2023 Supreme(US)(cafc) 119
COURT OF APPEALS FOR THE FEDERAL CIRCUIT
Parus Holdings Inc. – Appellant
Versus
Google LLC – Respondent
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. Case: 22-1269 Document: 48 Page: 3 Filed: 06/12/2023
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 configure