Incorporated by Reference, But to What Extent?

By: Ko Nakamura

Incorporation by reference is a useful mechanism by which an application can incorporate disclosure from other documents as if the disclosure was explicitly contained therein without having to repeat the disclosure in the application.  “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000).  However, depending on the incorporation language, it may not always be clear what portions of a document have been incorporated by reference into an application.

Paice LLC v. Ford Motor Co., 2018 WL 651366 (Fed. Cir. Feb. 1, 2018) is a Federal Circuit decision on an appeal from final written decisions in six Inter Partes Review (“IPR”) proceedings that held certain challenged claims of Paice’s U.S. Patent No. 7,237,634 (“the ‘634 patent”) and U.S. Patent No. 8,214,097 (“the ‘097 patent”) unpatentable.  The challenged claims of these patents involve selection of operating modes in a hybrid vehicle.

The Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) determination that an earlier patent issued to one of the co-inventors of the ‘634 and ‘097 patents, U.S. Patent No. 5,343,970 (“Severinsky”), in combination with other prior art of record, rendered obvious certain of the challenged claims of the ‘634 patent and the ‘097 patent.

However, the PTAB had also found certain of the challenged claims to be invalid as obvious over PCT Application No. WO 00/15455 (“the ‘455 PCT publication”) in view of Severinsky.  The ‘455 PCT publication names the same inventors as the ‘634 and ‘097 patents, and claims priority to earlier applications that appear in both patents’ chain of priority.  At issue in this ground of invalidity are a group of claims in the ‘634 patent referred to as the “electrical claims”.   The electrical claims recite voltage and current output of an electric motor’s battery, and first appeared in a continuation-in-part application filed more than a year after publication of the ‘455 PCT publication.  The PTAB determined the electrical claims lack written description prior to the filing date of the continuation-in-part, and thus found the ‘455 PCT publication to be prior art to those claims.  Paice does not contest that all of the claimed limitations are found in the ‘455 PCT publication in view of Severinsky.  However, the ‘634 patent claims priority to U.S. Patent Application No. 09/264,817 (“the ‘817 application”), which incorporates Severinsky by reference.  Paice argues that because Severinsky was incorporated by reference, it provides adequate written description support for the electrical claims, thus antedating the ‘455 PCT publication.

Severinsky is incorporated into the ‘817 application with the following paragraph:

This application discloses a number of improvements over and enhancements to the hybrid vehicles disclosed in the inventor’s U.S. Pat. No. 5,343,970 (“the ‘970 patent”), which is incorporated herein by this reference. Where differences are not mentioned, it is to be understood that the specifics of the vehicle design shown in the ‘970 patent are applicable to the vehicles shown herein as well.

The PTAB took a narrow view of this incorporation, finding the second sentence above to mean that only disclosures in Severinsky that are not different from disclosures in the ‘817 application were incorporated by reference.  The PTAB found that Severinsky’s disclosures related to the electrical limitations differed from the ‘817 application’s corresponding disclosures, and that such disclosures in Severinsky were thus not incorporated into the ‘817 application.

The Federal Circuit reversed this determination, noting that the first sentence above broadly and unambiguously states that Severinsky is, without qualification, incorporated into the ‘817 application.  The Federal Circuit held that the second sentence has no bearing on the extent of incorporation, and merely states that the features disclosed by Severinsky apply to vehicles described as the invention in the ‘817 application, except if the specification mentions otherwise.  Citing Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545 (Fed. Cir. 1996), the Federal Circuit stated that “[t]he applicability of a document’s disclosed features and the incorporation of the document itself are distinct concepts, and one does not imply the other.”  Accordingly, the Federal Circuit held that Severinsky is incorporated into the ‘817 in its entirety, and remanded the case back to the PTAB to determine whether the ‘817 patent, with Severinsky incorporated therein in its entirety, provides sufficient written description support for the electrical claims of the ‘634 patent.

While the Federal Circuit ruled in favor of Paice with respect to the incorporation by reference issue, this case emphasizes the importance of being unequivocal in stating what portions of the document is being incorporated by reference.  If the intent is to incorporate the document in its entirety, it is important to include an unequivocal statement to that effect, without adding any limiting statements regarding what subject matter incorporated by reference.