Offering a Detailed Rationalization of the Proof

by Dennis Crouch

The choice in Parus Holdings, Inc. v. Google LLC, — F.4th — (Fed. Cir. 2023), underscores the significance of adhering to the PTAB procedural necessities, notably the prohibition towards incorporating arguments by reference from one doc into one other throughout an IPR, as stipulated in 37 C.F.R. § 42.6(a)(3). The court docket’s affirmation of the PTAB’s resolution to not think about arguments and proof that violated this rule sends a transparent message to future litigants: all arguments should be explicitly introduced within the briefs, and the PTAB isn’t obligated to think about proof or arguments that aren’t correctly introduced.

Through the IPR the patentee (Parus Holdings) made a variety of arguments  supporting the validity of the challenged claims.  Related for this enchantment was its try to offer proof exhibiting it was the primary to make the claimed invention, antedating the prior artwork. Nonetheless, the PTAB declined to think about Parus’s arguments and proof due to the procedural method taken by the patentee. the substance of these arguments have been made inside a number of declarations, however not truly inside the briefs. Reasonably, the briefs merely integrated these arguments by-reference into its Response and Sur-reply briefs.  The issue, PTAB follow guidelines prohibit incorporation by reference. 37 C.F.R. § 42.6(a)(3).

(3) Incorporation by reference; mixed paperwork. Arguments should not be integrated by reference from one doc into one other doc. Mixed motions, oppositions, replies, or different mixed paperwork will not be permitted.


On enchantment, the Court docket of Appeals for the Federal Circuit affirmed the PTAB’s resolution. The court docket agreed that the PTAB was right in disregarding Parus’s arguments that have been in violation of the rule (no abuse of discretion).  The court docket additionally disagreed with Parus’s argument that the PTAB ought to have thought-about all document proof, no matter the way it was introduced. The justification right here is that the PTAB is restricted to deciding instances on arguments that superior by a celebration and to which the opposing celebration was given an opportunity to reply. Permitting delicate incorporation by reference raises potential confusion on these points.  The court docket additional famous that Parus had nearly 3,000 unused phrases in its Patent Proprietor Response and will have sought go away to exceed its phrase rely underneath 37 C.F.R. § 42.24(a)(2) or reallocated extra of its briefs to that argument, however selected to not use the avenues obtainable to it.  The outcome then is that the reference qualifies prior artwork and the obviousness holding stands.

Within the case, the court docket famous that the patentee had an elevated burden on this occasion as a result of it was not merely rebuffing claims from a patent challenger, however affirmatively asserting a pre-filing precedence date.

After I have a look at the briefs, it appears to be like awfully near ample arguments.  The next comes from the briefs by the patentee:

The inventors conceived of the claimed material earlier than Kovatch’s January 4, 2000 U.S. precedence submitting date. . . .

Right here, the supply code, paperwork, and testimony present that at the very least by July 12, 1999, Alexander Kurganov, and Valery Zhukov conceived of and invented the claimed material whereas engaged on the web-based upgrades to the Webley Assistant. Kurganov Decl. at ¶ 13. . . .

As proven by way of Alexander Kurganov’s testimony, which is corroborated by the time-stamped supply code, emails paperwork, and the testimony of Paul Mulka and Benedict Occhiogrosso, the inventors conceived of the subject material no later than July 12, 1999. Following conception, the inventors have been moderately and constantly diligent because the Webley Assistant enhancements was the one venture they have been engaged on at Webley and so they have been employed full-time. The proof produced in Mr. Kurganov’s declaration, together with the accompanying reveals, exhibit that the enhancements to the Webley Assistant decreased the ’431 and ’084 innovations to follow in a prototype no later than December 31, 1999, 5 days earlier than Kovatch’s earliest submitting date of January 4, 2000.

To the extent that it’s argued that the ’431 and ’084 innovations weren’t decreased to a prototype till January 7, 2000, the date the final supply code file was added to the supply code revision system, the inventors labored diligently to scale back the invention to follow from the essential date of January 4, 2000, till the grammar file was entered into the supply code revision system on January 7, 2000. See Ex. 2059, Occhiogrosso Dec. at ¶¶ 44-91; Ex. 2060, Mulka Dec. at ¶¶ 1-6; Ex. 2020, Kurganov Dec. at ¶¶ 103-119.

. . . To point out diligence throughout this brief interval, Patent Proprietor depends on the supply code revision logs and emails, in addition to the testimony of Paul Mulka. The supply code revision logs and Paul Mulka’s testimony exhibits that from December 1999 to early January 2000, the inventors have been employed full-time on the Webley Assistant venture, and each file, or file modification they dedicated to the supply code revision system, was for the Webley Assistant venture. Accordingly, the exercise represented by these supply code revision logs exceeds the affordable diligence required.

On enchantment, the court docket apparently concluded that the citations right here weren’t particular sufficient.

The burden of manufacturing can’t be met just by throwing mountains of proof on the Board with out clarification or identification of the related parts of that proof. One can’t moderately anticipate the Board to sift by way of a whole lot of paperwork, hundreds of pages, to search out the related information.

Slip Op.  The court docket defined {that a} “detailed clarification of the proof” is required underneath the rule, and this doesn’t suffice.


NOTE – the court docket cites to 37 C.F.R. § 42.44, as requiring a “detailed clarification of the proof.” Nonetheless, that provision doesn’t look like a part of the Federal Regulation.  The court docket has not beforehand required this degree of clarification inside the briefing.

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U.S. Patent 7,076,431 and U.S. Patent 9,451,084.