Google appeals three inter partes review (“IPR”) Board decisions concluding that Google had not shown the challenged claims in U.S. Patent Nos. 6,851,115 and 7,069,560 (which relate to a software-based architecture for supporting cooperative task completion by flexible, dynamic configurations of autonomous electronic agents) to be unpatentable. Google argues that the Board improperly imposed a burden on Google to prove that a prior art reference has a different inventive entity than the challenged patents. After noting that “burden of proof” has been used to describe two distinct concepts: the burden of persuasion and the burden of production, the CAFC finds no error with the Board’s requiring that Google establish the reference was prior art “by another” by showing that one of the three co-authors of the prior art made a significant enough contribution to the portions relied on to invalidate the challenged patents to qualify as a joint inventor of those portions. Instead of resolving conflicts in the testimony of the three co-authors, however, the Board stated that it found the testimony of the three co-authors “credible with respect to the facts cited herein.” The CAFC finds that this was not a tenable position for the Board to take, but rather holds that the Board was required to resolve this highly relevant evidentiary conflict and make appropriate findings of fact. Because the Board failed to resolve fundamental testimonial conflicts in concluding that the relied-upon reference was not prior art, the CAFC vacates the decisions and remands.
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