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GeoDynamics, Inc. v. Dynaenergetics US, Inc.

United States District Court, E.D. Texas, Marshall Division

May 8, 2018

GEODYNAMICS, INC., Plaintiff,
v.
DYNAENERGETICS US, INC., Defendant.

          MEMORANDUM OPINION AND ORDER ON CLAIM CONSTRUCTION

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE.

         On April 2, 2018, the Court held a hearing to determine the proper construction of the disputed claim terms in United States Patent No. 8, 220, 394 (“the '394 Patent”). The Court has considered the arguments made by the parties at the hearing and in their claim construction briefs. Dkt. Nos. 54, 60, 64, & 67.[1] The Court has also considered the intrinsic evidence and made subsidiary factual findings about the extrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015). The Court issues this Memorandum and Order on Claim Construction in light of these considerations.

         TABLE OF CONTENTS

         I. BACKGROUND ................................................................................................................ 3

         II. APPLICABLE LAW .......................................................................................................... 4

         I. LEVEL OF ORDINARY SKILL IN THE ART ................................................................ 8

         II. CONSTRUCTION OF AGREED TERMS ........................................................................ 9

         III. CONSTRUCTION OF DISPUTED TERMS ..................................................................... 9

A. “a green compacted particulate” .................................................................. 10
B. “intermetallic alloying reaction” .................................................................. 13
C. “at least two metal elements are provided in respective proportions calculated to give an electron concentration of 1.5” ........................................... 15
D. “the two metal elements are provided in respective proportions calculated to give an electron concentration of 1.5, thereby forming intermetallic compound NiAl” ................................................................................................................... 35
E. “at least one further inert metal, wherein the at least one further inert metal is not capable of an exothermic reaction with the at least two metal elements upon activation of the shaped charge liner” and “at least one further inert metal is not capable of an exothermic reaction with the two metal elements upon activation of the shaped charge line” .................................................................. 40

         IV. CONCLUSION ................................................................................................................. 47

         I. BACKGROUND

         The '394 Patent is titled “Oil Well Perforators.” The PCT application was filed on October 8, 2004, entered the national stage on April 7, 2006, and the '394 Patent issued on July 17, 2012. The '394 Patent is generally directed to “a reactive shaped charge liner for a perforator for use in perforating and fracturing well completions.” '394 Patent at 1:5-7. Figure 1 illustrates a cross section view of a shaped charge device. Id. at 7:7-8

         (Image Omitted.)

         The specification states that liner 6 fits closely in the open end 8 of the cylindrical housing 2. Id. at 7:14-15. The specification adds that “[h]igh explosive material 3 is located within the volume enclosed between the housing and the liner.” Id. at 7:15-16. The specification further states that “[t]he high explosive material 3 is initiated at the closed end of the device, proximate to the apex 7 of the liner, typically by a detonator or detonation transfer cord which is located in recess 4.” Id. at 7:16-20.

         Regarding the liner 6, the specification states that it “comprises a composition capable of an exothermic reaction upon activation of the shaped charge liner.” Id. at 2:58-60. The specification further states that “[i]n order to achieve this exothermic output the liner composition preferably comprises at least two components which, when supplied with sufficient energy (i.e. an amount of energy in excess of the activation energy of the exothermic reaction) will react to produce a large amount of energy typically in the form of heat.” Id. at 2:61-66. The specification further clarifies that “typically the reaction will involve only two metals, however intermetallic reactions involving more than two metals are known.” Id. at 3:3-5. The specification continues that “[t]he liners give particularly effective results when the two metals are provided in respective proportions calculated to give an electron concentration of 1.5, that is a ratio of 3 valency electrons to 2 atoms such as NiAl or PdAl.” Id. at 3:52-56

         Claim 1 of the '394 Patent is an exemplary claim and recites the following elements (disputed term in italics):

1. A reactive, oil and gas well shaped charge perforator comprising a liner and an associated shaped charge, whereby the liner is a green compacted particulate composition formed from a powder mixture comprising at least two metal elements, and whereby the liner is reactive such that the at least two metal elements will undergo an intermetallic alloying reaction to give an exothermic reaction upon activation of the associated shaped charge, and in which the at least two metal elements are provided in respective proportions calculated to give an electron concentration of 1.5, and wherein the composition further comprises at least one further inert metal, wherein the at least one further inert metal is not capable of an exothermic reaction with the at least two metal elements upon activation of the shaped charge liner.

         II. APPLICABLE LAW

         A. Claim Construction

         “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. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. The general rule-subject to certain specific exceptions discussed infra-is that each claim term is construed according to its ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant community at the relevant time.”) (vacated on other grounds).

         “The claim construction inquiry. . . begins and ends in all cases with the actual words of the claim.” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n all aspects of claim construction, ‘the name of the game is the claim.'” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)). First, a term's context in the asserted claim can be instructive. Phillips, 415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim's meaning, because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314-15.

         “[C]laims ‘must be read in view of the specification, of which they are a part.'” Id. (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)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[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)); see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the specification-even if it is the only embodiment-into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

         The prosecution history is another tool to supply the proper context for claim construction because, like the specification, the prosecution history provides evidence of how the U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history may be “unhelpful as an interpretive resource”).

         Although extrinsic evidence can also 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 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are entirely unhelpful to a court. Id. Generally, extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to read claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim construction:

In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871) (a patent may be “so interspersed with technical terms and terms of art that the testimony of scientific witnesses is indispensable to a correct understanding of its meaning”). In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the “evidentiary underpinnings” of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).

         B. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)

         Patent claims must particularly point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is determined from the perspective of one of ordinary skill in the art as of the time the application for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).

         When a term of degree is used in a claim, “the court must determine whether the patent provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is used in a claim, “the court must determine whether the patent's specification supplies some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).

         I. LEVEL OF ORDINARY SKILL IN THE ART

         It is well established that patents are interpreted from the perspective of one of ordinary skill in the art. See Phillips, 415 F.3d at 1313 (“[T]he ordinary and customary meaning of a claim term 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, i.e., as of the effective filing date of the patent application.”). The Federal Circuit has advised that the “[f]actors that may be considered in determining the level of skill in the art include: (1) the educational level of the inventors; (2) the type of problems encountered in the art; (3) prior art solutions to those problems; (4) the rapidity with which innovations are made; (5) sophistication of the technology; and (6) education level of active workers in the field.” Env'tl Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 696 (Fed. Cir. 1983). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).

         Plaintiff's expert, Mr. Larry Behrmann, opined that “a person of ordinary skill in the art during the 2003 timeframe would have had a Bachelor of Science in an engineering or science discipline, and five years of experience working in the oil and gas industry with respect to perforation design and fabrication and well completion activities including perforation.” (Dkt. No. 59-4 at ¶ 9). Defendant's expert, Dr. William Walters, opined that a person of ordinary skill in the art would possess an “advanced” degree and “three to five” years of experience in shaped charge design. (Dkt. No. 59-8 at 32:16-33:5).

         Defendant states that it “largely agrees with [Plaintiff's] proposed level of ordinary skill, and for purposes of this claim construction process will apply that level of skill in construing the claim language.” (Dkt. No. 60 at 12). Having considered the parties' proposals, and the factors that may be considered in determining the level of skill in the art, the Court finds that a person of ordinary skill in the art would have a Bachelor of Science in an engineering or science discipline, and five years of experience working in the oil and gas industry with respect to perforation design and fabrication and well completion activities including perforation.

         II. CONSTRUCTION OF AGREED TERMS

         The parties agreed to the construction of the following phrase:

Claim Term/Phrase

Agreed Construction

“exothermic reaction”

(Claims 1, 28)

“a chemical reaction resulting in the release of heat”

         Dkt. No. 47 at 1. In view of the parties' agreement on the proper construction of the identified terms, the Court ADOPTS the parties' agreed construction.

         III. CONSTRUCTION OF DISPUTED TERMS

         The parties' dispute focuses on the meaning and scope of six terms/phrases in the '394 Patent.

         A. “a green compacted particulate”

Disputed Term

Plaintiff's Proposal

Defendant's Proposal

“a green compacted particulate”

“a pressed powder that has not been further strengthened as by sintering”

Plain and ordinary meaning.

         1. The Parties' Positions

         The parties dispute whether the term “a green compacted particulate” requires construction. Plaintiff argues that the term would likely be unfamiliar to a jury, and that a construction is necessary to avoid confusion. (Dkt. No. 54 at 6). Plaintiff contends that a “green compacted particulate” refers to a liner formed as a pressed powder. Id. at 7. Plaintiff also contends that the file history supports its construction. Id. at 7-8 (citing Dkt. No. 54-3). Plaintiff further argues that its construction is particularly relevant to claim 28's reactive liner comprising nickel and aluminum. Id. at 8 (citing '394 Patent at 4:39-41). According to Plaintiff, it would be “obvious” to a person of skill in the art that exposing a liner comprising nickel and aluminum to thermal energy (e.g., sintering) during the formation process may prematurely cause “an unwanted exothermic reaction.” (Dkt. No. 54 at 8) (citing '394 Patent at 4:41-45).

         Defendant responds that Plaintiff does not dispute that “green compacted particulate” is well-known in the field of shaped charge design, and would be well-understood by a person of ordinary skill in the art. (Dkt. No. 60 at 12-13) (citing Dkt. No. 59-8 at 47:18-48:7; Dkt. No. 59-10 at 39:24-40:3). Defendant argues that a construction is not required because there is no dispute that “green compacted particulate” would be abundantly clear to a person of ordinary skill in the art. (Dkt. No. 60 at 13).

         Plaintiff replies that Defendant's expert agrees that Plaintiff's construction is appropriate. (Dkt. No. 64 at 2) (citing Dkt. No. 64-3 at 48:8-12). Plaintiff argues that in view of the experts' agreement on the meaning of the term, there is no reason for Defendant to oppose a construction that is both accurate and accessible to jurors. (Dkt. No. ...


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