CAFC Note on Incorporating Information By Reference

Fifth Generation Computer Corp. v. IBM, No. 2010-1201 (Fed. Cir., January 26, 2011) (nonprecedential)

On appeal, 5th Generation and IBM tussled over the the construction of the term "root bus controller" in a patent directed to a binary tree parallel computing system.  The district court construed the term to mean "a controller at the highest order position of the binary tree computer system."  5th Generation argued that the term should have a broader construction to mean “any bus controller that is the highest level bus controller in the tree or subtree.”

5th Generation's argument heavily relied on information incorporated by reference in the specification of the disputed patent (the '024 patent), where the two patents (the "Stolfo patents") incorporated by reference allegedly supported the proposed construction.  The Fed. Cir. generally agreed that incorporation by reference could serve this purpose:

We agree with Fifth Generation that the ’024 patent specification does not need to expressly recite concepts disclosed in the earlier Stolfo patents in order to incorporate them into the later patent specification. The clear incorporation by reference suffices to serve that purpose here. See Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) (“Incorporation by reference provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.”).

However,

[W]e do not agree with Fifth Generation that every concept of the prior inventions is necessarily imported into every claim of the later patent. See Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1553 (Fed. Cir. 1996) (“[I]ncorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent.”) . . . Here, the ’024 patent claims are clear in claiming a complete computer system, including specific functionality of the single root bus controller within that computer system. In light of such clear claim language, it is inappropriate to look to the incorporated references to arrive at a stretched reading of those claim limitations. Interactive Gift Express, 256 F.3d at 1331 (“If the claim language is clear on its face, then our consideration of the rest of the intrinsic evidence is restricted to determining if a deviation from the clear language of the claims is specified.”); see also Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (“When the language of a claim is clear, as here, and a different interpretation would render meaningless express claim limitations, we do not resort to speculative interpretation based on claims not granted.”).

[W]e also agree with IBM that the Stolfo patents in fact show that Fifth Generation’s inventor did not claim independent subtree systems in the ’024 patent in the manner now proposed by Fifth Generation. Fifth Generation asserts that the invention claimed in the ’024 patent was merely an enhancement of the inventions claimed in the earlier patents assigned to Fifth Generation. Therefore, under Fifth Generation’s own assertion, at the time of the filing of the ’024 patent, its inventors had claimed subtrees, at least as part of a larger binary tree computer system, in the earlier patents, and yet the ’024 patent inventor, employed by the same company, did not do so in the later patent, thereby demonstrating that such systems are not within the ’024 patent claims’ scope . . . Thus, we conclude that the district court’s construction of the term “root bus controller” requiring that it be the highest order bus controller of the binary tree system was correct.

Read/download the opinion here (link)