Google LLC v. Parus Holdings, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GOOGLE LLC,
Appellant
v.
PARUS HOLDINGS, INC.,
Appellee
______________________
2024-2381
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00279.
______________________
Decided: July 13, 2026
______________________
BENJAMIN HABER , O'Melveny & Myers LLP, Los Ange-
les, CA, argued for appellant. Also represented by WILLIAM
F INK, Washington, DC; CAITLIN P. HOGAN, New York, NY.
CHARLES E. F OWLER, J R., McKool Smith, P.C., Austin,
TX, argued for appellee. Also represented by J OHN BRUCE
CAMPBELL ; CHRISTIAN D ORMAN, Washington, DC.
______________________
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GOOGLE LLC v. PARUS HOLDINGS, INC. 2
Before D YK and T ARANTO, Circuit Judges, and MOORE,
District Judge.1
T ARANTO, Circuit Judge.
Parus Holdings, Inc., owns U.S. Patent No. 6,721,705,
which describes and claims a voice-operated system for
browsing the Internet. As relevant here, Parus also owns
two other patents descended from the ’705 patent. Google
LLC successfully petitioned the Patent and Trademark Of-
fice (PTO) for inter partes reviews (IPRs) of the ’705 patent
and related Parus patents under 35 U.S.C. §§ 311–19. In
its petitions, Google challenged various claims on obvious-
ness grounds, asserting similar prior-art combinations and
rationales for obviousness. In the two non-’705 IPRs of rel-
evance, the PTO’s Patent Trial and Appeal Board held all
challenged claims unpatentable for obviousness, and we
summarily affirmed those Board decisions in 2025. In con-
trast, in the IPR of the ’705 patent, which is now before us,
the Board determined that Google had failed to show the
unpatentability of the claims at issue (claims 1 and 2).
Google LLC v. Parus Holdings, Inc., No. IPR2022-00279,
2024 WL 3625783, at *1 (P.T.A.B. Aug. 1, 2024) (’705 Deci-
sion). Google appeals. We vacate the Board’s decision and
remand for further proceedings.
I
A
The ’705 patent, which issued from a 2001 nonprovi-
sional application (following two provisionals filed in 2000),
is titled “Robust Voice Browser System and Voice Activated
Device Controller.” It has a number of descendants, includ-
ing U.S. Patent Nos. 7,881,941 and 8,185,402, also owned
1 Honorable K. Michael Moore, District Judge,
United States District Court for the Southern District of
Florida, sitting by designation.
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GOOGLE LLC v. PARUS HOLDINGS, INC. 3
by Parus, with which it shares a specification. The ’705
patent describes a need “for a system that allows users to
easily access and browse the Internet” using “any type of
telephone.” ’705 patent, col. 2, lines 19–23. The patent
purports to meet that need with a telephonic “voice brows-
ing system” that allows users to control a web browser with
voice commands. Id., col. 2, lines 47–63.
The described system maintains categories of infor-
mation that might be sought by a user and, within each
category, a ranked list of websites. See id., col. 5, lines 7–
26. When a user requests a particular type of information
(e.g., an extended weather forecast), the system accesses
the pertinent websites in the order that they are ranked to
attempt to find responsive information. See id.; id., col. 16,
lines 23–35. The system updates its ranked lists by using
a “polling mechanism” that “continually polls or ‘pings’
each of the sites.” Id., col. 16, lines 48–52. The website
rankings are adjusted based on whether a site provides a
“useful and error-free” response to the poll and on its
“speed . . . in providing responses.” Id., col. 17, lines 5–20.
This ranking method, according to the specification, en-
sures “complete, timely, and relevant responses.” Id., col.
17, lines 11–13.
The ’705 patent has four claims, all of which are inde-
pendent, but only claims 1 and 2 are involved in this ap-
peal. Claims 1 and 2 are similar and the parties treat claim
1 as representative. Claim 1 reads as follows (with clause
labels as added in the Board proceeding):
1. An Internet voice browsing system for gathering
information from web sites on the Internet, com-
prising:
[1A] a CPU-based media server, said media server
including at least a speech recognition engine, a
speech synthesis engine, an interactive voice re-
sponse application, a call processing system, and
telephony hardware, said media server configured
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GOOGLE LLC v. PARUS HOLDINGS, INC. 4
to receive a speech command from a user and to
convert said speech command into a digital data
message;
[1B] a database containing a list of web sites stored
on magnetic media,
[1C] a rank number assigned to each one of said
web sites and stored in said database;
[1D] a CPU-based web browsing server, said web
browsing server including at least a content extrac-
tion agent, a content fetcher, a polling and ranking
agent, and a content descriptor file, [1E] said web
browsing server configured to receive said digital
data message from said media server and config-
ured to access one of said web sites having the high-
est said rank number and to retrieve information
from said one of said web sites;
[1F] said media server configured to generate an
audio message representing said information and
to transmit said audio message to said user; and
[1G] a polling mechanism configured to periodically
send a polling digital data message to each one of
said web sites and to receive a response, each of
said web sites thereby becoming a polled web site,
[1H] said polling mechanism configured to
decrease said rank number of said polled web
site if no response is received from said
polled web site, [1I] said polling mechanism
also configured to decrease said rank number
of said polled web site if an unexpected re-
sponse is received from said polled web site,
and [1J] said polling mechanism also config-
ured to decreases said rank number of said
polled web site if a response time of said
polled web site is longer than a second re-
sponse time of a second polled web site.
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GOOGLE LLC v. PARUS HOLDINGS, INC. 5
Id., col. 19, line 47, through col. 20, line 17 (emphasis
added).
B
Google filed a petition for an IPR of all claims (1
through 4) of the ’705 patent in December 2021. J.A. 125,
207. Google eventually dropped claims 3 and 4 from the
IPR. As to claims 1 and 2, Google argued unpatentability
for obviousness, as explained in greater detail infra, over
two combinations of references: Kovatch in view of Burrows
and Wise in view of Burrows. J.A. 125. In January and
February 2022, Google also sought IPRs of all claims of the
’941 and ’402 patents; in those petitions, Google alleged the
obviousness of certain claims over a combination including
Kovatch and Burrows as well as a combination including
Wise and Burrows. See J.A. 2817, 3445.
Kovatch, titled “Interactive Voice Response System,” is
a Patent Cooperation Treaty application, No. WO
01/50453. J.A. 364. It describes “an interactive voice re-
sponse system” that permits navigation of a computer us-
ing only voice commands by guiding a user through an
“index of destinations.” J.A. 368, lines 23–27. Wise is U.S.
Patent No. 5,884,262, which is titled “Computer Network
Audio Access and Conversion System” and discloses a
voice-operated search engine that makes use of an index of
audio-compatible documents. See J.A. 477, col. 9, line 56,
through col. 10, line 10. Burrows is U.S. Patent
No. 5,765,149, which is titled “Modified Collection Fre-
quency Ranking Method” and describes a computerized
method for ranking records (e.g., webpages) in response to
a user’s search using a preconstructed index of search
terms and locations. See J.A. 452, col. 1, line 53, through
col. 2, line 21.
In July 2022, the Board denied institution of the ’705
IPR. J.A. 1387. Google sought rehearing that month. J.A.
1422–35. While Google’s rehearing request was pending,
the Board instituted the ’941 and ’402 IPRs, and in August
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GOOGLE LLC v. PARUS HOLDINGS, INC. 6
2023, the Board held all challenged claims of the ’941 and
’402 patents unpatentable on the Wise grounds without
reaching the grounds involving Kovatch. J.A. 2308–45,
2346–83.2 Then, in September 2023, the Board granted
Google’s rehearing request and instituted the ’705 IPR.
J.A. 1492.
In August 2024, the Board rendered a final written de-
cision upholding claims 1 and 2. ’705 Decision, at *1. It
determined that Google had not shown that claim limita-
tions [1H], [1I], and [1J] (or the corresponding claim 2 lim-
itations) would have been obvious as part of either the
Kovatch-Burrows or Wise-Burrows grounds and, further,
that Google had not shown that claim limitation [1C] (or
the corresponding claim 2 limitation) would have been ob-
vious as part of the Wise-Burrows ground. Id. at *7–17.
Google timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(4) and 35 U.S.C. §§ 141(c), 319.
II
We review the Board’s decisions under the standards
of the Administrative Procedure Act (APA) and must “set
aside conclusions or findings that are ‘arbitrary, capricious,
an abuse of discretion, or otherwise not in accordance with
law,’ or ‘unsupported by substantial evidence.’” Alacritech,
Inc. v. Intel Corp., 966 F.3d 1367, 1370 (Fed. Cir. 2020)
(quoting 5 U.S.C. § 706).
Google argues that the Board made three errors. First,
Google contends, the Board legally erred by considering the
prior-art references in isolation from each other in finding
failure by Google to show obviousness as to claim limita-
tions [1H]–[1J] for both grounds and limitation [1C] for the
2 We summarily affirmed those decisions in Parus
Holdings, Inc. v. Google LLC, Nos. 23-2296, -2297, 2025
WL 720088 (Fed. Cir. March 6, 2025).
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GOOGLE LLC v. PARUS HOLDINGS, INC. 7
Wise-Burrows ground. Second, Google argues, with re-
spect to both grounds, that the Board denied it the APA-
required process by adopting a claim construction of the
term “unexpected response” in its decision without having
provided adequate notice of or opportunity to address the
construction. Finally, for the Wise-Burrows ground,
Google contends that the Board failed to address Google’s
argument that upholding the ’705 claims would be incon-
sistent with the Board’s unpatentability determinations in
the ’941 and ’402 IPRs. We are persuaded that these errors
require vacatur and remand.
A
1
As to both the Kovatch-Burrows and Wise-Burrows
combinations, Google contends that the Board focused too
narrowly on Burrows in isolation when finding that Google
failed to prove the challenged claims obvious. We agree,
and we conclude that a remand is necessary for the Board
to find facts with a proper focus on the combinations as pre-
sented in the petition.
Google’s petition asserted that both Kovatch in view of
Burrows and Wise in view of Burrows would have rendered
claims 1 and 2 obvious. J.A. 135–37, 157–58. We start with
the Kovatch-Burrows combination.
Kovatch, like the ’705 patent, relates to a voice-oper-
ated system for accessing information on the Internet. See
J.A. 368–69. It discloses organizing possible locations of
user-sought information (websites) into an index of desti-
nations through which it guides a user. J.A. 368, 404. As
now relevant, Google asserted that Kovatch discloses rank-
ing websites, as required by limitation [1C], because,
Google said, Kovatch teaches indexing websites in “a hier-
archical order based on users’ preferences.” J.A. 144.
Burrows discusses ranking webpages in response to a
user’s search based on how frequently search terms appear
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GOOGLE LLC v. PARUS HOLDINGS, INC. 8
on each page, with less common terms given greater
weight. J.A. 452, col. 1, line 53, through col. 2, line 13.
Burrows discloses (1) marking inaccessible webpages as
deleted and preventing such deleted pages from appearing
in search results, J.A. 459, col. 15, lines 11–24, (2) detect-
ing modifications to webpages, J.A. 454, col. 5, lines 42–49,
and (3) optimizing how user queries are parsed to reduce
the time it takes to complete a search, J.A. 466, col. 30,
lines 16–53. Google contended that a relevant artisan
would have been motivated “to include Burrows’s teachings
. . . to perform the rank assignment” in Kovatch’s index of
ranked websites. J.A. 149.
About limitation [1H], Google alleged the obviousness
of using “Burrows’s teaching of determining whether an in-
dexed page is inactive . . . to keep Kovatch’s index updated,
thereby decreasing the ranking of an inactive page.” J.A.
152. As to [1I], Google contended that a relevant artisan
would have been motivated to apply Burrows’s teaching of
detecting modified webpages to lower the rank of a website
“when the page is a ‘modified page’ to further limit the
pages that may not be of as much interest,” and that “as
applied to Kovatch, this teaching of Burrows would result
in modified entries moving to lower ranked positions in Ko-
vatch’s hierarchy.” J.A. 154. For [1J], Google asserted that
Burrows’s teaching of optimizing searches would have mo-
tivated a relevant artisan “to use response times as a factor
to update the index.” J.A. 155. Google’s petition thus ad-
vanced a theory that Burrows teaches three concepts—de-
tecting deleted webpages, detecting modified webpages,
and optimizing search response times—that a relevant ar-
tisan would have been motivated to use, for various as-
serted reasons, to modify the website ranking allegedly
taught by Kovatch.
The Board, in rejecting Google’s arguments, focused ex-
clusively on the disclosure of Burrows. As to [1H] and its
requirement of decreasing the rank of a nonresponsive
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GOOGLE LLC v. PARUS HOLDINGS, INC. 9
page, the Board rejected Google’s arguments because “Bur-
rows’ system overall has no sense of ranking prior to a
query” and—in Burrows’s search algorithm—a deleted
“webpage’s rank is not decreased.” ’705 Decision, at *9 (em-
phasis added). For [1I] (in addition to offering a claim-con-
struction rationale discussed infra, Section II.A.2), the
Board analyzed the operation of Burrows to conclude that
decreasing a modified page’s ranking would not have been
obvious, writing, “Burrows’ ranking and, consequently, the
ranking in the combined system, would be based on the con-
tent of the webpage, not its response as a changed
webpage.” Id. at *11 (emphasis added). And for [1J], the
Board concluded that “[Google] point[s] to no evidence that
query cost has any impact on the ranking Burrows’ query
module [ ] assigns to webpages.” Id. at *13 (emphasis
added).
As to the Wise-Burrows combination, the parties’ argu-
ments and the Board’s analysis were much the same as for
the Kovatch-Burrows combination, except as to limitation
[1C]. See id. at *14–17. Wise relates to a telephone-oper-
ated computer system, and teaches indexing audio-compat-
ible files, which “index may be stored as one or more
documents preferably in a hierarchical order.” J.A. 477,
col. 10, lines 7–9; see J.A. 468, abstract. Google identified
this disclosure of Wise as itself teaching [1C]’s numbered
ranking of stored websites, but in the alternative, Google
argued that (a) Burrows teaches numbered ranking of
search results and (b) that teaching would have motivated
a relevant artisan to modify Wise to include rank numbers
“in Wise’s hierarchical order.” J.A. 164–65. The Board re-
jected that argument “because Burrows’ ranking operation
is performed on results after execution of a query, [so the]
ranking cannot be applied to Wise’s index.” ’705 Decision,
at *15 (emphasis added).
On appeal, Google argues that the Board’s reasoning
failed to engage with the petition’s theory of the role of Bur-
rows in each of the combinations, instead rejecting Google’s
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GOOGLE LLC v. PARUS HOLDINGS, INC. 10
challenge after analyzing Burrows alone and determining
that it does not disclose the limitations just discussed.
Google’s argument has merit.
References in an obviousness combination “must be
read together, not in isolation,” when, as here, “the partic-
ular combination argued by the [p]etitioner” calls for such
a reading. Palo Alto Networks, Inc. v. Centripetal Net-
works, LLC, 122 F.4th 1378, 1386 (Fed. Cir. 2024). As ex-
emplified by the emphasized portions of the Board’s
decision just recounted, the Board improperly concentrated
on the disclosure of Burrows alone, and whether, for limi-
tations [1H]–[1J], Burrows itself discloses adjusting
webpage rankings based on inactivity, modification, or re-
sponse time, rather than whether a relevant artisan would
have been motivated to modify Kovatch or Wise’s rankings
to meet the limitations given Burrows’s disclosures relat-
ing to inactivity, modification, and response time. Simi-
larly, for Wise-Burrows and limitation [1C], the Board
incorrectly limited its analysis to whether Burrows itself
teaches a ranking of webpages prior to a search, rather
than considering how a relevant artisan would have been
motivated to modify Wise based on Burrows’s disclosure of
numbered ranking. We cannot say that the deficiencies in
the Board’s analysis were harmless, so we remand for the
Board to consider the particular combinations presented by
Google’s petition.
2
Google further argues, regarding limitation [1I] and
both of the petition’s obviousness grounds, that the Board
construed the term “unexpected response” but failed to af-
ford Google the APA-required notice of and opportunity to
address the construction the Board eventually adopted. On
this point too, we agree with Google.
Limitation [1I] requires that the claimed polling mech-
anism be configured to decrease a website’s rank “if an un-
expected response is received” from the website. ’705
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GOOGLE LLC v. PARUS HOLDINGS, INC. 11
patent, col. 20, lines 10–13. Google, in its petition, alleged
that this limitation would have been obvious over Kovatch-
Burrows and Wise-Burrows in part because Burrows
teaches detecting modifications to webpages and a relevant
artisan “would have understood that Burrows’s modified
pages are pages that return an ‘unexpected response.’” J.A.
153; see J.A. 174. Parus responded that “the Burrows index
has no expectations regarding the content of a particular
web page.” J.A. 1634.
The Board rejected Google’s argument. In addition to
agreeing with Parus about the disclosure of Burrows (as
discussed supra, Section II.A.1), the Board reasoned that
Google had not shown “that a change to a webpage would
be an ‘unexpected response.’” ’705 Decision, at *10 (analyz-
ing Kovatch-Burrows theory); see id. at *16 (same for Wise-
Burrows). It cited the ’705 patent’s disclosure that “web
sites change frequently” for that understanding, as well as
the “preferred embodiment” of the ’705 patent, which “de-
scribes an unexpected response as . . . incomplete or not in
the format the server expects.” Id. at *10 (citing ’705 pa-
tent, col. 2, lines 24–28; col. 16, lines 54–59). The Board
also relied on Google’s expert evidence and a technical pub-
lication as support for the idea that changes to webpages
were common, so would not be understood to be unex-
pected. ’705 Decision, at *10 (citing J.A. 249–51; J.A. 901).
Google now contends that the Board went beyond find-
ing facts to construe the claim term “unexpected response”
and that Google was not afforded the requisite notice of and
opportunity to address that claim construction. In a case
like this one where the Board did not expressly interpret
the claim language, “[t]o determine whether . . . the
Board[ ] has construed a claim, it is helpful to look to the
outcome of [its] analysis.” Google LLC v. EcoFactor, Inc.,
92 F.4th 1049, 1055 (Fed. Cir. 2024). Where the analysis
“establishes the scope . . . and meaning of the patented sub-
ject matter,” the Board “has most[ ] likely construed the
claim.” Id. (emphasis removed). The Board’s reliance on
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GOOGLE LLC v. PARUS HOLDINGS, INC. 12
the types of evidence typically used to interpret claims can
support a determination that it engaged in claim construc-
tion. See id. at 1056.
The Board, in this case, construed the “unexpected re-
sponse” term. It looked to the ’705 patent’s “preferred em-
bodiment” to determine that “the ’705 patent describes an
unexpected response” as a response that “is incomplete or
not in the format the server expects,” which “is very differ-
ent from the routine occurrence of a webpage’s content
changing over time.” ’705 Decision, at *10. And upon con-
sidering the patent’s specification and extrinsic evidence
about the dynamic nature of webpages, the Board seemed
to reason that “a change to a webpage,” categorically, could
not be the claimed “unexpected response.” Id. That anal-
ysis, in reliance on conventional sources of a patent claim’s
meaning, restricted the scope of the claim term to exclude
changes to webpages, so was claim construction.
We will not address the merits of the Board’s construc-
tion ourselves. The Board did not give Google adequate no-
tice of or opportunity to address that claim construction
before adopting it. We have repeatedly held that, under
the APA, “a petitioner is entitled to respond to a new claim
construction.” Axonics, Inc. v. Medtronic, Inc., 75 F.4th
1374, 1382 (Fed. Cir. 2023). That requirement may be sat-
isfied if the Board’s ultimate construction is sufficiently
within the range of possibilities raised by a construction
dispute between the parties, including if the petitioner has
in substance contested the Board’s ultimate interpretation
of a claim term, or if there is otherwise an apparent reason
that the petitioner should have anticipated the Board’s
construction. See id. at 1381 n.7; EcoFactor, 92 F.4th at
1057; Qualcomm Inc. v. Intel Corp., 6 F.4th 1256, 1262–63
(Fed. Cir. 2021). Here, though, the parties did not contest
the meaning of “unexpected response” as a matter of claim
construction, ’705 Decision, at *4; nor did their arguments
reveal different interpretations of the term, see J.A. 153,
1634. Under these circumstances, the Board was required
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GOOGLE LLC v. PARUS HOLDINGS, INC. 13
to provide Google an opportunity to rebut and to make ob-
viousness arguments under its new interpretation of “un-
expected response.”
B
A final reason for vacatur pertains only to the Wise-
Burrows ground. Google maintains that it alerted the
Board to the earlier ’941 and ’402 IPR decisions and argued
that the Board should hold the ’705 claims here unpatent-
able lest it render a decision inconsistent with its factfind-
ing in those IPR decisions, but that the Board failed to
respond to that argument. We are persuaded that the
Board insufficiently addressed Google’s assertions based
on the earlier IPR decisions.
The Board has an obligation under the APA to render
decisions that are not arbitrary and capricious. 5 U.S.C.
§ 706. Hand-in-hand with that obligation is a requirement
that the Board provide a reasoned explanation for a deci-
sion, one sufficient to enable our review of the Board’s ra-
tionale and its propriety. See Provisur Technologies, Inc.
v. Weber, Inc., 50 F.4th 117, 123 (Fed. Cir. 2022). Con-
sistent with those principles, we have recognized that the
APA may be violated when an agency adjudicator treats
similar cases differently, at least when it does so without
explaining why it has reached apparently discrepant re-
sults. See Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1321–
22 (Fed. Cir. 2017); Hansen-Sorensen v. Wilkie, 909 F.3d
1379, 1384 (Fed. Cir. 2018) (applying same standard in vet-
erans’ benefits context).
Here, Google, in its petitioner reply, straightforwardly
contended that Parus’s arguments for the nonobviousness
of the challenged claims “conflict[ed] with fact-findings
about Burrows in the [’941 IPR] and [’402 IPR].” J.A. 2096
(emphasis removed). Google reiterated the point at oral
argument before the Board, saying that the Board had “al-
ready applied Burrows to very similar claim elements in
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GOOGLE LLC v. PARUS HOLDINGS, INC. 14
the ’941 and ’402 patents” to find that claims of those pa-
tents would have been obvious, those earlier “conclusions
[were] correct,” and Google’s obviousness theory in the ’705
IPR used Burrows “the same way.” J.A. 2698. In the ’941
IPR decision to which Google referred, the Board found
that Wise, Burrows, and another reference would have
made obvious a claim to a computer that “periodically
polls” websites “to determine the availability of each said
web site, the duration of time for each said web site to re-
spond to a request from said computer, and changes to the
location of said information to be retrieved from each said
web site, said computer creating a ranking of said plurality
of web sites based on said periodic polling.” ’941 patent,
col. 20, lines 33–40; see J.A. 2337–39. In the ’402 IPR deci-
sion, the Board similarly found that a combination includ-
ing Wise and Burrows rendered unpatentable a claim
involving ranking websites “based on [ ] periodic polling” to
determine “availability,” “duration of time . . . to respond,”
and “changes to the location of [ ] information” for each site.
’402 patent, col. 24, lines 57–64; see J.A. 2379, 2381.
Although the Board was thus aware of Google’s posi-
tion that the earlier IPR decisions involved relevantly sim-
ilar claims and Wise-Burrows obviousness theories, it did
not distinguish or discuss its earlier findings. See ’705 De-
cision, at *14–17. Sometimes a reviewing court can
properly discern the agency’s rationale even if the agency’s
statement is less than perfectly clear, while still fulfilling
the judicial duty not to displace an agency’s factfinding or
other choices with its own. See Motor Vehicle Manufactur-
ers Association, Inc. v. State Farm Mutual Automobile In-
surance Co., 463 U.S. 29, 43 (1983). Here, however, the
Board’s silence precludes effective appellate review by
making it impossible to determine whether the Board ap-
prehended the inconsistency point and, if it did, why it re-
jected the argument and whether its rationale was sound.
On remand, if the Board reaches the Wise-Burrows ground
and again determines that the challenged claims are not
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GOOGLE LLC v. PARUS HOLDINGS, INC. 15
unpatentable, it should expressly address Google’s incon-
sistency argument and explain why it thinks this case rel-
evantly different from the earlier IPRs or otherwise justify
now reaching a different result.
III
We have considered the parties’ remaining arguments
and find them unpersuasive. For the foregoing reasons, we
vacate the decision of the Board and remand for further
proceedings consistent with this opinion.
The parties shall bear their own costs.
VACATED AND REMANDED
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