Invalidity dossier
US 9451084
Robust voice browser system and voice activated device controller
Current assignee: Google LLC, Samsung Electronics Co., Ltd., LG Electronics, Inc.
Added 9/24/2026, 11:18:30 PM
Active provider: DeepSeek · deepseek-v4-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for additional context on US 9451084, particularly any 2026 CAFC docket activity, then provide the summary.
US Patent 9,451,084 B2 — Summary
Sourcing note / date caveat: I located this patent's full text on Google Patents and cross-checked it against PTAB and Federal Circuit records. One inconsistency to flag up front: the task states the current date is April 26, 2026, but several sources returned in this search describe events dated July 2026 (e.g., a CAFC decision of July 13, 2026). Those results are not about 9,451,084, and I treat the dating discrepancy as unresolved. I have not auto-corrected any identifiers.
1. Bibliographic data (from the patent front page)
| Field | Value |
|---|---|
| Patent number | US 9,451,084 B2 |
| Title | Robust voice browser system and voice activated device controller |
| Application number | 13/462,819 (filed May 3, 2012) |
| Issue/publication date | September 20, 2016 |
| Earliest priority date | February 4, 2000 (via Provisional 60/180,344; also 60/233,068 filed Sept 15, 2000) |
| Inventors | Alexander Kurganov; Valery Zhukoff |
| Assignee | Parus Holdings, Inc. (original assignee listed as Parus Holdings; reassignment history shows a 2014 assignment from Webley Systems, Inc. to Parus Holdings, and a 2013 security agreement to WWIS, LLC) |
| Claims | 15 total; only claim 1 is independent |
| Legal status (per Google Patents) | Expired – Fee Related, adjusted expiration 2022-01-05 (assumption, not a legal conclusion) |
| Representative CPC | G10L15/30, G10L15/22, G06F3/16, G06F3/167, H04M3/4938, H04L67/02, G10L15/183 |
Prosecution chain (from the "Cross Reference" section): This patent is a continuation of 12/973,475 → 12/030,556 (now US 7,881,941) → 11/409,703 (now US 7,386,455) → 10/821,690 (now US 7,076,431) → 09/776,996 (now US 6,721,705), which claims priority to provisional applications 60/180,344 and 60/233,068.
2. Abstract (verbatim)
"The present invention relates to a system for acquiring information from sources on a network, such as the Internet. A voice browsing system maintains a database containing a list of information sources, such as web sites, connected to a network. Each of the information sources is assigned a rank number which is listed in the database along with the record for the information source. In response to a speech command received from a user, a network interface system accesses the information source with the highest rank number in order to retrieve information requested by the user."
3. Independent claim — plain-language overview
Only claim 1 is independent (claims 2–15 are all dependent on claim 1). Claim 1 covers a voice-browsing system in which a user speaks into a voice-enabled device, the system converts the request to data, retrieves information from ranked websites, and reads the answer back in audio form. Its elements, in plain language:
- Computing device(s) connected to one or more networks (Internet and/or LAN — see claims 2–3).
- Speaker-independent speech-recognition device that receives the user's spoken commands. The patent stresses this means no user-specific training and recognition based on phonemes/natural speech (embodied in claims 5–6).
- Speech-synthesis device to convert results back into audio.
- Memory holding an "instruction set" for identifying the information to be retrieved, which contains:
- multiple website addresses for a listing of sites holding the sought information;
- recognition grammars, each tied to an instruction set and to a speech command (the command being a user information request); the recognizer selects the matching grammar when it hears the command.
- Retrieval logic: the computing device looks up the instruction set matching the recognized grammar.
- Access logic: it accesses at least one listed website to obtain the requested information, and it periodically searches the network to identify and add new websites to the list.
- Fail-over / ordered access: it tries the first site, and if the information is not found, proceeds through the remaining sites in a defined order until the information is found or all listed sites have been accessed.
- Audio output: the speech synthesizer produces an audio message with the retrieved information and transmits it to the user through the voice-enabled device.
Notable dependent claims (they do not add independent scope but define the robustness aspects):
- Claim 4 — broad list of "voice-enabled devices" (telephone, IP phone, cellular phone, PDA, PC, DVD player, TV/video display, CD player, MP3 player, etc.).
- Claim 7 — a content descriptor tied to each website address that pre-defines where on the site the information resides.
- Claim 8 — periodic polling of each site (without user instruction) to determine availability, response time, and changes to information location; the access order is created from that polling.
- Claims 9–13 — similar monitoring applied to newly discovered sites; a pre-defined order of access; modification of that order based on availability, response time, and information-location changes; weighting among criteria; and accessing the highest-ranked site first.
- Claims 14–15 — a database storing information gathered from the sites, and storing the recognition grammars and instruction sets.
4. Post-grant challenge and court status
The patent was heavily litigated. Key matters (dates as found; verify independently):
- IPR2020-00687 — Apple Inc. v. Parus Holdings, Inc. ('084 patent). Final Written Decision Sept. 9, 2021: Board determined no challenged claims unpatentable (i.e., Apple failed). Apple's appeal (CAFC 22-1144) was voluntarily dismissed under Fed. R. App. P. 42(b) on March 7, 2023, with no merits ruling. (Source: PTAB FWD via ptacts.uspto.gov; Apple appeal docket.)
- IPR2020-00847 — Google/Samsung/LG v. Parus Holdings, Inc. ('084 patent). Filed April 18, 2020; Final Written Decision Oct. 19, 2021 holding claims 1, 2, 4–7, 10, and 14 of the '084 patent unpatentable. Parus appealed; the Federal Circuit affirmed on June 12, 2023 in Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023) — including the holding that "configured to periodically search … to identify new web sites and to add the new web sites" lacks written-description support, so the claims were not entitled to the earlier 2000 priority date, making Kurganov-262 prior art.
- District court: Initial suits filed July–August 2019 in W.D. Tex. (Waco) against Apple, Google, LG, Samsung, and Amazon on the '431 and '084 patents (e.g., 6:19-cv-00432/433/437/438/454), later consolidated; a related N.D. Cal. case (3:20-cv-05896) also appears.
- Post-grant monetization fallout: A malpractice action (Parus Holdings v. Mintz) alleges that counsel's failure to properly present antedating evidence (incorporation by reference under 37 C.F.R. § 42.6(a)(3)) led to the adverse decisions.
2026 CAFC docket activity relevant to this family: The only 2026 Federal Circuit decision I found in this family concerns a different patent — Google LLC v. Parus Holdings, Inc., No. 24-2381 (Fed. Cir. July 13, 2026, nonprecedential), which vacated and remanded a PTAB decision upholding claims 1–2 of US 6,721,705 (the '705 patent), on APA grounds (failure to read prior-art references in combination; lack of notice for a claim construction of "unexpected response"; failure to address an inconsistency argument). I did not find any 2026 CAFC docket activity specific to 9,451,084, and the PTAB/court records for the '084 patent (IPR2020-00687, IPR2020-00847, and the 2023 affirmance) all predate 2026.
5. Explicit uncertainties
- I could not access the USPTO PatentCenter/Public PAIR record directly, so the bibliographic data above is drawn from the Google Patents front page as fetched; small discrepancies (e.g., "original assignee" vs. the Webley→Parus assignment chain, and the WWIS security agreement) are present in the source and I have not resolved them.
- The current legal status ("Expired – Fee Related, expires 2022-01-05") is a source-provided assumption, not an authoritative legal determination; given the PTAB cancellation of numerous claims, status should be verified in PatentCenter.
- The 2026 CAFC docket search returned no '084-specific 2026 case. If you need confirmation that no 2026 '084 appeal exists, that requires a direct PACER/CAFC docket query, which I cannot perform here.
- The date conflict (task says April 26, 2026; results reference July 2026 events) is unexplained; I report the sources literally rather than harmonizing them.
Generated 9/28/2026, 11:31:24 PM
Cases on file (7)
Group view →Specific litigation cases in our database that name US patent 9451084. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- Google LLC et al. v. Parus Holdings, Inc.filed Apr 18, 2020IPR2020-00847Patent Trial and Appeal Board, U.S. Patent and Trademark Officeterminated Oct 19, 2021final written decision; claims unpatentable
Defendants: Parus Holdings, Inc.
- Apple Inc. v. Parus Holdings, Inc.filed Mar 18, 2020IPR2020-00687Patent Trial and Appeal Board, U.S. Patent and Trademark Officeterminated Sep 9, 2021final written decision; no claims unpatentable (per RPX; caveat)
Defendants: Parus Holdings, Inc.
- Parus Holdings, Inc. v. Amazon.com, Inc.filed Aug 6, 20196:19-cv-00454-ADAU.S. District Court for the Western District of Texas, Waco Divisionconsolidated into 6:19-cv-00432-ADA
Defendants: Amazon.com, Inc.
Other patents asserted: 7076431
- Parus Holdings, Inc. v. LG Electronics, Inc. et al.filed Jul 23, 20196:19-cv-00437-ADAU.S. District Court for the Western District of Texas, Waco Divisionconsolidated into 6:19-cv-00432-ADA; later refiled/relocated as 3:20-cv-05896
Defendants: LG Electronics, Inc., LG Electronics USA, Inc.
Other patents asserted: 7076431
- Parus Holdings, Inc. v. Samsung Electronics Co., Ltd. et al.filed Jul 23, 20196:19-cv-00438-ADAU.S. District Court for the Western District of Texas, Waco Divisionconsolidated into 6:19-cv-00432-ADA
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
Other patents asserted: 7076431
- Parus Holdings, Inc. v. Apple Inc.filed Jul 22, 20196:19-cv-00432-ADAU.S. District Court for the Western District of Texas, Waco Divisionconsolidated (lead case)
Defendants: Apple Inc.
Other patents asserted: 7076431
- Parus Holdings, Inc. v. Google LLCfiled Jul 22, 20196:19-cv-00433-ADAU.S. District Court for the Western District of Texas, Waco Divisionconsolidated into 6:19-cv-00432-ADA
Defendants: Google LLC
Other patents asserted: 7076431
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US Patent 9,451,084. Let me start with several searches.
Good results. Let me dig deeper into the specific cases, PTAB proceedings, and outcomes.
Let me clarify a few key details: the Apple IPR on the '084 patent, the transferred California case, and the outcomes of the district court actions.
Litigation Involving U.S. Patent No. 9,451,084 ("the '084 Patent")
Patent: US 9,451,084 B2 — "Robust voice browser system and voice activated device controller" (inventors Alexander Kurganov and Valery Zhukoff; current assignee Parus Holdings Inc.). Note: this is the '084 patent specifically — the litigation below also frequently involved its sibling U.S. Patent No. 7,076,431 ("the '431 patent"), which I flag where relevant but which is a different patent number.
Below is what I was able to confirm. I have flagged where records are ambiguous or where I could not verify.
A. District Court Infringement Litigation (Parus Holdings, plaintiff)
Parus Holdings filed a wave of infringement suits in July–August 2019 in the [U.S. District Court for the Western District of Texas, Waco Division](/courts/western-district-of-texas-waco), before Judge Alan D. Albright, asserting the '431 patent and the '084 patent (collectively, per the Mintz malpractice complaint, the "initial five" cases). They were consolidated on Dec. 20, 2019 into 6:19-cv-00432-ADA as the lead case.
| # | Case | Plaintiff | Defendant(s) | Jurisdiction | Case No. | Filed | Status/Outcome |
|---|---|---|---|---|---|---|---|
| 1 | Parus Holdings Inc. v. Apple Inc. | Parus Holdings | Apple Inc. | [W.D. Tex. (Waco), Judge Albright](/courts/w-d-tex-waco-judge-albright) | 6:19-cv-00432-ADA (lead case) | Jul. 22, 2019 | Terminated Feb. 2, 2023; docket flags "CLOSED, LEAD_CASE, PATENT, STAYED" |
| 2 | Parus Holdings Inc. v. Google LLC | Parus Holdings | Google LLC | W.D. Tex. (Waco) | 6:19-cv-00433-ADA | Jul. 22, 2019 | Consolidated; stayed pending IPR |
| 3 | Parus Holdings Inc. v. LG Electronics, Inc. et al. | Parus Holdings | LG Electronics, Inc.; LG Electronics USA, Inc. | W.D. Tex. → transferred (see 3:20-cv-05896) | 6:19-cv-00437-ADA | Jul. 23, 2019 | LG's motion to transfer to N.D. Cal. granted Aug. 6, 2020 |
| 4 | Parus Holdings Inc. v. Samsung Electronics Co., Ltd. et al. | Parus Holdings | [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.; Samsung Electronics America, Inc. | W.D. Tex. (Waco) | 6:19-cv-00438-ADA | Jul. 23, 2019 | Consolidated; stayed pending IPR |
| 5 | Parus Holdings Inc. v. [Amazon.com, Inc.](/litigations/by-plaintiff/Amazon.com%2C%20Inc.) | Parus Holdings | Amazon.com, Inc. | W.D. Tex. (Waco) | 6:19-cv-00454-ADA ⚠️ | Aug. 6, 2019 | Consolidated; stayed pending IPR |
| — | Transferred action | Parus Holdings | (LG entity) | N.D. Cal. | 3:20-cv-05896 | 2020 | Listed in Google Patents litigation data |
⚠️ Discrepancy to flag: The Google Patents litigation record and Unified Patents data list the Amazon case as 6:19-cv-00454-ADA. The Parus v. Mintz malpractice complaint text renders it as 6:19-cv-0484-ADA. I could not resolve which is correct from the sources retrieved; both should be verified on PACER. Per my strict rule, I am not auto-correcting either number.
Consolidation note: On Dec. 20, 2019, the W.D. Tex. court consolidated all five 2019 cases into the Apple case (6:19-cv-00432-ADA) as the lead case.
B. PTAB Inter Partes Reviews challenging the '084 Patent
| IPR No. | Petitioner(s) | Patent challenged | Filed | Final Written Decision | Outcome |
|---|---|---|---|---|---|
| IPR2020-00687 | Apple Inc. | '084 | Mar. 18, 2020 | Sept. 9, 2021 | Per RPX Insight, recorded as "No Claims Unpatentable" (i.e., Apple did not prevail at the Board). ⚠️ See caveat below. |
| IPR2020-00847 | Google LLC (with Samsung and LG) | '084 | Apr. 18, 2020 | Oct. 19, 2021 | Claims 1, 2, 4–7, 10, and 14 of the '084 patent held unpatentable as obvious (pre-AIA § 103(a)), based on Kovatch (WO 01/050453) and Kurganov-262. |
Related sibling-proceeding for context: IPR2020-00686 (Apple, '431) and IPR2020-00846 (Google/Samsung/LG, '431).
⚠️ Caveat on IPR2020-00687: RPX Insight's summary shows "No Claims Unpatentable," which would mean the Board upheld the claims Apple challenged. The Mintz malpractice complaint supports that Apple was unsuccessful — it states Apple "was unsuccessful with its inter partes review of the '431 patent, and the Board found no challenged claim of the '431 Patent unpatentable based on Apple's arguments." I could not independently confirm the exact claim-by-claim disposition of the Apple '084 IPR, so treat the '084 outcome as needing PACER/PTAB verification. (Because Apple then appealed an adverse IPR decision, the "no claims unpatentable" reading is consistent.)
C. Federal Circuit Appeals
| CAFC No. | Case | Patent(s) | Key dates | Outcome |
|---|---|---|---|---|
| 22-1269 & 22-1270 (consolidated) | Parus Holdings, Inc. v. Google LLC | '431 and '084 | Decided June 12, 2023 | AFFIRMED. Reported at 70 F.4th 1365. The court affirmed the PTAB's holdings that claims 1, 2, 4–7, 10, and 14 of the '084 patent are unpatentable. Panel: Lourie, Bryson, Reyna. (Appeals from IPR2020-00846 and IPR2020-00847.) |
| 22-1143 & 22-1144 | Apple Inc. v. Parus Holdings Inc. | '431 ('1143) and '084 ('1144) | Appeal filed Nov. 10, 2021; dismissed Mar. 7, 2023 | DISMISSED by agreement under Fed. R. App. P. 42(b), each side bearing its own costs. No merits ruling — the court neither affirmed nor reversed the underlying PTAB decision. Nonprecedential. |
The Rule 42(b) order (verbatim): "The parties having so agreed, it is ordered that: (1) The proceedings are DISMISSED under Fed. R. App. P. 42(b). (2) Each side shall bear their own costs."
D. Related Litigation (NOT asserting the '084 patent — flagged for completeness)
These involve Parus Holdings and related voice-browser patents but I found no assertion of the '084 patent in them:
- Parus Holdings, Inc. v. PNC Bank, N.A. & SunTrust Bank, 1:14-cv-01428 & -1429 (D. Del.) — IVR technology; older, different patents.
- Parus Holdings, Inc. v. Banner & Witcoff, Ltd. et al., 1:08-cv-01535 (N.D. Ill.) — legal malpractice/trade secrets; unrelated patent set.
- Parus Holdings Inc. v. Apple Inc., 3:22-cv-07514 (N.D. Cal.), filed Nov. 30, 2022; dismissed with prejudice Feb. 3, 2023 (each side bearing own fees/costs). Asserted US 8,185,402 and US 6,721,705 — not the '084.
- Parus Holdings, Inc. v. Mintz, Levin, Cohen, Ferris, Glovsky and Popeo, P.C., 1:25-cv-01722 (W.D. Tex., Austin Div.), filed Oct. 24, 2025 — legal malpractice suit against Parus's former patent counsel (Michael J. McNamara, Michael T. Renaud named), alleging negligent handling of the patent infringement cases, including those asserting the '431 and '084 patents against Apple, Google, LG, Samsung, and Amazon. (This is a malpractice action about the '084 litigation, not an infringement action on the '084.)
E. Overall Outcome / Current Status of the '084 Patent
- The challenged claims of the '084 patent (1, 2, 4–7, 10, 14) were held unpatentable by the PTAB in IPR2020-00847 (Oct. 19, 2021) and that holding was affirmed by the Federal Circuit in Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023).
- Apple's parallel challenge (IPR2020-00687) and its appeal (22-1144) ended without a merits invalidity ruling, by agreed dismissal (Mar. 7, 2023).
- The underlying W.D. Tex. district court cases were stayed pending the IPRs and the lead case was terminated Feb. 2, 2023.
- The Google Patents/legal-status record for US 9,451,084 B2 shows the patent as "Expired – Fee Related, expires 2022-01-05."
F. Important Limitations / Caveats
- I hit my search-tool limit before I could pull the actual PACER dockets to confirm the precise final dispositions (e.g., whether the W.D. Tex. and N.D. Cal. actions were dismissed vs. judgment entered on the merits). The status entries above derive from Google Patents' litigation feed, Unified Patents, RPX Insight, Docket Alarm, PatSnap, and the Federal Circuit opinion itself.
- Google Patents litigation feed for US 9,451,084 lists exactly these litigation items: W.D. Tex. cases 6:19-cv-00432, -433, -437, -438, -454; N.D. Cal. case 3:20-cv-05896; CAFC cases 22-1143, 22-1144, 22-1269, 22-1270; and PTAB proceedings IPR2020-00687 and IPR2020-00847 — consistent with the table above.
- Verify on primary sources. For authoritative confirmation, check PACER for the W.D. Tex. and N.D. Cal. dockets, the PTAB's P-TACTS portal for IPR2020-00687/-00847, and the Federal Circuit docket for 22-1143/-1144/-1269/-1270. I did not auto-correct any patent numbers or case numbers; where sources conflicted (the Amazon case number), I preserved both.
If you'd like, I can attempt a fresh round of targeted searches (e.g., on PACER/PTAB) for the exact final dispositions once more search steps are available.
Generated 9/28/2026, 11:31:47 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Google LLC, Samsung Electronics Co., Ltd., LG Electronics, Inc.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll research the PTAB proceedings. The structured block says ODP shows no AIA trials, but the patent's own litigation metadata references two IPR dockets (IPR2020-00687 and IPR2020-00847). Let me verify via web search.
Strong results. Let me nail down the companion proceedings, Apple's parallel IPRs, and the appeal mapping.
PTAB Activity on US 9,451,084 ("'084 patent") — Robust Voice Browser System and Voice Activated Device Controller
Filing note / discrepancy flagged: The ODP-derived "PTAB proceedings on file" block reports no AIA trial proceedings indexed for this patent. That is contradicted by (a) the patent's own Google Patents litigation metadata, which lists two PTAB cases against it —
IPR2020-00687andIPR2020-00847, both shown as "Final Written Decision" — and (b) public PTAB/CAFC records. I treat the two IPRs below as real and active-in-fact, and I flag the ODP omission as an ingest gap rather than an absence of proceedings. I did not invent any proceeding numbers; every number below is from the patent record or a cited public source.
Proceedings overview
There are two AIA trials directly on the '084 patent, both Inter Partes Reviews, both instituted, both reaching Final Written Decision: one invalidated the challenged claims, one sustained them. The invalidating proceeding (Google's IPR2020-00847) canceled claims 1, 2, 4–7, 10, and 14 as obvious, and the Federal Circuit affirmed on 2023-06-12 (Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365). Apple's parallel IPR2020-00687 ended with no challenged claim held unpatentable. Bottom line for a defendant: the broad independent claim — claim 1 — is canceled in rem. Any demand letter or infringement theory built on claims 1, 2, 4, 5, 6, 7, 10, or 14 of the '084 patent is asserting dead claims. Only the untested claims — 3, 8, 9, 11, 12, 13, and 15 — remain live, and several of those are narrow dependents.
Two additional IPRs were filed against the sibling '431 patent (7,076,431), not the '084 (see "Related proceedings" below) — but they matter because the same product-accused-activity facts and the same petitioner groups are involved.
IPR2020-00847 — Google LLC, Samsung Electronics Co., Ltd., [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.), [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.), and LG Electronics U.S.A., Inc. v. Parus Holdings, Inc.
(On the '084 patent — most impactful; claims invalidated)
- Type: Inter Partes Review
- Filed: 2020-04-18
- Status: Final Written Decision (FWD 2021-10-19). Petitioners prevailed; challenged claims canceled. Affirmed on appeal.
- Judge panel: David C. McKone, Sheldon M. McGee, and Stacey G. White (Docket Alarm). The FWD was authored by APJ Sheldon M. McGee (Patexia).
- Petition grounds: § 103 pre-AIA obviousness over WO 01/050453 to Kovatch and U.S. Pub. App. 2001/0047262 ("Kurganov-262", the applicants' own priority publication) in combination with other references. Petitioners also used a written-description (§ 112) attack to strip the claims of their 2000-02-04 priority date, which is what converted Kurganov-262 into prior art. Claims challenged: 1, 2, 4, 5, 6, 7, 10, and 14 (Patexia; consistent with the FWD claim list).
- Institution decision: Instituted 2020-10-21 (Patexia "Institution Decision Date 2020-10-21").
- Final Written Decision (2021-10-19, Paper 31): The Board held claims 1, 2, 4–7, 10, and 14 unpatentable as obvious — i.e., every challenged claim. As the Federal Circuit summarized it: the Board found the limitation requiring a computing device "configured to periodically search via one or more networks to identify new web sites and to add the new web sites to the plurality of web sites" lacked written-description support in the priority application, so the claims were not entitled to the February 4, 2000 date and Kurganov-262 qualified as prior art. The Board also rejected Parus's antedating evidence against Kovatch on the ground that Parus improperly incorporated arguments by reference into its Response and Sur-reply, contrary to 37 C.F.R. § 42.6(a)(3).
- Settlement / termination: No settlement on the '084 IPR — the case was decided on the merits and went up on appeal.
- Appeal: Yes — Fed. Cir. Nos. 2022-1269 and 2022-1270 (consolidated with the '431 appeal, 2022-1269/-1270). Decided 2023-06-12, Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (precedential; Lourie, Bryson, Reyna). AFFIRMED. The court held (1) the Board's refusal to consider Parus's by-reference antedating evidence did not violate the APA or the IPR rules, and (2) the Board acted within its § 311(b) authority in deciding written description as an antecedent to the § 103 obviousness ground. Mandate issued 2023-11-01 (Docket Alarm, Paper 36).
- Defensive value: Claims 1, 2, 4–7, 10, and 14 of the '084 patent are canceled and cannot be asserted against anyone (in rem effect). If a plaintiff's letter accuses your product of infringing any of those claims, the theory rests on canceled claims. Note the invalidation turned partly on a priority-date loss, so a defendant attacking the surviving claims should still expect Parus to fight the effective filing date.
IPR2020-00687 — Apple Inc. v. Parus Holdings, Inc.
(On the '084 patent — instituted, but no claims invalidated)
- Type: Inter Partes Review
- Filed: 2020-03-18
- Status: Final Written Decision (FWD 2021-09-09, Paper 37). No claims unpatentable — Patent Owner prevailed (RPX Insight: "No Claims Unpatentable").
- Judge panel: David C. McKone, Stacey G. White, and Sheldon M. McGee (oral hearing transcript, 2021-06-22, lists these three; RPX also lists James C. Housel in the panel roll-up — I could not independently confirm Housel sat on '687 specifically).
- Petition grounds: § 103 obviousness. Grounds relied principally on Ladd (and combinations including Kurosawa, Goedken, and others such as Madnick, Houser, Rutledge). Parus's win turned on the claim term "speaker-independent speech recognition device": Parus argued (and the Board accepted) that the '084 specification disclaimed using "predefined voice patterns," and that Ladd's speaker-independent ASR did not teach the claimed device under that construction. (The W.D. Tex. district court had construed the term as "speech recognition device that recognizes spoken words without adapting to individual speakers or using predefined voice patterns.")
- Institution decision: Instituted 2020-09-23 (RPX). (Companion IPR2020-00686 on the '431 patent was instituted the same round.)
- Final Written Decision (2021-09-09): No challenged claim held unpatentable. Apple did not carry its burden that Ladd/combinations taught the speaker-independent speech-recognition limitation present in every challenged claim. I was not able to confirm from the sources available the exact claim set Apple challenged in '687; I therefore do not state which claims it targeted. What is confirmed is the disposition: zero claims canceled.
- Settlement / termination: N/A on the merits.
- Appeal: Yes — Fed. Cir. Nos. 2022-1143 and 2022-1144 (covering IPR2020-00686 and IPR2020-00687). The appeals were DISMISSED by joint stipulation under Fed. R. App. P. 42(b) on 2023-03-07, each side bearing its own costs. No merits ruling issued — the Federal Circuit neither affirmed nor reversed anything in Apple's appeals.
- Defensive value: Apple's loss is a cautionary data point, not a shield: it shows the "speaker-independent / no predefined voice patterns" limitation is a genuine patentability hook that defeated a well-resourced petitioner. Any new § 103 theory against the surviving '084 claims must overcome that construction. But because Apple's appeal was dismissed without a merits opinion, '687 creates no binding appellate law on the '084's claim construction.
Related proceedings (companion '431 patent — not the '084, but part of the same campaign)
- IPR2020-00846 — Google/Samsung/LG v. Parus, on U.S. 7,076,431. Filed 2020-04-18; FWD 2021-10-19 ("Determining All Challenged Claims Unpatentable"); claims 1, 2, 4–7, 9, 10, 13, 14 held unpatentable; affirmed by the Fed Cir on 2023-06-12 (same 70 F.4th 1365 opinion). Docket: https://www.docketalarm.com/cases/PTAB/IPR2020-00846/Google_LLC_v._Parus_Holdings_Inc/
- IPR2020-00686 — Apple v. Parus, on U.S. 7,076,431. Filed 2020-03-18; instituted 2020-09-23. Per Parus's own later malpractice pleading, "Apple was unsuccessful … and the Board found no challenged claim of the '431 Patent to be unpatentable based on Apple's arguments." (Parus Holdings v. Mintz, N.D. Cal.) — i.e., Apple lost both its IPRs.
Strategic summary
Claim status on the '084 patent. As of the 2023-11-01 mandate, claims 1, 2, 4, 5, 6, 7, 10, and 14 are CANCELED (held unpatentable in IPR2020-00847, affirmed). Claims 3, 8, 9, 11, 12, 13, and 15 are UNTESTED / SURVIVING — no IPR challenged them on the '084. Every independent claim that was challenged is gone; the survivors are dependent claims whose scope depends on now-canceled parents, which substantially narrows (and arguably moots) anything a plaintiff can still assert. The companion '431 patent lost claims 1, 2, 4–7, 9, 10, 13, 14 as well. This is a patent family that has been gutted at the PTAB and upheld on appeal — the opposite of "hardened."
Estoppel landscape (§ 315(e)(2)). Google, Samsung, and LG (and their privies) are estopped from raising, in any later civil action or ITC proceeding, any ground they raised or reasonably could have raised in IPR2020-00847 — including the Kovatch- and Kurganov-262-based § 103 grounds and the priority/written-description theory. Apple bears the same estoppel from IPR2020-00687. Estoppel is party-specific, however: a new defendant is not estopped and may freely use Kovatch, Kurganov-262, Ladd, Kurosawa, Goedken, and the priority-date attack. That said, for the canceled claims it barely matters — the claims are dead in rem. The estoppel question only bites for the surviving claims (3, 8, 9, 11, 12, 13, 15), and its practical value is limited because the earlier petitioners never lost on those.
Pattern signals. Two independent petitioner groups hit this family — Apple (686/687) and Google+Samsung+LG (846/847) — across two patents, with fully instituted trials in all four. Parus appealed the adverse Google decisions aggressively (leading to the precedential 70 F.4th 1365) and Apple appealed its losses but stipulated to dismissal before any merits ruling. No defensive aggregator (e.g., Unified Patents) appears as a petitioner in the '084 chain — the patent's data page references Unified Patents only as a litigation-data provider, not a party. The underlying campaign was Parus asserting the '431/'084 pair against Apple, Google, LG, Samsung, and Amazon in the W.D. Tex. (6:19-cv-00432 through -00438), plus a later N.D. Cal. case (3:20-cv-05896) and a Parus malpractice suit against its own former counsel (Mintz).
Recommended next steps
- If a demand letter or complaint cites the '084 patent, check the claim numbers first. Claims 1, 2, 4–7, 10, 14 are canceled by IPR2020-00847 (FWD 2021-10-19, Paper 31; affirmed, Parus Holdings v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023); mandate 2023-11-01). Quote the disposition: "we likewise affirm the Board's holding that … claims 1, 2, 4–7, 10, and 14 of the '084 patent are unpatentable." FWD docket: https://www.docketalarm.com/cases/PTAB/IPR2020-00847/Google_LLC_v._Parus_Holdings_Inc/ ; opinion: https://www.courtlistener.com/opinion/9405771/parus-holdings-inc-v-google-llc/. Asserting a canceled claim is frivolous and sanction-exposed.
- There are no currently active AIA trials on the '084 patent. Both IPRs (and both '431 companions) are terminated, and both Apple appeals were dismissed (2023-03-07) with the Google appeals fully resolved (2023-06-12). No institution deadline, hearing, or statutory FWD date is pending. Caveat: I could not rule out a later-filed petition against the surviving claims or a different family member — confirm against the live PTAB E2E docket before relying on this.
- For the surviving claims (3, 8, 9, 11, 12, 13, 15): treat the "speaker-independent / no predefined voice patterns" construction as the battleground. Apple's IPR2020-00687 shopped that limitation and lost, so a § 103 attack must do better than Ladd on that element (or attack the priority date the way Google did). Because Apple's appeal was dismissed without opinion, that construction has no appellate blessing — it remains reopenable.
- Verify before filing. Two data points I could not confirm with high confidence and would not put in a brief without re-checking the source documents: (a) the exact claims Apple challenged in IPR2020-00687, and (b) whether any co-panelist beyond McKone/White/McGee sat on '687. Pull the FWDs from PTAB E2E (Paper 31 in IPR2020-00847; Paper 37 in IPR2020-00687) to lock the claim-level language.
Generated 9/28/2026, 11:32:12 PM
Ownership chain (3)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2013-03-18 · Security Agreement
securitization
2014-01-24 · Assignment
2014-01-24 · Assignment
Webley Systems, Inc.Parus Holdings, Inc.
internal reorg
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for US 9,451,084 using the available sources.
Let me dig into the assignment records directly.
Let me try to access the USPTO Assignment API and related records directly.
I hit the step limit on tool calls before I could pull the Assignment Center's reel/frame and correspondent fields directly. Below is everything I could ground from the sources actually retrieved, with the gaps flagged rather than filled.
Sourcing caveat up front (important): The Google Patents front page (authoritative text supplied in this task) reports three reassignment events for this family, but reports them without reel/frame numbers and without correspondent fields. I could not retrieve the USPTO Assignment Center abstract-of-title for 9,451,084 itself (the Assignment Center / assignment.uspto.gov record did not surface in any indexed result). Every reel/frame and correspondent line below is therefore marked NOT RETRIEVED, and I have not invented values for them.
Inventors
| Inventor | Employer at time of filing | Basis |
|---|---|---|
| Alexander Kurganov | Webley Systems, Inc. (later Parus Holdings, Inc.) | The recorded chain shows Kurganov assigning to Webley Systems, Inc. (see timeline), and the '705 parent issued to Webley Systems, Inc. |
| Valery Zhukoff | Webley Systems, Inc. | Same recorded assignment to Webley Systems, Inc. |
Unusual patterns:
- Late-recorded inventor assignment. The inventors' assignment to Webley Systems, Inc. was recorded 2014-01-24 — roughly 14 years after the 2000-02-04 priority date, and after Parus Holdings had already filed the 13/462,819 continuation (2012-05-03) in its own name. A housekeeping chain-of-title cleanup this late, batched with the Webley→Parus entity assignment on the same day, is a pattern seen around corporate transactions / monetization prep — not a normal same-quarter employment assignment.
- No evidence in the retrieved record that either inventor departed Webley/Parus within 12 months of filing. Not determinable from the sources I could reach.
Original assignee
Parus Holdings, Inc. — named as Original Assignee and Current Assignee on the issued patent front page (Google Patents). Note the internal inconsistency the prior summary already flagged: the '705 parent issued to Webley Systems, Inc., and reassignment history shows a 2014 assignment from Webley Systems, Inc. to Parus Holdings, Inc.
- Primary line of business: Voice-technology / voice-portal services via predecessor Webley Systems, Inc. (the specification credits "a database 100 designed by Webley Systems Incorporated"). The family's earliest claims read on a telephone-to-Web "voice browser."
- Did they ship a product embodying the claims? Historically yes — the Webley/Parus voice-portal service is the commercial embodiment described in the specification. Whether Parus Holdings currently ships a product reading on issued claim 1 is not established by any source retrieved; the entity's only visible recent activity is assertion.
- Current status: Appears to still exist as a corporate entity; its observable recent activity is patent litigation/licensing, not product sales. (Financial-filing research via SEC — cross-referenced per task — returned nothing usable in my searches; not verified.)
Assignment timeline
Verification links: USPTO Assignment Center · Google Patents US9451084B2
No reel/frame or correspondent was retrievable. Dates are as reported by the Google Patents legal-events panel (the panel does not distinguish "executed" from "recorded").
2013-03-18 (date as shown) / recorded NOT RETRIEVED — Reel NOT RETRIEVED
- Conveyance: Security Agreement
- Assignor: Parus Holdings, Inc.
- Assignee: WWIS, LLC
- Correspondent: NOT RETRIEVED
- Context: Securitization — Parus granted a security interest in the portfolio to WWIS, LLC as collateral (lien, not a title transfer).
2014-01-24 (date as shown) / recorded NOT RETRIEVED — Reel NOT RETRIEVED
- Conveyance: Assignment of Assignors' Interest (see document for details)
- Assignor: Kurganov, Alexander; Zhukoff, Valery (inventors)
- Assignee: Webley Systems, Inc.
- Correspondent: NOT RETRIEVED
- Context: Late perfection of the original inventor→company employment assignment; housekeeping/chain-of-title cleanup.
2014-01-24 (date as shown) / recorded NOT RETRIEVED — Reel NOT RETRIEVED
- Conveyance: Assignment of Assignors' Interest (see document for details)
- Assignor: Webley Systems, Inc.
- Assignee: Parus Holdings, Inc.
- Correspondent: NOT RETRIEVED
- Context: Internal reorganization / corporate succession — Webley Systems' rights consolidated into Parus Holdings. Recorded same day as the inventor assignment above (batched recording).
No further recorded assignment appears after 2014-01-24. The '084 patent issued 2016-09-20 still in Parus Holdings' name, and no post-issuance transfer (to a shell, asserter, or aggregator) is shown. So the chain does not terminate in a licensing-only LLC.
Separate observation (not an assignment-correspondent finding): In the 2019–2023 litigation, Parus Holdings was represented by McKool Smith PC (John Bruce Campbell) per the PatSnap litigation record. This is litigation counsel, not the Assignment Center "correspondent of record," and I am not conflating the two.
Timeline diagram
timeline
title Ownership of US 9451084
2000 : Priority date filed
2012 : Continuation filed by Parus Holdings
2013 : Security agreement to WWIS LLC
2014 : Inventors assign to Webley Systems
: Webley Systems assigns to Parus Holdings
2016 : Patent issued to Parus Holdings
2019 : Parus sues Apple Google LG Samsung
2021 : PTAB cancels claims in IPR2020-00847
2023 : Federal Circuit affirms cancellation
NPE / troll-pattern signals
Shell-entity transfer — NOT PRESENT. The chain moves from Webley Systems to Parus Holdings (2014-01-24), and Parus Holdings is the applicant of record, not an acquirer. Although "Holdings" appears in the name, there is no transfer to an "IP/Licensing/Ventures" shell, no single-purpose LLC, and no registered-agent-service address in the retrieved record. A name is not a finding.
Known asserter in the chain — UNCLEAR / WEAKLY PRESENT. Parus Holdings, Inc. does not appear among the enumerated public NPE lists (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation, Spangenberg). It does appear as a frequent-assertion plaintiff in the litigation/PTAB datasets — it was the petition target in IPR2020-00687 (Apple) and IPR2020-00847 (Google/Samsung/LG) and filed ≥5 district-court suits in 2019. Target-of-Unified-Patents-IPRs is a reasonable proxy but not the same as matching a published asserter directory. Call it weak/indirect.
Repeat correspondent across the chain — NOT DETERMINABLE. Correspondent fields were not retrievable for any of the three events, so I cannot state whether one attorney/firm filed every recording. This is the single most important gap — if you can pull the three abstract-of-title entries at the Assignment Center, the correspondent line is the tell to look at.
Cascading transfers — NOT PRESENT. Only two assignment-type events, both recorded the same day (2014-01-24), representing one corporate consolidation, plus one financing lien. No chain of LLCs in <24 months.
Pre-litigation transfer — NOT PRESENT. The last title-moving assignment is 2014-01-24; the first suits naming this family are July–August 2019 (~5 years later). No within-6-months transfer.
Bankruptcy fire-sale — NOT PRESENT / UNVERIFIED. No Chapter 7/11 proceeding involving Webley Systems or Parus Holdings surfaced. Absence of evidence, not a clean negative.
Privateering — NOT PRESENT. No operating company is shown transferring this patent to an NPE to assert against competitors; Parus Holdings asserts on its own record title.
Defensive aggregator — NOT PRESENT. The chain does not terminate at RPX, AST, LOT, Unified, or OIN. (Unified Patents is adverse — it filed IPRs against the family — which is the opposite of a defensive-aggregation endpoint.)
Inverse note: The WWIS, LLC security agreement (2013-03-18) is a monetization-adjacent fact — the portfolio was pledged as loan collateral — but operating companies collateralize IP routinely, so on its own it is not an NPE finding.
Verdict
NPE — moderate confidence.
Justification. The title chain is short and clean — inventors → Webley Systems (recorded 2014-01-24) → Parus Holdings (recorded 2014-01-24) — ending in Parus Holdings, Inc., which is the record applicant and current assignee and shows no evidence of a currently shipped product embodying claim 1; its only visible recent activity is an assertion campaign filed ~19 years after the 2000 priority date (five 2019 W.D. Tex. suits against Apple, Google, LG, Samsung and Amazon, plus the Google/LG/Samsung and Apple IPRs), and the portfolio was pledged as financing collateral to WWIS, LLC on 2013-03-18 — a monetization posture. This is closer to a former operating company that became an assertion entity than to a pure shell, and the key corroborating evidence — the correspondent of record on the three recorded events and their reel/frame numbers — was not retrievable, so I stop at moderate rather than high confidence. I found no transfer to a licensing-only shell, no public-NPE-list match, and no pre-litigation transfer.
Verify at: https://assignmentcenter.uspto.gov/ (search patent 9,451,084 / application 13/462,819) — read the correspondence line on each of the three entries; recurrence of one attorney/firm across them is the signal I could not test.
Generated 9/28/2026, 11:32:06 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research US 9,451,084's cited prior art references. Let me start with targeted searches.
Let me dig into the specific prior-art citations and the IPR grounds, which identify the references actually relied upon.
Let me identify the specific prior-art references cited in the two IPRs and on the patent's face.
Prior Art Analysis — US 9,451,084 B2
Sourcing note: I searched for the '084 patent's citation records via Google Patents, the PTAB (ptacts.uspto.gov / Docket Alarm), and the Federal Circuit's published opinion in Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. June 12, 2023). I was able to retrieve the references actually litigated against the '084 claims with good confidence. I was not able to retrieve the complete front-page "References Cited" list of the '084 patent itself in one pass, and I could not confirm full patent numbers/dates for several of the Apple IPR references. I flag every such gap below rather than filling it in from memory.
0. One framing correction before the citations
The task asks "which claim(s) it potentially anticipates under 35 U.S.C. § 102." On the actual record, no reference was applied against the '084 patent as a § 102 anticipation reference. Every reference that reached a merits decision was applied in a pre-AIA § 103(a) obviousness combination. So below I map each reference to the claims it was actually asserted against (all under § 103), and I separately discuss whether any could potentially support § 102. That distinction matters and is not a stylistic quibble — the Board's invalidity holdings (and the CAFC affirmance) rest on § 103.
Also relevant to any § 102 analysis: the Federal Circuit affirmed that the claims containing the limitation "configured to periodically search via one or more networks to identify new web sites and to add the new web sites to the plurality of web sites" lack written-description support in the shared specification, so those claims are not entitled to the Feb. 4, 2000 priority date. That priority loss is what made Kurganov-262 available as prior art.
A. The references that actually invalidated the '084 claims — IPR2020-00847
Proceeding: IPR2020-00847, Google LLC, Samsung Electronics Co., Ltd., [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.), [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.), and LG Electronics USA, Inc. v. Parus Holdings, Inc. (petition filed Apr. 18, 2020; Final Written Decision Oct. 19, 2021). Result: claims 1, 2, 4–7, 10, and 14 of the '084 patent unpatentable. Affirmed: Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023).
A.1 — WO 01/050453 ("Kovatch")
| Field | Value |
|---|---|
| Citation | WO 01/050453 (PCT publication), referred to in the record as "Kovatch" |
| Filing date | July 12, 2001 |
| Earliest possible priority | January 4, 2000 (per Fed. Cir. opinion, J.A. 1827) |
| Description | Voice/web-browsing prior art asserted as part of the § 103 combination; the Board found it qualified as prior art after rejecting Parus's antedating evidence on 37 C.F.R. § 42.6(a)(3) grounds |
| Claims asserted | The combination including Kovatch was applied to the challenged '084 claims (claims 1, 2, 4–7, 10, 14) |
| § 102 potential | Not applied as § 102; used under § 103(a) |
Grounding: Fed. Cir., 70 F.4th at 1367–68 ("WO 01/050453 to Kovatch … under pre-AIA 35 U.S.C. § 103(a)"; "Kovatch was filed on July 12, 2001 and had an earliest possible priority date of January 4, 2000").
Caveat: The Neal reference appears in the parallel '431 proceeding (IPR2020-00846) as part of a "Kovatch and Neal combination." I could not confirm Neal's full citation, date, or title. I am deliberately not guessing.
A.2 — US 2001/0047262 A1 ("Kurganov-262")
| Field | Value |
|---|---|
| Citation | U.S. Patent Application Publication US 2001/0047262 A1, referred to in the record as "Kurganov-262" |
| Nature | Publication of a patent application in the same family as the challenged patents — "the publication of the application from which the challenged patents claim priority" and it "share[s] a specification" with the challenged patents (Fed. Cir. at 1367) |
| Publication date | Referenced in the record; I could not independently re-confirm the exact publication date in this pass (do not treat any date I would supply as authoritative) |
| Description | Because the '084 claims lost written-description support for the "periodically search … to identify new web sites and to add the new web sites" limitation, they were not entitled to the Feb. 4, 2000 priority date, so Kurganov-262 qualified as prior art and was applied in a § 103 combination |
| Claims asserted | Claim 9 of the '431 patent and claims 1, 2, 4–7, 10, and 14 of the '084 patent (per the Fed. Cir. opinion) |
| § 102 potential | This is the reference with the strongest § 102 profile, because it shares the specification and is therefore not clearly "by another." The Board/CAFC treated it as § 103 art. A § 102(e)/(a) characterization would require a careful "by another / inventors" analysis I cannot complete on this record. |
Grounding: 70 F.4th at 1367–69; Parus Holdings, Nos. 2022-1269/1270 (Fed. Cir. June 12, 2023) ("we affirm the Board's holding that Kurganov-262 qualifies as prior art … under 35 U.S.C. § 103(a)").
B. The references Apple relied on that failed — IPR2020-00687
Proceeding: IPR2020-00687, Apple Inc. v. Parus Holdings, Inc. (filed Mar. 18, 2020; FWD Sept. 9, 2021). Result: no challenged claims unpatentable. Apple's appeal (CAFC 22-1144) was voluntarily dismissed.
From the Board's institution/grounds table (as reproduced in the PTAB record):
| Claims challenged | Statutory basis | References |
|---|---|---|
| 1–6, 10, 14 | § 103(a) | Ladd, Kurosawa, Goedken |
| 7 | § 103(a) | Ladd, Kurosawa, Goedken, Madnick |
| 5, 6 | § 103(a) | Ladd, Kurosawa, Goedken, Houser |
What the record tells us about these references (grounded):
- Ladd — Teaches an automatic speech recognition unit providing "speaker independent automatic speech recognition" (Ladd, col. 9:28–30, as quoted in Apple's filings). This maps directly to the claim-1 "speaker-independent speech-recognition device" limitation (and dependent claims 5–6). Parus argued Ladd should be excluded under its claim construction of "speaker-independent" (no "predefined voice patterns"); the Board ultimately didn't find the claims unpatentable.
- Goedken — Relied on by Apple to supply the sequential/fail-over access limitation. Parus argued Goedken discloses searching internal database files, not websites — and the petition conceded Goedken was "searching files rather than websites."
- Kurosawa — Asserted in combination; full citation not retrieved.
- Madnick — Asserted only against claim 7 (the content-descriptor claim); full citation not retrieved.
- Houser — Asserted only against claims 5 and 6; full citation not retrieved.
Explicit uncertainty: I could not retrieve the full patent numbers, titles, or filing/publication dates for Ladd, Kurosawa, Goedken, Madnick, Houser, or Neal. These are the most important gaps in this analysis and should be filled from the face of the IPR2020-00687 petition and the Board's institution decision (available at the ptacts.uspto.gov petition link I located for petition 1534002). I am not supplying numbers/dates I have not verified.
C. References cited in the patent/family citation record
The '084 patent is a continuation in a long chain (09/776,996 → 10/821,690 → 11/409,703 → 12/030,556 → 12/973,475 → 13/462,819), so its cited-art list largely mirrors its parents. The following are drawn from the front pages of the parent patents (e.g., US 7,076,431; US 7,881,941) and from a third-party "Patent Art" aggregation for the '084 (Unified Patents, list count 347). Treat group C as the patent-office/aggregator citation universe, not as references relied on for validity.
Representative early U.S. patent documents (from the parent front pages):
- US 3,728,486 (Kraus) — Apr. 1973
- US 4,058,838 (Crager et al.) — Nov. 1977
- US 4,100,377 (Flanagan) — Jul. 1978
- US 4,313,035 (Jordan et al.) — Jan. 1982
- US 4,327,251 (Fomenko et al.) — Apr. 1982
- US 4,340,783 (Sugiyama) — Jul. 1982
- US 4,371,752 (Matthews) — Feb. 1983
- US 4,481,574 (per front page) — Nov. 1984
- US 4,489,438 (Hughes) — Dec. 1984
- Foreign: CA 1329852 — May 1994
- Non-patent: Matthew Talin Marx, "Toward Effective Conversational Messaging" (thesis), MIT thesis repository
Representative references in the aggregated "Patent Art" list for the '084 family (titles/dates as listed by the source; priority dates are the references' own):
- US 5,249,219 A — "Integration of Voice Store and Forward Facility" (priority 1987-04-16)
- US 5,036,533 A — "System for Providing Automatic Voice Messaging in a Digital Network Environment" (1989-04-23)
- US 5,054,054 A — "Voice Applications Generator" (1989-02-06)
- US 5,146,452 A — "Method and Apparatus for Rapidly Restoring a Communication Network" (1990-10-25)
- US 5,291,302 A — "Facsimile Telecommunications System and Method" (1988-09-21)
- US 4,755,932 A — "Interpreter Program for Providing Commands to a Computer Application Program" (1985-10-14)
- US 4,850,012 A — "Automated Access Facilities for Use with Key Telephone Systems" (1987-12-15)
- US 4,652,700 A — "Electronic Audio Communications System with Versatile User Accessibility" (1979-11-25)
- US 5,008,926 A — "Message Management System" (1986-07-16)
- US 5,657,376 A — "Architecture for Voice Messaging Systems" (1995-10-12)
- US 5,712,903 A — "Split Intelligent Peripheral for Broadband and Narrowband Services" (1995-08-20)
- US 5,832,063 A — (speaker-independent recognition of commands in parallel with speaker-dependent recognition of names/words/phrases; 1996-02-28)
- US 6,201,863 B1 — "Personal Desktop Router" (1997-02-09)
- US 6,021,181 A — "Electronic Voice Mail Message Handling System" (1997-02-23)
- US 6,445,694 B1 — "Internet Controlled Telephone System" (1997-03-06)
- US 6,618,726 B1 — "Voice Activated Web Browser" (1996-11-17)
- US 6,823,370 B1 — "System and Method for Retrieving Select Web Content" (1999-10-17)
- US 6,505,163 B1 — "Network and Method for Providing an Automatic Recall Telecommunications Service with Automatic Speech Recognition Capability" (2000-08-08)
- US 6,813,939 B1 — "Method and Apparatus for an Event-Based, Selectable Use of Color in a User Interface Display" (2000-05-25)
- US 6,014,437 A — "Multi Service Platform Architecture for Telephone Networks" (1997-02-02)
- US 5,479,487 A — "Calling Center Employing Unified Control System" (1993-02-10)
- US 5,838,682 A — "Method and Apparatus for Establishing Communications with a Remote Node on a Switched Network Based on Hypertext Dialing Information Received from a Packet Network" (1995-11-27)
Caveat: This group C list is incomplete and mixes (i) examiner/applicant citations, (ii) citation-graph "similar art," and (iii) third-party aggregator entries. I could not confirm which of these appear specifically on the '084 front page versus its parents or the aggregator's "Patent Art" set. The auto-generated "Patent Art (347)" count suggests the aggregator's list is far broader than the patent's actual IDS.
D. Which references are "most relevant," and the § 102 point
Legally most relevant (actually cancelled claims): the IPR2020-00847 combination built on Kovatch (WO 01/050453) and Kurganov-262 (US 2001/0047262 A1), with Neal as a further reference in the parallel '431 matter. These are the only references that produced a final, affirmed invalidity holding against '084 claims 1, 2, 4–7, 10, 14.
Technically most on-point to specific limitations (even though they lost):
- Ladd → the "speaker-independent speech-recognition device" limitation (claim 1; dependent claims 5–6).
- Goedken → the sequential/fail-over "access … until the information … is found" limitation (claim 1).
- Madnick → the content-descriptor limitation (claim 7).
- Houser → claims 5–6 limitations.
- Kurosawa → combination reference (role not confirmed).
On § 102 specifically: If one insists on a § 102 map, the only realistic single-reference candidate is Kurganov-262 — but it shares a specification with the '084 patent, which raises the pre-AIA "by another" question and is why the parties/Board litigated it as § 103 art. I found no reference asserted or held to anticipate the '084 claims under § 102. Any statement that a particular reference "anticipates claim X under § 102" would be my extrapolation, not the record.
E. Explicit uncertainties (do not treat as resolved)
- Full citations for Ladd, Kurosawa, Goedken, Madnick, Houser, and Neal were not retrieved. They should be pulled from the IPR2020-00687 petition and institution decision (PTAB petition artifact 1534002) and the IPR2020-00847 records at
ptacts.uspto.gov/docketalarm.com. - The exact publication date of Kurganov-262 (US 2001/0047262 A1) was not re-verified in this pass.
- The '084 patent's own front-page "References Cited" list was not fully retrieved; Section C is a synthesis from parent front pages and an aggregator and is not a certified copy of the '084 IDS.
- Per the operating rules, I have not auto-corrected any identifier; note the record contains several likely OCR/text artifacts (e.g., "tan" for "to," "FIR"/"WR" for "IVR," "response lime" for "response time," "EP phones" for "IP phones") that I have left as they appear. I also note for continuity that the previously generated summary flagged a date discrepancy (task date vs. a July 2026 CAFC reference); the current task states the date consistently as April 26, 2026, and nothing above depends on that discrepancy.
Bottom line: The prior art that actually controls the '084 patent's fate is the IPR2020-00847 combination — principally WO 01/050453 (Kovatch) and US 2001/0047262 A1 (Kurganov-262) — applied under § 103, affirmed in Parus Holdings v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023), invalidating claims 1, 2, 4–7, 10, and 14. The IPR2020-00687 references (Ladd, Kurosawa, Goedken, plus Madnick and Houser) are the most technically specific to the speaker-independence and sequential-access limitations but did not prevail.
Generated 9/28/2026, 11:32:18 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll search for the prior art cited on this patent's page and in the IPR proceedings, since the provided page text includes "Prior art keywords" but not the actual reference list.
Let me get the specific reference combinations and the Apple IPR grounds.
Let me pin down the exact grounds and reference list for the Google/Samsung/LG IPR (the one that invalidated claims) and the face-cited prior art.
Obviousness Analysis — U.S. Patent 9,451,084 B2 under 35 U.S.C. § 103
Sourcing / scope note. The Google Patents page as fetched did not include a populated "Prior Art" reference list — it shows only the prior-art keywords ("information," "computing device," "web site," "web sites," "web") and the prior-art date (2000-02-04). The operative prior art for this patent is therefore the art that was actually adjudicated against it (and its siblings) plus the front-page art listed in third-party databases. Because the '084 patent's earliest priority date is Feb. 4, 2000, pre-AIA § 103(a) governs. Two things I flag up front:
- Date discrepancy (carried forward, still unresolved): the task sets the current date at April 26, 2026, but my searches returned events dated July 2026 (e.g., the Google v. Parus Federal Circuit decision of July 13–14, 2026). I report sources literally and do not harmonize the dates.
- Contradiction check against the prior summary: Nothing in the new searches contradicts the prior summary. It is confirmed and refined: the Fed. Cir. decision is Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. June 12, 2023) (Nos. 2022-1269, 2022-1270), and it holds claims 1, 2, 4–7, 10, and 14 of the '084 patent unpatentable as obvious (not the whole claim set). One refinement: the prior summary said "claims 1, 2, 4–7, 10, 14," which matches; the '084 IPR challenged exactly eight claims.
1. The controlling fact: the claims lost their 2000 priority date
Before reaching the art, the single most important § 103 predicate is the priority/§ 112 holding. The claim limitation requiring a computing device
"configured to periodically search via one or more networks to identify new web sites and to add the new web sites to the plurality of web sites"
was found to lack written-description support in the earlier application (Kurganov-262). Because the challenged claims are not supported, they are not entitled to the Feb. 4, 2000 priority date. That has two § 103 consequences:
- Kurganov-262 (U.S. Pub. 2001/0047262 — the publication of the '084's own parent application, same specification) becomes prior art under pre-AIA § 102(e)/§ 103.
- Kovatch (WO 01/050453, filed July 12, 2001, earliest possible priority Jan. 4, 2000) also qualifies as prior art, because Parus failed to carry its antedating burden of production (the Board refused to consider evidence Parus incorporated by reference in violation of 37 C.F.R. § 42.6(a)(3)).
Sources: Fed. Cir. slip op., https://storage.courtlistener.com/pdf/2023/06/12/parus_holdings_inc._v_google_llc_1.pdf ; https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2020-00846/Google_LLC_v._Parus_Holdings_Inc/docs/07-24-2023-Board/Other__other_court_decision-36-CAFC_Opinion.pdf
2. Level of ordinary skill and scope of the art
A POSITA here is a software/telecommunications engineer with ~2–3 years' experience (or equivalent) in telephony-based IVR/ASR systems and networked information retrieval (web clients, crawlers, index/ranking). The field is highly combinatorial: the art is replete with references combining (i) telephony/IVR front ends, (ii) ASR/TTS, and (iii) HTTP/web-content retrieval. For prior art in the same field of endeavor, all elements of claim 1 were known; the invention is a combination of known elements yielding a predictable result — the classic KSR fact pattern.
3. Combination A — the combination that succeeded (Kovatch + Neal [+ Chakrabarti] [+ DeSimone])
This is the ground the PTAB adopted in IPR2020-00847 and the Federal Circuit affirmed. Grounds (per the parties' stipulation and the FWD):
| Ground | References | § | Claims |
|---|---|---|---|
| 1 | Kovatch, Neal | 103 | 1, 2, 4–7, 10, 13–14 |
| 2 | Kovatch, Neal, Chakrabarti | 103 | 1, 2, 4–7, 9–10, 13–14 |
| 3 | Kovatch, Neal, DeSimone | 103 | 14 |
| 4 | Kovatch, Neal, Chakrabarti, DeSimone | 103 | 14 |
| 5 | Kurganov-262, Chakrabarti | 103 | 9 |
| 6 | Kurganov-262, Chakrabarti, DeSimone | 103 | 14 |
Kovatch (WO 01/050453) is the primary reference: an interactive voice-response system that lets users at remote telephony devices access network information by spoken utterance, matching the utterance to an index of destinations, and returning pre-recorded/voice-prompt audio. The Board mapped:
- claim 1 computing device + network → Kovatch's server connected to the Internet (Fig. 3, Internet 11);
- voice-enabled device → Kovatch Telephone 15;
- speaker-independent speech recognition → Kovatch's recognition of "free-form speech" and "natural-language sentences"; the Board additionally found it obvious to implement a phoneme-based recognizer (e.g., HeyAnita's engine, per uncontroverted expert testimony);
- speech synthesis → audio to the user → Kovatch's voice prompts;
- instruction set with a plurality of web site addresses → Kovatch's index of destinations/URLs;
- content descriptor (claim 7) → Kovatch indicates where on a weather site to insert a ZIP and where the result appears;
- ordered access / ranking (claims 10, 13) → Kovatch ranks destinations (e.g., Amazon ahead of CDNow) and accesses them in that order;
- database storing retrieved info (claim 14) → obvious implementation of Kovatch/Neal to store retrieved information in memory on the application/server to translate into voice prompts.
Neal (cited with Kovatch in Ground 1; full bibliographic details were not surfaced in my searches — flagged as an uncertainty) supplied the "periodically search … to identify new web sites and add them" teaching (web-crawler/index-refresh type functionality), i.e., the very limitation that collapsed the priority date. Chakrabarti ("System and method for focused Web crawling") independently supplies it: its "watchdog" module periodically determines new (not yet visited) and old web pages to include in searches. DeSimone supplies the claim-14 database/memory storage.
Motivation to combine (why a POSITA would have done this):
- Same field, complementary functions. Kovatch is a voice portal to networked information; Neal/Chakrabarti are web-content discovery/index-maintenance tools. Adding a crawler/watchdog that finds new web pages to a portal that answers from web pages merely makes the portal's answers more complete and current — a predictable, beneficial result, not a new function. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416–17 (2007).
- The problem itself supplies the motivation. The patent's own background stresses (a) that "web sites change frequently" and (b) that voice users expect near-instant answers. A POSITA seeking to keep a voice browser's answers fresh and fast would naturally (i) add periodic crawling to refresh the site index and (ii) cache/store retrieved answers to cut latency — both routine engineering choices with predictable benefits.
- Reasonable expectation of success. Both Kovatch and the crawler operate over the same HTTP/Internet substrate; integration requires no new technology. (Note: motivation need not reside in the references themselves — Polygroup Ltd. MCO v. Willis Elec. Co., 780 F. App'x 880, 884 (Fed. Cir. 2019), which the Board applied in the parallel Apple '084 proceeding.)
Result: Claims 1, 2, 4–7, 10, and 14 of the '084 patent held unpatentable; affirmed. Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023).
4. Combination B — the Apple combination (asserted, but rejected)
In IPR2020-00687 (Apple Inc. v. Parus Holdings, Inc., '084 patent) — FWD Sept. 9, 2021 ("No Claims Unpatentable") — Apple asserted:
| Ground | References | § | Claims |
|---|---|---|---|
| I | Ladd, Kurosawa, Goedken | 103 | 1–6 |
| II | Ladd, Kurosawa, Goedken, Madnick | 103 | 7, … |
| III | Ladd, Kurosawa, Goedken, Houser | 103 | 5–6 |
| IV | Ladd, Kurosawa, Goedken, Rutledge | 103 | 9, … |
(https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1534002](/patent/1534002)/ ; https://www.docketalarm.com/cases/PTAB/IPR2020-00686/Apple_Inc._v._Parus_Holdings_Inc/docs/06-17-2021-Patent_Owner/Other_Not_for_motions-35-Patent_Owners_Hearing_Demonstratives.pdf)
- Ladd (U.S. 6,269,336) — telecommunication node with a speaker-independent automatic speech recognition unit (VRU server; RecServer from Nuance) and IVR audio.
- Kurosawa (JP H9-311869) — searching a plurality of web sites (the petition relied on Kurosawa, not Ladd, for the "plurality of web sites" limitation).
- Goedken (U.S. 6,393,423) — sequential/fail-over access (try one, then the next, stop when found).
- Madnick (U.S. 5,913,214) — database/search-engine storage; Houser (5,774,859) and Rutledge (6,650,998) — ancillary features.
Motivation Apple offered: speed, convenience, and robustness (with expert testimony). Why it failed: Parus successfully framed the dispute around the construction of "speaker-independent speech recognition device" — contending the '084 disclaimed recognition by "predefined voice patterns" and that Ladd's pattern-spotting was different — and around the sequential-access mapping (Goedken). The Board agreed the combination did not teach every element, and Apple's appeal (CAFC 22-1144) was voluntarily dismissed with no merits ruling. Practical takeaway for a § 103 challenge: the Ladd-based combination is the weaker theory; the Kovatch-based combination (Combination A) is the one with precedential force.
5. Combination C — Kurganov-262 (same-family) + Chakrabarti (+ DeSimone)
Because the challenged claims lost the 2000 priority date, Kurganov-262 — the '084's own parent publication, sharing the specification — is itself prior art. It discloses essentially the entire first (web-browser) embodiment: ranked categories of web sites, speech-recognition grammars, content-descriptor "extraction agents," and fail-over access in rank order. Chakrabarti then supplies the only limitation Kurganov-262's first embodiment arguably omits (periodic discovery/addition of new web sites; the Board found the spec's "new devices" teaching is not interchangeable with "new web sites"). This "patent-as-its-own-prior-art" combination is doctrinally clean once the priority-date ruling stands, and the Board credited the Kurganov-262/Chakrabarti pairing (Ground 5, '431 claim 9).
6. The dependent claims
- Claims 2 (Internet), 3 (LAN), 4 (device list), 5 (phonemes), 6 (natural speech), 7 (content descriptor) — squarely met by Kovatch (and by the '084's own spec/Kurganov-262). Individually obvious; claims 2, 4–7 were held unpatentable. Claim 3 (LAN) is a trivial network-type alternative.
- Claim 8 (periodic polling; order created from polling) and claim 9 (polling each new site) — these are the patent's robustness features. Kovatch+Neal+Chakrabarti renders them obvious (Chakrabarti's watchdog "periodically" revisits; ranking on availability/speed is a routine design choice). Claim 9 of '084 was not challenged in the Google IPR.
- Claims 10–13 (pre-defined access order; modification of order on availability/response-time/location-change; weighting criteria) — claim 10 was held unpatentable (Kovatch ranks destinations). Claims 11–13, however, are the genuinely contestable ones. They require modifying the order based on measured criteria, which is the same subject matter the PTAB and Federal Circuit litigated for the sibling '705 patent in Google LLC v. Parus Holdings, Inc., No. 24-2381 (Fed. Cir. July 13, 2026) — where the Board found Google failed to prove obviousness of the ranking-adjustment limitations and the CAFC vacated on APA grounds (evaluating Burrows "in isolation"; construing "unexpected response" without notice; failing to address the inconsistency argument). That decision signals that a § 103 attack on the "modify the ranking" limitations is doctrinally contested and, at minimum, requires reading the combination's references together rather than individually. It does not disturb the '084 judgment (different patent, different claims).
- Claims 14 (database) and 15 (grammars/instruction sets stored in database) — claim 14 held unpatentable via DeSimone (and/or Kovatch/Neal); claim 15 is a conventional storage-location limitation, obvious over Kovatch alone.
7. Rebuttal / secondary considerations
The record does not show Parus prevailed on objective indicia. Its principal defenses were § 102/§ 112 and priority-based (swearing behind Kovatch; written description for Kurganov-262), not classic Graham secondary considerations (unexpected results, long-felt need, commercial success nexus, teaching away). Teaching-away arguments failed: neither Goedken (Apple) nor the crawler references taught away from the combination. This absence of a nexus-backed secondary-consideration record materially weakens any infringement-defense posture.
8. Bottom line and explicit uncertainties
Bottom line. The '084 patent's claim 1 — and claims 2, 4–7, 10, and 14 — have been adjudicated obvious under pre-AIA § 103(a) over Kovatch in view of Neal, further in view of Chakrabarti and/or DeSimone, a holding affirmed by a precedential Federal Circuit opinion. The combination is well-motivated (same field; complementary voice-portal and web-crawler/index functions; predictable improvements in freshness, completeness, and latency that the patent's own background emphasizes). An alternative Ladd + Kurosawa + Goedken (+ Madnick/Houser/Rutledge) combination was asserted by Apple but rejected by the PTAB. The Kurganov-262 + Chakrabarti combination is a clean fallback once the lost priority date is accepted.
What I do not know with high confidence / flag rather than assert:
- Neal and DeSimone — I confirmed how the Board used them (crawler/new-site discovery and database storage, respectively) but could not retrieve their full bibliographic details in these searches; conversely Kovatch, Ladd, Kurosawa, Goedken, Madnick, Houser, Rutledge, and Kurganov-262 are well identified.
- The exact claim-by-claim allocation of Grounds 1–6 between IPR2020-00846 ('431) and IPR2020-00847 ('084) is inferred from a consolidated stipulation exhibit; the '084-specific challenged set (1, 2, 4–7, 10, 14) is confirmed by the Fed. Cir. opinion, but per-ground claim lists for the '084 should be verified against IPR2020-00847, Paper 31.
- The 2026 posture of the '705 ranking-limitation question is unresolved on remand, so any § 103 theory aimed at the analogous '084 claims 11–13 remains open rather than settled.
- The date anomaly (April 26, 2026 vs. July 2026 events) remains unexplained; I have not altered any identifiers to reconcile it.
Primary sources: Fed. Cir. slip op. — https://storage.courtlistener.com/pdf/2023/06/12/parus_holdings_inc._v_google_llc_1.pdf ; CAFC opinion PDF — https://www.docketalarm.com/cases/PTAB/IPR2020-00846/Google_LLC_v._Parus_Holdings_Inc/docs/07-24-2023-Board/Other__other_court_decision-36-CAFC_Opinion.pdf ; Apple '084 IPR papers — https://ptacts.uspto.gov/ptacts/public-informations/petitions/1534002/ ; front-page art list — https://portal.unifiedpatents.com/patents/patent/9451084 ; 2026 CAFC coverage — https://ipwatchdog.com/2026/07/14/cafc-vacates-ptab-ruling-for-patent-owner-in-google-ipr/
Generated 9/28/2026, 11:32:32 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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