The '085 application is 44 pages in length, inclusive of the abstract of the
disclosure. Nowhere in those 44 pages are cells described which have (i) a
cytoplasmic:nuclear volume ratio of 50:50 orless or(ii) cytoplasmic vesicles.
A description of those characteristics is simply lacking in the disclosure of
the '085 application. Therefore, the '085 application fails to describe an
embodiment within the scope of the count of the interference. Accordingly,
Infigen should be denied the benefit of the filing date of the'085 application.
Paper 29, p. 2. We understand UMass' statement relating to the "cytoplasmic:nuclear volume ratio
of 50:50 or less" to refer to volume ratios less than one, such as 10/90 as stated in Infigen's claims.
A reading of the 385 specification reveals that it includes numerous incorporations of other
documents by reference. See Finding F 19. Incorporation by reference has the same effect as if the
host document had set forth the entire text of the incorporated document. Telemac Cellular Com.
v. Topp Telecom Inc., 247 F.3d 1316, 1329, 58 USPQ2d 1545, 1553 (Fed. Cir. 2001); Advanced
Display Sys., Inc., v. Kent State Univ., 212 F.3d 1272, 1282, 54 USPQ2d 1673, 1679 (Fed. Cir.
2000); Modine Manufacturing Co. v. U.S. International Trade Commission, 75 F.3d 1545,1553,37
USPQ2d 1609,1614 (Fed. Cir. 1996); In re Lund, 376 F.2d 982, 989,153 USPQ 625, 631 (CCPA
1967). Thus, on its face, the 385 specification includes the text of the incorporated documents and
the "44 pages" of specification. Therefore, the "44 pages" are not Infigen's full disclosure. UMass'
motion totally ignores these incorporated documents. In challenging the sufficiency of Infigen's
written description, the movant must account for the teachings of the entire specification, not merely
a part of it.. UMass could have accounted for the entire specification by showing for each
incorporated document that it (1) did not describe the challenged limitations or (2) was not, as a
matter of law, properly incorporated by reference.' We decline to search through the incorporated
documents to determine the existence or not of any relevant disclosure or to sua sponte evaluate a
dispositive legal question not raised by the movant in the motion. See Ernst Haas Studio, Inc. v.
Palm Press, Inc., 164 F.3d 110, 111-12, 49 USPQ2d 1377, 1378-79 (2d Cir. 1999). In failing to
address the entirety of the 385 specification, UMass has failed to make out a prima facie case of
entitlement to the requested relief.
3 With regard to documents referenced in a party's specification, § 19 of the Standing Order authorizes
the parties to request copies of all patents and literature referenced in an opponent's specification and requires the
opponent to serve copies of the requested documents within 21 days. Paper 2, § 19. Thus, a party wishing to evaluate
referenced documents does not have to hurit them up.
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