its brief Herman directs our attention to the Herman 7/9 declaration in support of the argument
that Herman alone conceived of the 32 counts. There, Herman does discuss with some
particularity each of the 32 counts. In addition, there are discussions or arguments made by
declarant Herman, explaining why he was the first to conceive. For example, with respect to
count 25 (claim 25), Herman testified that the elements of the claim are state of the art,
encompass the novel features of the independent claim fi7om which claim 25 depends, and
therefore is solely attributable to Herman (ff' 57). Clearly this is an argument advanced by
Herman, yet the argument is not in Herman's brief, but rather in Herman's declaration. Herman
is incorporating by reference those arguments made by the inventor Herman into its brief. Such
incorporation of arguments is not permitted. See LeVeen v. Edwards, 57 USPQ2d 1406, 1412
(Bd. Pat. App. & hit. 2000)(hit. Tr. Sec. Precedential). See Paper 1, Standing Order § 13, citing
to Desilva v. DiLeonard, 181 F.3d 865, 866-867 (7h Cir. 1999) (criticizing incorporation by
reference as a ruse to avoid page limits). By incorporating arguments into its brief, Herman is
taking a chance that we will look at all of the submitted evidence to find the relevant arguments
and explanations necessary to make its case.
During oral argument, when asked why Herman incorporated by reference those
arguments and explanations found in the Herman declaration into the brief, counsel for Herman
explained that he did so to avoid the 25 page limit set by the Standing Order. That response,
however, is dissatisfying. While Herman's brief is within the confines of the page limitation,
Herman has in effect circumvented the page limitation requirement by submitting Herman's 49
page declaration. Counsel for Herman could have asked for a waiver of the page limitation in
ff denotes finding of fact.
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