Auto-Dril, Inc. v. Nat'l Oilwell Varco, LP., CIVIL ACTION NO. H–16–280, H–16–293

• Decision Date: 11 April 2018
• Docket Number: CIVIL ACTION NO. H–16–280, H–16–293
• Citation: 304 F.Supp.3d 587
• Parties: AUTO–DRIL, INC., Plaintiff, v. NATIONAL OILWELL VARCO, LP., Canrig Drilling Technology, Ltd. Defendants.
• Court: U.S. District Court — Southern District of Texas

304 F.Supp.3d 587

AUTO–DRIL, INC., Plaintiff,

v.NATIONAL OILWELL VARCO, LP., Canrig Drilling Technology, Ltd. Defendants.

CIVIL ACTION NO. H–16–280, H–16–293

United States District Court, S.D. Texas, Houston Division.

Signed April 11, 2018

As Amended April 20, 2018

David Greer Henry, James L. Reed, Jr., Meagan Wilder Glover, Gray Reed & McGraw, P.C., Michael D. Ellis, Antonelli, Harrington & Thompson LLP, Houston, TX, Russell Erin Jumper, Looper, Reed & McGraw, Dallas, TX, for Plaintiff.

John Wesley Raley, Bradford Turner Laney, Robert M. Bowick, Jr., Raley & Bowick L.L.P., Houston, TX, for Defendants.

AMENDED MEMORANDUM AND OPINION

Lee H. Rosenthal, Chief United States District Judge

This patent-infringement case involves braking and feedback technology for oil and gas drilling-control systems. Lowering pipe down an oil or gas drilling well puts pressure on the drill bit. Too much weight can damage the bit, costing time and money while it is repaired or replaced. To little weight results in slower drilling and less efficient production, both costly. To maximize efficiency and decrease costs, drillers need to put the "just right" weight on a drill bit.

Auto–Dril's U.S. Patent No. 6,994,172 (the '172 Patent) claims a system for more precise weight-on-bit measurement and control that achieves a better balance between the goals of increasing drilling speed and reducing damage to drilling components. (Docket Entry No. 21–1). The '172 Patent attempts to solve the problem of finding the Goldilocks "just right" weight-on-bit. The '172 Patent claims sensors that produce electronic signals indicating the weight-on-bit. The signals are received by a computer-based drilling system, which transmits them to an electric motor. The motor either increases the amount of brake applied to the drill string, reducing the weight-on-bit, or reduces the amount of brake, increasing the weight-on-bit. The system auto-adjusts by comparing the actual bit weight with an operator-selected weight previously set in the system.

Auto–Dril alleges that National Oilwell Varco's "e-Wildcat" electronic autodrilling system and Canrig Drilling Technology's "DrillSmart" automatic drilling system infringes the '172 Patent. (Docket Entry Nos. 21, 45). The parties have asked the court to construe several disputed terms in the '172 Patent. Both parties filed opening claim-construction briefs, responses, and supplemental briefs. (Docket Entry Nos. 134, 135, 141, 142, 168, 171). The court held a Markman hearing on November 28, 2017, at which counsel argued their competing constructions. (Docket Entry Nos. 189, 188). Each party filed a posthearing brief. (Docket Entry Nos. 194, 195). The parties have also submitted multiple summary judgment filings on indefiniteness. Auto–Dril filed three motions for partial summary judgment on indefiniteness, the defendants responded, and Auto–Dril replied. (Docket Entry Nos. 175, 176, 179, 180, 182, 183, 184, 185, 186).

Based on the parties' claim-construction and summary judgment motions and briefs, counsels' arguments, the record, and the applicable law, the court construes the disputed claims as set out in detail below. Based on the construction, the court:

• denies Auto–Dril's first motion for partial summary judgment, (Docket Entry No. 175);

• grants Auto–Dril's second motion for partial summary judgment as to the claim terms "electronic weight-on-bit comparison means" and "programmable logic controller," (Docket Entry No. 176);

• denies Auto–Dril's second motion for partial summary judgment as to the claim terms "programmable control means," "motor control signal output means," and "signal output means," (Docket Entry No. 176); and

• denies Auto–Dril's third motion for partial summary judgment, (Docket Entry No. 179).

The court also sets a status and scheduling conference on Wednesday, April 18, 2018 at 9:00 a.m. The reasons for the court's claim-construction and summary judgment rulings are explained below.

I. Background

A. The parties

Auto–Dril is a corporation organized under Texas law and headquartered in Odessa, Texas. (Docket Entry No. 45 at 1). National Oilwell is a limited partnership organized under Delaware law and headquartered in Houston, Texas. Id. Canrig is a corporation organized under Delaware law, with its principal office in Houston. Id.

B. The infringement allegations

Auto–Dril alleges patent infringement, induced infringement, and contributory infringement under 35 U.S.C. § 271. Auto–Dril alleges that National Oilwell and Canrig infringed the '172 Patent by "making, using, selling, offering for sale, and/or importing in or into the United States, without authority, products that fall within the scope of one or more claims of the '172 Patent," including National Oilwell's "e-Wildcat" electronic autodrilling system and Canrig's "DrillSmart" automatic drilling system. Auto–Dril alleges that National Oilwell has known of the '172 Patent since at least 2010 and that Canrig has known of the Patent or has been "willfully blind" to its existence. Despite this knowledge, Auto–Dril alleges that the defendants have actively promoted sales of their infringing products to, and use by, third parties. Auto–Dril alleges that these third parties have used the defendants' technology to directly infringe one or more claims of the '172 Patent and that the defendants have sold automatic drilling-control system components and accessories to third parties that have been used with other components to assemble an apparatus that falls within and infringes the '172 Patent claims. (Docket Entry No. 21 at 2–4; Case 4:16–cv–293, Docket Entry No. 1 at 2–4). Auto–Dril also asserts claims for fraud and breach of contract against National Oilwell. (Docket Entry No. 21 at 9–11. Against both defendants, Auto–Dril seeks damages and an injunction prohibiting future direct infringement, inducement of infringement, and contributory infringement of the '172 Patent. (Docket Entry No. 21 at 12; Case 4:16–cv–293, Docket Entry No. 1 at 7).

C. The disputed terms

The parties dispute 17 terms in claims 1, 2, and 3.¹ The meaning or definiteness of the following claim terms are disputed:

• "braking means" (claims 1 and 3);

• "electronic bit weight comparison means" (claims 1 and 2);

• "drill stem" (claim 1);

• "alternatively move said stem upward and downward" (claim 1);

• "a bit weight sensor" (claim 1);

• "a signal proportionate to any difference between said actual bit weight and said pre-selected bit weight value" (claim 1);

• "programmable control means" (claim 1);

• "in said upward or downward direction" (claim 1);

• "said signal" (claim 1);

• "programmable logic controller" (claim 2);

• "sensor means" (claim 3);

• "electronic weight-on-bit comparison means" (claim 3);

• "signal input means" (claim 3);

• "motor control signal output means" (claim 3);

• "computer data and program processing means" (claim 3);

• "variable motor control signal in proportion to any measured weight-on-bit" (claim 3); and

• "moving said braking means at proportional rates for controlling weight-on-bit upwardly or downwardly during a drilling operation" (claim 3).

The disputed terms are set out in bold:

1. An automatic drilling system for regulating the release of a drill string of drilling rig during the drilling of a borehole, comprising:

a drill stem having a drill bit at one end; drawworks coupled to said drill system;

a prime mover engaged to said drawworks to cause said drawworks to alternatively move said stem upward and downward ;

a bit weight sensor configured for measuring bit weight through direct interface with bit support means which, at least in part, supports the weight of said drill bit, and which is electrically coupled to a [sic] electronic bit weight comparison means , where said bit weight comparison mens [sic] compares actual bit weight indicated by said bit weight sensor against a user-selected, bit weight value set into said electronic bit weight comparison means, and generates a signal proportionate to any difference between said actual bit weight and said pre-selected bit weight value ;

programmable control means operatively coupled to a variable drive electric motor which is interfaced with drill stem braking means to proportionately effect movement of said drill string in said upward or downward direction upon receipt of signals from said electronic bit weight comparison means according to the value of said signal .

2. The automatic drilling system of claim 1 where the electronicbit weight comparison means includes a programmable logicalcontroller .

3. A control system for governing drawworks braking in an earth drilling apparatus which includes a drill stem comprising:

sensor means for measuring weight-on-bit of said drill string configured for measuring bit weight directly through interface with bit support means which, at least in part, supports the weight of said drill bit, and for generating an electronic signal proportionate to measured weight-on-bit during a drilling operation;

electronic weight-on-bit comparison means comprising:

computer and memory means for storing program logic, data received from said sensor, and user input data;

user input means for inputting said user input data which is representative of a desired weight-on-bit for a drilling operation;

signal input means for receiving said electronic signal from said sensor means and for storing data representative of said electronic signal;

motor control signal output means for generating a variable motor control signal which is proportionate to a desired speed of operation of an electric motor operatively connected to said motor control signal output means ;

computer data and program processing means for comparing said user input data against said data representative of said electronic signal and generating a motor control command for sad [sic] motor control signal output means , operably connected to said computer data and program processing means, to generate said variable motor control signal in proportion

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