Core Laboratories v. Spectrum Tracer Services LLC et al
Filing
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ORDER as to how the terms and phrases at issue should be construed (as more fully set out in order). Signed by Honorable Vicki Miles-LaGrange on 7/3/2012. (ks)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
CORE LABORATORIES, LP,
)
)
Plaintiff,
)
)
vs.
)
)
SPECTRUM TRACER SERVICES, L.L.C., )
STEVE FAUROT AND KELLY BRYSON, )
)
Defendants.
)
Case No. CIV-11-1157-M
ORDER
The parties have filed a Joint Claim Construction and Prehearing Statement, opening claim
construction briefs, and responses to the opening claim construction briefs. On June 20, 2012, the
Court held a Markman hearing. During the hearing plaintiff Core Laboratories called an expert
witness, Gary Wooley. On June 22, 2012, Plaintiff’s Supplemental Brief Regarding Claim
Construction was filed.
I.
Introduction
Plaintiff Core Laboratories, LP (“Core”) owns U.S. Patent Nos. 6,659,175 (the ‘175 Patent),
and 7,032,662 (the ‘662 Patent). Core is a provider of proprietary and patented services used to
maximize hydrocarbon recovery from Core’s producing fields. SpectraChem is one such service.
One way Core maximizes production is through the process known as facturing. Facturing requires
the injection of several materials into a hydrocarbon-bearing formation. If the removal of these
materials is not done promptly it can increase the cost to the operator of the well by delaying
production and causing excess removal expenses.
The ‘175 and the ‘662 Patents generally describe a method where a tracer is admixed with
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a material that is injected into an oil well. After the mixture is injected into an oil well, the injected
material is recovered along with reservoir fluids as a production fluid. The ‘175 and the ‘662
Patents specifically describe two methods of determining the extent of recovery of materials
injected. The first method is known as the mass balance approach. In the mass balance approach,
the total amount of tracer admixed with the injected material is known. The amount of injected
admixture recovered is determined by using a formula. The second method is the relative rate of
recovery method. Using the relative rate of recovery method, samples of production fluid are taken
and plotted against time and/or flow rates on a graph.
II.
Standards Governing Claim Construction
The purpose of a Markman hearing is for the Court, as a matter of law, to decide upon clear
definitions of a patent’s terms for a jury to use in determining whether there has been infringement.
In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit restated the
pertinent principles a court must apply when it engages in claim construction:
The first paragraph of section 112 of the Patent Act, 35 U.S.C. § 112,
states that the specification
shall contain a written description of the invention,
and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it
pertains ... to make and use the same ....
The second paragraph of section 112 provides that the specification
shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter
which the applicant regards as his invention.
Those two paragraphs of section 112 frame the issue of claim
interpretation for us. The second paragraph requires us to look to the
language of the claims to determine what “the applicant regards as
his invention.” On the other hand, the first paragraph requires that
the specification describe the invention set forth in the claims.
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It is a “bedrock principle” of patent law that “the claims of a patent
define the invention to which the patentee is entitled the right to
exclude.” Innova [Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)]; see also Vitronics [Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 2004)] (“we look
to the words of the claims themselves ... to define the scope of the
patented invention)”; Markman [v. Westview Instruments, Inc., 52
F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996)]
(“The written description part of the specification itself does not
delimit the right to exclude. That is the function and purpose of
claims.”). . . . Because the patentee is required to “define precisely
what his invention is,” the Court explained, it is “unjust to the public,
as well as an evasion of the law, to construe it in a manner different
from the plain import of its terms.” White v. Dunbar, 119 U.S. 47,
52, 7 S.Ct. 72, 30 L.Ed. 303 (1886); see also Cont’l Paper Bag Co.
v. E. Paper Bag Co., 210 U.S. 405, 419, 28 S.Ct. 748, 52 L.Ed. 1122
(1908) (“the claims measure the invention”); McCarty v. Lehigh
Valley R.R. Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed. 358
(1895) (“if we once begin to include elements not mentioned in the
claim, in order to limit such claim ..., we should never know where
to stop”); Aro Mfg. Co. v. Convertible Top Replacement Co., 365
U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“the claims made
in the patent are the sole measure of the grant”).
We have frequently stated that the words of a claim “are generally
given their ordinary and customary meaning.” Vitronics, 90 F.3d at
1582; see also Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295,
1299 (Fed.Cir.1999); Renishaw PLC v. Marposs Societa’ per Azioni,
158 F.3d 1243, 1249 (Fed.Cir.1998). We have made clear, moreover,
that the 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. See Innova, 381 F.3d at 1116
(“A court construing a patent claim seeks to accord a claim the
meaning it would have to a person of ordinary skill in the art at the
time of the invention.”); Home Diagnostics, Inc. v. LifeScan, Inc.,
381 F.3d 1352, 1358 (Fed.Cir.2004) (“customary meaning” refers to
the “customary meaning in [the] art field”); Ferguson
Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 1338
(Fed.Cir.2003) (claim terms “are examined through the viewing glass
of a person skilled in the art”); see also PC Connector Solutions LLC
v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed.Cir.2005) (meaning
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of claim “must be interpreted as of [the] effective filing date” of the
patent application); Schering Corp. v. Amgen Inc., 222 F.3d 1347,
1353 (Fed.Cir.2000)(same).
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. See Innova, 381 F.3d at 1116. That starting
point is based on the well-settled understanding that inventors are
typically persons skilled in the field of the invention and that patents
are addressed to and intended to be read by others of skill in the
pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116,
1119 (Fed.Cir.2002) (patent documents are meant to be “a concise
statement for persons in the field”); In re Nelson, 47 C.C.P.A. 1031,
280 F.2d 172, 181 (1960) (“The descriptions in patents are not
addressed to the public generally, to lawyers or to judges, but, as
section 112 says, to those skilled in the art to which the invention
pertains or with which it is most nearly connected.”).
Importantly, the person of ordinary skill in the art is deemed to read
the claim term not only in the context of the particular claim in which
the disputed term appears, but in the context of the entire patent,
including the specification. This court explained that point well in
Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477
(Fed.Cir.1998):
It is the person of ordinary skill in the field of the
invention through whose eyes the claims are
construed. Such person is deemed to read the words
used in the patent documents with an understanding
of their meaning in the field, and to have knowledge
of any special meaning and usage in the field. The
inventor’s words that are used to describe the
invention – the inventor’s lexicography – must be
understood and interpreted by the court as they would
be understood and interpreted by a person in that field
of technology.
Thus the court starts the
decisionmaking process by reviewing the same
resources as would that person, viz., the patent
specification and the prosecution history.
See also Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319
(Fed.Cir.2005) (“We cannot look at the ordinary meaning of the term
... in a vacuum. Rather, we must look at the ordinary meaning in the
context of the written description and the prosecution history.”); VFormation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1310
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(Fed.Cir.2005) (intrinsic record “usually provides the technological
and temporal context to enable the court to ascertain the meaning of
the claim to one of ordinary skill in the art at the time of the
invention”); Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 375 F.3d
1341, 1351 (Fed.Cir.2004) (proper definition is the “definition that
one of ordinary skill in the art could ascertain from the intrinsic
evidence in the record”).
In some cases, the ordinary meaning of claim language as understood
by a person of skill in the art may be readily apparent even to lay
judges, and claim construction in such cases involves little more than
the application of the widely accepted meaning of commonly
understood words. See Brown v. 3M, 265 F.3d 1349, 1352
(Fed.Cir.2001) (holding that the claims did “not require elaborate
interpretation”). In such circumstances, general purpose dictionaries
may be helpful. In many cases that give rise to litigation, however,
determining the ordinary and customary meaning of the claim
requires examination of terms that have a particular meaning in a
field of art. Because the meaning of a claim term as understood by
persons of skill in the art is often not immediately apparent, and
because patentees frequently use terms idiosyncratically, the court
looks to “those sources available to the public that show what a
person of skill in the art would have understood disputed claim
language to mean.” Innova, 381 F.3d at 1116. Those sources include
“the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence
concerning relevant scientific principles, the meaning of technical
terms, and the state of the art.” Id.; see also Gemstar-TV Guide Int’l,
Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1364 (Fed.Cir.2004);
Vitronics, 90 F.3d at 1582-83; Markman, 52 F.3d at 979-80.
Quite apart from the written description and the prosecution history,
the claims themselves provide substantial guidance as to the meaning
of particular claim terms. See Vitronics, 90 F.3d at 1582; see also
ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.Cir.2003)
(“the context of the surrounding words of the claim also must be
considered in determining the ordinary and customary meaning of
those terms”).
To begin with, the context in which a term is used in the asserted
claim can be highly instructive. . . .
Other claims of the patent in question, both asserted and unasserted,
can also be valuable sources of enlightenment as to the meaning of
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a claim term. Victronics, 90 F.3d at 1582. Because claim terms are
normally used consistently throughout the patent, the usage of a term
in one claim can often illuminate the meaning of the same term in
other claims. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336,
1342 (Fed.Cir.2001); CVI/Bata Ventures, Inc. v. Tura LP, 112 F.3d
1146, 1159 (Fed.Cir.1997). . . .
The claims, of course, do not stand alone. Rather, they are part of “a
fully integrated written instrument,” Markman, 52 F.3d at 978,
consisting principally of a specification that concludes with the
claims. For that reason, claims “must be read in view of the
specification, of which they are a part.” Id. at 979. As we stated in
Vitronics, the specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.” 90 F.3d at 1582.
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Shortly after the creation of this court, Judge Rich wrote that “[t]he
descriptive part of the specification aids in ascertaining the scope and
meaning of the claims inasmuch as the words of the claims must be
based on the description. The specification is, thus, the primary basis
for construing the claims.” Standard Oil Co. v. Am. Cyanamid Co.,
774 F.2d 448, 452 (Fed.Cir.1985). On numerous occasions since
then, we have reaffirmed that point, stating that “[t]he best source for
understanding a technical term is the specification from which it
arose, informed, as needed, by the prosecution history.” Multiform
Desiccants, 133 F.3d at 1478; Metabolite Labs, Inc. v. Lab. Corp. of
Am. Holdings, 370 F.3d 1354, 1360 (Fed.Cir.2004) (“In most cases,
the best source for discerning the proper context of claim terms is the
patent specification wherein the patent applicant describes the
invention.”); see also, e.g., Kinik Co. v. Int’l Trade Comm’n, 362
F.3d 1359, 1365 (Fed.Cir.2004) (“The words of patent claims have
the meaning and scope with which they are used in the specification
and the prosecution history.”); Moba, B.V. v. Diamond Automation,
Inc., 325 F.3d 1306, 1315 (Fed.Cir.2003) (“[T]he best indicator of
claim meaning is its usage in context as understood by one of skill in
the art at the time of invention.”).
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In addition to consulting the specification, we have held that a court
“should also consider the patent’s prosecution history, if it is in
evidence.” Markman, 52 F.3d at 980; see also Graham v. John
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Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)
(“[A]n invention is construed not only in the light of the claims, but
also with reference to the file wrapper or prosecution history in the
Patent Office.”). The prosecution history, which we have designated
as part of the “intrinsic evidence,” consists of the complete record of
the proceedings before the PTO and includes the prior art cited
during the examination of the patent. Autogiro, 384 F.2d at 399.
Like the specification, the prosecution history provides evidence of
how the PTO and the inventor understood the patent. See Lemelson
v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed.Cir.1992).
Furthermore, like the specification, the prosecution history was
created by the patentee in attempting to explain and obtain the patent.
Yet because the prosecution history represents an ongoing
negotiation between the PTO and the applicant, rather than the final
product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.
See Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d
1373, 1380-82 (Fed.Cir.2002) (the ambiguity of the prosecution
history made it less relevant to claim construction); Athletic
Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580
(Fed.Cir.1996) (the ambiguity of the prosecution history made it
“unhelpful as an interpretive resource” for claim construction).
Nonetheless, 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. Vitronics, 90 F.3d at 1582-83; see also Chimie v. PPG
Indus., Inc., 402 F.3d 1371, 1384 (Fed.Cir.2005) (“The purpose of
consulting the prosecution history in construing a claim is to ‘exclude
any interpretation that was disclaimed during prosecution.’”), quoting
ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580
(Fed.Cir.1988); Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d
1570, 1576 (Fed.Cir.1995).
Although we have emphasized the importance of intrinsic evidence
in claim construction, we have also authorized district courts to 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.” Markman, 52 F.3d at
980, citing Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 546, 20
L.Ed. 33 (1870); see also Vitronics, 90 F.3d at 1583. However, while
extrinsic evidence “can shed useful light on the relevant art,” we have
explained that it is “less significant than the intrinsic record in
determining ‘the legally operative meaning of claim language.’” C.R.
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Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.Cir.2004),
quoting Vanderlande Indus. Nederland BV v. Int’l Trade Comm’n,
366 F.3d 1311, 1318 (Fed.Cir.2004); see also Astrazenca AB v.
Mutual Pharm. Co., 384 F.3d 1333, 1337 (Fed.Cir.2004).
Within the class of extrinsic evidence, the court has observed that
dictionaries and treatises can be useful in claim construction. See
Renishaw, 158 F.3d at 1250; Rexnord, 274 F.3d at 1344. We have
especially noted the help that technical dictionaries may provide to
a court “to better understand the underlying technology” and the way
in which one of skill in the art might use the claim terms. Victronics,
90 F.3d at 1584 n. 6. Because dictionaries, and especially technical
dictionaries, endeavor to collect the accepted meanings of terms used
in various fields of science and technology, those resources have
been properly recognized as among the many tools that can assist the
court in determining the meaning of particular terminology to those
of skill in the art of the invention. See Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002). Such evidence, we have
held, may be considered if the court deems it helpful in determining
“the true meaning of language used in the patent claims.” Markman,
52 F.3d at 980.
We have also held that extrinsic evidence in the form of expert
testimony can 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. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308-09
(Fed.Cir.1999); Kep Pharms. v. Hercon Labs. Corp., 161 F.3d 709,
716 (Fed.Cir.1998). However, conclusory, unsupported assertions by
experts as to the definition of a claim term are not useful to a court.
Similarly, a court should discount any expert testimony “that is
clearly at odds with the claim construction mandated by the claims
themselves, the written description, and the prosecution history, in
other words, with the written record of the patent.” Key Pharms., 161
F.3d at 716.
We have viewed extrinsic evidence in general as less reliable than the
patent and its prosecution history in determining how to read claim
terms, for several reasons. First, extrinsic evidence by definition is
not part of the patent and does not have the specification’s virtue of
being created at the time of patent prosecution for the purpose of
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explaining the patent’s scope and meaning. Second, while claims are
construed as they would be understood by a hypothetical person of
skill in the art, extrinsic publications may not be written by or for
skilled artisans and therefore may not reflect the understanding of a
skilled artisan in the field of the patent. Third, extrinsic evidence
consisting of expert reports and testimony is generated at the time of
and for the purpose of litigation and thus can suffer from bias that is
not present in intrinsic evidence. The effect of that bias can be
exacerbated if the expert is not one of skill in the relevant art or if the
expert’s opinion is offered in a form that is not subject to crossexamination. See Senmed, Inc. v. Richard-Allan Med. Indus., Inc.,
888 F.2d 815, 819 n. 8 (Fed.Cir.1989). Fourth, there is a virtually
unbounded universe of potential extrinsic evidence of some marginal
relevance that could be brought to bear on any claim construction
question. In the course of litigation, each party will naturally choose
the pieces of extrinsic evidence most favorable to its cause, leaving
the court with the considerable task of filtering the useful extrinsic
evidence from the fluff. See Daubert v. Merrell Dow Pharms., Inc.,
509 U.S. 579, 595, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993) (“Expert
evidence can be both powerful and quite misleading because of the
difficulty in evaluating it.”). Finally, undue reliance on extrinsic
evidence poses the risk that it will be used to change the meaning of
claims in derogation of the “indisputable public records consisting of
the claims, the specification and the prosecution history,” thereby
undermining the public notice function of patents. Southwall Techs.,
54 F.3d at 1578.
In sum, extrinsic 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.
Nonetheless, because extrinsic evidence can help educate the court
regarding the field of the invention and can help the court determine
what a person of ordinary skill in the art would understand claim
terms to mean, it is permissible for the district court in its sound
discretion to admit and use such evidence. In exercising that
discretion, and in weighing all the evidence bearing on claim
construction, the court should keep in mind the flaws inherent in each
type of evidence and assess that evidence accordingly.
Id. at 1311-19.
III.
Discussion
The parties disagree about the meaning of the following terms and phrases: (1) extent, (2)
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extent of recovery, (3) amount, (4) amount of [“admixture’ or material of interest”] recovered, (5)
calculating, (6) calculating the amount of [“admixture’ or ‘material of interest”] recovered, and (7)
oil well. The disputed terms and phrases are discussed in turn.
A.
Extent
While the parties agree that this term should have its ordinary meaning, Core contends in the
context of the ‘175 Patent and the ‘162 Patent “extent” means “degree”. See, e.g., ‘175 patent at
Title; col 2, ll 13-19; col. 3, ll 29-34; col. 4, ll 46-50; see also ‘662 patent at Title; Abstract; col. 1,
ll 19-24; col. 2 ll 6-31; col. 3, ll 54-59; col. 5, ll 9-12. Core also contends defendants’ circular
construction of the term “extent” does not fit the context of the patents and would be confusing to
the jury. Finally, during the Markman hearing Core’s expert Dr. Wooley testified that Core’s
proposed claim constructions are consistent with the understanding of a person of ordinary skill in
the art. The defendants, referring to a definition found in Webster’s Third International Dictionary,
805 (1993), propose that the term “extent” should mean “the point or degree to which something
extends.”
Because the context of the patent is important in determining the proper construction of a
claim term, see Phillips v. AWH Corp., 415 F.3d 1303 at 1313 (Fed. Cir. 2005) (en banc), the Court
finds that the term “extent” should be construed in light of the context of the ‘175 and ‘662 Patents.
Accordingly, having carefully reviewed the claims and the specifications, the Court finds that the
term “extent” should be construed as follows: “degree”.
B.
Extent of Recovery
The parties’ positions and arguments as to the claim term “extent of recovery” are similar
to the arguments above. Core contends “extent of recovery” should have its ordinary meaning.
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Specifically, Core contends in the context of the ‘175 and ‘662 Patents, “extent of recovery” means
“degree of recovery”. Core contends its proposed construction of extent of recovery is supported
by the patent claims and specification and that defendants’ is not. Again, Core’s proposed
construction is supported by the written report and testimony of its expert Dr. Wooley. Defendants
propose “extent of recovery” should mean “the point or degree to which the recovery of the
[‘materials injected’ or ‘material of interest’] recovered”. Defendants contend their definition
suggests a mathematical computation which fits perfectly with the content of the rest of the claim.
Relying on the Notice of Allowability defendants contend the calculation steps and the specificity
set forth therein are the reason the ‘175 Patent was approved.
For the reasons previous stated, the Court finds that the term “extent of recovery” should be
construed as meaning “degree of recovery”.
C.
Amount
Core contends that the term “amount” should have its ordinary meaning. Specifically, Core
contends that the term “amount” should be construed to mean “quantity”. Defendants contend that
the term “amount” should be construed to mean “the total number or quantity”.
Core asserts its proposed construction is consistent with and supported by the patent claims
and specifications. See, e.g., ‘175 patent col. 5, ll 23-52. Core contends the word total does not
exist in the original claim language; thus, defendants’ proposed construction alters the meaning of
the claim. Core’s proposed construction of the term “amount” is also supported by the expert report
and testimony of Dr. Wooley.
Defendants’ proposed definition for “amount” is “total number or quantity.” Defendants
contend the word “total” in the proposed construction is not inconsistent with the ordinary usage,
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referencing Webster’s Third New International Dictionary. Defendants also contend its proposed
construction of the term “amount” is consistent with patent specifications. Defendants contend the
entire purpose of the patents is to determine the total amount of admixture left in a well and if any
of the required calculations do not include the fact that it is a total amount, the calculation is not
functional.
Having carefully reviewed the parties submissions and the intrinsic and extrinsic evidence,
the Court finds the term “amount” should be construed in light of the context of the ‘175 and ‘662
Patents. Because the original claim language does not include the word “total” the Court finds that
the term “amount” should be construed as follows: “quantity”.
D.
Amount of [“admixture” or “material of interest”] recovered
Core proposes this term be construed consistently with the term “amount” as discussed
above. Core contends in the context of the ‘175 and the ‘662 Patents, “amount of [‘admixture’ or
‘material of interest’] “ means “quantity of [‘admixture’ or ‘material of interest’] recovered”. See,
e.g., ‘175 patent col. 5, ll 23-52. Core also contends its proposed construction is supported by the
expert testimony and report of Dr. Wooley. During the Markman hearing Dr. Wooley testified that
the distinction between “the total amount” and “the amount” will raise questions for the jury not
addressed in the actual claim language. Additionally, Core contends defendants’ proposed
construction for this term is inconsistent with defendants’ proposed construction for “amount” set
forth above. Specifically, defendants’ proposed construction for “amount” includes the word
“number” while defendants’ proposed construction for “amount of [‘admixture’ or ‘material of
interest’] recovered” does not include the word “number”.
Defendants propose the definition “the total quantity of [‘admixture’ or ‘material of interest’]
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recovered” for this term. Defendants contend the calculation of the amount of admixture recovered
must include the total amount recovered and that Core’s mass balance approach will not function
unless total amounts are used in the calculation.
Having carefully reviewed the parties’ submissions and the intrinsic and extrinsic evidence,
the Court finds that the term “amount of [‘admixture’ or ‘material of interest’] recovered” should
be construed as follows: “quantity of [‘admixture’ or ‘material of interest] recovered”.
E.
Calculating and Calculating the amount of [“admixture” or “material of interest”]
recovered
Core proposed that “calculating” and “calculating the amount of [‘admixture’ or ‘material
of interest’] recovered” should have its ordinary meaning. Specifically, Core proposes that
“calculating” in the context of the ‘175 and the ‘662 Patents means “determining by mathematical
process” and that “calculating the amount of [‘admixture’ or ‘material of interest’] recovered”
should be construed to mean “determining by mathematical process the amount of [‘admixture’ or
‘material of interest’] recovered”. See Merriam-Webster online dictionary. Core also contends its
proposed construction of these terms are consistent with and supported by the patent claims and
specification. See, e.g. ‘175 patent col. 5, ll 28-52. Core contends its proposed construction is also
supported by its expert Dr. Wooley. Core contends the patent claims and specification, as well as
its proposed construction for “calculating” and “calculating the amount of [‘admixture’ or ‘material
of interest’] recovered”, encompass both the mass balance approach and the relative rate of recovery
approach of analyzing for tracer concentration. Core also contends defendants’ proposed
construction violates the doctrine of claim differentiation. Specifically, Core contends defendants’
proposed construction of these terms would violate the doctrine of claim differentiation by limiting
Claim 1 of the ‘175 Patent to the mass balance approach based on Claim 9 of the ‘175 Patent's
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limitation. See Bradford Co. v. Conteyor, N.A., Inc., 603 F.2d 1262, 1271 (Fed. Cir. 2010).
Defendants’ proposed definition for “calculating” is “ascertaining the amount of something
by mathematical calculation”. Defendants cite to Webster’s Third New International Dictionary
(1993). Defendants contend this definition is common in the industry. Defendants also contend
Core’s proposed construction is not supported by the intrinsic or the extrinsic evidence.
Specifically, defendants disagree with Core’s position that simply plotting tracer concentration over
time satisfies the calculation step of the relative rate of recovery approach. Defendants contend
putting a concentration on a graph is not “calculating” or “calculating the amount of admixture
recovered” and Core’s expansive definition should not be adopted.
Having carefully reviewed the parties’ submissions and the intrinsic and extrinsic evidence
presented, the Court finds that the term “calculating” and “calculating the amount of [‘admixture’
or ‘material of interest’] recovered” should be construed as follows: “determining by mathematical
process” and “determining by mathematical process the amount of [‘admixture’ or ‘material of
interest’] recovered”.
F.
Oil Well
The parties’ disagreement over this term is limited to the ‘175 Patent. The parties agree that
the ‘662 patent defines “oil well” as “hydrocarbon (gas and oil) production wells drilled in the earth,
such as those that can require stimulation by hydraulic fracturing, but also any other type of well
used in oil and gas production.”
There are several different definitions in the ‘175 Patent for the term “oil well”. Core’s
proposed definition for “oil well”, taken from actual ‘175 language, is “hydrocarbon production
wells, but also any other type of well that can require stimulation by hydraulic fracturing.” See ‘175
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patent at col. 2, ll 21-23. Core’s proposed construction is again supported by its expert Dr.
Wooley’s report and testimony. Defendants propose the definition for “oil well” from the ‘662
Patent. Defendants contend the ‘662 Patent definition for the term “oil well” is a synthesis of the
numerous definitions of oil well found throughout the ‘175 Patent.
Having carefully reviewed the parties’s submissions and the intrinsic and extrinsic evidence,
and construing the term “oil well” in the content of the ‘175 Patent, the Court finds a person of
ordinary skill in the art would understand “oil well” in this context to mean “hydrocarbon production
wells, but also any other type of well that can require stimulation by hydraulic fracturing”.
Accordingly, the Court finds that the term “oil well” should be construed as follows: “hydrocarbon
production wells, but also any other type of well that can require stimulation by hydraulic
fracturing”.
IV.
Conclusion
Accordingly, the Court finds that the terms and phrases at issue should be construed as set
forth above.
IT IS SO ORDERED this 3rd day of July, 2012.
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