Article suggestion: Disparate treatment of incorporation by reference between §112 and §101

If anyone is looking for a short article topic, they might want to look at Judge Taranto’s recent opinion for the Federal Circuit in ADAPTIVE STREAMING INC. v. NETFLIX, INC., No. 2020-1310 (Fed. Cir. Dec. 14, 2020) and compare it to Judge Lourie’s opinion for the Federal Circuit in Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374 (Fed. Cir. 1999).

In Adaptive Streaming, the Federal Circuit takes into account material incorporated by reference in a patent specification to assess patent eligibility:

The written description, through material incorporated by reference, itself explains the familiarity of translation of content—from a format (including a language) of a sender to one suited to a recipient—as a fundamental communication practice in both the electronic and pre-electronic worlds. J.A. 337-38. We have held that the ideas of encoding and decoding image data and of converting formats, including when data is received from one medium and sent along through another, are by themselves abstract ideas, and accordingly concluded that claims focused on those general ideas governing basic communication practices, not on any more specific purported advance in implementation, were directed to abstract ideas.

ADAPTIVE STREAMING INC. v. NETFLIX, INC., No. 2020-1310 (Fed. Cir. Dec. 14, 2020)(slip. opinion at page 6).

In Atmel, however, the Federal Circuit noted that material incorporated by reference (from a non-patent document), could not be relied upon for §112,¶6 purposes:

Section 112, ¶ 6, however, does not have the expansive purpose of ¶ 1. It sets forth a simple requirement, a quid pro quo, in order to utilize a generic means expression. All one needs to do in order to obtain the benefit of that claiming device is to recite some structure corresponding to the means in the specification, as the statute states, so that one can readily ascertain what the claim means and comply with the particularity requirement of ¶ 2. The requirement of specific structure in § 112, ¶ 6 thus does not raise the specter of an unending disclosure of what everyone in the field knows that such a requirement in § 112, ¶ 1 would entail. If our interpretation of the statute results in a slight amount of additional written description appearing in patent specifications compared with total omission of structure, that is the trade-off necessitated by an applicant’s use of the statute’s permissive generic means term.

Atmel argues that even though the text of the Dickson article is not in the specification, sufficient structure is nevertheless disclosed in the specification, and that the district court erred in limiting possible structures corresponding to the high-voltage generating means to those structures included in the Dickson article. While we do agree with ISD that the district court properly held that the Dickson article may not take the place of structure that does not appear in the specification, the specification plainly states that “[k]nown Circuit techniques are used to implement high-voltage circuit 34. See On-Chip High Voltage Generation in NMOS Integrated Circuits Using an Improved Voltage Multiplier Technique, IEEE Journal of Solid State Circuits . . . .” ‘811 patent, col. 4, ll. 58-62. Atmel’s expert, Callahan, testified that this title alone was sufficient to indicate to one skilled in the art the precise structure of the means recited in the specification. The record indicates that that testimony was essentially unrebutted. That being the case, we conclude that summary judgment was improperly granted invalidating the ‘811 patent for indefiniteness under § 112, ¶ 2. We therefore reverse the grant of summary judgment of invalidity and remand for further consideration of other issues consistent with this opinion.

Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999)

Query: In what other cases has the Federal Circuit looked to material incorporated by reference when making §101 determinations?

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