United States District Court, S.D. Texas, Houston Division
MEMORANDUM OPINION AND ORDER
H. Miller United States District Judge
before the court is a report and recommendation
(“R&R”) on claim construction from Special
Master Karl Bayer. Dkt. 79. Plaintiff Baker Hughes Oilfield
Operations LLC (“Baker Hughes”) objected to one
construction. Dkt. 84. Defendant Smith International, Inc.
(“Smith”) objected to two constructions. Dkt. 85.
Having considered the R&R, objections, briefing, relevant
documents in the record, and applicable law, the court is of
the opinion that the R&R should be ADOPTED IN FULL.
1, 2016, Baker Hughes sued Smith for infringement of U.S.
Patent Nos. 8, 020, 635 (“‘635 Patent”), 8,
215, 418 (“‘418 Patent”), and 8, 881, 833
(“‘833 Patent”). Dkt. 1. Smith
counterclaimed, seeking a declaration and judgment that: (1)
the patents-in-suit are not infringed by Smith; and (2) the
patents-in-suit are invalid. Dkt. 12. The technology at issue
involves “reamers, ” which are expandable
downhole tools used in the drilling of oil and gas wells to
enlarge the borehole's diameter beyond the originally
drilled size. Dkt. 39.
parties now seek to construe terms from each patent-in-suit.
The court appointed Special Master Bayer for the purpose of
claim construction. Dkt. 56. Special Master Bayer presided
over the Markman hearing on November 7, 2017. Dkt.
59. Both parties submitted pre-Markman and
post-Markman briefs. Dkts. 38-40, 66-69. In his
R&R, the Special Master construed fourteen terms/phrases
and provided the qualifications of a person of ordinary skill
in the art (“POSITA”). Dkt. 79. Both parties now
object to portions of the R&R. Dkts. 84, 85.
to the order appointing a special master (Dkt. 56), the
parties were required to submit objections to the R&R
within fourteen days of the date Special Master Bayer
submitted the R&R to the court. The court decides de novo
all objections to findings of fact or conclusions of law made
or recommended by the Special Master. Fed.R.Civ.P. 53(f);
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. See
Id. at 1313. The intrinsic evidence includes the claims
themselves, the specification, and the prosecution history.
See Id. at 1314. Courts give claim terms their
“ordinary and customary meaning” as understood by
one of ordinary skill in the art at the time of the invention
in the context of the entire patent. Id. at 1312-13.
claims themselves provide substantial guidance in determining
the meaning of particular claim terms. Id. at 1314.
First, a term's context in the asserted claim can be very
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. 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.” Id. (citations omitted).
Differences among the claim terms can also assist in
understanding a term's meaning. Id. “For
example, the presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the
limitation in question is not present in the independent
claim.” Id. at 1314-15.
‘must be read in view of the specification, of which
they are a part.'” Id. at 1315 (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)). This is true
because a patentee may define his own terms, give a claim
term a different meaning than the term would otherwise
possess, or disclaim or disavow the claim scope. Id.
at 1316. In these situations, the inventor's lexicography
governs. Id. The specification may also resolve
ambiguous claim terms “where the ordinary and
accustomed meaning of the words used in the claims lack
sufficient clarity 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). “Although 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)). The prosecution history is
another tool to supply the proper context for claim
construction because a patent applicant may also define a
term in prosecuting the patent. Home Diagnostics, Inc.,
v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004)
(“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent.”).
extrinsic evidence can 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 (citations omitted).
Technical dictionaries and treatises may help explain the
underlying technology and the manner in which one skilled in
the art might use claim terms. Id. at 1318. However,
they may also provide definitions that are too broad or may
not be indicative of how the term is used in the patent.
Id. Similarly, expert testimony may aid in
explaining the underlying technology and determining the
particular meaning of a term in the pertinent field.
Id. But an expert's conclusory, unsupported
assertions as to a term's definition are unhelpful.
Id. Generally, extrinsic evidence is “less
reliable than the patent and its prosecution history in
determining how to read claim terms.” Id.
the parties objected to three terms: (1) “actuation
member”; (2) “substantially
identical”/“substantially the same”; and
(3) “increasing a flow rate of drilling fluid through
the expandable reamer to cause at least one blade of the
expandable reamer to move from a retracted position to an
expanded position.” ...