Many patent challengers have found “incorporation by reference” arguments to be a tempting way to try to convert an obviousness argument into an anticipation argument, but “incorporation by reference” can also impact whether a reference qualifies as prior art, as was the case in IPR2014-00664, IGB Automotive Ltd. and IG Bauerhin GMBH v. Gentherm GMBH.  In that case, the Board instituted review in part because the challenged patent’s earliest claimed priority document did not sufficiently describe the claimed subject matter, rejecting Patent Owner’s argument that the priority document’s “incorporation by reference” sufficiently bolstered the patent’s disclosure.

More specifically, the patent-at-issue claimed priority to two provisional applications having different filing dates. Decision at 14.  Patent Owner argued that a prior art reference (Knoll) relied upon by Petitioner was not prior art because it antedated the earlier of the claimed priority documents. Petitioner countered that the earlier provisional did not contain an enabling disclosure for the subject matter of the claims at issue, making the challenged patent’s earliest priority date filing date of the second (later) provisional application. Id. at 14.  If this later priority date were used, then the Knoll reference would qualify as prior art. The Board agreed with Petitioner, finding that the earlier provisional application did not, on its face, adequately describe at least one of the limitations in the challenged claims.  Decision at 15.

Patent Owner presented a back-up argument, asserting the earlier provisional application does support the priority claim based on that provisional’s “incorporation by reference” of other documents that did adequately describe the claim limitations at issue.  The Board rejected this argument, finding that the facts did not meet the strict incorporation by reference standard, which requires that the alleged 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 (Board’s emphasis, and citing Xenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378–79 (Fed. Cir. 2007).

Accordingly, the Knoll reference did qualify as prior art.