CAFC: PTAB’s Claim Construction Analysis Improperly Relied on Extrinsic Evidence

“The court indicated that the PTAB had based its finding of the term ‘fixed’ entirely on extrinsic evidence and found that the intrinsic evidence was clear with respect to the meaning of ‘fixed.’”

Federal CircuitOn Wednesday, the U.S. Court of Appeals for the Federal Circuit (CAFC), with Chief Judge Moore writing for the court, vacated and remanded a Patent Trial and Appeal Board (PTAB) decision, stating the PTAB erred in construing the claims of Magseis’ U.S. Patent No. RE45,268 (’268 patent). Seabed Geosolutions (US) Inc. v. Magseis FF LLC.

In 2017, Magseis FF LLC (predecessor of Fairfield Industries Inc.) sued Seabed Geosolutions (US) Inc. for patent infringement with respect to several of its patents, including the ‘268 patent, in the United States District Court for the Southern District of Texas. On April 27, 2018, Seabed petitioned the PTAB for inter partes review (IPR) of the ‘268 patent on multiple grounds. On review, the PTAB found the asserted claims of Magseis’ ‘268 patent to be valid. PTAB concluded the prior art relied upon by Seabed -i.e. self-orienting gimbaled geophones – failed to prove the challenged claims were unpatentable. Seabed appealed the PTAB’s final written decision to the CAFC.

Two other Magseis patents, U.S. Patent No. 8,228,761 and U.S. Patent No. 8,879, 362, were also challenged by Seabed and both invalidated by the PTAB; the CAFC affirmed the PTAB’s decisions on those patents on July 29, 2021.

‘268 Patent

The ‘268 patent is directed to seismometers for use in seismic exploration, which involves sending an acoustic signal into the earth and using seismic receivers called “geophones” to detect seismic reflections from the subsurface structures. 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.

BRI Standard, Intrinsic and Extrinsic Evidence

The PTAB utilizes the broadest reasonable interpretation standard to construe claims with respect to IPR petitions filed prior to November 13, 2018. If the meaning of a claim term is clear from intrinsic evidence, there is no reason to resort to extrinsic evidence. The CAFC also noted, citing to Phillips, “[A] court should discount any expert testimony ‘that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history.’

The court indicated that the PTAB had based its finding of the term “fixed” entirely on extrinsic evidence and found that the intrinsic evidence was clear with respect to the meaning of “fixed.” Magseis argued in its brief that the PTAB did consider intrinsic evidence, and that Seabed introduced “numerous new arguments” on appeal “based on the prosecution histories of three related patents that were never raised before the Board and, of course, never addressed by the Board.” Magseis claimed that, “while these arguments were waived and should be disregarded, they nonetheless would not have changed the Board’s conclusions.” But the CAFC did not agree.

Claim Construction

The CAFC considered the adverb “internally” and the preposition “within” straddling the word “fixed” and concluded, based on intrinsic evidence, the word “fixed” referenced in the claims’ recital carries its ordinary meaning, i.e., attached or fastened. Consequently, such language specifies the geophone’s relationship with the housing, not the type of geophone.

Written Description

Citing to Phillips, which indicated the specification is the single best guide to a disputed term, the CAFC concluded that the ‘268 patent specification supported its interpretation of the claim as requiring mounting any type of geophone in the housing. The CAFC noted a number of examples referenced in the specification including: (i) the description of mounting the geophone inside the housing as a key feature of the invention; (ii) it was “conventional thinking” to separate the geophone from a seismometer’s other components to maximize coupling with the earth; (iii) repeating 18 times that the invention is “self-contained” and explaining that it “requires no external wiring or connection.” The court also noted the specification does not purport to disclose a particular type of geophone and that the specification never mentioned gimbaled or non-gimbaled geophones. Further, Magseis admitted that gimbaled geophones were common in the art, yet there was no mention of them in the specification and, that the specification included a reference to a gimbaled clock. As such, the court concluded if the patentee had wanted to distinguish between gimbaled and non-gimbaled geophones, it knew how to do so. The court also noted that silence with respect to gimbals does not evidence the absence of gimbals.

Prosecution History

The court also considered the prosecution history and concluded it was consistent with the specification and supported interpreting the claims according to the common usage of the word “fixed.”  The court noted that “the applicant cited the specification’s disclosure of a geophone “disposed, and electrically connected, within the internal compartment.” … In doing so, the applicant implicitly equated the claim term “internally fixed within” with “disposed, and electrically connected, within.”

What’s more, the court rejected Magseis’ position that Seabed waived certain arguments related to the prosecution history. Citing to Interactive Gift Express, the court stated, “The doctrine of waiver does not preclude a party from supporting its original claim construction with new citations to intrinsic evidence of record” and noted Seabed’s arguments on appeal did not change the scope of the construction it advanced.

The court concluded that “[t]he intrinsic evidence as a whole supports an interpretation of ‘geophone internally fixed within [the] housing’ that does not exclude gimbaled geophones. The Board erred in reaching a narrower interpretation.

 

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3 comments so far.

  • [Avatar for ipguy]
    ipguy
    August 16, 2021 03:26 pm

    It’s a very good question, Max. I often wonder how PTAB judges can get ex parte appeal decisions so egregiously wrong. Yet they do. In my view, PTAB judges are always biased in favor of the examiners. The PTAB judges will issue new rejections (even after reversing the examiners’ rejections) based on their own findings, but will not do the same on behalf of an applicant (that is, reverse an examiner based on their own findings when they don’t believe the applicant’s arguments are persuasive).

  • [Avatar for Max Drei]
    Max Drei
    August 14, 2021 05:17 am

    ipguy, a question for you: How come the CAFC found it necessary to correct the PTAB judges? How could those judges get it so egregiously wrong?

    Perhaps because they are within the USPTO, an administrative instance with its own esprit de corps.

    As the saying goes: A crow does not peck out the eyes of another crow. It’s no different in any other corps that is lucky enough to operate in style, with panache, under its own flourishing esprit. Above all, at the PTO, you are expected always to back up your colleague Examiners, aren’t you, even if during prosecution they made a mistake?

    Bit of a problem though, isn’t it, if one has to go every time to the CAFC, every time the USPTO closes its ranks.

  • [Avatar for ipguy]
    ipguy
    August 13, 2021 03:10 pm

    As I’ve said on another blog, I suspect a deep-dive into the prosecution history and the several parent applications (there’s an abandoned child application) might shed some more light on the story to the discerning eye of a patent prosecutor with experience as an examiner. In accordance with the theme of this article, it’s not always about what is said during examination because what is unsaid during the examination can speak volumes.