Case: 20-1237 Document: 50 Page: 1 Filed: 08/11/2021

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 ______________________

JOHN R. LANE, Fish & Richardson, PC, Houston, TX, argued for appellant. Also represented by DANIELLE J HEALEY, BRIAN GREGORY STRAND.

RUBEN JOSE RODRIGUES, Foley & Lardner LLP, Boston, MA, argued for appellee. Also represented by JEFFREY COSTAKOS, Milwaukee, WI. ______________________

Before MOORE, Chief Judge, LINN and CHEN, Circuit Judges. Case: 20-1237 Document: 50 Page: 2 Filed: 08/11/2021

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

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 predecessor 1 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. Case: 20-1237 Document: 50 Page: 3 Filed: 08/11/2021

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limitation. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION 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 Case: 20-1237 Document: 50 Page: 4 Filed: 08/11/2021

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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 Case: 20-1237 Document: 50 Page: 5 Filed: 08/11/2021

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“[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 Case: 20-1237 Document: 50 Page: 6 Filed: 08/11/2021

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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. Case: 20-1237 Document: 50 Page: 7 Filed: 08/11/2021

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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). Case: 20-1237 Document: 50 Page: 8 Filed: 08/11/2021

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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.