Extrinsic Evidence in Deciding Claims of Patent Eligibility

Recently, the Federal Circuit opened the door to allowing use of extrinsic evidence in deciding claims of patent eligibility.  In Berkheimer v., HP Inc., the Federal Circuit reviewed a decision by a lower court to invalidate eight patent claims.  The court stated that the “patent eligibility is ultimately a question of law.”  However, it added that the underlying question of whether something is patent eligible also includes factual determination.

In a second case, the Court of Appeals for the Federal Circuit issued an opinion that allowed extrinsic evidence use.  In the decision, Aatrix Software, Inc., v. Green Shades Software, Inc., No. 2017-1452 (Fed. Cir. February 14, 2018), the Federal Circuit held that factual questions can be used to preclude dismissal of complaint of patent ineligibility.  Therefore, factual determinations may now be considered by the court. In effect, motions to dismiss and motions for summary judgment may now consider additional evidence.  In essence, it allows a patentee to add evidence or rely on allegations outside of the patent application itself.  The court may now consider additional evidence offered by the patentee that has been entered into the court record.

Issues Raised in Court Allowed, Though Not Part of Patent Record

For example, in Aatrix, the court considered the complainant’s allegations that the claimed invention “reduces the risk of thrashing.” However, the patent itself made no mention of this.  As the reduced risk of thrashing has become an issued raised and discussed in court, it became part of the court record but was still never officially a part of the patent.  As such, this would be considered extrinsic evidence.  And departing with most precedential decisions, the court in this case decided to rely on the allegations in finding that the patent was patentable because it was not conventional nor routine.

Declarations As Extrinsic Evidence

Specifically, the court noted, as part of the extrinsic evidence considered, that the patentee submitted declarations that discussed the claimed inventions in detail.  And in an opinion that seemed to fault the lower district court for not considering these declarations, the court reversed the district court’s findings.  This seems to be part of a new trend in determining patent eligibility as another recent court case, Inventor Holdings, LLC v. Bed Bath & Beyond, Inc. also allowed reliance on extrinsic information to support patent eligibility.  In Inventor Holdings, the patentee argued its invention required complex programming, but the court noted that the patentee did not cite that in its patent or anywhere in the record.

Many experts in the legal field have read these new holdings to mean that courts may now readily consider extrinsic information included in the record to support claims of patent eligibility.

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