the invention’s development—other, simpler evidence can be enough, Steptoe & Johnson LLP partner Vishal C. Gupta said.

“The Federal Circuit was highlighting that corroborating evidence doesn’t have to hit this super high standard,” Gupta said. “They were noting that something more reasonable can suffice, like co-authorship.”

IPA Technologies sued Google LLC in 2018, alleging that Google infringed its software and communications patents with Google Assistant and Google Search. Google then asked the Patent Trial and Appeal Board to invalidate several claims of the patents, chipping away most of the patents’ claims in 2020.

Some of the claims of two challenged patents survived because the board disregarded the testimony of Dr. Douglas B. Moran, saying he didn’t make a significant enough contribution to be considered an inventor on an earlier patent Google cited to prove the IPA inventions were obvious.

The two listed inventors on that patent also invented the challenged patents, blocking any finding of obviousness unless another party was involved with the earlier invention.

Ruling in favor of Google, the Federal Circuit found that Moran’s co-authorship on an academic paper is corroborating evidence that he was an inventor.

“In a prior era, I think the PTAB might have been correct in saying that doesn’t count as corroboration because it doesn’t specifically say, ‘Dr. Moran was responsible for this piece of information,’” said Charanjit Brahma, a patent attorney at Benesch, Friedlander, Coplan & Aronoff LLP. “Now, the Federal Circuit under this more rule of reason analysis is saying that’s some corroboration that he contributed to this article as a whole.”

The more fluid analysis reflects how the Federal Circuit has been “softening” its scrutiny of evidence sufficient for corroboration, Brahma said.

“It confirms the direction the Federal Circuit was already heading,” Brahma said, “but the big takeaway for practitioners is if you have evidence of who did what on a team of developers, documenting that is critical.”

To contact the reporter on this story: Samantha Handler in Washington at shandler@bloombergindustry.com

To contact the editors responsible for this story: Adam M. Taylor at ataylor@bloombergindustry.com; Jay-Anne B. Casuga at jcasuga@bloomberglaw.com