Schoeller-Bleckmann Oilfield Equipment AG v. Churchill Drilling Tools US, Inc.
664 F. App'x 949
| Fed. Cir. | 2016Background
- The ’397 patent covers a downhole activating mechanism using deformable activators (ball-dart combinations or deformable rings) to switch a sleeve between through-flow and bypass modes by changing fluid pressure.
- Claim 17 (dependent on claim 13) recites a deformable activator that is a ball-dart combination with a “ball-like portion” that seats and a dart-like portion that projects through the seat; claim 18 adds a hollow activator with an internal flow control device.
- Churchill petitioned for inter partes review asserting anticipation by WO 02/14650 and Bourgoyne and obviousness over their combination; the PTAB instituted review and found claims 13–15, 17, and 18 unpatentable.
- On appeal Schoeller challenged the Board’s construction of “ball-like portion,” arguing it should be limited to the deformable ring embodiment (not an actual ball), and argued claims 17–18 were thus not anticipated/obvious.
- The Federal Circuit reviewed claim construction de novo (with factual findings for extrinsic evidence reviewed for substantial evidence) and affirmed the Board’s construction and unpatentability of claims 17–18 as anticipated by WO 02/14650.
Issues
| Issue | Schoeller's Argument | Churchill's Argument | Held |
|---|---|---|---|
| Proper construction of “ball-like portion” in claim 17 | Term should be limited to the deformable ring shown in Figures 8–9b, excluding an actual deformable ball | “Ball-like” is a genus; includes any structure with at least one outer curve (including a deformable ball) | Court affirmed Board: “ball-like portion” = “structure with at least one outer curve” |
| Whether claims 17–18 remain unpatentable under that construction | If limited to ring, claims not anticipated by WO 02/14650 | Under affirmed construction, Schoeller conceded claims 17–18 are anticipated by WO 02/14650 | Claims 17–18 were anticipated by WO 02/14650; Board’s unpatentability decision affirmed |
Key Cases Cited
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir.) (standard for reviewing claim construction in IPR and deference framework)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S.) (Supreme Court approval of broadest reasonable interpretation standard in IPRs)
- Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir.) (doctrine against limiting claims to preferred embodiments absent clear disavowal)
- In re Abbott Diabetes Care, 696 F.3d 1142 (Fed. Cir.) (patent specification can implicitly limit claim scope when it repeatedly and consistently disclaims alternatives)
- Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295 (Fed. Cir.) (describing when specification disclaimers can narrow claim scope)