Cisco Sys., Inc. v. C-Cation Techs., LLC

Informative decision only: persuasive authority, not binding precedent. When a petition uses footnotes to cite large portions of an expert declaration without sufficient explanation, cites claim charts in the declaration from its own claim charts, or cites the declaration to support conclusory statements the petition does not otherwise explain, that practice amounts to incorporation by reference, which is improper under 37 C.F.R. § 42.6(a)(3). The Board will not consider arguments that are not made in the petition but are instead incorporated by reference to the cited declaration paragraphs and claim charts. No prior precedent directly addressed this issue in the text; the Board relied on the rule itself, 37 C.F.R. § 42.6(a)(3), and the Federal Register commentary explaining its purpose. For petitioners, argument and claim-chart content placed in an expert declaration and merely pointed to from the petition will be disregarded, which here left the petition's anticipation and obviousness grounds deficient and led to denial of institution of all of claims 1-20. For patent owners, the decision supports a preliminary response objecting that a petition circumvents page limits by incorporating a declaration, though the Board addressed the issue on its own review. The Board cited DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999), as persuasive support, and for the obviousness analysis it cited Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). LEGAL TEST OR STANDARD: The Board applied 37 C.F.R. § 42.6(a)(3): "It is improper to incorporate by reference arguments from one document into another document." It identified three practices as incorporation by reference: (1) using footnotes to cite large portions of another document without sufficient explanation of those portions; (2) citing to other claim charts in another document; and (3) citing the declaration to support conclusory statements not otherwise supported in the petition. Its stated purposes were eliminating abuses from incorporation and preventing circumvention of petition page limits. TRIGGERING FACTS: The Petition's section VII-A had four footnotes citing seventeen pages of Dr. Roy's declaration, including eleven pages of claim charts, which was more pages than the section itself. The Petition's claim chart cited paragraphs of the declaration (e.g., ¶ 264 and ¶ 270) that were themselves multi-page claim charts. Conclusory paragraphs on anticipation and obviousness were followed by footnotes to declaration paragraphs (¶¶ 271-273) supplying the reasons for combining. The Board noted the Petition relied on a 250-page declaration. KEY QUOTE: "Accordingly, we will not consider arguments that are not made in the Petition, but are instead incorporated by reference to the cited paragraphs and claims charts of Dr. Roy's Declaration." (Paper 12, p. 10) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited 37 C.F.R. § 42.6(a)(3), 77 Fed. Reg. 48,612, 48,617 (Aug. 14, 2012), and DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999). PRACTICE TIP: Put every argument, element-by-element mapping and motivation-to-combine rationale in the petition itself, within the page limits. Use declaration citations only as supporting evidence for points the petition explains, and never rely on footnotes to declaration paragraphs or claim charts to carry the argument.