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Baker Hughes Oilfield Operations, LLC v. Smith International, Inc.

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

May 21, 2018

Baker Hughes Oilfield Operations LLC, Plaintiff,
Smith International, Inc., Defendant.


          Gray H. Miller United States District Judge

         Pending 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.

         I. Background

         On July 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.

         The 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.

         II. Legal Standard

         A. Special Master

         Pursuant 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); Dkt. 56.

         B. 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. 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.

         The 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.

         “[C]laims ‘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.”).

         Although 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.

         III. Analysis

         Collectively, 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.” ...

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