Incorporation by Reference

Fed. Cir. reverses BPAI's anticipation invalidation (posted 03/16/15)

In Vicor Corp. v. Synqor, Inc., the Federal Circuit reversed the BPAI's reversal of an Examiner's 102 rejection in an Ex parte reexamination. The prior art consisted of U.S. Patent 5,377,090 which incorporates by reference U.S. patent 5,274,539. The two patents issued from separate applications. The earlier '539 patent teaches that an isolation stage can use diodes as rectifiers, but in alternative embodiments, can use controlled rectifiers in place of the diodes. The later patent '090 teaches a single isolation stage having a plurality of regulation stages to produce a plurality of output D.C. voltages. The BPAI reversed the Examiner's rejection, finding that the combined reference did not teach a single embodiment that has an isolation stage that uses controlled rectifiers, followed by multiple regulation stages. The Federal Circuit reversed the BPAI, stating, “The incorporated teachings include Steigerwald '539's alternative embodiment, which teaches a substitution that takes place within the isolation stage.”

CAFC reverses district court on incorporation by reference (08/18/09)

In Callaway Golf Co. v. Acushnet Co., the CAFC reversed the district court's ruling that claims were not anticipated by a prior art reference since it didn't successfully incorporate by reference material critical to anticipation. The Patent states,

The inner, intermediate, or first layer or ply 14 and the outer cover, second layer or ply 16 or either of the layers may be cellular when formed of a foamed natural or synthetic polymeric material. Polymeric materials are preferably such as ionomer resins which are foamable. Reference is made to the application Ser. No. 155,658, of Robert P. Molitor issued into U.S. Pat. No. 4,274,637 which describes a number of foamable compositions of a character which may be employed for one or both layers 14 and 16 for the golf ball of this invention.

Despite the fact that the referenced patent “undisputably” teaches that many foamable materials, including both polyurethane and ionomer-resin blends may be used as golf ball cover materials, the district court held that the patent at issue failed to specifically incorporate polyurethane and ionomer-resin blends from the referenced patent, and therefore granted summary judgment of no anticipation.

The CAFC cites In re de Seversky 1) and Adv. Display Sys. 2) for the proposition that “To incorporate matter by reference, a host document must contain language 'clearly identifying the subject matter which is incorporated and where it is to be found'; a 'mere reference to another application, or patent, or publication is not an incorporation of anything therein . . . .” In the present case, the CAFC concludes that the patent at issue “identifies with specificity both what material is being incorporated by reference (foamable polymeric compositions suitable for golf ball cover layers) and where it may be found (the [referenced] patent).”

474 F.2d 671, 674 (CCPA 1973)
212 F.3d at 1282

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