PTAB Permits Incorporation by Reference in Expert Declaration, PTAB Litigation Blog

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The first step in requesting an inter partes review (IPR) of a granted patent is the filing of a petition before the Patent Trial and Appeal Board (PTAB), in which the petitioner states the grounds for the invalidity of the patent.  The petition (like all documents filed before the PTAB) is subject to a rule that “[a]rguments must not be incorporated by reference from one document into another document.”  37 CFR § 42.6(a)(3).  This is the issue that the PTAB addressed in Group III Int’l, Inc. v. Targus Int’l LLC, IPR2021-00371, Paper 43 (Oct. 21, 2021).  The PTAB here refused to consider arguments incorporated by reference from the exhibits into the petition, but essentially allowed such incorporation by reference in the expert declaration submitted by the petitioner.

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