throbber
Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 1 of 12
`United States District Court
`Southern District of Texas
`ENTERED
`July 12, 2016
`David J. Bradley, Clerk
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`ONESUBSEA IP UK LIMITED, et al., §
`Plaintiffs,
`
`CIVIL ACTION NO. 4-16-0051
`
`§§
`
`§
`§
`§
`§
`
`v.
`
`FMC TECHNOLOGIES, INC.,
`Defendant.
`
`MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
`
`This patent case is before the Court for construction of the disputed claim terms
`
`in United States Patents No. 6,637,514 (“the ’514 Patent”), 7,111,687 (“the ’687
`
`Patent”), 8,066,076 (“the ’076 Patent”), 8,122,948 (“the ’948 Patent”), 8,272,435
`
`(“the ’435 Patent”), 8,281,864 (“the ’864 Patent”), 8,540,018 (“the ’018 Patent”),
`
`8,573,306 (“the ’306 Patent”), 8,746,332 (“the ’332 Patent”), and 8,776,893 (“the
`
`’893 Patent”) (collectively, the “Patents-in-Suit”). The parties agree that construction
`
`of the disputed claim terms will apply consistently to all Patents-in-Suit.
`
`The Court conducted a hearing pursuant to Markman v. Westview Instruments,
`
`Inc., 517 U.S. 370, 390 (1996) (“Markman hearing”), on June 23, 2016. Based on the
`
`evidence before the Court, the arguments presented by counsel, and the governing
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`OSS Exhibit 2012, pg. 1
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 2 of 12
`
`legal authorities, the Court issues this Memorandum and Order construing those
`
`disputed claim terms that require construction.1
`
`I.
`
`BACKGROUND
`
`Plaintiff OneSubsea IP UK Limited (“OneSubsea”) is the owner by assignment
`
`of the Patents-in-Suit, and Plaintiff OneSubea UK Limited is an exclusive licensee.
`
`The Patents-in-Suit relate to the recovery of production fluids from an oil or gas well,
`
`particularly through a connection system for subsea flow interface equipment.
`
`Subsea “Christmas trees” have long been used in the oil and gas industry to
`
`control the flow of oil and gas coming from a well. The Christmas trees typically
`
`contain “fluid flow passages” or “bores.” The production bore communicates with the
`
`pipe from which the oil and gas flows. The annulus bore, on the other hand, is
`
`generally used for troubleshooting, well servicing, and well conversion operations
`
`rather than for the actual oil and gas production. A branch bore extends from the
`
`production bore to allow fluids to flow to a connected production flowline connected
`
`to a branch outlet. The rate of flow can be controlled through the use of a choke,
`
`either fixed or adjustable.
`
`1
`
`The Patent Trial and Appeal Board (“PTAB”) recently instituted inter partes review
`(“IPR”) of all asserted claims of the ’018 Patent, the ’893 Patent, and the ’435 Patent.
`See Notices to Court Regarding IPR Institution Decisions [Docs. # 135 and # 144].
`Additionally, the PTAB will issue a decision on the petition for IPR of the ’306 Patent
`by October 19, 2016.
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`2
`
`OSS Exhibit 2012, pg. 2
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 3 of 12
`
`In low pressure wells, the pressure of production fluids may need to be
`
`increased. In other circumstances, the production fluids may need to be treated.
`
`Installing a pump to increase pressure or a treatment apparatus in communication with
`
`an active subsea well can be difficult and interrupts production. Ian Donald, the
`
`named inventor for the Patents-in-Suit, invented systems and methods for installing
`
`a subsea pump or treatment apparatus that eliminated these problems.
`
`Defendant FMC Technologies, Inc. (“FMC”) markets products that OneSubsea
`
`asserts infringe the Patents-in-Suit. Specifically, OneSubsea alleges that FMC’s
`
`Enhanced Vertical Deepwater Tree and its Retrievable Choke and Flow Module are
`
`infringing.2
`
`OneSubsea filed its Opening Claim Construction Brief [Doc. # 122], FMC filed
`
`its Response [Doc. # 127], and OneSubsea filed its Reply [Doc. # 131]. Additionally,
`
`the parties filed a Joint Claim Construction Chart [Doc. # 136]. The parties worked
`
`together to narrow their disputed claim terms. Only the following terms remain in
`
`dispute and require construction by the Court: (1) branch, (2) divert and other forms
`
`of the word, (3) “flow diverter means” and “means to divert,” (4) connector, and
`
`(5) hub.
`
`2
`
`In its Counterclaim [Doc. # 24], FMC alleges that OneSubsea’s products infringe
`FMC’s Patent No. 6,715,554 and Patent No. 7,063,157. There are no disputed claim
`terms in either of FMC’s patents that require construction.
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`3
`
`OSS Exhibit 2012, pg. 3
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 4 of 12
`
`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’ oral argument to be extremely helpful and now construes the
`
`disputed claim terms.
`
`II. GENERAL LEGAL STANDARDS FOR 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.” Aventis Pharm., Inc.
`
`v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (quoting Phillips v. AWH
`
`Corp., 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. Westview Instruments, Inc., 517 U.S. 370, 390 (1996), aff’g, 52 F.3d 967,
`
`976 (Fed. Cir.) (en banc); Verizon Servs. Corp. v. Vonage Holdings Corp., 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, 415 F.3d at
`
`1312-13; Vitronics Corp. v. Conceptronic, Inc., 90 F.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., 802 F.3d 1283, 1290 (Fed. Cir. 2015). The “ordinary and
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`4
`
`OSS Exhibit 2012, pg. 4
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 5 of 12
`
`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, 415 F.3d at 1313; see also
`
`ICU Med., Inc. v. Alaris Med. Sys., Inc., 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, 415 F.3d at 1313; 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, 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, 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
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`5
`
`OSS Exhibit 2012, pg. 5
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 6 of 12
`
`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., 451 F.3d 841, 847 (Fed. Cir. 2006).
`
`III. CONSTRUCTION OF DISPUTED CLAIM TERMS
`
`The Court has carefully reviewed the Patents-in-Suit, specifically the claims and
`
`specifications. The Court also has considered each counsel’s arguments in the briefs
`
`and as presented at the Markman hearing. The Court also has reviewed and applied
`
`the governing Federal Circuit authority. On this basis, the Court construes the
`
`following disputed terms in the claims of the Patents-in-Suit.
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`6
`
`OSS Exhibit 2012, pg. 6
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 7 of 12
`
`A.
`
`“Branch”
`
`The term “branch” is used in asserted claims in the ’948 Patent, the ’435 Patent,
`
`the ’306 Patent, and the ’893 Patent.3 OneSubsea argues that the term “branch” is
`
`defined in the Patents-in-Suit as “any branch of the manifold, other than a production
`
`bore of a tree.” See, e.g., ’306 Patent, 3:16-17. Where the inventor provides a
`
`definition for a claim term, “the inventor’s lexicography governs.” Phillips, 415 F.3d
`
`at 1316.
`
`Michael Chad Darby, FMC’s expert, testified during the Markman hearing that
`
`a branch must diverge from a flowpath and, therefore, cannot be the flowpath itself.
`
`OneSubsea agrees that the term “branch” does not include the production bore or the
`
`annulus bore. Based on the parties’ agreement as stated during the Markman hearing,
`
`as well as the intrinsic evidence before the Court, the term “branch” is construed to
`
`mean “an offshoot from a flowpath such as the production bore or the annulus bore,
`
`but does not include the production bore or the annulus bore.”
`
`B.
`
`“Divert” and Other Forms of that Word
`
`The term “divert” or a form of that word is used in asserted claims in the ’514
`
`Patent, the ’687 Patent, the ’948 Patent, the ’435 Patent, the ’306 Patent, the ’332
`
`3
`
`The term “branch” is also in Claim 19 of the ’332 Patent, but OneSubsea has
`withdrawn its infringement allegations related to this claim. See Notice of Narrowing
`of Asserted Claims [Doc. # 139].
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`7
`
`OSS Exhibit 2012, pg. 7
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 8 of 12
`
`Patent, and the ’893 Patent. OneSubsea argues that the term requires no construction
`
`when read in context, but if construction is deemed necessary, the term should be
`
`construed to mean “directing.”
`
`FMC argues that the term requires that there be a change in direction from one
`
`flowpath to a different flowpath. The Court agrees with FMC that the fluid is not
`
`“diverted” if the fluid simply moves through a single flowpath, even if the direction
`
`within the single flowpath changes. Therefore, the Court construes the term “divert”
`
`to mean that “the direction of the fluid’s flow is forced to change from its current
`
`flowpath to a different flowpath.”
`
`
`
`C.
`
`“Flow Diverter Means”/“Means to Divert”
`
`The ’687 Patent contains the limitations “flow diverter means” and “means to
`
`divert.” The parties agree that these terms are means-plus-function limitations under
`
`35 U.S.C. § 112.
`
`Construction of a means-plus-function limitation requires two steps. “First, the
`
`court must determine the claimed function.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d
`
`1302, 1311 (Fed. Cir. 2012) (quoting Applied Med. Res. Corp. v. U.S. Surgical Corp.,
`
`448 F.3d 1324, 1332 (Fed. Cir. 2006)). In this case, the parties agree that the function
`
`in the “flow diverter means” term is “to divert fluids from a first portion of the first
`
`flowpath to a second flowpath.” See, e.g., FMC’s Response, p. 11. The parties agree
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`8
`
`OSS Exhibit 2012, pg. 8
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 9 of 12
`
`also that the function in the “means to divert fluids” term is “to divert fluids returned
`
`from the second flowpath to a second portion of the first flowpath.” See id.
`
`Once the function is determined, “the court must identify the corresponding
`
`structure in the written description of the patent that performs the function.” Id.
`
`(quoting Applied Med. Res., 448 F.3d at 1332). At this step, the court must not import
`
`“structural limitations from the written description that are unnecessary to perform the
`
`claimed function.” Welker Bering Co. v. PHD, Inc., 550 F.3d 1090, 1097 (Fed. Cir.
`
`2008) (quoting Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233
`
`(Fed. Cir. 2001)). “Structural features that do not actually perform the recited function
`
`do not constitute corresponding structure and thus do not serve as claim limitations.”
`
`Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1370 (Fed. Cir. 2001).
`
`The parties agree that, at a minimum, the structural elements are (1) a seal, (2) a
`
`production bore straddle having seals, and (3) a conduit with metal, inflatable or
`
`resilient seals. FMC proposes a construction, however, that also includes functional
`
`requirements. For example, OneSubsea proposes that the first structural element is
`
`a seal. FMC proposes that the seal must be “configured to seal an inside wall of and
`
`completely plug a bore.” Although the seal must function properly in order to divert
`
`fluids, the seal itself is the structural element, and it is improper to add the functional
`
`requirements that FMC suggests.
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`9
`
`OSS Exhibit 2012, pg. 9
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 10 of 12
`
`FMC’s proposed construction also includes extra structural elements that do not
`
`operate to divert the fluid. The “open crossover valve” and the “open production
`
`swab valve” suggested by FMC may allow the seal and the production bore straddle
`
`to operate as intended, but neither of these two structural elements performs the
`
`specific agreed function of diverting the fluid. See, e.g., Asyst, 269 F.3d at 1371.
`
`The Court agrees with FMC that, although possibly redundant, the straddle has
`
`seals “at opposing ends,” and the conduit has seals “on its outside.” Therefore, based
`
`on the parties’ submissions and the Court’s consideration of the record, the Court
`
`construes the structures in the means-plus-function limitations in the ’687 Patent to
`
`be (1) a seal; (2) a production bore straddle having seals at opposing ends; and (3) a
`
`conduit with metal, inflatable or resilient seals on its outside.
`
`D.
`
`“Connector”
`
`The term “connector” is used in asserted claims in the ’306 Patent, the ’893
`
`Patent, and the ’018 Patent. OneSubsea argues that the term requires no construction
`
`or, if any construction is necessary, should be construed to mean “a device that joins
`
`or attaches things together.” FMC argues that the term should be construed to mean
`
`“a device that attaches things together” because mere joining is insufficient. FMC
`
`argues also that the term “connector” should be construed to require that the
`
`attachment must “secure” things together. The Court concludes “join” is too vague
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`10
`
`OSS Exhibit 2012, pg. 10
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 11 of 12
`
`as it would encompass two items merely coming into contact with each other. There
`
`is no basis for implying the connector “secures” two items together. To the extent any
`
`construction is required, the Court construes the term “connector” to mean “a device
`
`that attaches things together.”
`
`E.
`
`“Hub”
`
`The term “hub” is used in asserted claims in the ’893 Patent and the ’018
`
`Patent. Each of these patents is currently before the PTAB for inter partes review.
`
`Additionally, the Court did not have adequate time during the Markman hearing to
`
`receive testimony regarding the definition of “hub” as understood by persons skilled
`
`in the art in the relevant industry. As a result, the Court declines at this time to
`
`construe the term “hub.” The Court will issue a construction of this term once the
`
`PTAB issues its decision in connection with the inter partes review of the ’893 and
`
`the ’018 Patents, and the parties submit additional information, if needed.
`
`IV. CONCLUSION
`
`The Court has considered the intrinsic evidence in the record. The Court also
`
`has considered the parties’ oral arguments and explanations during the Markman
`
`hearing, which the Court found very helpful and informative. Based on this
`
`consideration of the intrinsic evidence and the parties’ arguments, as well as the
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`11
`
`OSS Exhibit 2012, pg. 11
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 147 Filed in TXSD on 07/12/16 Page 12 of 12
`
`application of governing claim construction principles, the Court construes the
`
`disputed terms in the Patents-in-Suit, with the exception of “hub,” as set forth herein.
`
`It is SO ORDERED.
`
`SIGNED at Houston, Texas, this 12th day of July, 2016.
`
`P:\ORDERS\11-2016\0051Markman.wpd 160712.1451
`
`12
`
`OSS Exhibit 2012, pg. 12
`FMC vs. OSS
`IPR2016-00467

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket