Petitioners Beware: Improper Incorporation By Reference May Result In Truncated Petition

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...