In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short, a parenthetical citation was held to be insufficient, while three passages discussing a cited reference met the test.
This patent infringement case involved patents directed to methods for detecting nucleic acids. Defendant advanced two anticipation defenses, both of which were premised on the incorporation of material from one reference into another. Specifically, defendant contended that the asserted patents were anticipated by either (i) the Larsson Dissertation incorporating by reference the Göransson article, or (ii) the Gunderson article incorporating by reference the Levsky article.
Plaintiffs moved in limine under FRE 402 and 403 to preclude defendant from these arguments, contending both anticipation defenses relied on material that was not adequately incorporated by reference. In their motion, plaintiffs noted that the Larsson Dissertation included citations to 131 different publications in its text, but only cited to Göransson three times. Similarly, the text of Gunderson referenced Levsky only once in a parenthetical. Plaintiffs contended that these were “routine academic citations” that failed to make clear what material was being incorporation into the primary reference.
The court agreed with plaintiffs regarding Gunderson, and held that the lone textual citation to Levsky did not identify any specific material from Levsky that was being incorporated into Gunderson. Although Gunderson described the contents of Levsky in a parenthetical, this was, in the court’s view, the equivalent of a “bare footnote” that fell short of the detailed particularity required for incorporation. The court therefore precluded defendant from presenting any testimony or arguments regarding the Gunderson/Levsky defense.
The court reached the opposite conclusion regarding the Larsson Dissertation and its incorporation of Göransson. In so doing, the court pointed out that the Larsson Dissertation substantively discusses Göransson in three passages, including specific teachings about its strategies and methods for detecting nucleic acids. The court also credited the unrebutted testimony by defendant’s expert discussing each of those instances and explaining that one skilled in the art would have understood the Larsson Dissertation to incorporate specific teachings from Göransson.
Practice Tip: When considering an anticipation theory premised on incorporation by reference, a defendant should carefully evaluate whether the primary reference includes specific discussion of the secondary reference and clearly identifies where that subject matter is found. A defendant advancing such a theory should also consider having an expert describe each instance where the secondary reference is mentioned and provide an opinion as to whether a person of ordinary skill in the art would have understood the primary reference to have incorporated the specific teachings from the secondary reference.
Case: 10X Genomics, Inc. et al. v. Vizgen Inc., 1:22-cv-00595 (DDE Jan. 30, 2025) (Kennelly)