The Federal Circuit has affirmed a Patent Trial and Appeal Board decision upholding Valtrus's patent claims against Google's inter partes review. The key issue was whether Valtrus could antedate Google's prior art reference by proving an earlier invention date under pre-AIA rules. The court agreed with the PTAB that metadata embedded in Word files, created when the inventor saved his notes, independently corroborated his testimony of conception—even though the files came from his own records.
The ruling extends an earlier Federal Circuit decision that credited email metadata generated by AOL's server. In this case, Google argued that Valtrus produced only screenshots rather than native files, but the court still found the metadata sufficient. The court also held that an unexplained gap of about eleven business days, while the law firm finished and filed the application, did not break the chain of reasonably continuous diligence.
That said, the victory may be short-lived. A district court has since held the same claims ineligible under 35 U.S.C. § 101, and that decision is on appeal. The Federal Circuit's metadata holding could still matter for patentees seeking to prove conception, but the ultimate fate of these claims remains unresolved.