Petitioners Beware: Improper Incorporation By Reference May Result In Truncated Petition

On February 16, 2016, the Patent Trial and Appeal Board ("the Board") partially denied institution of inter partes review ("IPR") of claims 1-26 of U.S. Patent No. 8,338,724, citing petitioner's improper use of incorporation by reference.¹ Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2015-01741, Paper 8 at 29-31 (PTAB Aug. 7, 2015) ("Shenzhen").

As mandated by 37 C.F.R. § 42.6(a)(3), "[a]rguments must not be incorporated by reference from one document into another document." The prohibition against the use of incorporation by reference in IPR petitions is rooted in 37 C.F.R. § 42.22(a)(2), which states that a petition must contain a "full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . ." The Board prohibits incorporating by reference arguments from one document into another document, in part, to eliminate abuses that arise from incorporation. See Cisco