{"id":1934,"date":"2018-02-01T12:18:26","date_gmt":"2018-02-01T17:18:26","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1934"},"modified":"2018-02-03T06:58:26","modified_gmt":"2018-02-03T11:58:26","slug":"incorporation-by-reference-may-have-saved-the-day","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1934","title":{"rendered":"Incorporation by Reference (May Have) Saved the Day"},"content":{"rendered":"

In\u00a0Paice LLC v.\u00a0Ford Motor Company<\/a>, [2017-1387, 2017-1388, 2017-1390, 2017-1457, 2017-1458,\u00a02017-1406](February 1, 2018), the Federal Circuit affirmed in part, reversed in part, and remanded Final Written decisions of the PTAB in six IPR’s involving\u00a0U.S. Patent Nos. 7,237,634 and\u00a08,214,097.\u00a0 In particular, the Federal Circuit\u00a0vacated the Board\u2019s obviousness determinations\u00a0as they relate to the \u2019634 patent\u2019s \u201celectrical\u201d claims\u00a0and remanded for the Board to determine whether those\u00a0claims find written description support in the priority\u00a0applications and the references incorporated therein, but otherwise affirmed the Board\u2019s obviousness determinations as to all\u00a0other claims.<\/p>\n

Paice raised two principal arguments on appeal — first that the prior art did not disclose the claim limitations, and second that one of the references was not prior art to the claims.\u00a0 The Federal Circuit made quick work of the first argument, finding that the Board correctly determined that the reference met the claim limitation.\u00a0 However, Paice’s second argument met with more success.\u00a0 Paice argued that one of the references, the \u2019455 PCT publication, was not\u00a0prior art to some of the electrical claims because they claim priority\u00a0to an application (U.S. Patent Application No.
\n09\/264,817)\u00a0 that predates the \u2019455\u00a0PCT publication.<\/p>\n

The Federal Circuit noted that\u00a0the priority date for later-added patent claims depends
\non when the claimed subject matter first appeared\u00a0in the chain of patent applications from which the claims\u00a0arose.\u00a0 The Federal Circuit said that for\u00a0claims to be entitled
\nto a priority date of an earlier-filed application, the application\u00a0must provide adequate written description support for the later-claimed limitations.\u00a0 Paice argued that the application incorporated by reference a prior application that\u00a0provided the requisite written description support.\u00a0 The Board disagreed, holding that the application did not adequately incorporate the prior application, and that the claim limitations lack written description\u00a0support in the prior application.<\/p>\n

The Federal Circuit said that incorporation by reference provides a method for integrating\u00a0material from various documents into a host\u00a0document by citing such material in a manner that\u00a0makes clear that the material is effectively part of the
\nhost document as if it were explicitly contained therein.\u00a0 The Federal Circuit said that to incorporate material by\u00a0reference, the host document must identify with detailed
\nparticularity what specific material it incorporates and\u00a0clearly indicate where that material is found in the cited document, which the Federal Circuit found Paice did with this language:<\/p>\n

This application discloses a number of improvements\u00a0over and enhancements to the hybrid\u00a0vehicles disclosed in the inventor\u2019s U.S. Pat. No.\u00a05,343,970 (the \u201c\u2019970 patent\u201d) [Severinsky], which is\u00a0incorporated herein by this reference. Where differences\u00a0are not mentioned, it is to be understood\u00a0that the specifics of the vehicle design shown in\u00a0the \u2019970 patent are applicable to the vehicles\u00a0shown herein as well.<\/p><\/blockquote>\n

The Federal Circuit rejected the Board’s interpretation of the last sentence of incorporation phrase limited the scope of the incorporation.\u00a0 The Federal Circuit said this sentence had\u00a0no bearing on the extent\u00a0of incorporation, finding that it only refers to the applicability<\/em> of\u00a0certain features of the disclosure, instructing that: “The applicability of a document\u2019s disclosed features and\u00a0the incorporation of the document itself are distinct
\nconcepts, and one does not imply the other.”<\/p>\n

However this did not end the saga for Paice.\u00a0 The Federal Circuit said that to prevail on its argument that the \u2019455 PCT publication\u00a0is not prior art to the claims, Paice must show\u00a0that its \u2019817 application, with the incorporated material, provides sufficient written description support for\u00a0those claims.\u00a0 Because the Board improperly excluded the incorporated material, the Federal Circuit remanded the case for an initial Board determination.<\/p>\n","protected":false},"excerpt":{"rendered":"

In\u00a0Paice LLC v.\u00a0Ford Motor Company, [2017-1387, 2017-1388, 2017-1390, 2017-1457, 2017-1458,\u00a02017-1406](February 1, 2018), the Federal Circuit affirmed in part, reversed in part, and remanded Final Written decisions of the PTAB in six IPR’s involving\u00a0U.S. Patent Nos. 7,237,634 and\u00a08,214,097.\u00a0 In particular, the … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[74],"tags":[],"class_list":["post-1934","post","type-post","status-publish","format-standard","hentry","category-incorporation-by-reference"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1934","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1934"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1934\/revisions"}],"predecessor-version":[{"id":1935,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1934\/revisions\/1935"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1934"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1934"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1934"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}