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Smith International, Inc. v. Baker Hughes Inc.

United States District Court, D. Delaware

July 11, 2018



          EDUARDO C. ROBRENO, J.

         Plaintiff, Smith International, filed this suit on January 29, 2016 claiming that Defendant, Baker Hughes, infringed two related patents for expandable tools used as a part of well boring devices: 6, 732, 817 (‘817) and 7, 314, 099 (‘099). In general, the patents describe tools that are added towards the end of a drilling assembly which have adjustable arms that expand outward so that, as the drill assembly turns, the expanded tool arms ream the borehole larger. Hydraulic pressure is used to expand and collapse the reaming tool arms. The patented tools also contain stabilizers which help control the trajectory of the drilling assembly. Presently before the Court are the parties' disputes regarding the meaning of various terms found within the claims of the ‘817 and ‘099 patents. The Court held a claim construction hearing on June 20, 2018. Below, the Court construes the disputed claims.


         Patent claim construction is a question of law. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)). “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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).

         “[T]he words of a claim ‘are generally given their ordinary and customary meaning, '” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), which “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.” Id. at 1313. This person of ordinary skill is deemed to have read the disputed term “in the context of the entire patent, including the specification.” Id.

         In determining the proper construction of a claim, a court should first look to intrinsic evidence such as the patent itself, the specification, and prosecution history.[1] Vitronics Corp., 90 F.3d at 1582-83. “Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language.” Id. at 1582. Indeed, the patent specification is usually “dispositive; it is the single best guide to the meaning of a disputed term.” Id. “In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term.” Id. at 1583. However, extrinsic evidence may be considered “if needed to assist in determining the meaning or scope of technical terms in the claims.” Id. (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir. 1995)). Extrinsic evidence “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980. Where the intrinsic record resolves any ambiguity in the disputed term, “it is improper to rely on extrinsic evidence.” Vitronics Corp., 90 F.3d at 1583. Ultimately, “[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).


         A. Disputed Terms in ‘817

         1.means for adjusting said expanded position” (in Claim 2 of ‘817)

         35 U.S.C. § 112 ¶ 6 “allows a patentee to express an element of a claim as a means for performing a specified function.” Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014). However, “[i]n exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function.” Id

         Both parties agree that the relevant function is “adjusting [the] expanded position” of the tool arms used for reaming the borehole. The parties dispute the corresponding structure that performs this function. Plaintiff contends that all of the parts used to expand the tool arms are necessary parts of the overall structure used to adjust the expanded position of the arms. Defendant contends that only the parts actually used to adjust how far the arms can expand, and not the parts used to expand the arms, are the corresponding structure.

Plaintiff's Construction: Corresponding Structure: a mandrel, flow ports, a piston, a spring, a spring retainer, a cap, and equivalents.
Defendant's Construction: Corresponding Structure: a threaded sleeve.
Court's Construction: Corresponding Structure: a spring retainer and upper cap, and equivalents.

         “The corresponding structure to a function set forth in a means-plus-function limitation must actually perform the recited function, not merely enable the pertinent structure to operate as intended.” Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1371 (Fed. Cir. 2001). Plaintiff concedes that the purpose of the spring retainer is to limit the full expansion of the tool arms. The ‘817 specification indicates that “the spring retainer 550, which is a threaded sleeve, can be adjusted at the surface to limit the full diameter expansion of the arms 520.” ‘817 Patent 9:14-16; see id. at 9:18-19 (“[T]he position of the spring retainer 550 determines the amount of expansion of the arms 520.”). Once the operator adjusts the spring retainer so that the tool arms will expand to the required diameter, the upper cap locks the spring retainer into place, thus setting the adjustment. Id. at 9:22-24. It is these two items that “adjust[ ] said expanded position, ” in other words, the amount the tool arms can expand. The remainder of the items cited by Plaintiff move the arms into the expanded position, and thus “enable the pertinent structure to operate, ” but it is the spring retainer and upper cap that actually adjust the amount of expansion that is possible, and thus, “actually perform the recited function.”

         As a result, the Court generally agrees with Defendant's position. However, the Court disagrees with Defendant that the corresponding structure is merely a “threaded sleeve, ” even though the specification indicates that the spring retainer “is a threaded sleeve.” Id. at 9:15. This is but one embodiment of the spring retainer and it does not take into account the fact that the upper cap locks the spring retainer into place.

         2.directly above the drill bit” (in Claims 43, 55, & 83 of ‘817)

         Plaintiff specifically seeks construction of this term in regards to two phrases: (1) “disposing a first expandable tool . . . directly above the drill bit;” and (2) “said first expandable tool being positioned directly above the drill bit.” Plaintiff asserts that the tool is still “directly above” the drill bit as long as there are no intervening drill collars, even if there are other intervening structures that are not drill collars. Defendant contends that in order for the tool to be “directly above” the drill bit, no structure may intervene between the two.

Plaintiff's Construction: (1) Placing a first expandable tool . . . between the drill bit and a drill collar & (2) said first expandable tool being positioned between the drill bit and a drill collar.
Defendant's Construction: Positioned above the drill bit without intervening structures such as drill collars.
• Court's Construction: Positioned above the drill bit without intervening structures ...

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