In Monsanto Technology v. Dupont, the Court of Appeals for the Federal Circuit found no err in a claim construction by the Patent Trial and Appeal Board (PTAB) of the USPTO that interpreted the limitation "about 3% or less" to encompass a range that includes 4%. The Court noted that intrinsic evidence, including an example in the patent specification and a reference listed in the example, supported the construction. The Court also rejected an argument that the PTAB violated the essence of an anticipation finding — that a single reference disclose each and every limitation of a claim — by relying on extrinsic expert declarations in addition to the allegedly anticipatory reference. Use of the declarations was proper, the Court explained, because they were not used as prior art themselves, but rather simply to demonstrate what the allegedly anticipatory reference inherently discloses.
References included in a patent specification can impact the meaning of claim language
The Court held that the Patent Trial and Appeal Board of the USPTO did not err in construing the claim term "about 3% or less" to encompass a range that includes 4%. To support this construction, the Court noted that the specification includes an example describing a parent soybean line having the required content of "about 3%." Importantly, the example also included a reference, identified as a source of the parent soybean line, that states that the relevant range for that particular line extends "from 2.3% to 4.1%." In light of this intrinsic evidence, the Court agreed with the PTAB that "a person having ordinary skill in the art ('PHOSITA') would reasonably consider 'about 3%' to encompass a range that includes 4%."
References included in examples, or any part, of the patent specification impact the meaning of claim language. It's inmportant to understand the full disclosure of any such references so that the potential impact on claim language can be evaluated and considered.
Use of extrinsic evidence to demonstrate what is inherently disclosed by an allegedly anticipatory reference is proper
Monsanto argued that the Patent Trial and Appeal Board of the USPTO impermissibbly looked to "non-prior art data" and "secret data" by using expert declarations to support a finding of anticipation. Monsanto argued, in essence, that the PTAB, by looking beyond a single reference, violated the essence of an anticipation finding — that a single reference disclose each and every limitation of a claim.
The Court rejected this argument, stating firmly that "Monsanto confuses prior art with extrinsic evidence used to support what is 'necessarily present' in a prior art's teaching." Use of the extrinsic declarations to interpret a potentially anticipatory reference was proper, the Court explained, because the declarations do not expand the meaning of the reference or serve as prior art themselves. They merely demonstrate what is inherently disclosed in the reference.
"It is well established that such reliance on extrinsic evidence is proper in an inherency analysis."
Monsanto tried to use the unpublished nature of the declarations to characterize them as off-limits "secret data." In rejecting this argument, the Court reminds Monsanto that the declarations "were not used as the single prior art anticipatory reference," bbut rather as extrinsic, explanatory material. And, because "extrinsic evidence need not antedate the critical date of the patent at issue," the unpublished nature of the declarations is irrelevant.