HOLLMER v. HARARI
`Cite as 681 F.3d 1351 (Fed. Cir. 2012)
`
`1351
`
`My colleagues hold that the Court’s re-
`monstrances that pleading content should
`be viewed in the context of the asserted
`wrong, Iqbal, 556 U.S. at 679, 129 S.Ct.
`1937, and other guidance, are not only
`irrelevant, but contrary to law, holding
`that Congress required dominance by the
`Rules, including the Forms, over refine-
`ments of judicial interpretation.
`The panel majority quotes, in support of
`its position that complaints need not be
`heavy on detail, the Court’s statement in
`Skinner v. Switzer, ––– U.S. ––––, 131
`S.Ct. 1289, 1296, 179 L.Ed.2d 233 (2011),
`that a complaint ‘‘generally requires only a
`plausible ‘short plain’ statement of the
`plaintiff’s claim.’’ However, Skinner did
`not elevate the Forms over judicial rulings.
`Plaintiff Skinner was a prisoner sentenced
`to death, who sought DNA testing in a
`§ 1983 proceeding; the Court held that
`the case was improperly dismissed on the
`pleadings. My colleagues also cite Ma-
`trixx Initiatives, Inc. v. Siracusano, –––
`U.S. ––––, 131 S.Ct. 1309, 1323, 179
`L.Ed.2d 398 (2011), a class action that
`turned on the materiality of asserted mis-
`representations or omissions, where the
`Court held that the facts of the asserted
`misrepresentations and omissions as stated
`in the pleadings were sufficient to survive
`dismissal under Rule 12(b). These cases
`provide no support for the thesis that the
`pleading requirements established by the
`Supreme Court are overridden by Form
`18.
`Diverging from this insistence that a
`pleading of infringement requires no de-
`tails, the panel majority holds that the
`claims presented by RvL Carriers are for
`indirect infringement, that is, induced and
`contributory infringement, and thus are
`immune from Form 18. My colleagues
`state that this form of infringement is
`indeed subject to Twombly and Iqbal, al-
`though recognizing that ‘‘a claim of indi-
`rect infringement can only arise where
`
`there is direct infringement and the dis-
`trict court concluded that no adequate
`claim of direct
`infringement had been
`pled.’’ Maj. Op. at 1330. The majority
`then evaluates the charges of direct and
`indirect infringement, in the same count of
`the complaint, under entirely separate
`pleading standards. I have come upon no
`support for such a distinction.
`
`II
`
`The complaints contain detailed informa-
`tion, each complaint over one hundred
`pages in length, describing the products
`offered and sold by each of the defendants
`for use in the trucking industry. The com-
`plaints provide the defendants with infor-
`mation as to the patents and specific
`claims that are allegedly being infringed,
`and identify the activities alleged to consti-
`tute infringement, direct and indirect. On
`applying the pleading standards of Twom-
`bly and Iqbal, I conclude that the pleading
`requirements of direct and indirect in-
`fringement are met. To this extent, I
`concur in the decision of the panel majori-
`ty.
`
`,
`
`
`
`
`
`Shane C. HOLLMER and Lee
`E. Cleveland, Appellants,
`
`v.
`Eliyahou HARARI and Sanjay
`Mehrotra, Appellees.
`
`No. 2011–1276.
`
`United States Court of Appeals,
`Federal Circuit.
`
`June 7, 2012.
`Background:
`inventors
` Junior party
`named on pending patent application
`
`Amneal 1034
`Amneal v. Supemus
`IPR2013-00372
`
`

`

`1352
`
`681 FEDERAL REPORTER, 3d SERIES
`
`sought review of decision by Patent and
`Trademark Office, Board of Patent Ap-
`peals and Interferences (Board), 2009 WL
`742691, dismissing junior party from inter-
`ference with senior party’s patent, based
`on unpatentable claims for lack of written
`description due to
`insufficient
`incorpo-
`ration by reference statement. The Court
`of Appeals, Prost, Circuit Judge, 602 F.3d
`1348, reversed and remanded. On remand,
`the Patent and Trademark Office, Board of
`Patent Appeals and Interferences, 2010
`WL 5191054, determined that intervening
`applications sufficiently incorporated pend-
`ing patent application. Senior party ap-
`pealed.
`Holdings: The Court of Appeals, Prost,
`Circuit Judge, held that:
`(1) Board applied
`incorrect evaluation
`standard, and
`(2) under proper standard, intervening ap-
`plications did not sufficiently incorpo-
`rate copending patent application.
`Reversed and remanded.
`
`1. Patents O113(6)
`Court of Appeals reviews the Board of
`Patent Appeals and Interferences’s factual
`findings for substantial evidence and its
`legal determinations de novo.
`
`2. Patents O110
`An application in an interference is
`entitled to the filing date of an earlier-filed
`patent application if the earlier application
`meets statutory requirements for the sub-
`ject matter of the count. 35 U.S.C.A.
`§ 112; 35 U.S.C.(2006 Ed.) § 120.
`
`3. Patents O110
`In order to gain the benefit of the
`filing date of an earlier patent application,
`each application in the chain leading back
`to the earlier application must comply with
`the written description requirement. 35
`U.S.C.A. § 112; 35 U.S.C.(2006 Ed.) § 120.
`
`4. Patents O110
`If any patent application in the priori-
`ty chain fails to make the requisite disclo-
`sure of subject matter, the later-filed ap-
`plication is not entitled to the benefit of
`the filing date of applications preceding
`the break
`in the priority chain.
` 35
`U.S.C.A. § 112; 35 U.S.C.(2006 Ed.) § 120.
`
`5. Patents O113(6)
`in a
`Whether
`intervening patents
`chain of priority maintain the requisite
`continuity of disclosure is a question of law
`the Court of Appeals reviews de novo.
`
`6. Patents O113(6)
`Whether and to what extent a patent
`incorporates material by reference is a
`legal question the Court of Appeals re-
`views de novo.
`
`7. Patents O110
`Proper standard by which to evaluate
`sufficiency of incorporation by reference
`language in intervening patent applica-
`tions, in order to determine whether sub-
`sequent application was entitled to benefit
`of filing date of the first application, was
`whether the identity of the incorporated
`reference would be clear to a person of
`ordinary skill. 35 U.S.C.(2006 Ed.) § 120.
`
`8. Patents O110
`Language in intervening patent appli-
`cations did not identify with detailed par-
`ticularity to a person of ordinary skill that
`they were incorporating copending patent
`application, and thus application claiming
`priority to the chain of such patent applica-
`tions was not entitled to the benefit of the
`priority date of the first filed application.
`35 U.S.C.(2006 Ed.) § 120.
`
`Patents O328(2)
`5,297,148, 5,602,987, 5,828,601. Cited.
`
`

`

`HOLLMER v. HARARI
`Cite as 681 F.3d 1351 (Fed. Cir. 2012)
`
`1353
`
`Deanne E. Maynard, Morrison & Foer-
`ster, LLP, of Washington, DC, argued for
`appellants. With her on the brief were
`Alexander J. Hadjis and Kristin L. Yohan-
`nan; and Gregory W. Reilly, of San Diego,
`CA. Of counsel on the brief were Martin C.
`Fliesler and Joseph P. O’Malley, Fliesler
`Meyer LLP, of San Francisco, CA.
`William A. Birdwell, Davis Wright Tre-
`maine, LLP, of Portland, OR, argued for
`appellees. With him on the brief were
`Timothy R. Volpert and Scott E. Warnick.
`
`Before PROST, MAYER, and
`O’MALLEY, Circuit Judges.
`
`PROST, Circuit Judge.
`This case is a second appeal from the
`United States Patent and Trademark Of-
`fice, Board of Patent Appeals and Interfer-
`ences (‘‘Board’’) involving Patent Interfer-
`ence No. 105,606(JL) between Eliyahou
`Harari and Sanjay Mehrotra (collectively
`‘‘Harari’’), named inventors on pending
`U.S. Patent Application No. 09/310,880
`(‘‘8880 application’’), and Shane C. Hollmer
`and Lee E. Cleveland (collectively ‘‘Hollm-
`er’’), named inventors on U.S. Patent No.
`5,828,601 (‘‘8601 patent’’). The Board en-
`tered judgment against Hollmer after find-
`ing that Harari’s 8880 application was enti-
`tled to the benefit of the filing date of
`Harari’s U.S. Patent Application No.
`07/337,566 (‘‘8566 application’’) and thus
`preceded the date of conception for Hollm-
`er’s 8601 patent. Because the Board mis-
`interpreted our previous decision in Har-
`ari v. Hollmer, 602 F.3d 1348 (Fed.Cir.
`2010) (‘‘Harari I ’’), in finding that continu-
`ity was maintained in the chain of priority
`between the 8566 application and the 8880
`application involved in the interference, we
`reverse the Board’s decision and remand.
`
`I. BACKGROUND
`Harari’s 8880 application was filed on
`May 14, 1999, and is part of a chain of
`patent applications beginning with the 8566
`application, which was filed on April 13,
`1989. The 8880 application is a continua-
`tion of U.S. Patent Application No. 08/771,-
`708 (‘‘8708 application’’), which is a continu-
`ation of U.S. Patent Application No.
`08/174,768 (‘‘8768 application’’), which is a
`continuation of U.S. Patent Application
`No. 07/963,838 (‘‘8838 application’’), which
`is a divisional of the original 8566 applica-
`tion.1
`The 8566 application was filed on the
`same day as Harari’s U.S. Patent Applica-
`tion No. 07/337,579 (‘‘8579 application’’).
`The
`following
`incorporation statement
`from the 8566 application was copied into
`the subsequent applications in the priority
`chain and is at the heart of this appeal:
`Optimized erase implementations have
`been disclosed in two copending U.S.
`patent applications. They are copend-
`ing U.S. patent applications, Serial No.
`204,175, filed June 8, 1988, by Dr. Eliya-
`hou Harari and one entitled ‘‘Multi–
`State EEprom Read and Write Circuits
`and Techniques,’’ filed on the same day
`as the present application, by Sanjay
`Mehrotra and Dr. Eliyahou Harari.
`The disclosures of the two applications
`are hereby incorporate[d] by reference.
`J.A. 1204 (emphasis added). Harari’s 8579
`application is the above-referenced applica-
`tion titled ‘‘Multi–State EEprom Read and
`Write Circuits and Techniques’’ that was
`‘‘filed on the same day’’ as the 8566 applica-
`tion.
`The 8880 application included a photo-
`copy of the 8566 application, a transmittal
`sheet identifying the filing as a continua-
`
`1. The 8838 and 8768 applications ultimately
`issued as U.S. Patent Nos. 5,297,148 and
`
`5,602,987, respectively.
`
`

`

`1354
`
`681 FEDERAL REPORTER, 3d SERIES
`
`tion application, and a preliminary amend-
`ment. The preliminary amendment re-
`vised the above incorporation by reference
`language copied from the 8566 application
`to refer to the 8579 application by both
`serial number and filing date and added
`additional material from the 8579 applica-
`tion.
`During the interference proceedings be-
`fore the Board, Hollmer filed a motion
`arguing that Harari’s involved claims were
`unpatentable under 35 U.S.C. § 112, first
`paragraph, for lack of written description.
`Specifically, Hollmer argued that the 8579
`application was not properly identified in
`the 8880 application’s original disclosure
`because the 8579 application was not ‘‘filed
`on the same day’’ as the 8880 application.
`As a result, Hollmer contended, the mate-
`rial from the 8579 application in the prelim-
`inary amendment was new matter under
`35 U.S.C. § 132.
` The Board agreed,
`granting Hollmer’s motion and entering
`judgment against Harari.
`On appeal in Harari I, we concluded
`that the Board had applied an incorrect
`standard for determining whether the 8579
`application was incorporated into the 8880
`application’s original disclosure, and we ar-
`ticulated a narrow rule for reviewing such
`statements when an applicant seeks to
`amend an ambiguous incorporation state-
`ment at the ‘‘initial filing stage’’: ‘‘The
`proper standard by which to evaluate the
`sufficiency of incorporation by reference
`language, at this stage of the proceedings,
`is whether the identity of the incorporated
`reference is clear to a reasonable examin-
`er in light of the documents presented.’’
`Harari I, 602 F.3d at 1352–53 (emphasis
`added). Applying this standard, we held
`that the reasonable examiner, who had the
`benefit of the transmittal sheet and the
`preliminary amendment, would understand
`that the copied language from the original
`8566 application in the 8880 application re-
`ferred to the 8579 application. Id. at 1353–
`
`54. As a result, the preliminary amend-
`ment was not new matter. Id. We re-
`versed and remanded to the Board for
`further proceedings. Id. at 1354.
`On remand, the Board addressed Har-
`ari’s motion seeking the benefit of the
`filing date of the 8566 application for the
`8880 application. To resolve this motion,
`the Board had to determine whether the
`intervening 8838 and 8768 applications suf-
`ficiently incorporated the 8579 application
`by reference such that 35 U.S.C. § 120’s
`continuity requirements were satisfied. If
`they did, the 8880 application was entitled
`to the benefit of the April 13, 1989 filing
`date of the 8566 application; if they did
`not, the 8880 application was only entitled
`to the benefit of the December 20, 1996
`filing date of the 8708 application, which
`undisputedly discloses the 8579 application.
`The intervening 8838 and 8768 applica-
`tions contain the same incorporation lan-
`guage copied from the 8566 application but,
`unlike the 8880 application, were never
`amended to refer to the 8579 application by
`serial number and filing date. In review-
`ing these intermediate applications, the
`Board continued to apply the Harari I
`reasonable examiner standard, finding that
`‘‘[t]he determining attribute [for determin-
`ing the correct standard] is the status of
`Harari’s involved [8880 application], which
`has not yet issued as a patent.’’ J.A. 17.
`Using this standard, the Board found that
`a reasonable examiner would have had ac-
`cess to all of the filing papers, including
`the transmittal sheets, for the 8838 and
`8768 applications, and consequently would
`have understood that the disputed incorpo-
`ration by reference language in those ap-
`plications referred to the 8579 application.
`J.A. 16–17. Accordingly, the Board deter-
`mined that continuity between the 8566
`and 8880 applications was maintained and
`that the 8880 application was entitled to
`the priority date of the 8566 application.
`
`

`

`HOLLMER v. HARARI
`Cite as 681 F.3d 1351 (Fed. Cir. 2012)
`
`1355
`
`judgment against
`The Board entered
`Hollmer, and Hollmer timely appealed.
`We have jurisdiction under 28 U.S.C.
`§ 1295(a)(4).
`
`II. DISCUSSION
`[1–6] This court reviews the Board’s
`factual findings for substantial evidence
`and its legal determinations de novo. In
`re Constr. Equip. Co., 665 F.3d 1254, 1255
`(Fed.Cir.2011). An application in an inter-
`ference is entitled to the filing date of an
`earlier-filed U.S. patent application if the
`earlier application ‘‘meet[s] the require-
`ments of 35 U.S.C. § 120 and 35 U.S.C.
`§ 112[, paragraph 1,] for the subject mat-
`ter of the count.’’ Hyatt v. Boone, 146
`F.3d 1348, 1352 (Fed.Cir.1998) (footnotes
`omitted); see also Falkner v. Inglis, 448
`F.3d 1357, 1362 (Fed.Cir.2006).2 ‘‘[T]o 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.’’ Zenon Envtl., Inc. v. U.S.
`Filter Corp., 506 F.3d 1370, 1378 (Fed.Cir.
`2007) (quoting Lockwood v. Am. Airlines,
`Inc., 107 F.3d 1565, 1571 (Fed.Cir.1997));
`see also In re Hogan, 559 F.2d 595, 609
`(CCPA 1977) (‘‘[T]here has to be a continu-
`ous chain of copending applications each of
`which satisfies the requirements of § 112
`with respect to the subject matter present-
`ly claimed.’’ (quoting In re Schneider, 481
`F.2d 1350, 1356 (CCPA 1973))) (alteration
`
`2. Section 120 provides for claiming the bene-
`fit of a priority date of an earlier application:
`An application for patent for an invention
`disclosed in the manner provided by the
`first paragraph of section 112 of this title in
`an application previously filed in the United
`States TTT which is filed by an inventor or
`inventors named in the previously filed ap-
`plication shall have the same effect, as to
`such invention, as though filed on the date
`of the prior applicationTTTT
`35 U.S.C. § 120 (2006). Section 112, para-
`graph 1, states:
`
`in original). Thus, if any application in the
`priority chain fails to make the requisite
`disclosure of subject matter, the later-filed
`application is not entitled to the benefit of
`the filing date of applications preceding
`the break in the priority chain. See Lock-
`wood, 107 F.3d at 1571–72; Hogan, 559
`F.2d at 609 (finding that claim 15 was only
`entitled to a 1967 filing date where ‘‘the
`disclosure to support claim 15 appears in
`the 1953 and the 1967 applications, but not
`in the 1956 application’’). Whether the
`intervening patents in a chain of priority
`maintain the requisite continuity of disclo-
`sure is a question of law we review de
`novo. Zenon, 506 F.3d at 1379. Here,
`Harari does not dispute that the interven-
`ing 8838 and 8768 applications must incor-
`porate the 8579 application for the 8880
`application to be entitled to the benefit of
`the filing date of the original 8566 applica-
`tion. Whether and to what extent a patent
`incorporates material by reference also is
`a legal question we review de novo. Har-
`ari I, 602 F.3d at 1351.
`In Harari I, we concluded that when an
`examiner is faced with an amendment clar-
`ifying ambiguous incorporation by refer-
`ence language in an application that is ‘‘at
`the initial filing stage,’’ the reasonable ex-
`aminer standard applies for determining
`whether a document was properly incorpo-
`rated. Id. at 1352–53. We contrasted this
`standard with the standard that generally
`applies to reviewing such incorporation
`
`The specification shall contain a written
`description of the invention, and of the
`manner and process of making and using it,
`in such full, clear, concise, and exact terms
`as to enable any person skilled in the art to
`which it pertains, or with which it is most
`nearly connected, to make and use the
`same, and shall set forth the best mode
`contemplated by the inventor of carrying
`out his invention.
`35 U.S.C. § 112 ¶ 1 (2006).
`
`

`

`1356
`
`681 FEDERAL REPORTER, 3d SERIES
`
`statements: ‘‘[I]f we were determining the
`validity of an issued patent containing the
`disputed incorporation by reference state-
`ment TTT we would be concerned with
`whether one of ordinary skill in the art
`could identify the information incorporat-
`ed.’’ Id. at 1353 n. 2. Because Harari I
`did ‘‘not involve an issued patent or lan-
`guage that is intended to appear in an
`issued patent,’’ we held that the proper
`inquiry focused on the reasonable examin-
`er, not the person of ordinary skill. Id.
`In this second appeal, we address
`whether this reasonable examiner stan-
`dard also applies for determining if the
`intermediary 8838 and 8768 applications
`sufficiently incorporate the 8579 application
`by reference such that they satisfy § 120’s
`continuity requirements. Hollmer argues
`that the Harari I reasonable examiner
`standard is limited to situations in which
`an applicant seeks to clarify an ambiguous
`incorporation
`statement
`through
`an
`amendment that triggers a potential 35
`U.S.C.
`§ 132 new matter problem.
`Where, as here, § 120 priority is at issue,
`Hollmer contends that the incorporation
`by reference inquiry takes place within the
`§ 120 context, applying the person of ordi-
`nary skill standard.
`Harari, on the other hand, argues that,
`under Harari I, these intervening appli-
`cations necessarily incorporate the 8579
`application by reference because the dis-
`puted incorporation language in the 8838
`and 8768 applications is identical to the
`language in the 8880 application deemed
`sufficient in Harari I. If the issue does
`remain open after Harari I, moreover,
`
`3. Alternatively, Harari argues that Hollmer
`waived any arguments with respect to Harari
`I’s application to this priority issue because
`Hollmer never presented these arguments to
`the Board on remand. We disagree. The
`Board sua sponte applied Harari I in ruling
`on Harari’s priority motion without asking for
`briefing or comment on that point. Where
`the Board applies a legal standard that gov-
`
`Harari maintains that the incorporation
`statement is sufficient under the reason-
`able examiner standard.
` According to
`Harari, Harari I set forth the standard
`for identifying an incorporated document
`during examination before the U.S. Pat-
`ent and Trademark Office (‘‘PTO’’)—the
`reasonable examiner standard—and that
`standard is distinct from the one for iden-
`tifying the substantive material incorpo-
`rated from that document—the person of
`ordinary skill standard.
` Because here
`the incorporation issue involves document
`identification, Harari asserts that the
`Board correctly applied the reasonable
`examiner standard
`in finding that the
`8838 and
`8768 applications adequately
`identify the 8579 application.3 Although
`we appreciate the Board’s difficulty in de-
`termining how far to extend our holding
`in Harari I given the opinion’s silence on
`this particular
`issue, we agree with
`Hollmer that the Board should have ap-
`plied the person of ordinary skill stan-
`dard in assessing the disputed language
`in the 8838 and 8768 applications.
`
`[7] First, we are not persuaded by
`Harari’s argument that Harari I resolved
` Harari I
`this
`incorporation question.
`dealt specifically with the language of the
`8880 application viewed in light of the pre-
`liminary amendment and accompanying
`transmittal sheet; it did not consider the
`intervening 8838 and 8768 applications—
`which never were amended—in the context
`of the § 120 priority analysis.
`Second, with respect to the appropriate
`standard for assessing the incorporation
`
`erns its holding, the propriety of that standard
`is properly before us on appeal. See Lebron v.
`Nat’l R.R. Passenger Corp., 513 U.S. 374, 379,
`115 S.Ct. 961, 130 L.Ed.2d 902 (1995) (‘‘Our
`practice ‘permit[s] review of an issue not
`pressed [by a party] so long as it has been
`passed upon [by the court below].’ ’’) (citation
`omitted) (first alteration in original).
`
`

`

`HOLLMER v. HARARI
`Cite as 681 F.3d 1351 (Fed. Cir. 2012)
`
`1357
`
`statements, we disagree with Harari that
`the Harari I reasonable examiner stan-
`dard applies whenever the identity of an
`incorporated document is at issue before
`the PTO. Questions surrounding incorpo-
`ration by reference statements do not
`arise in isolation but instead generally
`manifest as an initial hurdle that first must
`be crossed before reaching an underlying
`issue. It is this underlying issue that pro-
`vides the framework for resolving the in-
`corporation by reference question. For
`example, when the ultimate question impli-
`cates the understanding of a person of
`ordinary skill, such as determining wheth-
`er the written description requirement is
`satisfied, construing claims, or evaluating
`the teachings of a prior art reference, we
`have reviewed the
`incorporation state-
`ments from the person of ordinary skill
`vantage point. See Harari v. Lee, 656
`F.3d 1331, 1334 (Fed.Cir.2011) (‘‘[T]he
`standard is whether one reasonably skilled
`in the art would understand the application
`as describing with sufficient particularity
`the material to be incorporated.’’); Zenon,
`506 F.3d at 1378–79 (same); Cook Biotech
`Inc. v. Acell, Inc., 460 F.3d 1365, 1376
`(Fed.Cir.2006) (same); Advanced Display
`Sys., Inc. v. Kent State Univ., 212 F.3d
`1272, 1283 (Fed.Cir.2000) (same). In as-
`sessing incorporation statements from this
`point of view, our cases have required that
`‘‘the host document TTT identify with de-
`tailed particularity what specific material it
`incorporates and clearly indicate where
`that material is found in the various docu-
`ments.’’ Zenon, 506 F.3d at 1378 (quoting
`Cook Biotech, 460 F.3d at 1376).
`In Harari I, we identified a narrow
`circumstance warranting the application of
`the reasonable examiner standard, but we
`did not alter these traditional rules gov-
`erning the incorporation by reference in-
`quiry. Specifically, Harari I’s modified
`standard applies when an application is at
`the initial filing stage and the examiner is
`evaluating an amendment that clarifies
`
`ambiguous incorporation by reference lan-
`guage. Our predecessor court applied an
`analogous standard under similar circum-
`stances in In re Fouche, 58 CCPA 1086,
`439 F.2d 1237, 1239–40 (1971).
`Here, unlike Harari I or Fouche, we are
`not considering an amendment seeking to
`clarify the incorporation statements in the
`8838 and 8768 applications. Instead, the
`issue before us is whether these interven-
`ing applications maintain continuity be-
`tween the 8566 and 8880 applications by
`disclosing the 8579 application. The conti-
`nuity inquiry provides the backdrop for
`the incorporation by reference analysis.
`In Zenon, where incorporation also was at
`issue, we explained that the continuity in-
`quiry is undertaken using the ‘‘reasonable
`person of ordinary skill in the art stan-
`dard’’:
`[T]he sole question before the district
`court was whether the intervening pat-
`ents maintained the continuity of disclo-
`sure by incorporating by reference the
`gas distribution system disclosed in the
`8373 patent, entitling the 8319 patent to
`an earlier filing date. In this respect,
`the court was required to determine that
`question of law, which we review de
`novo, using the reasonable person of
`ordinary skill in the art standard.
`Zenon, 506 F.3d at 1379. Although Zenon
`involved district court
`litigation rather
`than a PTO interference proceeding, we
`similarly have applied the person of ordi-
`nary skill standard in interferences when
`assessing priority under § 120, see Falk-
`ner v. Inglis, 448 F.3d 1357, 1365 (Fed.Cir.
`2006), and see no reason to depart from
`that standard here. Moreover, § 120 re-
`quires that the disclosure actually appear
`within the specification, Lockwood, 107
`F.3d at 1571–72 (‘‘It is the disclosures of
`the applications that count. Entitlement
`to a filing date does not extend to subject
`matter which is not disclosed, but would be
`
`

`

`1358
`
`681 FEDERAL REPORTER, 3d SERIES
`
`obvious over what is expressly disclosed.’’),
`and amendments in later applications can-
`not cure an otherwise defective application
`in the priority chain, see Encyc. Britanni-
`ca, Inc. v. Alpine Elecs. of Am., Inc., 609
`F.3d 1345, 1351 (Fed.Cir.2010) (holding
`that ‘‘[l]later applications cannot amend
`[an] application and restore its entitlement
`to priority’’). The incorporation by refer-
`ence analysis, therefore, is similarly con-
`strained by the four corners of the applica-
`tion.
`[8] Applying the correct standard, we
`conclude that the disputed language in the
`8838 and 8768 applications does not ‘‘identi-
`fy with detailed particularity what specific
`material it incorporates’’ to a person of
`ordinary skill. Zenon, 506 F.3d at 1378.
`Unlike the 8566 application, neither the
`8838 application nor the 8768 application
`was ‘‘filed on the same day’’ as, or ‘‘co-
`pending’’ with, the 8579 application. At
`least two other applications by named in-
`ventors Mehrotra and Harari, however,
`were ‘‘copending’’ with the 8838 application
`and had the same title as the 8579 applica-
`tion: U.S. Patent Application Nos. 07/508,-
`273 and 07/734,221. J.A. 297. Thus, on its
`face, the incorporation language does not
`directly lead one of ordinary skill to the
`8579 application but rather presents sever-
`al potential documents for incorporation.
`Such ambiguity in incorporation does not
`suffice. As we have previously cautioned,
`‘‘[P]atent 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 applica-
`tion.’’ Zenon, 506 F.3d at 1382 n. 3. With-
`out the incorporation of the 8579 applica-
`tion in the 8838 and 8768 applications, the
`8880 application is not entitled to the bene-
`fit of the priority date of the 8566 applica-
`tion.
`
`III. CONCLUSION
`We have considered Harari’s additional
`arguments and conclude that they similar-
`
`ly lack merit. For the above reasons, we
`reverse the Board’s decision and remand
`for the Board to enter judgment that the
`effective filing date of the 8880 application
`is December 20, 1996—the filing date of
`the 8708 application—and for further pro-
`ceedings consistent with this opinion.
`
`REVERSED AND REMANDED
`
`,
`
`
`
`
`
`TOSHIBA CORPORATION,
`Plaintiff–Appellant,
`
`v.
`
`IMATION CORP., Moser Baer India
`Ltd., Glyphics Media, Inc., CMC Mag-
`netics Corp., Hotan Corp., Khyperme-
`dia Corp., Ritek Corp., and Advanced
`Media, Inc., Defendants–Appellees.
`
`No. 2011–1204.
`
`United States Court of Appeals,
`Federal Circuit.
`
`June 11, 2012.
`Background: Manufacturer of recordable
`DVDs and
`recordable DVD devices
`brought action against competitor, alleging
`patent
`infringement. Competitor moved
`for summary judgment. The United States
`District Court for the Western District of
`Wisconsin, Stephen L. Crocker, United
`States Magistrate Judge, granted motion.
`Manufacturer appealed.
`Holdings: The Court of Appeals, Moore,
`Circuit Judge, held that:
`(1) competitor’s customers’ use of unfinal-
`ized DVDs was substantial noninfring-
`ing use of manufacturer’s patent di-
`rected to writing of data onto DVDs;
`
`