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National Oilwell DHT, L.P. v. Amega West Services, LLC

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

April 24, 2019




         This patent case is before the Court for construction of the disputed claim terms in United States Patents No. 6, 279, 670 ("the '670 Patent"), No. 6, 431, 294 ("the '294 Patent"), and No. 6, 508, 317 ("the '317 Patent") (collectively, the "Patents-in-Suit"). The '670 Patent issued August 28, 2001. The '294 Patent, which is not in the '670 Patent family, issued the following year, August 13, 2002. The application for the '317 Patent was filed August 20, 2001, and the patent issued January 21, 2003. The '317 Patent is a divisional of, and shares a common specification with, the '670 Patent. Plaintiff National Oilwell DHT ("NOV") alleges that Defendant Amega West Services, LLC ("Amega West") is infringing the Patents-in-Suit by its Amega VIBE product.

         The Court conducted a hearing pursuant to Markman v. Westview Instruments, Inc., 17 U.S. 370');">517 U.S. 370 (1996) ("Markman hearing"), on March 5, 2019, and the parties provided supplemental briefing and oral argument thereafter. Based on the evidence before the Court, the arguments presented by counsel orally and in writing, and the governing legal authorities, the Court issues this Memorandum and Order construing those disputed claim terms that require construction.[1" name="FN1" id= "FN1">1]

         I. BACKGROUND

         The Patents-in-Suit are directed to vibration tools for use in drilling operations. Vibration tools are used to create vibratory forces "to reduce friction as a drill string is moved within a bore and/or vary the downward force exerted on a drill bit (sometimes called the 'weight on bit') to vary the depth of cut provided by the drill bit." Plaintiffs Written Tutorial [Doc. # 1');">41], 1');">p. 1.

         The Patents-in-Suit disclose vibration tools[2] that use "a drive system that includes a positive displacement motor (sometimes referred to as a 'PDM') to drive a specially constructed valve assembly that is tailored for use with a PDM." Id. at 4. As the PDM rotates, it rotates and moves side to side. See Id. "[B]ecause the speed of a PDM is proportional to the rate of flow of fluid through the PDM, the frequency of the vibrations produced by the tool of the [Patents-in-Suit] can be controlled by varying the rate of fluid flow through the tool." Id. at 5.

         The Patents-in-Suit describe a PDM rotor coupled to a movable valve plate, which interacts with a stationary plate. Id. at 6. Each plate defines (i.e., contains) an opening through which fluid can pass. See Id. As the PDM rotor moves the movable plate relative to the stationary plate, the overlap between the openings of the two plates will vary the flow of fluid through the valve. See Id. The variations in fluid flow through the overlapping openings of the valve produce varying drilling fluid pressures that can be used to create desired vibrations. See id.

         An additional feature of the Patents-in-Suit is that the vibration tools "include a PDM and valve assembly that can optionally be used with a separate pressure responsive device that expands and/or retracts in response to the varying fluid pressure created by the varying fluid flow to cause a mass to move and produce a percussive effect." See Id. at 7. The PDM causes the movable valve plate to rotate relative to the stationary plate, varying the fluid flow through the valve. See Id. at 8. This variation in fluid flow creates varying fluid pressures on a separately provided movable mass causing the mass to move. See id.; see also '294 Patent, Abstract.

         NOV filed its Opening Claim Construction Brief ("Opening Brief) [Doc. # 44], Amega filed its Responsive Claim Construction Brief ("Response Brief) [Doc. # 47], and NOV filed its Reply Claim Construction Brief ("Reply Brief) [Doc. # 48]. The Court conducted a Markman hearing at which the parties presented evidence and argument regarding the proper construction of these terms. The Court found the parties' presentations, particularly their answers to the Court's questions, to be helpful. Thereafter, the parties submitted supplemental briefing on March 11, 2019. On April 16, 2019, counsel appeared before the Court and presented supplemental oral argument on the disputed "means-plus-function" claim term. On April 18, 2019, the parties submitted their agreement on the proper construction of part of the "means-plus-function" claim term. Based on the parties' agreements, the claim construction briefing, the full factual record, and the parties' presentations and arguments at the Markman hearings, the Court construes the disputed claim terms as follows.


         "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." AventisPharm., Inc. v. Amino Chems. Ltd., 15 F.3d 1363');">715 F.3d 1363, 1373 (Fed. Cir. 2013) (quotmgPhillipsv.AWH Corp., 1');">415 F.3d 1303');">1');">415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). The patent claims in issue must be construed as a matter of law to determine their scope and meaning. See, e.g., Markman v. WestviewInstruments, Inc., 17 U.S. 370');">517 U.S. 370, 390 (1996), aff'g, 52 F.3d 967, 976 (Fed. Cir.) (en banc); Verizon Servs. Corp. v. Vonage Holdings Corp., 1295');">503 F.3d 1295, 1317 (Fed. Cir. 2007).

         "There is a heavy presumption that claim terms are to be given their ordinary and customary meaning." Aventis, 715 F.3d at 1373 (citing Phillips, 1');">415 F.3d at 1312-13; Vitronics Corp. v. Conceptronic, Inc., 90F.3d 1576, 1582 (Fed. Cir. 1996)). Therefore, Courts must "look to the words of the claims themselves ... to define the scope of the patented invention." Id. (citations omitted); see also Summit 6, LLC v. Samsung Elec. Co., Ltd., 1283');">802 F.3d 1283, 1290 (Fed. Cir. 2015). The "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." Phillips, 1');">415 F.3d at 1313; see also ICU Med, Inc. v. Alaris Med. Sys., Inc., 1368');">558 F.3d 1368, 1374 (Fed. Cir. 2009). This "person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 1');">415F.3');">1');">415F.3datl313; ICU, 558 F.3d at 1374.

         Intrinsic evidence is the primary resource for claim construction. See Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips, 1');">415 F.3d at 1312). For certain claim terms, "the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 1');">415 F.3d at 1314. For other claim terms, however, the meaning of the claim language may be less apparent. To construe those terms, the Court considers "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean . . . [including] the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id.

         The claims "provide substantial guidance as to the meaning of particular claim terms." Id. The Court may consider the context in which the terms are used and the differences among the claims. See Id. "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. Because the claims "are part of a fully integrated written instrument," the Court may also consider the specification and the patent's prosecution history. Id. at 1315, 1317. When the claims use separate terms, "each term is presumed to have a distinct meaning." Primos, Inc. v. Hunter's Specialties, Inc., 1 F.3d 81');">41');">451 F.3d 81');">41, 847 (Fed. Cir. 2006).

         The parties agree that one of the disputed claim terms is a "means-plus-function" term subject to special standards for claim construction. Those legal standards will be discussed in the section addressing the "means-plus-function" claim term at issue.


         A. Vary the Open Area of Said Port Between a Minimum Open Area and a Maximum Open Area

         Claims 11 and 13 of the '670 Patent are apparatus claims that include the claim term "vary the open area of said port between a maximum open area and a minimum open area."[3] The parties agree that the claim term should be construed to mean "vary the alignment of the openings of the valve members between first and second states of alignment where one state of alignment is greater than the other." The parties dispute whether the claim term's construction should also require that "the openings of the valve members are always at least partially aligned."

         The clear language of the claim term requires that the variance be between a maximum open area and a minimum open area. A "minimum open area" is an area that is minimally open, not closed. Therefore, the Court construes that claim term "vary the open area of said port between" a maximum open port and a minimum open port to mean to "vary the alignment of the openings of the valve members between the first and second states of alignment where one state of alignment is greater than the other and the openings of the valve members are always at least partially aligned such that the area is at least minimally open, not closed."

         The Court's construction is supported by the prosecution history of the '670 Patent, during which the patentee distinguished the pending claims from prior art, specifically U.S. Patent No. 2, 780, 438 ("Bielstein"). In response to the Patent Examiner's rejection of then-pending claim 14 of the '670 Patent, the patentee stated that Bielstein's passageways were different because they "alternatively closed and opened," while claim 14 recites a "minimum open area." See Response, Evidentiary Appendix ("Appendix") [Doc. # 44-1], p. 218 (emphasis in original). The Examiner persisted in the rejection of the claim, and Plaintiff cancelled claim 14. The patentee did not, however, retract its position regarding Bielstein. Indeed, the patentee later, in a new application, again expressed its disagreement with the prior rejection of claim 14. See Second Preliminary Amendment (Remarks), Appendix p. 332. Arguments during patent prosecution that "draw distinctions between the patented invention and the prior art... indicate in the inventor's own words what the invention is not." MBO Labs, Inc. ...

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