GOOGLE LLC v. VALTRUS INNOVATIONS LTD.
Authored by: Jeremy J. Gustrowsky
The Federal Circuit affirmed a Patent Trial and Appeal Board decision rejecting Google’s challenge to U.S. Patent No. 6,728,704, owned by Valtrus Innovations Ltd. The patent covers methods and computer-readable memory for merging search-result lists returned by multiple search engines, scoring the selected entries, and producing a combined list. Google had petitioned for inter partes review of all 23 claims, raising four obviousness grounds built on U.S. Patent No. 6,711,569 (“Bushee”) in combination with U.S. Patent No. 5,864,846 (“Voorhees”), U.S. Patent No. 7,257,766 (“Koppel”), and U.S. Patent No. 6,385,602 (“Tso”).
The proceeding revolved around timing. Bushee was filed on July 24, 2001, roughly five weeks before the application that became the ’704 patent was filed on August 27, 2001. Because the application predates the America Invents Act, the older first-to-invent rules applied, which allowed Valtrus to “swear behind” Bushee by showing that the inventors conceived of the invention before Bushee’s filing date and then exercised reasonably continuous diligence until they filed their own application. The Board accepted that showing, found Bushee was not prior art under pre-AIA 35 U.S.C. § 102(e), and concluded that Google had not proven any claim unpatentable. (The parties treated the actual conception date as confidential, and the court noted it did not need to pinpoint that date to resolve the appeal.)
Google’s first argument on appeal targeted the corroboration requirement. An inventor’s own say-so about when he conceived an invention is not enough. There must be supporting evidence beyond the inventor’s own statements and documents, evaluated under a flexible “rule of reason” approach that asks whether the inventor’s account is credible. Google contended that the three pillars the Board relied on, a declaration from co-inventor Dr. Tsaparas, the original invention disclosure documents, and the metadata embedded in those documents, all traced back to the same person and so could not independently corroborate anything.
The Federal Circuit disagreed, focusing on the metadata. The disclosure documents were Microsoft Word files, and the authorship and timestamp information that Word generates automatically was not written by Dr. Tsaparas. Drawing on its 2025 decision in Global Health Solutions LLC v. Selner, the court reiterated that metadata is independent of an inventor’s own statements and documents, and that this automatically generated information lined up with the conception date the inventor described. The court distinguished unwitnessed laboratory notebooks, emails, and drawings, which on their own cannot corroborate inventor testimony. It also noted that Google’s counsel acknowledged at oral argument that corroboration does not require a human witness. Substantial evidence therefore supported the Board’s finding.
Google’s second argument attacked diligence, specifically a roughly three-week stretch between August 8, 2001 (when the last inventor signed) and the August 27, 2001 filing date, which amounted to about 11 business days. Here too the court found adequate support in the record. Dr. Tsaparas was in Ontario, Canada, so his physical signature on the inventor declaration had to travel by mail to the law firm’s offices in California. Valtrus’s expert explained that law firms typically need several weeks or more to draft and finalize an application for filing, echoing older case law recognizing that attorneys and their staff cannot be expected to drop everything the moment a file lands on a desk. The standard is reasonably continuous diligence, not activity on every single day, and the question is whether the invention was abandoned or unreasonably delayed.
The court also rejected Google’s reliance on In re Mulder, where a short gap doomed the applicant. The difference, the court explained, is that the record in that earlier case showed no activity of any kind in this country for nearly three months. Valtrus, by contrast, accounted for the entire critical period with timestamped evidence of inventors and a law firm working together to complete, execute, and file the application. Finding Google’s remaining arguments unpersuasive, the Federal Circuit affirmed.
The case highlights that preserving original electronic files, with their metadata intact, can supply the independent corroboration needed to antedate a reference. Also, a well-documented timeline of routine administrative steps can satisfy the diligence requirement even across a gap of several weeks.