I have further determined that it is desirable to enable software that manages paper so it can be electronically and seamlessly copied in and out of devices and business applications (such as Microsoft Office, Microsoft Exchange, Lotus Notes) with an optional single-step Go operation.⁹

Judge O’Malley, concurring-in-part and dissenting-in-part, countered Judge Newman by stating that, “[r]ead in the context of the entirety of the specification, the more logical conclusion is that the term ‘optional’ modifies the entire term ‘single-step operation,’ meaning that implementing the operation is optional, not that how the operation, once implemented, works is optional.”¹⁰ Judge O’Malley, in other words, viewed the same language as meaning that use of the “Go button” was optional, not that the operation of the “Go button,” once selected, could optionally be performed in a single step. The ‘173 Patent relied on a provisional patent application No.: 60/108,798 (‘798 Provisional), as a priority document, and incorporated by reference teachings from the ‘798 Provisional that clearly specified, according to both Judge Newman in the majority opinion and Judge O’Malley, automatic replication and transfer in one step. They differed, however, in their understanding of whether the ‘173 Patent required “seamless” operation to be a single step. The determination to be made, then, was whether the invention was limited to “a one-step copying and sending process,” as advocated by the patent owner, MPHJ Technology Instruments (MPHJ). A broader reading of the claims would cause the claim to read on prior art identified during the inter partes review, thereby invalidating the claims by statutory anticipation under 35 U.S.C. § 102(b), at least under the so-called “broadest reasonable interpretation” to which claims are subject at the Board and subsequent appeals therefrom to the Federal Circuit. The majority construed the claims more broadly than the single-step interpretation by reference to the provisional application. The court stated that “it is the deletion from the ‘798 Provisional application that contributes understanding of the intended scope of the final application.”¹¹ For the court, interpretation of the teachings in the non-provisional application was to be derived, not solely from the language of the provisional application incorporated by reference but, also, the omission of that language from the non-provisional application, notwithstanding its incorporation by reference. Further, while the majority stipulated that the claims were “given their broadest reasonable interpretation,” there was no indication that the majority intended to limit its holding to claim construction under this standard.¹² The alternative is the so-called “ standard” of patent claim construction employed outside Patent Office jurisdiction, and under which claim terms are given their “ordinary and customary meaning.”¹³ Broadening the court’s holding to judicial claim construction not subject to Patent Office protocol could affect claim interpretation under either circumstance. Regardless, “[t]he broadest reasonable interpretation does not mean the broadest possible interpretation,”¹⁴ suggesting that, even under the broadest reasonable interpretations standard, construction of claim language would favor a clear interpretation from the specification, when present. Even if the court’s holding is limited to rendering ineffective incorporation by reference to correct omissions of claim language, practitioners should take pains to avoid any apparent discrepancies between the teachings of non-provisional applications and teachings that are incorporated by reference, despite the fact that teachings incorporated by reference are treated as “effectively part of the host document as if it were explicitly contained therein” under generally-accepted judicial precedent.¹⁵ The most favorable view of the majority opinion, without disturbing the commonly accepted meaning of “incorporation by reference,” would be that the statements made in the ‘798 Provisional and the ‘173 Patent were both clear on their face, and that the majority opted for the broadest reasonable interpretation when those statements were taken together. However, for such a supposition to carry any weight, the court’s statement that, “it is the deletion from the ‘798 original application that contributes understanding of the intended scope of the final application,” should be considered as only contributing to the understanding that the court would have had if the teachings of the non-provisional and provisional application were, instead, in the same non-provisional application. Otherwise, deletion of the teachings from the ‘798 Provisional in the ‘173 Patent might be considered to override the patentee’s incorporation by reference. If so, this would be new law; there is no precedent for excepting from incorporation by reference teachings that have been omitted, at least in the absence of an explicit disclaimer. Hopefully, there will not be any such interpretation of . Practitioners, regardless, should be careful to properly understand each invention in view of the closest art available before drafting claims and, whenever possible, to include narrowing limitations in dependent claims in order to avoid having to rely on incorporation by reference.

Reprinted with permission from .