Eliyahou Harari, Robert D. Norman, and Sanjay Mehrotra v. Roger Lee and Fernando Gonzalez, and Andrei Mihnea, Jeffrey Kessenich, and Chun Chen

Unequivocal language may be used to incorporate the disclosure of a previous patent application.

For full opinion:
2011 U.S.App.LEXIS 18210
2011 WL 3849622

Opinion (Moore): In two separate interference proceedings the Board of Patent Appeals and Interferences (the "Board") held claims of Eliyahou Harari's ("Harari") U.S. Patent Application No. 09/056,398 ("'398 application) invalid for lack of written description. Harari attempted to incorporate its earlier U.S. Patent Application No. 07/337,579 ("'579 application") by reference, however the Board felt Harari "failed to identify with sufficient specificity the portions of the '579 application relied upon." In light of the Court of Appeals for the Federal Circuit's own intervening decision in Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010), the Court found the "Board erred in its analysis regarding the incorporation by reference of the '579 application." Concerning the extent of incorporation, the Court held the '398 application incorporated the "entire disclosure of the '579 application." Accordingly, the Court declined to resolve the "technical, fact-intensive question" relevant to the Mihnea et. al decision and VACATED the Board's judgment and REMANDED the case for further proceedings. Finally, the Court found the Board's factual determination in the Lee et. al decision was supported by substantial evidence. The Court AFFIRMED the Board's judgment of lack of patentability, because the '579 application's written description failed to "disclose electrically connecting multiple bit lines to form one bit line."