Last Week in the Federal Circuit (August 9-13): The Dangers of Relying Solely on Extrinsic Evidence for Claim Construction

Although things often slow down in Washington in the August heat and humidity, that wasn’t the case this past week for the Federal Circuit. All told, the Court issued 5 precedential opinions and ruled in 17 cases. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions:  5

Non-precedential opinions:  9

Rule 36: 3

Longest pending case from argument:  Tie between PersonalWeb Technologies LLC v. Google LLC, No. 20-1543 and In re PersonalWeb Technologies LLC, No. 20-1566 (164 days)

Shortest pending case from argument (non-Rule 36):  Seabed Geosolutions (US) Inc. v. Magseis FF LLC, No. 20-1237 (33 days)

Case of the week: Seabed Geosolutions (US) Inc. v. Magseis FF LLC, No. 2020-1237

Panel: Chief Judge Moore and Judges Linn and Chen, with Chief Judge Moore writing the opinion

You should read this case if: you have a matter involving claim construction disputes about intrinsic and extrinsic evidence

When the Supreme Court first issued its opinion in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., many wondered whether the aftershocks of the decision might prompt the Federal Circuit to give more deference to claim constructions that relied on extrinsic evidence. But Teva has proven to be more of a minor tremor than a seismic shakeup in how the Federal Circuit treats appeals with claim construction disputes, particularly when the intrinsic evidence is clear. In our case of the week, the Federal Circuit reinforces the primacy of intrinsic over extrinsic evidence when construing claims.

This week’s case involves patents directed to seismometers containing earth and seismic sensors called geophones. The claims require a “geophone internally fixed within [the] housing” and the dispute centered around what “fixed” means. As the Federal Circuit explained, the Board “found, based entirely on extrinsic evidence, that ‘fixed’ had a special meaning in the relevant art at the time of the invention:  ‘not gimbaled.’” Based on that evidence about outside-the-patent meaning, the Board concluded that that the claims' use of “fixed” meant the claims covered only a special type of non-gimbaled geophones.

On appeal, the Federal Circuit disagreed. Even if “fixed” had some special meaning outside the patent, the Board erred because it improperly relied on extrinsic evidence in the face of contrary intrinsic evidence. The Federal Circuit concluded that the intrinsic evidence was clear that “fixed” should be given its plain and ordinary non-technical meaning, i.e, attached or fastened, and there was “no reason to resort to extrinsic evidence.”

The Federal Circuit explained that all three sources of intrinsic evidence—the claims, the specification, and the prosecution history—supported its ordinary-meaning construction. First, the claims’ juxtaposition of “fixed” next to “within” indicated that “fixed” referred to the geophone’s position relative to the housing, not the type of geophone (e.g., gimbaled or non-gimbaled geophones).

Second, the specification repeatedly touted the practical advantages of having the geophone mounted or located within the electronic compartments of the seismometer. The specification distinguished prior-art examples that used separate compartments for the geophone and electronics, which required external connecting cables that were expensive and difficult to handle and maintain in extreme geographic environments. Also, the specification disclosed that any conventional type of geophone could be used. It never specified whether any exemplary embodiment included a gimbaled or a non-gimbaled geophone, despite specifying whether other components were gimbaled (such as a gimbaled clock).

Finally, the prosecution history was consistent with construing “fixed” to mean mounted or fastened rather than “not gimbaled.” As an initial matter, the Federal Circuit rejected Magseis’s contention that Seabed waived reliance on the prosecution history by failing to raise it before the Board. Even though Seabed’s appeal arguments based on the prosecution history were new, the Court held they were proper because the prosecution history was in the record and Seabed was arguing for the same claim scope on appeal as it had argued before the Board. And the Court concluded that that prosecution history supported Seabed’s construction. The applicant and examiner repeatedly discussed the term “fixed” in the context of how the geophone was oriented and where it was located relative to seismometer compartments rather than using “fixed” to mean the type of geophone—be it gimbaled or non-gimbaled. Thus, the Federal Circuit found that the prosecution history supported interpreting the claims according the common usage of the word fixed.