Saturday, August 14, 2021

PTAB decision vacated in Seabed case. When intrinsic evidence is clear, no need to resort to extrinsic evidence.

The outcome was vacate and remand:

Seabed Geosolutions (US) Inc. appeals a final written decision of the Patent Trial and Appeal Board concluding that Seabed failed to prove the challenged claims of U.S. Reissue Patent No. RE45,268 were anticipated or would have been obvious. Seabed Geosolutions (US), Inc. v. Magseis FF LLC, No. IPR2018-00960, 2019 WL 6442060 (P.T.A.B. Nov. 26, 2019) (Board Decision). Because the Board erred in construing the claims of the ’268 patent, we vacate and remand.


The ’268 patent is directed to seismometers for use in seismic exploration. ’268 patent at Abstract. Seismic exploration generally involves sending an acoustic signal into the earth and using seismic receivers called geophones to detect “seismic reflections” from subsurface structures. Id. at 1:27–35, 47–52. Every independent claim of the ’268 patent recites, in pertinent part, a “geophone internally fixed within” either a “housing” or an “internal compartment” of a seismometer. Id. at claims 1, 5, 21, 22. Magseis FF LLC’s predecessor1 sued Seabed for patent infringement in the United States District Court for the Southern District of Texas. Magseis FF LLC v. Seabed Geosolutions (US) Inc., No. 4:17-cv-01458 (S.D. Tex. filed May 11, 2017). On April 27, 2018, Seabed petitioned for inter partes review of the ’268 patent on multiple grounds. The Board instituted review and found that the cited prior art did not disclose the geophone limitation. Based on that finding, the Board determined Seabed failed to prove the challenged claims were unpatentable.

The error by the Board

The Board construed “geophone internally fixed within [the] housing” to require a non-gimbaled geophone. It found, based entirely on extrinsic evidence, that “fixed” had a special meaning in the relevant art at the time of the invention: “not gimbaled.” Board Decision, 2019 WL 6442060, at *7–8. For claim construction, however, we begin with the intrinsic evidence, which includes the claims, written description, and prosecution history. See Tempo Lighting, 742 F.3d at 977. If the meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to extrinsic evidence. See Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1380 (Fed. Cir. 2016) (“Extrinsic evidence may not be used ‘to contradict claim meaning that is unambiguous in light of the intrinsic evidence.’” (quoting Phillips, 415 F.3d at 1324)). The claims recite a “geophone internally fixed within [the] housing.” We conclude, based upon the intrinsic evidence, that the word fixed here carries its ordinary meaning, i.e., attached or fastened. See J.A. 2435–36. The adverb internally and the preposition within straddling the word fixed indicate that it specifies the geophone’s relationship with the housing, not the type of geophone. The plain language therefore supports interpreting “internally fixed within” to mean mounted or fastened inside. This construction is consistent with the specification, which is “‘the single best guide to the meaning of [the] disputed term.’” Phillips, 415 F.3d at 1320–21 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The specification describes mounting the geophone inside the housing as a key feature of the invention. By contrast, it says nothing about the geophone being gimbaled or non-gimbaled. Given that context, a skilled artisan would understand the claim term “geophone internally fixed within [the] housing” merely specifies where the geophone is mounted and has nothing to do with gimbaling.

The specification never mentions gimbaled or non-gimbaled geophones, nor does it provide a reason to exclude gimbals. That silence does not support reading the claims to exclude gimbaled geophones. Cf. Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); Williams v. Gen. Surgical Innovations, Inc., 60 F. App’x 284, 287 (Fed. Cir. 2003) (non-precedential) (“The absence of a requirement to leave the expander in place is not a teaching to remove it.”). Magseis admits that gimbaled geophones were common in the art, yet there is no mention of them in the specification. Appellee’s Br. 44 (“At the time of filing, . . . for marine applications, . . . historically gimbaled geophones were used.”). The specification does, however, disclose a gimbaled clock, revealing that the applicant was aware of gimbals at the time of the invention. ’268 patent at Abstract, 4:20–22, 7:66–8:7. If the patentee had wanted to distinguish between gimbaled and non-gimbaled geophones, it knew how to do so and could have indicated as much in the specification. But it did not. Magseis’ argument that the specification limits the claims to a non-gimbaled geophone is unpersuasive.

Of waiver

We reject Magseis’ contention that Seabed waived certain arguments concerning the prosecution history by failing to raise them below. The doctrine of waiver does not preclude a party from supporting its original claim construction with new citations to intrinsic evidence of record. See Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1346 (Fed. Cir. 2001). Seabed’s arguments on appeal do not change the scope of the construction it advanced below, i.e., that “internally fixed within” does not exclude gimbaled geophones. J.A. 446–51. And Magseis does not claim that Seabed’s arguments rely on intrinsic evidence that was not in the record below. Accordingly, we see no waiver. The intrinsic evidence consistently informs a skilled artisan that “fixed” in the claims means mounted or fastened. Given the clarity of the intrinsic evidence, resort to extrinsic evidence is unnecessary. Thus, to the extent the Board relied on extrinsic evidence to alter the meaning of “fixed” that is clear from the intrinsic evidence, that was error.


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