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Federal Circuit Remands for Board's Improper Use of Extrinsic Evidence During Claim Construction

Bylined Articles
Sterne, Kessler, Goldstein & Fox

In Seabed Geosolutions (US) Inc. v. Magseis FF LLC, the Federal Circuit vacated and remanded an inter partes review decision for the Patent Owner. The Court held that the Patent Trial and Review Board failed to perform the proper claim construction when the Board unnecessarily relied on extrinsic evidence that contradicted the intrinsic record.

The Court first noted that the Board construed “geophone internally fixed within [the] housing” to require a non-gimbaled geophone. And that the Board found, based entirely on extrinsic evidence, that “fixed” had a special meaning in the relevant art at the time of the invention: “not gimbaled.”

The Court disagreed with this approach stating, “we begin with the intrinsic evidence, which includes the claims, written description, and prosecution history.” Slip Op. at 3. “If the meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to extrinsic evidence.” Id. at 4. “Extrinsic evidence may not be used ‘to contradict claim meaning that is unambiguous in light of the intrinsic evidence.’” Id.

The Court construed “fixed” in the phrase “geophone internally fixed within [the] housing” to carry its ordinary meaning, “i.e. attached or fastened.” Id. They supported their interpretation using the claim language (id. at 4 “The plain language, therefore, supports interpreting ‘internally fixed within’ to mean mounted or fastened inside.”), the specification (id. 4-7, e.g., “The specification describes mounting the geophone…as a key feature…By contrast, it says nothing about the geophone being gimbaled or non-gimbaled.”), and the prosecution history (id. at 7-8, e.g., “Each time the word fixed came up in prosecution, the applicant and examiner understood it in its ordinary sense, i.e., mounted or fastened”).

As an aside, the Court rejected the Petitioner’s argument that the Patent Owner had waived arguments concerning prosecution history by failing to raise them below. Rather the Court stated, “[t]he doctrine of waiver does not preclude a party from supporting the original claim construction with new citations to the intrinsic evidence of record.” Id. at 7.

In the end, the Court held “to the extent the Board relied on extrinsic evidence to alter the meaning of ‘fixed’ that is clear from the intrinsic evidence, that was an error.” Id. at 8.