Cisco v. C-Cation: Incorporation by Reference in IPR Petitions

Expert declarations are a standard part of an inter partes review petition. They explain the technology, the prior art and why a skilled person would have combined references. But a declaration is evidence, not argument. Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454 (Paper 12, 2014), is an early decision in which the Board drew that line firmly. The Board designated it informative, and it is still cited for the rule against incorporating arguments by reference.

Background

Cisco petitioned for inter partes review of a C-Cation patent. For at least some of its grounds, the petition did not itself lay out the analysis connecting the prior art to the claim limitations. Instead, it cited pages of an expert declaration, and the declaration carried the substantive explanation. The effect was to move a significant part of the petition’s reasoning out of the petition and into an exhibit.

At that time, IPR petitions were subject to a page limit. Material placed in a declaration did not count against that limit.

The Board’s decision

The Board declined to consider the arguments that the petition sought to incorporate from the declaration. It relied on 37 C.F.R. § 42.6(a)(3), which provides that arguments must not be incorporated by reference from one document into another.

The Board explained that allowing a petition to incorporate arguments from a declaration would let a petitioner avoid the limits on the length of a petition, because the real argument could be placed in exhibits of any length. More generally, the rule keeps the petition as the single place where the petitioner’s case is stated, so that neither the Board nor the patent owner has to assemble the argument from scattered exhibits.

Because the petition, read without the incorporated material, did not adequately explain the grounds that depended on it, the Board denied the petition as to those grounds.

Why the decision still matters

The rules have changed since 2014. Page limits for petitions were replaced with word counts in 2016, and an IPR petition is now limited to 14,000 words (37 C.F.R. § 42.24(a)(1)(i)). But the reasoning of Cisco applies with equal force: a word limit, like a page limit, would mean little if arguments could be moved into exhibits.

The decision also connects to the statutory and regulatory requirements for petitions. Under 35 U.S.C. § 312(a)(3), the petition must identify the grounds and evidence with particularity. Under 37 C.F.R. § 42.104(b), it must explain how each construed claim is unpatentable and where each element is found in the prior art. A petition that points to a declaration does not meet those requirements on its own. See the basics of an IPR petition.

Lessons for drafting petitions

• Argue in the petition. Each step of the unpatentability analysis, including motivation to combine, should be stated in the petition itself.
• Cite declarations precisely. Pinpoint citations to specific paragraphs that support specific points are proper; block citations to many pages, offered in place of argument, are risky.
• Do not rely on claim charts in exhibits to carry the explanation. Charts placed outside the petition raise the same concern.
• Plan for the word limit. If the analysis does not fit, the usual answer is to narrow the grounds or claims, not to move argument into exhibits.
• Keep the declaration consistent with the petition. The declaration should support, not replace, the petition’s reasoning. Its weight depends on disclosing underlying facts and data (37 C.F.R. § 42.65(a)); see evidentiary considerations in PTAB trials.

The rule in § 42.6(a)(3) is not limited to petitions. Patent owner responses, replies and motions are subject to their own length limits, and the same reasoning applies to them.

Informative status

An informative decision is not binding on other panels, but the Board designates it to illustrate norms of Board practice. Cisco has served that role for incorporation by reference. Because the Board periodically revisits which decisions carry precedential or informative status, readers should check the current lists on the USPTO’s PTAB pages.

Key takeaways

• In Cisco v. C-Cation, IPR2014-00454, the Board refused to consider arguments incorporated into a petition from an expert declaration.
• The Board relied on 37 C.F.R. § 42.6(a)(3) and noted that the practice would evade limits on petition length.
• Grounds that depended on the incorporated material were denied.
• The reasoning applies equally under today’s word limits: the argument must be in the petition.