Court says Google can challenge patents in Google Assistant fight

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REUTERS/Clodagh Kilcoyne

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  • Google Assistant accused of infringing data-processing patents
  • Tech giant gets new chance to prove inventions were obvious

(Reuters) - A U.S. appeals court gave Alphabet's Google LLC a second chance Thursday to try to cancel two patents that its Google Assistant technology has been accused of infringing.

A U.S. Patent and Trademark Office tribunal must reevaluate whether two virtual assistant-related patents owned by IPA Technologies Inc are invalid based on Google's argument that an academic paper disclosed the same inventions.

IPA is a subsidiary of Canadian patent-licensing company WiLAN Inc. WiLAN, Google and their attorneys did not immediately respond to requests for comment.

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IPA sued Google in Delaware federal court in 2018 for violating its patents on speech-based data navigation technology, in a case that is still ongoing. The inventions were created by two computer scientists at research institute SRI International in the 1990s.

Google told the USPTO's Patent Trial and Appeal Board in 2019 that two IPA patents were invalid because they were obvious based on an earlier paper written by the two inventors and a third SRI scientist, Douglas Moran.

The board said Moran's contributions to the paper were not significant enough to make it relevant "prior art" that could justify invalidating the patents, considering the other two authors were the inventors themselves.

U.S. Circuit Judge Timothy Dyk wrote for a three-judge panel that the board wrongly found Moran's testimony about his contribution to the paper was "insufficiently corroborated."

The court sent the case back for the board to reconsider how to credit the testimony.

The case is Google LLC v. IPA Technologies Inc, U.S. Court of Appeals for the Federal Circuit, No. 21-1179.

For Google: Naveen Modi of Paul Hastings, Michael Hendershot of Jones Day

For IPA: Steven Hartsell of Skiermont Derby

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com