Re-thinking Atmel

In 1999, the Federal Circuit decided Atmel Corp. v. Information Storage Devices, Inc., 198 F. 3d 1374 (Fed. Cir. 1999).  The case stands for the proposition that for purposes of a means plus function claim one may not rely on an incorporated reference for the supporting structure or material.  The case was decided 2-1 with the deciding vote being cast by a visiting district court judge sitting by designation on the panel. Re-reading Judge Mayer’s dissenting opinion in that case, it struck me that he had some very valid points, such as the fact that incorporation by reference in other legal documents has a long standing tradition in American law.

You can read Judge Mayer’s dissenting opinion in Atmel here:

MAYER, Chief Judge, dissenting.

I decline to join the court in holding that Atmel Corporation’s (“Atmel”) incorporation by reference of structure supporting the recited high voltage generating means is impermissible. Instead of the bobtailed approach the court today espouses, limiting inquiry to the structure that the mere title of the incorporated article would suggest to one of skill in the art, I would make the entire document available for all it teaches that artisan.

In its order construing claim 1 of United States Patent No. 4,511,811, the district court held that the “high voltage generating means” is a means-plus-function limitation. See 35 U.S.C. § 112, ¶ 6. According to the written description, the corresponding structure for this means is a “high-voltage generator circuit.” Col. 4, ln. 56. The written description explains that “[k]nown circuit techniques are used to implement high-voltage generator circuit 34. See On-Chip High Voltage Generation in NMOS Integrated Circuits Using an Improved Voltage Multiplier Technique, IEEE Journal of Solid State Circuits, Vol SC-11, No. 3, June 1976 [(“Dickson article”)].” Id. at ll. 56-63. Based on this information, the court determined that “known circuit techniques” are “those described in the Dickson article, and no others.” Therefore, it held that “the structure corresponding to the high voltage generating means cannot be any circuits beyond those described in the Dickson article.” Information Storage Devices, Inc. (“ISD”) then moved for a finding of invalidity, based on the theory that if the structure corresponding to a means in a section 112, ¶ 6 claim is described by reference to a non-patent document, the claim is indefinite under section 112, ¶ 2.

ISD argued that the patentee’s incorporation of the Dickson article by reference was improper because it violated section 608.01(p) of the MPEP, which states that “essential material,” defined as material “necessary to (1) support the claims, or (2) for adequate disclosure of the invention (35 U.S.C. [§ ]112),” may not be incorporated by reference to “nonpatent publications.” MPEP § 608.01(p) (4th ed.1981). The district court agreed that it should follow the MPEP’s rules about incorporation by reference because it is “good policy.” The court reasoned that “[i]f someone reading the ‘811 patent must go to a library and find the [Dickson] article in order to determine what specific structure corresponds to the high voltage generating means, the scope of the patent cannot be said to have been fully disclosed, no matter how `well known and readily available’ the article may be.” The court also said the MPEP’s rules are “a reasonable interpretation of the requirements of section 112” and have “the strong advantage of providing a bright-line rule.” Because the Dickson article was the sole support for the means-plus-function limitation, the district court found it was essential material, which was improperly incorporated into the written description. It effectively struck the article from the written description and held that claim 1 was indefinite for lack of structural support in the specification.

If the written description fails to “set forth an adequate disclosure” of a structure corresponding to the means in a means-plus-function claim, then the claim is indefinite, and therefore invalid. In re Donaldson Co., 16 F.3d 1189, 1195, 29 1384*1384 USPQ2d 1845, 1850 (Fed.Cir.1994) (en banc); see also In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1885 (Fed.Cir.1997). The court holds that the written description cannot adequately disclose a corresponding structure by incorporating a document fully describing this structure by reference. But unlike the district court, this court does not rely on the MPEP.

I agree that the MPEP does not control here. Although “the Commissioner of Patents is vested with wide discretion to formulate rules and guidelines governing [the] use [of incorporation by reference], thereby to prevent its abuse,” In re Hawkins, 486 F.2d 569, 573, 179 USPQ 157, 161 (CCPA 1973), these guidelines do “not have the force of law,” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1425, 7 USPQ2d 1152, 1154 (Fed.Cir.1988). “[T]he courts are the final authorities on issues of statutory construction. They must reject administrative constructions of [a] statute . . . that are inconsistent with the statutory mandate or that frustrate the policy that Congress sought to implement.” Id. (quoting Federal Election Comm’n v. Democratic Senatorial Campaign Comm., 454 U.S. 27, 32, 102 S.Ct. 38, 70 L.Ed.2d 23 (1981)).

I disagree with the court, however, that the language of section 112, ¶ 6 itself requires its result. Section 112, ¶ 6 does not expressly say that a structure is not “described in the specification” if it is “in” the specification by virtue of its incorporation by reference. Incorporation by reference is a common drafting tool used throughout the law. See Hawkins, 486 F.2d at 573, 179 USPQ at 161 (The practice of incorporation by reference has “longstanding basis in the law”); General Elec. Co. v. Brenner, 407 F.2d 1258, 1261-62, 159 USPQ 335, 337-38 (D.C.Cir.1968). “As the expression itself implies, the purpose of `incorporation by reference’ is to make one document become a part of another document by referring to the former in the latter in such a manner that it is apparent that the cited document is part of the referencing document as if it were fully set out therein.In re Lund, 376 F.2d 982, 989, 153 USPQ 625, 631 (CCPA 1967) (emphasis added); see also Interstate Consol. St. Ry. v. Massachusetts, 207 U.S. 79, 84, 28 S.Ct. 26, 52 L.Ed. 111 (1907) (“If the charter, instead of writing out the requirements of Rev. Laws, 112, § 72, referred specifically to another document expressing them, and purported to incorporate it, of course the charter would have the same effect as if it itself contained the words.“) (emphasis added); Black’s Law Dictionary 907 (4th ed.1968) (defining “incorporate” as “[t]o declare that another document shall be taken as part of the document in which the declaration is made as much as if it were set out at length therein”). Therefore, unless Congress deviated from this accepted norm, material is “in” the specification if it is incorporated by reference.

The court has cited no authority for the proposition that in enacting section 112, Congress intended to exclude material incorporated by reference from the material that is otherwise “in the specification.” Such an intent would be surprising in light of Congress’ endorsement of the practice in section 112 itself. Under section 112, ¶ 4, “[a] claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.” 35 U.S.C. § 112, ¶ 4; see also id. ¶ 5. As the court recognizes, the specification consists of the written description and the claims. See id. ¶ 1, 2; see also Dossel, 115 F.3d at 945, 42 USPQ2d at 1884. If material incorporated by reference is not “in the specification,” it also cannot be “in the claims.” Under the court’s definition of “in,” therefore, the limitations of the claim to which the dependent claim refers are not “in” the claim by virtue of their incorporation by reference. How, then, could we construe dependent claims to include these limitations, as we have always done? See, e.g., Bloom Eng’g Co. v. North Am. Mfg. Co., 129 F.3d 1247, 1250, 44 USPQ2d 1859, 1861 (Fed.Cir. 1385*1385 1997). Such an interpretation of “in” renders paragraphs 4 and 5 nonsensical.

As the court recognizes, claims may use language that those skilled in the art understand without the need for explicit, detailed definitions in the written description. See, e.g., W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556-58, 220 USPQ 303, 315-16 (Fed.Cir.1983) (claims not indefinite because the evidence showed that those skilled in the art understood their scope even though the written description failed to disclose precise definitions of certain terms of art). We have held claims to be definite, for example, where the written description disclosed only a black box for an electrical component—”digital detector”—because the definition provided in the written description, “a device that `acts to detect the digital signal information’ in another stream of information,” was sufficient in light of the “well-known meaning” of the term “detector” to “those of skill in the electrical arts.” Personalized Media Communications, LLC v. International Trade Comm’n, 161 F.3d 696, 704-06, 48 USPQ2d 1880, 1887-89 (Fed.Cir.1998). We have also held claims definite where the claims recited a structure “so dimensioned,” the written description provided no concrete dimensions, but “those of ordinary skill in the art realized that the dimensions could be easily obtained.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1575-76, 1 USPQ2d 1081, 1088 (Fed.Cir.1986). Finally, In re Skoll, 523 F.2d 1392, 1395-96, 187 USPQ 481, 483 (CCPA 1975), held claims definite after consulting dictionaries to determine that those of ordinary skill would understand the meaning of the recited phrase, “hydrolyzed carbohydrate,” where the written description failed to define the term, “hydrolyzed.”

Acknowledging the perspective of a person of ordinary skill in the art, as the court does, while refusing to afford incorporation by reference the same recognition, is incongruous. If it is appropriate to refer to material not incorporated into the written description by reference—such as dictionaries and material well-known in the art—to determine whether the claims are definite because “[t]hat which is common and well known is as if it were written out in the patent and delineated in the drawings,” Loom Co. v. Higgins, 105 U.S. (Otto.) 580, 586, 26 L.Ed. 1177 (1881), it is certainly appropriate to refer to incorporated material, which is more clearly a part of the written description itself. We have never before discounted the knowledge of those skilled in the art, which includes “the knowledge of where to search out information,” In re Howarth, 654 F.2d 103, 106, 210 USPQ 689, 692 (CCPA 1981). Therefore, if those skilled in the art would understand what a “high voltage generating circuit” is, either by reading the Dickson article or because the circuit is a well-known structure in the art, the claim is definite in accordance with section 112, ¶ 2.

ISD does not dispute that the incorporated Dickson article discloses sufficient structure. The district court should have determined, therefore, whether it is also publicly available. Not all incorporated references will satisfy the requirements of section 112, ¶ 2. A claim must be understandable to those skilled in the art when it is read in light of both the material physically a part of the written description and the material incorporated in it by reference. If an incorporated reference, which is the sole support for a corresponding structure, is publicly unavailable, then the claim is not understandable. See Quaker City Gear Works, Inc. v. Skil Corp., 747 F.2d 1446, 1455, 223 USPQ 1161, 1167 (Fed.Cir.1984) (“Incorporation by reference has never been permissible under 35 U.S.C. § 112 of material necessary for an adequate disclosure which is unavailable to the public.”); Howarth, 654 F.2d at 107, 210 USPQ at 692 (“When an applicant seeks to add necessary information to a specification by incorporating a source for the information by reference, public accessibility of that source alone 1386*1386 may be the controlling factor.”); In re Heritage, 182 F.2d 639, 643, 86 USPQ 160, 164 (CCPA 1950) (“There can be no question but that in a patent application, the disclosure thereof may be supplemented by reference to . . . any . . . disclosure which is available to the public.”).

Whether an incorporated reference is available to the public is a factual inquiry. See In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981) (Public accessibility “involves such factual inquiries as classification and indexing.”). A reference is reasonably accessible to the public, for example, if its incorporation would not be necessary because it is “common or well known,” such as “[w]ell known text books in English” and “U.S. patents,” Howarth, 654 F.2d at 106, 210 USPQ at 692. Similarly, if “interested members of the relevant public could obtain the information if they wanted to,” then the reference is publicly available. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569, 7 USPQ2d 1057, 1062 (Fed.Cir.1988). On the other hand, if a copy of the incorporated reference cannot be produced, the reference is unavailable to the public. See Quaker City, 747 F.2d at 1450, 1455, 223 USPQ at 1163, 1167. Also unavailable are “secret or privileged materials,” “unpublished dissertations and theses,” and “obscure foreign publications.” General Elec., 407 F.2d at 1262-63, 159 USPQ at 338; see also In re Borst, 345 F.2d 851, 854, 145 USPQ 554, 556 (CCPA 1965) (holding that a reference “was clearly not publicly available during the period it was under secrecy classification”). In this case, Atmel presented undisputed evidence that the Dickson article is publicly available because virtually every reputable engineering library in the United States carries the IEEE Journal containing it.

The strongest argument for the court’s outcome relies on its notion of the better public policy. Arguably, it is more convenient for one reading a patent to construe a means-plus-function limitation without having to refer to another document. Proper construction of a claim, however, already requires review of a separate set of documents—the prosecution history. See Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 908, 5 USPQ2d 1788, 1793 (Fed.Cir.1988). Therefore, convenience has not been a paramount concern.

Competing with this concern for convenience is the statutory mandate of conciseness. See 35 U.S.C. § 112, ¶ 1 (“The specification shall contain a written description . . . in . . . concise, and exact terms . . . .”) (emphasis added). In furtherance of this policy goal, we have admonished against including in the specification material that is known in the art. See, e.g., Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534, 3 USPQ2d 1737, 1743 (Fed.Cir. 1987) (“A patent need not teach, and preferably omits, what is well known in the art.”); Howarth, 654 F.2d at 105, 210 USPQ at 691 (“An inventor need not, however, explain every detail since he is speaking to those skilled in the art.”); In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962) (“Not every last detail is to be described, else patent specifications would turn into production specifications, which they were never intended to be.”). Use of incorporation by reference makes the written description more concise. Requiring inventors to include every imaginable detail of a structure corresponding to a claimed means, including those widely understood by persons of ordinary skill in the art, would be the antithesis of conciseness and would result in exceedingly lengthy patents. In any event, by codifying the requirement of conciseness in section 112, ¶ 1, Congress has expressed its preference.

 The Atmel decision is available here: [Read].

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