In Seabed Geosolutions (US) Inc., v. Magseis FF LLC, [2020-1237] (August 11, 2021), the Federal Circuit vacated and remanded the PTAB’s determination that U.S. Reissue Patent No. RE45,268 was not anticipated or obvious, becase if a error in the PTAB’s claim construction.

The ’268 patent is directed to seismometers for use in seismic exploration, and all of its claims required a “geophone internally fixed within” either a “housing” or an “internal compartment” of a seismometer. The Board concluded that the prior art did not disclose this geophone requirement, and thus the claims had not been shown to be anticipated or obvious.

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 invention: “not gimbaled.” The Federal Circuit noted that

If the meaning of a claim term is clear from the intrinsic evidence, there is no reason
to resort to extrinsic evidence. The Federal Circuit concluded, based upon the intrinsic evidence, that the word fixed here carries its ordinary meaning, i.e., attached or fastened:

The adverb internally and the preposition within straddling the word fixed indicate that it specifies the geophone’s relationship with the housing, not the type of geophone. The plain
language therefore supports interpreting “internally fixed within” to mean mounted or fastened inside.

The Federal Circuit found the specification was consistent with its construction:

The specification describes mounting the geophone inside the housing as a key feature of the invention. 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 internally
fixed within [the] housing” merely specifies where the geophone is mounted and has nothing to do with gimbaling.

The Federal Circuit noted that “[t]he specification never mentions gimbaled or non-gimbaled
geophones, nor does it provide a reason to exclude gimbals.” The Court concluded “[t]hat silence does not support reading the claims to exclude gimbaled geophones.” The patentee conceded that gimballed geophones were known, and that the specification mentioned gimballed claims. The Federal Circuit reasoned that “[i]If the patentee had 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.”

The Federal Circuit said that the intrinsic evidence as a whole supports an interpretation of “geophone internally fixed within [the] housing” that does not exclude gimbaled geophones. The Court concluded that the Board erred in reaching a narrower interpretation, and vacated and remanded for further proceedings consistent with this opinion.