Federal Circuit Finds a Role for Extrinsic Evidence Post-Teva

Last week, in Virginia Innovation Sciences (“VIS”) v. Samsung, the Federal Circuit provided some indication of the circumstances under which it would defer to a district court’s evaluation of extrinsic evidence in the post-Teva world.  We have previously written about the Supreme Court’s 2015 Teva v. Sandoz opinion, which overturned long-standing precedent, holding that while the ultimate question of claim construction is a matter of law reviewed de novo, underlying factual findings related to claim construction are reviewed for clear error.  Since Teva, the Federal Circuit has managed to find ways to resolve appeals related to claim construction based on intrinsic evidence, allowing for a purely do novo review.  In VIS, however, the Federal Circuit instructed that the extrinsic evidence must be considered when (1) the claim terms at issue are ambiguous even after consulting intrinsic evidence, and (2) the specification suggests that the terms have technical meanings in the art.

VIS appealed the Eastern District of Virginia’s orders for partial summary judgment of non-infringement and invalidity on patents directed to devices that convert compressed video from a mobile phone to a format suitable for display on a larger screen.  The decisions were based on the district court’s construction of a claim that described the conversion of a compressed video signal to a “display format” for display on a larger screen.

The Federal Circuit said it was clear that “display format” required more than simply an uncompressed signal, otherwise “display” would be read out of the term.  Beyond this, however, the Court found that the intrinsic evidence did not provide a complete understanding of the term.  Furthermore, the Court noted that the record suggested that one of skill in the art would understand “display format” to have particular technical characteristics, such that extrinsic evidence would be necessary to construe the term in this case.  While it was necessary to consult extrinsic evidence, the Court found that the current record was insufficiently developed to discern the skilled artisan’s understanding of the term “display format,” and thus remanded.

The Federal Circuit appears inclined to continue resolving claim construction appeals based solely on intrinsic evidence alone, when possible, thereby permitting purely de novo review.  But VIS suggests that the Court will be forced to defer to a district court’s underlying factual findings, in accordance with Teva, when the intrinsic evidence suggests a claim term has a technical meaning that the specification does not provide.