Opinion
Case No. A-12-CA-773-SS
08-29-2013
NATIONAL OILWELL VARCO, L.P., Plaintiff, v. OMRON OILFIELD & MARINE, INC., Defendant.
MARKMAN ORDER
BE IT REMEMBERED on this day the Court reviewed the file in the above-styled cause, and specifically the Report and Recommendations of Special Master Karl Bayer (R&R) [#48], Plaintiff National Oilwell Varco, L.P. (NOV)'s Objection [#50], Defendant Omron Oilfield & Marine, Inc.'s Response to NOV's Objection [#53], Omron's Objections [#51], and NOV's Response to Omron's Objections [#52]. Having reviewed the documents, the relevant law, the parties' arguments and evidence presented at the Markman hearing, and the file as a whole, the Court now enters the following opinion and orders, overruling the objections, and accepting the Special Master's recommendations.
Background
This is a patent-infringement suit, based on United States Patent Number 5,474,142 (the '142 Patent). Plaintiff National Oilwell Varco, L.P. asserts Defendant Omron Oilfield and Marine, Inc. infringes Claims 1, 11, and 14 of the '142 Patent. The Court appointed Special Master Karl Bayer to conduct a technical tutorial, and Markman hearing, to be followed by a Report and Recommendation on the proper construction of the Claim terms at issue. The parties filed pre- Markman briefing, and the tutorial and hearing were duly held on April 16, 2013. The parties then submitted post-Markman briefing. On August 1, 2013, Special Master Bayer issued his Report and Recommendation. Having received objections and responses from both parties, the case is now ripe for entry of a Markman order.
The '142 Patent discloses an automatic driller, for use in the oil and gas industry. The automatic driller regulates the rate of release of drill string based on sensors detecting (1) bit weight, (2) drilling fluid pressure, (3) drill string torque, and (4) drill string revolutions per minute (RPM). Although the prior art included automated drillers which operated based on bit weight alone, the '142 Patent purportedly improves on this art by incorporating the other three parameters or variables. The most important of the three is drilling fluid pressure. Drilling fluid pressure serves as a surrogate for bit weight when drilling a deviated or slant bore—once the bore is out of vertical, bit weight is no longer a meaningful measure of how the drill is performing. Because Claims 1, 11, and 14 are limited to a device based on bit weight and drilling fluid pressure alone, the Court will not directly consider further the aspects of the '142 Patent which relate to drill string torque and RPM, except where doing so helps illuminate the meaning of the claim terms at issue.
Analysis
I. Claim Construction — Legal Standard
When construing claims, courts begin with "an examination of the intrinsic evidence, i.e., the claims, the rest of the specification and, if in evidence, the prosecution history." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); see also Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1327 (Fed. Cir. 2001).
The words in the claims themselves are of primary importance in the analysis, as the claim language in a patent defines the scope of the invention. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The words of a claim "are generally given their ordinary and customary meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). "[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1313. The inquiry into how a person of ordinary skill in the art understands a claim term provides an "objective baseline" from which to begin claim interpretation. Id. The person of ordinary skill in the art is understood to read a claim term not only in the context of the particular claim in which the term appears, but in the context of the entire patent, including the specification; thus, both the plain language of the claims and the context in which the various terms appear "provide substantial guidance as to the meaning of particular claim terms." Id. at 1314.
The specification also plays a significant role in the analysis. Id. at 1315. The Federal Circuit has repeatedly reaffirmed the principle that the specification "is always highly relevant . . . . Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). In interpreting the effect the specification has on the claim limitations, however, courts must pay special attention to the admonition that one looks "to the specification to ascertain the meaning of the claim term as it is used by the inventor in the context of the entirety of his invention, and not merely to limit a claim term." Interactive Gift, 256 F.3d at 1332 (internal quotation marks and citations omitted).
The final form of intrinsic evidence the Court may consider is the prosecution history. Although the prosecution history "represents an ongoing negotiation between the PTO and the applicant" and therefore "often lacks the clarity of the specification and thus is less useful for claim construction purposes," it can nonetheless "often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317.
Aside from the intrinsic evidence, the Court may also consult "extrinsic evidence," which is "all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Id. While extrinsic evidence "can shed useful light on the relevant art," the Federal Circuit has explained it is "less significant than the intrinsic record in determining 'the legally operative meaning of claim language.'" Id. at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Extrinsic evidence in the form of expert testimony may be useful to a court for "a variety of purposes, such as to provide background on the technology at issue, to explain how an invention works, to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. at 1318. However, conclusory, unsupported assertions by an expert as to the definition of a claim term are not useful, and should be discounted. Id. In general, extrinsic evidence is considered "less reliable than the patent and its prosecution history in determining how to read claim terms," although it may be helpful. Id.
The purpose of claim construction is to "determin[e] the meaning and scope of the patent claims asserted to be infringed." 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (quoting Markman v. Westview Invs., Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd 517 U.S. 370 (1996)). Thus, "[w]hen the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute." Id. However, "district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims." Id. For example, no construction is required if the requested construction would be "an exercise in redundancy," or if "the disputed issue is the proper application of a claim term to an accused process rather the scope of the term." Id. (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997); Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001)).
II. Application
The parties disputed the meaning of the following claim terms, and the Special Master recommended the corresponding constructions, or lack thereof.
| Claim Term | Special Master's Construction |
| "drilling fluid"(Claims 1, 11, 14) | Mud pumped down the drill string. |
|---|---|
| "bit weight"(Claim 14) | An approximation of downward force placedon the bit by the weight of the drill string. |
| "changes in drilling fluid pressure""changes in bit weight"(Claims 1, 11, 14) | No construction necessary. |
| "drilling fluid pressure regulator"(Claim 1) | No construction necessary. |
| "selecting any one of said first signal, saidsecond signal, and both said first and saidsecond signals to control the release of saiddrill string"(Claim 14) | No construction necessary. |
| "drill string controller"(Claims 1, 11, 14) | A device that changes the rate of release ofthe drill string in response to signals from therelay(s). |
|---|---|
| "relay coupled to said drilling fluidpressure regulator"(Claim 1) | A device that generates a drill string controlsignal in response to a signal from the drillingfluid pressure regulator. |
| "signal representing those changes""said signal representing the changes indrilling""said first signal representing the changesin drilling fluid pressure""said second signal representing thechanges in bit weight"(Claims 1, 11, 14) | A signal that indicates the changes in onlydrilling fluid pressure.A signal that indicates the changes in only bitweight. |
| "relying [sic] said signal to a drill stringcontroller""Relaying said selected signal or signals toa drill string controller"(Claims 11, 14) | No construction necessary. |
| "regulates the release said drill string inresponse to said selected signal or signals"(Claim 14) | No construction necessary. |
| "a decrease in drilling fluid pressureresults in said relay supplying a drill stringcontrol signal that operates said drill stringcontroller to effect an increase in the rateof release of said string ... an increase indrilling fluid pressure results in said relaysupplying a drill string control signal thatoperates said drill string controller toeffect a decrease in the rate of release ofsaid drill string."(Claim 1) | No construction necessary. |
| "controlling said drill string controller toincrease the rate of release of said drillstring with direct effect at the drill bitassociated with the drill string when saidsignal represents a decrease in drillingfluid pressure ... to decrease the rate ofrelease of said drill string with direct effectat the drill bit associated with the drillstring when said signal represents anincrease in drilling fluid pressure"(Claim 11) | No construction necessary. |
|---|
As an initial matter—noting no error, plain or otherwise—the Court adopts the Special Master's construction of the following terms without further comment, as neither party has objected to them: "bit weight" (claim 14); "relay coupled to said drilling fluid pressure regulator" (claim 1); "rel[a]ying said signal to a drill string controller" (claim 11); "relaying said selected signal or signals to a drill string controller" (claim 14); and "regulates the release said drill string in response to said selected signal or signals" (claim 14). In addition, the Court accepts the Special Master's recommendation, also unobjected-to, regarding the definition of a person of ordinary skill in the art:
A Person of Ordinary Skill in the Art is someone with at least five years experience in the oil and gas industry including oil drilling operations and developing drilling systems. Additionally, they should have an undergraduate collegiate degree in mechanical or electrical engineering, or at least five years working in an engineering field.R&R [#48-1] at 1.
The Court will now turn to the parties' respective objections to the R&R, beginning with NOV.
A. Signal Representing Changes
NOV objects to a single construction: "signal representing those [or the] changes [in drilling fluid pressure or bit weight]." This phrase, in various permutations, appears four times in claims 1, 11, and 14, and the Special Master construed it to mean either "A signal that indicates the changes in only drilling fluid pressure," or "A signal that indicates the changes in only bit weight," depending on the claim the phrase appears in, and the surrounding claim language. R&R [#48-1] at 4 (emphasis added).
Specifically, the claim language is the following: "said drilling fluid pressure regulator measuring changes in drilling fluid pressure and outputting a signal representing those changes" (Claim 1); "producing a signal in response to changes in drilling fluid pressure, said signal representing the changes in drilling fluid pressure" (Claim 11); "producing a first signal in response to changes in drilling fluid pressure, said first signal representing the changes in drilling fluid pressure; producing a second signal in response to changes in bit weight, said second signal representing the changes in bit weight" (Claim 14).
NOV argues (1) the R&R "improperly imports a limitation of manifest exclusion ('only') that is found in neither the claims nor the specification"; and (2) "[i]t excludes the preferred embodiment of the '142 Patent's specification." Pl's Obj. [#50] at 2. The Court finds both arguments unpersuasive.
1. "Only" Reflects the Disclosed Invention
First, although the word "only" does not appear in the claim language in question, the '142 Patent makes clear, in tedious detail, there are separate sensors, regulators, and relays for each of the four parameters being measured. As such, the "signal" generated by each sensor, and in turn by each regulator, and carried by the respective relay, is necessarily communicating information about only one parameter. Any doubt on this score is dispelled by the language of the claims: "said drilling fluid pressure regulator measuring changes in drilling fluid pressure and outputting a signal representing those changes." (Claim 1) (emphasis added). The signal represents "those" changes—those being the "changes in drilling fluid pressure."
This is not a case of limiting a claim based on the preferred embodiment, rather, the logic of the claim language itself limits the invention. See 800 Adept, Inc. v. Murex Secs., Ltd., 539 F.3d 1354, 1363 (Fed. Cir. 2008) (finding "the plain language of the claims" required assignment of telephone numbers before telephone calls are place, and rejecting a more expansive construction which would cover an undisclosed feature, namely an algorithm which would assign a telephone number during a telephone call). Furthermore, the specification makes clear the '142 Patent does not disclose an invention in which each signal conveys multiple meanings. See SciMed Life Sys., Inc. v. Advanced Cardiovascular, 242 F.3d 1337, 1341 (Fed. Cir. 2001) ("Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question."). To the contrary, the specification repeatedly describes a separate set of sensors, relays, regulators, and corresponding signals, for each of the four parameters the auto-driller uses to regulate release of the drill string. The Abstract describes the following:
The automatic drilling system includes a drilling fluid pressure sensor, a bit weight sensor, a drill string torque sensor, and a drill string RPM sensor which deliver a drilling fluid pressure signal, a bit weight signal, a drill string torque signal, and a drill string RPM signal to a drilling fluid pressure regulator, a bit weight regulator, a drill string torque regulator, and a drill string RPM regulator.'142 Patent, at [57] (Abstract). Note there are four separate signals described: one each for drilling fluid pressure, bit weight, drill string torque, and drill string RPM, each with a corresponding sensor, and each with a corresponding regulator. This division of signals is consistently carried through the summary of the invention, the preferred embodiment, and the claim language, including the other claims not at issue in this suit.
The Summary of the Invention discloses the following:
The automatic driller includes a drilling fluid pressure sensor, a bit weight sensor, a drill string torque sensor, and a drill string RPM sensor. The sensors output signals representing drilling fluid pressure, bit weight, drill string torque, and drill string RPM to a drilling fluid pressure regulator, a bit weight regulator, a drill string torque regulator, and a drill string RPM regulator, respectively.Id. cols.1-2 ll.63-3 (emphasis added). The "respectively" indicates each type of sensor is sending its own specific type of signal to its corresponding, specific type of regulator. The Summary continues:
The regulators receive their respective signals to measure changes in those signals and produce an output signal representative of any changes.Id. col.2 ll.4-6 (emphasis added). Again, each regulator receives a separate, "respective" signal, identified as representing changes in a single variable, and each in turn transmits a separate, corresponding control signal.
Specifically, the drilling fluid pressure regulator measures changes in drilling fluid pressure and outputs a signal representing those changes. The bit weight regulator measures changes in bit weight and outputs a signal representing those changes. The drill string torque regulator measures changes in drill string torque and output[s] a signal representing those changes. The drill string RPM regulator measures changes in drill string RPM and outputs a signal representing those changes.Id. col.2 ll.6-14. Significantly, each separate regulator is generating a distinct signal, "representing those changes" in the specific variable corresponding to the regulator in question.
Although the Summary also states "an object of the present invention [is] to provide an automatic driller capable of automatically controlling the release [of] the drill string of a drilling rig in response to changes in any one of, any combination of, or all of drilling fluid pressure, bit weight, drill string torque, and drill string RPM," id. col.2 ll.61-66, the means disclosed by which the '142 Patent allows such combined control are "relays [which] attach to relay selectors which switch the relays on and off to permit an operator of the automatic driller to select which one of or which combination of the regulators are to control the drilling operation," id. col.2 ll.20-24. In other words, determining which signal or signals control release of the drill string is accomplished by adjusting the relay selectors, rather than through any hybrid signal communicating information about more than one of the four variables.
The Summary goes on to describe, in a separate paragraph for each, how each separate signal, representing a change in a particular variable, in translated into the appropriate control signal to increase or decrease the rate of release of the drill string. Id. col.2 ll.25-60. For example:
Alternatively, when the relay connected to the drill string torque regulator receives a decrease in drill string torque signal, it supplies a drill string control signal that operates the drill string controller to effect an increase in the rate of release of the drill string. However, an increase in drill string torque results in the relay supplying a drill string control signal that operates the drill string controller to effect a decrease in the rate of release of the drill string.Id. col.2 ll.44-51 (emphasis added). It bears noting the foregoing is all from the Abstract and Summary of the Invention, not from the preferred embodiment, and so, even if the claim language itself did not plainly limit "signal" to any particular variable, the disclosed invention is so limited. Put another way, the invention described in the '142 Patent does not describe any combined signals, or any method to produce combined symbols: "[T]he specification would not be so understood by a person skilled in the field of the invention." Wang Labs, Inc. v. Am. Online, Inc., 197 F.3d 1377, 1382 (Fed. Cir. 1999) (limiting invention to character-based protocols, because references to bit- mapped protocols were merely "acknowledgments of the state of the art, and not . . . an enlargement of the invention described in the patent").
NOV notes Claims 1, 11, and 14 all incorporate "comprising" in their preamble, but this is unavailing. Use of the word "comprising" opens a method claim to the inclusion of steps in addition to those stated in the claim. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986). However, "[t]he open-ended transition 'comprising' does not free the claim from its own limitations." Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1333 (Fed. Cir. 2001). Kustom Signals is instructive on this point. There, the claimed invention, a traffic radar for measuring the speed of vehicles, could either base reported speed on the largest target for which it received radio returns, or the fastest target. Id. at 1328-29. Accordingly, not withstanding the use of the word "comprising," the claims did not cover a device which based returns on both size and speed at the same time. Id. at 1332. "The district court correctly held that the accused device, by its search of both magnitude and frequency without operator instruction, is outside the literal scope of the claims." Id. Similarly here, the literal scope of the claims does not describe any combined signal, representing more than one of the four possible variables used by the automatic driller in the '142 Patent. 2. Preferred Embodiment
NOV also argues the Special Master's construction of "signal representing the changes" would exclude the preferred embodiment. To the contrary, the preferred embodiment provides further confirmation of the Special Master's construction. Consistent with the rest of the specification, the preferred embodiment discloses an invention with four separate sensors, one each for bit weight, drilling fluid pressure, drilling fluid torque, and drilling fluid RPM. In turn, each sensor generates a separate signal, sent to four separate regulators, one each for bit weight, drilling fluid pressure, drilling fluid torque, and drilling fluid RPM. E.g. '142 Patent col.22 ll.38-42 ("The drilling fluid regulator of automatic driller 520 receives the hydraulic signal representing drilling fluid pressure from drilling fluid pressure sensor 521 and converts any changes in drilling fluid pressure into a pneumatic signal representing those changes.").
NOV's strongest argument based on the preferred embodiment derives from the manner in which the relays are placed in sequence, each interrupting or allowing a flow of compressed air to pass through to the drill string controller. However, the expert testimony at the Markman hearing made it clear whichever relay was interrupting the air flow to the maximum extent would control the release of the drill string, and therefore the signal received by the drill string controller would still only represent changes in a single variable. Put another way, each relay is still transmitting a distinct signal (expressed in how much compressed air it allows to pass through) regarding a single variable, the variable measured by the relay in question. The signals may arrive at the drill string controller at the same time via the flow of compressed air, and in that sense, perhaps, are combined, but at no point is any regulator or relay in the preferred embodiment producing a combined signal. And this is reflected in Claim 14—the only claim at issue having more than one type of sensor—which speaks in terms of using a first signal (based on drilling fluid pressure), or a second signal (representing changes in bit weight) and "selecting any one of said first signal, said second signal, and both said first and said second signals to control the release of said drill string." '142 Patent col.28 ll.33-35. Even when both signals are present and selected, there remain two signals, not one. See id.
Finally, NOV argues the Court should follow the Eastern District of Texas's refusal to construe this term in Claim 11. Nat'l Oilwell Varco, L.P. v. Auto-Dril, Inc., No.5:09cv85, slip op. at 29 (E.D. Tex. Aug. 16, 2011). However, although the Eastern District did find no construction was necessary, the question of whether a "signal" is limited to a single variable, or can represent changes in multiple variables, was not before it. Rather, the Eastern District was tasked with determining whether "this phrase should be construed to mean a signal generated by, and representing, only increases and decreases in drilling fluid pressure." Id. (emphasis added). In other words, at issue was whether the regulator "can produce a drill string control signal even when there is no change in drilling fluid pressure." Id. (emphasis added). That the question of a combined signal was not before the Eastern District is confirmed by the fact only Claim 11 was at issue, and Claim 11 describes a system which senses and responds to only a single variable: drilling fluid pressure. As such, the Court expresses no substantive disagreement with the Eastern District's thoughtful decision by finding construction is necessary, and adopting the Special Master's construction.
For all of the foregoing reasons, NOV's Objection is OVERRULED. The Court now turns to Omron's Objections, beginning with a global objection to three of the disputed claim terms.
B. Manual Calibration
Omron raises the same objection to the Special Master's recommended non-construction of the following three terms: (1) "changes in drilling fluid pressure" and "changes in bit weight," (2) "drilling fluid pressure regulator," and (3) "selecting any one of said first signal, said second signal, and both said first and said second signals." As to all three, Omron objects, arguing each claim should require prior manual calibration by the operator to set the reference point by which changes in each variable are measured.
In support, Omron points to four instances in the '142 Patent which reference manual calibration. For example:
However, before drilling fluid regulator 200 will automatically regulate drilling fluid pressure, nozzle 216 and flapper 213 must be calibrated to supply a driller operator selected amount of compressed air to valve 236.'142 Patent col.8 ll.57-61. The other three instances are functionally identical, each being tied to a particular variable. All four instances are found in the preferred embodiment. The words "manual" and "calibration" do not appear in the Abstract, the Summary of the Invention, or any of the claims. Nor does the language or logic of any of the foregoing require manual calibration. Indeed, this is a textbook case of attempting to limit the claims to the preferred embodiment, and the Court will not be led into such error.
To calibrate drilling fluid pressure regulator 200 and automatically regulate drilling fluid pressure, the drilling rig operators must first manually manipulate brake 32 to place drill bit 23 "on bottom".
Omron also argues the Federal Circuit's review of the '142 Patent in Varco, L.P. v. Pason Systems USA Corp., 436 F.3d 1368 (Fed. Cir. 2006), "did not foreclose Omron's proposed constructions." Def.'s Obj. [#51] at 17. However, the fact the Federal Circuit did not bother to rule out the obvious error of limiting a claim to the preferred embodiment does not mean this Court has any basis for so limiting the claim. It bears noting the Federal Circuit did reject Defendant Pason's similar effort to limit "relaying" to the pneumatic relays described in the preferred embodiment. Varco, L.P., 436 F.3d at 1375 ("This disclosure and corresponding Figures do not limit the invention as a whole to the use of pneumatically operated valves; rather they merely list such valves as but one example of relays operable in the present invention.").
NOV argues the Federal Circuit "rejected Omron's exact argument that the 'must' language from the specification requires the insertion of manual calibration into the selecting step of Claim 14." Pl.'s Resp. [#52] at 9. Strictly speaking, this is not the case, because the Federal Circuit was asked a different question: whether "manual calibration" was tied to "selecting" which signal to transmit, and "relaying" the signal, which are distinct claim terms from "changes." The Federal Circuit made it clear those steps occur while the driller is already up and "automatically" running, and therefore cannot require manual calibration. But the Circuit left open whether the initial calibration must be manual. See Varco L.P., 436 F.3d at 1373 ("In effect, the district court erred by reading the initial setup or calibration step into the claimed selecting step.").
Omron also invokes the rule of claim construction whereby, "if the claim is susceptible to a broader and a narrower meaning, and the narrower one is clearly supported by the intrinsic evidence while the broader one raises questions of enablement under § 112[(a)], we will adopt the narrower of the two." Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998). However, this rule is inapplicable. At issue is not a "broader" or "narrower" meaning, but whether a very particular, distinct step, entirely absent from the specification, save for the preferred embodiment, is nevertheless encompassed by the claim terms. It is not. The Court accepts the recommendation: these terms need no construction.
C. Drilling Fluid
The Special Master recommended construing "drilling fluid" as used in all three claims as "mud pumped down the drill string." Omron seeks a broader construction, "fluid, such as air, gas, water, or mud, that is pumped down the drill string." Def.'s Obj. [#51] at 19. Omron argues the Special Master improperly limited the claim terms to the preferred embodiment. However, such is not the case. The entire purpose of the invention disclosed in the '142 Patent is to enable automatic drilling in a horizonal or slant-bored well: "Accordingly, a need exists for an automatic driller that not only operates through bit weight measurements but also operates in response to other measurements so that directional or horizontal boreholes may be drilled." '142 Patent col.1 ll.51-55 (concluding description of related art). And, the testimony at the Markman hearing established the technology for drilling such non-vertical wells, now and at the time of the invention, was the mud motor, a device situated at the end of the drill string, down-hole, which turns the bit in response to pressure from mud injected from the surface. As such, an ordinary artisan would have understood the drilling fluid referred to in the '142 Patent to mean drilling mud, not air, gas, or water.
D. Drill String Controller
The Special Master proposed the following construction for "drill string controller": "A device that changes the rate of release of the drill string in response to signals from the relay(s)." R&R [#48-1] at 2. Omron argues the term should be construed as a means-plus-function term under § 112(f), and is indefinite for lack of corresponding structure.
The Court disagrees, for several reasons. First, none of the claims use the word "means," and so the presumption is they are not means-plus-function claims. Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 703-04 (Fed. Cir. 1998) ("[F]ailure to use the word 'means' creates a presumption that § 112[f] does not apply."). This presumption has not been overcome.
Second, the drill string controller was nothing new: automatic drillers were part of the prior art. Rather, what is purportedly innovative about the '142 Patent is the addition of drilling fluid pressure, drill string RPM, and drill string torque as additional variables by which to control an automated driller, in addition to the use of bit weight alone, as was already practiced. The '142 Patent explains this itself:
Typical automatic drillers presently control the drill string using only bit weight. Such drillers throttle the brake handle of the cable drum brake in response to decreases in bit weight to release the drill string support cable and, thus, lower the drill string. . . . However, once the weight indicator measures a bit weight that falls outside the desired bit weight entered into the automatic driller by the drilling rig operator, the automatic driller manipulates the brake handle to release the cable drum brake which lowers the drill string cable, thereby placing more weight of the drill string upon the drill bit. The cable drum brake remains released until the weight
indicator provides a signal to the automatic driller which substantially equals the desired bit weight.'142 Patent col.1 ll.14-54.
Although bit weight automatic drillers function adequately for completely vertical boreholes, they cease to operate properly for any type of directional or horizontal drilling operations. Specifically, once the borehole deviates from vertical, the weight indicator, which typically mounts to the drill string cable, no longer measures direct drill string weight but, instead, measures the drill string weight at an angle. As a result, the weight indicator supplies to the automatic driller an erroneous reading of the actual drill string weight on the drill bit. Consequently, the automatic driller will fail to properly control the cable drum brake to release the drill string cable. The drilling operation, therefore, does not operate at an optimal efficiency which reduces the likelihood of successfully completing the borehole as well as increasing the cost of the entire operation.
Accordingly, a need exists for an automatic driller that not only operates through bit weight measurements but also operates in response to other measurements so that directional or horizontal boreholes may be drilled.
It is readily apparent the drill string controller is, in fact, part of the prior art, and its enablement would have been obvious to any ordinary artisan: one "with at least five years experience in the oil and gas industry including oil drilling operations and developing drilling systems." R&R [#48-1] at 1 (emphasis added). This is confirmed by one example, from many, found in the prior art: "The tube 24a may comprise a component of a commercially available unit such as Fisher Wizard, or similar device, which is used as a controller sensitive to variation in drill line tension." U.S. Patent No. 3,265,359 col.4 ll.7-10.
Finally, the drill string controller is a very basic component, which is attached to other components which are, in turn, well-developed in the claims (the relays and regulators), and to the brake handle of the drilling rig, a definite component of any drilling rig. The testimony at the Markman hearing established the following, which would have been understood by an ordinary artisan. When automated systems are not in use, a skilled person, known as a "driller," controls the rate of release of the drill string. The driller does so by reviewing various gauges, which reflect the variables (bit weight, drilling fluid pressure, et cetera) and various other information, and based on this information, as well as knowledge of the formation in question, and years of experience, regulates the release rate in order to maximize the rate of penetration. The driller accomplishes this by way of mental calculations, and the physical use of the brake handle, which is engaged and released as necessary. The "drill string controller" simply substitutes for the driller's arm and hand on the handbrake—the mental calculations are replicated by the regulators, relays, and relay selectors. In short, the drill string controller is a simple device, accomplishing a very simple function: moving the break handle up, or down, as directed by control signals from the relays. The Court therefore accepts the Special Master's construction.
Or, a substitute for the driller's foot. The testimony further established whenlong and uneventful drilling is expected, drillers have a practice of tying down the brake handle's release, sitting in a chair, and moving the handle back and forth as needed with a foot. --------
E. Decrease and Increase
Omron raises the same objection to the final two sets of terms, as to both of which the Special Master recommenced no construction. They are:
a decrease in drilling fluid pressure results in said relay supplying a drill string control signal that operates said drill string controller to effect an increase in the rate of release of said string . . . an increase in drilling fluid pressure results in said relay supplying a drill string control signal that operates said drill string controller to effect a decrease in the rate of release of said drill string,(Claim 1); and
controlling said drill string controller to increase the rate of release of said drill string with direct effect at the drill bit associated with the drill string when said signal represents a decrease in drilling fluid pressure . . . to decrease the rate of release of
said drill string with direct effect at the drill bit associated with the drill string when said signal represents an increase in drilling fluid pressure,(Claim 11).
As to both, Omron argues additional construction is necessary to "make explicit that only one parameter can control the drill string at any given moment." Def.'s Obj. [#51] at 14. First, the Court notes Claim 1 and Claim 11 describe a system using only drilling fluid pressure, and no other variables. As such, it is unclear how a second variable would come into play in an actionable way.
Omron argues the inventor disclaimed use of more than one signal at a time, when the examiner questioned whether using multiple parameters simultaneously would cause internal conflict. The inventor explained, in the preferred embodiment, the selectors would be adjusted to set one parameter as the controlling parameter, with the others coming into play only when the variable in question reached an extreme level, as a back-up.
"[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1312. However, only a "clear and unmistakable disavowal" overcomes the "heavy presumption" that claim terms have their full ordinary and customary meaning. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323, 1326 (Fed. Cir. 2003).
Omron likens this case to the disclaimer found in Biogen Idec, Inc. v. Glaxosmithkline LLC, 713 F.3d 1090 (Fed. Cir. 2013), but it in fact illustrates why no disclaimer occurred here. In Biogen, the ordinary meaning of the pharmaceutical claims would have covered all antibodies which attack a particular antigen, known as CD20. However, the examiner pointed out the patent did not teach so broad an innovation: "the examiner rejected all pending claims because the specification did not enable a person skilled in the art to practice the full scope of the claims, which could have encompassed 'any and all anti-CD20 antibodies, no matter the specificity or affinity for the specific epitope on the circulating tumor cells.'" Id. at 1095-96 (quoting joint appendix). "In response, rather than challenging the examiner's understanding of the crucial terms, the applicants argued that the specification was enabling for anti-CD20 antibodies with similar affinity and specificity as Rituxan®." Id. at 1096. "Indeed, the applicants conceded that other 'antibodies directed to the same antigen [i.e., CD20] might have different affinities and functional characteristics,' and limited their claims to antibodies similar to Rituxan® nonetheless." Id. (quoting joint appendix). Here, by contrast, rather than limiting the scope of the claims, the inventor challenged the examiner's understanding, by asserting the invention taught by the '142 Patent would indeed work.
Alternatively, if the inventor did disclaim more than one signal controlling at any given moment, the disclaimer does not apply to Claims 1 and 11, because those claims only describe a device operating with a single type of signal.
For all of the foregoing reasons, the Court OVERRULES Omron's objections, and ACCEPTS the Special Master's recommendations in full.
Conclusion
Accordingly,
IT IS ORDERED that Plaintiff National Oilwell Varco, L.P.'s Objection [#50] is OVERRULED;
IT IS FURTHER ORDERED that Defendant Omron Oilfield & Marine, Inc.'s Objections [#51] are OVERRULED;
IT IS FINALLY ORDERED that the Special Master's Report and Recommendations
[#48] are ACCEPTED.
SIGNED this the 29th day of August 2013.
/s/_________
SAM SPARKS
UNITED STATES DISTRICT JUDGE