One method that has become appealing when attempting to establish anticipation as opposed to having to turn to obviousness is to utilize the idea of a secondary prior art reference being “incorporated by reference” within a primary prior art reference so as to establish the disclosure of each and every element of a challenged claim within a “single” prior art reference.  That is, some suggest that because a secondary prior art reference is stated as being “incorporated by reference” into a primary prior art reference, the primary prior art reference should be considered as disclosing not only material expressly included therein, but also material disclosed in the secondary prior art reference.  In one recent decision, this theory was tested with respect to establishing an earlier priority date to effectively preclude a reference as qualifying as prior art.   

In particular, in IPR2014-00664, IGB Automotive Ltd. and IG Bauerhin GMBH v. Gentherm GMBH, the challenged patent claimed priority to two provisional applications, each having different filing dates.  In challenging the patent at issue, Petitioner relied upon a reference that pre-dated the challenged patent and the later-filed provisional application but antedated the earlier-filed provisional application to which the challenged patent claimed priority.  Petitioner argued that although the reference did not pre-date the earlier-filed provisional application, it still qualified as prior art because the earlier-filed provisional application did not contain an enabling disclosure for the subject matter of the claims at issue.  Petitioner thus argued that the effective filing date of the challenged patent was not the filing date of the earlier-filed provisional application, but rather, was the filing date of the later-filed provisional application.  

In response, Patent Owner asserted that the earlier-filed provisional application did in fact support the priority claim of the challenged patent due to an “incorporation by reference” in the earlier-filed provisional application of other documents which the Patent Owner asserted adequately described the claims at issue.  The Board rejected this argument and found that the incorporation by reference standard was not met.  The standard requires that the asserted priority document “both identifies with ‘detailed particularity’ the specific material in the patents asserted to be incorporated by reference, and ‘clearly indicates’ where that material is found in the incorporated patents.”  Decision at 15 (Emphasis in original, citing Xenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378-79 (Fed. Cir. 2007). 

In view of the above, the Board concluded that the reference presented by Petitioner did in fact qualify as prior art against the challenged patent.