On February 16, 2016, the Patent Trial and Appeal Board (“the Board”) partially denied institution of inter partes review (“IPR”) of claims 1-26 of U.S. Patent No. 8,338,724, citing  petitioner’s improper use of incorporation by reference.[1] Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2015-01741, Paper 8 at 29-31 (PTAB Aug. 7, 2015) (“Shenzhen”).

As mandated by 37 C.F.R. § 42.6(a)(3), “[a]rguments must not be incorporated by reference from one document into another document.”  The prohibition against the use of incorporation by reference in IPR petitions is rooted in 37 C.F.R. § 42.22(a)(2), which states that a petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .”  The Board prohibits incorporating by reference arguments from one document into another document, in part, to eliminate abuses that arise from incorporation.  See Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB, Aug. 29, 2014); see also DeSilva v. Dileonardi, 181 F.3d 865, 866-67 (7th Cir. 1999) (Incorporation “by reference amounts to a self-help increase in the length of the [] brief[,]” and “is a pointless imposition on the court’s time.  A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”).  In particular, the Board has determined that the “practice of citing the [expert’s] Declaration to support conclusory statements that are not otherwise supported in the Petition also amounts to incorporation by reference.” Cisco Systems, Inc., IPR2014-00454, Paper 12 at 9.

In its petition to institute IPR, Shenzhen Huiding Technology Co., Ltd. (“petitioner”) cited to the declaration of its expert, Dr. Smith, over 100 times. Shenzhen, Paper 2. The vast majority of the citations direct the reader to paragraphs of Dr. Smith’s report supporting arguments already stated in the petition. Id. However, under the heading titled “LEVEL OF ORDINARY SKILL IN THE ART,” petitioner merely stated, “[s]ee Smith Decl. at ¶¶ 31-35.” Id. Paper 2 at 9. In addition, instead of reciting the text of each claim limitation when analyzing each claim, petitioner referred to a “claim element number,” the definition of which was included in a separate exhibit. Id.

Synaptics Incorporated (“patent owner”) responded that petitioner’s “explicit” incorporation of Dr. Smith’s declaration to supply the ordinary skill of one in the art, as well as petitioner’s use of a “coded” claim key, violated the prohibition against incorporation by reference. Id., Paper 6 at 2. Patent owner also argued that, by referencing at least 216 paragraphs of Dr. Smith’s report throughout the petition, petitioner improperly incorporated approximately 106 pages of material. Id.

The Board did not address patent owner’s argument that petitioner improperly incorporated 106 pages from Dr. Smith’s report, apparently determining that the incorporated material was not essential to the petition. Id., Paper 8 at 29-31. However, the Board strongly disapproved of petitioner’s recitation of the level of ordinary skill in the art and reference to the coded claim key exhibit. Id. at 30. The Board calculated that petitioner improperly incorporated 11.5 pages of essential material. Id. These pages, when artificially added to the petition, caused the petition to exceed the 60-page limit by 10.5 pages.Id. Instead of declining to consider the improperly incorporated material, the Board simply subtracted the final 10 pages from the as-filed petition. Id. In its truncated form, the Board found that the petition did not adequately discuss various alleged grounds of anticipation and obviousness for a number of claims, resulting in exclusion of two of the six asserted references and exclusion of three claims which were not permitted review on such grounds.

Although truncating the end of a petition based on a calculation of the number of pages found to contain improper incorporation by reference, without regard to the subject matter of the alleged improper incorporation, may be seen as an arbitrary action by the Board, petitioners should take note of the Board’s hard-line position on incorporation by reference and avoid citing outside sources for arguments not made in the petition itself. And, at least based on this panel, petitioners should lead with their strongest arguments to minimize the negative consequences of truncation.