It is Improper to Consider Extra-Record Claim Construction Evidence On Appeal

Apple v. Samsung (Fed. Cir. 2016) (En banc)

Note: This SamsApple case is not the design patent damages case now before the US Supreme Court. Rather, this case involves Apple’s patents covering slide-to-unlock; phone number recognition; and auto spell correction. At the district court, the jury found that three of Apple’s touch-screen patents infringed by Samsung devices (resulting in $119.6 million in damages).  The jury also found one Samsung patent  infringed by Apple, but only awarded less than $200,000 in damages.  In a February 2016 opinion authored by Judge Dyk, the Federal Circuit reversed the jury verdicts – finding two of Apple’s patents invalid as obvious and the other not-infringed.

Now, in a surprise en banc ruling Friday, the Federal Circuit has chastised the that original panel in this case – writing to:

[A]ffirm our understanding of the appellate function as limited to deciding the issues raised in the appeal by the parties, deciding these issues only on the basis of the record below, and as requiring appropriate deference be applied to review of fact finding.

Zeroing in here, the en banc found that the original panel had improperly considered “extra-record extrinsic evidence to construe a patent claim term.”

Prior to Teva v. Sandoz (and especially prior to Phillips v. AWH) Federal Circuit panels regularly relied upon extra-record evidence such as dictionary definitions in reaching appellate decisions.  In Phillips, the court shifted focus away from dictionary definition toward intrinsic evidence such as the patent document and prosecution history.   Then, in Teva, the Supreme Court held that extrinsic factual conclusions of a district court must be given deference on appeal.  According to the en banc panel here – “After Teva, such fact findings are indisputably the province of the district court.”  With this framework, the en banc majority then offered its holdings:

(1)  the appellate court cannot rely on extra-record extrinsic evidence in the first instance or make factual findings about what such extrinsic evidence suggests about the plain meaning of a claim term in the art at the relevant time or how such extra record evidence may inform our understanding of how the accused device operates

(2) the appellate court is not permitted to reverse fact findings that were not appealed; and

(3) the appellate court is required to review jury fact findings when they are appealed for substantial evidence.

In discussing the obviousness determination, the en banc majority noted that the panel (and en banc dissents) raise important questions, but found those questions must wait for a different case since “no party—at the panel or the petition for rehearing en banc stage—invited this court to consider changing the existing law of obviousness.”

After chastising the original panel, the en banc majority then reaffirmed the jury verdicts – finding them supported by substantial evidence and thus reinstated the verdict for Apple.

The en banc opinion judgment here was 8-4 8-3 with Judge Moore authoring the 7-member majority opinion; Judge Hughes concurring in judgment but without authoring any opinion whatsoever; The original panel members, Chief Judge Prost, Judge Dyk, and Judge Reyna each dissented and each authored their own opinions; and Judge Taranto not participating.

Judge Dyk’s is the most interesting in the way that it reveals some inner-court-workings:

 For the first time in 26 years, this court has taken an obviousness case en banc. See In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en banc). Remarkably, the majority has done so without further briefing and argument from the parties, amici, or the government, as has been our almost uniform practice in this court’s en banc decisions. . . .

The present en banc decision will have a significant and immediate impact on the future resolution of obviousness issues. While purporting to apply established circuit law, the majority is in fact making significant changes to the law as articulated by the Supreme Court. Indeed, as Judge Reyna convincingly points out, it is difficult to understand how this case would satisfy the requirements for en banc review if the majority’s purpose were not to clarify the law.

The majority states that it takes this case en banc to correct the original panel’s reliance on extra-record evidence. This could hardly be the reason the majority has granted en banc review, since the panel has continuingly expressed willingness, and indeed desire, to eliminate references to any extra-record evidence because of concerns raised in Apple’s petition for rehearing and because they were unnecessary to the panel opinion. . . . [T]he principles that the majority announces are inconsistent with the Supreme Court’s decisions in KSR, Graham v. John Deere, as well as earlier Supreme Court cases, and will make proof of obviousness far more difficult.

Judge’s Prost and Reyna also agreed that the majority’s application of the law in this case is inconsistent with Supreme Court precedent.

If you made it here, then you you see that there is substantially more to discuss – save that for the next post.


34 thoughts on “It is Improper to Consider Extra-Record Claim Construction Evidence On Appeal

  1. 11

    “[T]he principles that the majority announces are inconsistent with the Supreme Court’s decisions in KSR, Graham v. John Deere, as well as earlier Supreme Court cases, and will make proof of obviousness far more difficult.”

    Whoo hoo!

  2. 9

    Paul Cole The people who make wall-mounted thermostatic controls probably do not also make mobile phones

    This “argument” is so incredibly silly it makes me laugh harder every time I see it.

    The people who make “wall mounted thermostatic controls” probably do not make “wall mounted oxygen level controls for space shuttles.” So what?

    The people who make “wall mounted thermostatic controls” probably do not make”refrigerator-mounted weather displays.” So what?

    So what? What does it have to do with the obviousness of using existing touch screen swiping “technology” to turn something on and off?

    1. 9.1


      I sincerely hope you do not write specifications for filing via the PCT or for subsequent regionalisation in the EPO. If you do, and you place so little weight on field of endeavour, your clients will be severely disadvantaged over here. Ask any European practitioner.

      And I don’t think field of endeavour is as unimportant as you think, even in the US. Its advantages are simply overlooked.

    2. 9.2

      Come to think of it, here is part of PCT Rule 5.1 which the US signed up to some years ago:

      (a) The description shall first state the title of the invention as appearing in the request and shall:

      (i) specify the TECHNICAL FIELD to which the invention relates;

      (ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, CITE the documents reflecting such art;

      (iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the ADVANTAGEOUS EFFECTS, if any, of the invention with reference to the background art;

      (iv) briefly describe the figures in the drawings, if any;

      (v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed …

      Fashionable opinion in the US omits definition of field of endeavour, fails to identify a relevant document in that field and avoids stating advantageous effects which might turn out to support patentability. All to avoid “patent profanity”. More fool those who disregard the wise advice contained in this internationally agreed PCT rule.

      1. 9.2.1

        Unfortunately Mr. Cole, patent profanity is not something that one is free to ig nore and must be “scriven” around.

        (Not that your international advice is not bad – it isn’t – not is it necessarily overbearing in the EPO uber alles manner)

    3. 9.3

      Obviousness has to do with PHOSITA.

      As explicated previously, just because art is prior, does not make it prior art.

      The world of prior art is different for 102 than it is for 103.

      To be prior art for 103, it is simply not enough that the art was prior.

      That type of thinking confuses the difference between 102 and 103.

      1. 9.3.1

        To clarify that last sentence, the “that type” was in reference to Malcolm’s version that appears to ig nore PHOSITA.

  3. 7

    Owen, I will not expressly agree with your opinion here, for the usual good reasons, even if I wanted to.
    But I am willing to express as a general principle that one cannot easily salvage on appeal what one did, and/or failed to do, at the D.C.

  4. 6

    Apart from the question of the record on which the case is decided, which is of lesser interest to us in Europe, the decision is highly interesting in terms of the actual obviousness decision, and there are many points which resonate with us in Europe.

    Transfer of technology from one field to another is important, and recognition that it was not automatic to transfer from a wall-mounted device to an in-pocket device points towards the kind of reasoning that is commonly used in Europe. The people who make wall-mounted thermostatic controls probably do not also make mobile phones, and the decision recognises this real-world reality. “Field of the invention” is a key parameter which is given far less weight than it deserves amongst US practitioners.

    Circumstantial or so-called “secondary” evidence pointed overwhelmingly towards unobviousness. The contemporaneous cheers for the slide-to-unlock feature from the audience at the iPhone launch event are far more representative of reality than the hindsight expert analysis of experts (“Of course it would have been obvious to ME! I am VERY CLEVER, and I now know what the invention was.”).

    @MM @3.1.1

    Did you know that the wining number in a state lottery differs by only a single digit from the next number. In a multi-digit number having a numerical value of millions or tens of millions a difference of 1 is insignificant being only a tiny fraction of the total. I hope that you have the good fortune ALWAYS to have bought the +1 or -1 ticket because as you know such a trivial difference makes no difference.

    More seriously, in an invention such as slide to unlock, it is not just a question of getting most things right, but of getting everything right so that the problem (pocket dialling) is solved and purchasers will like and intuitively use the feature. Straightforward in hindsight, more difficult in foresight.

  5. 5

    The CAFC is a mess.

    “Luck of the draw” reigns on even the basics of what should or should not be considered patent eligible (or here with obviousness, patentability), and the divisions as evidenced in the en band Alice case not only still exist, but appear to be becoming more and more entrenched.

    Time to start over.

    Congress take note: this is what happens when the court you set up to bring order to patent law is subjected to the wax-of-nose mashing and meddling of the Supreme Court.

    Time for Congress to exercise its Constitutional power of jurisdiction stripping and remove the non-original jurisdiction of patent appeals from the Supreme Court entirely and set up a new (untainted) Article III court for this important area of law (the new Article III court preserves the actual holding of Marbury, providing the necessary judicial review, which does not have to be at the Supreme Court level).

    1. 5.1

      This case presents the schism within the level of the judiciary that itself was appointed by Congress to bring order to patent law (which does NOT mean to write patent law).

      The notes to section 103*** of the Act of 1952 take on a very different tone when one contemplates that Congress had just acted to remove a power from the Court (stripping out the previous power granted to set the meaning of the word “invention” through the use of the t001 of common law evolution – and in its stead, putting in place the concept of “obviousness”).

      To wit: it does not make sense to strip the power and then give it right back to the courts by allowing the courts to be the body that decides how “obviousness” is to develop over time and change in its meaning.

      ***The notes can easily be located at the Cornell website.

  6. 4

    Don’t have time to read this case today, but I see Judge Newman was in the majority. That alone means the case was almost certainly decided correctly; it’s even more likely as both Prost and Dyk were on the losing side.

    1. 4.1

      I agree. Dyk and his sidekick Reyna have been flying rogue and intent on destroying patent rights. It’s about time they received this much deserved smackdown

  7. 3

    As to the slide to unlock patent dual prior art 103 combination or not, I was puzzled to not find any cogent discussion in either the majority or the dissent of the key 103 statutory question of WHO is the person of ordinary skill in the art here, and WHAT IS the art here? An electronic controls user interface designer, or a wall mounted air conditioner controls designer in that art versus a pocket held smartphone controls designer in that art?
    Is not where who is a POSITA and where they would look for electrical controls in mechanical automobile brakes the key dispute in the KSR case?

    1. 3.1

      You did not see any cogent discussion in the dissent about the key statutory questions because Judge Dyk just wanted to whine about being admonished by his colleagues.

      By the way, the “key statutory questions” you pose are “key” primarily because they are mentioned in Graham v. Deere, and not because of routine rigorous application of them by the PTO or the courts. Put another way: when is the last time you saw a rejection from the PTO that explicitly addressed “WHO is the person of ordinary skill in the art”? Or, for that matter, when is the last time you saw a CAFC opinion invalidating a patent based on obviousness that explicitly addressed “WHO is the person of ordinary skill in the art”? I can think of a couple but it is a rare opinion that addresses this Graham prong explicitly.

      1. 3.1.1

        If there’s a slide to unlock touchscreen in the prior art, then — from a technological point of view — what in heck difference does it make whether it’s unlocking the screen on your wall or in your pocket?

        There’s no invention. It’s taking existing technology and using it. Was there some kind of unexpected result here? Of course not.

        But some people at a tradeshow cheered! Whoo-h00! And Apple miraculously managed to sell a bunch of phones which included the feature (any guesses as to the advertising budget for those phones?). Therefore “non-obvious.”

        This is simply “pay to play” and it’s why the post-filing secondary factors are a stain on the US patent system. If you have the money, you can sell your product. If you have the money, you can pay the lawyers and the experts to kick up dust and make a bunch of hay about “commercial success”.

        Who ends up picking up the tab at the end of the day for this silliness? The consumers.

        when is the last time you saw a CAFC opinion invalidating a patent based on obviousness that explicitly addressed “WHO is the person of ordinary skill in the art”?

        It’s not a contested issue in most obvious cases. Why should it be?

        Paul Morgan: a wall mounted air conditioner controls designer

        LOL Good one.

        tourbillion: Judge Dyk just wanted to whine about being admonished by his colleagues.

        Oh, Judge Dyk will be having the last laugh soon enough.


          You miss the point. It doesn’t matter what you think. Nor does it matter what Dyk thinks after the fact. The jury gets to decide because they were the ones who actually heard the case, including all the evidence. If the defendant wanted the particular extrinsic evidence to be considered they could have presented it. It is unfair for Dyk or anyone to substitute their factual findings for those of the jury. His role is to determine whether as a matter of law, taking the facts as heard and weighed by the jury, whether the judgment was erroneous as a matter of law. If not, then he needs to take a seat and uphold the judgment.


          That response is weak as water. It bears no rebuttal. But then I may be applying a normative-intelligo standard that invalidates those who are cognitive-challenged. Sorry for any unintended micro aggressions. It’s just that with so much idiocy on hand, they are hard to avoid.

      2. 3.1.2

        when is the last time you saw a CAFC opinion invalidating a patent based on obviousness that explicitly addressed “WHO is the person of ordinary skill in the art”?

        And for what it’s worth, I can’t remember “the last time I saw this” but that’s because it’s almost always a standard one line mention and it’s almost a b0ring non-issue.

      3. 3.1.3

        Indeed, but KSR is even more relevant. Off the top of my head one Fed. Cir. case that did address this, years ago, involved an electronic sign for a baseball stadium. Reaching the profoundly obvious [and correct] conclusion that electronic signs are designed by electrical engineer POSITAs, not baseball folks.

  8. 2

    The en banc opinion here was 8-4
    8-3, no?
    Per the asterisk footnote on page 2, Judge Taranto didn’t participate.

  9. 1

    Interestingly, since this en banc decision is about not relying in an appeal on extrinsic evidence or argument not raised below and appealed, it not necessarily the end of disputes over these patents. That is, this en banc decision does not preclude any other smartphone or tablet maker or seller other than Samsung from using [in court or in a post-grant proceeding in the future] the same additional art or arguments which the panel decision here is accused of using.

    An interesting question raised on another blog is what happens after this decision to the long established doctrine that the final step of deciding 103 obviousness in particular is a legal question, when the jury verdict below does not decide any underlying facts and merely renders a simple verdict that the patent was not proven invalid?

    1. 1.1

      the legal question has been answered…


      The art and arguments weren’t considered by the majority, remember?

      You can’t bulletproof a junk patent against entities who haven’t had a chance to make the arguments.

      Nice try, though.

      Remind everyone: what’s the cost to throw this in $120 million pile of g@rbage in the re-exam trash? A couple thousand bucks?


          I’m sure Samsung’s lawyers are and were aware of the reexam

          Who cares? This isn’t what Paul is talking about.


            Your reply to me shows that YOU do not know what Paul is talking about.

            You being rude to someone answering the point YOU raise is – sadly – well within your usual low standards.

            But you don’t have to be both wrong and rude all at once.

            Well, maybe YOU do….

    2. 1.2

      Samsung’s counsel in this case makes another in a long line of eight and nine figure errors. Amazing that Samsung can continue to employ these clowns that ruin their case by breaking court rules again and again. In this case they simply fail to preserve essential arguments by contesting them in the appeal explicitly.

      But there have been a long series of similar failures. Do the Koreans not understand that you can fire existing counsel and hire competent people?

    3. 1.3

      My question to Paul was oddly removed.

      Odd, because there was zero snark in the question, and it highlighted a plain fact of law.

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