Judge Stark evaluates adequacy of a prior art patent's incorporation by reference additional material described in another patent
In Sunovion Pharmaceuticals Inc. v. Dey Pharm., L.P., Inc., C.A. No. 06-113-LPS (D. Del. Jan. 18, 2012), Judge Stark recently considered the issue of incorporation by reference in connection with Defendants’ allegation that the patents-in-suit were invalid for anticipation. Defendants contended that the prior art patent's description of additional material in another patent satisfied the requirements for incorporation by reference “because it adequately describe[d] with detailed particularity the specific material incorporated . . . and also clearly indicate[d] where that material [was] found (in the specification of the [other] patent).” Id. at 4. Plaintiff argued that the legal standard was not met “because the prior art patent [was] directed to an entirely different invention that merely refer[ed] to the [other] patent as background, and not as part of the substantive description of the invention.” Id. at 3-4 (internal quotations omitted). Judge Stark decided that, “[a]lthough a close question,” the prior art patent adequately incorporated by reference “the practical utility of the compounds described in the [other] patent[,]” and described them as “an integral aspect of the invention claimed in the [prior art] patent Id. at 4-5.