Posts Tagged: "extrinsic evidence"

CAFC Orders Review of Extrinsic Evidence to Determine Proper Limit of Claimed pH Range

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Actelion Pharmaceuticals Ltd. v. Mylan Pharmaceuticals Inc. vacating an infringement judgment against Mylan in the Northern District of West Virginia. The Federal Circuit remanded the case for further consideration of extrinsic evidence from chemistry textbooks to determine the proper meaning of the claim term “a pH of 13 or higher.”

CAFC: PTAB’s Claim Construction Analysis Improperly Relied on Extrinsic Evidence

On Wednesday, the U.S. Court of Appeals for the Federal Circuit (CAFC), with Chief Judge Moore writing for the court, vacated and remanded a Patent Trial and Appeal Board (PTAB) decision, stating the PTAB erred in construing the claims of Magseis’ U.S. Patent No. RE45,268 (’268 patent). Seabed Geosolutions (US) Inc. v. Magseis FF LLC. In 2017, Magseis FF LLC (predecessor of Fairfield Industries Inc.) sued Seabed Geosolutions (US) Inc. for patent infringement with respect to several of its patents, including the ‘268 patent, in the United States District Court for the Southern District of Texas. On April 27, 2018, Seabed petitioned the PTAB for inter partes review (IPR) of the ‘268 patent on multiple grounds. On review, the PTAB found the asserted claims of Magseis’ ‘268 patent to be valid. PTAB concluded the prior art relied upon by Seabed -i.e. self-orienting gimbaled geophones – failed to prove the challenged claims were unpatentable. Seabed appealed the PTAB’s final written decision to the CAFC.

Federal Circuit Opens the Door to Extrinsic Evidence in Support of Patent Eligibility

A casual observer may read the Aatrix dissent, or cases cited therein, to say it is improper to consider extrinsic evidence.  In particular, the dissent quotes Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017), which says “[T]his court has determined claims to be patent-ineligible at the motion to dismiss stage based on intrinsic evidence from the specification without need for ‘extraneous fact finding outside the record.’”.  But Secured Mail is itself quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016), where the court found it unnecessary to look outside the record because the patent itself admitted so much of the claimed invention employed well-known technology.  Neither Secured Mail nor TLI explicitly prohibited a patentee from relying on extrinsic evidence, especially where the specification does not admit the technology is conventional.