This case concerns determining the prior art status of certain references in an inter partes review. The Federal Circuit considered whether the Patent Trial and Appeal Board (the “Board”) was correct in declining to consider the patent owner’s certain evidence not submitted in compliance with the Board’s rules and in making a determination regarding written description requirements.
Background
Google, Samsung, and LG petitioned for inter partes review of two patents owned by Parus, both patents directed to an interactive voice system that allows a user to request information from a voice web browser. The parties disputed whether Kovatch, a reference identified by petitioners, qualified as prior art. In support of the position that Kovatch qualified as prior art, Parus submitted approximately 40 exhibits totaling 1,300 pages, in addition to claim charts exceeding 100 pages. However, Parus only minimally cited small portions of the material in its briefs without meaningful explanation. The Board found that Parus improperly incorporated these arguments by reference and declined to consider them.
The parties also disputed whether the publication of the application from which the challenged patents claim priority, Kurganov-262, which shares a specification with the challenged patents, was prior art. The Board found so since the common specification failed to provide written description support for certain challenged claims. Parus appealed on both issues.
Issues
(1) Did the Board err in not considering Parus’s arguments and evidence regarding antedating, which were incorporated by reference into the response and sur-reply?
(2) Did the Board’s determinations regarding the written description requirement of 35 U.S.C. § 112 exceed its statutory authority under 35 U.S.C. § 311(b)?
Holdings
(1) No. The Board did not err in declining to consider Parus’s arguments and evidence regarding antedating, which were incorporated by reference into the response and sur-reply.
(2) No. The Board’s determinations regarding the written description requirement of 35 U.S.C. § 112 did not exceed its statutory authority under 35 U.S.C. § 311(b).
Reasoning
(1) On appeal, Parus did not dispute that it incorporated arguments by reference and therefore violated 37 C.F.R. § 42.6(a)(3). But Parus argued that the Board erred in refusing to consider evidence of antedating and that the statute requires specific and persuasive attorney arguments only from the petitioner, not the patent owner. The Federal Circuit, however, found that the burden of production, which Parus assumed by attempting to antedate an asserted prior art reference, “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of relevant portions.” The Federal Circuit held that meeting the burden requires some combination of “citing the relevant record evidence with specificity and explaining the significance of the produced material in briefs.” It explained that the policy reasons behind the requirements include minimizing the chance that an argument may be overlooked, eliminating abuses, and preventing evisceration of page limit requirements. The Federal Circuit further held that the Board has the power to strike or not consider submissions that do not comply with the Board’s orders and rules.
(2) Parus argued that 35 U.S.C. § 311(b) limits the scope of IPRs to the cancellation of claims based “only on a ground that could be raised under section 102 or 103.” However, the Federal Circuit, relying on its precedent, held that § 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.” 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 requirement. The Board therefore did not exceed its statutory authority.
