Case Explained: GOOGLE LLC v. PARUS HOLDINGS, INC

Court: United States Court of Appeals for the Federal Circuit

Filed: 2026-07-13

The Federal Circuit vacated the Patent Trial and Appeal Board’s (PTAB) final written decision upholding claims 1 and 2 of U.S. Patent No. 6,721,705 and remanded the case for further proceedings consistent with the court’s opinion. The court held that the Board committed three reversible errors under the Administrative Procedure Act (APA). First, the court found the Board legally erred by analyzing prior-art references in isolation rather than as a combination. In rejecting Google’s obviousness arguments based on the “Kovatch in view of Burrows” and “Wise in view of Burrows” combinations, the Board focused exclusively on whether the Burrows reference alone disclosed specific limitations (such as decreasing rank for inactive or modified pages). The court applied the standard that references in an obviousness combination must be read together to determine if a person of ordinary skill would have been motivated to modify the primary reference using teachings from the secondary reference. Because the Board failed to engage with Google’s theory regarding how Burrows would motivate modifications to Kovatch or Wise, its analysis was insufficient. Second, the court ruled that the Board violated APA procedural requirements by adopting a new claim construction of the term “unexpected response” without providing Google adequate notice or an opportunity to address it. The Board construed the term to mean a response that is “incomplete or not in the format the server expects,” distinguishing it from routine webpage changes, despite the parties having only argued about the disclosure of the prior art rather than the claim construction itself. Under APA standards, a petitioner is entitled to respond to a new claim construction that defines the scope of the patented subject matter. Third, regarding the “Wise in view of Burrows” ground, the court found the Board failed to provide a reasoned explanation for its decision despite Google’s argument that upholding the patent would be inconsistent with the Board’s prior unpatentability determinations in related IPRs (IPR2022-00279 and others involving patents ‘941 and ‘402). The court held that when an agency adjudicator treats similar cases differently, it must explain why; the Board’s silence on this inconsistency argument precluded effective appellate review. The practical consequence is that the PTAB’s decision upholding the patent is set aside. The case is returned to the Board to re-evaluate the obviousness of claims 1 and 2, ensuring it analyzes prior-art references as combined theories, provides proper notice and opportunity for briefing on any claim constructions adopted, and explicitly addresses or distinguishes its prior findings in related IPRs if it again finds the claims patentable.

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