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Incorporation By Reference Statement Must Be Drafted With Care

November 14, 2007

Over a dissent indicating that its holding casts doubt upon the reliable use of incorporation by reference, in Zenon Environmental, Inc. v. United States Filter Corporation (Nos. 2006-1266, -1267, November 7, 2007), a divided Federal Circuit panel finds a lack of disclosure continuity to exist in a patent family chain, resulting in invalidity.

Zenon brought suit against U.S. Filter, alleging infringement of the sixth patent granted in a series of connected applications. In one of the intermediate applications, a gas distribution system disclosed in the first application in the series was replaced with a different gas distribution system, but when the application resulting in the sixth patent was filed, the original gas distribution system was restored. Incorporation by reference language in Zenon’s intermediate patent stated that details relating to construction and deployment of “a most preferred skein” are found, inter alia, in the patent resulting from the first application, the “relevant” disclosure of which was included by reference. Following a bench trial on the validity of Zenon’s patent, the district court rejected U.S. Filter’s assertion that the patent resulting from the first application anticipated, and thus invalidated, Zenon’s sixth patent, and U.S. Filter appealed.

The Federal Circuit panel majority reverses, noting that while the intermediate application purports to incorporate by reference skein construction and deployment details, it fails to incorporate by reference, with sufficient particularity to one reasonably skilled in the art, the gas distribution system disclosed in the first application. Patent draftsmanship is an exacting art, and no less care is required in drafting an incorporation by reference statement than in any other aspect of a patent application. The draftsman here made clear what was being incorporated by reference and, by difference, what was not. A lack of disclosure continuity thus exists in the family chain, and the sixth patent is not entitled to the filing date of the first application in the series. As the patent resulting from the first application in the series discloses each and every limitation of the claims of the sixth patent. the sixth patent is anticipated by the patent resulting from the first application and invalid.

For more information, please contact the professional(s) listed below, or your regular Crowell & Moring contact.

Richard R. Diefendorf
Counsel – Washington, D.C.
Phone: +1.202.624.2758