National Oilwell DHT, LP v. Amega West Services, LLC

Filing 66

MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION. Signed by Judge Nancy F Atlas on 4/24/2019. (Atlas, Nancy)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
NATIONAL OILWELL DHT, L.P.,
Plaintiff,
v.
AMEGA WEST SERVICES, LLC,
Defendant.

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CIVIL ACTION NO. 2-14-1020

MEMORANDUM AND ORDER
ON CLAIM CONSTRUCTION
This patent case is before the Court for construction of the disputed claim terms
in United States Patents No. 6,279,670 (“the ’670 Patent”), No. 6,431,294 (“the ’294
Patent”), and No. 6,508,317 (“the ’317 Patent”) (collectively, the “Patents-in-Suit”).
The ’670 Patent issued August 28, 2001. The ’294 Patent, which is not in the ’670
Patent family, issued the following year, August 13, 2002. The application for the
’317 Patent was filed August 20, 2001, and the patent issued January 21, 2003. The
’317 Patent is a divisional of, and shares a common specification with, the ’670
Patent. Plaintiff National Oilwell DHT (“NOV”) alleges that Defendant Amega West
Services, LLC (“Amega West”) is infringing the Patents-in-Suit by its AmegaVIBE
product.
The Court conducted a hearing pursuant to Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996) (“Markman hearing”), on March 5, 2019, and the parties

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provided supplemental briefing and oral argument thereafter. Based on the evidence
before the Court, the arguments presented by counsel orally and in writing, and the
governing legal authorities, the Court issues this Memorandum and Order construing
those disputed claim terms that require construction.1
I.

BACKGROUND
The Patents-in-Suit are directed to vibration tools for use in drilling operations.

Vibration tools are used to create vibratory forces “to reduce friction as a drill string
is moved within a bore and/or vary the downward force exerted on a drill bit
(sometimes called the ‘weight on bit’) to vary the depth of cut provided by the drill
bit.” Plaintiff’s Written Tutorial [Doc. # 41], p. 1.
The Patents-in-Suit disclose vibration tools2 that use “a drive system that
includes a positive displacement motor (sometimes referred to as a ‘PDM’) to drive
a specially constructed valve assembly that is tailored for use with a PDM.” Id. at 4.
As the PDM rotates, it rotates and moves side to side. See id. “[B]ecause the speed
of a PDM is proportional to the rate of flow of fluid through the PDM, the frequency

1

Additionally, the Court adopts the parties’ agreed construction of the claim terms
set forth at ECF Document # 51-1, pp. 1-7.

2

The ’670 Patent and the ’317 Patent refer to the vibration tool as a “downhole flow
pulsing apparatus.” See, e.g., ’670 Patent, Abstract; ’317 Patent, Abstract. The
’294 Patent refers to the vibration tool as a “percussion drill.” See, e.g., ’294
Patent, Abstract.

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of the vibrations produced by the tool of the [Patents-in-Suit] can be controlled by
varying the rate of fluid flow through the tool.” Id. at 5.
The Patents-in-Suit describe a PDM rotor coupled to a movable valve plate,
which interacts with a stationary plate. Id. at 6. Each plate defines (i.e., contains) an
opening through which fluid can pass. See id. As the PDM rotor moves the movable
plate relative to the stationary plate, the overlap between the openings of the two
plates will vary the flow of fluid through the valve. See id. The variations in fluid
flow through the overlapping openings of the valve produce varying drilling fluid
pressures that can be used to create desired vibrations. See id.
An additional feature of the Patents-in-Suit is that the vibration tools “include
a PDM and valve assembly that can optionally be used with a separate pressure
responsive device that expands and/or retracts in response to the varying fluid pressure
created by the varying fluid flow to cause a mass to move and produce a percussive
effect.” See id. at 7. The PDM causes the movable valve plate to rotate relative to the
stationary plate, varying the fluid flow through the valve. See id. at 8. This variation
in fluid flow creates varying fluid pressures on a separately provided movable mass
causing the mass to move. See id.; see also ’294 Patent, Abstract.
NOV filed its Opening Claim Construction Brief (“Opening Brief”) [Doc. # 44],
Amega filed its Responsive Claim Construction Brief (“Response Brief”) [Doc. # 47],
and NOV filed its Reply Claim Construction Brief (“Reply Brief”) [Doc. # 48]. The
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Court conducted a Markman hearing at which the parties presented evidence and
argument regarding the proper construction of these terms. The Court found the
parties’ presentations, particularly their answers to the Court’s questions, to be
helpful. Thereafter, the parties submitted supplemental briefing on March 11, 2019.
On April 16, 2019, counsel appeared before the Court and presented supplemental oral
argument on the disputed “means-plus-function” claim term. On April 18, 2019, the
parties submitted their agreement on the proper construction of part of the “meansplus-function” claim term. Based on the parties’ agreements, the claim construction
briefing, the full factual record, and the parties’ presentations and arguments at the
Markman hearings, the Court construes the disputed claim terms as follows.
II.

GENERAL LEGAL STANDARDS FOR CLAIM CONSTRUCTION
“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.” Aventis Pharm., Inc.
v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (quoting Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). The patent claims in issue
must be construed as a matter of law to determine their scope and meaning. See, e.g.,
Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996), aff’g, 52 F.3d 967,
976 (Fed. Cir.) (en banc); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
1295, 1317 (Fed. Cir. 2007).

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“There is a heavy presumption that claim terms are to be given their ordinary
and customary meaning.” Aventis, 715 F.3d at 1373 (citing Phillips, 415 F.3d at
1312-13; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
Therefore, Courts must “look to the words of the claims themselves . . . to define the
scope of the patented invention.” Id. (citations omitted); see also Summit 6, LLC v.
Samsung Elec. Co., Ltd., 802 F.3d 1283, 1290 (Fed. Cir. 2015). 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.” Phillips, 415 F.3d at 1313; see also
ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374 (Fed. Cir. 2009). This
“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.” Phillips, 415 F.3d at 1313; ICU, 558
F.3d at 1374.
Intrinsic evidence is the primary resource for claim construction. See PowerOne, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (citing
Phillips, 415 F.3d at 1312). For certain claim terms, “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.”
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Phillips, 415 F.3d at 1314. For other claim terms, however, the meaning of the claim
language may be less apparent. To construe those terms, the Court considers “those
sources available to the public that show what a person of skill in the art would have
understood disputed claim language to mean . . . [including] 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.
The claims “provide substantial guidance as to the meaning of particular claim
terms.” Id. The Court may consider the context in which the terms are used and the
differences among the claims. See id. “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.” Id. Because the claims “are
part of a fully integrated written instrument,” the Court may also consider the
specification and the patent’s prosecution history. Id. at 1315, 1317. When the claims
use separate terms, “each term is presumed to have a distinct meaning.” Primos, Inc.
v. Hunter’s Specialties, Inc., 451 F.3d 841, 847 (Fed. Cir. 2006).
The parties agree that one of the disputed claim terms is a “means-plusfunction” term subject to special standards for claim construction. Those legal
standards will be discussed in the section addressing the “means-plus-function” claim
term at issue.
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III.

CONSTRUCTION OF DISPUTED CLAIM TERMS
A.

Vary the Open Area of Said Port Between a Minimum Open Area
and a Maximum Open Area

Claims 11 and 13 of the ’670 Patent are apparatus claims that include the claim
term “vary the open area of said port between a maximum open area and a minimum
open area.”3 The parties agree that the claim term should be construed to mean “vary
the alignment of the openings of the valve members between first and second states
of alignment where one state of alignment is greater than the other.” The parties

3

Claim 11 of the ’670 Patent describes:
The apparatus of Claim 1, wherein the valve includes first and second
valve members each defining a respective axial flow opening and
which openings are aligned to collectively define an open axial drilling
fluid flow port through the valve, the first member being rotatable
about a longitudinal axis of the housing to vary the alignment of the
openings and thus vary the open area of said port between a minimum
open area and a maximum open area to, in use, provide a varying flow
therethrough and variation of the fluid pressure.
Claim 13 of the ’670 Patent describes a:
Downhole flow pulsing apparatus comprising: a housing for location
in a string, the housing defining a throughbore to permit passage of
fluid therethrough; a valve located in the bore and including first and
second valve members each defining a respective axial flow opening
and which openings are aligned to collectively define an open axial
drilling fluid flow port through the valve, the first member being
rotatable about a longitudinal axis of the housing to vary the alignment
of the openings and thus vary the open area of said port between a
maximum open area and a minimum open area to, in sue, provide a
varying flow therethrough and variation of the fluid pressure; and a
fluid actuated positive displacement motor operatively associated with
the valve for driving the valve member.

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dispute whether the claim term’s construction should also require that “the openings
of the valve members are always at least partially aligned.”
The clear language of the claim term requires that the variance be between a
maximum open area and a minimum open area. A “minimum open area” is an area
that is minimally open, not closed. Therefore, the Court construes that claim term
“vary the open area of said port between” a maximum open port and a minimum open
port to mean to “vary the alignment of the openings of the valve members between the
first and second states of alignment where one state of alignment is greater than the
other and the openings of the valve members are always at least partially aligned such
that the area is at least minimally open, not closed.”
The Court’s construction is supported by the prosecution history of the ’670
Patent, during which the patentee distinguished the pending claims from prior art,
specifically U.S. Patent No. 2,780,438 (“Bielstein”). In response to the Patent
Examiner’s rejection of then-pending claim 14 of the ’670 Patent, the patentee stated
that Bielstein’s passageways were different because they “alternatively closed and
opened,” while claim 14 recites a “minimum open area.” See Response, Evidentiary
Appendix (“Appendix”) [Doc. # 44-1], p. 218 (emphasis in original). The Examiner
persisted in the rejection of the claim, and Plaintiff cancelled claim 14. The patentee
did not, however, retract its position regarding Bielstein. Indeed, the patentee later,
in a new application, again expressed its disagreement with the prior rejection of claim
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14. See Second Preliminary Amendment (Remarks), Appendix p. 332. Arguments
during patent prosecution that “draw distinctions between the patented invention and
the prior art . . . indicate in the inventor’s own words what the invention is not.” MBO
Labs, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1330 (Fed. Cir. 2007). The
patentee’s arguments during prosecution history distinguishing Bielstein indicate that
the patented apparatus does not encompass a flow port that closes completely.
Plaintiff argues that when the patentees wanted to provide that the openings are
always at least partially aligned, they “knew exactly how to do it.” See Opening Brief,
p. 7. Plaintiff’s argument is based on Claim 8 of the ’317 Patent, which provides
specifically that the “openings are always at least partially aligned.” See ’317 Patent,
Cl. 8. Claim 8, on which Plaintiff’s argument is based, is not a claim of the ’670
Patent. Although the ’317 Patent is a divisional patent in the ’670 Patent family, the
application for the ’317 Patent was not filed until August 2001. Therefore, language
in Claim 8 of the ’317 Patent does not suggest what the patentee “knew exactly how
to do” in May 1997, when the application for the ’670 Patent was filed. Cf.
Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1379 (Fed. Cir.
2018) (patentee could have used language from independent claim 19 to limit other
claim in same patent); Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed.
Cir. 2016) (comparing language in different claims of same patent). In addition to
containing language not included in the ’670 Patent, Claim 8 of the ’317 Patent is a
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method claim, not an apparatus claim. On these bases, and in light of the clear
language of the claim term in the ’670 Patent and its prosecution history, the Court
finds Plaintiff’s reliance on Claim 8 of the ’317 Patent unpersuasive.4
Based primarily on the clear language of the claim term, as well as on the
prosecution history of the ’670 Patent, the Court construes the claim term to require
that the openings of the valve members are always at least partially aligned such that
the area is at least minimally open, not closed.
B.

Open Axial Drilling Fluid Flow Port

Claims 11 and 13 of the ’670 Patent are set forth above in footnote 3. Those
two claims, and Claims 1 and 5 of the ’317 Patent, are apparatus claims that contain
the claim term “open axial drilling fluid flow port.”5 The parties agree that the claim
4

Amega argues that NOV’s argument based on Claim 8 of the ’317 Patent is one of
“claim differentiation,” which does not apply between independent claims. See
Response Brief, pp. 10-11 (citing Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352,
1358 (Fed. Cir. 2016) and other cases). NOV has clarified that it is not asserting
“claim differentiation” regarding Claim 8 of the ’317 Patent. See Reply Brief, p. 5.

5

Claim 1 of the ’317 Patent describes a:
Flow pulsing apparatus for a drill string, the apparatus comprising: a
housing for location in a drill string above a drill bit, the housing
defining a throughbore to permit passage of drilling fluid therethrough;
a valve located in the bore and including first and second valve
members each defining a respective axial flow opening and which
openings are aligned to collectively define an open axial drilling fluid
flow port through the valve, the first member being rotatable about a
longitudinal axis of the housing to vary the alignment of the openings
between a first alignment in which the openings collectively define an
(continued...)

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term should be construed to mean “a bore extending along a longitudinal axis of the
valve through which drilling fluid can pass.” The parties disagree whether the claim
term should be construed to include “that is always at least partially open.” The Court
construes the claim term to mean “a bore extending along a longitudinal axis of the
valve through which drilling fluid can pass and that is always at least partially open.”

5

(...continued)
open axial flow port of a first open area and a second alignment in
which the openings collectively define an open axial flow port of a
second open area greater than said first open area to, in use, provide a
varying flow therethrough and variation of the drilling fluid pressure,
and drive means operatively associated with the valve for rotating the
first member.
Claim 5 of the ’317 Patent describes a:
Flow pulsing apparatus for drill string, the apparatus comprising: a
housing for location in a drill string above a drill bit, the housing
defining a throughbore to permit passage of drilling fluid therethrough;
a valve located in the bore and including first and second valve
members each defining a respective axial flow opening and which
openings are aligned to collectively define an open axial drilling fluid
flow port through the valve, the valve member openings being of
similar shape such that when the openings are aligned the maximum
flow area of the axial flow port corresponds to the area of each opening,
the first member being rotatable about a longitudinal axis offset from
a longitudinal axis of the second member such that rotation of the first
member moves the openings between a first alignment in which the
openings collectively define an open axial flow port of a first open area
and a second alignment in which the openings collectively define an
open axial flow port of a second open area greater than said first open
area to, in use, provide a varying flow therethrough and variation of the
drilling fluid pressure; and drive means operatively associated with the
valve for rotating the first member.

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The Court’s construction is based primarily on the clear language of the claim
term – language that indicates that the port is an open one. It would have been simple
to state that the axial drilling fluid flow port opens and closes, rather than define the
port as an open axial drilling fluid flow port, but the patentee chose to identify the port
as an open one. Additionally, Claim 1 of the ’670 Patent, for example, states that the
openings “are aligned” – not that they “may align” – to collectively define an open
axial drilling fluid flow port.
As discussed above in connection with the claim term “vary the open area of
said port between a maximum open area and a minimum open area,” the same
prosecution history supports the Court’s construction of the claim term “open axial
drilling fluid flow port.” The patentee specifically distinguished Bielstein as having
an axial drilling fluid flow port that “is alternatively closed and opened.” See
Response, Appendix p. 218. The patentee, in the later application mentioned above,
distinguished Bielstein as having ports that are axially misaligned at times and “do not
define an open axial drilling fluid port.” See Second Preliminary Amendment
(Remarks), Appendix p. 333.
Plaintiff relies on Claim 8 of the ’317 Patent also to support its position that the
“axial drilling fluid flow port” need not always be at least partially open. As
discussed above, Claim 8 of the ’317 Patent is a method claim, while Claims 1 and 5
of that Patent, as well as Claims 11 and 13 of the ’670 Patent, are apparatus claims.
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Additionally, Claim 1 of the ’317 Patent requires that there be two open areas, one
open area greater than the other open area, such that there is a varying flow
therethrough. See ’317 Patent, Cl. 1. The Court finds the clear language of the claim
term and the prosecution history strongly demonstrate that the “open axial drilling
fluid flow port” is a port that is always open to some degree. The Court finds
Plaintiff’s reliance on Claim 8 of the ’317 Patent unpersuasive and an inadequate basis
to overcome the claim language and the prosecution history.
Based primarily on the clear language of the claim term, as well as on the
prosecution history, the Court construes this claim term to mean “a bore extending
along a longitudinal axis of the valve through which drilling fluid can pass and that
is always at least partially open.”
C.

Provide a Varying [Fluid] Flow Therethrough

Claims 1, 11 and 13 of the ’670 Patent, and Claims 1 and 5 of the ’317 Patent,
are apparatus claims that include the term “provide a varying [fluid] flow
therethrough.”6 The parties agree that the claim term should be construed to mean

6

Claim 1 of the ’670 Patent describes a:
Downhole flow pulsing apparatus for providing a percussive effect, the
apparatus comprising: a housing for location in a string, the housing
defining a throughbore to permit passage of fluid therethrough; a valve
located in the bore defining a flow passage and including a valve
member, the valve member being movable to vary the area of the flow
passage to, in use, provide a varying fluid flow therethrough; a fluid
(continued...)

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“cause a fluid flow through the flow passage [port] of the valve that changes,” but
Defendant argues that the construction should provide also that the fluid flow is
“continuous.”
The Court finds nothing in the cited claim language, specifications, or
prosecution history that requires that the flow be continuous. Indeed, during the
prosecution of the ’317 Patent, the patentee expressly acknowledged that Bielstein’s
valve, which opens and closes, provides a varying flow. See Second Preliminary
Amendment, Appendix, p. 332. Although a continuous flow is likely to occur based
on the Court’s construction of the disputed claim terms “open axial drilling fluid flow
port” and “vary the open area of said port between a minimum open area and a
maximum open area,” the plain and ordinary meaning of the disputed language
“provide a varying [fluid] flow therethrough” requires only that the flow varies or
changes. As a result, the Court rejects the request to include “continuous” in the
construction of this claim term.

6

(...continued)
actuated positive displacement motor operatively associated with the
valve for driving the valve member; and a pressure responsive device
which expands or retracts in response to the varying fluid pressure
created by the varying fluid flow, the expansion or retraction providing
a percussive effect.

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D.

Means Associated With the Mass for Creating a Fluid Pressure
Force on Said Mass

Asserted Claims 4 and 17 of the ’294 Patent are dependent on independent
Claim 1 of the ’294 Patent.7 The parties agree that the disputed claim term “means
associated with the mass for creating a fluid pressure force on the mass” in Claim 1
is a means-plus-function claim term under 35 U.S.C. § 112(f).8 “In enacting this
provision, Congress struck a balance in allowing patentees to express a claim
limitation by reciting a function to be performed rather than by reciting structure for
performing that function, while placing specific constraints on how such a limitation
is to be construed, namely, by restricting the scope of coverage to only the structure,
materials, or acts described in the specification as corresponding to the claimed
function and equivalents thereof.” Williamson v. Citrix Online, LLC, 792 F.3d 1339,
7

Claim 1 of the ’294 Patent describes:
A percussion drill comprising a fluid transmitting body; a drill bit
support coupled to the body; a mass movable relative to the body for
impacting on the drill bit support; means associated with the mass for
creating a fluid pressure force on said mass; a rotating valve located in
the body for controlling flow of fluid through the body to produce a
varying fluid pressure force on the mass and induce acceleration of the
mass; and a valve motor for driving said valve.

8

Title 35, United States Code, § 112(f) provides:
An 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.

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1347-48 (Fed. Cir. 2015) (citing Northrop Grumman Corp. v. Intel Corp., 325 F.3d
1346, 1350 (Fed. Cir. 2003)).
Construing means-plus-function claim terms follows a two-step process. First,
the Court must identify the claimed function. Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1351 (Fed. Cir. 2015). In this case, the parties agree that the function is
“creating a fluid pressure force on said mass.”
Second, the Court must identify the corresponding structure in the patent
specification that performs the function. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d
1302, 1311 (Fed. Cir. 2012); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1330
(Fed. Cir. 2003). The corresponding structure must be “capable of performing the
claimed function.” Univ. of Pittsburgh of Commonwealth Sys. of Higher Educ. v.
Varian Med. Sys., Inc., 561 F. App’x 934, 951 (Fed. Cir. 2014) (citing Default Proof
Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir.
2005); Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379 (Fed. Cir. 2001)).
“Structure disclosed in the specification is ‘corresponding’ structure only if the
specification or prosecution history clearly links or associates that structure to the
function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc.,
248 F.3d 1303, 1311 (Fed. Cir. 2001) (quoting B. Braun Med., Inc. v. Abbott Labs,
124 F.3d 1419, 1424 (Fed. Cir. 1997)). Additionally, the scope of a means-plusfunction limitation “does not extend to all means for performing a certain function”
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but is, instead, “sharply limited to the structure disclosed in the specification and its
equivalents.” J&M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 1367 (Fed. Cir.
2001); see also Mettler-Toledo, Inc. v. B-Tek Scales, LLC, 671 F.3d 1291, 1296 (Fed.
Cir. 2012); Bennett Marine, Inc. v. Lenco Marine, Inc., 549 F. App’x 947, 954 (Fed.
Cir. Sept. 19, 2013).
Generally, the corresponding structures for creating a fluid pressure force on
the mass are the structures and surfaces associated with the mass that produce a fluid
pressure force when pressurized fluid flows through the fluid transmitting body to
create a pressure differential across the structures and/or surfaces. The specific
surface areas that constitute the corresponding structures for the means-plus-function
claim term in the ’294 Patent differ for Figure 1 and for Figures 2 and 3.
For Figure 1, the corresponding structures are the surface areas of the rotating
valve that are exposed to the pressurized fluid and the surface areas of the mass that
are exposed to pressurized fluid. The corresponding structures are not limited to the
upper end of the mass. The corresponding structure must be capable of creating a
fluid pressure force on the mass. As noted by the Patent Trial and Appeal Board
(“PTAB”) in its Final Written Decision, for Figure 1, “valve 32 restricts the flow of
drilling fluid through fluid transmitting body 14.” See PTAB Decision, Appendix at
378-79. “This restriction produces a pressure differential across valve 32 and creates
an unbalanced force across the top of mass 28, causing mass 28 to move down . . ..”
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Id. at 379. Therefore, it is the pressure differential between the upward facing areas
(or top) of the valve and the mass and the downward facing areas of the mass that
creates the fluid pressure force that causes the mass to move. See id. at 386.
The Court recognizes that the PTAB’s decision is not binding. See Rembrandt
Wireless Techs., LP v. Samsung Elecs. Co., Inc., 853 F.3d 1370, 1377 (Fed. Cir.
2017). Courts in this circuit, however, often give the PTAB decision “reasoned
deference.” See, e.g., Ilife Techs., Inc. v. Nintendo of Am., Inc., 2017 WL 525708, *4
(N.D. Tex. Feb. 9, 2017). Other district courts treat the PTAB decision as intrinsic
evidence. See, e.g., Fairfield Indus., Inv. v. Wireless Seismic, Inc., 2015 WL 1034275,
*5 (S.D. Tex. Mar. 10, 2015). Whether the PTAB decision is entitled to deference or
simply considered intrinsic evidence, the Court finds it instructive in this case.
For Figures 2 and 3 of the ’294 Patent, the parties dispute whether the rotating
valve is part of the corresponding structure. The Court concludes that it is not.
Plaintiff is correct that alteration of the flow of drilling fluid through the rotating valve
alters the drilling fluid pressure force. See, e.g., ’294 Patent, Abstract. Asserted
Claim 4 of the ’294 Patent identifies a percussion drill as described in Claim 19
“wherein said rotating valve is provided separately of the means for creating a fluid
pressure force on said mass.” See ’294 Patent, Cl. 4 (emphasis added). The limitation
in Claim 4, the asserted claim, that the rotating valve is “separate[] of the means”

9

Claim 1 of the ’294 Patent has been invalidated as unpatentable under 35 U.S.C.
§ 103(a). See PTAB Decision, Appendix p. 420.

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establishes that the rotating valve is not “associated with the mass” for purposes of the
asserted claim. Therefore, the rotating valve is not part of the corresponding structure
for the claim element, a “means associated with the mass for creating a fluid pressure
force on said mass.”
The parties also dispute whether the “flow restricting nozzle” in Figures 2 and 3
is part of the corresponding structure. It is clear that the nozzle in Figures 2 and 3 is
associated with the mass. The nozzle is embedded in the mass, much like the rotating
valve’s position in Figure 1. Further, the nozzle creates a pressure drop through the
nozzle, and thus across the mass, thereby creating a fluid pressure force on the mass.
Indeed, in the Detailed Description of the Invention section of the ’294 Patent,
Figure 2 is described as having a “nozzle 74 to restrict fluid flow through the bore 72
and create a pressure drop across the mass 62.” See ’294 Patent, 4:16-17. Similarly,
with reference to Figure 3, the Detailed Description identifies a pressure drop “across
the nozzle 94” that forces the mass downwards. See id., 4:41-42.
For Figures 2 and 3, the Detailed Description clearly links the nozzle to the
identified function because the pressure drop across the nozzle creates the fluid
pressure force on the mass. Therefore, the flow restricting nozzle (element 74 in
Figure 2 and 94 in Figure 3) is a part of the corresponding structure for Figures 2
and 3.

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Based on the foregoing, the Court construes the means-plus-function claim term
to mean:
The corresponding structures are the structures and surfaces associated
with the mass that produce a fluid pressure force when pressurized fluid
flows through the fluid transmitting body to create a pressure differential
across the structures and/or surfaces.
A. For the embodiment of Figure 1 of the ’294 Patent, the surface areas
that are subject to fluid pressure are: (i) the surfaces of the rotating valve
(32) that are exposed to the pressurized fluid and (ii) the surfaces of the
mass (28) that are exposed to pressurized fluid; and
B. For the embodiments of Figures 2 and 3 of the ’294 Patent, the
structures or surface areas associated with the mass that are subject to
fluid pressure are (1) the surfaces of the flow restricting nozzle (74/94)
that are exposed to pressurized fluid, and (2) the surfaces of the mass
(62/92) that are exposed to the pressurized fluid.
IV.

CONCLUSION
The Court has considered the intrinsic evidence in the record, as well as limited

extrinsic evidence as cited herein. The Court also has considered the parties’ claim
construction briefing, and the oral arguments and explanations during the Markman
hearings, which the Court found very helpful and informative. Based on this
consideration of the evidence and the parties’ arguments, as well as the application of
governing claim construction principles, the Court construes the disputed terms in the
Patents-in-Suit as set forth above and in the chart below.

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Claim Term

Court’s Construction

Vary the Open Area of Said Port
Between a Minimum Open Area
and a Maximum Open Area

Vary the alignment of the openings of the
valve members between the first and second
states of alignment where one state of
alignment is greater than the other and the
openings of the valve members are always
at least partially aligned such that the area is
at least minimally open, not closed

Open Axial Drilling Fluid Flow
Port

A bore extending along a longitudinal axis
of the valve through which drilling fluid can
pass and that is always at least partially
open

Provide a Varying [Fluid] Flow
Therethrough

Cause a fluid flow through the flow passage
[port] of the valve that changes

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Means Associated with the Mass
for Creating a Fluid Pressure
Force on Said Mass

Specified Function: Creating a fluid
pressure force on said mass
Corresponding Structure: The
corresponding structures are the structures
and surfaces associated with the mass that
produce a fluid pressure force when
pressurized fluid flows through the fluid
transmitting body to create a pressure
differential across the structures and/or
surfaces.
A. For the embodiment of Figure 1 of the
’294 Patent, the surface areas that are
subject to fluid pressure are: (i) the surfaces
of the rotating valve (32) that are exposed to
the pressurized fluid and (ii) the surfaces of
the mass (28) that are exposed to
pressurized fluid; and
B. For the embodiments of Figures 2 and 3
of the ’294 Patent, the structures or surface
areas associated with the mass that are
subject to fluid pressure are (1) the surfaces
of the flow restricting nozzle (74/94) that
are exposed to pressurized fluid, and (2) the
surfaces of the mass (62/92) that are
exposed to the pressurized fluid.

It is SO ORDERED.
SIGNED at Houston, Texas, this 24th day of April, 2019.

NAN Y F. ATLAS
SENIOR UNI
STATES DISTRICT JUDGE
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