8 F.4th 1285
Fed. Cir.2021Background
- The patent (U.S. Reissue No. RE45,268) concerns a seismometer design that recites a “geophone internally fixed within [the] housing” in each independent claim.
- Magseis (original plaintiff) sued Seabed for infringement in Texas; Seabed petitioned for inter partes review (IPR) challenging anticipation/obviousness.
- The PTAB instituted review but construed “geophone internally fixed within [the] housing” to require a non‑gimbaled geophone, relying solely on extrinsic evidence that “fixed” in the art meant “not gimbaled.”
- Based on that construction the Board found the prior art did not disclose the claimed geophone limitation and upheld patentability.
- On appeal the Federal Circuit reviewed claim construction de novo (intrinsic evidence paramount) and examined the patent specification and prosecution history.
- The court held the intrinsic record shows “fixed” carries its ordinary meaning (mounted/fastened inside the housing) and does not exclude gimbaled geophones; it vacated and remanded because the Board erred by relying on extrinsic evidence to narrow the claim term.
Issues
| Issue | Seabed's Argument | Magseis' Argument | Held |
|---|---|---|---|
| Proper construction of “geophone internally fixed within [the] housing” | “Fixed” means mounted/fastened inside the housing and does not exclude gimbaled geophones | “Fixed” had a specialized art meaning of “not gimbaled,” so claims exclude gimbaled geophones | The intrinsic evidence supports the ordinary meaning (mounted/fastened inside); claims do not exclude gimbaled geophones; Board erred by relying on extrinsic evidence — vacated and remanded |
Key Cases Cited
- Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336 (Fed. Cir. 2020) (de novo review of claim construction based on intrinsic evidence)
- PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734 (Fed. Cir. 2016) (describing BRI standard for pre‑Nov. 13, 2018 IPRs)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (framework: intrinsic evidence controls claim construction)
- Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014) (use intrinsic evidence before resorting to extrinsic evidence)
- Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375 (Fed. Cir. 2016) (extrinsic evidence cannot contradict clear intrinsic meaning)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (specification is the best guide to claim meaning)
- Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012) (negative claim limitations need specification support to exclude subject matter)
- Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709 (Fed. Cir. 1998) (discount expert testimony contrary to intrinsic evidence)
- Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001) (appeal may rely on intrinsic record evidence even if not argued below)