PTAB Prohibition on Incorporation by Reference: Avoiding and Responding to Rule 42.6(a)(3) Violations

Patent Trial and Appeal Board (“PTAB”) Rule 37 CFR § 42.6(a)(3) prohibits argument that incorporate “by reference from one document into another document.” Rule 42.6(a)(3) serves two functional purposes. First, it simplifies the PTAB judges’ work by not forcing them to rummage through the record.[1] Second, it puts teeth into the PTAB’s page limits.[2]

The PTAB strictly applies this rule, which often results in the Board ignoring potentially persuasive arguments. To better understand exactly how the PTAB has used Rule 42.6 (a)(3) so far, we analyzed over 8,600 documents that exist within our firm’s database of PTAB decisions and notices. This analysis provides insight into the range of references the PTAB will ignore. We also offer guidance as to how to respond properly once a party incorporates argument by reference. With this information in hand, you can better prepare your arguments before the PTAB.

Examples of Rule 42.6(a)(3) violations

As stated above, petitioners that raise arguments by reference will likely see those arguments ignored. For example, the PTAB denied a petitioner’s grounds for institution because it 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.”[3] In another case, the Board ignored a petitioner’s argument for a claim construction. There, the petitioner only argued the claim by referencing a second IPR (albeit one the party had moved to join with the instant review).[4]

Patent owners have also run afoul of Rule 42.6(a)(3). The PTAB has deemed improper a patent owner’s arguments that generally referred to arguments made in an inter partes reexamination.[5] The PTAB also ignored one patent owner’s patentability arguments because it only made those arguments in the Preliminary Response.[6] Similarly, the PTAB said that it would not consider arguments made only in an expert declaration.[7] Finally, the Board ignored a patent owner’s argument to exclude a declarant’s testimony where the owner said its argument “is set out more fully in its motion to exclude” in a co-pending CBM review.[8]

Review of these decisions support the conclusion that PTAB will refuse to consider any argument that a party incorporates by reference. This is true even when that party has requested joint review or has other pending arguments before the Board.

Steps to take after a potential Rule 42.6(a)(3) violation

Patent owners and petitioners alike must tread carefully if either party suspects a violation of Rule 42.6(a)(3).  For instance, a patent owner should promptly inform the PTAB if it believes a petitioner has improperly incorporated arguments by reference. The owner should not wait to raise the issue for the first time in its Preliminary Response.

One case clearly shows the potential consequences of following this path. In that case, the patent owner  claimed the petitioner incorporating arguments made in an expert declaration into the petition. The owner made this claim in its Preliminary Response.[9] Not only did the PTAB disagree, but it went on to criticize 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.”[10]

Additionally, an aggrieved party should not move to strike the incorporated-by-reference argument. One petitioner raised a number of issues about a patent owner’s Motion to Amend during a conference call with the PTAB. After raising those issues, the petitioner requested that PTAB dismiss the motion to amend.[11] 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.” It went on to say that “the petitioner will have an opportunity to address any alleged deficiencies in an opposition to the motion to amend.”[12]

It is possible that, in some cases, a petitioner who incorporates arguments by reference might get lucky. For instance, the PTAB gave one petitioner five business days to file a corrected petition.[13] But you cannot bank on luck. You can, however, properly prepare yourself to ensure you make the right arguments in the proper places.

 Conclusion

Do not ignore the clear learnings from the PTAB decisions cited here. Avoid incorporating arguments by reference. And ensure you respond appropriately should an opponent make such a reference in your case.

While avoiding such arguments is no guarantee of success at the PTAB, it is a guaranteed way to ensure the Board hears you out. Choose your arguments carefully, and then make sure to make them the right way, at the right time, in the right places.