C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart A—Trial Practice and Procedure

37 C.F.R. § 42.6

Filing of documents, including exhibits; service

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(a) General format requirements. (1) Page size must be 8 1/2 inch × 11 inch except in the case of exhibits that require a larger size in order to preserve details of the original.

(2) In documents, including affidavits, created for the proceeding:

(i) Markings must be in black or must otherwise provide an equivalent dark, high-contrast image;

(ii) 14-point, Times New Roman proportional font, with normal spacing, must be used;

(iii) Double spacing must be used except in claim charts, headings, tables of contents, tables of authorities, indices, signature blocks, and certificates of service. Block quotations may be 1.5 spaced, but must be indented from both the left and the right margins; and

(iv) Margins must be at least 2.5 centimeters (1 inch) on all sides.

(3) Incorporation by reference; combined documents. Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.

(4) Signature; identification. Documents must be signed in accordance with §§ 1.33 and 11.18(a) of this title, and should be identified by the trial number (where known).

(b) Modes of filing. (1) Electronic filing. Unless otherwise authorized, submissions are to be made to the Board electronically via the Internet according to the parameters established by the Board and published on the Web site of the Office.

(2)(i) Filing by means other than electronic filing. A document filed by means other than electronic filing must:

(A) Be accompanied by a motion requesting acceptance of the submission; and

(B) Identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board.

(ii) Mailed correspondence shall be sent to: Mail Stop PATENT BOARD, Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.

(c) Exhibits. Each exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.

(d) Previously filed paper. A document already in the record of the proceeding must not be filed again, not even as an exhibit or an appendix, without express Board authorization.

(e) Service. (1) Electronic or other mode. Service may be made electronically upon agreement of the parties. Otherwise, service may be by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®.

(2) Simultaneous with filing. Each document filed with the Board, if not previously served, must be served simultaneously on each opposing party.

(3) Counsel of record. If a party is represented by counsel of record in the proceeding, service must be on counsel.

(4) Certificate of service. (i) Each document, other than an exhibit, must include a certificate of service at the end of that document. Any exhibit filed with the document may be included in the certification for the document.

(ii) For an exhibit filed separately, a transmittal letter incorporating the certificate of service must be filed. If more than one exhibit is filed at one time, a single letter should be used for all of the exhibits filed together. The letter must state the name and exhibit number for every exhibit filed with the letter.

(iii) The certificate of service must state:

(A) The date and manner of service; and

(B) The name and address of every person served.

[77 FR 48669, Aug. 14, 2012, as amended at 79 FR 63043, Oct. 22, 2014; 80 FR 28565, May 19, 2015]
Notes of Decisions
Cited in 8 cases (4 in the last 5 years), 2016–2023 · leading case: Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.
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Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (2016) cafc · cites it 3× “23 (b)' and improperly incorporated arguments by reference from an-, other document in violation of 37 C.F.R. § 42.6 (a)(3) are reviewed for an abuse of discretion.”
Parus Holdings, Inc. v. Google LLC (2023) cafc · cites it 4× “The Board declined to consider Parus’s arguments and evidence that the challenged patents were conceived and reduced to practice prior to Kovatch’s priority date because it found that Parus had failed to comply with 37 C.F.R. § 42.6 (a)(3), which prohibits incorporation by…”
Bozeman Financial LLC v. Federal Reserve Bank (2020) cafc “(citing 37 C.F.R. § 42.6 (a)(3)). The Board nevertheless viewed as applicable the reasoning it provided in the CBM related to the ’840 patent and held ineligible the claims of the ’640 patent.”
Parus Holdings, Inc. v. Google LLC (2023) cafc · cites it 4× “The Board declined to consider Parus’s arguments and evidence that the challenged patents were conceived and reduced to practice prior to Kovatch’s priority date because it found that Parus had failed to comply with 37 C.F.R. § 42.6 (a)(3), which prohibits incorporation by…”
3m Company v. Evergreen Adhesives, Inc. (2021) cafc · cites it 3× “The Board rejected 3M’s Request for Rehearing as an attempt to introduce ar- gument by citation to its expert’s declaration in violation of 37 C.F.R. § 42.6 (a)(3), the Board’s rule against Case: 20-1738 Document: 33 Page: 3 Filed: 06/25/2021 3M COMPANY v.”
General Access Solutions, Ltd. v. Sprint Spectrum L.P. (2020) cafc · cites it 2× “The Board determined that GAS’s briefing on the issue of prior conception violated 37 C.F.R. § 42.6 (a)(3), which specifies that “[a]rguments must not be incorporated by reference from one document into another document.”
Boston Scientific v. Nevro Corp. (2020) cafc · cites it 2× “Lipson’s Declaration 37 C.F.R. § 42.6 (a)(3) provides that “[a]rguments must not be incorporated by reference from one document into Case: 19-1582 Document: 91 Page: 17 Filed: 05/29/2020 BOSTON SCIENTIFIC v.”
Guardant Health, Inc. v. Vidal (2023) cafc “This argument is inapt because Guardant’s response brief maps claim 1’s el- ements to Guardant360 by relying on the evidence and ex- pert declaration, not by incorporating legal arguments.”
— 37 C.F.R. § 42.6(a)(3) — 1 case
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (2016) cafc “23 (b)' and improperly incorporated arguments by reference from an-, other document in violation of 37 C.F.R. § 42.6 (a)(3) are reviewed for an abuse of discretion.”
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