Article Authorship Isn’t Inventorship but Can Show Patent Contribution

The Federal Circuit vacated and remanded a Patent Trial and Appeal Board (PTAB) decision involving a determination of inventive contribution to several patents. In Google LLC v. IPA Technologies Inc., Google appealed three inter partes review ("IPR") decisions of the PTAB concluding that Google had not shown the challenged claims of the three patents at issue to be unpatentable. Two of the patents relate to a "software-based architecture . . . for supporting cooperative task completion by flexible, dynamic configurations of autonomous electronic agents." As the court noted,

In particular, the patents disclose that "[c]ommunications and cooperation between agents are brokered by one or more facilitators" and that "[t]he facilitators employ strategic reasoning for generating a goal satisfaction plan to fulfill arbitrarily complex goals by users and service requesting agents."

Both patents list David L. Martin and Adam J. Cheyer as inventors. The court noted that the patent applications resulting in the two patents were filed in 1999. Also,

The underlying technology, known as the Open Agent Architecture ("OAA"), was conceived at SRI International ("SRI") in the 1990s. Martin, Cheyer, (both SRI employees) and a third SRI employee, Dr. Douglas B. Moran, had earlier co-authored an academic paper entitled "Building Distributed Software Systems with the Open Agent Architecture" ("the Martin reference") that was published in the Proceedings of the Third International Conference on the Practical Application of Intelligent Agents and Multi-Agent Technology, which took place March 23-25, 1998. The Martin reference describes the OAA project developed at SRI and, significantly for present purposes, at least some of the technology embodied in the claims of the '115 and '560 patents.

During prosecution of the patents, the examiner identified the Martin Reference as prior art and rejected the claims of the patent. SRI asserted that the Martin reference wasn’t prior art because it was made by the same “inventive entity” as the patents. Google, in response,

contended that the Martin reference was prior art as work "by others" because it described the work of an inventive entity (Martin, Cheyer and Dr. Moran) different from the inventive entity of the challenged patents (Martin and Cheyer).

IPA then countered that:

it is inconsistent for Google to claim "that [Dr.] Moran allegedly contributed invalidating subject matter to the Martin [reference], yet is correctly excluded as a named inventor of the Patents-at-Issue" because "[i]f the Martin [reference] discloses the key limitations of the inventions claimed in the Patents-at-Issue and [Dr.] Moran, in fact, contributed to the inventive subject matter in the Martin [reference], then, by extension, [Dr.] Moran would have also contributed inventive subject matter to the Patents-at-Issue." The court concluded that: Of course, if Dr. Moran were a joint inventor on both the Martin reference and the patents-at-issue, then the Martin reference would no longer be prior art "by another." But the named inventors on the patents, Cheyer and Martin, are presumptively "the true and only inventors." … IPA cannot raise this argument as a defense without actually seeking correction of inventorship of the patents, which it has not.