Free Reply - District Court of Colorado - Colorado

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 03-M-2579 (RPM) VARCO, L.P., Plaintiff, vs. PASON SYSTEMS USA CORP., Defendant. PLAINTIFF'S MARKMAN REPLY BRIEF Plaintiff Varco, L.P. ("Varco") files this Markman Reply brief as stated hereinabove and would respectfully show the Court as follows: I. PASON' CLAIM CONSTRUCTION IS FRAUGHT WITH ERRORS S

Pason doggedly maintains its position that the claims of the ` Patent are limited to the 142 precise structure of the preferred embodiment despite the Federal Circuit'rejection of that same s argument in this case. See Varco, L.P. v. Pason Sys. Corp., 436 F.3d 1368, 1373 (Fed.Cir. 2006). While Pason grudgingly acknowledges the Federal Circuit'refusal to overly restrict the s " relaying"and " selecting"elements of Claims 11 and 14--Pason now seeks to overly restrict numerous other claim terms, with the objective of avoiding liability for infringement, by attempting to limit the claims to the preferred embodiment described in the specification. Throughout its brief, Pason disregards the Federal Circuit' well-settled rule that patent claims s should not be limited to the preferred embodiment--absent a clear and unmistakable disclaimer. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir. 2004) ("even where a patent describes only a single embodiment, claims will not be read

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restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using 'words or expressions of manifest exclusion or restriction.'"); see also, Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed.Cir. 2003) ("for prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or statements made during prosecution to be both clear and unmistakable."). The interpretation advocated by Pason is clearly wrong, because it is inconsistent with some of the most basic rules of claim construction, as well as the evidence provided by the patent and its prosecution history. Additionally, Pason's advocacy makes no mention of how the claim language would be understood by a person of ordinary skill in the art, choosing, instead, to advocate an understanding to be derived from rigidly considering only the structure and operation of the preferred embodiment. II. A. VARCO' RESPONSE TO PASON' PROPOSED CONSTRUCTION S S

Pason Overly Limits The " Drilling Fluid Pressure Regulator"Of Claim 1 To The Preferred Embodiment Pason would have this Court limit the regulator element of Claim 1 to the precise

structure identified as element 200 of the preferred embodiment. There is no support within the intrinsic record that clearly and unmistakably limits the claimed "regulator..." to the Bourdon tube type pneumatic device as Pason improperly contends. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir. 2004). Pason's attempt to limit the meaning of regulator to the preferred embodiment is contrary to the basic rules of claim construction. E.g., Phillips, 415 F.3d at 1312; Varco, L.P. v. Pason Sys. Corp., 436 F.3d 1368, 1373 (Fed.Cir. 2006) citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996) ("In examining the specification for proper context, however, this court will not at any time import limitations from the specification into the claims.").

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Pason relies upon the faulty premise that the modifying phrase " drilling fluid pressure" a immediately preceding the " regulator" term mandates limiting the "regulator" term to the precise structure of the preferred embodiment. Pason maintains that these terms evidence a disclaimer or special meaning and limits the " regulator"to only the specific regulator 200 of the preferred embodiment of the specification. The term " drilling fluid pressure"merely distinguishes the regulator for sensing changes in drilling fluid pressure from the other claimed regulators of the dependent claims, i.e., " weight regulator" bit (Dependent Claim 2); " string torque regulator" drill (Dependent Claim 3); and " string RPM regulator" drill (Dependent claim 4). The doctrine of claim differentiation precludes Pason' narrow interpretation. Claim s differentiation requires an analysis of the other claims of the patent, especially dependent claims, as valuable sources of enlightenment as to the meaning of a claim term. Vitronics, 90 F.3d at 1582. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of a similar term in other claims. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed.Cir. 2001). Thus, the inclusion of the very same limitations advocated by Pason for the term "regulator" in Claim 5, a claim which depends from Claim 1, precludes a conclusion that the term "regulator" in the independent claim does not have a broader meaning; i.e., a meaning that encompasses but is not limited to the regulator having the features specified in the dependent claim. See Dow Chem. Co. v. U.S., 226 F.3d 1334, 1341-42 (Fed.Cir. 2000). Dependent Claim 5 has been reproduced below to show that the construction advocated by Pason for Claim 1 would improperly render the superfluous the language of Claim 5: " The automatic drilling system according to claim 1 wherein 5. said drilling fluid pressure regulator, comprises: A Bourdon tube coupled to said drilling fluid pressure sensor...

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A flapper coupled at one end to said Bourdon tube... Means responsive to the pivoting of said flapper for outputting to said relay a signal representative of changes in drilling fluid pressure." (Emphasis Supplied); The inclusion of these limitations in a dependent claim shows that Claim 1 cannot properly be construed as limited to the very same limitations. Claim 5 would be superfluous if a person of skill in the art already understood that the "regulator" of Claim 1 was inherently restricted to a Bourdon tube; a Flapper; and a Means for outputting a signal.... See TurboCare, 264 F.3d at 1123 (claim terms should not be read to contain a limitation "where another claim restricts the invention in exactly the [same] manner."). Therefore, Pason' construction of " s regulator"is overly narrow and violates the doctrine of claim differentiation. Pason also mischaracterizes the reexamination of the ` Patent to self-servingly limit 142 the "regulator" language of Claim 1 to the preferred embodiment. Specifically, Pason states that Varco distinguished the " regulator"of Claim 1 from the " regulator" the Varney Patent. In of fact what Varco told the PTO was that " Element 124 and 125 of figure 8 [of Varney] produce an electrical signal that changes with drilling fluid pressure."(Dkt # 154-11, Page 18). Thereafter, Varco stated that Varney failed to teach or disclose a regulator as claimed by Claim 1 of the ` 142 Patent. Id. This is because, as explained by Varco, Varney only provides signaling " with the capability of indicating approach to both of the two opposite limits of the range of extension and contraction of two telescoping section" --NOT a " drilling fluid pressure regulator" for " measuring changes in drilling fluid pressure and outputting a signal representing those changes." (Dkt # 154-9, Page 8). Varco' position was that Varney taught a binary s

(Release/Stop Release) system whereby the " regulator"didn' measure changes and produce t signals in response. The regulator of the Varney Patent only produced a signal to either (1)

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release or (2) stop the release of the drill string -- not a signal that changed the rate of release of the drill string. The PTO granted the reexamination request and determined that element 125 of Varney was in fact a " drilling fluid pressure regulator" Claimed in the ` Patent (Dkt # 154as 142 12, Page 4); and distinguished the invention of Claim 1 of the ` Patent from the Varney 142 Patent based upon the failure of Varney to teach affect an increase/decrease in the rate of release of the drill string. See Dkt # 154-13, Page 2. Thus, the PTO expressly disapproved Pason's

argument, finding that the Varney device, producing an electrical signal that varied with drilling fluid pressure, was a drilling fluid pressure "regulator" within the meaning of Claim 1. Nowhere in the prosecution of the ` Patent, either during the original prosecution or 142 the reexamination, did the patentee distinguish the claimed invention based upon the regulator. The claims of the ` Patent were distinguished from the prior art based upon the novel feature 142 of controlling the rate of release of the drill string in response to drilling fluid pressure. Further, Pason'own technical expert has testified that that the " s regulator" Claim 1 is of identical to the regulators of at least the following prior art references: (1) The Dillon Patent: " and iron core, elements 104 and 105"shown as coil , follows:

(2)

The Varney Patent:

" lever, contact and potentiometer, elements 120, 124, and 125"shown below; , " Stem 454 and piston 459 assess fluid pressure changes and act on gate valve 462"shown as follows: ,

(3)

The Miller Patent:

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(4)

The LeCompte Patent:" valve groove 86 and spring 85 act as a fluid pressure regulator"shown as follows: ,

(5)

The Brett Paper:

" ' control schemes' [computer algorithm] and signals created in response to changes in drilling parameters (e.g., drilling fluid pressure)."

(6)

The Young Paper:

" transducers provide signals in response to changes in drilling parameters"

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See Pason Ex. J (Dkt # 154-14 Page 17, Brett 9-4-06 Report, Table 1). Pason next re-urges the same arguments it made before the Federal Circuit that the prosecution history limits the claims to the preferred embodiment. Specifically, Pason suggests that the PTO examiner' objection to the specification under 35 U.S.C. § 112, ¶1 (lack of s enabling disclosure), which was based upon the examiner' lack of understanding of how s multiple parameters could be used together to control the rate of release of the drill string, limits the claims to the preferred embodiment. This argument is incorrect for several reasons. First, the Examiner' rejection under 35 U.S.C. § 112, ¶1 (non-enablement) was based upon his s objection to the specification (not the claims). Specifically, paragraph 1 of 35 U.S.C. § 1121 is directed to the specification or disclosure of a patent--not the patent'claims. However, if the s specification is deemed inadequate for either (1) failing to provide an enabling disclosure or (2)

35 U.S.C. § 112, entitled Specification, Paragraph 1 states: " specification shall contain a The written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention."
1

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failing to disclose a best mode (i.e., a preferred embodiment), the specification is objected to (not rejected) under § 112, ¶1, and all pending claims are in turn rejected under the same title. The applicant overcame the examiner's objection to the specification, not by amending the disclosure or claims, but by pointing out how the preferred embodiment of the specification controls the rate of release in response to multiple, interrelated parameters. There is no basis in this prosecution history for Pason's argument that the explanation provided by the applicant in overcoming the examiner's objection to the specification limited the claims in any way. Furthermore, the Federal Circuit already considered, and rejected, the same argument by Pason during the previous appeal in this case. See Varco, L.P. v. Pason Sys. USA Corp., 436 F.3d 1368, 1372-74 (Fed.Cir. 1996). The Federal Circuit held that the remarks overcoming the examiner' enablement issue did not limit the claims of the ` Patent to the embodiments s 142 disclosed within the specification. Id. Additionally, the file history reflects how a person of ordinary skill in the art would interpret the claim language. See Ulta-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1367 (Fed.Cir. 2000) (PTO Examiners are presumed to have experience in interpreting patents and other references and to be familiar with the level of skill in the art). The file history of the ` Patent reflects how the " 142 regulator" language of Claim 1 was interpreted by the PTO Examiner--a person presumed to be a person of skill in the art. The prosecution history of the '142 Patent plainly shows that the PTO Examiner did not consider the "regulator" of Claim 1 to be limited to the pneumatic, Bourdon tube device of the preferred embodiment. For example, during the prosecution, the PTO Examiner rejected Claim 1 because the Examiner considered the following prior art references to include the claimed " regulator" element of Claim 1: Ball (Ex. 3):

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" basically teaches the same principles of controlling the rate Ball of drill string release as being recited in applicant' respective s claims with the exception of the drilling fluid pressure sensor"See Varco' Ex. 2, ` Patent File History, 3/11/94 Office Action s 142 (" 126" WS ). The PTO Examiner considered that Ball disclosed a " regulator" shown in the control as system and computer circuitry of Figures 3 & 8 of the Ball Patent (Ex. 3) as follows:

Rogers (Ex. 4): " Rogers discloses a drilling optimization control system (Figs 1-3) which comprise a computer control system for optimizing the penetration rate. In which the drilling rpm and the thrust (or bit weight) are monitored and manipulated by the computer to achieve the optimal penetration conditions (Col. 4, lines 16+)." See Varco' Ex. 2, ` Patent File History, 3/11/94 Office Action s 142 (" 127" WS ).

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The PTO Examiner similarly considered that Rogers disclosed a " regulator" shown in as the control system of Figures 1 & 2 of the Rogers Patent (Ex. 4) as follows:

Varney (Ex. 11): " Varney teaches an automatic drilling system and method for automatically regulating the release of a drill string including a pressure sensor 112. Drilling fluid pressure regulator 125 coupled to sensor 112 measures changes in drilling fluid pressure and outputs a signal representing those changes by use of potentiometer 125." See Varco' Ex. 2, ` Patent File History, s 142 Order Granting Ex Parte Reexamination. The PTO Examiner further considered that Varney also disclosed a " regulator" shown as in the control system of Figure 8 of the Varney Patent (Ex. 11) as follows:

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Similarly, the Applicant distinguished the invention of Claim 1, not on the basis that these features of the prior art did not comprise a "regulator" within the meaning of the Claim, but based upon the novel features of the claimed invention of utilizing drilling fluid pressure to control the rate of release of the drill string. The prosecution history simply does not support Pason's position that the "regulator" of Claim 1 is limited to the particular structure of the regulator disclosed for the preferred embodiment. Lastly, Pason attempts to limit the construction of " regulator" based upon the testimony of the inventor, Mr. Bowden. Specifically, Mr. Bowden was asked what was a " drilling fluid pressure regulator" responded: and " A: I' not really that knowledgeable to interpret even the m claims. The only thing I' assuming is that the--the 200 is a m drilling fluid pressure regulator which is measuring changes in drilling fluid pressure, and there' an output signal representing s those changes."See Pason'Brief (Dkt # 154), Page 15. s This testimony that the regulator of the preferred embodiment is "a drilling fluid pressure regulator" is a far cry from a disclaimer or unmistakable surrender of all other types of regulators as Pason boasts. Moreover, the inventor's testimony is of little, if any, relevance to the proper construction of the claims. It is settled law that "[a]n inventor is not competent to construe the

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claims of a patent" Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000). In fact, "it is not unusual for there to be a significant difference between what an inventor thinks his patented invention is and what the ultimate scope of the claims is . . . ." Id. at 1379-80, quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 985-86 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996). Thus, since claim construction is a question of law for the Court, and because of the public notice function of the intrinsic evidence upon which the claims should be construed, "[t]he subjective intent of the inventor when he used a particular term is of little or no probative weight in determining the scope of a claim." Bell & Howell DMP Co. v. Altek Sys., 132 F.3d 701, 706 (Fed.Cir. 1997). Pason's assertion that the disclosure of a "drilling fluid pressure regulator" in the preferred embodiment is a non-sensical and apparent attempt to circumvent the settled rule against limiting claim language according to the specification. Apparently, Pason contends that the Federal Circuit's clear rulings on this issue render all patent claims invalid, because, according to Pason, disclosing an embodiment of an element of any claim renders the claim ambiguous unless interpreted as limited to the disclosed embodiment. The circular reasoning

behind that suggestion defies logic while avoiding any actual analysis of whether or not a term is ambiguous. Even Pason cannot explain how disclosing a preferred embodiment in the specification (which is necessary to satisfy the best mode requirement of 35 U.S.C. § 112, ¶1) can rationally be considered to render a claim element ambiguous, especially in view of the fact that the specification may be used to resolve any perceived ambiguity in claim language, not create it. See Vitronics, 90 F.3d at 1582 (" federal trial judge in a patent infringement case must a determine, as a threshold matter, whether there is ambiguity in any claim term requiring

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construction and, if so, to consider intrinsic evidence"[such as the specification and file history]). Finally, it is difficult to discern the purpose of Pason's illogical attempt to draw an analogy between a drilling fluid pressure regulator and a chair. Pason'contention that a " s chair" could be considered a regulator under Varco'construction is simply ridiculous. No reasonable s person, much less a person having ordinary skill in the art, would consider a " chair" device that a detects and responds to a change in drilling fluid pressure as Pason absurdly contends. B. Pason Overly Limits the " Coupled To" Element Of Claim 1 Claim 1 uses the term " coupled to" twice: (1) " ...regulator coupled to said drilling fluid pressure sensor"and (2) " drill string controller coupled to said relay..." Pason rejects the a ordinary meaning advocated by Varco, i.e., " connected to" and tortuously defines coupled to , based upon what it does not mean. Specifically, Pason construes coupled to as " something more than a wire or hose connecting...and must perform some level of responsive processing and signal supply." See Pason' Brief, Dkt # 154, Page 22. Additionally, Pason maintains that s coupled to requires that the components being coupled (i.e., regulator & sensor; controller & relay) must " together or be "dedicated", i.e., physically connected without wires or hoses. sit" This construction of coupled to is contrary to the specification and would necessarily exclude the preferred embodiments. E.g., Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1374 (Fed.Cir. 2005) ("A claim construction that excludes a preferred embodiment is rarely, if every, correct."). Specifically, in the preferred embodiment, the regulator (200) is connected or

coupled to relay (236) via a tube or hose for delivering compressed air signals from the nozzle (216). Similarly, the controller (205) is connected or coupled to the relay (236) via a tube or hose for delivering a control signal via compressed air pressure. In an alternative embodiment

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(Figure 14), the relay (526) is connected or coupled to the controller (512) via a tube or hose for delivering a control signal via hydraulic fluid. Therefore, Pason' construction of " s coupled to" should be rejected. C. Pason Overly Limits The " Relay" Element Of Claim 1 To The Preferred Embodiment Pason has interpreted the " relay" element of Claim 1 as a device that: (1) is " dedicated" to the drilling fluid pressure regulator; (2) is directly " coupled or attached" the output of the to drilling fluid pressure regulator; i.e., connected to the drilling fluid pressure regulator by some unspecified means comprising "more than a wire or hose," as described in Section B above; (3) is " responsive" the output signal of the drilling fluid pressure regulator; and (4) " to supplies" a drill string control signal at the output thereof. Pason' construction is substantially consistent with Varco' construction with the s s exception of Pason' added " s coupled"and " dedicated"limitations. While Pason suggests that several elements should be limited to " dedicated" devices, i.e., sensor, regulator, & relay--Pason fails to define what is meant by " dedicated." The term " dedicated" any synonym thereof is or not found anywhere within the disclosure of the ` Patent or its file history. Varco can only 142 surmise that Pason defines " dedicated"as a device that can only respond or communicate a single signal to the exclusion of all other signals. This might be a proper interpretation if the applicant had used the exclusive claim term " consisting of"rather than the inclusive term " comprising." See e.g., Genetech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir. 1997)("Comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.). See also, Manual for Patent Examining Procedure (MPEP), Section 2111.03 (The transitional term "comprising" indicates that the claimed invention requires the

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structural limitations defined by the subsequent provisions of the claim, without requiring or excluding other or additional structure). However, the asserted claims use the inclusive term " comprising;" therefore, the elements of the claims should not be properly interpreted as excluding other components, features and/or functions. There is no basis in the patent or its prosecution history for limiting the "relay" of the claim to a relay that responds only to drilling fluid pressure signals; and, having a relay that responds to drilling fluid pressure signals plus other signals does not avoid infringement of the claim. Therefore, Pason'proposed construction s of " relay"as a device that can only respond to a signal representing changes to drilling fluid pressure should be rejected. D. Pason Overly Limits The " Drill String Controller"Of Claims 1, 11 & 14 To A Device " Coupled To" Relay (See Section B Above) A Pason begins its construction of the " drill string controller"element based upon an improper reference to foreign counterpart patents of the ` Patent. The Federal Circuit in 142 Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284 (Fed.Cir. 2006) recently held that statements or designations of foreign counterparts of a U.S. Patent are irrelevant to claim construction of the U.S. Patent, especially when they are made in response to patentability requirements unique to European law. The numerical designations of the claim elements in the ` Patent' foreign 142 s

counterparts are required pursuant to Rule 29 (Form and Content of Claims) of the European Patent Convention which requires that " technical features mentioned in the claims shall the preferably, if the intelligibility of the claim can thereby be increased, be followed by reference signs relating to these features and placed between parentheses. These reference signs shall not be construed as limiting the claim." (emphasis supplied) (See Exhibit 23). Additionally,

whether or not the European counterpart patent'Claim 1 has a typographical error with respect s to such a designation is immaterial and should therefore not be considered in interpreting the

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claims of the ` Patent in the U.S. Therefore, any attempt to limit the interpretation of any 142 element of the ` Patent based upon the foreign prosecution of counterpart patents is improper. 142 Additionally, Pason has construed the " string controller" a device " drill as coupled to" a " relay." This argument improperly ignores the fact that Claims 11 and 14 claim a "drill string controller" without mentioning a relay. Thus, Pason's argument seeks to make redundant the "coupled to" language of Claim 1, which would is improper in that, among other things, such a construction would result in importing elements of Claim 1 into the "drill string controller" of Claims 11 and 14. Claims 11 and 14 claim the step of using a "drill string controller," without requiring a relay or coupling. Thus, Pason's attempt to have this Court construe the term "drill string controller" as requiring a relay and coupling is clearly incorrect. Additionally, Pason imports the extraneous term " must" with respect to various aspects of the " controller" element of Claim 1 as follows: " device or system able to control the advancement of the drill Any string during drilling operations, which MUST be attached or coupled to a relay as defined in the Claim, wherein a decrease in drilling fluid pressure MUST result in the relay supplying a control signal to the drill string controller which then MUST effect an increase in acceleration of movement down the borehole, and an increase in drilling fluid pressure MUST result in the relay supplying a control signal to the drill string controller which MUST effect a decrease in acceleration of movement down the borehole." See Pason' Brief, Dkt # 154, Page 40 (emphasis s added). What Pason suggests with this " MUST"language is that a change in drilling fluid pressure must always result in the " relay" supplying a signal to the " string controller" drill which must always effect a change in the rate of release of the drill string. The insertion of this " must" language is based upon Pason' contention that its AutoDriller device is programmed to NOT s ALWAYS increase/decrease the rate of release in response to changes in drilling fluid pressure

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when events such as errors are detected, limits are reached, etc.

Again, Pason's proposed

construction is not supported by anything other than its own interest in avoiding liability for infringement and is plainly incorrect. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 905 (Fed.Cir. 2004) (refusing to import limitations such as " must" and " must always"into the claim.) E. Pason Misconstrues the Terms " Measuring Change" Claim 1 Of Pason incorrectly asserts that the measured " change"or signal representing " change" cannot include both a change in time and also a change from a set-point. Pason ignores the fact that any change in drilling fluid pressure will necessarily create a change with respect to time and with respect to a set-point. This is easily shown in the following table as follows: Measurement 0 1 2 3 4 5 Measured Pressure 58 psi 59 psi 60 psi 60 psi 61 psi 60 psi Set-Point Pressure 60 psi 60 psi 60 psi 60 psi 60 psi 60 psi Change (Time) 0 psi + 1 psi + 1 psi 0 psi + 1 psi - 1 psi Change (Set Pt.) - 2 psi -1 psi 0 psi 0 psi + 1 psi 0 psi

The " Measurement"column indicates successive measurements in time; the " Measured Pressure" column indicates the actual measured pressure during the period of the " Measurement" column; the " Set-Point Pressure" a static desired or set pressure value; the " is Change (Time)" is the difference between the " Measured Pressure" during the current " Measurement" period versus the " Measured Pressure" during the last " Measurment" period; and the " Change (Set Pt.)" the is difference between the " Set-Point Pressure"value and the " Measured Pressure"during the current " Measurement" period. As shown in the table above, the change in time versus the change from a reference (set point) are sometimes identical, i.e., Measurement 3. As shown in Measurement 3, the set point is

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reached and was maintained for two consecutive measurements. This is the goal of an automatic driller--to maintain an optimum parameter constant. This is not unlike the cruise control of an automobile whereby the vehicle'computer continuously monitors the vehicle'speed and seeks s s to maintain the desired or selected speed by manipulating the accelerator. Similarly, an

automatic driller continuously monitors the rig' drilling fluid pressure and seeks to maintain a s desired or selected pressure (set-point) by manipulating the drawwork' brake to increase or s decrease the rate of release of the drill string. To illustrate this similarity the table above could be relabeled with " Speed"replacing " Pressure"and " MPH"replacing " to show how an psi" automobile'cruise control operates. As shown above, any time the desired value is reached (the s goal in such control systems) the change in time and from the set point will both be " . See 0" Measurement 3 above. Any subsequent change from this set-point will also cause the change in time and from the set-point to be the same. See Measurement 4 above. Thus, a control system that measures changes in a parameter necessarily measures change over time as well as from a reference or set point as shown above. To interpret the " change" excluding any change, e.g., as (1) change versus time or (2) change versus set-point, would improperly exclude the preferred embodiment of the specification. Pason also relies upon the prosecution history of the European counterpart patent to the ` Patent to suggest that the claims of the ` Patent are limited to changes over time. As set 142 142 out above, reliance upon the statements made in foreign counterparts of a U.S. Patent are immaterial in claim construction of the U.S. Patent. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284 (Fed.Cir. 2006). The prosecution of the ` Patent, especially during the Reexamination instigated by 142 Pason, reflects the change in time with respect to " of release." Specifically, in the Reasons rate

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for Allowance of the claims of the ` Patent over Varney, the PTO Examiner stated: " 142 Varney does not teach or suggest effecting an ` increase in the rate of release' a ` and decrease in the rate of release' as is required by Claims 1, 11 and 14 of the ` Patent. See Ex. 2, File History, " 142 Page " NOV 794" The PTO examiner acknowledged the distinction between the " . pushbutton switch"of Varney (Ex. 11, Col. 10, ll. 3-15) and increasing/decreasing the RATE of release taught by the ` Patent. A pushbutton switch is binary in nature, i.e., ON or OFF, and 142 therefore permits the drill string to either be (1) released or (2) stopped. The Dillon Patent, as referenced by Pason, was similarly distinguished in a European Patent Office (EPO) opposition proceeding (equivalent to Reexamination in the USPTO) based upon the same binary control of the release of the drill string. These references failed to teach a change over time of the release, i.e., change in the rate of release (ROR)--to accelerate or decelerate.Pason Pason further suggests that the inventive methods of Claims 11 and 14 should be construed to require the limitations of apparatus of Claim 1. Specifically, Pason assert that the following respective claim language limits the method claims to the apparatus of Claim 1: Claim 1 Claim 11 Claim 14 [drilling fluid pressure regulator " producing a signal in response " producing a first signal in for] " measuring changes in to changes in drilling fluid response to changes in drilling fluid pressure" pressure" drilling fluid pressure" [drilling fluid pressure regulator " said signal representing the " said first signal for] " outputting a signal changes in drilling fluid representing the changes in representing those changes" pressure" drilling fluid pressure" As shown in this comparison table, while the steps of method Claims 11 and 14 share some similar language, the similarities end there. For example, apparatus Claim 1 requires structure for " measuring changes" whereas method Claims 11 and 14 require performance of the method step " producing a signal [or first signal] in response to changes." Thus, both the claim language and the nature of the claims shows that the steps of " producing..."in the methods of

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Claim 11 and 14 are not limited to the " measuring changes" apparatus of Claim 1. See also of Bandag, Inc. v. Al Bolser' Tire Stores, Inc., 750 F.2d 903, 223 USPQ 982 (Fed.Cir. 1984) (a s method claim protects a method and is not to be interpreted as directed to equipment, even equipment for performing the claimed method); Polaroid Corp. v. Easton Kodak Co., 789 F.2d 1556 (Fed.Cir. 1986); Amstar Corp. v. Envirotech Corp., 730 F.2d 1476 (Fed.Cir. 1984)(apparatus distinctions are said to be irrelevant in determining infringement of method claims); O.I. Corp. v. Tekmar Co., 115 F.3d 1576 (Fed.Cir. 1997)(construction of apparatus claim does not govern construction of "parallel" method claim). F. Pason Improperly Reads Into the Claims The Extraneous Limitation Of " Continuously" ) Pason has also contrived another limitation, " continuously" that it seeks to import into , the claims. Pason has failed to identify the source of this limitation or even define what it means. Pason has only attempted to create this limitation and then define it to require constant, unceasing, uninterrupted measurements in the hope for so narrow a definition of this non-existent limitation that Pason's measurements (50 times per second) might not be considered "continuous" during operation of their infringing device. Pason is suggesting that since its AutoDriller utilizes a computer system that operates via a sampling clock which measures, produces signaling, etc. every 20 milliseconds, i.e., 50 times a second, it avoids measuring or producing signals "continuously" as Pason would interpret that non-existent claim limitation. There is no basis for this term to be imported into the claims of the patent or interpreted in the extremely artificial and narrow way that Pason advocates.

G.

Pason Improperly Construes " Representing"

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While Pason states that it does not contest Varco' interpretation of " s representing" i.e., , " symbolizing, standing for, directly related to, indicative of, a reasonable proxy for, or equivalent to" (Dkt # 154, Page 33), Pason nevertheless argues that "representing" should be limited to the " directly related to" definition. Specifically, Pason states that " signal in Claim 11 and said said first signal in Claim 14 represent only one thing--changes in drilling fluid pressure" and " only changes in bit weight."(emphasis supplied) Id at 36. Again, the error in Pason's reasoning is plainly demonstrated by the fact that it is proposing to modify the plain meaning of the "representing" term by adding the unsupported limiting qualifier "only." There is no basis in the evidence relevant to the proper construction of the claims that supports Pason's attempts to limit the claim language in this manner. III. CONCLUSION

Varco requests from this Honorable Court a ruling consistent with the Federal Circuit=s decision in this case, specifically, that the claims in the >142 Patent are in no way limited to the pneumatic or hydraulic embodiments described in the patent and that this Court adopt Varco' s proffered claim construction. Dated: February 16, 2007 By:__/s/ Robert M. Bowick _________ Robert M. Bowick Guy E Matthews C. Vernon Lawson M ATTHEWS , LAWSON , B OWICK & A L-AZEM , PLLC 2000 Bering, Suite 700 Houston, Texas 77057 (713) 355-4200 (telephone) (713) 355-9689 (facsimile) Respectfully submitted, Jane Michaels Joseph T. Jaros H OLLAND & H ART LLP 555 Seventeenth Street, Suite 3200 Post Office Box 8749 Denver, Colorado 80201-8749 (303) 295-8000 John W. Raley Cooper & Scully, P.C. 700 Louisiana Street, Suite 3850 Houston, TX 77002 (713) 236-6801 (telephone) (713) 236-6880 (facsimile)

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COUNSEL FOR PLAINTIFF VARCO, L.P.

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C ERTIFICATE O F S ERVICE I hereby certify that on February 16, 2007, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following: [email protected] [email protected]

s/Robert M. Bowick_________

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