PTAB Need Not Consider Mountain of Evidence Submitted Without a Map

Written by: Brian C. Barnes & Karen Cassidy Selvaggio

Before Lourie, Bryson, and Reyna. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.

Summary: PTAB did not err in declining to consider evidence in IPR that was incorporated by reference without adequate explanation.

Google LLC and several others petitioned for Inter Partes Review of two patents owned by Parus Holdings, Inc. The parties disputed whether one of the cited references qualified as prior art to the challenged patents. Parus attempted to swear behind the disputed reference and filed over 1,000 pages of declarations, exhibits, and claim charts in support of its claimed conception and diligent work to reduce the invention to practice. However, Parus provided cites to only small portions of that material in its brief and provided limited explanation. Instead, Parus relied on incorporating its filings by reference. The Board declined to consider Parus’s arguments and evidence that the challenged patents were conceived and reduced to practice before the prior art reference’s priority date because Parus failed to comply with the prohibition on incorporation by reference. Accordingly, the Board found the disputed reference to be prior art. The Board also found that a second reference, a publication of the application to which the challenged patents claimed priority, was prior art because the application to which the challenged claims claimed priority did not provide written description support for all claim elements. The Board found all challenged claims unpatentable as obvious.

The Federal Circuit affirmed, holding that the Board did not improperly decline to consider Parus’s evidence concerning conception and that the Board’s decision on written description was supported by substantial evidence. The Federal Circuit explained that once Parus chose to submit a response to Google’s petitions, it assumed the burden of complying with the Board’s rules and regulations, including those prohibiting incorporation of arguments by reference and requiring detailed explanations of the evidence. Because Parus failed to comply with those rules, the Board did not err in refusing to consider Parus’s evidence concerning conception date. Regarding written description, the Federal Circuit found no error in the Board’s decision, explaining that the Board did not exceed its statutory authority by addressing written description for purposes of evaluating a priority claim because the analysis was necessary to determine whether Google’s asserted references qualified as prior art.

Editor: Paul Stewart