Citations
- 304 F. Supp. 3d 587
Full opinion text
Lee H. Rosenthal, Chief United States District Judge
This patent-infringement case involves braking and feedback technology for oil and gas drilling-control systems. Lowering pipe down an oil or gas drilling well puts pressure on the drill bit. Too much weight can damage the bit, costing time and money while it is repaired or replaced. To little weight results in slower drilling and less efficient production, both costly. To maximize efficiency and decrease costs, drillers need to put the "just right" weight on a drill bit.
Auto-Dril's U.S. Patent No. 6,994,172 (the '172 Patent) claims a system for more precise weight-on-bit measurement and control that achieves a better balance between the goals of increasing drilling speed and reducing damage to drilling components. (Docket Entry No. 21-1). The '172 Patent attempts to solve the problem of finding the Goldilocks "just right" weight-on-bit. The '172 Patent claims sensors that produce electronic signals indicating the weight-on-bit. The signals are received by a computer-based drilling system, which transmits them to an electric motor. The motor either increases the amount of brake applied to the drill string, reducing the weight-on-bit, or reduces the amount of brake, increasing the weight-on-bit. The system auto-adjusts by comparing the actual bit weight with an operator-selected weight previously set in the system.
Auto-Dril alleges that National Oilwell Varco's "e-Wildcat" electronic autodrilling system and Canrig Drilling Technology's "DrillSmart" automatic drilling system infringes the '172 Patent. (Docket Entry Nos. 21, 45). The parties have asked the court to construe several disputed terms in the '172 Patent. Both parties filed opening claim-construction briefs, responses, and supplemental briefs. (Docket Entry Nos. 134, 135, 141, 142, 168, 171). The court held a Markman hearing on November 28, 2017, at which counsel argued their competing constructions. (Docket Entry Nos. 189, 188). Each party filed a posthearing brief. (Docket Entry Nos. 194, 195). The parties have also submitted multiple summary judgment filings on indefiniteness. Auto-Dril filed three motions for partial summary judgment on indefiniteness, the defendants responded, and Auto-Dril replied. (Docket Entry Nos. 175, 176, 179, 180, 182, 183, 184, 185, 186).
Based on the parties' claim-construction and summary judgment motions and briefs, counsels' arguments, the record, and the applicable law, the court construes the disputed claims as set out in detail below. Based on the construction, the court:
• denies Auto-Dril's first motion for partial summary judgment, (Docket Entry No. 175);
• grants Auto-Dril's second motion for partial summary judgment as to the claim terms "electronic weight-on-bit comparison means" and "programmable logic controller," (Docket Entry No. 176);
• denies Auto-Dril's second motion for partial summary judgment as to the claim terms "programmable control means," "motor control signal output means," and "signal output means," (Docket Entry No. 176); and
• denies Auto-Dril's third motion for partial summary judgment, (Docket Entry No. 179).
The court also sets a status and scheduling conference on Wednesday, April 18, 2018 at 9:00 a.m. The reasons for the court's claim-construction and summary judgment rulings are explained below.
I. Background
A. The parties
Auto-Dril is a corporation organized under Texas law and headquartered in Odessa, Texas. (Docket Entry No. 45 at 1). National Oilwell is a limited partnership organized under Delaware law and headquartered in Houston, Texas. Id. Canrig is a corporation organized under Delaware law, with its principal office in Houston. Id.
B. The infringement allegations
Auto-Dril alleges patent infringement, induced infringement, and contributory infringement under 35 U.S.C. § 271. Auto-Dril alleges that National Oilwell and Canrig infringed the '172 Patent by "making, using, selling, offering for sale, and/or importing in or into the United States, without authority, products that fall within the scope of one or more claims of the '172 Patent," including National Oilwell's "e-Wildcat" electronic autodrilling system and Canrig's "DrillSmart" automatic drilling system. Auto-Dril alleges that National Oilwell has known of the '172 Patent since at least 2010 and that Canrig has known of the Patent or has been "willfully blind" to its existence. Despite this knowledge, Auto-Dril alleges that the defendants have actively promoted sales of their infringing products to, and use by, third parties. Auto-Dril alleges that these third parties have used the defendants' technology to directly infringe one or more claims of the '172 Patent and that the defendants have sold automatic drilling-control system components and accessories to third parties that have been used with other components to assemble an apparatus that falls within and infringes the '172 Patent claims. (Docket Entry No. 21 at 2-4; Case 4:16-cv-293, Docket Entry No. 1 at 2-4). Auto-Dril also asserts claims for fraud and breach of contract against National Oilwell. (Docket Entry No. 21 at 9-11. Against both defendants, Auto-Dril seeks damages and an injunction prohibiting future direct infringement, inducement of infringement, and contributory infringement of the '172 Patent. (Docket Entry No. 21 at 12; Case 4:16-cv-293, Docket Entry No. 1 at 7).
C. The disputed terms
The parties dispute 17 terms in claims 1, 2, and 3. The meaning or definiteness of the following claim terms are disputed:
• "braking means" (claims 1 and 3);
• "electronic bit weight comparison means" (claims 1 and 2);
• "drill stem" (claim 1);
• "alternatively move said stem upward and downward" (claim 1);
• "a bit weight sensor" (claim 1);
• "a signal proportionate to any difference between said actual bit weight and said pre-selected bit weight value" (claim 1);
• "programmable control means" (claim 1);
• "in said upward or downward direction" (claim 1);
• "said signal" (claim 1);
• "programmable logic controller" (claim 2);
• "sensor means" (claim 3);
• "electronic weight-on-bit comparison means" (claim 3);
• "signal input means" (claim 3);
• "motor control signal output means" (claim 3);
• "computer data and program processing means" (claim 3);
• "variable motor control signal in proportion to any measured weight-on-bit" (claim 3); and
• "moving said braking means at proportional rates for controlling weight-on-bit upwardly or downwardly during a drilling operation" (claim 3).
The disputed terms are set out in bold:
1. An automatic drilling system for regulating the release of a drill string of drilling rig during the drilling of a borehole, comprising:
a drill stem having a drill bit at one end; drawworks coupled to said drill system;
a prime mover engaged to said drawworks to cause said drawworks to alternatively move said stem upward and downward ;
a bit weight sensor configured for measuring bit weight through direct interface with bit support means which, at least in part, supports the weight of said drill bit, and which is electrically coupled to a [sic] electronic bit weight comparison means , where said bit weight comparison mens [sic] compares actual bit weight indicated by said bit weight sensor against a user-selected, bit weight value set into said electronic bit weight comparison means, and generates a signal proportionate to any difference between said actual bit weight and said pre-selected bit weight value ;
programmable control means operatively coupled to a variable drive electric motor which is interfaced with drill stem braking means to proportionately effect movement of said drill string in said upward or downward direction upon receipt of signals from said electronic bit weight comparison means according to the value of said signal .
2. The automatic drilling system of claim 1 where the electronic bit weight comparison means includes a programmable logical controller .
3. A control system for governing drawworks braking in an earth drilling apparatus which includes a drill stem comprising:
sensor means for measuring weight-on-bit of said drill string configured for measuring bit weight directly through interface with bit support means which, at least in part, supports the weight of said drill bit, and for generating an electronic signal proportionate to measured weight-on-bit during a drilling operation;
electronic weight-on-bit comparison means comprising:
computer and memory means for storing program logic, data received from said sensor, and user input data;
user input means for inputting said user input data which is representative of a desired weight-on-bit for a drilling operation;
signal input means for receiving said electronic signal from said sensor means and for storing data representative of said electronic signal;
motor control signal output means for generating a variable motor control signal which is proportionate to a desired speed of operation of an electric motor operatively connected to said motor control signal output means ;
computer data and program processing means for comparing said user input data against said data representative of said electronic signal and generating a motor control command for sad [sic] motor control signal output means , operably connected to said computer data and program processing means, to generate said variable motor control signal in proportion to any measured weight-on-bit ; and
an electronic motor operatively connected to said motor control signal output means and, via a gearbox, to braking means for, depending on the RPM rate of said electric motor, moving said braking means at proportional rates for controlling weight-on-bit upwardly or downwardly during a drilling operation , and RPM rate of said electric motor being governed by and proportionate to said motor control signal.
(Column 8, line 26-Column 10, line 13).
D. The procedural history
Auto-Dril initially filed this suit in the Western District of Texas in 2015, alleging that National Oilwell infringed the '172 Patent. (Docket Entry Nos. 1, 21). Auto-Dril also filed separate infringement complaints against Canrig and Pason Systems USA. See Case Nos. 4:16-cv-287, 4:16-cv-293. National Oilwell moved to transfer venue to the Eastern District of Texas; that motion was denied. (Docket Entry Nos. 12, 29). Auto-Dril moved to dismiss National Oilwell's affirmative defense of release, its breach-of-contract counterclaim, and its request for sanctions; that motion was denied. (Docket Entry Nos. 19, 48). Auto-Dril then moved to consolidate the three cases for pretrial purposes; that motion was granted. (Docket Entry Nos. 23, 45).
The consolidated case was stayed while National Oilwell petitioned for a writ of mandamus in the Federal Circuit, seeking a transfer of venue. (Docket Entry Nos. 46, 51). The Federal Circuit denied the petition and a petition for rehearing en banc. (Docket Entry Nos. 52, 59). After the stay was lifted, National Oilwell moved again to transfer venue, and its motion was granted. (Docket Entry Nos. 70, 71, 77, 88).
In February 2016, the consolidated case was transferred to the Southern District of Texas, Houston Division, and assigned to this court. (Docket Entry Nos. 89, 91). The parties jointly moved to dismiss Pason, (Docket Entry Nos. 105, 106), leaving National Oilwell and Canrig as the defendants. National Oilwell unsuccessfully moved for a partial summary judgment as to noninfringement. (Docket Entry No. 161).
The parties then filed claim-construction briefs, responses, and replies. (Docket Entry Nos. 134, 135, 141, 142, 168, 171). The defendants' motions to strike parts of one of Auto-Dril's expert's declaration and one of its expert's report were denied. (Docket Entry Nos. 143, 167, 164, 174). Auto-Dril filed three motions for partial summary judgment on indefiniteness, the defendants responded, and Auto-Dril replied. (Docket Entry Nos. 175, 176, 179, 180, 182, 183, 184, 185, 186).
The Markman hearing was held on November 28, 2017. (Docket Entry Nos. 188, 189). Both sides filed a limited posthearing brief, addressing issues raised and discussed at the hearing. (Docket Entry Nos. 194, 195).
II. The record
A. The exhibits
The parties rely on an extensive record, including the following:
• United States Patent No. 6,994,172 (Docket Entry No. 1-1) ;
• the '172 Patent file history (Docket Entry No. 135-5);
• Patent Application No. 09/369,723 (Docket Entry Nos. 135-3, 142-7, 157-4);
• an office action summary for Patent Application No. 09/369,723 (Docket Entry No. 157-15);
• United States Patent No. 5,474,142 (Docket Entry Nos. 141-2, 142-3) ;
• Patent Application No. 10/178,802 (Docket Entry No. 175-5) ;
• the Patent and Trademark Office's response to Patent Application No. 10/178,802 (Docket Entry No. 142-9) ;
• Michael Stewart's declaration (Docket Entry Nos. 134-1, 142-2, 148-2, 171-3, 175-6, 176-7, 180-4, 182-2);
• Michael Stewart's deposition (Docket Entry Nos. 148-1, 153-18, 179-6, 180-2, 182-3, 185-1, 186-1);
• Kenneth Miller's expert report (Docket Entry Nos. 168-1, 171-2, 175-7, 176-4);
• Kenneth Miller's deposition (Docket Entry Nos. 168-2, 171-6, 176-5, 180-3, 182-4, 185-2, 194-2);
• Michael Porche's declaration (Docket Entry Nos. 168-6, 171-4);
• Michael Porche's deposition (Docket Entry Nos. 168-8, 171-1, 175-3, 176-6, 179-5, 184-2);
• Michael Porche's declaration in the case (Docket Entry Nos. 176-3, 175-2, 171-1, 179-4);
• Mallik Guggari's declaration (Docket Entry Nos. 168-7, 171-5, 179-2, 183-1);
• Mallik Guggari's deposition (Docket Entry No. 168-9);
• James Ray's declaration (Docket Entry No. 153-1);
• John Berryhill's deposition (Docket Entry Nos. 135-4, 153-4, 157-3);
• interrogatory answers (Docket Entry Nos. 141-1, 157-6, 183-4);
• dictionaries (Docket Entry Nos. 134 at 6, 134 at 11, 135-9, 137-1);
• the parties' joint stipulations (Docket Entry No. 109);
• National Oilwell Varco v. Omron briefing and the claim construction order (Docket Entry Nos. 142-4, 142-5, 142-8, 168-11);
• Varco v. Mason Systems USA Corp. briefing (Docket Entry No. 142-6);
• the Mobil Telecommunications Technologies, LLC, v. ZTE (USA) Inc, et al. claim construction order (Docket Entry No. 171-23);
• the Patent Trial and Appeal Board decision terminating the proceeding prior to institution due to settlement in case IPR2016-00624 (Docket Entry No. 175-5);
• a "Deadline Sensor" advertisement on Massload's website (Docket Entry Nos. 180-1, 182-1, 183-2);
• a search for "electric motors" on Grainger Industrial Supply's website (Docket Entry Nos. 180-1, 182-1, 183-2);
• the "hook load (electrical)" listing on the Pars Geo-data' website (Docket Entry Nos. 180-1, 182-1, 183-2);
• a search for "D2-06BDC1-1" on AutomationDirect's website (Docket Entry No. 195-4);
• the "Basic HMI" page on Maple System's website (Docket Entry No. 195-5);
• the "EXG Series Explosion Proof Pressure Transmitter" page on Dylix Corporation's website (Docket Entry No. 195-6);
• the "Model 170/270/370 | WECO 'Hammer' Union Pressure Transmitter" page on GP:50's website (Docket Entry No. 195-7);
• the "GS2-11P0" listing on AutomationDirect's website (Docket Entry No. 195-8);
• "weight values" test results (Docket Entry No. 153-2); and
• Padco marketing materials (Docket Entry Nos. 135-2, 153-3, 157-8, 157-9).
B. The experts
Four witnesses submitted their opinions and reports under Rule 702 of the Federal Rules of Evidence. Michael Stewart and Kenneth Miller testified as Rule 702 witnesses for Auto-Dril, and Michael Porche and Mallik Guggari testified for National Oilwell and Canrig. Each of the Rule 702 witnesses is a person of ordinary skill in the art of automatic drillers used in oil and gas drilling control systems. (Docket Entry Nos. 134-1 at ¶ 2-3, 168-6 at ¶ 7-8, 168-7 at ¶ 7, 174).
i. Michael Stewart
Stewart submitted a declaration, (Docket Entry Nos. 134-1, 142-2, 148-2, 171-3, 175-6, 176-7, 180-4, 182-2), and his deposition, (Docket Entry Nos. 148-1, 153-18, 179-6, 180-2, 182-3, 185-1, 186-1). Stewart received a degree in petroleum engineering from the Colorado School of Mines and has worked in the oil and gas industry since 1984. (Docket Entry No. 134-1 at ¶ 2). He gained expertise "through education and experience in the oil and gas exploration business, including the participation in varying phases, and in a variety of roles in drilling no less than 1400 oil and gas wells." Id. at ¶ 1. He has "significant experience in drilling oil and gas wells with rotary rigs," has "been involved with drilling operations using many different types of rigs," and has been "in charge of, or advised on, drilling strategies and methods." Id. Stewart also testified about his background in his deposition. (Docket Entry No. 148-1 at 5-7).
ii. Kenneth Miller
Kenneth Miller submitted an expert report, (Docket Entry Nos. 168-1, 171-2, 175-7, 176-4), and his deposition, (Docket Entry Nos. 168-2, 171-6, 176-5, 180-3, 182-4, 185-2, 194-2). Miller studied at the University of Houston but did not receive a degree. (Docket Entry Nos. 167-3 at 4-6, 172-3). He worked at Texas Instruments as an automation engineer between 2003 and 2007, at Teledrill as a design engineer between 2007 and 2009, and at Edros Miller as president between 2009 and 2017. (Docket Entry No. 171-2 at 16). While at Teledrill, Miller worked on the design, development, and testing of "Measurement While Drilling tools including electronics, firmware and surface software systems." Id. As the founding partner of Erdos Miller, he worked in both a technical and business capacity, including "participat[ing] in the design and development of drilling products such as Measurement While Drilling Systems, Automatic Drillers, Mudlogging Systems and other rig control systems as well as downhole tools." Id. ; (Docket Entry No. 167-3 at 19-23).
The defendants moved to strike Miller's expert report, arguing that he lacked education and work experience to be a person of ordinary skill in the art. (Docket Entry No. 167). Auto-Dril responded and provided a supplement to Miller's report. (Docket Entry Nos. 172, 172-1). The court denied the motion to strike, finding that Miller qualified as a person of ordinary skill in the art and that "[t]he extent to which Miller's experience or education may impact his conclusions can be explored by cross-examination and by presenting contrary evidence." (Docket Entry No. 174 at 7).
iii. Michael Porche
Michael Porche submitted a declaration, (Docket Entry Nos. 168-6, 171-4), and his deposition, (Docket Entry Nos. 168-8, 171-1, 175-3, 176-6, 179-5, 184-2). Porche received a bachelor of science in physics with minors in electrical engineering, mathematics, and economics from Louisiana State University. (Docket Entry No. 171-1 at ¶ 1). He began working for subsidiaries of National Oilwell in 1972, first at Baylor Company, then at Ross Hills Controls. Id. Porche worked in the oilfield for over 40 years, holding management roles as a service manager; a general marketing manager for new product development; a customer services manager overseeing field service, customer training, parts, and in-house testing; and a general manager of Baylor's first overseas office. Id. He was an electrician and technician on a large offshore drilling rig, and he has developed and taught classes in eddy-current brake theory, power rectifier and inverters, dynamic positioning, marine engineering propulsion, and control system engineering. Id. Porche served on an International Association of Drilling Contractors group for electrical installations on mobile offshore drilling units. Id. Porche retired as senior principal engineer for National Oilwell in 2015. Id. He has published multiple technical articles and holds patents. Id. at ¶¶ 2-3.
In addition to Porche's declaration and his deposition, Auto-Dril relies on Porche's 2016 declaration submitted to the United States Patent and Trademark Office in an inter partes review action in which Pason challenged the '172 Patent. (Docket Entry No. 171-1). National Oilwell and Canrig argue that the declaration is inadmissible under the Southern District of Texas local patent rules. (Docket Entry Nos. 180 at 16-17; 182 at 12-13; 183 at 10-11).
Rule 4-2 states as follows:
4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence.
(a) By the deadline set in the Scheduling Order, the parties must simultaneously exchange a proposed "Preliminary Claim Construction" of each element of each claim term, phrase, or clause in issue. Each "Preliminary Claim Construction" must also identify the structures, acts, or materials corresponding to each claim element governed by 35 U.S.C. § 112, ¶ 6.
(b) At the same time the parties exchange their respective "Preliminary Claim Constructions," they must also exchange a preliminary identification of extrinsic evidence they contend supports their respective claim constructions, such as dictionary definitions, citations to learned treatises and prior art, and testimony of fact and expert witnesses. The parties must identify each item of extrinsic evidence by production number or produce a copy of any such item not previously produced. With respect to each fact or expert witness a party intends to rely on for claim construction, the party must also provide a brief description of the substance of that witness's proposed testimony.
Rules of Practice for Patent Cases in the Southern District of Texas (effective Jan. 1, 2008).
The defendants argue that Auto-Dril "was required to produce all extrinsic evidence it planned to rely on for claim construction purposes" when it produced its preliminary proposed constructions in the August 2016 exchange. (Docket Entry Nos. 180 at 16; 182 at 12; 183 at 10 (emphasis added) ). But Rule 4-2 does not require that parties exchange, in the preliminary claim-construction stages, all extrinsic evidence that they will rely upon. The rule requires a "preliminary identification" of extrinsic evidence. The defendants' interpretation of Rule 4-2 would limit the parties to the extrinsic evidence available when the parties exchanged their preliminary proposed constructions. Under that approach, Auto-Dril could use only the extrinsic evidence it produced on August 15, 2016, more than 15 months before the Markman hearing and well before discovery ended. Auto-Dril's reliance on Porche's declaration in the Pason inter partes review does not violate Rule 4-2.
The defendants argue that Auto-Dril "further failed to mention it was relying on [Porche's Pason declaration] in its: (1) opening claim construction brief filed on December 12, 2016 ..., and (2) its responsive claim construction brief filed on January 6, 2017 ...." (Docket Entry Nos. 180 at 16; 182 at 12; 183 at 10-11). The defendants argue that the declaration should be excluded because "Auto-Dril only informed defendants that it planned to rely on this declaration through its supplemental claim construction brief filed on September 5, 2017." Id. (emphasis omitted). This argument is also unpersuasive. Porche adopted his Pason declaration as his testimony in this case when he was deposed on May 23, 2017, and the defendants' counsel did not object. (Docket Entry No. 175-3 at 6). Auto-Dril could not have informed the defendants that it would rely on the declaration in its opening or responsive claim construction briefs, which were filed months before Porche was deposed in this case and adopted the Pason declaration as his testimony in this case. Auto-Dril's supplemental claim-construction brief, (Docket Entry No. 171), was the first claim-construction brief that Auto-Dril filed after Porche's deposition. Auto-Dril's disclosure of its reliance on Porche's Pason declaration was not late.
The defendants also argue that Porche's Pason declaration is inadmissible hearsay. (Docket Entry Nos. 180 at 17, 183 at 11). A statement is not hearsay if it "is offered against an opposing party and ... is one the party manifested that it adopted or believed to be true." FED. R. EVID. 801(d)(2)(B) ; Collins v. Wayne Corp. , 621 F.2d 777, 782 (5th Cir. 1980), superseded by rule on other grounds as recognized in Mathis v. Exxon Corp. , 302 F.3d 448 (5th Cir. 2002) (an expert report was admissible as a party-opponent's statement because the expert "was performing the function that [the party opponent] had employed him to perform"). Porche adopted his Pason declaration after he was retained as an expert for one of the defendants in this case. As noted, the defendants did not object when Porche adopted the Pason declaration as his testimony in this case, and the defendants had a full opportunity to examine Porche on the declaration during his deposition. Cf. FED. R. EVID. 804(b)(1). Porche's Pason declaration is admissible under Rule 801(d)(2)(B).
The defendants finally argue that the Pason declaration is irrelevant because Porche was not asked to provide an opinion on indefiniteness issues. (Docket Entry Nos. 180 at 18; 182 at 13; 183 at 12). Porche's Pason declaration is relevant under Rule 401 of the Federal Rules of Evidence. Porche analyzed the '172 Patent in his Pason declaration and offered his opinion as a person of ordinary skill in the art on the construction of many of the claim terms disputed in this case. (Docket Entry No. 176-3).
iv. Mallik Guggari
Mallik Guggari submitted his declaration, (Docket Entry Nos. 168-7, 171-5, 179-2, 183-1), and deposition, (Docket Entry No. 168-9). Guggari received a bachelor of engineering in electrical engineering from Karnatak University, a master of science in electrical engineering from Texas A & M University, and a master of business administration from the McCombs School of Business at the University of Texas at Austin. (Docket Entry No. 168-7). He began working in the oilfield in 1989 as a development and senior development engineer for Ross Hill Controls Corporation. Id. Guggariwas a senior controls engineer, principal engineer, and research and development manager for MD Totco, a division of National Oilwell. Id. He was a senior manager of new product development for IMO, a division of National Oilwell, and then worked in National Oilwell's dynamic drilling solutions unit as a global automation engineering and system validation lead. Id. Guggari most recently served as founder and chief executive officer of GK Plus Innovations, LLC. Id. He has published multiple technical articles and holds patents. Id.
III. The Legal Standards
A. Claim construction
The "claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc. , 381 F.3d 1111, 1115 (Fed. Cir. 2004) ). "[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Markman v. Westview Instruments, Inc. , 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claim terms are "generally given their ordinary and customary meaning," defined as "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips , 415 F.3d at 1312-13 (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996) ). That is a person who will "read the words used in the patent documents with an understanding of their meaning in the field, and [has] knowledge of any special meaning and usage in the field." Id. (quoting Multiform Desiccants, Inc. v. Medzam, Ltd. , 133 F.3d 1473, 1477 (Fed. Cir. 1998) ); see also Medrad, Inc. v. MRI Devices Corp. , 401 F.3d 1313, 1319 (Fed. Cir. 2005) (cautioning courts not to interpret claim terms "in a vacuum" (quotation omitted) ).
Claim construction begins with the claim language. Aptalis Pharmatech, Inc. v. Apotex Inc. , --- Fed.Appx. ----, ----, 2018 WL 286123, at *3 (Fed. Cir. Jan. 4, 2018). The court looks first "to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention," Vitronics , 90 F.3d at 1582, and construes the claim terms in the context of the surrounding claim language. ACTV, Inc. v. Walt Disney Co. , 346 F.3d 1082, 1088 (Fed. Cir. 2003) ("[T]he context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms."); accord Lexion Medical, LLC v. Northgate Techs., Inc. , 641 F.3d 1352, 1356 (Fed. Cir. 2011). When the words in the context of the surrounding claim language make the ordinary meaning readily apparent, claim construction "involves little more than the application of the widely accepted meaning of commonly understood words." Phillips , 415 F.3d at 1314.
Patent-ese is a notoriously clumsy and awkward form of English, which can make construction more challenging. If the "ordinary and customary" meaning is unclear, the court moves from the words in the claims, viewed in context of the patent, to "the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics , 90 F.3d at 1582. Courts review the "specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning." Vitronics , 90 F.3d at 1582. The Federal Circuit has repeatedly stated that "claims 'must be read in view of the specification, of which they are a part.' " Phillips , 415 F.3d at 1315 (quoting Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd , 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ). The specification, a "concordance for the claims," id. (quoting Autogiro Co. of Am. v. United States , 384 F.2d 391, 397-98 (Ct. Cl. 1967) ), is the "best source for understanding a technical term," id. (quoting Multiform Desiccants , 133 F.3d at 1478 ). "[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor." Id. (citing Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc. , 242 F.3d 1337, 1343-44 (Fed. Cir. 2001) ); see also Thorner v. Sony Computer Entm't Am. LLC , 669 F.3d 1362, 1365 (Fed. Cir. 2012) (claim construction may deviate from the ordinary and customary meaning of a disputed term only if (1) a patentee sets out a definition and acts as his own lexicographer, or (2) the patentee disavows the full scope of a claim term, either in the specification or during prosecution).
"The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Phillips , 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Società per Azioni , 158 F.3d 1243, 1250 (Fed. Cir. 1998) ). "There is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims." Retractable Techs., Inc. v. Becton, Dickinson & Co. , 653 F.3d 1296, 1305 (Fed. Cir. 2011). Courts must "capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention." Id.
"[A] court 'should also consider the patent's prosecution history, if it is in evidence.' " Phillips , 415 F.3d at 1317 (quoting Markman , 52 F.3d at 980 ); see also Typhoon Touch Techs., Inc. v. Dell, Inc. , 659 F.3d 1376, 1381 (Fed. Cir. 2011) ("[T]he specification is the primary source for determining what was invented and what is covered by the claims, elucidated if needed by the prosecution history."). The 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 1317 (citing Vitronics , 90 F.3d at 1582-83 ). The prosecution history includes "all express representations made by or on behalf of the applicant to the examiner to induce a patent grant, or ... to reissue a patent ... include[ing] amendments to the claims and arguments made to convince the examiner that the claimed invention meets the statutory requirements of novelty, utility, and nonobviousness." Standard Oil Co. v. Am. Cyanamid Co. , 774 F.2d 448, 452 (Fed. Cir. 1985) ; see also Sanofi-Aventis Deutschland GmbH v. Genentech, Inc. , 473 Fed.Appx. 885, 888 (Fed. Cir. 2012) ("We have held that an otherwise broadly defined term can be narrowed during prosecution through arguments made to distinguish prior art.") (citing Phillips , 415 F.3d at 1317 ("The prosecution history ... consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent.") ).
"The doctrine of prosecution disclaimer is well established in Supreme Court precedent, precluding patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Omega Eng'g, Inc. v. Raytek Corp. , 334 F.3d 1314, 1323 (Fed. Cir. 2003) ; see also SanDisk Corp. v. Memorex Prods., Inc. , 415 F.3d 1278, 1286 (Fed. Cir. 2005). The doctrine applies even if the disclaimers were not necessary to make the invention patentable. See Uship Intellectual Props., LLC v. United States , 714 F.3d 1311, 1315 (Fed. Cir. 2013) ("We find no support for [the] proposition that prosecution disclaimer applies only when applicants attempt to overcome a claim rejection. Our cases broadly state that an applicant's statements to the PTO characterizing its invention may give rise to a prosecution disclaimer."); cf. Southwall Techs., Inc. v. Cardinal IG Co. , 54 F.3d 1570, 1583 (Fed. Cir. 1995) ("Estoppel extends beyond the basis of patentability .... Clear assertions made during prosecution in support of patentability, whether or not actually required to secure allowance of the claim, may also create an estoppel.") (citing Tex. Instruments, Inc. v. U.S. Int'l Trade Comm'n , 988 F.2d 1165 (Fed. Cir. 1993) ). Prosecution disclaimer does not apply "where the alleged disavowal of claim scope is ambiguous." Omega Eng'g , 334 F.3d at 1324 ; see also id. at 1325 ("[W]e have required the alleged disavowing statements to be both so clear as to show reasonable clarity and deliberateness and so unmistakable as to be unambiguous evidence of disclaimer.") (citations omitted). Only when "the patentee has unequivocally disavowed a certain meaning to obtain his patent [does] the doctrine of prosecution disclaimer attach[ ] and narrow[ ] the ordinary meaning of the claim congruent with the scope of the surrender." Id. at 1324.
Courts may also "rely on extrinsic evidence, which 'consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.' " Phillips , 415 F.3d at 1317 (quoting Markman , 52 F.3d at 980 ). Although extrinsic evidence " 'can shed useful light on the relevant art,' it is 'less significant than the intrinsic record in determining the legally operative meaning of claim language.' " Zircon Corp. v. Stanley Black& Decker, Inc. , 452 Fed.Appx. 966, 972-73 (Fed. Cir. 2011) (quoting Phillips , 415 F.3d at 1317 ). Extrinsic evidence is "in general ... less reliable than the patent and its prosecution history" because it is "not part of the patent" and was not created in patent prosecution: "extrinsic publications may not be written by or for skilled artisans"; and expert reports and testimony created later, for litigation, may "suffer from bias not present in intrinsic evidence." Phillips , 415 F.3d at 1318. A court must use "sound discretion" in admitting and using extrinsic evidence. Id. at 1319 ; see also Seattle Box Co. v. Indus. Crating & Packing, Inc. , 731 F.2d 818, 826 (Fed. Cir. 1984) ("A trial judge has sole discretion to decide whether or not [s]he needs, or even just desires, an expert's assistance to understand a patent. We will not disturb that discretionary decision except in the clearest case.").
"[E]xtrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Phillips , 415 F.3d at 1319. Although a court may consider extrinsic evidence, it must not relegate the intrinsic evidence to a mere "check on the dictionary meaning of a claim term." Id. at 1320-21 (noting that relying on dictionaries "too often" causes "the adoption of a dictionary definition entirely divorced from the context of the written description"). "The sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law." Id. at 1324 (citing Vitronics , 90 F.3d at 1582 ).
These claim-construction rules must be applied to the record in this case, including the tutorial counsel jointly provided the court, the arguments counsel presented during the Markman hearing, the expert reports, and the documents admitted into evidence.
B. Indefiniteness
Section 112(2) provides that "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112(2). "The primary purpose of the definiteness requirement is to ensure that the claims are written in such a way that they give notice to the public of the extent of the legal protection afforded by the patent, so that interested members of the public, e.g., competitors of the patent owner, can determine whether or not they infringe. That determination requires a construction of the claims according to the familiar canons of claim construction." Oakley, Inc. v. Sunglass Hut Int'l , 316 F.3d 1331, 1340 (Fed. Cir. 2003) (citing All Dental Prodx, LLC v. Advantage Dental Prods ., 309 F.3d 774, 779-80 (Fed. Cir. 2002) (citations omitted) ). "One of those canons is that claims are construed as one skilled in the art would understand them in light of the specification of which they are a part." Id. at 1340-41 (citing Orthokinetics, Inc. v. Safety Travel Chairs, Inc ., 806 F.2d 1565, 1575 (Fed. Cir. 1986) ).
If an applicant uses means-plus-function language in a claim under § 112(6), he "must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112." Tech. Licensing Corp. v. Videotek, Inc. , 545 F.3d 1316, 1338 (Fed. Cir. 2008) (quoting In Re Donaldson Co. , 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc) ). If a claim includes a means-plus-function limitation, failure to disclose adequate structure corresponding to the claimed function results in invalidity for indefiniteness. In re Dossel , 115 F.3d 942, 946 (Fed. Cir. 1997) ; see also Budde v. Harley-Davidson, Inc. , 250 F.3d 1369, 1376 (Fed. Cir. 2001) ("For a court to hold that a claim containing a means-plus-function limitation lacks a disclosure of structure in the patent specification that performs the claimed function, necessarily means that the court finds the claim in question indefinite, and thus invalid."); Cardiac Pacemakers, Inc. v. St. Jude Med. Inc. , 296 F.3d 1106, 1114 (Fed Cir. 2002) ; Techs. Australia PTY Ltd. v. Int'l Game Tech. , 521 F.3d 1328, 1331 (Fed. Cir. 2008).
An issued patent comes with a statutory presumption of validity under 35 U.S.C. § 282. "[A]n alleged infringer who raises invalidity as an affirmative defense has the ultimate burden of persuasion to prove invalidity by clear and convincing evidence, as well as the initial burden of going forward with evidence to support its invalidity allegation." Titan Tire Corp. v. Case New Holland, Inc. , 566 F.3d 1372, 1376 (Fed. Cir. 2009) (citing Tech. Licensing Corp. , 545 F.3d at 1327 ). "Thus, a challenge to a claim containing a means-plus-function limitation as lacking structural support requires a finding, by clear and convincing evidence, that the specification lacks disclosure of structure sufficient to be understood by one skilled in the art as being adequate to perform the recited function." Budde , 250 F.3d at 1376-77.
A determination of claim indefiniteness is a legal conclusion reached by the court performing its duty as the "construer of patent claims." Tech. Licensing Corp. , 545 F.3d at 1338 (citing Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n , 161 F.3d 696, 705 (Fed. Cir. 1998) ). "To the extent there are any factual findings upon which a trial court's indefiniteness conclusion depends, they must be proven by the challenger by clear and convincing evidence." Id. (citing Intel Corp. v. VIA Techs., Inc. , 319 F.3d 1357, 1366 (Fed. Cir. 2003) ).
C. Means-plus-function claims
Section 112(6) provides that "[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112(6). A means-plus-function claim format allows a patentee to "describe an element of his invention by the result accomplished or the function served, rather than describing the item or element to be used." Warner-Jenkinson Co. v. Hilton Davis Chem. Co. , 520 U.S. 17, 27, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). A patentee's use of the word "means" in a claim element that recites a function creates a presumption that the element is drafted in means-plus-function format. Id. ; TriMed, Inc. v. Stryker Corp. , 514 F.3d 1256, 1259 (Fed. Cir. 2008). This presumption can be rebutted if the claim itself recites sufficient structure to accomplish the functions identified in the claim. Welker Bearing Co. v. PHD, Inc. , 550 F.3d 1090, 1096 (Fed. Cir. 2008) ; Lighting World, Inc. v. Birchwood Lighting, Inc. , 382 F.3d 1354, 1360 (Fed. Cir. 2004).
"Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure." TriMed , 514 F.3d at 1259-1260. A claim may recite sufficiently definite structure if it has "an understood meaning in the art" that connotes enough structure to fall outside section 112, ¶ 6 or if it is " 'used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures.' " Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288 Fed.Appx. 697, 703 (Fed. Cir. 2008) (quoting Lighting World , 382 F.3d at 1359-1360 ) ).
If means-plus-function analysis applies, a court must first determine what the claimed function is and then determine the corresponding structures disclosed in the specification that perform that function. Welker Bearing , 550 F.3d at 1097 ; Minks v. Polaris Indus., Inc. , 546 F.3d 1364, 1377 (Fed. Cir. 2008) ; Texas Digital Sys., Inc. v. Telegenix, Inc. , 308 F.3d 1193, 1208 (Fed. Cir. 2002). Whether the written description adequately sets forth structure corresponding to the claimed function must be considered from the perspective of a person skilled in the art. Intel Corp. , 319 F.3d at 1365-66 (citing Budde , 250 F.3d at 1376 ). The question is not whether one of skill in the art would be capable of implementing a structure to perform the function, but whether that person would understand the written description itself to disclose such a structure. Biomedino, LLC v. Waters Techs. Corp. , 490 F.3d 946, 953 (Fed. Cir. 2007) (citing Med. Instr. & Diagnostics Corp. v. Elekta AB , 344 F.3d 1205, 1212 (Fed. Cir. 2003) ).
The Federal Circuit has made it clear that disclosing a general purpose computer capable of running specialized software, without more, does not supply sufficient structure for means-plus-function claims involving a computer that must be specially programmed to perform a specific set of functions. See WMS Gaming, Inc. v. Int'l Game Tech. , 184 F.3d 1339, 1349 (Fed. Cir. 1999). The structure that the specification must disclose is "not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm." Id. ; see also Harris Corp. v. Ericsson, Inc. , 417 F.3d 1241, 1253 (Fed. Cir. 2005) ("A computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm."); Gobeli Research ltd. v. Apple Computer, Inc. , 384 F.Supp.2d 1016, 1022 (E.D. Tex. 2005) ("The Federal Circuit has made clear that when software is linked to the disclosed function, the structure for performing the function is limited to the algorithm disclosed in the specification.") (citing WMS Gaming , 184 F.3d at 1348-49 ; Harris , 417 F.3d at 1253 ).
The Federal Circuit does not impose a "lofty standard" for the disclosure required to avoid indefiniteness for means-plus-function claims involving computers that must be specially programmed to perform the recited functions. Brown v. Baylor Health Care Sys. , 662 F.Supp.2d 669 (S.D. Tex. 2009), aff'd sub nom. Brown v. Baylor Healthcare Sys. , 381 Fed.Appx. 981 (Fed. Cir. 2010). A patentee may express an algorithm "in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc. , 523 F.3d 1323, 1340 (Fed. Cir. 2008).
D. Summary judgment under Rule 56
"Summary judgment is appropriate only if 'there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.' " Vann v. City of Southaven, Miss. , 884 F.3d 307, 309 (5th Cir. 2018) (citations omitted); see also FED. R. CIV. P. 56(a). "A genuine dispute of material fact exists when the 'evidence is such that a reasonable jury could return a verdict for the nonmoving party.' " Burell v. Prudential Ins. Co. of Am. , 820 F.3d 132, 136 (5th Cir. 2016) (quoting Anderson v. Liberty Lobby , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). "The moving party 'bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of [the record] which it believes demonstrate the absence of a genuine issue of material fact.' " Brandon v. Sage Corp. , 808 F.3d 266, 269-70 (5th Cir. 2015) (quoting Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ).
"Where the non-movant bears the burden of proof at trial, 'the movant may merely point to the absence of evidence and thereby shift to the non-movant the burden of demonstrating ... that there is an issue of material fact warranting trial.' " Kim v. Hospira, Inc. , 709 Fed.Appx. 287, 288 (5th Cir. 2018) (quoting Nola Spice Designs, L.L.C. v. Haydel Enters., Inc. , 783 F.3d 527, 536 (5th Cir. 2015) ). While the party moving for summary judgment must demonstrate the absence of a genuine issue of material fact, it does not need to negate the elements of the nonmovant's case. Austin v. Kroger Tex., L.P. , 864 F.3d 326, 335 (5th Cir. 2017) (quoting Little v. Liquid Air Corp. , 37 F.3d 1069, 1076 n. 16 (5th Cir. 1994) ). A fact is material if "its resolution could affect the outcome of the actions." Aly v. City of Lake Jackson , 605 Fed.Appx. 260, 262 (5th Cir. 2015) (citing Burrell v. Dr. Pepper/Seven Up Bottling Grp., Inc. , 482 F.3d 408, 411 (5th Cir. 2007) ). "If the moving party fails to meet [its] initial burden, the motion [for summary judgment] must be denied, regardless of the nonmovant's response." Pioneer Exploration, LLC v. Steadfast Ins. Co. , 767 F.3d 503 (5th Cir. 2014).
"When the moving party has met its Rule 56(c) burden, the nonmoving party cannot survive a summary judgment motion by resting on the mere allegations of its pleadings." Bailey v. E. Baton Rouge Parish Prison , 663 Fed.Appx. 328, 331 (5th Cir. 2016) (quoting Duffie v. United States , 600 F.3d 362, 371 (5th Cir. 2010) ). The nonmovant must identify specific evidence in the record and articulate how that evidence supports that party's claim. Willis v. Cleco Corp. , 749 F.3d 314, 317 (5th Cir. 2014). "This burden will not be satisfied by 'some metaphysical doubt as to the material facts, by conclusory allegations, by unsubstantiated assertions, or by only a scintilla of evidence.' " Jurach v. Safety Vision, LLC , 642 Fed.Appx. 313, 317 (5th Cir. 2016) (quoting Boudreaux v. Swift Transp. Co. , 402 F.3d 536, 540 (5th Cir. 2005) ). In deciding a summary judgment motion, the court draws all reasonable inferences in the light most favorable to the nonmoving party. Darden v. City of Fort Worth , 866 F.3d 698, 702 (5th Cir. 2017).
III. The Claim-Construction Analysis
A. Auto-Dril's proposed amended claim constructions
The defendants object to considering Auto-Dril's amended proposed claim-constructions, (Docket Entry No. 171-2), arguing that this court's local patent rules "were enacted to prevent this type of 'shifting sands' approach to claim construction," and that some proposed changes "contradicts[ ] Auto-Dril's prior assertions and admissions" about certain terms. (Docket Entry Nos. 180 at 7, 183 at 4, 8-10; Docket Entry No. 182 at 6 (citing Goodman v. Smart Modular Techs., Inc. , CV H-14-1380, 2015 WL 12777374, at *2 (S.D. Tex. June 4, 2015) ).
When the parties asked for a Markman hearing, they filed a joint claim-construction chart with their proposed consturctions. (Docket Entry No. 150). A little more than seven months later, Auto-Dril submitted a proposed amended joint claim-construction chart as an exhibit to its supplemental brief. (Docket Entry No. 171-22). Auto-Dril's constructions of disputed terms in this chart differed from the original chart; the defendants' constructions were unchanged.
Auto-Dril argues that it amended its constructions based on additional discovery and that its recent chart reflects its "most informed, up-to-date, legally correct construction proposals." (Docket Entry Nos. 171 at 5, 188 at 62-63). Auto-Dril notes that the Federal Circuit has allowed a district court to engage in "rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves." Pressure Prod. Med. Supplies, Inc. v. Greatbatch Ltd. , 599 F.3d 1308, 1316 (Fed. Cir. 2010) ("a trial judge may learn more about the technology during the trial that necessitates some clarification of claim terms before the jury deliberates"); Conoco, Inc. v. Energy & Envtl. Int'l, L.C. , 460 F.3d 1349, 1359 (Fed. Cir. 2006).
Though Auto-Dril amended some of its constructions after the parties filed their joint claim-construction chart, it did so in early September 2017. (Docket Entry No. 171-2). The defendants had nearly three months to prepare their response to Auto-Dril's amended claim constructions before the November 28 Markman hearing. The defendants did not ask to supplement their own constructions to respond to Auto-Dril's amended constructions. The Markman hearing provided the defendants with ample opportunity to respond to those constructions. The defendants are not prejudiced by this court's consideration of Auto-Dril's amended claim constructions. The objection is overruled.
B. Construing "drill stem"
i. The parties' contentions
Auto-Dril argues that "drill stem" does not need construction. (Docket Entry No. 171-22 at 2). Alternatively, it argues that the claim term refers to a "connected set of drill pipe and drill collars." The defendants assert that "drill stem" means a drill string plus the kelly. (Docket Entry No. 135 at 26). A kelly or kelly drive is a well-drilling device on an oil or gas drilling rig. The Schlumberger Oilfield Glossary defines it as a "long square or hexagonal steel bar with a hole drilled through the middle for a fluid path. The kelly is used to transmit rotary motion from the rotary table or kelly bushing to the drillstring, while allowing the drillstring to be lowered or raised during rotation." Kelly , SCHLUMBERGER OILFIELD GLOSSARY (accessed April 6, 2018), http://www.glossary.oilfield.slb.com/. In its amended construction chart, Auto-Dril argues that "drill stem" and "drill string" are interchangeable, and that no evidence has been offered to show that a "drill stem" or "drill string" requires a kelly. (Docket Entry No. 134 at 6).
Auto-Dril cites the Schlumberger Oilfield Glossary , which lists "drill string" as a synonym for "drillstem." Drillstem , SCHLUMBERGER OILFIELD GLOSSARY . The definition for both in the 2018 Glossary is "[t]he combination of the drillpipe, the bottomhole assembly and any other tools used to make the drill bit turn at the bottom of the wellbore." Id. Auto-Dril asserts that "system" in "said drill system" is a typographical error, and that the term should read "said drill stem." (Docket Entry No. 134 at 6; Column 8, line 30). The defendants do not dispute that "drill system" should read "drill stem."
The defendants argue that "drill stem" and "drill string" are not interchangeable, citing the presumption that "the use of these different terms in the claims connotes different meanings." CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG , 224 F.3d 1308, 1317 (Fed. Cir. 2000). The defendants argue that reliance on the Schlumberger Oilfield Glossary and expert declarations are improper because they use the 2016 definition of "drill stem," as opposed to the definition "publicly available at the time the patent [was] issued." Texas Digital Sys., Inc. v. Telegenix, Inc. , 308 F.3d 1193, 1202-03 (Fed. Cir. 2002). The defendants cite the 2005 edition of A Dictionary for the Oil and Gas Industry . (Docket Entry No. 137-1 at 4).
ii. Analysis
Both parties rely on dictionaries. Auto-Dril's cited dictionary definitions of "drillstem" and "drill string" are the same. Drillstem , Drill String , SCHLUMBERGER
OILFIELD GLOSSARY . Stewart and Porche both testified that a person of ordinary skill in the art would know that "drill string" and "drill stem" describe the same feature. (Docket Entry Nos. 134-1 at ¶ 19, 171-1 at ¶ 11). In 2005, A Dictionary for the Oil and Gas Industry defined "drill stem" as "all members in the assembly used for rotary drilling from the swivel to the bit, including the kelly, the drill pipe and tool joints, the drill collars, the stabilizers and various speciality items. 'Drill string' is a synonym." (Docket Entry No. 137-1 at 4). The court agrees that "drill string" and "drill stem" are synonymous and interchangeable.
The problem with Auto-Dril's proposed construction is the evidence that the Schlumberger Oilfield Glossary definition of "drill stem" and "drill string" has changed over time as the technology has changed. Stewart testified that it is common for industry technology and terminology to change over time. Many rigs had "kellies" in the early- to mid-2000s, when the '172 Patent was filed, and in 2006, when it issued; today, by contrast, only a minority of rigs use kellies. (Docket Entry No. 148-1 at 25). The Schlumberger definition was published in 2005, the year before the '172 Patent issued, and defined "drill stem" to include the kelly.
"When a patent is granted, prosecution is concluded, the intrinsic record is fixed, and the public is placed on notice of its allowed claims. Dictionaries, encyclopedias and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art." Texas Digital Sys. , 308 F.3d at 1202-03.
"Drill stem" is construed to mean "all members in the assembly used for rotary drilling from the swivel to the bit, including the kelly and the drill string."
C. Construing "alternatively move said stem upward and downward," "in said upward or downward direction," and "moving said braking means at proportional rates for controlling weight-on-bit upwardly or downwardly during a drilling operation"
i. The parties' contentions
Auto-Dril argues that the three "upward" and "downward" terms do not need construction. (Docket Entry No. 171-22 at 2, 6, 13). Alternatively, it argues that "alternatively move said stem upward and downward" means "increasing or decreasing the relative speed that the drill stem is inserted into a well bore," and that "in said upward or downward direction" means "in the alternative, describing movement in an upward or downward direction." In its amended construction chart, Auto-Dril adds that the construction is "[u]ndisputed to the extent that experts on both sides agree that control of relative speed results in upward and downward motion of the drill stem/string."
The defendants argue that the first two claim terms mean "capable of moving the drill [string/stem] upward and downward during drilling," and that "moving said braking means at proportional rates for controlling weight-on-bit upwardly or downwardly during a drilling operation" means "capable of moving the braking means to control the downward and upward movement of the drill string." Id.
Auto-Dril states that it is willing to accept the defendants' construction if the words "capable of" is removed. Auto-Dril argues that including "capable of" inserts a new claim limitation by converting actions into descriptions of things that cause movement. (Docket Entry No. 134 at 7).
The defendants respond that "capable of" is proper because these are apparatus claims, "which require an interpretation of what functions the 'things' must be capable of performing." (Docket Entry No. 141 at 13).
ii. Analysis
"[A]pparatus claims cover what a device is , not what a device does ." Hewlett-Packard Co. v. Bausch & Lomb Inc. , 909 F.2d 1464, 1468 (Fed. Cir. 1990). The defendants are correct that these are apparatus claims. Claim 1 describes "[a]n automatic drilling system," which is an apparatus, not a method. (Column 8, line 26). Claim 3 describes "[a] control system for governing drawworks braking in an earth drilling apparatus," again, an apparatus, not a method. (Column 8, lines 55-56). The "upward" and "downward" claim terms "do[ ] not refer to actions to be taken by the user," but instead "recite[ ] the capabilities of the apparatus"-the ability to move the drill stem upward and downward. WesternGeco L.L.C. v. ION Geophysical Corp. , 876 F.Supp.2d 857, 874 (S.D. Tex. 2012) ; cf. Tech. Properties Ltd. v. Matsushita Elec. Indus. Co. , 514 F.Supp.2d 916, 924 (E.D. Tex. 2007), aff'd sub nom. Tech. Properties Ltd., Inc. v. Arm, Ltd. , 276 Fed.Appx. 1019 (Fed. Cir. 2008) (a claim term that includes "a method for providing instructions and operands" language is a method claim).
Including "capable of" is proper. It makes clear that the claim terms are not describing method steps. Microprocessor Enhancement Corp. v. Texas Instruments Inc. , 520 F.3d 1367, 1375 (Fed. Cir. 2008) (a claim that used functional language was not indefinite because it was "clearly limited to a[n apparatus] possessing the recited structure and capable of performing the recited functions"); Synqor, Inc. v. Artesyn Techs., Inc. , 2010 WL 2991037, at *31 (E.D. Tex. July 26, 2010), aff'd , 709 F.3d 1365 (Fed. Cir. 2013) (language "used to describe the structure and capabilities of the claimed apparatus" is proper).
"Alternatively move said stem upward and downward" i