Federal Circuit: Inventor Records Were Enough to Knock Out Google's Prior Art in Valtrus IPR
Photo: Angelo_Giordano / Pixabay
On 19 October 2026, the US Court of Appeals for the Federal Circuit issued a precedential opinion in Google LLC v. Valtrus Innovations Ltd., affirming a Patent Trial and Appeal Board decision that Google had not shown any of the 23 claims of US Patent No. 6,728,704 to be unpatentable. The patent covers a method of merging result lists from several search engines into one ranked list.
How the prior art fell away
Google's inter partes review relied mainly on an earlier US patent, referred to as Bushee, which was filed on 24 July 2001. The application that became the '704 patent was filed about five weeks later, on 27 August 2001. Because the patent predates the America Invents Act, the old "first to invent" rules applied, and Valtrus could try to show that its inventors had conceived the invention before Bushee was filed.
According to the opinion, the Board accepted a declaration from one of the co-inventors, supported by the original invention disclosure documents and their file metadata, as proof of an earlier conception date. The exact date is confidential. The Board also found that the inventors and their attorneys worked with reasonable diligence from just before Bushee's filing date until the application was filed. On that basis Bushee was not prior art, and Google's obviousness grounds failed.
The diligence argument
Google argued on appeal that a three-week gap in the activity record, between 8 and 27 August 2001 (about 11 business days, by Google's count), broke the chain of diligence, relying on In re Mulder, a case in which a two-day gap had been fatal. The Federal Circuit found Mulder misplaced. The Federal Circuit held that substantial evidence supported the Board. It pointed to testimony that law firms usually need several weeks to draft and finalise an application, and to older case law holding that attorneys cannot be expected to start on a file the moment it lands on their desk.
Why it matters
The '704 patent is an older, pre-AIA patent, so the "swearing behind" route used here is closing as such patents expire. The broader point still applies: contemporaneous records, kept with their original metadata, can decide a validity fight decades later.
For Indonesian applicants, the rules are different. Indonesia uses a first-to-file system under Law No. 13 of 2016 on Patents, as amended, and an applicant cannot defeat earlier prior art by proving earlier conception. The filing date (or priority date) is what counts, which is a strong reason to file early. Good invention records still matter in Indonesia, for example in ownership disputes between inventors and employers, or to support a claim that a disclosure falls within the statutory grace period. We are not aware of an Indonesian court decision that turned on conception records in the way this case did.
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