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

• Decision Date: 27 September 2010
• Docket Number: Civil Action No. H–08–2531.
• Citation: 750 F.Supp.2d 780
• Court: U.S. District Court — Southern District of Texas
• 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.

750 F.Supp.2d 780

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.

Sept. 27, 2010.

Glenn A. Ballard, Jr., Alicia L. Hinds, Andrew William Zeve, John F. Luman, III, Mateo Z. Fowler, Bracewell & Giuliani LLP, Houston, TX, for Plaintiff.Robert M. Bowick, Jr., John Wesley Raley, III, Raley & Bowick, LLP, Bruce R. Coulombe, Guy E. Matthews, The Matthews Firm, Frank Zugin Lin, Hagan Noll Boyle LLC, C. James Bushman, Loren G. Helmreich, Browning Bushman, Lester L. Hewitt, David R. Clonts, Akin Gump et al., Michael Francis Reeder, II, Sarah J. Ring, Akin Gump Strauss Hauer and Feld, LLP, Houston, TX, for Defendants.

MEMORANDUM AND ORDER

KEITH P. ELLISON, District Judge.

Pending before the Court are the following motions:

Filed by Plaintiff Tesco Corporation (“Tesco”):

— Motion for Partial Summary Judgment on Defendants' Anticipation Invalidity Defense and Motion to Amend Claim Construction (Doc. No. 279);

— Motion for Partial Summary Judgment of No Inequitable Conduct (Doc. No. 281);

— Motion to Strike the Incomplete Reexamination Files of the Patents–in–Suit as Evidence from Defendants' Motions for Summary Judgment (Doc. No. 338).

Filed by Defendant Frank's Casing Crew & Rental Tools, Inc. (“Frank's”):

— Motion for Summary Judgment of No Willful Infringement of U.S. Patent Nos. 7,140,443 and 7,377,324 (Doc. No. 275);

— Motion for Summary Judgment of Invalidity of U.S. Patent Nos. 7,140,443 and 7,377,324 (Doc. No. 284);

— Motion for Partial Summary Judgment of Non–Infringement of Tesco's “Pivotal Connection” Claims by Frank's Sub–Mounted Supertawg and Motion to Amend Claim Construction (Doc. No. 289);

— Motion for Partial Summary Judgment of Non–Infringement of the “Channel Key” and “Anti–Rotation” Claims in Patent Nos. 7,140,443 and 7,377,324 (Doc. No. 291);

— Motion to Strike Testimony of Tommy Warren (Doc. No. 323).Filed by Defendant National Oilwell Varco, L.P. (“NOV”):

— Motion for Partial Summary Judgment of Non–Infringement Regarding “Channel Key” and “Anti–Rotation” Claims (Doc. No. 283);

— Motion for Partial Summary Judgment of Patent Invalidity for Indefiniteness Pursuant to 35 U.S.C. § 112, ¶ 2 (Doc. No. 293);

— Motion for Partial Summary Judgment of Non–Infringement Regarding “Pivotal Connection” Claims and Motion to Amend Claim Construction (Doc. No. 294);

— Motion for Summary Judgment of Invalidity Due to Obviousness (35 U.S.C. § 103(a)) (Doc. No. 300).

Filed by Defendant Weatherford International, Inc. (“Weatherford”):

— Motion for Summary Judgment of No Infringement (Doc. No. 296);

— Motion to Strike the Expert Report and Exclude the Testimony of Gary Wooley and Motion to Supplement Claim Constructions (Doc. No. 299).

Upon considering the Motions, all responses thereto, and the applicable law, the Court finds that Tesco's Motion to Strike Reexamination Files (Doc. No. 338) should be granted in part and denied in part, Weatherford's Motion to Strike the Report and Testimony of Gary Wooley (Doc. No. 299) should be denied, Frank's Motion to Strike the Testimony of Tommy Warren (Doc. No. 323) should be dismissed as moot, Defendants' Motions for Summary Judgment of Non–Infringement of the “Pivotal Connection” Claims (Doc. Nos. 289, 294, 296) should be denied, Defendants' Motions for Summary Judgment of Non–Infringement of the “Channel Key” and “Fitted for Anti–Rotation” Claims (Doc. Nos. 283, 291) should be granted in part and denied in part, NOV's Motion for Summary Judgment of Invalidity Due to Obviousness (Doc. No. 300) should be denied, Tesco's Motion for Summary Judgment on Defendants' Anticipation Defense (Doc. No. 279) should be denied, NOV's Motion for Summary Judgment of Invalidity Due to Indefiniteness (Doc. No. 293) should be denied, Frank's Motion for Summary Judgment of Invalidity Due to the On–Sale Bar (Doc. No. 284) should be denied, Tesco's Motion for Summary Judgment on Defendants' Inequitable Conduct Defenses (Doc. No. 281) should be granted in part and denied in part, and that Frank's Motion for Summary Judgment of No Willful Infringement (Doc. No. 275) should be granted in part and denied in part. The Court also finds it appropriate to further construe the claim terms as a matter of law, and does so in this order and the accompanying claim construction chart.

I. BACKGROUND

Tesco owns U.S. Patent No. 7,140,443 (the “'443 patent”) and U.S. Patent No. 7,377,324 (the “'324 patent”). The '324 patent, granted in May 2008, is a continuation of the '443 patent, granted in November 2006. Tesco brought suit against Frank's, NOV, Weatherford, and Offshore Energy Services, Inc. (“OES”) 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”). Tesco alleges that products sold by each Defendant infringe on the claims of the '443 and '324 patents. Specifically, Tesco asserts claims 13, 18, 25, 27, 43, 55, and 59 of the '443 patent and claims 1, 4, 12, 14, 17, and 27 of the '324 patent.

In October and November 2008, Weatherford filed requests for inter partes reexamination of the patents with the United States Patent and Trademark Office (“PTO”). (Doc. No. 54, at 1; Doc. No. 60, at 1.) PTO granted both re-examination requests. Defendants then moved for a stay of this proceeding pending the conclusion of the reexamination proceedings (Doc. No. 34), which the Court denied in February 2009. (Doc. No. 61.)

In January and February 2009, PTO issued its first Office Actions in the two reexaminations, rejecting fifty-eight of the seventy claims in the '443 Patent (Doc. No. 54, at 1) and thirty-three of the thirty-four claims in the ' 324 Patent (Doc. No. 60, at 2). In January 2010, PTO issued an Actions Closing Prosecution (“ACP”) for each of the reexaminations of the Tesco Patents.¹ (Doc. No. 195, at 3.) Of the seven claims in the ' 443 Patent asserted against the Defendants, PTO rejected five and confirmed two. (Id., at 5.) Of the six claims in the ' 324 Patent asserted against the Defendants, PTO rejected five and confirmed one. (Id.) All the confirmed claims include a “channel key” limitation that is absent from all of the rejected claims. (Id., at 3.) After the Actions Closing Prosecution were issued in the reexaminations, Frank's filed another Motion to Stay the Case Until Issuance of Reexamination Certificates (Doc. No. 195), which the Court denied in August 2010. (Doc. No. 317.)

On January 5, 2010, 722 F.Supp.2d 737 (S.D.Tex.2010), the Court issued an order construing the claims of the patents-in-suit as a matter of law under Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). (Doc. No. 176 (the “ Markman Order”).) This case is scheduled to go to trial on October 25, 2010.

II. MOTIONS TO AMEND CLAIM CONSTRUCTION

All of the moving parties ask the Court to engage in additional claim construction beyond that included in the Markman Order. Tesco, Frank's, NOV, and Weatherford all request that the Court construe the terms “main body,” “pipe engaging apparatus,” and “pipe gripping mechanism.” Frank's, NOV, and Weatherford also request that the Court amend its constructions of “link arm mounted by a pivotal connection to move with the top drive,” “pivotally connectable,” and “pivotally connected/pivotally mounted/pivotal connection.”

The Federal Circuit has held that “a district court may engage in claim construction during various phases of litigation, not just in a Markman order,” and “may engage in rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves.” Conoco, Inc. v. Energy & Environmental Intern., L.C., 460 F.3d 1349, 1359 (Fed.Cir.2006). “When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it.” O2 Micro Intern. Ltd. v. Beyond Innovation Technology Co., Ltd., 521 F.3d 1351, 1362 (Fed.Cir.2008). The goal of claim construction 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 v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed.Cir.2005) (en banc).

The Court now considers in turn each term for which construction is requested:

A. “link arm mounted by a pivotal connection to move with the top drive”; “pivotally connectable”; “pivotally connected/pivotally mounted/ pivotal connection”

In the Markman Order, the Court construed the term “link arm mounted by a pivotal connection to move with the top drive” to mean “link arm mounted to a surface by a pivotal connection to move with the top drive, but not connected to any part of, or surface supported by, the top drive itself.” (Doc. No. 176, at 14.) In doing so, the Court noted that the parties did not dispute...