U.S. Patent Trial and Appeal Board Decisions: Administrative Patent Judges are not Archeologists—Beware of Rule 42.6(a)(3)

Examination of PTAB’s application of rule 37 CRF 42.6(a)(3), which bars incorporating arguments by reference.

August 12, 2014

The U.S. Patent Trial and Appeal Board (“PTAB”) applies 37 CRF § 42.6(a)(3), which bars incorporating arguments by reference, in ways that could preclude a persuasive argument from being considered. The rule reads, “[a]rguments must not be incorporated by reference from one document into another document.” This article examines the PTAB’s application of this rule, using our firm’s database of PTAB decisions and notices, one that now totals over 8,600 documents. We identify ways both patent owners and petitioners have run afoul of the rule. After considering the range of the rule’s applicability, we discuss related procedural issues.

According to the PTAB, Rule 42.6(a)(3) serves at least two purposes. First, it simplifies the administrative patent judges’ work by not forcing them to rummage through the record. Corning Incorp. v. Danjou’s DSM IP Assets B.V., Case No. IPR2013-00043, Paper No. 95 at 13 (PTAB May 1, 2014) (citing the 7th Circuit’s statement that “[a] brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Second, it puts teeth into the PTAB’s page limits. PCT Int’l. Inc. v. Amphenol Corp., Case No. IPR2013-00229, Paper No. 17 at 2 (PTAB Dec. 24, 2013) (author’s case) (“Arguments must not be incorporated by reference from one document into another document. . . Among other things, this rule prevents parties from avoiding page limitations.”).

With these two purposes in mind, a party that raises an argument through incorporation by reference will likely see the argument ignored. For example, a petitioner’s grounds for institution were denied because the PTAB said that the petitioner, instead of “identify[ing] how the references disclose or render obvious each of the claim elements . . . effectively invites the Board to rely on an examiner’s previous rejection of claims.” Bomtech Elec., Co. Ltd. v. Medium-Tech Medizingeräte GmbH, Case No. IPR2014-00138, Paper No. 8 at 32 (PTAB Apr. 22, 2014). As another example, a petitioner’s argument for a claim construction was ignored because it was only argued through incorporation by reference to a second IPR (albeit one the party had moved to join with the instant review). Shaw Industries Group, Inc. v. Automated Creel Sys., Inc., Case No. IPR2013-00584, Paper No. 16 at 10 n.5 (PTAB Dec. 31, 2013).

Patent owners have run afoul of the rule too. A patent owner’s arguments that generally referred to arguments made in an inter partes reexamination were deemed improper and were ignored. CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case No. IPR2013-00033, Paper No. 21 at 17, 22-23 (PTAB March 25, 2013). In Corning, the PTAB ignored one of patent owner’s arguments for patentability because it was made in the Preliminary Response and only incorporated by reference in the Response. IPR2013-00043 at 12 n.3. Similarly, the PTAB, in considering (and ultimately denying) a motion to amend, said that it would not consider arguments made only in an expert declaration. Blackberry Corp. v. Mobilemedia Ideas LLC, Case No IPR2013-00016, Paper No. 32 at 21 (PTAB Feb. 25, 2014). Also, a patent owner’s argument to exclude a declarant’s testimony was ignored where the patent owner said that its argument “is set out more fully in its motion to exclude” in a co-pending CBM review. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case No. CBM2012-00002, Paper No. 66 at 69-70 (PTAB Jan. 23, 2014). Because the argument was incorporated by reference, the PTAB refused to consider it.

Having provided examples of parties running afoul of Rule 42.6(a)(3), we next discuss what procedural steps are proper in the face of a possible rule violation. A petitioner who incorporates by reference arguments made by its declarant into a petition might get lucky. For example, in Nike USA, Inc. v. Stirling Mouldings Ltd., Case No. IPR2014-00428, Paper No. 9 at 2 (PTAB Feb. 24, 2014), the only result was that the PTAB gave the petitioner five business days to file a corrected petition.

A patent owner who believes a petitioner has improperly incorporated arguments by reference should promptly inform the PTAB, rather than first raising the issue in its Preliminary Response. In Research In Motion Corp. v. Multimedia Ideas LLC, Case No. IPR2013-00036, Paper No. 15 (PTAB March 18, 2013), the patent owner argued in its Preliminary Response that the petitioner improperly avoided the page limits by incorporating arguments made in an expert declaration into the petition. The PTAB disagreed, and then criticized the patent owner for waiting three months to raise the issue: “Third, but not the least, if a party has an objection about the other party’s exceeding a certain page limit, the matter should be raised as soon as possible with the Board to preserve remedial measures which can still be taken by the Board without prejudice to all parties. We disapprove of the patent owner’s taking three months to make the procedural objection and to ask that the petition be denied on that basis.” Id.  at 8.

The proper procedural step following an incorporation-by-reference (or what seems to be such) is for the aggrieved party to promptly inform the PTAB of the issue but not move to strike the incorporated-by-reference argument. For example, in Ricoh Americas Corp. v. MPHJ Technology Investments, LLC, Case No. IPR2013-00302, Paper No. 32 at 3 (PTAB Mar. 11, 2014), the petitioner raised a number of issues about the patent owner’s Motion to Amend during a conference call with the PTAB, and requested that the motion to amend be dismissed. The PTAB denied the request. It said that “[a] party who incorporates arguments by reference from one document into another document runs the risk that an argument would be overlooked,” and continued “the petitioner will have an opportunity to address any alleged deficiencies in an opposition to the motion to amend.” Id. Similarly, in the face of allegedly improper incorporation by reference, the PTAB refused to dismiss a petitioner’s Reply, saying that “if a party improperly incorporates by reference material into another paper, the party runs the risk that such incorporated material will not be considered.” Nuvasive v. Warsaw Orthopedic, Inc., Case No. IPR2013-00206, Paper No. 46 at 2 (PTAB March 28, 2014).


It’s not news to patent litigators that there is a tension between sketching out many arguments and presenting just a few those arguments. But, as the PTAB decisions to-date show, there is little or no value in incorporating arguments by reference.  The incorporated argument will likely be ignored, and the record will probably clearly state that your violation of Rule 42.6(a)(3) was the reason the argument was lost.

This article was first published on the Law.com Contributor Network on August 11, 2014.

Reprinted with permission. © 2014

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