Seabed Geosolutions (us) Inc. v. Magseis Ff LLC

United States Court of Appeals
for the Federal Circuit
______________________
SEABED GEOSOLUTIONS (US) INC.,
Appellant
v.
MAGSEIS FF LLC,
Appellee
______________________
2020-1237
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00960.
______________________
Decided: August 11, 2021
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J OHN R. L ANE, Fish & Richardson, PC, Houston, TX,
argued for appellant. Also represented by D ANIELLE J
HEALEY , BRIAN G REGORY STRAND.
RUBEN J OSE RODRIGUES , Foley & Lardner LLP, Boston,
MA, argued for appellee. Also represented by J EFFREY
COSTAKOS , Milwaukee, WI.
______________________
Before M OORE, Chief Judge, L INN and CHEN, Circuit
Judges.
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SEABED GEOSOLUTIONS ( US) INC. v. MAGSEIS FF LLC 2
MOORE, Chief Judge.
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.
BACKGROUND
The ’268 patent is directed to seismometers for use in
seismic exploration. ’268 patent at Abstract. Seismic ex-
ploration 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 pa-
tent 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 Ge-
osolutions (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. Seabed appeals, ar-
guing the Board erred in its construction of the geophone
1 Fairfield Industries Inc. transferred all relevant
assets to Fairfield Seismic LLC, which changed its name to
Magseis FF LLC. J.A. 338.
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SEABED GEOSOLUTIONS ( US) INC. v. MAGSEIS FF LLC 3
limitation. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
D ISCUSSION
We review the Board’s ultimate claim construction and
any supporting determinations based on intrinsic evidence
de novo. Personalized Media Commc’ns, LLC v. Apple Inc.,
952 F.3d 1336, 1339 (Fed. Cir. 2020). We review subsidiary
fact findings involving extrinsic evidence for substantial
evidence. Id.
For inter partes review petitions filed before November
13, 2018, the Board uses the broadest reasonable interpre-
tation (BRI) standard to construe claim terms. See 37
C.F.R. § 42.100(b) (2017). Under that standard, “claims
are given their broadest reasonable interpretation con-
sistent with the specification, not necessarily the correct
construction under the framework laid out in Phillips.”
PPC Broadband, Inc. v. Corning Optical Commc’ns RF,
LLC, 815 F.3d 734, 742 (Fed. Cir. 2016) (citing Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)). But
we still “give[] primacy” to intrinsic evidence, and we resort
to extrinsic evidence to construe claims only if it is con-
sistent with the intrinsic evidence. Tempo Lighting, Inc. v.
Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014); see also
Phillips, 415 F.3d at 1318 (“[A] court should discount any
expert testimony ‘that is clearly at odds with the claim con-
struction mandated by the claims themselves, the written
description, and the prosecution history.’” (quoting Key
Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir.
1998))).
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 in-
vention: “not gimbaled.” Board Decision, 2019 WL
6442060, at *7–8. For claim construction, however, we
begin with the intrinsic evidence, which includes the
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SEABED GEOSOLUTIONS ( US) INC. v. MAGSEIS FF LLC 4
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 evi-
dence.’” (quoting Phillips, 415 F.3d at 1324)).
The claims recite a “geophone internally fixed within
[the] housing.” We conclude, based upon the intrinsic evi-
dence, that the word fixed here carries its ordinary mean-
ing, 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 relation-
ship 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] dis-
puted 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 inven-
tion. 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 inter-
nally fixed within [the] housing” merely specifies where the
geophone is mounted and has nothing to do with gimbaling.
The specification claims it was “conventional thinking”
to separate the geophone from a seismometer’s other com-
ponents to maximize coupling with the earth. ’268 patent
at 2:42–49. This required external cabling, which the spec-
ification criticizes as expensive, difficult to handle and
maintain, and susceptible to failure in extreme environ-
ments. Id. at 2:23–37, 2:49–54, 3:34–48. To avoid these
issues, the specification discloses a geophone that is
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SEABED GEOSOLUTIONS ( US) INC. v. MAGSEIS FF LLC 5
“[d]isposed” and “internally mounted within” the seismo-
meter housing. Id. at 6:30–32, 43–45; see also id. at 4:15–
19 (“[A]ll of the electronics are disposed within or on the
case, including a geophone package . . . .”). This had alleg-
edly never been done before. Id. at 7:31–34 (“[N]one of the
prior art devices comprise a self-contained seismic record-
ing unit as described herein. Rather, the prior art units
separate the geophone package from the electronics of the
rest of the unit.”). The specification touts its integrated ap-
proach, repeating 18 times that the invention is “self-con-
tained” and explaining that it “requires no external wiring
or connection.” Id. at 6:43–45. The specification does not
purport to disclose a particular type of geophone. See id. at
6:49–55 (stating that the invention uses “conventional ge-
ophones”). These disclosures make clear that the crux of
the invention is mounting a generic geophone inside the
housing. This supports an interpretation of the claimed
“geophone internally fixed within [the] housing” as requir-
ing mounting any type of geophone in the housing.
The specification never mentions gimbaled or non-gim-
baled 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) (“Nega-
tive claim limitations are adequately supported when the
specification describes a reason to exclude the relevant lim-
itation.”); Williams v. Gen. Surgical Innovations, Inc., 60 F.
App’x 284, 287 (Fed. Cir. 2003) (non-precedential) (“The ab-
sence 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 gim-
baled geophones were used.”). The specification does, how-
ever, 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
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SEABED GEOSOLUTIONS ( US) INC. v. MAGSEIS FF LLC 6
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. See
Appellee’s Br. 8–10. Magseis cites Figure 1 and the text at
column 6, lines 43 through 49. Id. We do not agree that
the cited portions of the specification describe a non-gim-
baled geophone. Figure 1 is a rudimentary schematic that
depicts geophone 18 as a mere black box inside compart-
ment 16:
Magseis’ expert, Rocco Detomo, testified that Figure 1 is
“not a mechanical drawing.” J.A. 1670 at 291:5–12. As for
column 6, it merely discloses a “conventional geophone[]”
that is “internally mounted within pod 10 and thus re-
quires no external wiring or connection.” ’268 patent at
6:43–55. Silence about gimbals does not evidence the ab-
sence of gimbals. We therefore reject Magseis’ argument
that the specification describes only a non-gimbaled geo-
phone.
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SEABED GEOSOLUTIONS ( US) INC. v. MAGSEIS FF LLC 7
Consistent with the specification, the prosecution his-
tory suggests the construction of the word fixed as mounted
or fastened. Each time the word fixed came up in prosecu-
tion, the applicant and examiner understood it in its ordi-
nary sense, i.e., mounted or fastened. For example, to
support the geophone limitation, the applicant cited the
specification’s disclosure of a geophone “disposed, and elec-
trically connected, within the internal compartment.”2 J.A.
710. In doing so, the applicant implicitly equated the claim
term “internally fixed within” with “disposed, and electri-
cally connected, within.” That equivalence reveals the ap-
plicant understood the word fixed to mean mounted. Other
discussions of the word fixed in the prosecution history are
similar. See J.A. 1484 (examiner equating “internally fixed
in the housing” with “mounted . . . within the case”); J.A.
3059 (examiner distinguishing a geophone that is “fixed in-
side of the housing” from a geophone that is ejected from
the housing); J.A. 3083–84 (applicant adding “fixed” to the
claims and drawing the same distinction the examiner did).
The prosecution history therefore supports interpreting
the claims according to the common usage of the word
fixed.
We reject Magseis’ contention that Seabed waived cer-
tain arguments concerning the prosecution history by fail-
ing to raise them below. The doctrine of waiver does not
preclude a party from supporting its original claim con-
struction 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
2 Because the ’268 patent is a reissue patent, the ap-
plicant had to provide “an explanation of the support in the
disclosure of the patent for [any] changes made to the
claims,” which included the addition of claim 22. 37 C.F.R.
§ 1.173(c).
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SEABED GEOSOLUTIONS ( US) INC. v. MAGSEIS FF LLC 8
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 ar-
tisan that “fixed” in the claims means mounted or fastened.
Given the clarity of the intrinsic evidence, resort to extrin-
sic 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.
CONCLUSION
The intrinsic evidence as a whole supports an interpre-
tation of “geophone internally fixed within [the] housing”
that does not exclude gimbaled geophones. The Board
erred in reaching a narrower interpretation. We therefore
vacate and remand for further proceedings consistent with
this opinion.
VACATED AND REMANDED
COSTS
Costs to Appellants.
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