Schlumberger Technology Corporation v. Bico Drilling Tools, Inc.
Filing
49
MEMORANDUM OPINION AND ORDER - The court ADOPTS Schlumberger's claim construction for the term an external tube comprising an outer surface and an inner surface, the inner surface comprising at least to radially inwardly projecting lobes, in that no construction is needed. The term shall have its plain and ordinary meaning. The parties agree as to the construction of all other terms. (Signed by Judge Gray H Miller) (Attachments: # 1 Exhibit A) Parties notified.(rkonieczny, 4)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
SCHLUMBERGER TECHNOLOGY CORPORATION, §
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Plaintiff,
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v.
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BICO DRILLING TOOLS, INC.,
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Defendant.
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CIVIL ACTION H-17-3211
MEMORANDUM OPINION AND ORDER
The court held a Markman hearing in this case on August 29, 2018. Dkt. 45. The parties
agree to the construction of the term “maximize” as noted at the hearing and in the parties’ joint
claim construction chart, which is attached to this order as Exhibit A. The parties disagree as to the
construction of the phrase “an external tube comprising an outer surface and an inner surface, the
inner surface comprising at least to radially inwardly projecting lobes.” See Ex. A. This phrase is
used in Claims 1 and 8 of the patent in suit. After considering the arguments presented at the
hearing, the briefing, and the applicable law, the court is of the opinion that it should adopt the
construction of the phrases offered by plaintiff and counterdefendant Schlumberger Technology
Corporation (“Schlumberger”).
I. BACKGROUND
This case relates to Schlumberger’s patent for “Optimized Liner Thickness for Positive
Displacement Drilling Motors,” U.S. Patent No. 6,604, 921 (“the ‘921 Patent”). Dkt. 1. The ‘921
Patent was filed on January 24, 2002, and the date of the patent is August 12, 2003. Dkt. 25, Ex. D.
Schlumberger filed a request under 35 U.S.C. § 257 for supplemental examination on August 7,
2014. Dkt. 40, Ex. E. The United States Patent and Trademark Office (“USPTO” or “PTO”))
determined that the items presented by Schlumberger in the request did not raise a new question of
patentability. Id.
Schlumberger contends that BICO infringed one of more claims of the ‘921 Patent, including
but not limited to Claims 1 and 8, by importing, making, using, offering to sell, and/or selling
products or systems that embody the patented inventions, including but not limited to stators BICO
uses in various products. Dkt. 1. BICO contends that its products do not infringe on the patent
because Schlumberger specifically disclaimed a portion of its invention while prosecuting the patent.
Dkt. 41. Schlumberger contends that the alleged disclaimers were actually erroneous statements that
it corrected during the reexamination process. Dkt. 42. It posits that the court must consider the
entire prosecution history, including the USPTO’s determination with regard to its request for
supplemental examination, during which the USPTO indicated that the statements were erroneous
statements, not disclaimers, and that the claims of the patent, not the alleged disclaimers, control.
Id.
The court will first set forth the relevant terms of the ‘921 Patent. Then, it will discuss the
parties’ requested construction of the terms of the patent, the events leading the BICO’s disclaimer
claim, and the request for reexamination that Schlumberger argues clarifies that there was no
disclaimer. After setting forth that history, the court will discuss the legal standard for construing
patent claims and analyze how the terms at issue here should be construed.
A.
The Patent
The abstract of the ‘921 Patent states that the invention is a “stator for a positive
displacement motor including an external tube” and that the “external tube includes an outer surface
and an inner surface, and the inner surface includes at least two radially inwardly projecting lobes
extending helically along a length of the external tube.” Dkt. 40, Ex. A. It then discusses the liner
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and makes no other mention of the external tube. Id. There are four named figures in the ‘921
Patent, three represent prior art and the fourth represents one embodiment of the claimed invention.
Id. In the figure of the invention, Figure 4, the external tube is thicker at the inwardly projecting
lobes. See id.
The summary of the invention includes the same general description of the external tube. See id.
The detailed description also only briefly mentioned the external tube.
Claim 1 states: “A stator for a positive displacement motor comprising: an external tube
comprising an outer surface and an inner surface, the inner surface comprising at least two radially
inwardly projecting lobes extending helically along a selected length of the external tube; and a liner
disposed proximate the inner surface, the liner conforming to the radially inwardly projecting lobes
formed on the inner surface and to the helical shape of the inner surface, wherein a thickness of the
liner is at a maximum proximate the at least two radially inwardly projecting lobes.” Id.
Claim 8 similarly states: “A positive displacement motor comprising: a stator comprising an
external tube and an inner surface, the inner surface comprising at least two radially inwardly
projecting lobes extending helically along a selected length of the external tube, and a liner disposed
proximate the inner surface, the liner conforming to the radially inwardly projecting lobes formed
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on the inner surface and to the helical shape of the inner surface, wherein a thickness of the liner is
at a maximum proximate the at least two radially inwardly projecting lobes . . . .” Id.
B.
The Requested Construction
Schlumberger requests that the court construe the following phrase, used in Claims 1 and 8
of the ‘921 Patent, in accordance with the plain and ordinary language used in the claims: “an
external tube comprising an outer surface and an inner surface, the inner surface comprising at least
two radially inwardly projecting lobes.” Dkt. 36. BICO seeks to add the phrase “with the external
tube having an increased wall thickness at the inwardly projecting lobes” so that the entire phrase
reads: “an external tube comprising an outer surface and an inner surface, the inner surface
comprising at least to radially inwardly projecting lobes, with the external tube having an increased
wall thickness at the inwardly projecting lobes.” Id. BICO asserts that Schlumberger disclaimed
the extent to which the claims could encompass an external tube without an increased wall thickness
at the inwardly projecting lobes when it responded to the USPTO’s initial rejection of the patent as
unpatentable over Bottos et al. (Patent No. 6,309,195) in view of Moller (Publication Number DE
2,017,620). Dkt. 41 & Ex. 4.
C.
The Alleged Disclaimer
On January 7, 2003, the patent examiner rejected several claims in the proposed patent,
including claims 1 and 8. Dkt. 41, Ex. 4. The patent examiner noted that the Bottos et al. patent
(Patent No. 6,309,195) failed to disclose a thickness for the liner, and Moller (Publication Number
DE 2,017,620) taught “that it is conventional in the Moineau art to utilize the thickness of the liner
(2) being at a maximum proximate the at least two radially inwardly projecting lobes” and that the
“thickness of the liner (2) is selected to form a desired level of compression between the liner and
a rotor.” Id. (citing Figure 2 in the ‘’921 Patent and identifying numbers associated with that figure).
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The examiner felt it “would have been obvious to one having ordinary skill in the art at the time the
invention was made, to have utilized the thickness of the liner being varied, as taught by Moller in
the Bottos et al. apparatus since the use thereof would have improved the sealing performance
between the rotor and stator.” Id.
In a response dated April 8, 2003 (the “Alleged Disclaimer”), Schlumberger’s counsel made
various representations, some of which BICO contends limited the scope of the invention. First,
Schlumberger requested some amendments to the specification relating to the thickness of the liner
and description of Figure 4. Dkt. 41, Ex. 3. Schlumberger then made representations about the
external tube. Id. It stated that “Figure 4 clearly illustrates one of such embodiments. As shown in
Figure 4, the external tube and the liner are both ‘shaped,’ i.e., both are thicker at the inwardly
projecting lobes.” Id. at 6 (emphasis in original). Schlumberger noted that “[i]n contrast, Bottos et
al. discloses a stator having a liner with a constant thickness.” Id. “In addition,” according to
Schlumberger,
the external tube 320 of a stator according to Bottos et al. has an
identical thickness all around (as shown in Figure 3) and does not
have an increased thickness to form the inwardly projecting lobes.
Thus, the external tube 320 and the liner 330 of Bottos et al. are each
of an identical thickness. In contrast, the external tube and the liner
of the present invention each have an increased thickness at the
inwardly projecting lobes.
Id. at 7 (referring to numbers used in Figure 3 of the ‘921 Patent) (emphasis added). Finally, further
attempting to distinguish Bottos and Moller, Schlumberger asserted that “[e]ven if one were to
combine Bottos et al. and Moller, Moller does not provide what is missing in Bottos et al.—a stator
having an external tube with increased thickness at the inwardly projecting lobes. Consequently,
combination of Bottos et al. and Moller cannot render claims 1 and 8 obvious.” Id. at 8 (emphasis
added).
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After this response, the examiner issued the patent without changing the text of Claims 1 or
8 and without citing any reasons for allowance of the application. Dkt. 41, Ex. 9 at 3.
D.
Schlumberger’s Requested Reexamination
On December 18, 2013, Schlumberger filed a complaint against BICO Drilling Tools in the
Eastern District of Texas alleging infringement of the ‘921 Patent, including but not limited to
Claims 1 and 8. Dkt. 41, Ex. 5. On April 14, 2014, it filed a notice of voluntary dismissal. Dkt. 41,
Ex. 7. On August 7, 2014, it filed a request for supplemental examination with the USPTO (the
“Reexamination Request”). Dkt. 41, Ex. 8. Schlumberger requested that the USPTO consider,
reconsider, or correct the patent in light of the patent history, the Alleged Disclaimer, and various
prior art. Id. The Reexamination Request noted that the Alleged Disclaimer “made arguments
distinguishing claim 1 from Bottos based on the specific embodiment of Figure 4” and indicated that
“‘the external tube and the liner of the present invention each have an increased thickness at the
inwardly projecting lobes.’” Schlumberger asserted in the Reexamination Request that,
notwithstanding these representations in the Alleged Disclaimer, “the ‘921 Patent claims only require
that the external tube comprise ‘an outer surface,’ and do not limit the outer surface to any particular
cross-sectional shape, circular or otherwise.” Id. Schlumberger admitted that “the arguments
relating to the thickness of the external tube, as opposed to the thickness of the liner, might have
unintentionally led the Examiner to misunderstand the scope of the claims.” Id. Schlumberger also
noted the similar and also potentially misleading statements distinguishing Moller.
Id.
Schlumberger asserted that “a substantial new question of patentability may exist as to whether
claims 1-15 of the ‘921 Patent, when properly understood, are patentable over Bottos and Moller.”
Id. Schlumberger concluded its Reexamination Request by asking for a supplemental examination
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of claims 1-15 of the ‘921 Patent and an issuance of a supplemental examination certificate. Id. at
60.
The USPTO, however, determined that the items of information presented in the
Reexamination Request did “not raise a substantial new question of patentability” (the
“Reexamination Denial”). Dkt. 41, Ex. 9. The USPTO agreed with Schlumberger that “the current
independent claims do not require the tube and liner being thicker at the lobes.” Id. at 3. It then
noted that there was “no evidence that the argument regarding the thicker tube and liner at the lobes
resulted in the allowance of the application” and that “[o]ne misleading or erroneous argument does
not impair the allowance of a patent application if it is shown to claim a novel and unobvious subject
matter, in this instance the thicker liner proximate the lobes.” Id. (emphasis added). It went on to
state that in “this case, the liner being thicker proximate to the lobes was claimed, argued and is seen
to have led to the allowance of the application.” Id. at 3–4. After also discussing why the prior art
references did not require reexamination, the USPTO determined that “no new question of
patentability affecting at least one claim of U.S. Patent No. 6,604,921 is raised by the present request
for supplemental examination. Accordingly, ex parte reexamination of the patent will not be ordered
pursuant to 35 U.S.C. 257.” Id. at 6 (emphasis in original).
II. LEGAL STANDARD
“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. See id. at 1313. The intrinsic evidence includes the claims
themselves, the specification, and the prosecution history. See id. at 1314. Courts give claim terms
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their “ordinary and customary meaning” as understood by one of ordinary skill in the art at the time
of the invention in the context of the entire patent. Id. at 1312–13.
The claims themselves provide substantial guidance in determining the meaning of particular
claim terms. Id. at 1314. First, a term’s context in the asserted claim can be very instructive. Id.
“Other claims of the patent in question, both asserted and unasserted, can also be valuable sources
of enlightenment as to the meaning of a claim term. 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. (citations omitted). Differences among the claim terms can
also assist in understanding a term’s meaning. Id. “For example, the presence of a dependent claim
that adds a particular limitation gives rise to a presumption that the limitation in question is not
present in the independent claim.” Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. at 1315
(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)). This is true because a patentee
may define his own terms, give a claim term a different meaning than the term would otherwise
possess, or disclaim or disavow the claim scope. Id. at 1316. In these situations, the inventor’s
lexicography governs. Id. The specification may also resolve ambiguous claim terms “where the
ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit
the scope of the claim to be ascertained from the words alone.” Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). Courts must, however, recognize “the distinction
between using the specification to interpret the meaning of a claim and importing limitations from
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the specification into the claim.” Phillips, 415 F.3d at 1323. “To avoid importing limitations from
the specification into the claims, it is important to keep in mind the purposes of the specification are
to teach and enable those of skill in the art to make and use the invention and to provide a best mode
for doing so.” Id. Additionally, “[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 Micro-Devices, Inc., 848 F.2d
1560, 1571 (Fed. Cir. 1988)).
The prosecution history is another tool to supply the proper context for claim construction
because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc.,
v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent.”). The prosecution history “consists of the
entire record of proceedings in the Patent and Trademark Office,” including “all express
representations made by or on behalf of the applicant to the examiner to induce a patent grant.”
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985). “[T]he prosecution
history . . . limits the interpretation of claims so as to exclude any interpretation that may have been
disclaimed or disavowed during prosecution in order to obtain claim allowance.” Id. This
“prosecution history estoppel” “precludes a patent owner from obtaining a claim construction that
would resurrect subject matter surrendered during prosecution of his patent application. The
estoppel applies to claim amendments to overcome rejections based on prior art , . . . and to
arguments submitted to obtain the patent.” Hughes Aircraft Co. v. United States, 717 F.2d 1351,
1362 (Fed. Cir. 1983).
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Although extrinsic evidence can 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 (citations
omitted). Technical dictionaries and treatises may help explain the underlying technology and the
manner in which one skilled in the art might use claim terms. Id. at 1318. However, they may also
provide definitions that are too broad or may not be indicative of how the term is used in the patent.
Id. Similarly, expert testimony may aid in explaining the underlying technology and determining
the particular meaning of a term in the pertinent field. Id. But an expert’s conclusory, unsupported
assertions as to a term’s definition are unhelpful. Id. Generally, extrinsic evidence is “less reliable
than the patent and its prosecution history in determining how to read claim terms.” Id.
III. ANALYSIS
A.
Disclaimer or Erroneous Statement?
The main issue with which the court is faced in construing the at-issue term in Claims 1 and
8 is whether Schlumberger’s statements in response to the patent examiner’s initial rejection were
disclaimers or whether they were just erroneous statements. Schlumberger urges the court to
consider the entire prosecution history, including the USPTO’s indication after its request for
reexamination a decade after the patent issued that “[o]ne misleading or erroneous argument does
not impair the allowance of a patent application,” and determine that the statements made in 2003
were merely erroneous and that the express requirements of the claims themselves control. BICO
argues that the statements made in 2003 were clearly disclaimers made so that the patent examiner
would issue the patent.
While claim terms are entitled to a heavy presumption that they carry their ordinary and
customary meaning to those skilled in the art, “when a patent applicant surrendered claim scope
during prosecution before the PTO, the ordinary and customary meaning of a claim term may not
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apply.” Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). This
doctrine of disclaimer “‘promotes the public notice function of the intrinsic evidence and protects
the public’s reliance on definitive statements made during prosecution.’” Id. (quoting Omega Eng’g,
Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)). If, however, the alleged disavowal is
ambiguous, the doctrine does not apply. Id. It “must ‘be both clear and unmistakable’ to one of
ordinary skill in the art.” Id.
If there is no clear and unmistakable disavowal and instead an “erroneous remark by an
attorney in the course of prosecution of an application,” the terms of the claims control. Intervet
Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 (Fed. Cir. 1989). “An error in the prosecution
record must be viewed as are errors in documents in general; that is, would it have been apparent to
the interested reader that an error was made, such that it would be unfair to enforce the error.” Biotec
Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1348 (Fed. Cir.
2001). For instance, in Biotec Biologische, the erroneous statement was contrary to the plain
language of the claims and the specification and also to other statements in the same prosecution
document. Id.
In Rambus Inc. v. Infineon Technologies Ag, 318 F.3d 1081 (Fed Cir. 2003), Infineon
Technologies contended that the term “integrated circuit device” had a different meaning in one of
the patents at issue due to representations made to the USPTO during the prosecution of the patent.
318 F.3d at 1088. The Federal Circuit noted that the claim language defines an invention’s scope
and that generally the words in the claim language bear their normal meaning used in the field. Id.
But, “inventors may act as their own lexicographers and use the specification to supply implicitly
or explicitly new meanings for the claim terms.” Id. Construing courts must therefore consult the
written description and the prosecution history, and they may not read unstated limitations into the
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claims. Id. The district court in Rambus construed the term “integrated circuit device” to include
a device identification register, interface circuitry, and comparison circuitry even though the claim
language did not indicate that it included these three components. Id. at 1089. The Federal Circuit
found that the claim did not require comparison circuitry or a device identification register and that
the district court’s construction did not merely construe the actual words of the claim but instead read
into the claims two new limitations. Id. The Federal Circuit noted that the district court had “placed
too much emphasis on a single introductory comment in the prosecution history” that appeared after
the examiner had rejected the pending claims in light of another patent. Id. The court stated that the
“incorrect statement in the prosecution history does not govern the meaning of the claims.” Id. at
1090. The court determined the claim language itself controlled and not the “facially inaccurate
remark during prosecution.” Id.
The Rambus court relied extensively on Intervet America, Inc. v. Kee-Vet Laboratories, Inc.
In Intervet America, the invention was a vaccine for a poultry disease and the method for making the
vaccine. 887 F.2d at 1051. Intervet sued Kee-Vet for patent infringement. Id. at 1052. The district
court construed Intervet’s claims as limiting the vaccine to unattenuated viruses and a single
administration scheme, basing this construction on part of the patent prosecution history. Id. The
court ultimately found no infringement because the defendant’s vaccine was an attenuated virus and
not effective with a single administration. Id.
The Federal Circuit stressed that “courts cannot alter what the patentee has chosen to claim
as his invention, . . . limitations appearing in the specification will not be read into claims, and . . .
interpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous
limitation appearing in the specification, which is improper.’” Id. at 1053 (quoting E.I Du Pont De
Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1439, 1433 (Fed. Cir. 1988)). During the patent
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prosecution, Intervet’s attorney had “attempted to distinguish from the principal prior art reference
. . . on the ground that their vaccination scheme involved two vaccinations with their strain of virus
to get protections whereas applicants’ strain” took a “single vaccination at the age of 14 days.” Id.
The patent examiner said that the claims were not limited to a single vaccination scheme that would
distinguish them from this prior art, and the attorney amended three of the claims to refer to a single
administration, but he did not amend the other claims. Id. at 1054. The attorney made the remark
that “‘the claims are restricted to a single vaccination scheme,’” which was not true as to all the
claims. Id.
The Federal Circuit held that when “it comes to the question of which should control, an
erroneous remark by an attorney in the course of prosecution of an application or the claims of the
patent as finally worded and issued by the Patent and Trademark Office as an official grant, we think
the law allows no choice. The claims themselves control.” Id. It noted, however, that there are
times when an attorney says something during prosecution that “may be held against the patentee
on the theory of estoppel.” Id. The court provided the example of attempting to “expand the literal
meaning of a claim under the patent law doctrine of equivalents and the prosecution history shows
that the expanded scope would be inclusive of subject matter the attorney had represented to the
examiner was not intended to be included in order to get the claim allowed.” Id. However, the court
noted that there is a “presumption [that] the examiner did his duty and knew what claims he was
allowing.” Id.
Here, BICO asks the court to read a limitation into the claims due to Figure 4 and
representations made by counsel in the prosecution history. BICO argues that in Rambus and
Intervet the relevant issue related to reading claim limitations from one independent claim into
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separate independent claims based on statements made during prosecution, which it asserts is entirely
unrelated to this case. Dkt. 41 at 20.
Schlumberger points out that the burden is on BICO to prove its claims are limited by a clear
and unmistakable disclaimer that would have been evident to one skilled in the art. Dkt. 42 at 2
(citing Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063–64 (Fed. Cir. 2016) (“The party seeking
to invoke prosecution history disclaimer bears the burden of proving the existence of ‘clear and
unmistakable’ disclaimer that would have been evident to one skilled in the art.”)). Schlumberger
posits that BICO did not meet this burden as it did not consider the complete prosecution history
(including the supplemental examination) and prior art or submit any affidavits indicating how one
of ordinary skill in the art understands the scope of the claims. Id. It points out that a patent
examiner may be considered one of ordinary skill in the art and that the patent examiner’s
construction of claims carries significant weight. Id. (citing St. Clair Intellectual Prop. Consultants,
Inc. v. Canon, Inc., 412 F. App’x 270, 276 (Fed. Cir. 2011) (unpublished) (“Because an examiner
in reexamination can be considered one of ordinary skill in the art, his construction of the asserted
claims carries significant weight.”)). Schlumberger asserts that the patent examiner’s statements
regarding the claim scope is the only evidence of whether one of ordinary skill in the art would find
the original prosecuting attorney’s arguments erroneous, and BICO failed to submit any evidence
to rebut this intrinsic evidence and instead provides only attorney argument. Id. at 5.
Certainly, the statements made in the Alleged Disclaimer appear to limit Claims 1 and 8 in
the way BICO now requests the court construe them. However, the court must start with the heavy
presumption that the claims carry their ordinary and customary meaning, and the claims read in
isolation certainly do not contain such a limitation. If it couples the presumption that the claims
mean what they say with the fact that the USPTO, rather than reexamining the patent due to a
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potential disclaimer resulting in a limitation of the claim, determined that the statements about the
external tube were “misleading or erroneous,” it leads to a different conclusion. The Federal Circuit
has stated that reexamination often serves to provide “the district court with the expert view of the
PTO.” Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed. Cir. 1983). If the court looks at
the arguments through the lens of a person not skilled in the art, it is somewhat convinced by the
argument that the statements in the Alleged Disclaimer clearly and unmistakably disavow that the
invention includes an external tube that does not get thicker at the lobes. However, since the court
has the benefit of the opinion of one skilled in the art---the patent examiner's response to the
Reexamination Request---and there is a presumption that the claims mean what they say, the court
must find that the statements made in the Alleged Disclaimer were not a disclaimer and that the
claims should be construed as they are written.
B.
What About Reliance?
BICO argues that no court has ever held that a supplemental examination can be used to
affect claim scope in any way. Dkt. 41 at 20. It asserts that Schlumberger’s attempt to expand its
claim scope over a decade after the patent issued is counter to the public notice function of a patent
and its prosecution history. Id. It asserts that supplemental examination is a relatively new
procedure used to cure potential inequitable conduct by identifying information that should have
been considered during the original prosecution. Id. at 21. It argues that the statute and rules
governing supplemental examination make clear that the effect of examinations is limited to curing
inequitable conduct. Id. at 22 (citing 35 U.S.C. § 257(c)(1)).1 It notes that the USPTO can order a
1
Under this statute, which discusses the effect of supplemental examinations to consider,
reconsider, or correct information, a “patent shall not be held unenforceable on the basis of conduct
relating to information that had not been considered, was inadequately considered, or was incorrect
in a prior examination of the patent if the information was considered, reconsidered, or corrected
during a supplemental examination of the patent. The making of a request under subsection (a), or
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reexamination or determine that there is no substantial new question of patentability and argues that
if there is no reexamination, the supplemental examination itself can have no effect on the patent or
the scope of its claims. Id. It points to rules that indicate that supplemental examination cannot
correct mistakes in the original prosecution. Id. at 23 (citing Manual of Patent Examining
Procedure, Ex. 11, § 2809.1 (noting the “supplemental examination will not result in any correction”
if there is no substantial new question of patentability)). Thus, BICO asserts that since there was no
substantial new question here, Schlumberger was unable to retract its alleged “erroneous statement.”
Id. BICO also argues that expanding the scope of claims based on the supplemental examination
runs counter to public policy because allowing an expansion of patent coverage ten years after the
patent issued would “inequitably ensnare products that fell outside the original scope of the patents
and undermine the vital public notice function of the patent and prosecution history.” Id. at 25–26.
Schlumberger, relying on Phillips, 415 F.3d at 1317, argues that the prosecution history
consists of the complete record of proceedings before the USPTO, including the findings made
during a supplemental examination. Dkt. 42. Schlumberger points out that it is not attempting to
recapture disclaimed claim scope, it is asserting that the original prosecuting attorney’s statements
were erroneous or ambiguous in light of the claims, the specification, the prior art tubes, and one of
ordinary skill and knowledge of such tubes. Id. at 7. It points out that under Intervet, an erroneous
remark by an attorney does not control, the claims themselves control. Id. And, it argues that the
USPTO’s statements in the supplemental examination, which is the only intrinsic evidence on file
regarding what one of ordinary skill in the art would understand the claims to be, indicates the
statements were erroneous as the claims themselves do not require the tube to be thicker at the lobes.
the absence thereof, shall not be relevant to the enforceability of the patent under section 282.” 35
U.S.C. § 257(c)(1).
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Id. at 8. Thus, according to Schlumberger, there is no disclaimer to cure or correct. Id. As far as
the rules cited by BICO regarding the effect of the supplemental examination, Schlumberger states
that it was not seeking to correct the patent but wanted the USPTO to consider or reconsider its
determination of patentability in light of the erroneous statements and other prior art not previously
considered. Id. It further argues that the supplemental examination can affect the claim scope
because it, like any other proceeding before the USPTO, is part of the prosecution history. Id. BICO
has the burden of showing there was a clear and unmistakable disclaimer, but it did not provide any
affidavits showing what a person of ordinary skill in the art would believe. Schlumberger did
provide evidence of what one skilled in the art would think—the discussion in the Reexamination
Denial. Even if the reexamination has no effect on the patent or scope of the claims, it can tell the
court what one skilled in the art thinks the claim scope is since the patent examiner is one skilled in
the art. Thus, while the court finds itself somewhat swayed by BICO’s argument regarding its
reliance on the statements in the Alleged Disclaimer, as it seems inappropriate to divorce the
Reexamination Request from the intervening time period, if the court considers the Reexamination
Denial not as a mere opinion released a decade later but instead as evidence of what one of ordinary
skill in the art would believe the claims to mean, which was certainly derived from a consideration
of the claims, prior art, and the Alleged Disclaimer, then the court must conclude that
Schlumberger’s construction—the plain and ordinary meaning of the term that is used in the
claims—is the correct construction.
17
IV. CONCLUSION
The court hereby ADOPTS Schlumberger’s claim construction for the term “an external tube
comprising an outer surface and an inner surface, the inner surface comprising at least to radially
inwardly projecting lobes,” in that no construction is needed. The term shall have its plain and
ordinary meaning. The parties agree as to the construction of all other terms.
Signed at Houston, Texas on September 20, 2018.
___________________________________
Gray H. Miller
United States District Judge
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