Parus Holdings, Inc. v. Google LLC

Case: 22-1269 Document: 48 Page: 1 Filed: 06/12/2023

United States Court of Appeals

for the Federal Circuit

______________________

PARUS HOLDINGS, INC.,

Appellant

v.

GOOGLE LLC,

Appellee

______________________

2022-1269, 2022-1270

______________________

Appeals from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in Nos. IPR2020-

00846, IPR2020-00847.

______________________

Decided: June 12, 2023

______________________

JOHN BRUCE CAMPBELL, McKool Smith, P.C., Austin,

TX, argued for appellant. Also represented by JOEL LANCE

THOLLANDER.

NATHAN R. SPEED, Wolf Greenfield & Sacks, PC, Bos-

ton, MA, argued for appellee. Also represented by

GREGORY F. CORBETT, RICHARD GIUNTA, ELISABETH H.

HUNT; GREGORY S. NIEBERG, New York, NY.

______________________

Before LOURIE, BRYSON, and REYNA, Circuit Judges.

Case: 22-1269 Document: 48 Page: 2 Filed: 06/12/2023

2 PARUS HOLDINGS, INC. v. GOOGLE LLC

LOURIE, Circuit Judge.

Parus Holdings, Inc. (“Parus”) appeals from two final

written decisions of the United States Patent and Trade-

mark Office Patent Trial and Appeal Board (“the Board”)

holding claims 1, 2, 4–7, 10, 13, and 14 of U.S. Patent

7,076,431 (“the ’431 patent”) and claims 1, 2, 4–7, 10, and

14 of U.S. Patent 9,451,084 (“the ’084 patent”) unpatenta-

ble as obvious. Parus Holdings, Inc. v. Google LLC,

IPR2020-00846, Paper 31 (P.T.A.B. Oct. 19, 2021) (“Deci-

sion”), J.A. 1–67; Parus Holdings, Inc. v. Google LLC,

IPR2020-00847, Paper 31 (P.T.A.B. Oct. 19, 2021), J.A.

68–95. 1 For the reasons provided below, we affirm.

BACKGROUND

The challenged patents are directed to an interactive

voice system that allows a user to request information from

a voice web browser. ’431 patent, Abstract. Their shared

specification discloses two preferred embodiments: a voice-

based web browser system and a voice-activated device

controller. See, e.g., ’431 patent, col. 4 ll. 30–34, col. 17 ll.

36–46. Claim 1 of the ’084 patent, reproduced below, is

representative.

1. A system for acquiring information from

one or more sources maintaining a listing of

web sites by receiving speech commands ut-

tered by users into a voice-enabled device and

1 The two final written decisions in the inter partes

reviews (“IPRs”) consolidated on appeal are largely similar

for the purposes of this appeal. The decision in Parus Hold-

ings, Inc. v. Google LLC, IPR2020-00846, Paper 31

(P.T.A.B. Oct. 19, 2021), J.A. 1–67 is cited throughout as

representative of both decisions unless specified otherwise.

Because the challenged patents share a specification, cita-

tions of the ’431 patent specification are likewise repre-

sentative, unless otherwise stated.

Case: 22-1269 Document: 48 Page: 3 Filed: 06/12/2023

PARUS HOLDINGS, INC. v. GOOGLE LLC 3

for providing information retrieved from the

web sites to the users in an audio form via the

voice-enabled device, the system comprising:

...

the computing device further configured to ac-

cess at least one of the plurality of web sites

identified by the instruction set to obtain the

information to be retrieved, wherein the com-

puting device is further configured to periodi-

cally search via the one or more networks to

identify new web sites and to add the new web

sites to the plurality of web sites, the compu-

ting device configured to access a first web

site of the plurality of web sites and, if the in-

formation to be retrieved is not found at the

first web site, the computer configured to ac-

cess the plurality of web sites remaining in an

order defined for accessing the listing of web

sites until the information to be retrieved is

found in at least one of the plurality of web

sites or until the plurality of web sites have

been accessed;

....

’084 patent, col. 24 ll. 2–59 (emphasis added). The chal-

lenged patents are continuations of and claim priority from

an application filed on February 4, 2000, which eventually

was published as U.S. Published Patent Application

2001/0047262 (“Kurganov-262”). Appellant’s Br. at 16.

Kurganov-262 and the challenged patents share a specifi-

cation. Id.

Google LLC, Samsung Electronics Co., Ltd., Samsung

Electronics America, Inc., LG Electronics Inc., and LG

Electronics USA, Inc. (collectively, “Appellees”) petitioned

for inter partes review of the ’431 and ’084 patents, assert-

ing that the challenged claims would have been obvious

Case: 22-1269 Document: 48 Page: 4 Filed: 06/12/2023

4 PARUS HOLDINGS, INC. v. GOOGLE LLC

based on a number of asserted prior art references, includ-

ing WO 01/050453 to Kovatch (“Kovatch”) and Kurganov-

262 under pre-AIA 35 U.S.C. § 103(a).

The parties disputed whether or not Kovatch qualified

as prior art to the challenged patents. Kovatch was filed

on July 12, 2001 and had an earliest possible priority date

of January 4, 2000. J.A. 1827. Parus argued that Kovatch

was not prior art because the claimed inventions had been

conceived at least by July 12, 1999, and reduced to practice

at least by December 31, 1999, prior to Kovatch’s earliest

priority date. To the extent that the Board found that the

invention had not been reduced to practice prior to that

date, Parus argued that the inventors had diligently

worked on reducing it to practice until then. In support of

its contentions, Parus submitted approximately 40 exhibits

totaling 1,300 pages, in addition to claim charts exceeding

100 pages. Appellant’s Br. at 15. However, despite sub-

mitting that material as record evidence, Parus only mini-

mally cited small portions of that material in its briefs

without meaningful explanation. See, e.g., J.A. 1333–36

(Patent Owner Response), J.A. 1435–41 (Patent Owner

Sur-Reply).

The Board declined to consider Parus’s arguments and

evidence that the challenged patents were conceived and

reduced to practice prior to Kovatch’s priority date because

it found that Parus had failed to comply with 37 C.F.R.

§ 42.6(a)(3), which prohibits incorporation by reference.

Specifically, the Board found that

Patent Owner has not presented its argu-

ments regarding prior conception and reduc-

tion to practice in its Response or Sur-reply;

rather, Patent Owner presents its arguments

in several declarations and improperly incor-

porates those arguments by reference into its

Response and Sur-reply, in violation of Rule

42.6(a)(3).

Case: 22-1269 Document: 48 Page: 5 Filed: 06/12/2023

PARUS HOLDINGS, INC. v. GOOGLE LLC 5

Decision, J.A. 16. The Board noted that Parus did not pro-

vide any “meaningful explanation in the Response,” id. at

J.A. 13, did “not cite [] any [] evidence or testimony with

specificity,” id. at 13–14, and did “not explain the basis for

[its] conclusion or cite [] any evidence to support it,” id. at

14. The Board therefore concluded that Parus had failed

to meet its burden of production and that Kovach was prior

art to the challenged patents.

Appellees also argued that Kurganov-262, the publica-

tion of the application from which the challenged patents

claim priority, is prior art because the common specifica-

tion failed to provide written description support for all the

challenged claims of the ’084 patent and claim 9 of the ’431

patent. According to Appellees, those claims were not en-

titled to the earlier effective filing date. Parus responded

that the claims were fully described in Kurganov-262 and

therefore entitled to its February 4, 2000 priority date.

The Board found that the evidence demonstrated that

the challenged claims were not entitled to the February 4,

2000 priority date and Kurganov-262 therefore qualified as

prior art. Specifically, the Board found that the claim lim-

itations requiring a computing device “configured to peri-

odically search via one or more networks to identify new

web sites and to add the new web sites to the plurality of

web sites” were not supported by the earlier application.

Decision, J.A. 58. The Board did not dispute that the com-

mon specification disclosed a device browsing server that

operated similarly to the web browsing server, and that the

device browsing server could detect and incorporate new

devices. Id. at J.A. 59–61 (citing ’431 patent at col. 17 ll.

59–62, col. 19 ll. 19–28). But the Board concluded that that

teaching was inapplicable to the web browsing server be-

cause the specification “indicates that the devices ‘appear

as “web sites”’ connected to the network,” but were not “web

sites,” and the teachings were not interchangeable. See id.

(citing ’431 patent at col. 17 ll. 50–52).

Case: 22-1269 Document: 48 Page: 6 Filed: 06/12/2023

6 PARUS HOLDINGS, INC. v. GOOGLE LLC

After concluding that both Kurganov-262 and Kovatch

qualified as prior art, the Board held the challenged claims

unpatentable as obvious. Parus appealed. We have juris-

diction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

Parus raises two main arguments on appeal: (1) that

the Board erred in holding that Kovatch qualified as prior

art because it improperly declined to consider Parus’s ar-

guments and evidence regarding antedating, and (2) that

the Board erred in holding that the challenged claims lack

written description support and were therefore not entitled

to their earlier priority date. We address each in turn.

I

We must set aside any agency action found to be “arbi-

trary, capricious, an abuse of discretion or otherwise not in

accordance with law.” 5 U.S.C. § 706(2). We review “de

novo whether the Board’s procedures satisfy the [Adminis-

trative Procedure Act].” FanDuel, Inc. v. Interactive Games

LLC, 966 F.3d 1334, 1339 (Fed. Cir. 2020). When the

Board finds a failure to comply with its own procedures,

such decision is reviewed for an abuse of discretion, Intelli-

gent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821

F.3d 1359, 1367 (Fed. Cir. 2016), which occurs when the

Board’s decision “is clearly unreasonable, arbitrary, or fan-

ciful,” Bilstad v. Wakalopulos, 386 F.3d 1116, 1121 (Fed.

Cir. 2004).

35 U.S.C. § 316(a)(8) requires the United States Patent

and Trademark Office (“USPTO”) to promulgate rules gov-

erning patent owners’ submission of evidence. Pursuant to

that statutory mandate, the USPTO issued regulations set-

ting various restrictions and requirements on briefs sub-

mitted during IPRs. One of those regulations, 37 C.F.R.

§ 42.6(a)(3), provides that, “Arguments must not be incor-

porated by reference from one document into another doc-

ument.” Because the Board found that Parus failed to

Case: 22-1269 Document: 48 Page: 7 Filed: 06/12/2023

PARUS HOLDINGS, INC. v. GOOGLE LLC 7

comply with that regulation, it declined to consider Parus’

arguments and evidence on antedating.

On appeal, Parus does not dispute that it incorporated

arguments by reference and therefore violated 37 C.F.R.

§ 42.6(a)(3). For that reason alone, the Board’s disregard-

ing of Parus’s arguments found to be in violation of the rule

cannot be an abuse of discretion. But Parus argues that

the Board’s refusal to consider evidence of antedating is not

in accordance with the law. Specifically, Parus argues that

the Board erred in declining to consider its evidence of an-

tedating, despite its antedating argument being incorpo-

rated by reference, because such an action (a) is a violation

of the Administrative Procedure Act (“APA”), (b) improp-

erly placed a burden of persuasion on the patent owner,

and (c) conflicts with statutes and regulations governing

IPRs. These contentions boil down to two main arguments:

(1) that Parus need not have submitted briefs pointing to

and explaining the relevant record evidence, and (2) that

the Board needed to have considered all record evidence,

regardless of the manner of presentation. We disagree for

the reasons provided below.

Parus first argues that the governing IPR statutory

and regulatory provisions require specific and persuasive

attorney argument only from the petitioner, and not the pa-

tent owner. Compare 35 U.S.C. § 312 (requiring that a pe-

tition “identifies, in writing and with particularity, each

claim challenged, the grounds on which the challenge to

each claim is based, and the evidence that supports the

grounds for the challenge to each claim”), with id. § 313

(with no such requirement for preliminary responses to a

petition). Parus also points out that patent owners are not

required to file a response, citing 37 C.F.R. § 42.120(a).

It is true that patent owners have no requirement to

respond to petitions. However, here, Parus chose to take

on an affirmative burden to show that it was the first to

make its claimed inventions. Once Parus chose to submit

Case: 22-1269 Document: 48 Page: 8 Filed: 06/12/2023

8 PARUS HOLDINGS, INC. v. GOOGLE LLC

a response and assume that burden, it bore the responsi-

bilities that came with it—including submitting a response

that complied with the rules and regulations of the

USPTO. And that includes not incorporating material by

reference pursuant to 37 C.F.R. § 42.6(a)(3) and the inclu-

sion of “a detailed explanation of the significance of the ev-

idence including material facts” pursuant to 37 C.F.R.

§ 42.44. 2 See also 37 C.F.R. §§ 42.23(a), 42.120.

Parus next argues that requiring it to include argu-

ments relating to antedating in its briefs improperly placed

a burden of persuasion on the patent owner. Parus notes

that it was Appellees who bore the burden to prove that

Kovatch was prior art; Parus only bore a burden of produc-

tion, which it claims it fulfilled. Parus is correct that, in an

IPR, the petitioner bears the ultimate burden of persuasion

on invalidity, which never shifts to the patent owner. Dy-

namic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d

1375, 1378 (Fed. Cir. 2015). However, when a patent

owner attempts to antedate an asserted prior art reference,

the patent owner assumes a temporary burden of produc-

tion. Id. at 1378–79; see also In re Magnum Oil Tools Int’l,

Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016) (“[A] patentee

bears the burden of establishing that its claimed invention

is entitled to an earlier priority date than an asserted prior

art reference.”).

The burden of production cannot be met simply by

throwing mountains of evidence at the Board without ex-

planation or identification of the relevant portions of that

evidence. One cannot reasonably expect the Board to sift

through hundreds of documents, thousands of pages, to

find the relevant facts. As the Seventh Circuit articulated

2 Although the Board did not explicitly cite 37 C.F.R.

§ 42.44, it faulted Parus for not including a “detailed expla-

nation of the evidence,” just as that rule requires. Decision,

J.A. 21.

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PARUS HOLDINGS, INC. v. GOOGLE LLC 9

in United States v. Dunkel, 927 F.2d 955, 956 (7th Cir.

1991), “Judges are not like pigs, hunting for truffles buried

in briefs.” We echoed that refrain in General Access Solu-

tions, Ltd. v. Sprint Spectrum L.P., 811 F. App’x 654, 657

(Fed. Cir. 2020) (unpublished), explaining that the Board

should not be forced to “play arch[a]eologist with the rec-

ord.” See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–

67 (7th Cir. 1999) (“A brief must make all arguments ac-

cessible to the judges, rather than ask them to play archae-

ologist with the record.”). The burden of production cannot

be met without some combination of citing the relevant rec-

ord evidence with specificity and explaining the signifi-

cance of the produced material in briefs. Here, Parus did

neither.

As we explained in General Access, there are compel-

ling reasons why these USPTO regulations exist. In that

case, as here, the patent owner attempted to incorporate by

reference a lengthy claim chart allegedly evidencing con-

ception of the challenged claims. General Access, 811 F.

App’x at 656 n.1. We upheld the Board’s decision finding

that the conclusory assertions in the Patent Owner Re-

sponse were insufficient to meet the Patent Owner’s bur-

den of establishing prior conception. Id. at 658. In so

doing, we found that the “prohibition against incorporation

of arguments from other documents serves various policy

goals, including to ‘minimize the chance that an argument

may be overlooked’ and to ‘eliminate[] abuses that arise

from incorporation and combination.’” Id. at 657 (quoting

Rules of Practice for Trials Before the Patent Trial and Ap-

peal Board and Judicial Review of Patent Trial and Appeal

Board Decisions, 77 Fed. Reg. 48,612, 48,617 (Aug. 14,

2012)). See also DeSilva, 181 F.3d at 866–67 (Incorpora-

tion “by reference amounts to a self-help increase in the

length of the [] brief,” and “is a pointless imposition on the

court’s time.”). Further, Parus’s suggestion that patent

owners need only submit evidence—regardless how volu-

minous or argumentative—would eviscerate all page limits

Case: 22-1269 Document: 48 Page: 10 Filed: 06/12/2023

10 PARUS HOLDINGS, INC. v. GOOGLE LLC

for patent owners while maintaining restrictions on peti-

tioners. See 37 C.F.R. § 42.24.

Parus further argues that, according to our decision in

Aqua Products v. Matal, 872 F.3d 1290, 1325 (Fed. Cir.

2017) (en banc), the APA requires the Board to review “the

entirety of the record,” and that obligation cannot be obvi-

ated by rule or regulation. However, Parus’s argument is

misplaced. Aqua Products stands for the principle that the

Board must decide all issues properly before it, even if they

are contrary to its result. Nothing in Aqua Products man-

dates that the Board review evidence and issues introduced

by a party in violation of its rules or not introduced at all.

See Hunting Titan, Inc. v. DynaEnergetics Europe GmbH,

28 F.4th 1371, 1381 (Fed. Cir. 2022) (explaining that Aqua

Products does not place on the Board “an affirmative duty,

without limitation or exception, to sua sponte raise patent-

ability challenges to a proposed substitute claim,” even if

based on record evidence); Magnum Oil, 829 F.3d at 1381

(“[T]he Board must base its decision on arguments that

were advanced by a party, and to which the opposing party

was given a chance to respond.”). Just as a district court

has the power to strike or not consider submissions that

exceed its page limits, are untimely filed, or otherwise do

not comply with its orders and rules, so too does the Board.

See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081

(Fed. Cir. 2015) (explaining that “the Board’s rules and

practices establish standards bearing similarities to those

often applied in district-court litigation” and that the

Board “has broad discretion to regulate the presentation of

evidence”).

And Parus was not without recourse. Parus had almost

3,000 unused words in its Patent Owner Response. J.A.

1355. Moreover, if Parus had needed more room to explain

its position, it could have sought leave to exceed its word

count under 37 C.F.R. § 42.24(a)(2) or reallocated more of

its briefs to that argument. Parus chose not to use the av-

enues available to it.

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PARUS HOLDINGS, INC. v. GOOGLE LLC 11

Because we do not find the Board’s decision to disre-

gard Parus’s alleged evidence and argument of antedating

to be a violation of the APA or any other provision of law,

we affirm the Board’s holding that Kovatch qualifies as

prior art to the challenged patents under 35 U.S.C.

§ 103(a). Because Parus does not otherwise challenge the

Board’s holding of obviousness based on Kovatch in combi-

nation with other references, we likewise affirm the

Board’s holding that Appellees demonstrated by a prepon-

derance of the evidence that claims 1, 2, 4–7, 9, 10, 13, and

14 of the ’431 patent are unpatentable.

II

For a claim to be entitled to the “the filing date of an

earlier application under 35 U.S.C. § 120, each application

in the chain leading back to the earlier application must

comply with the written description requirement of

35 U.S.C. § 112.” Lockwood v. Am. Airlines, Inc., 107 F.3d

1565, 1571 (Fed. Cir. 1997). Each application in the chain

must therefore “reasonably convey[] to those skilled in the

art that the inventor had possession of the [later-claimed]

subject matter as of the filing date.” Ariad Pharms., Inc. v.

Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en

banc). “Sufficiency of written description is a question of

fact, reviewed for substantial evidence.” Gen. Hosp. Corp.

v. Sienna Biopharms., Inc., 888 F.3d 1368, 1371 (Fed. Cir.

2018).

Parus argues that (a) the Board’s determinations re-

garding written description exceeded its statutory author-

ity under 35 U.S.C. § 311(b), and (b) that the Board erred

in finding that the challenged claims did not have sufficient

written description support to entitle them to an earlier

priority date. We address each argument in turn.

A

Parus first argues that the Board’s determinations re-

garding the written description requirement of 35 U.S.C.

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12 PARUS HOLDINGS, INC. v. GOOGLE LLC

§ 112 exceeded its statutory authority under 35 U.S.C.

§ 311(b), which limits the scope of IPRs to the cancellation

of claims based “only on a ground that could be raised un-

der section 102 or 103.” Appellees respond that Parus

waived that argument by only raising it in its Preliminary

Response, and not its Response, and even if not waived, its

argument is foreclosed by our decision in Arthrex Inc. v.

Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022). We

agree with Appellees on both points.

By raising an argument in its Preliminary Response,

but not its Response, a patent owner waives said argument.

In re NuVasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016).

Even if Parus had not waived such argument, it is without

merit. As we decided in Arthrex, § 311(b) “merely dictates

the grounds on which an IPR petition may be based, not

the issues that the Board may consider to resolve those

grounds.” 35 F.4th at 1344–45. As in that case, Appellees

complied with § 311(b) by asserting invalidity grounds un-

der § 103. Because Parus asserted that Kurnagov-262 is

not prior art by claiming priority from the application from

which it stems, the Board needed to determine whether the

challenged claims satisfied the written description require-

ment. The Board therefore did not exceed its statutory au-

thority.

B

Parus argues that the challenged claims have suffi-

cient written description support and are therefore entitled

to their earlier priority date. The Board and the parties

agree that the specification discloses two preferred embod-

iments: one involving networked “web sites,” the other in-

volving networked “devices.” See, e.g., ’431 patent at col. 4

ll. 30–34, col. 17 ll. 36–46. The specification further teaches

that the device browsing embodiment “provides the same

robustness and reliability features described in the first

embodiment,” including the ability to detect “new devices”

and mark them “as being . . . new” in the system. Id., col.

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PARUS HOLDINGS, INC. v. GOOGLE LLC 13

19 ll. 10–19. Parus argues that, as demonstrated by expert

testimony, a person of ordinary skill in the art would have

understood the teachings of the second embodiment to be

applicable to the first embodiment. Appellees argue that,

as the Board found, the first embodiment relates to actual

web sites but does not add “new web sites,” whereas the

second embodiment relates to adding “new devices,” which

may “appear as ‘websites’” but are not web sites, and that

these teachings may not be combined. Decision, J.A.

58–61.

We agree with Appellees that the Board’s determina-

tion that “configured to periodically search via one or more

networks to identify new web sites and to add the new web

sites to the plurality of web sites” lacks written description

support is supported by substantial evidence. Parus’s ar-

guments amount to a request for us to reweigh the evidence

already considered by the Board, which we decline to do.

“A finding is supported by substantial evidence if a reason-

able mind might accept the evidence as adequate to sup-

port the finding.” Henny Penny Corp. v. Frymaster, LLC,

938 F.3d 1324, 1330 (Fed. Cir. 2019). That the Board gave

more credit to one expert witness than another is not

grounds for reversal. The Board’s finding was not an un-

reasonable assessment of the evidence before it, particu-

larly in light of the plain text of the specification itself.

Because we hold that (a) the Board did not exceed its

statutory authority and (b) its finding that the challenged

claims were not entitled to their earlier priority date was

supported by substantial evidence, we affirm the Board’s

holding that Kurganov-262 qualifies as prior art to the

challenged patents under 35 U.S.C. § 103(a). Because Pa-

rus does not otherwise challenge the Board’s holding of ob-

viousness based on Kurganov-262 in combination with

other references, we likewise affirm the Board’s holding

that Appellees demonstrated by a preponderance of the ev-

idence that claim 9 of the ’431 patent and claims 1, 2, 4–7,

10, and 14 of the ’084 patent are unpatentable.

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14 PARUS HOLDINGS, INC. v. GOOGLE LLC

CONCLUSION

We have considered Parus’s remaining arguments but

find them unpersuasive. For the foregoing reasons, the de-

cisions of the Board are affirmed.

AFFIRMED