Offering a Detailed Clarification 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, significantly 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 courtroom’s affirmation of the PTAB’s resolution to not contemplate arguments and proof that violated this rule sends a transparent message to future litigants: all arguments have to be explicitly introduced within the briefs, and the PTAB is just not obligated to contemplate proof or arguments that aren’t correctly introduced.

Through the IPR the patentee (Parus Holdings) made quite a few arguments  supporting the validity of the challenged claims.  Related for this attraction was its try to supply proof exhibiting it was the primary to make the claimed invention, antedating the prior artwork. Nonetheless, the PTAB declined to contemplate 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 really inside the briefs. Slightly, the briefs merely included these arguments by-reference into its Response and Sur-reply briefs.  The issue, PTAB apply guidelines prohibit incorporation by reference. 37 C.F.R. § 42.6(a)(3).

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

Id.

On attraction, the Court docket of Appeals for the Federal Circuit affirmed the PTAB’s resolution. The courtroom agreed that the PTAB was right in disregarding Parus’s arguments that have been in violation of the rule (no abuse of discretion).  The courtroom additionally disagreed with Parus’s argument that the PTAB ought to have thought of all file proof, no matter the way it was introduced. The justification right here is that the PTAB is restricted to deciding circumstances on arguments that superior by a celebration and to which the opposing celebration was given an opportunity to reply. Permitting refined incorporation by reference raises potential confusion on these points.  The courtroom additional famous that Parus had virtually 3,000 unused phrases in its Patent Proprietor Response and will have sought depart to exceed its phrase depend 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 accessible to it.  The consequence then is that the reference qualifies prior artwork and the obviousness holding stands.

Within the case, the courtroom 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.

Once I take a look at the briefs, it appears awfully near enough 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 no less than 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 fairly and repeatedly diligent because the Webley Assistant enhancements was the one undertaking 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, reveal that the enhancements to the Webley Assistant lowered the ’431 and ’084 innovations to apply 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 lowered 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 cut back the invention to apply from the vital 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 quick 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 undertaking, and each file, or file modification they dedicated to the supply code revision system, was for the Webley Assistant undertaking. Accordingly, the exercise represented by these supply code revision logs exceeds the cheap diligence required.

On attraction, the courtroom 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 rationalization or identification of the related parts of that proof. One can not fairly anticipate the Board to sift by way of lots of of paperwork, hundreds of pages, to search out the related details.

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

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

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