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Judge Andrews Finds Prior Art Adequately Incorporates Other Prior Art

Judge Andrews recently granted a motion for summary judgment of invalidity of U.S. Patent No. 7,156,717, which relates to a finishing method for semiconductors. The crucial threshold question presented by the motion was whether the asserted prior art reference adequately incorporated by reference another piece of art. The asserted art, Sun, stated the following about the incorporated art, Litvak:

This [invention] is an improvement and expansion of the invention described in allowed U.S. patent application Ser. No. 08/122,207 of Herbert E. Litvak, filed Sep. 16, 1993, now U.S. Pat. No. 5,499,733. This earlier application is being expressly incorporated herein by this reference, and is referred to hereinafter as the “Prior Application.”

Semcon Tech, LLC v. Micron Tech., Inc., C.A. No. 12-532-RGA, Memo. Op. at 6-7 (D. Del. Aug. 17, 2015). Finding that this was an incorporation by reference, Judge Andrews explained “[i]t is hard to imagine what is required to incorporate something by reference if stating that it is ‘expressly incorporated herein by this reference’ does not suffice.” Id.

The plaintiff’s argument that the incorporation was insufficient was based on the alleged requirement that an incorporation “specify what particular material it is incorporating and where it may be found.” See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Judge Andrews rejected this argument, relying instead on Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed. Cir. 1997), which “accepted that one patent could incorporate another patent by reference and together be one piece of art for purposes of anticipation.” Id.

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