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)).