Tesco Corp.. v. Weatherford Int'l Inc.

• Decision Date: 05 January 2010
• Docket Number: Civil Action No. H-08-2531.
• Citation: 722 F.Supp.2d 737
• Parties: TESCO CORPORATION, Plaintiff, v. WEATHERFORD INTERNATIONAL, INC., National Oilwell Varco, L.P., Offshore Energy Services, Inc., and Frank's Casing Crew & Rental Tools, Inc., Defendants.
• Court: U.S. District Court — Southern District of Texas

722 F.Supp.2d 737

TESCO CORPORATION, Plaintiff,

v.WEATHERFORD INTERNATIONAL, INC., National Oilwell Varco, L.P., Offshore Energy Services, Inc., and Frank's Casing Crew & Rental Tools, Inc., Defendants.

Civil Action No. H-08-2531.

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

Jan. 5, 2010.

Glenn A. Ballard, Jr., Andrew William Zeve, John F. Luman, III, Mateo Z. Fowler, Bracewell & Giuliani LLP, Houston, TX, for Plaintiff.

Lucas Thomas Elliot, Paul E. Krieger, Morgan Lewis & Bockius, Robert M. Bowick, Jr., John Wesley Raley, III, Raley & Bowick, LLP, Bruce R. Coulombe, Guy E. Matthews, The Matthews Firm, Frank Zugin Lin, Matthews, Lawson & Bowick, PLLC, C. James Bushman, Loren G. Helmreich, Browning Bushman, Lester L. Hewitt, David R. Clonts, Sarah J. Ring, Akin Gump et al., Houston, TX, for Defendants.

MEMORANDUM AND ORDER

KEITH P. ELLISON, District Judge.

In this patent infringement suit, Defendants seek construction of several terms contained in the asserted claims of U.S. Patent No. 7,140,443 (the “'443 patent”) and U.S. Patent No. 7,377,324 (the “'324 patent”). This Court held a hearing on October 14, 2009, during which the parties presented argument in support of their proposed constructions. This Court now construes the disputed claim terms as a matter of law under Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

I. BACKGROUND

Plaintiff Tesco Corporation (“Tesco”) is the owner of the '443 patent and the '324 patent. The '324 patent is a continuation of the ' 443 patent. Tesco brought suit against Defendants Weatherford International, Inc. (“Weatherford”); National Oilwell Varco, L.P. (“NOV”); Offshore Energy International, Inc. (“OES”); and Frank's Casing Crew and Rental Tools, Inc. (“Frank's”) (“Defendants” collectively) for infringement of these patents. The '443 and '324 patents describe a tool used on a drilling rig. Drilling rigs are used to bore and encase holes in the ground for the purpose of extracting oil. This process involves oilfield tubulars, or pipes, generally segmented into lengths of 30-40 feet. The drilling rig screws the pipe segments together to form a pipe string used to drill or encase the hole in the ground. More specifically, the patents describe an apparatus and method for handling the sections of the pipe or pipe strings that are used for drilling or lining a well bore. This pipe handling device is positioned below a top drive, a device placed in the upper part of a drilling rig which bears the weight of suspended pipe as it is driven into a well bore. Link arms are used to raise segments of a pipe string and place those segments into a pipe engaging apparatus such that the pipe segment can be rotated and connected with the pipe string being used to line or drill a well bore. Tesco's product is commonly referred to as the casing drilling system (“CDS”).

The '443 patent contains 70 claims, and the '324 patent contains 34 claims. Because the disputed terms and phrases occur throughout these claims, the Court will not reproduce each claim containing a disputed term. Concurrent with this litigation, the United States Patent and Trademark Office (“PTO”) is conducting reexamination proceedings to determine the viability of the '443 and '324 patents themselves. The proceedings have not yet reached a resolution. This Court previously denied Defendants' joint motion to stay this case pending patent reexamination. (Doc. No. 61.) However, this Court can consider statements and resolutions of ongoing reexamination proceedings in the context of claim construction. Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed.Cir.2008).

II. THE LEGAL STANDARD A. Claim Construction

Claim construction is a matter of law, and thus the task of determining the proper construction of all disputed claim terms lies with the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The Federal Circuit has opined extensively on the proper approach to claim construction, most notably in its recent opinion in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) (en banc).

The goal of a Markman hearing is to arrive at the ordinary and customary meaning of a claim term in the eyes of a person of ordinary skill in the art. Phillips, 415 F.3d at 1313. In order to do so, the Court should first look to intrinsic evidence to decide if it clearly and unambiguously defines the disputed terms of the claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1585 (Fed.Cir.1996). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. Phillips, 415 F.3d at 1314.

Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention. O2 Micro Int'l Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351, 1360 (Fed.Cir.2008). Thus, the inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation.

Phillips, 415 F.3d at 1313. That starting point is based on “the well-settled understanding that inventors are typically persons skilled in the field of the invention, and that patents are addressed to, and intended to be read by, others of skill in the pertinent art.” Id. A district court is not obligated to construe terms with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every word in the asserted claims. O2 Micro Intern. Ltd., 521 F.3d at 1360; see also Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed.Cir.2001) (finding no error in non-construction of “melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed.Cir.2001) (finding no error in the lower court's refusal to construe “irrigating” and “frictional heat”).

The claims themselves provide substantial guidance as to the meaning of particular claim terms. Phillips, 415 F.3d at 1314. To begin with, the context in which a term is used in the asserted claim can be highly 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. Vitronics, 90 F.3d at 1582. 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. Phillips, 415 F.3d 1303.

In addition, the specification, or the part of the patent where the inventor describes and illustrates the invention in significant detail, “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.” Vitronics, 90 F.3d at 1582. The importance of the specification in claim construction derives from its statutory role. The close kinship between the written description and the claims is enforced by the statutory requirement that the specification describe the claimed invention in “full, clear, concise, and exact terms.” 35 U.S.C. § 112, ¶ 1. Consistent with that general principle, cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs. Phillips, 415 F.3d at 1316. In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive. Id. The specification may also resolve ambiguous claim terms that are not sufficiently clear 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).

Notably, while the specification may describe very specific embodiments of the invention, the claims are not to be confined to these embodiments. Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc., 473 F.3d 1173, 1181 (Fed.Cir.2006) (quoting Phillips, 415 F.3d at 1323). However, the importance of limiting language in the specification has been discussed by the Federal Circuit in terms that favor a restrictive reading. For example, in Lizardtech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373, 1375 (Fed.Cir.2006), the court stated:

However, in whatever form the claims are finally issued, they must be interpreted, in light of the written description, but not beyond it, because otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed. Claims are not necessarily limited to preferred embodiments, but, if there are no other embodiments, and no other disclosure, then they may be so limited. One does not receive entitlement to a period of exclusivity for what one has not disclosed to the public.

See also Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed.Cir.2006) (holding that the meaning of a claim was limited to the single embodiment disclosed in the specification). There is “a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification.” Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir.1998).

Finally, the prosecution history, which has been designated as part of the “intrinsic evidence,” consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent. Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent. Phillips...