Weatherford International, Inc. et al v. Halliburton Energy Services, Inc. et al
Filing
140
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Charles Everingham on 8/5/2011. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
WEATHERFORD INTERNATIONAL,
INC. and WEATHERFORD/LAMB, INC.
v.
HALLIBURTON ENERGY SERVICES,
INC., ET AL
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NO. 2:09-CV-261-CE
MEMORANDUM OPINION AND ORDER
I.
INTRODUCTION
Plaintiffs Weatherford International, Inc. and Weatherford/Lamb, Inc. (collectively,
“Weatherford”) filed suit against Halliburton Energy Services, Inc. and General Plastics &
Composites, L.P. (collectively, “Halliburton” or “Defendants”) on August 27, 2009, alleging
infringement of U.S. Patent Nos. 6,712,153 (“the ‘153 Patent”) and 7,124,831 (“the ‘831
Patent”).
On May 21, 2010, Halliburton counter-claimed against Weatherford alleging
infringement of U.S. Patent Nos. 6,695,050 (“the ‘050 Patent”) and 5,540,279 (“the ‘279
Patent”). This memorandum opinion and order addresses the parties’ various claim construction
disputes as to Weatherford’s patents-in-suit.
The ‘153 Patent issued on March 30, 2004 and the application leading to the ‘153 Patent
was filed on June 27, 2001. The ‘831 Patent issued on October 24, 2006 and is based on an
application filed on April 8, 2005. The ‘831 Patent is a continuation of the original application
1
leading to the ‘153 Patent and, therefore, the Weatherford patents-in-suit have substantially the
same specification.1
The Weatherford patents-in-suit are entitled “Resin Impregnated Continuous Fiber Plug
with Non-Metallic Element System.” Weatherford asserts that Defendants infringe Claims 1, 2,
5, 7, 8, 10, 12, 13, 14, 15, 17, 20, 25, 29, 36, 41, 49, and 50 of the ‘153 Patent and Claims 1, 3, 5,
14, 15, 16, 18, 22, 24, 35, 36, 37, 41, and 42 of the ‘831 Patent. The patents-in-suit are related to
downhole tools such as bridge plugs, frac-plugs, and packers having a non-metallic sealing
element system. ‘153 Patent at 1:5-12. The invention provides a non-metallic element system:
which can effectively seal or pack-off an annulus under elevated temperatures.
The element system can also resist high differential pressures without sacrificing
performance or suffering mechanical degradation, and is considerably faster to
drill-up than a conventional element system. In one aspect, the composite
material comprises an epoxy blend reinforced with glass fibers stacked layer upon
layer at about 30 to about 70 degrees…. The tool comprises a first and second
support ring having one or more tapered wedges, a first and second expansion
ring, and a sealing member disposed between the expansion rings and the support
rings.
Id. at Abstract. Claim 1 of the ‘153 Patent is representative of the claims of the patents-in-suit
and is reproduced below:
A non-metallic element system, comprising:
a first and second support ring each having two or more tapered wedges;
a first and second expansion ring each deformable to fill a gap formed
between the tapered wedges of one of the support rings; and
a sealing member disposed between the first and second expansion rings.
1
Because the specifications of the Weatherford patents-in-suit are essentially the same, for
consistency and simplicity, the court will reference only the specification of the ‘153 Patent.
2
The court held a Markman hearing on May 18, 2011. After considering the submissions
and the arguments of counsel, the court issues the following order concerning the parties’ claim
construction disputes.
II.
GENERAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION
“A claim in a patent provides the metes and bounds of the right which the patent confers
on the patentee to exclude others from making, using or selling the protected invention.” Burke,
Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction
is an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967,
970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
To ascertain the meaning of claims, the court looks to three primary sources: the claims,
the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
3
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This court’s claim construction decision must be informed by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.”
415 F.3d at 1312 (emphasis added) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). To that end, the words used in a claim are generally given their ordinary and customary
meaning. Id. 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.” Id. at 1313. This principle of patent law
flows naturally from the recognition that inventors are usually persons who are skilled in the
field of the invention and that patents are addressed to and intended to be read by others skilled
in the particular art. Id.
The primacy of claim terms notwithstanding, Phillips made clear that “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.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated
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long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. 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. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
PTO understood the patent. Id. at 1317. Because the file history, however, “represents an
ongoing negotiation between the PTO and the applicant,” it may lack the clarity of the
specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the
prosecution history is intrinsic evidence that is relevant to the determination of how the inventor
understood the invention and whether the inventor limited the invention during prosecution by
narrowing the scope of the claims. Id.
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
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dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319-24. The approach suggested by Texas Digital—the assignment of a
limited role to the specification—was rejected as inconsistent with decisions holding the
specification to be the best guide to the meaning of a disputed term. Id. at 1320-21. According
to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of
“focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim
terms within the context of the patent.” Id. at 1321. Phillips emphasized that the patent system
is based on the proposition that the claims cover only the invented subject matter. Id. What is
described in the claims flows from the statutory requirement imposed on the patentee to describe
and particularly claim what he or she has invented. Id. The definitions found in dictionaries,
however, often flow from the editors’ objective of assembling all of the possible definitions for a
word. Id. at 1321-22.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
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III.
TERMS IN DISPUTE
a.
“Expansion Ring” / “Expandable Ring” (‘153 Patent – 1, 2, 5, 7, 8, 10, 12, 13,
14, 15, 17, 20, 25, 29, 36, 41, 49, 50)
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
“ring of non-metallic material that spreads out “a ring that flows and fills a gap between the
under high pressure and/or temperature extended wedges so that no fluid is trapped
conditions”
and an effective fluid seal is maintained”
The parties agree that “expansion ring” and “expandable ring” should be treated the same
for claim construction purposes. Both parties agree that the construction includes the term
“ring,” but disagree as to the meaning of the term “expansion.” Weatherford argues that the
court should construe “expansion ring” to mean a “ring of non-metallic material that spreads out
under high pressure and/or temperature conditions.”
According to Weatherford, this
construction is supported by the specification, which explains that the expansion ring “may be
manufactured from any flexible plastic, elastomeric, or resin material which flows at a
predetermined temperature, such as Teflon®.” ‘153 Patent at 4:62–5:10. “At high temperatures,
the expansion ring 230, 235 expands radially outward from the body 250 and flows across the
outer surface of the body 250.” Id. In a preferred embodiment, “the expansion ring 230, 235
fills the voids created between the cuts 247 of the support ring 240, 245, thereby providing an
effective seal.” Id.
Defendants, on the other hand, argue that the court should construe “expansion ring” to
mean “a ring that flows and fills a gap between the extended wedges so that no fluid is trapped
and an effective fluid seal is maintained.” Defendants’ proposed construction is based on the
doctrine of prosecution history disclaimer. During prosecution of the ’153 Patent, the Patent
Office rejected the following claims of the ’153 Patent in light of the Harris and Hushbeck
references:
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32. A non-metallic element system, comprising:
a first and second support ring having one or more tapered wedges;
a first and second expansion ring; and
a sealing member disposed between the expansion and support rings.
***
35. The element system of claim 34 wherein the expansion ring flows and fills a
gap formed between the extended wedges.
Ex. 9, attached to Defendants’ Responsive Claim Construction Brief, Dkt. No. 114.
The
examiner explained that Hushbeck discloses the use of non-metallic materials, and Harris
discloses all of the other limitations of these two claims.
Id.
In response, Weatherford
distinguished the rejected claims on the following grounds:
The claimed invention provides an expansion ring that flows and fills a gap
formed between the extended wedges so that no fluid is trapped and an effective
fluid seal is maintained. Accordingly, a combination of Harris and Hushbeck et
al. does not motivate or suggest at least claims 35, 46, and 61-88, that recite this
limitation. Accordingly, withdrawal of the rejection and allowance of the claims
is respectfully requested.
Id. (emphasis added). Defendants argue that, in distinguishing Claims 32 and 35, Weatherford
limited the claimed “expansion ring” to a ring that “flows and fills a gap formed between the
extended wedges so that no fluid is trapped and an effective fluid seal is maintained.”
The court, however, disagrees with Defendants and concludes that Weatherford’s
prosecution statements do not rise to the level of a clear disclaimer. Despite Weatherford’s
attempt to distinguish the Harris and Hushbeck prior art on the grounds outlined above, the
examiner again rejected Weatherford’s claims, stating “it is noted that the features upon which
applicant relies (i.e., expansion ring flows and fills a gap between the extended wedges so that no
fluid is trapped and an effective fluid seal is maintained) are not recited in the rejected claim(s).”
8
Ex. 8 at 9, attached to Defendants’ Responsive Claim Construction Brief, Dkt. No. 114. In
response, Weatherford amended various claims to include the “deformable to fill” or “flows…to
fill” limitations, but at no point did Weatherford add any language related to the “so that no fluid
is trapped and an effective fluid seal is maintained” limitation.
Ex. 9 at 2-9, attached to
Defendants’ Responsive Claim Construction Brief, Dkt. No. 114. Furthermore, in its response to
the examiner’s second rejection, Weatherford argued that none of the cited prior art references
disclose “a first and second expansion ring each deformable to fill a gap formed between the
tapered wedges of one of the support rings, as recited in base claims 32, 43, 61, 67, and 81…”
Id. at 10. And finally, Weatherford distinguished Harris, allegedly disclosing an expansion ring,
on the basis that “the slotted backup rings 21A, 22A do not flow and fill a gap formed between
the pedals of the expanding gage ring 21, 22.” Id.
“Although prosecution history can be a useful tool for interpreting claim terms, it cannot
be used to limit the scope of a claim unless the applicant took a position before the PTO that
would lead a competitor to believe that the applicant had disavowed coverage of the relevant
subject matter.” Schwing Gmbh v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed.
Cir. 2002). The Federal Circuit has, therefore, “consistently rejected prosecution statements too
vague or ambiguous to qualify as disavowal of claim scope.” Omega Eng’g., Inc. v. Raytek
Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003); see also Rexnord Corp. v. Laitram Corp., 274 F.3d
1336, 1347 (Fed. Cir. 2001).
As such, for prosecution disclaimer to apply, the allegedly
disavowing actions must be both “clear and unmistakable.” Omega Eng’g., 334 F.3d at 1324-26.
Here, Weatherford refused to add a limitation directed to the lack of trapped fluid and the
effectiveness of a seal, while at the same time attempting to distinguish the rejected claims on
other grounds.
As such, considering the prosecution history as a whole, the court is not
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convinced that Weatherford made a clear disavowal restricting the claimed “expansion ring” to
“a ring that flows and fills a gap between the extended wedges so that no fluid is trapped and an
effective fluid seal is maintained.” Accordingly, Defendants’ proposed construction is rejected.
The court agrees with Weatherford that its proposed construction accurately captures the
specification’s description of the claimed “expansion ring.” The court, therefore, construes
“expansion ring” to mean a “ring of non-metallic material that spreads out under high pressure
and/or temperature conditions.” See ‘153 Patent at 4:62–5:10.
b. “Cone” (‘153 Patent – 5, 7, 8, 10, 20, 25, 41, 49, 50; ‘831 Patent – 1, 3, 5, 14,
15, 16, 18, 22, 24, 35, 36, 37, 41, 42)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“component with a generally cylindrical inner
surface and an outer surface having a sloped
portion that contacts and expands an adjacent
component”
“rigid element with a sloped outer surface
and generally cylindrical inner surface for
expanding an adjacent component radially
outward”
The term “cone” appears in claims in both the ‘153 and ‘831 Patents. There are two
types of “cones” described in the specification: (1) inner cones 220 and 225; and (2) slip cones
320 and 325. Both types of cones serve the same purpose and operate in the same way – i.e.,
they act as ramps to radially expand surrounding components while at the same time transferring
axial force toward the packer element. See ’153 Patent at 5:19-5:27; 5:64-5:66. The primary
difference between the two cones is that slip cones expand slips, and inner cones expand support
rings.
Despite the slightly different usages of the cones, the parties agree that all instances of the
term “cone” in the claims of both patents should be given the same meaning. The parties further
agree that the outer surface of the cone is “sloped.” Finally, the parties generally agree that the
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cone expands an adjacent or surrounding component. The parties’ dispute, therefore, centers on
whether, as Defendants argue, the cone must be “rigid.”
According to Defendants, the cone must be “rigid” so as to exclude “packer elements”
with sloped outer surfaces. Defendants again rely on a prosecution disclaimer argument. In the
application leading to the ‘831 Patent, the examiner rejected certain claims over U.S. Patent Nos.
6,394,180 (“Berscheidt”) and 6,167,963 (“McMahan”). Ex. 12 at 5-7, attached to Plaintiffs’
Reply Claim Construction Brief, Dkt. No. 120. Weatherford amended these claims to include a
limitation, among other numerous limitations, of “a first and second pair of cones.” Id., Ex 13 at
1-7. In its response, Weatherford stated the following:
Regarding claims 1 and 25, neither Bersheidt [sic] nor McMahan teach, suggest,
or, disclose ‘a first and second pair of cones’ as recited in amended claims 1 and
25. Bersheidt illustrates only a first pair of cones, or slip wedges (60, see Fig. 2).
McMahan also only describes a first pair of cones (28 and 40, see col. 3 lines 1620).
Id. at 10. Defendants argue that, in making these statements, Weatherford admitted that both
McMahan and Berscheidt disclose a first pair of cones, but argued that none of the other
components disclosed in those two references were “cones,” including the sloped rubber packer
elements found in each reference. Accordingly, Defendants contend that the any construction of
the term “cone” must exclude sloped rubber packer elements.
The court disagrees with Defendants’ interpretation of the prosecution history statements
on which they rely. Although Weatherford implied that numerous components of Berscheidt and
McMahan were not cones “as recited in [the] amended claims,” Weatherford never stated that
they were not cones because they were made of rubber or because they were packing elements.
See id.
Further, because Weatherford implied that numerous and different components of
Berscheidt and McMahan were not cones – including components that were and were not rigid
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and components that were and were not packer elements – there is no express or implied
distinction between components that were rigid or non-rigid or between components that were
packer elements or non-packer elements. Thus, contrary to Defendants’ assertions, Weatherford
never made a “clear and unmistakable” disavowal that the cone could not be a packing element
or had to be rigid. See Omega Eng’g., 334 F.3d at 1328.
Defendants further argue that Weatherford made a similar disclaimer during the
prosecution of U.S. Patent Application No. 12/646,066 (the “’066 Patent”), which shares a
common specification and claims priority to both the ’153 and ’831 Patent applications. See Ex.
4 at 3, 4, 8, attached to Defendants’ Responsive Claim Construction Brief, Dkt. No. 114. During
the prosecution of that application, Weatherford distinguished several references, including the
Harris and Hushbeck references discussed above, on the grounds that they did not disclose “a
first non-metallic cone.” Id. Defendants contend that Weatherford clearly explained that the
rubber packer elements with sloped outer surfaces in Harris and Hushbeck were not “cones.”
Having carefully reviewed the prosecution history on which Defendants rely, the court rejects
Defendants’ contention that Weatherford clearly disavowed non-rigid cones in distinguishing
Harris and Hushbeck. Although Weatherford explained that Harris and Hushbeck do not teach
“a first non-metallic cone,” they never stated why the references do not meet the limitation and
did not indicate that the limitation was not met because the cones of Harris and Hushbeck were
not rigid. As such, the court is not convinced that the ’066 Patent prosecution history statements
on which Halliburton relies rise to the level of a prosecution history disclaimer.
The conclusion that the cones can be non-rigid, semi-rigid, or rigid is further confirmed
by the prosecution history of the ‘153 Patent. In the first office action for the application leading
to the ‘153 Patent, the examiner found “cones” to be the outer packing elements in U.S. Patent
12
No. 5,701,959 (“Hushbeck”). See Ex. 6 at 3, attached to Plaintiffs’ Opening Claim Construction
Brief, Dkt. No. 107. In a subsequent office action, the examiner also found that U.S. Patent No.
4,397,351 (“Harris”) “discloses a first (23) and second cone (24) each disposed about opposite
ends of the sealing member.” Ex. 8 at 3, attached to Plaintiffs’ Opening Claim Construction
Brief, Dkt. No. 107. These prior art components found to be “cones” by the examiner in both the
Hushbeck and Harris references are “non-rigid” packing elements and, thus, the examiner
implicitly rejected Defendants’ proposed “rigid” limitation. Weatherford did not dispute the
examiner’s findings and instead argued around the Harris and Hushbeck references based on
other claim limitations. Considering this, the prosecution history is, at best, “inconclusive,” and
therefore, the court rejects Defendants’ argument that the “cones” must be rigid. See Rexnord,
274 F.3d at 1347.
The court adopts Weatherford’s proposed construction because it is supported by the
specification’s description of the claimed “cones.”
The specification of the patents-in-suit
describes inner cones 220 and 225 of the non-metallic element system in detail. See ‘153 Patent
at 5:11-28; 5:52-6:2; 6:55-62. As shown in Figures 2 and 5, cones 220 and 225 have an interior
surface that is generally cylindrical and an outer surface that is sloped. See id. Further, the
specification confirms that the expansion ring 230, adjacent to the cone 220, is tapered to
complement an outer sloped surface of cone 220. See id. at 5:1-4. The specification also
describes the second type of cones in detail – i.e., the slip cones. See id. at 6:43-59; 7:27-37.
Like cones 220 and 225, slip cones 320 and 325 have an interior surface that is generally
cylindrical and an outer surface that is sloped.
See id. at Figures 5, 6, 6a.
Further, the
specification confirms that cones 320 and 325 have an outer surface that is tapered, which rests
underneath the inner surface of slips 310 and 315. See id. at 6:54-56; 7:29-31. Considering this,
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the court concludes that Weatherford’s proposed construction – i.e., “component with a generally
cylindrical inner surface and an outer surface having a sloped portion that contacts and expands
an adjacent component” – gives full meaning, based on the specification, to the inner and outer
surfaces of the cone.
Further, the specification explains that, as recited in Weatherford’s proposed
construction, the cone’s outer surface “contacts and expands an adjacent component.” For
example, for the cones of the non-metallic element system, “the tapered first section [of the
cone] urges the expansion ring 230, 235 radially outward from the body 250 as the element
system 200 is activated” and a “compressive force causes the expansion rings 230, 235 to flow
and expand as they are forced across the tapered section of the cones 220, 225.” Id. at 5:16-19,
52-55. Likewise, for the slip cones, the “tapered first end [of the slip cone] rests underneath the
tapered inner surface of the slips” so that the slips “move up and across the tapered surface of the
cones 320, 325.” Id. at 6:54-59; 7:29-31. The specification thus explains that the cones contact
and expand adjacent components.
In conclusion, the court adopts Weatherford’s proposed construction. The term “cone”
means “component with a generally cylindrical inner surface and an outer surface having a
sloped portion that contacts and expands an adjacent component.”
c. Tapered Wedges (‘153 Patent – 1, 2, 5, 7, 8, 10, 12, 13, 14, 15, 17, 20, 25, 29,
36, 41, 49, 50; ‘831 Patent – 3, 22)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“section of the support ring having angled inner “wedges that vary in width and thickness
surfaces and essentially cylindrical outer along their length”
surfaces”
-or“section of a support ring having angled
inner surfaces and essentially cylindrical
outer surfaces that varies in width and
thickness along its length”
14
The term “tapered wedges” appears in both the ‘153 and ‘831 Patents. Claim 1 of the
‘153 Patent is representative and recites: “A non-metallic element system, comprising: a first and
second support ring each having two or more tapered wedges….” Weatherford and Defendants
agree that the term “tapered wedges” has the same meaning in both patents.
A preferred embodiment illustrates that the “tapered wedge” prevents slippage of the
non-metallic element system relative to the surrounding tubular. See ‘153 Patent at 4:49-61,
7:37-46. In a preferred embodiment, the “tapered wedge” hinges radially outward as the support
ring moves axially across the outer surface of the expansion ring, thereby causing the wedges to
extend radially outward to engage the surrounding tubular. Id.
Weatherford argues that the court should construe the term to mean a “section of the
support ring having angled inner surfaces and essentially cylindrical outer surfaces.” According
to Weatherford, its proposed construction is supported by both the claims and the specification.
First, Weatherford argues that, considering the claim language itself, “tapered wedges” are part
of the claimed “support ring” – i.e., Claim 1 of the ‘153 Patent provides that “a first and second
support ring each having two or more tapered wedges.” See also id. at Claims 12, 29, 36, and
50. Second, Weatherford argues that its proposed construction gives meaning to both “tapered”
and “wedge.” The specification expressly provides that the inner surfaces of the wedges are
angled: “[s]till referring to FIG. 3, the wedges 248 are angled outwardly from a center line or
axis of the support ring…the angled wedges 248 hinge radially outward….” Id. at 4:47-51; see
also id. at 5:1-2 (the expansion ring is “tapered corresponding to a complimentary angle of the
wedges 248”). Furthermore, Figures 2 and 3 depict the “tapered wedges” 245 and 248 with an
angled inner surface and an essentially cylindrical outer surface:
15
As such, Weatherford argues that its proposed construction has support in both the claim
language and the specification.
In response, Defendants argue that Weatherford’s proposed construction treats the term
“tapered” as mere surplusage. Defendants propose that the term “tapered” should be equated to
the phrase “vary in width and thickness along their length.”
To support this proposed
construction, Defendants first argue that the patents-in-suit disclose two different types of
segmented support rings: (1) rings with trapezoidal wedges, such as ring 240 illustrated in
Figures 2 and 5; and (2) rings with rectangular wedges, such as ring 245 illustrated in Figures 3
and 4.
Fig. 2
16
Id. at Figures 2 and 3. Defendants next argue that, by drafting the claims at issue to cover only
“tapered wedges,” Weatherford limited the claims to trapezoidal wedge support rings – i.e.,
“wedges that vary in width and thickness along their length.”
The court rejects Defendants’ proposed construction.
The term “tapered” is used
fourteen times in the “Detailed Description of the Preferred Embodiment” section of the patentsin-suit, and in each instance, “tapered” is referred to as the outward angle from the center or axis
of the tool for a component – not as the angle between different wedges as Defendants contend.
The term “tapered” is used equivalently in the context of expansion rings, cones, slips, and
wedges:
The first section of the expansion ring 230, 235 is tapered corresponding to a
compl[e]mentary angle of the wedges 248. A second section of the expansion ring
230, 235 is also tapered to compliment a slopped surface of the cone 220, 225.
Each slip 310, 315 comprises a tapered inner surface conforming to the first end
of the cone 320, 325.
As stated above, the cones 320, 325 comprise a tapered first end which rests
underneath the tapered inner surface of the slips 310, 315.
Id. at 4:67-5:4; 6:24-26; 6:54-56. Each of these components has a tapered angle that is
complementary to the adjacent component’s tapered angle. Id.; see also id. at Figure 2. Thus,
the specification uses the term “tapered” to refer to the component’s angled surface, whether it is
the surface of the expansion ring, cone, slip, or wedge. Furthermore, certain claims of the ‘153
Patent describe the tapered wedges as having an inner surface that is angled. See Claims 4, 18.
At no point in the specification or claims is the term “tapered” equated to “varies in width
and thickness along its length.” The terms “width,” “thick,” and “thickness” are never used in
the specification.
Further, there is no discussion of “rectangular” wedges or “trapezoidal”
wedges. Although tapered is used consistently for expansion rings, cones, slips, and wedges,
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Defendants attempt to create a distinction for the term “tapered” as applied to wedges based
solely on an alleged variance in the shape of the support rings (elements 240, 245) depicted in
Figures 2 and 3, arguing that these differences necessarily create two different embodiments of
the support rings – i.e., trapezoidal wedge support rings and rectangular wedge support rings.
There is, however, no discussion in the specification explaining that the wedges shown in Figure
2 are different from the wedges shown in Figure 3. Indeed, Figure 4 is described as showing a
cross-sectional view of Figure 2 (id. at 4:32-33), and the support ring of Figure 4 shows “equally
spaced longitudinal cuts,” which implies that the wedges in Figure 2 are not trapezoidal as
Defendants argue. However, even if the court were to assume that the figures depict different
embodiments, this assumption would not overcome the specification’s repeated and consistent
treatment of the term “tapered” as referring to the angled portions of the component that
correspond to a complementary angle of the adjacent component. As such, the court rejects
Defendants’ proposed construction.
In conclusion, the court adopts Weatherford’s proposed construction because, as
discussed above, it accurately captures the specification’s disclosures regarding the “tapered
wedge.” As such, the court construes “tapered wedge” to mean “section of the support ring
having angled inner surfaces and essentially cylindrical outer surfaces.”
IV.
CONCLUSION
The court adopts the constructions set forth in this opinion for the disputed terms of the
Weatherford patents-in-suit.
The parties are ordered that they may not refer, directly or
indirectly, to each other’s claim construction positions in the presence of the jury. Likewise, the
parties are ordered to refrain from mentioning any portion of this opinion, other than the actual
definitions adopted by the court, in the presence of the jury. Any reference to claim construction
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proceedings is limited to informing the jury of the definitions adopted by the court.
It is so ORDERED.
SIGNED this 5th day of August, 2011.
___________________________________
CHARLES EVERINGHAM IV
UNITED STATES MAGISTRATE JUDGE
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