In General Access Solutions, Ltd. v. Sprint Spectrum L.P., Case No. 19-1856 (Fed. Cir. May 11, 2020) (non-precedential), General Access Solutions (“GAS”) appealed from two final written decisions of the Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding holding that multiple claims of U.S. Patent Nos. 7,173,916 and 6,891,810 were obvious over prior art cited by Sprint Spectrum L.P. (“Sprint”). Specifically, the Board found certain claims to be unpatentable based on various grounds relying on U.S. Patent No. 7,366,133 (“Ahy”) as prior art under 35 U.S.C. § 102(e). During the IPR proceeding, GAS did not argue against the Ahy-based obviousness analysis for many of the challenged claims. Instead, GAS unsuccessfully argued that inventor Paul Struhsaker conceived of the challenged claimed inventions before the July 21, 2000 filing date of Ahy. Even though the court designated its decision “non-precedential,” it offers important guidance.

GAS lost because the Board did not really consider its “swear behind” argument. You see, GAS apparently did not properly present its argument, relying instead on three sentences in its briefing that cited a single paragraph in Mr. Struhsaker’s “swear behind” declaration, which in turn appended a 29-page claim chart that cited to a 37-page slide-deck entitled the “Last Mile System.” In its decision, the Board determined that GAS’s argument of prior conception violated 37 C.F.R. § 42.6(a)(3), which specifies that “[a]rguments must not be incorporated by reference from one document into another document.” The Board declined to consider arguments that were not substantively presented in GAS’s briefing. The Board considered only GAS’s briefing, which “merely direct[ed]” the Board to the arguments and evidence set forth in other documents, and concluded that GAS had not met its burden of establishing that the inventor conceived of the inventions claimed in the two patents before Ahy’s filing date. Further, the Board stated that even if it were to consider these arguments, GAS had nonetheless failed to establish prior conception due to insufficient corroboration of one of the claimed limitations, “determining an optimum modulation configuration.”

In its appeal of the Board’s decision, GAS attempted to point to specific paragraphs in its patent owner response that set forth the argument that Mr. Struhsaker conceived of the claimed subject matter before July 21, 2000. However, the Federal Circuit concluded that the paragraphs GAS identified failed to explain with any specificity how Mr. Struhsaker had conceived of the limitations of his invention. The Federal Circuit added that, for the Board to locate GAS’s arguments, it had to turn to Mr. Struhsaker’s declaration and then delve into the appended 29-page claim chart that referenced the “Last Mile System” slide deck. The Federal Circuit likened this to “playing archaeologist with the record,” stating that avoiding this exercise was precisely what the rule against incorporation by reference was intended to prevent. The Federal Circuit then concluded that without the benefit of the arguments improperly incorporated from the slide-deck-citing claim chart appended to Mr. Struhsaker’s declaration, GAS was left with broad, conclusory allegations that the Board rightfully found insufficient. Absent its failure to establish prior conception, GAS may have enjoyed a different outcome had its brief to the Board run the last mile—by presenting the “swear behind” argument, rather than merely incorporating it by reference.

This decision highlights not only the perils in not following Rule 42.6(a)(3), but also its underlying policy goals. By following the rule, an advocate “minimize[s] the chance that an argument may be overlooked” and “eliminates abuses that arise from incorporation and combination.” Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48,612, 48,617 (Aug. 14, 2012). The Board made clear in announcing the rule that it will not “play archeologist with the record” and search for arguments that might have been made outside of the parties’ briefing. Id. (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (Easterbrook, J.) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”)).