Google LLC v. Valtrus Innovations Ltd.

Google LLC v. Valtrus Innovations Ltd. The Federal Circuit affirmed the Board's finding that Bushee was not prior art under pre-AIA § 102(e) because Valtrus antedated it. Substantial evidence supported the Board's findings that Word-generated disclosure metadata independently corroborated the inventor's conception testimony and that the inventors were reasonably diligent through the filing date. The decision confirms that automatically generated Microsoft Word metadata can independently corroborate an inventor's conception testimony, and that a short, explained gap in diligence from foreign signature logistics and law firm drafting time does not defeat a swear-behind showing. Affirmed. Google petitioned for IPR of claims 1-23 of the '704 patent (merging result lists from multiple search engines) on grounds combining Bushee with Voorhees, Koppel and Tso. Bushee was filed about five weeks before the '704 application, so Valtrus sought to antedate it with earlier conception plus diligence. The Board found Bushee was not prior art under pre-AIA § 102(e) based on the Tsaparas Declaration, the Disclosure Documents and their original metadata, and credited Valtrus's expert, Dr. Cole. It held that Google had not shown any of claims 1-23 unpatentable. Corroboration: the court held substantial evidence supported the finding that the Disclosure Documents and Word metadata independently corroborated the inventor's testimony. Authenticity was assumed without deciding, the metadata was not authored by the inventor (citing Global Health Solutions v. Selner), and it is unlike unwitnessed notebooks or emails. Diligence: Google disputed only about 11 business days, from August 8 to August 27, 2001. Substantial evidence supported the finding of reasonably continuous diligence: the last inventor signature came from Ontario by mail to the California law firm, the expert testified that law firms take weeks to finalize applications, and Valtrus accounted for the period with timestamp evidence. In re Mulder was distinguished. § 102 § 103 precedential § 102 § 103 precedential § 102 § 103