United States: Incorporation By Reference: Context May Affect Written Description Support For Later-Added Claims

The US Court of Appeals for the Federal Circuit partially vacated a ruling by the Patent Trial and Appeal Board (PTAB), concluding that an incorporation by reference clause in an earlier application in the line that led to the challenged patent did not limit the applicability of incorporated reference in terms of providing written description support for later-added claims. Paice LLC v. Ford Motor Company, Case Nos. 17-1387; -1388; -1390; -1406; -1457; -1458 (Fed. Cir., Feb. 1, 2018) (O'Malley, J).  

Paice appealed final written decisions issued by the PTAB in six inter partes review (IPR) proceedings initiated by Ford to challenge two of Paice's patents relating to hybrid cars. The challenged patents were directed to a torque-based algorithm for selecting operating modes in a hybrid vehicle having an internal combustion engine and one or more battery powered electric motors. The claims at issue generally recite methods for comparing the instantaneous torque required to propel the vehicle, to both a setpoint and the engine's maximum torque output to determine whether to operate the engine, the electric motor or both. The PTAB held several challenged claims to be unpatentable over a reference that Paice asserted was not prior art to the challenged claims by virtue of an incorporation by reference in an earlier application in the family that matured into the challenged patent.

The Federal Circuit affirmed the PTAB decisions on obviousness, essentially based on affirmance of the PTAB's broadest reasonable interpretation construction of two disputed claim terms, and its conclusion that the final written decisions provided "a reasoned basis for their decisions," but it vacated the PTAB ruling relating to the priority date to which the challenged claims were entitled. In doing so, the Court clarified whether, and to what extent, a document is incorporated by reference in a patent application.

The priority date for later-added patent claims depends on when the claimed subject matter first appeared in the chain of patent applications from which the claims arose. For claims to be entitled to a priority date of an earlier-filed application, the application must provide adequate written description support for the later-claimed limitations. 

During the IPR proceedings, Paice argued that the challenged claims were entitled to claim priority from an earlier US application and that the earlier application provided sufficient written description support for the challenged claims by virtue of incorporation by reference of a US patent to Severinsky. The PTAB rejected Paice's argument and found that the later-added limitations were not supported by an adequate written description.

The Federal Circuit reversed, concluding that the statement in the earlier application that "[Severinsky] is incorporated herein by this reference" (emphasis in original) "identified with detailed particularity the specific material subject to incorporation and where that material can be found," and was "plainly sufficient to incorporate Severinsky in its entirety." The Court explained that the PTAB's reliance on a subsequent sentence in the application that stated "[w]here differences are not mentioned, it is to be understood that the specifics of the vehicle design shown in [Severinsky] are applicable to the vehicles shown herein as well" did not limit incorporation to only those disclosures in Severinsky that are not different from disclosures from the disclosures in the application. Rather, the Court concluded that "[t]he sentence has no bearing . . . on the extent of incorporation. It refers only to the applicability of certain features of Severinsky's invention to the . . . application's purportedly new and improved hybrid vehicle, rather than to which textual portions of the Severinsky document are incorporated." As the Court further explained, "[t]he applicability of a document's disclosed features and the incorporation of the document itself are distinct concepts, and one does not imply the other."

The Federal Circuit explained that when read in context, the entire passage makes it clear that Severinsky is incorporated in its entirety into the application, but applies only some of the specific features of the invention disclosed in the application now in issue.

The Court remanded the case to the PTAB to determine whether the earlier application, with Severinsky incorporated in its entirety, provides the requisite written description support for the challenged claims.

Incorporation By Reference: Context May Affect Written Description Support For Later-Added Claims

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