Google LLC v. Valtrus Innovations Ltd., No. 2024-1945 (Fed. Cir. Oct. 19, 2026)

In our Case of the Week, the Federal Circuit affirmed a Patent Trial and Appeal Board decision ruling that Google failed to prove claims 1–23 of U.S. Patent No. 6,728,704 unpatentable. That patent, which dates back to 2001, was filed under the pre-AIA statutory structure, under which an inventor could get around prior art by establishing that they had conceived the patent before the prior art date, and diligently reduced the invention to practice thereafter.  But the Federal Circuit has cautioned that attempts to antedate a prior art reference must be corroborated.  At issue here was a decision concerning whether the patentee successfully corroborated prior conception and reduction to practice.  The Federal Circuit held that automatically generated Microsoft Word metadata can independently corroborate an inventor’s testimony of early conception under pre-AIA 35 U.S.C. § 102(e).

The ’704 patent, owned by Valtrus, claims methods and computer-readable memory for merging search-result lists from multiple search engines. Google petitioned for inter partes review, asserting that prior art combinations involving U.S. Patent No. 6,711,569 (the “Bushee” patent), filed July 24, 2001, would have rendered the ‘704 patent claims, filed August 27, 2001, obvious. In response, Valtrus sought to antedate Bushee under pre-AIA § 102(e) by demonstrating that one of its co-inventors conceived of the claimed search-engine list-merging invention before Bushee’s July 24 filing date. The Board ruled in favor of Valtrus, concluding that the co-inventor’s earlier conception date was corroborated by Word documents and their metadata showing authorship and timestamps. Accordingly, the Board concluded Bushee was not prior art.

On appeal, Google argued the Board’s factual findings on conception were not supported by substantial evidence. According to Google, the Word documents and their metadata were the co-inventor’s “own statements and documents” since they were under the co-inventor’s control, making them legally insufficient to provide independent corroboration. The Federal Circuit rejected this argument, holding the document metadata was not authored by the co-inventor because it was automatically generated by Microsoft Word. The Court then noted that, under recent precedent, “metadata is independent of [an inventor’s] own statements and documents.” Accordingly, the Court held that Word document metadata can provide independent corroboration of inventor statements and documents in Word files. The Court further held that, in this case, the independent corroboration requirement was satisfied because the authorship and timestamp metadata generated by Word was consistent with the conception date identified in the co-inventor’s declaration. The Court therefore ruled that the Board’s factual findings on conception were supported by substantial evidence.

Google also challenged the Board’s finding of continuous diligence, pointing to the time gap between Valtrus obtaining the physical signature from the co-inventor on August 8 and filing its application with the USPTO on August 27. Rejecting this challenge, the Court noted that pre-AIA § 102(e) requires only “reasonably continuous diligence” showing that the invention was not abandoned or unreasonably delayed. The Court found that the time needed to mail the physical signature pages from Ontario, Canada, to counsel in California, together with standard law firm processing to finalize the application, provided substantial evidence supporting the Board’s holding. Accordingly, the Court affirmed the Board’s conclusion that Google failed to prove claims 1–23 of the ‘704 patent unpatentable.

The full opinion can be found here.

By Adam Astorina