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Extrinsic Evidence Intrinsic Evidence

McDermott Will & Emery

Resorting to Extrinsic Evidence Is Necessary When Intrinsic Evidence Is Muddied

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The US Court of Appeals for the Federal Circuit determined that the limitation “a pH of 13 or higher” could not be construed using the asserted patents’ intrinsic evidence and therefore remanded to the district court with...more

McDermott Will & Emery

Context Is Key in Claim Construction

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The US Court of Appeals for the Federal Circuit reiterated that intrinsic evidence trumps extrinsic evidence in determining the meaning of claim terms. Sequoia Technology, LLC v. Dell, Inc. et al., Case Nos. 21-2263; -2264;...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (January 17 – January 20): “Larger Than” Or “Large Enough”?

If you think claim construction is more fun than watching paint peel, then you’re probably a patent lawyer. And what’s more fun than claim construction? Claim construction with an indefiniteness challenge, as happened in this...more

McDermott Will & Emery

Dictionaries Don’t Know Best: The Intrinsic Record Prevails (Again)

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The US Court of Appeals for the Federal Circuit addressed the tension between the intrinsic and extrinsic record in claim construction, holding that the intrinsic record should be relied on first. The Court therefore reversed...more

McDermott Will & Emery

Terms of Degree Not Always Indefinite

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The US Court of Appeals for the Federal Circuit overturned a district court determination that the claim terms “resilient” and “pliable” were indefinite. The Federal Circuit found that the claims, while broad, were...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - August 2021: Federal Circuit Remands for Board's Improper Use of Extrinsic Evidence During Claim...

In Seabed Geosolutions (US) Inc. v. Magseis FF LLC, the Federal Circuit vacated and remanded an inter partes review decision for the Patent Owner. The Court held that the Patent Trial and Review Board failed to perform the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - August 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

McDermott Will & Emery

Stick to the Fax: Conflicting Statements Made During Prosecution Lead to Indefiniteness

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In deciding whether use of the term “passive link” to define a connection between a computer terminal and a fax machine rendered a patent claim indefinite, the US Court of Appeals for the Federal Circuit affirmed the district...more

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