throbber
Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 1 of 15
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF TEXAS
`CORPUS CHRISTI DIVISION
`
`
`
`§§§§§§§§
`
`
`
` CIVIL ACTION NO. 2:12-CV-00099
`
`
`
`§
`
` §
`§
`
`
`MAGNUM OIL TOOLS
`INTERNATIONAL, L.L.C.,
`
` Plaintiff,
`VS.
`
`TONY D. MCCLINTON,
`INDIVIDUALLY AND D/B/A
`“COWBOY TOOLS”, et al,
`
` Defendants.
`
`
`ORDER
`
`
`
`On April 5, 2013, the Court conducted a Markman hearing: a presentation to the
`
`Court on the issue of interpreting the claims of a patent. Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370, 116 S.Ct.
`
`1384 (1996). After considering the materials offered and the arguments of counsel, as
`
`well as the parties’ briefs, the Court issues the following Order construing the claims of
`
`the patents in question.
`
`I. Jurisdiction
`
`This Court has subject-matter jurisdiction over this suit pursuant to 28 U.S.C. §
`
`1331 (federal question) and 28 U.S.C. § 1338(a) (patents).
`
`II. Factual and Procedural Background
`
`Magnum Oil Tools International, L.L.C. (Magnum) sues as the owner of the patent
`
`rights represented by U.S. Patent No. 6,796,376 (the ’376 Patent), entitled “Composite
`
`Bridge Plug System” (D.E. 1-1) and originally issued to Warren L. Frazier on September
`1 / 15
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`

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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 2 of 15
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`28, 2004 as corrected on February 15, 2011 (D.E. 1-2). Magnum also sues as the owner
`
`of the patent rights represented by U.S. Patent No. 8,079,413 (the ‘’413 Patent), entitled
`
`“Bottom Set Downhole Plug” (D.E 1-3) and originally issued to W. Lynn Frazier on
`
`December 20, 2011. The Patents involve a bridge plug tool “for isolating and containing
`
`a well bore with reduced drill up time.” D.E. 1-1; 1-2.
`
`Magnum brought this action against Tony D. McClinton, Jaycar Energy Groups,
`
`L.L.C., Surf Frac Wellhead Equipment Company, Inc., McClinton Energy Group, L.L.C.,
`
`Motor Mills Snubbing, L.L.C., and Stan Keeling (Defendants) alleging, inter alia, that
`
`each has infringed claim four (4) of the ’376 Patent and claims one (1) through twenty
`
`(20) of the ’413 Patent. D.E. 1-4.
`
`III. Discussion
`
`a. Patent Claim Construction
`
`The Court construes the scope and meaning of disputed claim terms as a matter of
`
`law. Markman, 52 F.3d at 979. “[T]he construction of a patent, including terms of art
`
`within its claim, is exclusively within the province of the court.” Markman, 517 U.S. at
`
`372. The courts are to view claim construction as a form of the construction of a written
`
`instrument, in which the definition of claim terms is solely a question of law, over which
`
`judges are uniquely qualified to rule due to specialized training in legal analysis. Id. at
`
`388-90. Claim construction orders are “solely a question of law subject to de novo
`
`review . . . including any allegedly fact-based questions relating to claim construction.”
`
`Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998).
`
`2 / 15
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`MOTI Ex. 2001
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`

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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 3 of 15
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`All claim terms in dispute must be defined as a matter of law by the court, no
`
`matter how common they appear. “A determination that a claim term ‘needs no
`
`construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has
`
`more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does
`
`not resolve the parties’ dispute.” 02 Micro Internat’l Ltd. v. Beyond Innovation
`
`Technology Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). Although “district courts are not
`
`(and should not be) required to construe every limitation present in a patent’s asserted
`
`claims, when the parties present a fundamental dispute regarding the scope of a claim
`
`term, it is the court’s duty to resolve it.” Id. at 1362. A claim construction hearing is
`
`held to determine the definition of all disputed terms.
`
`In construing patent claims, the court looks first to the intrinsic evidence of record,
`
`meaning the patent itself, including the claims, specifications, and the prosecution
`
`history. Such intrinsic evidence is the most significant and reliable source of the legally
`
`operative meaning of disputed claim language. Vitronics Corp. v. Conceptronic, Inc., 90
`
`F.3d 1576, 1582 (Fed. Cir. 1996). “In those cases where the public record
`
`unambiguously describes the scope of the patented invention, reliance on any extrinsic
`
`evidence is improper. The claims, specification, and file history, rather than extrinsic
`
`evidence, constitute the public record of the patentee’s claim, a record on which the
`
`public is entitled to rely.” Id. at 1583.
`
`i. Intrinsic Evidence
`
`Intrinsic evidence includes the words of the patent itself (including the claim
`
`language and specification) and the patent prosecution history where the court interprets
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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 4 of 15
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`the meaning of all terms as the “ordinary and customary” meaning that “would be given
`
`by persons experienced in the field of the invention, unless it is apparent from the patent
`
`and the prosecution history that the inventor used the term with a different meaning.” Id.
`
`at 1582 (quoting Hoechst Celanese Corp. v. BP Chemicals, Ltd., 78 F.3d 1575, 1578
`
`(Fed. Cir. 1996)). The meaning of a claim must also take into consideration the state of
`
`the art, language, and technology as of the patent application’s filing date. PC Connector
`
`Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005). The Federal
`
`Circuit has described the following hierarchy of review of intrinsic evidence:
`
`First, the court considers the words of the claims themselves,
`both asserted and nonasserted, to define the scope of the
`patented invention.
`
`Second, the court reviews the specification to determine
`whether the inventor has used any terms in a manner
`inconsistent with their ordinary meaning. The specification
`acts as a dictionary when it expressly defines terms used in
`the claims or when it defines terms by implication.
`
`Third, the court may also consider the prosecution history of
`the patent, if in evidence.
`
`Vitronics, 90 F.3d at 1582. “Claims must be read in view of the specification, of which
`
`they are a part. The specification contains a written description of the invention that must
`
`enable one of ordinary skill in the art to make and use the invention. For claim
`
`construction purposes, the description may act as a sort of dictionary, which explains the
`
`invention and may define terms used in the claims.” Markman, supra at 979 (citations
`
`omitted).
`
`4 / 15
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`MOTI Ex. 2001
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`

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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 5 of 15
`
`
`
`Like the actual language of the patent, the specification and the prosecution
`
`history are created by the patentee in an attempt to explain and obtain the patent and the
`
`court uses these resources if the disputed term is not defined by the patentee or the
`
`ordinary and customary analysis. However, “because the [patent] prosecution history
`
`represents an ongoing negotiation between the [Patent and Trademark Office] 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.” Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005).
`
`ii. Extrinsic Evidence
`
`A court should look to the extrinsic evidence only in order to clear up some
`
`genuine ambiguity in the claims. Extrinsic evidence “is external to the patent and file
`
`history, such as expert testimony, inventor testimony, dictionaries, and technical treatises
`
`and articles;” “extrinsic evidence in general, and expert testimony in particular, may be
`
`used only to help the court come to the proper understanding of the claims; it may not be
`
`used to vary or contradict the claim language.” Vitronics, 90 F.3d at 1584. Because
`
`“extrinsic evidence can help educate the court regarding the field of the invention and can
`
`help the court determine what a person of ordinary skill in the art would understand claim
`
`terms to mean, it is permissible for the district court in its sound discretion to admit and
`
`use such evidence.” Phillips, 415 F.3d at 1318.
`
`iii. Dictionary or Technical Treatise
`
`Although dictionaries and technical treatises are extrinsic evidence, these
`
`resources can be used to determine the ordinary and customary meaning of a term during
`5 / 15
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`MOTI Ex. 2001
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`

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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 6 of 15
`
`analysis of intrinsic evidence or its context. However, dictionaries and technical treatises
`
`should be used only so long as they do not contradict definitions found in or ascertained
`
`by a reading of the patent documents. Phillips, 415 F.3d at 1318. Such sources should
`
`be viewed as a starting point for an analysis carefully centered around and focused upon
`
`the intrinsic record. Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309,
`
`1316 (Fed. Cir. 2006).
`
`B.
`
`Analysis of Disputed Terms
`
`Pursuant to Rules of Practice for Patent Cases (P.R.) 4-3(a)(1), the parties have
`
`agreed upon the construction of a number of terms in the two patents, respectively, as set
`
`out in Exhibits A and B of their Joint Claim Construction and Prehearing Statement.
`
`D.E. 65, pp. 5-6. The Court ADOPTS the construction of those terms as agreed by the
`
`parties. Those terms and their constructions are set out in tabular form following this
`
`opinion.
`
`The disputed terms are set out in Exhibits C, D, E, and F of the Joint Claim
`
`Construction and Prehearing Statement and in their respective briefs (D.E. 65, pp. 7-19;
`
`70, 72), and will be addressed in turn below and set out in the tabular chart as Exhibit C
`
`following this opinion.
`
`i. The ’376 Patent
`
`With respect to the ’376 Patent, the two disputed terms relate to the anti-rotation
`
`feature on the upwardly facing engaging portion and the head member.
`
`6 / 15
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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 7 of 15
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`a. a mandrel having . . . an upwardly facing engaging
`portion in a set condition of the bridge plug for
`engaging a slot in a superposed bridge plug
`
`Plaintiff claims that this term should be construed as stating: “After the plug is set
`
`in the wellbore, a cylindrical bar, spindle, or shaft that acts as a centralized support
`
`member having an upwardly facing portion that is capable of engaging a slot in a
`
`superposed bridge plug.” D.E. 65, p. 7. The Defendants’ construction is “The upper
`
`portion of the mandrel is shaped to fit within a slot in an upper bridge plug.” D.E. 65, p.
`
`17.
`
`“Mandrel” has already been defined (see Exhibit A hereto), making the
`
`introductory language proposed by Plaintiff (“After the plug is set in the wellbore, a
`
`cylindrical bar, spindle, or shaft that acts as a centralized support member”) unnecessary
`
`and potentially confusing. The crux of this dispute is in the meaning of “for engaging a
`
`slot.” The Defendants’ definition requiring a mandrel “to fit within” is an unnecessarily
`
`narrow reading of this term. Phillips, 415 F.3d at 1323 (“although the specification often
`
`describes very specific embodiments of the invention, we have repeatedly warned against
`
`confining the claims to those embodiments”). The alternate proposal of Plaintiff that the
`
`upper portion of the mandrel “can interlock with or cause to come into frictional driving
`
`contact with a slot in a superposed bridge plug” adds no clarity while potentially
`
`requiring additional extrinsic evidence regarding the terms “interlock” and “frictional
`
`driving contact” that is not required or justified.
`
`The Court agrees with the Defendants’ concern that a construction that the plug “is
`
`capable of engaging a slot” is too broad, as it connotes further modification of the
`
`7 / 15
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`MOTI Ex. 2001
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`

`

`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 8 of 15
`
`invention in order to achieve the functionality discussed. See generally, Aspex Eyewear,
`
`Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012); Typhoon Touch
`
`Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1380-81 (Fed. Cir. 2011). The Court
`
`holds that the first disputed term is construed as “the upper portion of the mandrel
`
`engages a slot in a superposed bridge plug.”
`
`b. a head member . . . having a slot for catchably
`retaining the engaging portion of a subjacent
`bridge plug
`
`Plaintiff asserts that this second disputed term means, “A head member attached to
`
`the lower portion of the mandrel having a slot for holding or receiving an upper portion
`
`of a bridge plug located there below; the upper portion of the underlying bridge plug is
`
`capable of engaging the slot of the head member.” D.E. 65, p. 8. In contrast, Defendants
`
`argue for the following language: “The head member has a slot that is designed to catch
`
`and retain the engaging portion of a lower bridge plug, thereby creating a torque
`
`transmitting connection.” D.E. 65, p. 17.
`
`The Defendants’ reference to a “torque transmitting connection” is unnecessary as
`
`that term is already agreed upon. See Exhibit A, below. The primary focus of this
`
`dispute is on the concept of “catchably retaining,” which Defendants argue needs no
`
`construction as it has a common-sense meaning. D.E. 72, p. 15 (citing Biologische
`
`Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir.
`
`2001)). Plaintiffs, however, argue for a construction involving the term “holding or
`
`receiving.” The Court finds the substitute terms communicate no greater understanding
`
`8 / 15
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`MOTI Ex. 2001
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`

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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 9 of 15
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`than the concept of “retention.” The Court construes this term as “A head member
`
`having a slot that retains the engaging portion of a lower bridge plug.”
`
`ii.
`
`The ’413 Patent
`
`a. first end and second end
`
`Plaintiff proposes that these terms be construed as “at or adjacent to a first
`
`extremity” and “at or adjacent to a second extremity,” suggesting that this construction
`
`requires no specialized knowledge and is consistent with ordinary and customary
`
`meaning. D.E. 65, p. 11; 70, p. 13. Defendants propose the constructions, “upper end”
`
`and “lower end.” D.E. 65, p. 18. Plaintiff complains that “upper” and “lower” lose their
`
`significance in horizontal drilling.
`
`The ’413 Patents’ parent application clarifies that “upper” and “lower” were used
`
`because they are terms to which field hands can relate:
`
`The words upper and lower are somewhat inaccurate because
`they refer to the position of the well tools as if they were in a
`vertical position while many, if not most, of the plugs
`disclosed herein will be used in horizontal wells. The words
`upper and lower are used for purposes of convenience rather
`than the more accurate, but odd to oil field hands, proximal
`and distal.
`
`D.E. 72-4, pp. 3-4. Defendants’ “upper” and “lower” construction is also consistent with
`
`the ’413 Patent specifications:
`
`• “The plug 200 can include a mandrel or body 210 having a first or upper
`
`end 207 and a second or lower end 208.” ’413 Patent at 5:24-26.
`
`• “The terms “up” and “down”; “upward” and “downward”; “upper” and
`
`“lower”;
`
`“upwardly”
`
`and
`
`“downwardly”;
`
`“upstream”
`
`and
`
`9 / 15
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`MOTI Ex. 2001
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`

`

`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 10 of 15
`
`“downstream”; “above” and “below”; and other like terms as used
`
`herein refer to relative positions to one another and are not intended to
`
`denote a particular spatial orientation since the tool and methods of
`
`using same can be equally effective in either horizontal or vertical
`
`wellbore uses.” Id. at 7:57-64.
`
`• A setting tool that is deployed from the surface “enters the body through
`
`the first end thereof.” Id. at 13:64-65.
`
`The Court agrees with the Defendants’ construction, which is consistent with the usages
`
`of the terms in the ’413 Patent and its parent application. “First end” means upper end
`
`and “second end” means lower end.
`
`b. the first and second ends of the body each comprise
`anti-rotation features formed thereon
`
`Plaintiff construes this term to mean “An anti-rotation feature is formed on the
`
`first and second ends of the body.” D.E. 70, p. 12. Defendants offer the following
`
`construction: “The anti-rotation features are formed on the first end of the body and the
`
`second end of the body. This phrase does not include anti-rotation features that are
`
`formed on another component of the plug.” D.E. 65, p. 18. No specialized knowledge is
`
`required to construe this term and Defendants’ proffered construction limits the
`
`placement of the anti-rotation feature contrary to the ’413 Patent’s specification that such
`
`a feature may be placed on other components “positioned about the body” of the plug.
`
`’413 Patent at 6:66-7:5. The Court adopts the Plaintiff’s construction.
`
`10 / 15
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`MOTI Ex. 2001
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`

`

`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 11 of 15
`
`c. “shearable threads” and “the insert comprises one
`or more shearable threads disposed on an inner
`surface thereof”
`
`Plaintiff’s construction of “shearable threads” is “spiral ridges that are designed to
`
`shear, fracture, break, or otherwise deform thereby releasing two or more engaged
`
`components, parts, or things.” D.E. 65, p. 12. Likewise, the longer term is “the inner
`
`surface of the insert has one or more spiral ridges that can be broken, sheared, fractured,
`
`or otherwise deformed.” Id.
`
`Defendants’ construction is that “shearable threads” means “threads that can be
`
`sheared, fractured, broken, or otherwise deformed when exposed to sufficient force.”
`
`D.E. 65, p. 19. The corresponding longer term construction Defendants offer is: “the
`
`insert has one or more spiral ridges that wind around the inner surface of the insert.
`
`These threads can be sheared, fractured, broken, or otherwise deformed when exposed to
`
`sufficient force.” Id.
`
`The disagreement of the parties focuses on the Defendants’ language placing the
`
`spiral ridges as “winding around” and the concept of such threads being sheared “when
`
`exposed to sufficient force.” The former is offered as a common sense “clarification” of
`
`what a spiral ridge does. The court finds such clarification unnecessary.
`
`The latter disagreement involves the nature of the force to be applied in order to
`
`shear the shearable threads. Plaintiff points out that the ’413 Patent provides that the
`
`shearing takes place upon exposure to “a predetermined stress or force, releasing the
`
`component engaged within the body 102.” 4:13-16. See also 3:4-7 (“The term ‘shear’
`
`means to fracture, break, or otherwise deform thereby releasing two or more engaged
`
`11 / 15
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`MOTI Ex. 2001
`
`

`

`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 12 of 15
`
`components, parts, or things or thereby partially or fully separating a single component
`
`into two or more components/pieces”).
`
`That “predetermined stress or force” can be used to release a “component engaged
`
`within the body” and “can be less than a stress and/or force required to fracture or break
`
`the body 102 of the insert 100, 100B” or “to break the plug body 210.” 4:16-20; 9:25-28.
`
`Because the Defendants’ construction fails to accommodate the ’413 Patent’s concept of
`
`a predetermined stress or force (capable of shearing the threads but not destroying other
`
`component parts), it is rejected and the Court adopts the Plaintiff’s construction of both
`
`“shearable thread” terms.
`
`IV. Conclusion
`
`For the reasons stated above, the Court interprets the claim language in the manner
`
`set forth above. For ease of reference, the Court’s adoption of the parties’ agreed claim
`
`terms is set forth in tabular form in Exhibits A and B and the Court’s construction of
`
`disputed terms is set forth in Exhibit C.
`
`ORDERED this 12th day of June, 2013.
`
`
`
`
`
`___________________________________
`NELVA GONZALES RAMOS
`UNITED STATES DISTRICT JUDGE
`
`
`
`12 / 15
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`MOTI Ex. 2001
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`

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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 13 of 15
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`
`
`
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`
`
`
`
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`13 / 15
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`MOTI Ex. 2001
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`

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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 14 of 15
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`
`
`
`
`14 / 15
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`
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`MOTI Ex. 2001
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`

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`Case 2:12-cv-00099 Document 96 Filed in TXSD on 06/12/13 Page 15 of 15
`
`
`
`
`
`Claim
`
`’376 Patent
`Claim 4
`
`’376 Patent
`Claim 4
`
`’413 Patent
`Claims 1-20
`
`’413 Patent
`Claims 1-20
`
`’413 Patent
`Claims 3,12
`
`EXHIBIT C
`
`COURT’S CONSTRUCTION OF CLAIM TERMS,
`PHRASES, OR CLAUSES OF THE ’376 AND ’413 PATENTS
`ON WHICH THE PARTIES DID NOT AGREE
`
`Disputed Language
`a mandrel having . . . an upwardly
`facing engaging portion in a set
`condition of the bridge plug for
`engaging a slot in a superposed
`bridge plug
`
`Court’s Construction
`
`the upper portion of the mandrel
`engages a slot in a superposed bridge
`plug
`
`a head member . . . having a slot for
`catchably retaining the engaging
`portion of a subjacent bridge plug
`
`a head member having a slot that
`retains the engaging portion of a lower
`bridge plug.
`
`first end
`
`second end
`
`upper end
`
`lower end
`
`the first and second ends of the
`body each comprise anti-rotation
`features formed thereon
`
`an anti-rotation feature is formed on
`the first and second ends of the body
`
`spiral ridges that are designed to shear,
`fracture, break, or otherwise deform
`thereby releasing two or more engaged
`components, parts, or things
`
`the inner surface of the insert has one
`or more spiral ridges that can be
`broken, sheared, fractured, or
`otherwise deformed
`
`’413 Patent
`Claims 1, 7, 17
`
`shearable threads
`
`’413 Patent
`Claims 1, 7, 17
`
`the insert comprises one or more
`shearable threads disposed on an
`inner surface thereof
`
`
`
`15 / 15
`
`MOTI Ex. 2001
`
`

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