January 14, 2014
Incorporation by Reference Not Allowed in Inter Partes Review
Given the Board’s repeated admonitions regarding the speed and efficiency of inter partes review proceedings, it comes as no surprise that the Board has consistently rendered decisions that strengthen and reinforce the strict time lines and page limits of the proceedings. To that end, in PCT Int’l, Inc. v. Amphenol Corp., IPR 2013-00229 (Paper 17) (December 24, 2013), the Board thwarted Patent Owner’s attempt to “incorporate by reference” its Preliminary Response into its later Patent Owner response.
“37 CFR § 42.6(a)(3) – Incorporation by reference; combined documents. Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.”
Pointing out that Rule 42.6(a)(3) prevents parties from circumventing page limitations, the Board stated that it would only consider arguments properly presented in the Patent Owner’s Response, not any arguments that were merely incorporated by reference into the preliminary response.