GOOGLE LLC v. VALTRUS INNOVATIONS LTD.
Before Hughes, Cunningham, and Burroughs. Appeal from the Patent Trial and Appeal Board.
Summary: Inventor testimony regarding conception date can be corroborated by the metadata of the inventor’s own files.
Google argued in an IPR that Valtrus’ patent was obvious in view of a patent application filed five weeks before Valtrus’ application. Valtrus argued the reference was not prior art under pre-AIA § 102(e) because Valtrus’ patent’s conception predated the reference’s filing. Valtrus supported its conception date with electronic files related to the invention’s disclosure and the metadata from those files. The PTAB concluded the reference was not prior art and held none of the patent’s claims were unpatentable. Google appealed.
The Federal Circuit affirmed. The Federal Circuit held that the Microsoft Word metadata accompanying the invention-disclosure files was independently generated rather than authored by the inventor. Thus, the file metadata could independently corroborate the inventor’s testimony about the conception date. The Federal Circuit also held that substantial evidence showed reasonably continuous diligence between just before the reference’s filing date and the filing of the patent’s application. The disputed 11 business day period included an inventor’s execution and mailing of an inventor declaration and the law firm’s preparation and filing of the application.
Co-author: Amanda Eggart (Pending District of Columbia Bar Admission)
Editor: Sean Murray
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