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ARTICLE · 21 JANUARY 2015

Navigating Degrees Of Separation: Impermissible Incorporation By Reference

McDermott Will & Emery
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Following a conference call held with respect to three separate proceedings presenting an identical issue, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board issued an order on the conduct of the proceeding.

United StatesIntellectual Property
Ryan Vachon
Ryan Vachon
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T-Mobile USA, Inc. v. Mobile Telecoms. Technologies, LLC

Following a conference call held with respect to three separate proceedings presenting an identical issue, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB or Board) issued an order on the conduct of the proceeding, clarifying its rule relating to incorporation by reference. T-Mobile USA, Inc. v. Mobile Telecoms. Technologies, LLC, Case Nos. IPR2015-00015; -00017 and -00018 (PTAB, Nov. 3, 2014) (Chang, APJ).

In each of its petitions for inter partes review (IPR), the petitioner filed two separate expert declarations as exhibits—one created by the petitioner's own expert and one filed by another petitioner in a different matter. The petitioner cited to both expert declarations for support in its petitions. At issue, the declaration of the petitioner's expert witness incorporated by reference "a large portion" of the declaration of the expert witness from the separate matter.

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