April 3, 2015

IPR Incorporation by Reference Argument Not Enough to Save Priority Claim

Many patent challengers have found ā€œincorporation by referenceā€ arguments to be a tempting way to try to convert an obviousness argument into an anticipation argument, but ā€œincorporation by referenceā€ can also impact whether a reference qualifies as prior art, as was the case in IPR2014-00664, IGB Automotive Ltd. and IG Bauerhin GMBH v. Gentherm GMBH. Ā In that case, the Board instituted review in part because the challenged patentā€™s earliest claimed priority document did not sufficiently describe the claimed subject matter, rejecting Patent Ownerā€™s argument that the priority documentā€™s ā€œincorporation by referenceā€ sufficiently bolstered the patentā€™s disclosure.

More specifically, the patent-at-issue claimed priority to two provisional applications having different filing dates. Decision at 14. Ā Patent Owner argued that a prior art reference (Knoll) relied upon by Petitioner was not prior art because it antedated the earlier of the claimed priority documents. Petitioner countered that the earlier provisional did not contain an enabling disclosure for the subject matter of the claims at issue, making the challenged patentā€™s earliest priority date filing date of the second (later) provisional application.Ā Id.Ā at 14. Ā If this later priority date were used, then the Knoll reference would qualify as prior art. The Board agreed with Petitioner, finding that the earlier provisional application did not, on its face, adequately describe at least one of the limitations in the challenged claims. Ā Decision at 15.

Patent Owner presented a back-up argument, asserting the earlier provisional application does support the priority claim based on that provisionalā€™s ā€œincorporation by referenceā€ of other documents that did adequately describe the claim limitations at issue. Ā The Board rejected this argument, finding that the facts did not meet the strict incorporation by reference standard, which requires that the alleged priority document ā€œboth identifies with ā€˜detailed particularityā€™ the specific material in the patents asserted to be incorporated by reference, and ā€˜clearly indicatesā€™ where that material is found in the incorporated patents.ā€ Ā Decision at 15 (Boardā€™s emphasis, and citing Xenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378ā€“79 (Fed. Cir. 2007).

Accordingly, the Knoll reference did qualify as prior art.