PTAB procedure prohibits incorporating arguments by reference from one document into another during an IPR. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.”).

In Parus Holdings, Inc. v. Google LLC, — F.4th — (Fed. Cir. Jun. 12, 2023), the Federal Circuit affirmed the PTAB's decision not to consider arguments incorporated by reference. Professor Crouch's take-away was that “all arguments must be explicitly presented in the briefs, and the PTAB is not obligated to consider evidence or arguments that are not properly presented.”

Directed to an interactive voice system that allows a user to request information from a voice web browser, the challenged patents had an earliest claimed priority date of February 4, 2000. The patent owner (Parus Holdings) sought to avoid a cited reference (Kovatch) having an earliest possible priority date of January 4, 2000—by arguing that the claimed inventions had been conceived at least by July 12, 1999, and reduced to practice at least by December 31, 1999.

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 submitting that material as record evidence, Parus only minimally cited small portions of that material in its briefs without meaningful explanation.

Specifically, the patent owner had argued that “the source code, documents, and testimony show that at least by July 12, 1999, Alexander Kurganov, and Valery Zhukov conceived of and invented the claimed subject matter,” citing paragraphs from the declarations of Kurganov, as well as Paul Mulka and Benedict Occhiogrosso.

The patent owner further argued that “[t]o the extent that it is argued that the '431 and '084 inventions were not reduced to a prototype until January 7, 2000, the date the last source code file was added to the source code revision system, the inventors worked diligently to reduce the invention to practice from the critical date of January 4, 2000,” citing Occhiogrosso Dec. at ¶¶ 44-91; Mulka Dec. at ¶¶ 1-6; and Kurganov Dec. at ¶¶ 103-119.

The Federal Circuit, however, explained that a “detailed explanation of the evidence” was required.

The burden of production cannot be met simply by throwing mountains of evidence at the Board without explanation 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.

Notwithstanding the ultimate burden of persuasion on invalidity, when a patent owner attempts to antedate an asserted prior art reference, the patent owner assumes a temporary burden of production. Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015) (in an IPR, the petitioner bears the ultimate burden of persuasion on invalidity, which otherwise does not shift to the patent owner); see also In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1376 (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.”).

Notably, because the filed Patent Owner Response was almost 3,000 words under its word limit, the Court believed that the patent owner “was not without recourse” to provide detailed arguments. And if the patent owner believed that 3,000 words was not enough, it could have sought leave to exceed the word count.

Thus, the challenged patent claims were not entitled to an earlier priority date, and the cited reference qualified as prior art that rendered those claims invalid under 35 U.S.C. § 103(a). The PTAB's holding of obviousness was affirmed.

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