On September 1, 2011, in Harari v. Lee, Nos. 10-1075, -1076 (Fed. Cir. Sept. 1, 2011), the Federal Circuit, in deciding two patent interferences, provided guidance on at least two important issues. First, the Court reiterated that the standard for determining whether and to what extent a patent application incorporates material by reference is “whether one reasonably skilled in the art would understand the application as describing with sufficient particularity the material to be incorporated.” Slip op. at 6 (citing Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378-79 (Fed. Cir. 2007)). As applied here, the Court found that the language “[t]he disclosures of the two applications are hereby incorporate[d] by reference” incorporates the entire disclosures of the two applications rather than just specific portions of the referenced applications.
Second, the Federal Circuit held that the indefinite article “a” in the claim term “a bit line,” within an open-ended (i.e., “comprising”) claim, means “a single bit line” based on the claim language and the contextual usage in the specification. The Court distinguished its decision in Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008), in which it held that a claim reciting a system comprising “a pre-soaked fabric roll” and a “means for locating said fabric roll” encompassed systems with more than one fabric roll. Slip op. at 19. The Court noted that “Baldwin . . . does not set a hard and fast rule that ‘a’ always means one or more than one.” Id. Rather, as discussed in Insituform Technologies, Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 1105-06 (Fed. Cir. 1996), the term “a” must be construed in light of the claim and specification. In this case, the Court found that the term was limited to one. Read the full summary in next month’s edition of Last Month at the Federal Circuit.