Case 2:12—cv—00099 Document 249 Filed in TXSD on 06/02/14 Page 1 of 11
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF TEXAS
`
`CORPUS CHRISTI DIVISION
`
`§
`
`§ §
`
`§
`§ CIVIL ACTION NO. 2: l2-CV—99
`§
`
`§ §
`
`§
`
`ORDER
`
`MAGNUM OIL TOOLS
`INTERNATIONAL, L.L.C.,
`
`Plaintiff,
`
`VS.
`
`TONY D. MCCLINTON, et al,
`
`Defendants.
`
`On May 3, 2014, 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), afl’d, 517 US. 370 (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 US. Patent No. 8,459,346 (the ’346 Patent), entitled “Bottom Set
`
`Downhole Plug” (D.E. 233-2) and originally issued to W. Lynn Frazier on June 1 l, 2013,
`
`and assigned to Magnum. The patent involves a plug for isolating a wellbore. DE. 233-
`1 / 9
`
`MEGCO Ex. 1004
`
`
`
`MEGCO Ex. 1004
`
`

`

`
`
`Case 2:12-cv—00099 Document 249 Filed in TXSD on 06/02/14 Page 2 of 11
`
`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 all 38 claims of the ”346 Patent. D.E. 233—2.
`
`111. Discussion
`
`A. Patent Claim Construction Standards
`
`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).
`
`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
`2 / 9
`
`MEGCO Ex. 1004
`
`MEGCO Ex. 1004
`
`

`

`
`
`Case 2:12—cv-00099 Document 249 Filed in TXSD on 06/02/14 Page 3 of 11
`
`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. Vitrom'cs Corp. v. Conceptrom'c, 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.
`
`1. 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
`
`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
`
`3/9
`
`MEGCO Ex. 1004
`
`MEGCO Ex. 1004
`
`

`

`
`
`Case 2:12—cv-00099 Document 249 Filed in TXSD on 06/02/14 Page 4 of 11
`
`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.
`
`the court reviews the specification to determine
`Second,
`the inventor has used any terms
`in a manner
`whether
`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).
`
`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
`
`4/9
`
`MEGCO Ex. 1004
`
`MEGCO Ex. 1004
`
`

`

`Case 2:12—cv—00099 Document 249 Filed in TXSD on 06/02/14 Page 5 of 11
`
`specification and thus is less useful for claim construction purposes,” Phillips v. AWH
`
`Corp, 415 F.3d 1303, 1317 (Fed. Cir. 2005).
`
`2. 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.
`
`3. 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
`
`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).
`
`5 / 9
`
`MEGCO Ex. 1004
`
` 1
`
`MEGCO Ex. 1004
`
`

`

`
`
`Case 2:12-cv-00099 Document 249 Filed in TXSD on 06/02/14 Page 6 of 11
`
`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 seventeen (l7) terms in the patent, as set out in Plaintiffs
`
`Opening Claim Construction Brief (DE. 233, pp. 7-8) and as amended by prehearing
`
`submission. 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 as
`
`Exhibit A.
`
`There were originally four disputed terms at the outset of the May 30, 2014
`
`hearing.
`
`In the course of the hearing, Defendant withdrew its opposition to Plaintiff’s
`
`proposed construction of the term “setting tool,” which the Court accepts to be construed
`
`as follows:
`
`
`
`
`
`
` Any device used in the installation process of the
`
`
`plug within the wellbore, and includes any outer
`
`cylinder, adapter rod, and/or extender.
`
`
`msetting tool...
`
`The three remaining disputed terms are: “mandrel;” the anti-rotation feature claim; and
`
`“shoe.” Each will be addressed in turn below.
`
`1. Mandrel
`
`The Court previously accepted the parties’ agreed construction of the term
`
`“mandrel” in connection with the parties’ dispute over US. Patent No. 6,796,376 as, “a
`
`cylindrical bar, spindle, or shaft that acts as a centralized support member, around which
`
`outer components are positioned about or attached thereto.” DE. 96, p. 13. Magnum
`
`advances the same construction here. Defendants, arguing that
`6/ 9
`
`the prior agreed
`
`MEGCO Ex. 1004
`
`MEGCO Ex. 1004
`
`

`

`
`
`Case 2:12—cv—00099 Document 249 Filed in TXSD on 06/02/14 Page 7 of 11
`
`construction has led to unintended consequences would delete the following language: “a
`
`cylindrical bar, spindle, or shaft that acts as a” so that they may argue that a mandrel’s
`
`cross-section need not be circular.
`
`The Court may revisit and alter its claim construction as the case and the Court’s
`
`understanding of the technology evolve. Conoco, Inc. v. Energy & Environmental
`
`International, L. C., 460 F.3d 1349, 1359 (Fed. Cir. 2006). Defendants ask this Court to
`
`do so with respect to the construction of “mandrel” in both Patents ’376 and ’346,
`
`arguing that if Magnum required the mandrel to be cylindrical and have a circular cross-
`
`section, the patents could have expressly stated that limitation. Magnum points out that a
`
`cylindrical mandrel is depicted in Figures 2A-2C and 3A-3D of Patent ’346.
`
`In addition,
`
`the Court’s prior construction is consistent with industry dictionaries.
`
`The Court declines to alter its prior claim construction and also construes the term
`
`“mandrel” with respect to Patent ’346 as “a cylindrical bar, spindle, or shaft that acts as a
`
`centralized support member, around which outer components are positioned about or
`
`attached thereto.”
`
`2. Anti-Rotation Feature
`
`Claims 8 and 25 refer to the anti-rotation feature as follows:
`
`least one anti—rotation
`. further comprising at
`.
`The plug .
`feature located proximate the first end of the body, and at
`least one anti—rotation feature located proximate the second
`end of the body, wherein the anti—rotation features proximate
`the first and second ends of the body are complementary and
`adapted to engage each other, preventing relative rotation
`therebetween.
`
`7/9
`
`MEGCO Ex. 1004
`
`MEGCO Ex. 1004
`
`

`

`
`
`Case 2:12—cv—00099 Document 249 Filed in TXSD on 06/02/14 Page 8 of 11
`
`Defendants argue that this claim cannot be construed because it is indefinite.
`
`It requires
`
`an impossible action because the feature on the first end of the body cannot engage the
`
`feature on the second end of the body of the same plug.
`
`Defendants rely on the decision in Frazier v. Wireline Solutions, LLC, 725
`
`F.Supp.2d 588 (SD. Tex. 2010) as invalidating a similar claim for a similar reason.
`
`However, the issue in Wireline Solutions was not that the two ends of the same plug
`
`could not engage each other but that, when lined up in a wellbore, the lower end of the
`
`lower plug could not engage the upper end of a plug above it.
`
`In particular, the opinion
`
`addressed the use of the term “superposed” rather than “subjacent,” with respect to two
`
`plugs in the same wellbore. There was no question that two separate plugs were involved
`
`and that the anti-rotation feature applied as between those two plugs.
`
`Magnum offers the following construction: “The anti-rotation feature proximate
`
`the first end of a plug is configured to engage the anti-rotation feature on the second end
`
`of another plug, preventing relative rotation between the two plugs.” This construction is
`
`consistent with the specifications that clearly describe the use of the anti-rotation feature
`
`as preventing relative rotation between two plugs.
`
`’346 Patent, 7:20-28, 10:50-55,
`
`Figures 5, 6, 7, 8. The Court adopts Magnum’s construction.
`
`3. Shoe
`
`The parties” disagreement over the construction of “shoe” addresses whether or
`
`not the shoe is a component separate from the body or mandrel.
`
`In Claim 32, the first
`
`reference to a shoe notes that it is “at least partially disposed about the second end of the
`
`8/9
`
`MEGCO Ex. 1004
`
`MEGCO Ex. 1004
`
`

`

`
`
`Case 2:12-CV—00099 Document 249 Filed in TXSD on 06/02/14 Page 9 of 11
`
`body.” ’346 Patent 16:10-11.
`
`In the specifications, there are two references to the shoe
`
`that, in context, connote a separate component:
`
`0 “[E]ach anti-rotation feature 270 can be screwed onto or otherwise
`
`connected to or positioned about a shoe, nose, cap, or other
`
`separate component, which is made of composite, that is screwed
`
`onto threads, or otherwise connected to or positioned about the
`
`body. .
`
`. .” ’346 Patent 727-14.
`
`0 “Any of the aforementioned components of the plug 200, including
`
`the body, rings, cones, elements, shoe, antivrotation features, etc. .
`. .” ’346 Patent 12:35-37.
`
`.
`
`Each drawing representing the anti-rotational feature on the shoe shows it as a separate
`
`component.
`
`’346 Patent Figures 2A—2C, 3A-3D. Furthermore,
`
`the use of the term
`
`“disposed about the second end of the body” indicates a separate component that is to be
`
`attached, like other components, at particular locations relative to the body rather than
`
`being a permanently integrated feature of the body.
`
`The Court adopts Magnum’s construction of “shoe:” A component, separate from
`
`the body, that is attached to the body at the second end.
`
`CONCLUSION
`
`For the reasons stated above, the Court adopts Magnum’s construction of each of
`
`the disputed claims as set out in Exhibit B.
`
`ORDERED this 2nd day of June, 2014.
`
`9/9
`
`NE A GONZAL
`
`RAMOS
`
`UNITED STATES DISTRICT JUDGE
`
`MEGCO Ex. 1004
`
`MEGCO Ex. 1004
`
`

`

`
`
`Case 2:12—cv—00099 Document 249 Filed in TXSD on 06/02/14 Page 10 of 11
`
`EXHIBIT A
`
`No.
`
`Claim Term
`
`Agreed Claim Construction
`
`A centralized support member, made of one or more
`1
`...boay..
`components or parts, for one or more outer
`
`components to be disposed thereon or thereabout.
`
`
`2
`i
`...first end...
`Upper end.
`3
`...second end...
`i Lower end.
`
`An element capable of being extended or shaped.
`.
`
`Surrounding the body.
`
`4
`—-—-r-——
`5
`
`...malleable element...
`
`...disposed about the body...
`
`
`
`”a" men a! {easrbizgmuy dUPOSEdm me
`...the insert is adapted to receive an
`impediment that restricts fluidflow in at least
`one direction through the insert...
`
`At least part ofthe insert is located inside the body.
`The insert receives an impediment that obstructs
`fluid flow in at least one direction through the
`insert.
`
`the body is adapted to receive an
`The body receives an impediment that obstructs
`impediment that restricts fluidflow in at least
`fluid flow in at least one direction through the body.
`one direction through the body...
`
`...the anti—rotation feature proximate the
`second end ofthe body is formed on a
`separate component disposed on the body...
`
`The anti-rotation feature at the second end of the
`
`body is formed on a separate component that is
`located on the body.
`
`the body is adapted to receive a ball that
`The body receives a ball that obstructs fluid flow in
`restrictsfluidflow in at least one direction
`at least one direction through the body.
`through the boay...
`
`
`the insert has a bore only partially formed
`therethrough so that there is no fluidflow
`through the bore...
`
`The insert has a bore that does not extend all the
`
`way through the insert, so that no fluid can flow
`through the bore.
`
`6
`
`7
`
`8
`
`9
`
`10
`
`ll
`
`
`
`
`through the bore...
`
`The insert has a blocked passageway that obstructs
`the insert has a blocked passageway that
`fluid flow in the direction between the first and
`restricts fluidflow in opposing axial
`direc‘la'lsm
`second ends of the plug.
`
`
`12
`
`The insert has a bore that extends all the wa
`thro
`...the insert has aboreformedtherethrough
`h the .n en to now b'a . ifl w thr y h th
`to allow biaxialflow through the insert...
`.
`“g
`l S
`a
`I ma
`0
`(mg
`insert.
`
`
`6
`
`,..the insert comprises an impediment that
`restrictsfluidflow in at least one direction
`
`The insert comprises an impediment that obstructs
`fluid flow in at least one direction through the
`insert.
`
`‘ Sub'ect to decom osin ,de radin ,de eneratin ,
`J
`P
`g
`g
`g
`g
`g
`the impediment is degradable at a
`or otherwise falling apart at predetermined
`.
`.
`.
`.
`.
`edete mined tem erature,
`essure, H, or
`conditions that are likely to exrst m a wellbore
`r acombihpation their/0f
`p
`pr
`15
`environment.
`
`
`
`
`...the insert adapted to receive a setting tool... The insert receives a setting tool.
`
`...shearable threads...
`
`Spiral ridges that are designed to shear, fracture,
`break, or otherwise deform thereby releasing two or
`more engaged components, parts, or things.
`
`MEGCO Ex. 1004
`
`13
`
`l4
`
`l6
`
`17
`
`l
`
`
`
`MEGCO Ex. 1004
`
`

`

`
`
`18
`
`l9
`
`20
`
`
`
`[5’ 30
`
`8, 25
`
`.
`
`"
`
`Case 2:12-cv-00099 Document 249 Filed in TXSD on 06/02/14 Page 11 of 11
`
`No. Claims
`
`Claim Term
`
`Claim Construction
`
`EXHIBIT B
`
`1-38
`
`...setting tool...
`
`Any device used in the installation process of the
`plug within the wellbore, and includes any outer
`cylinder, adapter rod, and/or extender.
`
`
`
`
`
`A cylindrical bar, spindle, or shafi that acts as a
`centralized support member around which outer
`.
`.
`’
`a’
`components are posntioned about or attached
`man re
`thereto.
`
`
`l...
`
`Whefei" the an’i‘m’miMfeatures
`Prox'ma‘e ’hefim and second ends
`of’he body are comPlemema’y and
`adapted to engage each other,
`preventing relative rotation
`therebetween.
`
`The anti-rotation feature proximate the first end of
`a plug is configured to engage the anti-rotation
`feature on the second end of another plug,
`preventing relative rotation between the tw0
`Phlgs-
`
`A component, separate from the body, that is
`attached to the body at the second end.
`
`MEGCO Ex. 1004
`
`MEGCO Ex. 1004
`
`