The invention record that survives a priority fight is the native file with its metadata, not the copy the inventor exported

2026-10-19In-House

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Practice note, Burbage Law, PC, October 19, 2026, on Google LLC v. Valtrus Innovations Ltd., No. 2024-1945 (Fed. Cir. Oct. 19, 2026) (precedential) (Cunningham, J., joined by Hughes, J., and Burroughs, D.J., sitting by designation), affirming the Patent Trial and Appeal Board in IPR2022-01545

Google petitioned for inter partes review of United States Patent No. 6,728,704, which claims merging the result lists returned by several search engines, on grounds built around a reference called Bushee that was filed five weeks before the patent's August 27, 2001 application. Valtrus antedated Bushee under the pre-America Invents Act version of Section 102(e) of Title 35 of the United States Code with a declaration from co-inventor Tsaparas, the original invention disclosure documents, and the Microsoft Word metadata of those documents. Google argued on appeal that documents and metadata under the inventor's own control cannot corroborate his testimony. The Federal Circuit disagreed: assuming without deciding that the metadata was authentic, metadata that Word generates automatically was not authored by the inventor, so it is independent corroboration and the Board's finding was supported by substantial evidence, following Global Health Solutions LLC v. Selner, 148 F.4th 1363 (Fed. Cir. 2025), and unlike the unwitnessed laboratory notebooks and unwitnessed emails that cannot corroborate on their own; Google's counsel acknowledged at argument that a human is not a required element of corroboration. The court also upheld the finding of reasonably continuous diligence over the roughly eleven business days between August 8 and August 27, 2001, which were spent getting a signed declaration back by mail from an inventor in Ontario and finishing the application at the law firm.

What it changesAntedating a reference ended for applications filed on or after March 16, 2013, but the question this case decides, what proves when an inventor conceived, still decides derivation proceedings, inventorship disputes and the question of who contributed what when a machine learning tool took part in the work, so an in-house program should keep its invention records in the form that proved itself here. Keep the disclosure in the system that created it, with the authorship and timestamp metadata that system writes without anyone asking, and treat the step where someone exports the document to a portable format or retypes it into an intake form as the step that turns independent evidence back into the inventor's own say-so. The same rule covers the prompts, model outputs and session logs of an engineer who used a code assistant or a model to get to the invention: the system's own timestamps are the metadata, and they are the first thing an opponent will ask for when inventorship is contested. The diligence holding is the smaller lesson, and it cuts the other way: Valtrus won because it could account for the entire period with timestamped evidence, so the program should docket the signature chase and the drafting hand-offs the way it dockets a statutory deadline, because the record of a routine three weeks is what the Board was asked to read.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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