Incorporation by Reference was Incomplete and Results in Grandparent Application Invalding Patent

Zenon Environmental, Inc. v. United States Filter Corporation, [2006-1266,-1267](November 7, 2007)[NEWMAN, Lourie, Linn] The Federal Circuit reversed the district court's holding that U.S. Patent No. 6,620,319 was not anticipated, and did not reach the district court's decision that the patent was not infringed.
SIGNFICANCE: Incorporation by reference must be complete or chain of continuity is broken.
TIP: Do not delete subject matter from a parent application. Even a more complete incorporation by reference (e.g. "incorporated by reference in its entirety") could be found impropery for failure to particularly identify incorporated subject matter being incorporated.
BRIEF: At issued was whether the or not the '319 patent was entitled to priority of the '373 patent. If not, then intervening disclosures would anticipate the '319 patent. The priority claim depended upon the continuity of disclosure, and the patentee maintained that although the needed disclosure was omitted from the intervening patents, it was incorporated by reference. The Federal Circuit said that incorporation by reference provides a method for integrating material from various documents into a host document by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. LOF: Whether material has been incorporated by reference into a host document, and the extent to which it has been incorporated, is a question of law. In determining whether material has been incorporated by reference, the standard of one reasonably skilled in the art should be used to determine whether the host document describes the material to be incorporated by reference with sufficient particularity.
The Federal Circuit said that in order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112. Incorporation by reference provides a method for integrating material from various documents into a host document by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents." Id. (emphases added). The language at issue stated: "Further details relating to the construction and deployment of a most preferred skein are found in the parent U.S. Pat. No. 5,639,373, and in Ser. No. 08/690,045, the relevant disclosures of each of which are included by reference thereto as if fully set forth herein. " The Federal Circuit observed that the plain language expressly limits the incorporation to only relevant disclosures of the patents, indicating that the disclosures are not being incorporated in their entirety. Moreover, the Federal Circuit said that the subject matter incorporated was limited to the construction and deployment of a vertical skein, and determined that a person of ordinary skill in the art would not consider this sufficient to include the subject matter to support the claims at issue.
In dissent, Judge Newman complains that this case adds new requirements to priority claims under Section 120 that does nothing but add "costs and pitfalls to inventors, as they attempt to walk new judicial tightropes"