Case: 22-1269    Document: 48    Page: 1   Filed: 06/12/2023




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

                PARUS HOLDINGS, INC.,
                      Appellant

                            v.

                    GOOGLE LLC,
                        Appellee
                 ______________________

                  2022-1269, 2022-1270
                 ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2020-
 00846, IPR2020-00847.
                  ______________________

                 Decided: June 12, 2023
                 ______________________

     JOHN BRUCE CAMPBELL, McKool Smith, P.C., Austin,
 TX, argued for appellant. Also represented by JOEL LANCE
 THOLLANDER.

     NATHAN R. SPEED, Wolf Greenfield & Sacks, PC, Bos-
 ton, MA, argued for appellee.     Also represented by
 GREGORY F. CORBETT, RICHARD GIUNTA, ELISABETH H.
 HUNT; GREGORY S. NIEBERG, New York, NY.
                ______________________

    Before LOURIE, BRYSON, and REYNA, Circuit Judges.
Case: 22-1269      Document: 48      Page: 2     Filed: 06/12/2023




 2                          PARUS HOLDINGS, INC.   v. GOOGLE LLC



 LOURIE, Circuit Judge.
     Parus Holdings, Inc. (“Parus”) appeals from two final
 written decisions of the United States Patent and Trade-
 mark Office Patent Trial and Appeal Board (“the Board”)
 holding claims 1, 2, 4–7, 10, 13, and 14 of U.S. Patent
 7,076,431 (“the ’431 patent”) and claims 1, 2, 4–7, 10, and
 14 of U.S. Patent 9,451,084 (“the ’084 patent”) unpatenta-
 ble as obvious. Parus Holdings, Inc. v. Google LLC,
 IPR2020-00846, Paper 31 (P.T.A.B. Oct. 19, 2021) (“Deci-
 sion”), J.A. 1–67; Parus Holdings, Inc. v. Google LLC,
 IPR2020-00847, Paper 31 (P.T.A.B. Oct. 19, 2021), J.A.
 68–95. 1 For the reasons provided below, we affirm.
                          BACKGROUND
     The challenged patents are directed to an interactive
 voice system that allows a user to request information from
 a voice web browser. ’431 patent, Abstract. Their shared
 specification discloses two preferred embodiments: a voice-
 based web browser system and a voice-activated device
 controller. See, e.g., ’431 patent, col. 4 ll. 30–34, col. 17 ll.
 36–46. Claim 1 of the ’084 patent, reproduced below, is
 representative.
         1. A system for acquiring information from
         one or more sources maintaining a listing of
         web sites by receiving speech commands ut-
         tered by users into a voice-enabled device and


     1    The two final written decisions in the inter partes
 reviews (“IPRs”) consolidated on appeal are largely similar
 for the purposes of this appeal. The decision in Parus Hold-
 ings, Inc. v. Google LLC, IPR2020-00846, Paper 31
 (P.T.A.B. Oct. 19, 2021), J.A. 1–67 is cited throughout as
 representative of both decisions unless specified otherwise.
 Because the challenged patents share a specification, cita-
 tions of the ’431 patent specification are likewise repre-
 sentative, unless otherwise stated.
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 PARUS HOLDINGS, INC.   v. GOOGLE LLC                        3



       for providing information retrieved from the
       web sites to the users in an audio form via the
       voice-enabled device, the system comprising:
       ...
       the computing device further configured to ac-
       cess at least one of the plurality of web sites
       identified by the instruction set to obtain the
       information to be retrieved, wherein the com-
       puting device is further configured to periodi-
       cally search via the one or more networks to
       identify new web sites and to add the new web
       sites to the plurality of web sites, the compu-
       ting device configured to access a first web
       site of the plurality of web sites and, if the in-
       formation to be retrieved is not found at the
       first web site, the computer configured to ac-
       cess the plurality of web sites remaining in an
       order defined for accessing the listing of web
       sites until the information to be retrieved is
       found in at least one of the plurality of web
       sites or until the plurality of web sites have
       been accessed;
       ....
 ’084 patent, col. 24 ll. 2–59 (emphasis added). The chal-
 lenged patents are continuations of and claim priority from
 an application filed on February 4, 2000, which eventually
 was published as U.S. Published Patent Application
 2001/0047262 (“Kurganov-262”). Appellant’s Br. at 16.
 Kurganov-262 and the challenged patents share a specifi-
 cation. Id.
      Google LLC, Samsung Electronics Co., Ltd., Samsung
 Electronics America, Inc., LG Electronics Inc., and LG
 Electronics USA, Inc. (collectively, “Appellees”) petitioned
 for inter partes review of the ’431 and ’084 patents, assert-
 ing that the challenged claims would have been obvious
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 4                        PARUS HOLDINGS, INC.   v. GOOGLE LLC



 based on a number of asserted prior art references, includ-
 ing WO 01/050453 to Kovatch (“Kovatch”) and Kurganov-
 262 under pre-AIA 

(a).
      The parties disputed whether or not Kovatch qualified
 as prior art to the challenged patents. Kovatch was filed
 on July 12, 2001 and had an earliest possible priority date
 of January 4, 2000. J.A. 1827. Parus argued that Kovatch
 was not prior art because the claimed inventions had been
 conceived at least by July 12, 1999, and reduced to practice
 at least by December 31, 1999, prior to Kovatch’s earliest
 priority date. To the extent that the Board found that the
 invention had not been reduced to practice prior to that
 date, Parus argued that the inventors had diligently
 worked on reducing it to practice until then. In support of
 its contentions, Parus submitted approximately 40 exhibits
 totaling 1,300 pages, in addition to claim charts exceeding
 100 pages. Appellant’s Br. at 15. However, despite sub-
 mitting that material as record evidence, Parus only mini-
 mally cited small portions of that material in its briefs
 without meaningful explanation. See, e.g., J.A. 1333–36
 (Patent Owner Response), J.A. 1435–41 (Patent Owner
 Sur-Reply).
      The Board declined to consider Parus’s arguments and
 evidence that the challenged patents were conceived and
 reduced to practice prior to Kovatch’s priority date because
 it found that Parus had failed to comply with 

(a)(3), which prohibits incorporation by reference.
 Specifically, the Board found that
       Patent Owner has not presented its argu-
       ments regarding prior conception and reduc-
       tion to practice in its Response or Sur-reply;
       rather, Patent Owner presents its arguments
       in several declarations and improperly incor-
       porates those arguments by reference into its
       Response and Sur-reply, in violation of Rule
       42.6(a)(3).
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 PARUS HOLDINGS, INC.   v. GOOGLE LLC                         5



 Decision, J.A. 16. The Board noted that Parus did not pro-
 vide any “meaningful explanation in the Response,” 

 at
 J.A. 13, did “not cite [] any [] evidence or testimony with
 specificity,” 

 at 13–14, and did “not explain the basis for
 [its] conclusion or cite [] any evidence to support it,” 

. The Board therefore concluded that Parus had failed
 to meet its burden of production and that Kovach was prior
 art to the challenged patents.
      Appellees also argued that Kurganov-262, the publica-
 tion of the application from which the challenged patents
 claim priority, is prior art because the common specifica-
 tion failed to provide written description support for all the
 challenged claims of the ’084 patent and claim 9 of the ’431
 patent. According to Appellees, those claims were not en-
 titled to the earlier effective filing date. Parus responded
 that the claims were fully described in Kurganov-262 and
 therefore entitled to its February 4, 2000 priority date.
      The Board found that the evidence demonstrated that
 the challenged claims were not entitled to the February 4,
 2000 priority date and Kurganov-262 therefore qualified as
 prior art. Specifically, the Board found that the claim lim-
 itations requiring a computing device “configured to peri-
 odically search via one or more networks to identify new
 web sites and to add the new web sites to the plurality of
 web sites” were not supported by the earlier application.
 Decision, J.A. 58. The Board did not dispute that the com-
 mon specification disclosed a device browsing server that
 operated similarly to the web browsing server, and that the
 device browsing server could detect and incorporate new
 devices. 

 at J.A. 59–61 (citing ’431 patent at col. 17 ll.
 59–62, col. 19 ll. 19–28). But the Board concluded that that
 teaching was inapplicable to the web browsing server be-
 cause the specification “indicates that the devices ‘appear
 as “web sites”’ connected to the network,” but were not “web
 sites,” and the teachings were not interchangeable. See 

 (citing ’431 patent at col. 17 ll. 50–52).
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 6                        PARUS HOLDINGS, INC.   v. GOOGLE LLC



     After concluding that both Kurganov-262 and Kovatch
 qualified as prior art, the Board held the challenged claims
 unpatentable as obvious. Parus appealed. We have juris-
 diction under 

(a)(4)(A).
                         DISCUSSION
     Parus raises two main arguments on appeal: (1) that
 the Board erred in holding that Kovatch qualified as prior
 art because it improperly declined to consider Parus’s ar-
 guments and evidence regarding antedating, and (2) that
 the Board erred in holding that the challenged claims lack
 written description support and were therefore not entitled
 to their earlier priority date. We address each in turn.
                               I
     We must set aside any agency action found to be “arbi-
 trary, capricious, an abuse of discretion or otherwise not in
 accordance with law.” 

(2). We review “de
 novo whether the Board’s procedures satisfy the [Adminis-
 trative Procedure Act].” FanDuel, Inc. v. Interactive Games
 LLC, 

 (Fed. Cir. 2020). When the
 Board finds a failure to comply with its own procedures,
 such decision is reviewed for an abuse of discretion, Intelli-
 gent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 

 (Fed. Cir. 2016), which occurs when the
 Board’s decision “is clearly unreasonable, arbitrary, or fan-
 ciful,” Bilstad v. Wakalopulos, 

 (Fed.
 Cir. 2004).
     

(a)(8) requires the United States Patent
 and Trademark Office (“USPTO”) to promulgate rules gov-
 erning patent owners’ submission of evidence. Pursuant to
 that statutory mandate, the USPTO issued regulations set-
 ting various restrictions and requirements on briefs sub-
 mitted during IPRs. One of those regulations, 

(a)(3), provides that, “Arguments must not be incor-
 porated by reference from one document into another doc-
 ument.” Because the Board found that Parus failed to
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 PARUS HOLDINGS, INC.   v. GOOGLE LLC                       7



 comply with that regulation, it declined to consider Parus’
 arguments and evidence on antedating.
      On appeal, Parus does not dispute that it incorporated
 arguments by reference and therefore violated 

(a)(3). For that reason alone, the Board’s disregard-
 ing of Parus’s arguments found to be in violation of the rule
 cannot be an abuse of discretion. But Parus argues that
 the Board’s refusal to consider evidence of antedating is not
 in accordance with the law. Specifically, Parus argues that
 the Board erred in declining to consider its evidence of an-
 tedating, despite its antedating argument being incorpo-
 rated by reference, because such an action (a) is a violation
 of the Administrative Procedure Act (“APA”), (b) improp-
 erly placed a burden of persuasion on the patent owner,
 and (c) conflicts with statutes and regulations governing
 IPRs. These contentions boil down to two main arguments:
 (1) that Parus need not have submitted briefs pointing to
 and explaining the relevant record evidence, and (2) that
 the Board needed to have considered all record evidence,
 regardless of the manner of presentation. We disagree for
 the reasons provided below.
      Parus first argues that the governing IPR statutory
 and regulatory provisions require specific and persuasive
 attorney argument only from the petitioner, and not the pa-
 tent owner. Compare 

 (requiring that a pe-
 tition “identifies, in writing and with particularity, each
 claim challenged, the grounds on which the challenge to
 each claim is based, and the evidence that supports the
 grounds for the challenge to each claim”), with 

 § 313
 (with no such requirement for preliminary responses to a
 petition). Parus also points out that patent owners are not
 required to file a response, citing 

(a).
     It is true that patent owners have no requirement to
 respond to petitions. However, here, Parus chose to take
 on an affirmative burden to show that it was the first to
 make its claimed inventions. Once Parus chose to submit
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 8                         PARUS HOLDINGS, INC.   v. GOOGLE LLC



 a response and assume that burden, it bore the responsi-
 bilities that came with it—including submitting a response
 that complied with the rules and regulations of the
 USPTO. And that includes not incorporating material by
 reference pursuant to 

(a)(3) and the inclu-
 sion of “a detailed explanation of the significance of the ev-
 idence including material facts” pursuant to 

. 2 See also 

(a), 42.120.
     Parus next argues that requiring it to include argu-
 ments relating to antedating in its briefs improperly placed
 a burden of persuasion on the patent owner. Parus notes
 that it was Appellees who bore the burden to prove that
 Kovatch was prior art; Parus only bore a burden of produc-
 tion, which it claims it fulfilled. Parus is correct that, in an
 IPR, the petitioner bears the ultimate burden of persuasion
 on invalidity, which never shifts to the patent owner. Dy-
 namic Drinkware, LLC v. Nat’l Graphics, Inc., 

 (Fed. Cir. 2015). However, when a patent
 owner attempts to antedate an asserted prior art reference,
 the patent owner assumes a temporary burden of produc-
 tion. 

 at 1378–79; see also In re Magnum Oil Tools Int’l,
 Ltd., 

 (Fed. Cir. 2016) (“[A] patentee
 bears the burden of establishing that its claimed invention
 is entitled to an earlier priority date than an asserted prior
 art reference.”).
     The burden of production cannot be met simply by
 throwing mountains of evidence at the Board without ex-
 planation or identification of the relevant portions of that
 evidence. One cannot reasonably expect the Board to sift
 through hundreds of documents, thousands of pages, to
 find the relevant facts. As the Seventh Circuit articulated


     2    Although the Board did not explicitly cite 

, it faulted Parus for not including a “detailed expla-
 nation of the evidence,” just as that rule requires. Decision,
 J.A. 21.
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 PARUS HOLDINGS, INC.   v. GOOGLE LLC                        9



 in United States v. Dunkel, 

 (7th Cir.
 1991), “Judges are not like pigs, hunting for truffles buried
 in briefs.” We echoed that refrain in General Access Solu-
 tions, Ltd. v. Sprint Spectrum L.P., 

, 657
 (Fed. Cir. 2020) (unpublished), explaining that the Board
 should not be forced to “play arch[a]eologist with the rec-
 ord.” See also DeSilva v. DiLeonardi, 

, 866–
 67 (7th Cir. 1999) (“A brief must make all arguments ac-
 cessible to the judges, rather than ask them to play archae-
 ologist with the record.”). The burden of production cannot
 be met without some combination of citing the relevant rec-
 ord evidence with specificity and explaining the signifi-
 cance of the produced material in briefs. Here, Parus did
 neither.
     As we explained in General Access, there are compel-
 ling reasons why these USPTO regulations exist. In that
 case, as here, the patent owner attempted to incorporate by
 reference a lengthy claim chart allegedly evidencing con-
 ception of the challenged claims. General Access, 811 F.
 App’x at 656 n.1. We upheld the Board’s decision finding
 that the conclusory assertions in the Patent Owner Re-
 sponse were insufficient to meet the Patent Owner’s bur-
 den of establishing prior conception. Id. at 658. In so
 doing, we found that the “prohibition against incorporation
 of arguments from other documents serves various policy
 goals, including to ‘minimize the chance that an argument
 may be overlooked’ and to ‘eliminate[] abuses that arise
 from incorporation and combination.’” Id. at 657 (quoting
 Rules of Practice for Trials Before the Patent Trial and Ap-
 peal Board and Judicial Review of Patent Trial and Appeal
 Board Decisions, 

, 48,617 (Aug. 14,
 2012)). See also DeSilva, 181 F.3d at 866–67 (Incorpora-
 tion “by reference amounts to a self-help increase in the
 length of the [] brief,” and “is a pointless imposition on the
 court’s time.”). Further, Parus’s suggestion that patent
 owners need only submit evidence—regardless how volu-
 minous or argumentative—would eviscerate all page limits
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 10                       PARUS HOLDINGS, INC.   v. GOOGLE LLC



 for patent owners while maintaining restrictions on peti-
 tioners. See 

.
     Parus further argues that, according to our decision in
 Aqua Products v. Matal, 

 (Fed. Cir.
 2017) (en banc), the APA requires the Board to review “the
 entirety of the record,” and that obligation cannot be obvi-
 ated by rule or regulation. However, Parus’s argument is
 misplaced. Aqua Products stands for the principle that the
 Board must decide all issues properly before it, even if they
 are contrary to its result. Nothing in Aqua Products man-
 dates that the Board review evidence and issues introduced
 by a party in violation of its rules or not introduced at all.
 See Hunting Titan, Inc. v. DynaEnergetics Europe GmbH,
 

 (Fed. Cir. 2022) (explaining that Aqua
 Products does not place on the Board “an affirmative duty,
 without limitation or exception, to sua sponte raise patent-
 ability challenges to a proposed substitute claim,” even if
 based on record evidence); Magnum Oil, 

 (“[T]he Board must base its decision on arguments that
 were advanced by a party, and to which the opposing party
 was given a chance to respond.”). Just as a district court
 has the power to strike or not consider submissions that
 exceed its page limits, are untimely filed, or otherwise do
 not comply with its orders and rules, so too does the Board.
 See, e.g., Belden Inc. v. Berk-Tek LLC, 

 (Fed. Cir. 2015) (explaining that “the Board’s rules and
 practices establish standards bearing similarities to those
 often applied in district-court litigation” and that the
 Board “has broad discretion to regulate the presentation of
 evidence”).
      And Parus was not without recourse. Parus had almost
 3,000 unused words in its Patent Owner Response. J.A.
 1355. Moreover, if Parus had needed more room to explain
 its position, it could have sought leave to exceed its word
 count under 

(a)(2) or reallocated more of
 its briefs to that argument. Parus chose not to use the av-
 enues available to it.
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 PARUS HOLDINGS, INC.   v. GOOGLE LLC                      11



     Because we do not find the Board’s decision to disre-
 gard Parus’s alleged evidence and argument of antedating
 to be a violation of the APA or any other provision of law,
 we affirm the Board’s holding that Kovatch qualifies as
 prior art to the challenged patents under 

(a). Because Parus does not otherwise challenge the
 Board’s holding of obviousness based on Kovatch in combi-
 nation with other references, we likewise affirm the
 Board’s holding that Appellees demonstrated by a prepon-
 derance of the evidence that claims 1, 2, 4–7, 9, 10, 13, and
 14 of the ’431 patent are unpatentable.
                               II
     For a claim to be entitled to the “the filing date of an
 earlier application under 

, each application
 in the chain leading back to the earlier application must
 comply with the written description requirement of
 

.” Lockwood v. Am. Airlines, Inc., 

 (Fed. Cir. 1997). Each application in the chain
 must therefore “reasonably convey[] to those skilled in the
 art that the inventor had possession of the [later-claimed]
 subject matter as of the filing date.” Ariad Pharms., Inc. v.
 Eli Lilly & Co., 

 (Fed. Cir. 2010) (en
 banc). “Sufficiency of written description is a question of
 fact, reviewed for substantial evidence.” Gen. Hosp. Corp.
 v. Sienna Biopharms., Inc., 

 (Fed. Cir.
 2018).
      Parus argues that (a) the Board’s determinations re-
 garding written description exceeded its statutory author-
 ity under 

(b), and (b) that the Board erred
 in finding that the challenged claims did not have sufficient
 written description support to entitle them to an earlier
 priority date. We address each argument in turn.
                               A
    Parus first argues that the Board’s determinations re-
 garding the written description requirement of 35 U.S.C.
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 12                        PARUS HOLDINGS, INC.   v. GOOGLE LLC



 § 112 exceeded its statutory authority under 

(b), which limits the scope of IPRs to the cancellation
 of claims based “only on a ground that could be raised un-
 der section 102 or 103.” Appellees respond that Parus
 waived that argument by only raising it in its Preliminary
 Response, and not its Response, and even if not waived, its
 argument is foreclosed by our decision in Arthrex Inc. v.
 Smith & Nephew, Inc., 

 (Fed. Cir. 2022). We
 agree with Appellees on both points.
     By raising an argument in its Preliminary Response,
 but not its Response, a patent owner waives said argument.
 In re NuVasive, Inc., 

 (Fed. Cir. 2016).
 Even if Parus had not waived such argument, it is without
 merit. As we decided in Arthrex, § 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.” 35 F.4th at 1344–45. As in that case, Appellees
 complied with § 311(b) by asserting invalidity grounds un-
 der § 103. 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 require-
 ment. The Board therefore did not exceed its statutory au-
 thority.
                               B
      Parus argues that the challenged claims have suffi-
 cient written description support and are therefore entitled
 to their earlier priority date. The Board and the parties
 agree that the specification discloses two preferred embod-
 iments: one involving networked “web sites,” the other in-
 volving networked “devices.” See, e.g., ’431 patent at col. 4
 ll. 30–34, col. 17 ll. 36–46. The specification further teaches
 that the device browsing embodiment “provides the same
 robustness and reliability features described in the first
 embodiment,” including the ability to detect “new devices”
 and mark them “as being . . . new” in the system. Id., col.
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 PARUS HOLDINGS, INC.   v. GOOGLE LLC                       13



 19 ll. 10–19. Parus argues that, as demonstrated by expert
 testimony, a person of ordinary skill in the art would have
 understood the teachings of the second embodiment to be
 applicable to the first embodiment. Appellees argue that,
 as the Board found, the first embodiment relates to actual
 web sites but does not add “new web sites,” whereas the
 second embodiment relates to adding “new devices,” which
 may “appear as ‘websites’” but are not web sites, and that
 these teachings may not be combined. Decision, J.A.
 58–61.
     We agree with Appellees that the Board’s determina-
 tion that “configured to periodically search via one or more
 networks to identify new web sites and to add the new web
 sites to the plurality of web sites” lacks written description
 support is supported by substantial evidence. Parus’s ar-
 guments amount to a request for us to reweigh the evidence
 already considered by the Board, which we decline to do.
 “A finding is supported by substantial evidence if a reason-
 able mind might accept the evidence as adequate to sup-
 port the finding.” Henny Penny Corp. v. Frymaster, LLC,
 

 (Fed. Cir. 2019). That the Board gave
 more credit to one expert witness than another is not
 grounds for reversal. The Board’s finding was not an un-
 reasonable assessment of the evidence before it, particu-
 larly in light of the plain text of the specification itself.
     Because we hold that (a) the Board did not exceed its
 statutory authority and (b) its finding that the challenged
 claims were not entitled to their earlier priority date was
 supported by substantial evidence, we affirm the Board’s
 holding that Kurganov-262 qualifies as prior art to the
 challenged patents under 

(a). Because Pa-
 rus does not otherwise challenge the Board’s holding of ob-
 viousness based on Kurganov-262 in combination with
 other references, we likewise affirm the Board’s holding
 that Appellees demonstrated by a preponderance of the ev-
 idence that claim 9 of the ’431 patent and claims 1, 2, 4–7,
 10, and 14 of the ’084 patent are unpatentable.
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 14                      PARUS HOLDINGS, INC.   v. GOOGLE LLC



                       CONCLUSION
      We have considered Parus’s remaining arguments but
 find them unpersuasive. For the foregoing reasons, the de-
 cisions of the Board are affirmed.
                       AFFIRMED