Don’t Ask Judges to Be Archaeologists | Weintraub Tobin

In response to Google L.L.C.’s (“Google”) and other’s petitions for inter partes review (“I.P.R.”) of two patents owned by Parus Holdings, Inc. (“Parus”), the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) found a number of claims obvious over prior art. The Court of Appeals for the Federal Circuit affirmed the PTAB’s decision, shedding additional light on the requirements and burdens of patent owners when responding to I.P.R. petitions.

Google challenged certain claims of U.S. Patent No. 7,076,431 (“’431 patent”) and U.S. Patent No. 9,451,084 (“’084 patent”) (collectively, the “challenged patents”). These patents share the same specification that “discloses two preferred embodiments: a voice-based web browser system and a voice-activated device controller.” The challenged patents are continuations of and claim priority to a patent application filed on February 4, 2000, and published as U.S. Patent Appl. 2001/0047262 (“Kurganov-262”). Kurganov-262 has the same specification as the challenged patents.

In the I.P.R., Google asserted the challenged claims were obvious based on Kurganov-262 and prior art reference W.O. 01/050453 to Kovatch (“Kovatch”). Kovatch was filed on July 12, 2001, and possibly had a priority date as early as January 4, 2000.

Parus asserted that the challenged patents were entitled to a priority date of December 31, 1999, which was earlier than Kovatch. In support of its argument, “Parus submitted approximately 40 exhibits totaling 1,300 pages” and “claim charts exceeding 100 pages.” However, “Parus only minimally cited small portions” and failed to provide “meaningful explanations” of these materials. Further, the PTAB found that Parus “improperly incorporate[d] [its] arguments by reference into its Response and Sur-reply, in violation of 37 C.F.R. § 42.6(a)(3).”

As a result, the PTAB “declined to consider Parus’s arguments and evidence” that the challenged patents were entitled to a priority date earlier than that of Kovatch. Therefore, the PTAB determined that Kovatch is prior art to the challenged patents.

Google also argued that a second reference, “Kurganov-262 … is prior art [to the challenged patents] because the specification does not provide written description support for all the challenged claims of the ‘084 patent and claim 9 of the ‘431 patent.” Under this argument, these claims would not be entitled to the February 4, 2000 filing date. The PTAB agreed and determined that Kurganov-262 was prior art to the challenged patents because the challenged claims could not claim priority to Kurganov-262.

Having found Kovatch and Kurganov-262 to be prior art to various claims of the challenged patents, the PTAB found the challenged claims to be invalid as obvious in light of this prior art. Parus appealed to the Federal Circuit.

On appeal, Parus argued (1) the PTAB erred by not considering the arguments and evidence that the challenged patents were entitled to an earlier priority date than Kovatch and (2) the PTAB erred in holding that the challenged claims lacked written description support in Kurganov-262 and thus were not entitled to the priority date of Kurganov-262.

First, the Federal Circuit considered whether the PTAB erred in declining to consider the arguments and evidence that Parus incorporated by reference in arguing that the challenged inventions predated Kovatch. One of the relevant regulations related to I.P.R. briefing is 37 C.F.R. § 42.6(a)(3), which states, “Arguments must not be incorporated by reference from one document into another document.” Parus did “not dispute that it incorporated arguments by reference” in violation of that rule. Therefore, the Federal Circuit found that the PTAB could not have abused its discretion in declining to consider improperly presented arguments.

Parus, however, argued that the PTAB was essentially required to consider the evidence irrespective of 37 C.F.R. § 42.6(a)(3). Specifically, Parus contended that it was not required to submit briefs “pointing to and explaining the relevant record evidence,” and the PTAB needed “to consider[] all record evidence, regardless of the manner presented.” Further, Parus argued that only the petitioner had to comply with the regulation requiring a “specific and persuasive attorney argument.” According to Parus, that requirement does not apply to the patent owner. In addition, Parus “points out that patent owners are not required to file a response” at all.

The Federal Circuit agreed that patent owners are not required to respond to an I.P.R. petition. But once the owner chooses to respond, the response must “compl[y] with the rules and regulations of the USPTO,” “including not incorporating material by reference” and providing “a detailed explanation of the significance of the evidence including material facts.”

A patent owner wishing to show their invention predates a prior art reference “assumes a temporary burden of production” that “cannot be met simply by throwing mountains of evidence at the [PTAB] without explanation or identification of the relevant portions of that evidence.” “A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”  The Court found that Parus did not meet its burden.

In addition, the Federal Circuit provided a reminder that the rule against incorporating documents by reference has policy roots, such as the goal to “minimize the chance that an argument may be overlooked” and “eliminate[] abuses that arise from incorporation and combinations.” For example, allowing patent owners to incorporate by reference “would eviscerate all page limits” for them “while maintaining restrictions on petitioners.”

The Court pointed out that Parus could have used the remaining 3,000 words of its limit and also could have sought leave for additional space to present its arguments. It did neither. Therefore, the Federal Circuit affirmed the finding that the PTAB was within its right to disregard these arguments and determine that Kovatch was prior art.

The second argument by Parus turns on whether Kurganov-262 provides written description support for the challenged claims. 35 U.S.C. § 120 requires that in a claim for priority to an earlier application, “each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” If such support is not found, then the challenged claims cannot claim priority to the earlier patent application, and the earlier application becomes prior art to those claims. 

Parus argues that the PTAB exceeded its statutory authority and erred in finding no written description support for the challenged claims in Kurganov-262.

First, Parus alleges that the PTAB exceeded its authority because the scope of I.P.R.s is limited to invalidating claims based only on § 102 and § 103 grounds. Google argued that Parus waived this argument by raising it only in its Preliminary Response and not in its Response. Google also asserted that the argument is without merit. 

The Federal Circuit agreed with Google stating that a patent owner waives an argument under these circumstances. Further, Google had properly raised the invalidity grounds under § 103 as allowed. When Parus asserted Kurganov-262 is not prior art by claiming priority to it, the PTAB was allowed “to determine whether the challenged claims satisfied the written description requirement.”

Second, Parus argues that Kurganov-262 provides written description support for the challenged claims. The Federal Circuit found that the PTAB’s decision was supported by substantial evidence. The PTAB was allowed to give “more credit to one expert witness than another.” The PTAB’s decision was not unreasonable in light of the evidence, including the plain text of the specification. As a result, the Federal Circuit affirmed that Kurganov-262 was also prior art.

In light of these findings, the Federal Circuit affirmed the invalidity findings of the PTAB.

In sum, this is a good reminder of the importance of making your arguments easy for judges to find and understand. Asking judges to be archaeologists and wade through mountains of documents is not likely to work in your favor, and in this case, it was in violation of the rules and regulations. This case also reminds us that when seeking to claim priority to an earlier patent in a chain of related patents, you must be able to identify written description support in each patent in that chain. Otherwise, the earlier patent can be used as prior art against later ones.

Story originally seen here