Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Parus Holdings, Inc. v. Google LLC, Nos. 2022-1269, -1270 (June 12, 2023), affirming two final written decisions of the Patent Trial and Appeal Board.
Parus owned patents directed to an interactive voice system that allows a user to request information from a voice web browser. Google, and others, petitioned for inter partes review asserting that the challenged claims of the Parus patents would have been obvious based on a number of prior art references, including a PCT publication (“Kovatch”) and a U.S. patent application publication (“Kurganov-262”). The Board instituted the IPR and issued a final written decision holding that both Kurganov-262 and Kovatch qualified as prior art and rendered the challenged claims unpatentable as obvious. Parus appealed.
The Federal Circuit affirmed. The Court first addressed Parus’s argument that the Board erred in holding that Kovatch qualified as prior art because it improperly declined to consider Parus’s arguments and evidence that the challenged patents were conceived and reduced to practice prior to Kovatch’s priority date. The Court held that Parus had failed to meet its burden of production on that issue because it simply presented a large volume of evidence to the Board without explanation or identification of the relevant portions. Meeting the burden of production on antedating, the Court explained, requires both specific citation to the relevant record evidence and an explanation of the significance of that evidence in briefs. Parus’s incorporation by reference of a lengthy claim chart allegedly evidencing conception of the challenged claims did not meet this standard.
The Court next addressed Parus’s argument that the Board lacked statutory authority to address a written description challenge, and that it erred in holding the challenged claims lacked written description support and were, therefore, not entitled to an earlier asserted priority date that would have disqualified Kurganov-262 as prior art. The Court held that the Board does have the authority to address written description arguments for purposes of determining whether a reference qualifies as prior art. The Court further held that the Board’s conclusion on lack of written description in the earlier application was supported by substantial evidence.
Having rejected Parus’s arguments that Kovatch and Kurganov-262 did not qualify as prior art, and finding Parus’s remaining arguments unpersuasive, the Court affirmed the decision of the Board.
Coauthored by Peter Gergely & Sherry Li.