September 19, 2021

Volume XI, Number 262

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Federal Circuit Says No to Incorporating Argument by Reference

In 3M Company v. Evergreen Adhesives, Inc., No. 2020-1738 (June 25, 2021), the Federal Circuit affirmed the PTAB’s decision to deny 3M’s Request for Rehearing, upholding the rejection of 3M’s obviousness arguments with respect to two claims of the underlying patent.

In the underlying inter partes review (IPR2018-00576), 3M challenged Evergreen’s ’056 patent, which relates to aerosol-based adhesives. After losing obviousness-based arguments regarding claims 3 and 4, 3M filed a Request for Rehearing regarding those two claims. However, the PTAB denied the request, saying that it was an attempt to articulate an argument that 3M only alluded to in its initial Petition through incorporation by reference to its expert report.

The Federal Circuit agreed, holding that the PTAB did not abuse its discretion by denying 3M’s Request for Rehearing. According to the Court, 3M’s arguments regarding the obviousness of claims 3 and 4 were “skeletal at best” in the initial Petition. Consequently, the Federal Circuit upheld the PTAB’s finding that 3M’s Request for Rehearing was an attempt to introduce an argument by citation to an expert statement, in circumvention of the PTAB’s rule against incorporating arguments by reference (37 C.F.R. § 42.6(a)(3)).

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 182
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About this Author

Matthew Karas Attorney Intellectual Property Finnegan Law Firm Atlanta
Associate

Matt Karas’s practice includes a wide range of intellectual property issues such as patent prosecution, patent application drafting, district court litigation, and U.S. Patent and Trademark Office (USPTO) proceedings. He has extensive experience in electrical and computer technologies, including automobile networking devices, application program interfaces, and digital health products.

Matt leverages his technical experience with electronics to help clients reach desirable IP outcomes. He has helped clients prosecute patent applications in a...

404-653-6439
Kara Specht Patent Litigation Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Law Firm Atlanta GA
Associate

Kara Specht focuses on patent litigation before district courts and before the International Trade Commission (ITC). Her practice covers a wide range of electronic and electrical technology areas related to computers, consumer electronics, and computer-implemented business methods.

Kara has experience in all aspects of patent litigation before district courts, the ITC, and the Federal Circuit. Before district court and the ITC, Kara has experience from both a plaintiff and defendant perspective, ranging from pre-filing planning and strategy,...

404 653 6481
Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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