Arterbury et al v. Odessa Separator, Inc.
Filing
42
MEMORANDUM OPINION AND ORDER ON CLAIM CONSTRUCTION. Signed by Magistrate Judge Roy S. Payne on 8/23/2018. (slo, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TEXARKANA DIVISION
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ROY ARTERBURY, DELWIN COBB,
CAVINS CORPORATION,
Plaintiffs,
v.
ODESSA SEPARATOR, INC.,
Defendant.
Case No. 5:16-CV-00183-RWS-RSP
MEMORANDUM OPINION AND ORDER ON CLAIM CONSTRUCTION
On August 7, 2018, the Court held a hearing to determine the proper construction of the
disputed claim terms in United States Patent No. 5,810,081 (“the ’081 Patent”). The Court has
considered the arguments made by the parties at the hearing and in their claim construction briefs.
Dkt. Nos. 32, 34, & 35. 1 The Court has also considered the intrinsic evidence and made subsidiary
factual findings about the extrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1314
(Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The Court
issues this Memorandum and Order on Claim Construction in light of these considerations.
1
Citations to the parties’ filings refer to the filing’s number in the docket (Dkt. No.) and pin
cites refer to the page numbers assigned through ECF.
1
TABLE OF CONTENTS
I.
BACKGROUND ................................................................................................................ 3
II.
APPLICABLE LAW .......................................................................................................... 4
III.
CONSTRUCTION OF AGREED TERMS ........................................................................ 9
IV.
CONSTRUCTION OF DISPUTED TERMS ..................................................................... 9
A. “means blocking fluid flow upwardly from said annulus” ............................ 9
B. “spiral guide means . . . for directing solid particles received from said fluid
inlet passage downwardly in a helical motion”................................................... 18
V.
CONCLUSION ................................................................................................................. 26
2
I.
BACKGROUND
The ’081 Patent is titled “Wear Structure for Bore Hole Separation Device.” The ’081 Patent
was filed on February 24, 1997 and issued on September 22, 1998. The ’081 Patent generally
relates to a separation device or desander that is positioned in a bore hole for separation of solid
particles from well fluid. ’081 Patent at Abstract. The disclosed separation device includes outer
and inner concentric members that form an annulus region between the two members. Id. A spiral
guide is positioned in the annulus region. Id. The specification adds that the spiral guide is
positioned below a fluid inlet passage in the wall of the outer tubular member, which receives
fluids with entrained solid particles (e.g., sand). Id. at 2:13–16. The fluid with the entrained solid
particles is guided by the spiral guide in a downwardly spiral path, which provides a helical motion
to the solid particles. Id. at 2:17–19. The helical motion results in a separation of the solid particles
from the fluid. Id. at 4:41–47. The solid particles settle below the inner tubular member, and the
separated fluid flows upwardly through the inner tubular member to a separate location. Id.
The specification further states that the disclosed device includes a wear structure in the
outer surface of the outer tubular member at a location below the fluid inlet passage in the outer
tubular member. Id. at 2:20–24. The wear structure extends below the lower end of the inner
tubular member. Id. The specification adds that the wear structure of the outer tubular member is
a reduced wall thickness, which forms a weakened wall portion in the outer tubular member. Id.
at 2:24–26. The specification states that the swirling action of the sand with relatively abrasive
sand particles for prolonged periods of time will cause the weakened wall portion to wear through
to form a secondary fluid inlet through the wall to the annulus. Id. at 2:26–31. The specification
further indicates that this type of wear will happen without failure of the outer tubular member,
but will impact the performance enough to indicate that the tool string should be extracted before
total failure occurs. Id. at 1:66–2:4.
3
Claim 1 of the ’081 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
1. In a tool string having a tubular body for removing fluids from
a well; a separation device connected to said tubular body
adjacent the lower end thereof for separating solid particles
from said fluids, said separation device comprising:
an outer tubular member and a concentric inner tubular member
defining an annulus between said inner and outer members;
a fluid inlet passage in said outer tubular member extending to
said annulus and restricting large solid particles from
entering said annulus through said fluid inlet passage;
means blocking fluid flow upwardly from said annulus; and
spiral guide means in said annulus between said tubular members
and below said fluid inlet passage for directing solid
particles received from said fluid inlet passage downwardly
in a helical motion for settling of said solid particles below
said inner tubular member with the separated fluid flowing
upwardly through said inner tubular member to a separate
location;
said outer tubular member having a wall and a portion of said
wall has a reduced wall thickness which forms a weakened
wall portion, said outer tubular member when exposed to
relatively abrasive swirling solid particles for a prolonged
period of time causing erosion of said weakened wall
portion to reduce the thickness of said wall thereat.
II.
APPLICABLE LAW
A.
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.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
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specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
(vacated on other grounds).
“The claim construction inquiry. . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
claim terms are typically used consistently throughout the patent. Id. Differences among the claim
terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
adds a limitation to an independent claim, it is presumed that the independent claim does not
include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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.’” Id. (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
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299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
improper to read limitations from a preferred embodiment described in the specification—even if
it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim construction
because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
However, “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.” Id. at 1318; see also Athletic
Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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testimony may aid a court in understanding the underlying technology and determining the
particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art during
the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
(a patent may be “so interspersed with technical terms and terms of art that the
testimony of scientific witnesses is indispensable to a correct understanding of its
meaning”). In cases where those subsidiary facts are in dispute, courts will need to
make subsidiary factual findings about that extrinsic evidence. These are the
“evidentiary underpinnings” of claim construction that we discussed in Markman,
and this subsidiary factfinding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
B.
35 U.S.C. § 112(6) (pre-AIA) 2 / § 112(f) (AIA)3
Construing a patent claim that uses functional language invoking § 112(6) involves
additional steps. However, § 112(6) does not apply to all functional claim language. Instead, there
is a rebuttable presumption that § 112(6) applies when the claim language includes “means” or
“step for” terms. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348. If such language does
not appear in the claim language, then there is a rebuttable presumption that § 112(6) does not
apply. Id. The presumption rises or falls according to whether one of ordinary skill in the art
would understand the relevant claim, in the context of the entire specification, to denote sufficiently
2
The America Invents Act (“AIA”).
Because the application resulting in the ’081 Patent w a s filed before September 16, 2012, the
effective date of the AIA, the Court refers to the pre-AIA version of § 112.
3
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definite structure or acts for performing the function. Id. See also Media Rights Techs., Inc. v.
Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015).
When § 112(6) applies, it limits the scope of the functional term “to only the structure,
materials, or acts described in the specification as corresponding to the claimed function and
equivalents thereof.” Williamson, 792 F.3d at 1347. “The first step in construing such a limitation
is a determination of the function of the means-plus-function limitation.” Medtronic, Inc. v.
Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). “[T]he next step is to
determine the corresponding structure disclosed in the specification and equivalents thereof.” Id.
A “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.”
Id. The focus of the “corresponding structure” inquiry is not merely whether a structure is capable
of performing the recited function, but rather whether the corresponding structure is “clearly linked
or associated with the [recited] function.” Id. The corresponding structure “must include all
structure that actually performs the recited function.” Default Proof Credit Card Sys. v. Home
Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005). However, § 112 does not permit
“incorporation of structure from the written description beyond that necessary to perform the
claimed function.” Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir.
1999).
For § 112(6) limitations implemented by a programmed general purpose computer or
microprocessor, the corresponding structure described in the patent specification must include an
algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose computer but rather
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the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
III.
CONSTRUCTION OF AGREED TERMS
The parties agreed that, except for the two disputed phrases addressed in this Order, all
claim terms should be given their plain and ordinary meaning. Dkt. No. 31 at 1.
IV.
CONSTRUCTION OF DISPUTED TERMS
The parties’ dispute focuses on the meaning and scope of two phrases in the ’081 Patent.
A. “means blocking fluid flow upwardly from said annulus”
Disputed Term
“means blocking fluid
flow upwardly from said
annulus”
Plaintiff’s Proposal
Function: Blocking fluid flow
upwardly from the annulus
Defendant’s Proposal
Indefinite
Structure: Shoulder 26 and outer
wall of inner tubular member 22,
and equivalents.
1. The Parties’ Positions
The parties agree that the phrase “means blocking fluid flow upwardly from said annulus”
is subject to § 112, ¶ 6. Defendant contends that the phrase is indefinite because there is insufficient
structure disclosed in the specification of the ’081 Patent. Plaintiff contends that the structure
clearly linked to the function is the “annular shoulder” and the tubing connected to that shoulder.
(Dkt. No. 32 at 8) (citing ’081 Patent at 2:12–18). Plaintiff further contends that mapping the flow
through the disclosed separation device supports its construction. (Dkt. No. 32 at 9-10) (citing
’081 Patent at 8 3:3–25). Plaintiff argues that the patentee linked the structure by using the same
base word (“annular”) in describing the structure that provides the function of blocking fluid flow
upwardly from the annulus. (Dkt. No. 32 at 10). Finally, Plaintiff argues that U.S. Patent No.
5,314,018 (“the ’018 Patent”), which Plaintiff contends is incorporated by reference, confirms the
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linkage between the proposed structure and the claimed blocking function. Id. (citing ’018 Patent
at 2:5–8, 4:28–30).
Defendant responds that a “shoulder” denotes a change in diameter but makes no reference
to a shoulder acting as a plug or fluid block. (Dkt. No. 34 at 7) (citing Common Mechanical
Engineering Terms, College of Engineering, University of Wisconsin-Madison) 4. Regarding the
’018 Patent, Defendant argues that it cannot be read into the specification of the ’081 Patent. Id.
Defendant also argues that the enhanced drawing provided by Plaintiff is not available to one
skilled in the art, and without it, it would be difficult to determine the structure that performs the
recited function. Id. at 8. According to Defendant, the perceived need for the enhanced drawing
emphasizes the point that the ’081 Patent does not provide sufficient structure to support the
means-plus-function limitation. Id.
Plaintiff replies that the Court should disregard Defendant’s “shoulder” definition. (Dkt.
No. 35 at 5). Plaintiff argues that the absence of an express reference to “blocking” in Defendant’s
“shoulder” definition does not mean that the shoulder cannot block. Id. According to Plaintiff, the
specification indicates that the annular shoulder blocks upward flow. Id. (citing ’081 at 3:7–8).
Plaintiff also argues that a person of ordinary skill in the art would understand how fluid moves
through the structure shown in Figure 1 without Plaintiff’s modifications. (Dkt. No. 35 at 6) (citing
’081 Patent at 2:63–3:1, 3:10–13, 3:23–25). Plaintiff contends that Defendant has provided no
evidence that a skilled artisan would view the flow differently through the structure shown in
Figure 1. (Dkt. No. 35 at 7). Finally, Plaintiff argues that the ’018 Patent is further evidence that
the ’081 Patent’s analogous annular shoulder (and outer wall of the inner tubular member) blocks
4
Defendant did not submit an exhibit related to the referenced definition nor provide a web address
related to the referenced definition. In its reply brief, Plaintiff provided the following web address:
http://homepages.cae.wisc.edu/~me231/info/Engineering Glossary.pdf.
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flow upwardly. Id.
For the following reasons, the Court finds that the phrase “means blocking fluid flow
upwardly from said annulus” is governed by 35 U.S.C. § 112, ¶ 6, and is not indefinite.
2. Analysis
The phrase “means blocking fluid flow upwardly from said annulus” appears in asserted
claim 1 of the ’081 Patent. The disputed phrase uses the words “means” and specifies a function,
thus the Court presumes that the patentees intended to invoke the statutory mandates for meansplus-function clauses. York Prods. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1574
(Fed. Cir. 1996) (“In determining whether to apply the statutory procedures of section 112, ¶ 6,
the use of the word ‘means’ triggers a presumption that the inventor used this term advisedly to
invoke the statutory mandates for means-plus-function clauses.”). Furthermore, the parties agree
that the term is subject to § 112, ¶ 6. Accordingly, the Court finds that the phrase is governed by
35 U.S.C. § 112, ¶ 6.
“The first step in construing [a means-plus-function] limitation is a determination of the
function of the means-plus-function limitation.” Medtronic, 248 F.3d at 1311. The Court finds that
the function in claim 1 is “blocking fluid from flowing upwardly from the annulus.” The parties
agreed with the Court’s findings during the claim construction hearing.
Having determined the limitation’s function, “the next step is to determine the
corresponding structure disclosed in the specification and equivalents thereof.” Medtronic, 248
F.3d at 1311. The specification indicates that the corresponding structure that performs the recited
function of “blocking fluid from flowing upwardly from the annulus” includes shoulder 26 (green
outline) of the inner tubular member 22, outer wall (orange outline) of inner tubular member 22,
and inner wall (red outline) of outer tubular member 20, shown below:
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’081 Patent at Figure 1 (annotated). As shown above, and disclosed in the specification, annulus
30 is created by the space between the concentric inner tube 22 and outer tube 20. ’081 Patent at
2:12–16 (“The separation device includes inner and outer concentric tubular members providing
an annulus in which a spiral guide is positioned below a fluid inlet passage in the wall of the outer
tubular member which receives fluids with entrained solid particles such as sand therein for
separation.”). The specification adds that this space is referred to as “annular chamber (30).” Id. at
3:3–5 (“Openings 28 act as a screen or filter to prevent large solid particles from entering annular
chamber 30 formed between outer tubular member 20 and inner tubular member 22.”).
The specification further discloses that, at its upper end, the inner tubular member has an
“annular shoulder 26” extending over the annular chamber (30) and contacting the outer tubular
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member (20) and inner tubular member (22). Id. at 3:5–9 (“The upper end of inner tubular member
22 includes an annular shoulder 26 and a plurality of openings 28 are provided in outer tubular
member 20 below shoulder 26.”). As illustrated above, the specification indicates that shoulder 26
(green outline) of the inner tubular member, outer wall (orange outline) of inner tubular member
22, and inner wall (red outline) of outer tubular member 20 is the corresponding structure that
performs the recited function of blocking fluid from flowing upwardly (blue arrow) from the
annulus.”
Plaintiff provided a modified figure that shows the flow through the disclosed separation
device and illustrates how the corresponding structure performs the claimed function. 5
5
Defendant does not dispute that a person of ordinary skill in the art would understand that the
disclosed device operates in this manner. (Dkt. No. 34 at 7-8).
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Dkt. No. 32 at 9. Referring to the figure, fluid enters the annular chamber through openings (28)
that extend through the walls of the outer tubular member. ’081 at 3:10–13. A spiral guide (32) is
positioned in the annular chamber between the outer tubular member and the concentric inner
tubular member. Id. at 1:42–45. The specification states that “[t]he spiral guide in the annular
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chamber is effective to guide the well fluids containing entrained solid particles downwardly in a
spiral path to impart a helical motion to the solid particles so that the solid particles settle
downwardly and the separated well fluid is pumped upwardly through the inner tubular member.”
Id. at 1:46–51; see also id. at 3:23–25 (“The solid particles settle downwardly in a vortex or swirl
chamber 36 shown below the lower end 37 of the inner tubular member 22.”) (emphasis added).
As shown in the modified figure, shoulder 26 of inner tubular member 22, outer wall of inner
tubular member 22, and inner wall of outer tubular member 20 perform the recited function of
“blocking fluid from flowing upwardly from the annulus.”
Finally, the specification incorporates by reference the ’018 Patent. Id. at 3:19–23 (“As an
example of a suitable spiral guide, reference is made to U.S. Pat. No. 5,314,018 dated May 24,
1994, the entire disclosure of which is incorporated by this reference.”). The ’018 Patent explains
that the closure at the top of the annular region blocks flow. ’018 Patent at 2:5–8 (“The separation
device includes an inner tubular member mounted concentrically within an outer tubular member
to define an annular space or annulus which is blocked or closed at its upper end.”) (emphasis
added). Consistent with the ’081 Patent, the ’018 Patent identifies shoulder 26 of inner tubular
member 22, outer wall of inner tubular member 22, and inner wall of outer tubular member 20 as
the corresponding structure that performs the function of “blocking fluid from flowing upwardly
from the annulus.”
Defendant originally argued that a person of ordinary skill in the art would not see annular
shoulder 26 as the structure for blocking fluid flow upwardly. During the claim construction
hearing, Defendant informed the Court that it was dropping this argument. Defendant presented a
new argument that the term is not indefinite, and that the corresponding structure should include
two additional components. Defendant first argued that the Court’s construction should indicate
15
that shoulder 26 is part of the inner tubular member 22. The Court agrees. The specification states
that “[t]he upper end of inner tubular member 22 includes an annular shoulder 26 and a plurality
of openings 28 are provided in outer tubular member 20 below shoulder 26.” ’081 Patent at 3:6–
9.
Plaintiff argued during the hearing that a person of ordinary skill in the art could flip the
shoulder and include it in the outer tubular member 20. Although this may be an equivalent means,
it is not the structure disclosed in the specification. O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583
(Fed. Cir. 1997) (“The price that must be paid for use of [a means-plus-function claim] is limitation
of the claim to the means specified in the written description and equivalents thereof.”). As
discussed, it is shoulder 26 of inner tubular member 22 that is clearly linked to the function.
Defendant next argued at the hearing that the corresponding structure should include outer
flange 58, identified in Figure 2 of the ’018 Patent. It is important to note that this flange is only
discussed and identified in the specification of the ’018 Patent. 6 Specifically, the specification of
the ’018 Patent states “[i]nner tubular member 46 in concentric relation to outer tubular member
has an upper large diameter end portion 56 with an outer flange 58 thereon fitting in supporting
relation on annular shoulder 52.” ’018 Patent at 4:31–34. The Court does not find that this outer
flange is clearly linked to performing the function recited in the claims of the ’081 Patent. Indeed,
if Defendant’s argument is taken to its logical conclusion, then everything disclosed in the figures
of the ’018 Patent would be required simply because it is included or connected to the disclosed
6
The language proposed by Defendant is only found in the specification of the ’018 Patent. The
Court takes notice that Defendant is asking the Court to do exactly what it argued in its brief was
impermissible (i.e., using the description in the ’018 Patent to construe a disputed phrase in the
’081 Patent). To support its original position that the phrase was indefinite, Defendant argued that
“one cannot read into the Patent in Suit’s specification the specification of prior patents to provide
structure, material or acts that are not present in the Patent in Suit.” (Dkt. No. 34 at 7).
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separation device. This would be improper because § 112, ¶ 6 does not permit “incorporation of
structure from the written description beyond that necessary to perform the claimed function.”
Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). Accordingly,
the Court rejects this argument. Finally, in reaching its conclusion, the Court has considered the
extrinsic evidence submitted by the parties and given it its proper weight in light of the intrinsic
evidence.
3. Court’s Construction
In light of the intrinsic evidence, the Court finds that the phrase is governed by 35 U.S.C.
§ 112, ¶ 6, and construes the phrase “means blocking fluid flow upwardly from said annulus”
as follows:
Function: Blocking fluid from flowing upwardly from the annulus.
Corresponding Structure: Shoulder 26 of inner tubular member 22, outer wall of
inner tubular member 22, and inner wall of outer tubular member 20, and equivalents
thereof.
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B. “spiral guide means . . . for directing solid particles received from said
fluid inlet passage downwardly in a helical motion”
Disputed Term
“spiral guide means
. . . for directing
solid particles
received from said
fluid inlet passage
downwardly in a
helical motion”
Plaintiff’s Proposal
Function: Directing solid
particles received from the
fluid inlet passage
downwardly in a helical
motion.
Structure: spiral guide 32,
and equivalents
Alternatively: Spiral guide
32; spiral guide 62 of the
’018 Patent, and equivalents
Defendant’s Proposal
Defendant maintains that structure cannot
be incorporated by reference from another
patent. If, however, the Court permit
structure to be incorporated by reference,
then Structure for this element is found in
U.S. Patent 5,314,018 (“the ‘018 patent”)
that is incorporated by reference into the
Specification of U.S. Patent, 5,810,081.
The structure is shown as #62 in Figure 3 of
the ‘018 patent. The spiral means is to be
made of “resilient material” (Col. 7, line 24)
and is positioned about the inner tubular
member in the annular space between the
inner and outer tubular members below the
perforations in the outer tubular member to
direct and impact a centrifugal motion to the
solid particles entering the annular space
from the perforations in the outer tubular
member.” (Col. 2, lines 15-21.) The upper
surface of the spiral guide means defines a
downward path of at least 360° around inner
tubular member. (Col. 2, lines 22-24.) The
lower surface of the spiral guide means
forms a helical surface. (Col. 2, lines 27-28.)
A discharge opening is formed by the upper
and lower helical surfaces at the lower end
of the spiral guide. (Col. 2, lines 28-30.)
1. The Parties’ Positions
The parties agree that the phrase “spiral guide means . . . for directing solid particles
received from said fluid inlet passage downwardly in a helical motion” is subject to § 112 ¶ 6.
Defendant contends that the phrase is indefinite because there is insufficient structure disclosed in
the specification of the ’081 Patent. Defendant further contends that the structure cannot be
incorporated by reference from another patent. In the alternative, Defendant provides a structure
that Plaintiff argues includes unnecessary limitations.
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Plaintiff contends that the appropriate structure is the spiral guide described in the
specification as “spiral guide 32.” (Dkt. No. 32 at 11). Plaintiff argues that spiral guide (32)
includes helical surfaces to force the fluid moving over those surfaces to flow in a helical motion.
Id. at 12 (citing ’081 Patent at 3:14–18, Figures 1 and 2). Plaintiff further argues that the
specification does not strictly limit the spiral guide to one specific arrangement, but instead leaves
the exact shape and dimension open-ended. (Dkt. No. 32 at 12) (citing ’081 Patent at 18:20).
Plaintiff also contends that the ’081 Patent incorporates the ’018 Patent, which Plaintiff
argues more narrowly describes “spiral guide (62)” relative to “spiral guide 32” in the ’081 Patent.
(Dkt. No. 32 at 13). Plaintiff argues that the ’018 Patent’s spiral guide should not be incorporated
as limiting, because it is only “an example of a suitable spiral guide,” and not as the only suitable
spiral guide. Id. (citing ’081 Patent at 3:20–23). Plaintiff further argues that Defendant’s proposed
structure imports unnecessary limitations into the structure of the “spiral guide means.” (Dkt. No.
32 at 13) (citing ’018 Patent at 7:23–27).
Defendant responds that “[r]eading any structure from the specification of the ’018 patent
into the Patent in Suit to provide structure for the spiral guild [sic] means is impermissible.” (Dkt.
No. 34 at 8). Defendant argues that a person having ordinary skill in the art would “look only to
the contents of the ’081 Specification to determine the structure for the spiral guide means.” Id.
Defendant contends that the specification may describe some characteristics of a structure for a
spiral guide means, but that it “does [not] equate to furnishing an adequate description of the
structure itself.” Id. Defendant further contends that the figures add nothing to an understanding
of the spiral guide means. Id. at 9.
In the alternative, Defendant argues that the ’018 Patent teaches the structure of the spiral
guide in its proposed construction. Id. (citing ’018 Patent at 2:15–18, 2:21–34). Defendant also
19
contends that the figures of the ’018 Patent provide much greater understanding of the structure of
the spiral means in the ’018 Patent. (Dkt. No. 34 at 9) (citing ’018 Patent at Figure 2-5). Finally,
Defendant argues that although the ’018 Patent provides sufficient structure, the inclusion of this
structure by reference is not permitted. (Dkt. No. 34 at 10).
Plaintiff replies that it has identified sufficient structure for the “spiral guide means” in the
’081 Patent. (Dkt. No. 35 at 8) (citing ’081 Patent at 3:14–18, Figure 1). Plaintiff argues that one
reason that the “spiral guide” is not described in excruciating detail is because it is not the inventive
concept captured by the ’081 Patent. (Dkt. No. 35 at 8) (citing ’081 Patent at 2:7–9). Plaintiff
contends that this is contrasted to the ’018 Patent where the spiral guide is the inventive concept.
(Dkt. No. 35 at 8) (citing ’018 Patent at 1:7–11). According to Plaintiff, the ’081 Patent discloses
a spiral guide and even provides some of its details. (Dkt. No. 35 at 9). In the alternative, Plaintiff
argues that the ’018 Patent’s spiral guide could provide supporting structure under § 112. Id. (citing
Otto Bock HealthCare LP v. Össur HF, 557 F. App’x 950, 955–56 (Fed. Cir. 2014)). Specifically,
Plaintiff’s alternative proposed construction includes “spiral guide 62” of the ’018 Patent. (Dkt.
No. 35 at 10).
For the following reasons, the Court finds that the phrase “spiral guide means . . . for
directing solid particles received from said fluid inlet passage downwardly in a helical
motion” is governed by 35 U.S.C. § 112, ¶ 6, and is not indefinite.
2. Analysis
The phrase “spiral guide means . . . for directing solid particles received from said fluid
inlet passage downwardly in a helical motion” appears in asserted claim 1 of the ’081 Patent. The
disputed phrase uses the words “means” and specifies a function, thus the Court presumes that the
patentees intended to invoke the statutory mandates for means-plus-function clauses. York Prods.
20
v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“In determining
whether to apply the statutory procedures of section 112, ¶ 6, the use of the word ‘means’ triggers
a presumption that the inventor used this term advisedly to invoke the statutory mandates for
means-plus-function clauses.”). Furthermore, the parties agree that the term is subject to § 112, ¶
6. Accordingly, the Court finds that the phrase is governed by 35 U.S.C. § 112, ¶ 6.
“The first step in construing [a means-plus-function] limitation is a determination of the
function of the means-plus-function limitation.” Medtronic, 248 F.3d at 1311. The Court finds that
the function in claim 1 is “directing solid particles received from the fluid inlet passage
downwardly in a helical motion.” The parties agreed with the Court’s findings during the claim
construction hearing.
Having determined the limitation’s function, “the next step is to determine the
corresponding structure disclosed in the specification and equivalents thereof.” Medtronic, 248
F.3d at 1311. The specification indicates that the corresponding structure that performs the
function of “directing solid particles received from the fluid inlet passage downwardly in a helical
motion” includes spiral guide 32 having an upper helical surface and a lower helical surface
defining a spiral path extending in a generally downwardly direction. Specifically, the
specification states that “[m]ounted in annular chamber 30 between inner tubular member 22 and
outer tubular member 20 is a spiral guide generally indicated at 32 and having upper and lower
helical surfaces thereon to provide a helical motion to the fluid and entrained solid particles
therein.” ’081 Patent at 3:14–18. Figure 1 of the ’081 Patent illustrates the structure of the spiral
guide:
21
’081 Patent at Figure 1 (annotated). As shown in Figure 1, the disclosed spiral guide 32 (orange)
has an upper helical surface (green) and a lower helical surface (yellow) defining a spiral path
extending in a generally downwardly direction.
The specification further states that “[a]s an example of a suitable spiral guide, reference
is made to U.S. Pat. No. 5,314,018 dated May 24, 1994, the entire disclosure of which is
incorporated by this reference.” ’081 Patent at 3:19–23 (emphasis added). Like the specification
of the ’081 Patent, the specification of the ’018 Patent states that “[a] spiral guide is positioned
about the inner tubular member in the annular space between the inner and outer tubular members
below the perforations in the outer tubular member to direct and impart a centrifugal motion to the
solid particles entering the annular space from the perforations in the outer tubular member.” ’018
Patent at 2:15-23. The ’018 specification further states that “[t]he upper surface of the spiral guide
22
defines a spiral path which extends downwardly” and “the lower surface of the spiral guide also
forms a helical surface.” ’018 Patent at 2:21–28. Thus, the specification of the ’018 indicates that
the corresponding structure that is clearly linked with the recited function is spiral guide 32 having
an upper helical surface and a lower helical surface defining a spiral path extending in a generally
downwardly direction.
Turning to Defendant’s proposals, Defendant first contends that “[r]eading any structure
from the specification of the ’018 patent into the Patent in Suit to provide structure for the spiral
guide means is impermissible.” (Dkt. No. 34 at 8). The Court disagrees. To support its argument,
Defendant relies on Atmel Corp. v. Info. Storage Devices, 198 F.3d 1374 (Fed. Cir. 1999) and
Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308 (Fed. Cir. 2010).
Defendant’s reliance on Pressure Prods. is misplaced. In that case, the trial court incorrectly
included supporting structure from a “laundry list” of prior art. Pressure Prods., 599 F.3d at 1317.
Therefore, Pressure Prods. stands for the proposition that simply listing prior art does not open
the door for identifying supporting structure in the listed prior art. See id. (“Trial courts cannot
look to the prior art, identified by nothing more than its title and citation in a patent, to provide
corresponding structure for a means-plus-function limitation . . .. Simply mentioning prior art
references in a patent does not suffice as a specification description to give the patentee outright
claim to all of the structures disclosed in those references.”) (emphasis added). As discussed above,
the ’081 Patent specifically references the structure disclosed in the patent incorporated by
reference.
Regarding Atmel, the Federal Circuit in Otto Bock stated that “Atmel only foreclosed the
use of the content of a non-patent publication incorporated by reference to add structure to a meansplus-function claim. Atmel did not purport to include U.S. patent applications.” Otto Bock
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Healthcare LP v. Össur HF & Össur Ams., Inc., 557 Fed. Appx. 950, 955 (Fed. Cir. 2014) (internal
citations omitted). Indeed, Defendant’s position is contrary to 37 CFR § 1.57(d), which expressly
permits “essential material” for a patent specification to be incorporated by reference—such as
“the structure, material, or acts that correspond to a claimed means or step for performing a
specified function as required by 35 U.S.C. 112(f).” 37 CFR § 1.57(d)(3), see also Otto Bock, 557
Fed. Appx. at 955-956 (“37 C.F.R. 1.57(d) specifically envisions using a U.S. patent application
incorporated by reference to define structure for the purpose of 35 U.S.C. § 112, ¶ 6.”). Thus,
consistent with 37 C.F.R. § 1.57(d), a patent publication incorporated by reference can provide
supporting structure for means-plus-function claiming.
In the alternative, Defendant proposes a structure that includes unnecessary and
unwarranted limitations in the proposed structure. Medtronic, Inc. v. Advanced Cardiovascular
Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (stating that the focus of the “corresponding
structure” inquiry is not merely whether a structure is capable of performing the recited function,
but rather whether the corresponding structure is “clearly linked or associated with the [recited]
function.”). For, example, the specification of the ’081 Patent does not indicate that the “spiral
guide” must be made of “resilient material.” In fact, the specification of the ’081 Patent is silent
about the material type.
Likewise, the specification of the ’018 Patent does not restrict the “spiral guide” to
“resilient material,” but instead contemplates that the spiral guide may be either “resilient” or
“rigid.” ’018 Patent at 7:23–27 (“It may be desirable, under certain conditions, to have the spiral
guide formed of a resilient material instead of a rigid material to permit the orifice to change its
shape in the event of plugging . . . .”) (emphasis added). Thus, the “spiral guide means” should not
be limited to one specific material type because either material can perform the recited function.
24
TI Grp. Auto. Sys. (North Am.), Inc. v. VDO N. Am., L.L.C., 375 F.3d 1126, 1137 (Fed. Cir. 2004)
(“[W]hen multiple embodiments in the specification correspond to the claimed function, proper
application of § 112, [paragraph 6] reads the claim element to embrace each of those
embodiments.”) (citation omitted).
Nor must the upper surface of the “spiral guide means” be required to define a downward
path of at least 360 degrees and include a “discharge opening,” as Defendant contends. During the
claim construction hearing, Defendant also argued that the construction should limit the spiral
guide to one fin, and that there must be a decrease in cross sectional area between the upper and
lower ends. 7 The Court rejects Defendant’s arguments because the specification of the ’081 Patent
states that the spiral guide “may be of various shapes and dimensions to provide a spin or helical
motion” to the fluids moving through the tool string. ’081 Patent at 18:20. More importantly, the
specification of the ’081 Patent only requires the spiral guide to have an upper helical surface and
a lower helical surface defining a spiral path extending in a generally downwardly direction. There
is no discussion of a single fin or the other limitations included in Defendant’s construction. To be
clear, the ’081 Patent provides sufficient structure, and the ’018 Patent provides one example that
is consistent with the disclosure of the ’081 Patent.
Finally, as Plaintiff correctly points out, spiral guide 32 is not the stated improvement of
the ’081 Patent. Instead, the stated improvement is the integration of the weakened wall portion of
the tube string. ’081 Patent at 2:7–9 (“The present invention is particularly directed to a wear
structure for a separation device positioned on the lower end of a downhole tubing string . . . .”)
(emphasis added). In contrast, the ’018 Patent indicates that the stated improvement is the spiral
7
To support its position for these new arguments, Defendant cited to the ’018 Patent at 1:50–56,
2:43–45.
25
guide in the tubing string. ’018 Patent at 1:7–11 (“This invention relates to an apparatus method
for separating solid particles from liquids . . . in which the separator imparts a helical motion to
the fluid containing the solid particles and liquids . . . .”) (emphasis added). Thus, a person of
ordinary skill in the art would understand that the corresponding structure clearly linked to
performing the recited function in the ’081 Patent does not require all of the limitations disclosed
in the ’018 Patent. Instead, the corresponding structure identified above in the ’081 Patent is the
corresponding structure necessary to perform the recited function. Micro Chem., Inc. v. Great
Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999) (holding that § 112, ¶ 6 does not permit
“incorporation of structure from the written description beyond that necessary to perform the
claimed function.”). Accordingly, the Court rejects Defendant’s alternative construction.
3. Court’s Construction
In light of the intrinsic evidence, the Court finds that the phrase is governed by 35 U.S.C.
§ 112, ¶ 6, and construes the phrase “spiral guide means . . . for directing solid particles
received from said fluid inlet passage downwardly in a helical motion” as follows:
Function: Directing solid particles received from the fluid inlet passage downwardly
in a helical motion.
Corresponding Structure: Spiral guide 32 having an upper helical surface and a lower
helical surface defining a spiral path extending in a generally downwardly direction, and
equivalents thereof.
V.
CONCLUSION
The Court adopts the constructions above for the disputed and agreed terms of the Asserted
Patent. Furthermore, the parties should ensure that all testimony relating to the terms addressed in
this Order is constrained by the Court’s reasoning. However, in the presence of the jury the parties
should not expressly or implicitly refer to each other’s claim construction positions and should not
26
expressly refer to any portion of this Order that is not an actual construction adopted by the Court.
The references to the claim construction process should be limited to informing the jury of the
constructions adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 23rd day of August, 2018.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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