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Clear Intrinsic Evidence Forecloses Extrinsic Evidence of Special Meaning

| James YangJeremy Anapol

SEABED GEOSOLUTIONS (US) INC. v. MAGSEIS FF LLC.

Before Moore, Linn, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: Where a claim term’s meaning is clear from the intrinsic evidence, no extrinsic evidence of special meaning is considered.

Seabed filed a petition for inter partes review challenging certain claims of Magseis’ patent related to seismometers. The Board issued a final written decision finding that Seabed failed to prove that the challenged claims were anticipated or obvious.  The Board based its decision on its construction of “geophone internally fixed within [the] housing” as requiring a “non-gimbaled geophone.”  Seabed appealed.

On appeal, Seabed argued that the Board erred in its construction of the geophone limitation by relying on extrinsic evidence of a special meaning of “fixed” in the relevant art.  The Federal Circuit agreed, stating that clear intrinsic evidence precluded consideration of extrinsic evidence.  The Federal Circuit first looked to the claim language, noting that the language surrounding the term “fixed” supported a plain and ordinary meaning of “mounted or fastened.”  The Federal Circuit then looked at the specification, which described mounting the geophone inside the seismometer’s housing as a key feature, but did not mention anything about the geophone being gimbaled or non-gimbaled.  Lastly, the Federal Circuit explained that each time the word “fixed” came up in the prosecution history, both the applicant and the examiner understood it as meaning “mounted or fastened.”  Thus, the Federal Circuit held that the ordinary meaning of “fixed” applied, i.e., attached or fastened, and this ordinary meaning did not exclude gimbaled geophones.  Accordingly, the Federal Circuit vacated and remanded for the Board to consider anticipation and obviousness under the correct construction.

Editor: Paul Stewart