Lubrizol Specialty Products, Inc.

Filing 127

MEMORANDUM AND ORDER on Claim Construction. (Signed by Judge Nancy F Atlas) Parties notified.(TDR, 4)

United States District Court
Southern District of Texas

ENTERED
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
LUBRIZOL SPECIALTY
PRODUCTS, INC.,
Plaintiff,
v.
BAKER HUGHES, INC., et al.,
Defendants.

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December 08, 2016
David J. Bradley, Clerk

CIVIL ACTION NO. 4:15-2915

MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
This patent case is before the Court for construction of the disputed claim terms
in United States Patent Nos. 8,022,118 (“the ’118 Patent”), 8,426,498 (“the ’498
Patent”), 8,450,249 (“the ’249 Patent”), and 8,450,250 (“the ’250 Patent”)
(collectively, the “Patents-in-Suit”). Plaintiff Lubrizol Specialty Products, Inc.
(“Lubrizol”) and Defendants Baker Hughes, Inc., Baker Petrolite Corporation, and
Baker Petrolite LLC (“collectively, “Baker Hughes”) agree that any construction of
the disputed claim terms will apply consistently to all Patents-in-Suit.1
The Court conducted a hearing pursuant to Markman v. Westview Instruments,
Inc., 517 U.S. 370, 390 (1996) (“Markman hearing”), on November 21, 2016. At that
time, Lubrizol withdrew its allegation that Baker Hughes infringed Claim 6 of the

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Baker Hughes argues that the claim terms are indefinite and cannot be construed. As
discussed below, the Court declines to reach the indefiniteness issue at this time.

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’250 Patent and, as a result, construction of the claim term “solubility parameter” is
unnecessary. Also during the Markman hearing, Baker Hughes withdrew its proposal
for the claim term “turbulent flow.” After the Markman hearing, Baker Hughes [Doc.
# 115] and Lubrizol [Doc. # 124] each filed a Post-Hearing Filing Regarding the
Court’s Proposed Construction of “Pipeline.”
Based on the evidence before the Court, the arguments presented by counsel,
and the governing legal authorities, the Court issues this Memorandum and Order
construing the claim terms “pipeline” and “turbulent flow.”
I.

BACKGROUND
Lubrizol is the owner of the Patents-in-Suit, which claim methods for the

introduction of drag reducing agents (“DRAs”) into heavy, asphaltenic hydrocarbon
streams to achieve drag reduction as the hydrocarbon stream flows through the
pipeline. Lubrizol’s ExtremePower products embody the patented methods. Lubrizol
alleges that for many years it was the only company to offer DRAs that were effective
for causing drag reduction in heavy, asphaltenic crude oils.
Lubrizol filed this patent infringement lawsuit on October 5, 2015, and filed its
Amended Complaint [Doc. # 36] on December 4, 2015. The Court conducted a
Markman hearing on November 21, 2016, during which the parties presented evidence
and argument regarding the proper construction of disputed claim terms. The Court

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found the parties’ oral argument to be extremely helpful and now construes the claim
terms “pipeline” and “turbulent flow.”
II.

INDEFINITENESS ISSUE
Baker Hughes argues that the Patents-in-Suit are invalid under 35 U.S.C. § 112

because the claim terms are indefinite. A patent is “invalid for indefiniteness if its
claims, read in light of the specification delineating the patent, and the prosecution
history, fail to inform, with reasonable certainty, those skilled in the art about the
scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., __ U.S. __, 134 S.
Ct. 2120, 2124 (2014); Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1340
(Fed. Cir. 2015). The ultimate conclusion that a claim is indefinite under § 112 is a
legal conclusion. See Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224,
1228 (Fed. Cir. 2016) (citing Eidos Display, LLC v. AU Optronics Corp., 779 F.3d
1360, 1364 (Fed. Cir. 2015)). “Any fact critical to a holding on indefiniteness . . .
must be proven by the challenger by clear and convincing evidence.” Id. (citing Intel
Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003)).
Although usually decided on a motion for summary judgment, the
indefiniteness issue can if appropriate be decided at the time of claim construction.
See, e.g., Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1346 (Fed.
Cir. 2016); Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1316 (Fed. Cir.

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2013). In this case, the Court declines to decide the indefiniteness issue at this stage
of the proceedings. Based on the current record, it appears unlikely that Baker
Hughes will be able to satisfy its burden to demonstrate by clear and convincing
evidence that the Patents-in-Suit are indefinite. Nonetheless, the discovery period has
not ended, and the Court prefers to address the indefiniteness issue if and when
presented in a motion for summary judgment with full and complete briefing.
III.

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).
“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

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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.”
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

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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.
IV.

CONSTRUCTION OF DISPUTED CLAIM TERMS
The Court has carefully reviewed the Patents-in-Suit, specifically the claims and

specifications. The Court also has considered each counsel’s arguments presented in
the claim construction briefing and at the Markman hearing. The Court also has
reviewed and applied the governing Federal Circuit authority. On this basis, the Court
construes the claim terms “pipeline” and “turbulent flow” as used in the Patents-inSuit.

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A.

“Pipeline”

Lubrizol and Baker Hughes originally disputed the proper construction of the
claim term “pipeline.” The focus of the parties’ dispute involved whether a “flow
loop” could be a pipeline. During the Markman hearing, based on its consideration
of the parties’ evidence and argument, the Court noted that a small “flow loop” was
not a pipeline for purposes of the Patents-in-Suit. The parties have now agreed in
their post-hearing filings [Docs. # 115 and # 124] that the claim term “pipeline” as
used in the Patents-in-Suit can be construed as “a pipe for conveying fluid from one
point to another.” Based on the evidence and argument presented at the Markman
hearing, and the parties’ agreement in their post-hearing filings, the Court construes
the claim term “pipeline” to mean “a pipe for conveying fluid from one geographic
point to another.”
B.

“Turbulent Flow”

In addition to its argument regarding indefiniteness, Baker Hughes originally
argued that the claim term “turbulent flow” should be construed to include a
“Reynolds number” limitation. During the Markman hearing, however, Baker Hughes
withdrew that argument and offered no alternative to the construction proposed by
Lubrizol. The Court has considered the evidence and argument presented in the
parties’ briefing and at the Markman hearing, particularly the evidence from the

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parties’ experts. Lubrizol’s expert, Dr. Joel William Barlow, stated in his Declaration
that “‘turbulent flow’ simply refers to flow that includes at least some turbulence.”
See Barlow Declaration [Doc. # 81-10], ¶ 55. Similarly, Baker Hughes’s expert, Dr.
John C. Fetzer, testified in his deposition that “turbulent flow is just a flow that has
turbulence.” See Fetzer Deposition [Doc. # 81-23], p. 10. Based on its consideration
of all evidence and arguments presented by the parties, the Court construes the term
“turbulent flow” to mean “flow that has turbulence such that the flow of the fluid is
erratic and nonlinear.”
V.

CONCLUSION
The Court has considered the evidence in the record. The Court also has

considered the parties’ oral arguments and explanations during the Markman hearing,
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 terms “pipeline” and “turbulent flow”
in the Patents-in-Suit as set forth herein.
It is SO ORDERED.
SIGNED at Houston, Texas, this 8th day of December, 2016.

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NAN Y F. ATLAS
8
SENIOR UNI
STATES DISTRICT JUDGE