Appeal No. 2005-1431
Application 09/442,070
'508 patent, col. 2, ll. 17-30 (emphasis added). The Federal Circuit held that it was proper to rely
on the '508 patent for the definition:
The term "epithelial layers" may arguably be subject to two
interpretations. . . . Even accepting that the disclosure in the '389
specification itself is less than clear as to which interpretation is correct,
the second important disclosure of the '389 specification is dispositive. As
noted, the '389 patent specification expressly incorporates by reference the
procedure for preparing intestinal submucosa from the '508 patent.
"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." Advanced
Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 [54 USPQ2d
1673, 1679] (Fed. Cir. 2000) (citations omitted). "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. (citations omitted).
Whether and to what extent material has been incorporated by reference
into a host document is a question of law. Id.
The relevant portions of the '508 patent specification are as
follows: . . .
As this disclosure makes clear: (1) "the luminal portion of the
tunica mucosa" is represented by "layer G" in Figure 1 of the '508 patent,
and (2) layer G in that figure corresponds to the lamina epithelialis
mucosa and its lamina propria. . . .
Cook Biotech, 460 F.3d at ___, 79 USPQ2d at 1872-73 However, because the court was not
called upon to determine whether the incorporation by reference is effective with respect to
subject matter in the '508 patent other than the disclosed procedure for preparing intestinal
submucosa, for which it was specifically cited, the court's quotation of Advanced Display's
admonition that "[t]o 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" arguably constitutes dictum rather than a holding.
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