Free Response - District Court of Colorado - Colorado

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 03-cv-02579-RPM VARCO, L.P., Plaintiff, vs. PASON SYSTEMS USA CORP., Defendant.

DEFENDANT PASON'S RESPONSIVE MARKMAN BRIEF

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TABLE OF CONTENTS

I. II.

OVERVIEW OF THE INVENTION------------------------------------------------------------- 3 CLAIM CONSTRUCTION HIERARCHY ---------------------------------------------------- 6

III. CLAIM TERMS AT ISSUE ----------------------------------------------------------------------- 8 IV. CONSTRUCTION OF STRUCTURAL ELEMENTS IN CLAIM 1---------------------10 A. B. C. "A Drilling Fluid Pressure Regulator" Should be Construed As ------------------------10 A Relay Is a Device, Attached and Dedicated to the Drilling Fluid Pressure Regulator, Which Performs Responsive Signal Processing------------------------------22 The term "Drill String Controller," Although Not Taught Completely is a Device Attached to the Relay and Able to Control the Rate of the Downward Movement of the Drill String ---------------------------------------------------------------------------------23

V.

CONSTRUCTION OF FUNCTIONAL TERMS IN CLAIMS 1 AND 11 ---------------24 A. "Measuring Change" and "Increasing" or "Decreasing the Rate of Release" Must be Defined Uniformly and Confined to A Single Meaning Consistent With the Claim Language and Prosecution History. ---------------------------------------------------------24 The Proper Interpretation of Claims 1 and 11 Involve Both Continuity and Certainty of Result ----------------------------------------------------------------------------------------29

B.

VI. SIGNALS AND RELAYING IN CLAIMS 11 AND 14 -------------------------------------33 A. Signals Representing Changes in A Parameter Are Signals Produced Only in Response to and Only Representing Those Changes -------------------------------------33

VII. CONSTRUCTION OF TERMS SPECIFIC TO CLAIM 14-------------------------------36 VIII. CONCLUSION--------------------------------------------------------------------------------------39

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I.

OVERVIEW OF THE INVENTION U.S. Patent 5,474,142 (the "Bowden Patent" or "'142 Patent") teaches a system or method

for automatically controlling the release, or down-hole movement of a drill string during drilling operations. That control is based upon data received from sensing one of four, or any

combination of four drilling parameters, including bit weight, drilling fluid pressure, motor RPM and torque (collectively the "Parameters"). 1 The disclosed invention that enables the claims describes a process under which a signal is received from a particular or dedicated sensor, transmitted to a device called a regulator that constricts or expands an air flow based upon the signal's value, outputs that air flow to a relay (which in turn constricts or expands a second flow of air), which then directs a drill string controller to increase or decrease the rate of release of the drill string. See generally, Bowden Patent Abstract (Exhibit A, attached, is the full text of the Bowden Patent). In both the preferred and alternate embodiments, each applicable Parameter has a dedicated sensor coupled or attached to an independent regulator, designated repeatedly as the "drilling fluid pressure regulator" or the "bit weight regulator", respectively. See e.g. id., at Fig. 2; Fig 3; C. 2, l. 4-14; C. 7, l. 17-18; C. 8, l. 9, 13, 21, 31; C. 11, l. 25, 50; C. 22, l. 27; and C. 23, l. 43. Each regulator so designated is attached to its own relay. See id; at Fig. 2, Fig. 3, Fig. 14; C. 2, l. 15-24. The regulators are not directly connected to each other, but the relays dedicated to the respective regulators run in a series "[T]he relays "select which one of or which combination of the regulators are to control the drilling operation." Id. at C.2, l.20-24.

1

Because only two of the Parameters are at issue in this case, Pason will limit its discussion to drilling fluid pressure and bit weight, acting either alone or together as set forth in Claim 14.

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The function of each element, and the attributes of the invention, are taught at length, for example: What the Regulators Do: "[T]he drilling fluid pressure regulator measures changes in drilling fluid pressure and outputs a signal representing those changes. The bit weight regulator measures changes in bit weight and outputs a signal representing those changes." Id., at C. 2, l. 6-9. Calibration of the Regulators Around Target Values: To calibrate drilling fluid pressure regulator 200 and automatically regulate drilling fluid pressure, the drilling rig operators must first manually manipulate brake 32 to place drill bit 23 "on bottom". Once drill bit 23 resides "on bottom", the drilling rig operators connect cable 207 to brake handle 208. Adjustment screw 214 must then be adjusted to move nozzle 216 relative to flapper 213 so that it will deliver compressed air to valve 236. The delivery of compressed air nozzle 216 opens valve 236, thereby allowing the actuation of air motor 204. If adjustment screw 214 and, thus, nozzle 216 remain unadjusted, drilling fluid pressure regulator 200 will not maintain a constant drilling fluid pressure. ***** A drilling rig operator tightens adjusting screw 214 to cause the release of drill string 21 until the drilling fluid within drill string 21 reaches its desired pressure. Drilling fluid pressure gauge 80 (see Fig. 1) registers and displays the pressure of the drilling fluid within drill string 21 for the drilling rig operator. Accordingly, when drilling fluid pressure gauge 80 registers the desired drilling fluid pressure, the drilling rig operator stops tightening adjusting screw 214. Id., at C. 8, l. 62 ­ C. 9, l. 56 (emphasis added). The Selection of the Regulators ­ Relays to be Used: Valve selectors 232-235 control which ones of regulators 200-203 control the drilling operation. That is, if all four regulators are to control the drilling operation, valve selectors 232-235 remain on so that regulators 200-203 control the delivery of compressed air from their respective valves 236-239. However, if,

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for example, only drilling fluid pressure regulator 200 is to control the drilling operation, valve selector 232 remains switched on while valve selectors 233-235 are switched off. In its on position, valve selector 232 continues to prevent the air supply from delivering compressed air directly onto diaphragm 240 of valve 236 so that drilling fluid regulator 200 controls the opening and closing of valve 236. Conversely, with valve selectors 233-235 switched off, they allow the air supply to deliver compressed air directly onto diaphragms 241-243 of valves 237-239. As a result, valves 237-239 fully open and function only to pass the flow of compressed air regulated by drilling fluid pressure regulator 200. That is, bit weight regulator 201, drilling string torque regulator 202, and drill string RPM regulator 203 remain off and do not regulate the supply of compressed air delivered to air motor 204. Valve selectors 232-235 may be manipulated in any combination so that any one, any combination, or all of regulators 200-203 regulate the delivery of compressed air to air motor 204. Id., at C. 7, l. 48, C. 8, l. 5. The Method of Resolving Conflicts When More Than One Regulator-Relay Set is Chosen: Although the operation of each of regulators 200-203 to control a drilling operation was described individually, regulators 200-203 may be switched on in any combination, including all of them, to regulate the rate drill bit 23 penetrates into formation 87. However, when more than one of regulators 200-203 is utilized to control a drilling operation, one regulator is adjusted to maintain a desired drilling parameter, while the remaining regulators act as secondary controls. Illustratively, drilling fluid pressure regulator 200 and bit weight regulator 201 could be switched on while drill string torque regulator 202 and drill string RPM regulator 203 could be switched off. That is, valve selectors 234 and 235 are switched off to keep valves 238 and 239 open, thereby maintaining drill string torque regulator 202 and drill string RPM regulator 203 off, while valve selectors 232 and 233 are switched on to allow drilling fluid pressure regulator 200 and bit weight regulator 201 to control their respective valves 236 and 237. In the above control configuration, drilling fluid pressure regulator 200 could be adjusted to maintain an operator selected drilling fluid pressure within drill string 21. Additionally, bit weight regulator 201 would then be adjusted to a bit weight valve higher than the bit weight required to maintain the operator selected drilling fluid pressure. As a result, drilling fluid pressure regulator 200 would provide primary controls of the drilling operation, while bit weight regulator 201 would provide a secondary control in the event bit weight decreased significantly without a corresponding decrease in drilling fluid pressure.

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Id., at C. 20, l. 40 ­ C. 21, l. 3; see also Amendment A, June 10, 1994, at p. 2-4, attached hereto as Exhibit B, in which Bowden's counsel uses the above-referenced disclosure in an effort to overcome the Examiner's determination that the invention was not enabled under 35 U.S.C. § 112. Accordingly, the Bowden Patent provides specific and ample teaching on how to build and use a complex and interconnected series of flow control devices (primarily air or fluid in the preferred and alternate embodiments), to take signals, originating with the sensors on the Parameters, and ultimately control the drill string release in a manner reflecting those signals. Construing the claims broadly, yet in a manner consistent with the teaching that enabled the claims, is the task before the Court.

II.

CLAIM CONSTRUCTION HIERARCHY In Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), the Federal

Circuit established the hierarchy of sources to review in interpreting the claims of a patent. Id. at 1582. "They are, in descending order of importance: (1) the claim language itself; (2) the specification of the patent; and (3) the prosecution history. The three combined are considered "intrinsic evidence." Extrinsic evidence may also be considered, but such evidence is accorded lesser weight in the evaluation. The extrinsic evidence includes: dictionaries, prior art, technical articles and expert or other testimony." STX, Inc. v. Brine, Inc., 37 F. Supp. 2d 740, 765 (D. Md. 1999) (citing Vitronics, 90 F.3d at 1582, 1584). First, the court looks to the words of the claims themselves, including those not at issue, to define the scope of the patented invention. See Bell Communications Research, Inc. v.

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Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). Although words in a claim are generally given their ordinary and customary meaning to a person of ordinary skill in the art, a patentee can choose to be his own lexicographer when using terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history. Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996). "[S]econd, it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning." Vitronics, 90 F.3d at 1582. The specification essentially acts as a dictionary when it expressly defines a term used in the claims or when it defines terms by implication. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). This is in accord with the well-established principle that, "[c]laims must be read in view of the specification, of which they are a part." Id. at 979. "The specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to make and use it. Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. Third, the court may also consider the prosecution history of the patent, if in evidence. Markman, 52 F.3d at 980; Graham v. John Deere, 383 U.S. 1, 33 (1966). "This history contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims." Vitronics, 90 F.3d at 1582. Therefore, the record before the Patent and Trademark Office is often crucial in

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determining the true meaning of the claims. Id.

In fact, the prosecution history can limit the

claim terms to exclude any interpretation that was disclaimed during prosecution. Id. at 1583. And, included within the prosecution history may be an examination of the prior art cited therein. Id. In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. Id. In such circumstances, it is improper for the court to rely on extrinsic evidence. Id. Only if there is still some genuine ambiguity in the claims, after consideration of all the available intrinsic evidence, should the trial court resort to extrinsic evidence, such as expert testimony, inventor testimony, dictionaries, and technical treatises, other prior art and articles, in order to further construe claim. Id. at 1584. But even when extrinsic evidence is allowed, its use is severely limited because, "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." Id. "Nor may it contradict the import of other parts of the specification. Indeed, where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight." Id. However, "[a]lthough technical treatises and dictionaries fall within the category of extrinsic evidence . . . Judges are free to consult such resources at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." Id. at 1584, n.6. III. CLAIM TERMS AT ISSUE

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Claim 1 of the Bowden Patent focuses exclusively on the control scheme pertinent to only one Parameter ­ drilling fluid pressure. Both intrinsic and extrinsic evidence is to the effect that this is the most significant improvement of the Bowden invention over prior art. Ex. A, at C. 1, 1. 50-54; Ex. B, at p. 4-6; Bowden Dep., at 131:20-132:5 (attached hereto as Exhibit C). Claim 11 is a method claim that also relates only to drilling fluid pressure. Claim 14 addresses the scenario described above, when the operator selects both drilling fluid pressure and bit weight as the control parameters. 2 The precise language of the claims is set forth below, with highlighting on those phrases that Pason believes bear scrutiny or interpretation. Claim 1 An automatic drilling system for automatically regulating the release of the drill string of a drilling rig during the drilling of a borehole, comprising: A drilling fluid pressure sensor, A drilling fluid pressure regulator coupled to said drilling fluid pressure sensor, said drilling fluid pressure regulator measuring changes in drilling fluid pressure outputting a signal representing those changes; A relay coupled to said drilling fluid pressure regulator, said relay responsive to the output signal of said drilling fluid pressure regulator to supply a drill string control signal at an output thereof; and A drill string controller coupled to said relay wherein a decrease in drilling fluid pressure results in said relay supplying a drill string control signal that operates said drill string controller to effect an increase in the rate of release of said drill string and an increase in drilling fluid pressure results in said relay supplying a drill string control signal that operates said drill string controller to effect a decrease in the rate of release of said drill string.

2

Where appropriate, Pason will combine the discussion of identical concepts in separate claims, such as "measuring changes" and "increasing" or "decreasing the rate of release."

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Claim 11 A method for automatically regulating the release of the drill string of a drilling rig drill, comprising the steps of: measuring drilling fluid pressure; producing a signal in response to changes in drilling fluid pressure, said signal representing the changes in drilling fluid pressure; relaying said signal to a drill string controller; and controlling said drill string controller to increase the rate of release of said drill string when said signal represents a decrease in drilling fluid pressure and to decrease the rate of release of said drill string when said signal represents an increase in drilling fluid pressure. Claim 14 A method for automatically regulating the release of the drill string of a drilling rig drill, comprising the steps of: measuring drilling fluid pressure and bit weight; producing a first signal in response to changes in drilling fluid pressure, said first signal representing the changes in drilling fluid pressure; producing a second signal in response to changes in bit weight, said second signal representing the changes in bit weight; selecting any one of said first signal, said second signal, and both said first and said second signals to control the release of said drill string; and relaying said selected signal or signals to a drill string controller which regulates the release said drill string in response to said selected signal or signals. IV. CONSTRUCTION OF STRUCTURAL ELEMENTS IN CLAIM 1 A. "A Drilling Fluid Pressure Regulator" Should be Construed As: 1. The Device Disclosed as Element 200.

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The ordinary and customary meaning of the term "a drilling fluid pressure regulator" would be a device that regulates drilling fluid pressure, in the same fashion that the preceding element, the "drilling fluid pressure sensor," senses drilling fluid pressure, and the subsequent element, a "drill string controller, controls the drill string. Portions of the specifications support that construction: Drilling fluid pressure regulator 200 ensures drill bit 23 progresses through formation 87 at an optimal rate of penetration by maintaining the drilling fluid within drill string 21 at an optimal pressure. As long as the drilling fluid remains at the optimal pressure, drill bit 23 will reside "on bottom" with sufficient bit weight to drill borehole 86 through formation 87. Drilling fluid pressure regulator 200 regulates drilling fluid pressure by releasing cable 28 from drum 26 in response to decreases in drilling fluid pressure. Ex. A, at C. 8, l. 15-23 (emphasis added). But the structural element claimed, the "drilling fluid pressure regulator," depends upon the sensor, a separate claimed structure, and acts upon the relay and drill string controller, two more structures claimed. Every element in Claim 1 acts in combination to regulate drilling fluid pressure to an optimal value ­ in short, the "system" itself is a drilling fluid pressure regulator in the ordinary meaning of the phrase, of which the "drilling fluid pressure regulator" is only a part. The disclosure of the Bowden Patent defies giving an ordinary and customary meaning to the structural element "a drilling fluid pressure regulator," rendering that otherwise clear term ambiguous. If the ordinary construction is inapplicable, Pason contends that the Court should take the Bowden disclosure at face value and conclude that the Patentee chose to give a special, defined meaning to the term "drilling fluid pressure regulator." "[W]ords in a claim are generally given their ordinary and customary meaning" unless some "special definition of the term is clearly stated in the patent specification or file history." Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 412

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F.3d 1284, 1288 (Fed. Cir. 2005) (quoting Vitronics, 90 F.3d at 1582); see also Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1344 (Fed. Cir. 2002) (Because the words of the claims define the scope of the invention, they are given their ordinary and customary meaning, unless the patentee has chosen to use terms in some other manner and courts must review the specification to determine whether the patentee assigned any special meaning to the meaning of the claim terms.). Here, the Patentee drew a picture of the drilling fluid pressure regulator, incorporated it into both the preferred and alternate embodiments, and labeled it repeatedly. The singular noun "regulator" never appears in the Bowden Patent specifications, except when it is preceded by a phrase identifying one of the Parameters, and a "drilling fluid pressure regulator" is always, associated with a reference to element 200 from Figures 2 and 3. Ex. A, at C. 7, l. 16-18 ("As shown in FIG. 2, automatic driller 33 comprises drilling fluid pressure regulator 200, bit weight regulator 201, ..."). Compare those declarations to the teaching of "a drilling fluid pressure sensor," at C. 4, l. 56 to C. 5, 1.37 ("As shown in FIG. 4, drilling fluid sensor 34 may comprise, ...Alternatively, a standard drilling fluid pressure sensor may be employed..."), and "a bit weight sensor" at C. 6, l. 12-14 ("FIGS. 7 and 8 illustrate two standard weight on bit sensors that may be utilized") (emphasis added). There is no such equivocation regarding the drilling fluid pressure regulator. Under the Patent's special definition, the "drilling fluid pressure regulator " is a device that "includes [not may include] Bourdon tube 210, ...flapper 213, adjusting screw 214, plate 215, nozzle 216, spring 230, and safety shutdown knob 217." Ex. A, at C. 8, l. 31-37. Nothing else is taught or suggested in connection with this defined term, which the Patentee elected to

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claim, not as merely a "regulator," but as a "drilling fluid pressure regulator."

It is an

enlightening contrast to the phrase "relay," which is taught as follows: "In the preferred embodiment, valves 236-239 are pneumatic valves that operate as relays ..." Ex. A, at C. 7, l. 3536. This quote was a predicate for the Federal Circuit's opinion that the phrase "relaying" should not be limited to use of the pneumatic valves Bowden teaches. Varco, LP v. Pason Systems USA Corp., 436 F.3d 1368, 1375 (Fed. Cir. 2006) (citing the existence of this clause as evidence that the valves were merely examples of the types of devices that might function as relays). Significantly, there is no similar language in the specifications in which element 200 or any other component is described as a device that operates as a regulator. Moreover, the extra words, "a drilling fluid pressure regulator," cannot simply be written out of the claim, such that "a regulator...measuring changes in drilling fluid pressure and outputting a signal representing those changes," reads exactly the same as "a drilling fluid pressure regulator...measuring changes in drilling fluid pressure and outputting a signal representing those changes..." This is because "[n]othing in any precedent permits judicial redrafting of claims. At most there are admonitions to construe words in claims narrowly, if possible, so as to sustain their validity." Becton Dickinson and Co. v. C.R. Bard, Inc., 922 F.2d 792, 799 n. 6 (Fed. Cir. 1990) (citing Carman Indus. v. Wahl, 724 F.2d 932, 937 n. 5 (Fed. Cir. 1983). All claim terms are presumed to have meaning in a claim. Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1119-20 (Fed. Cir. 2004) (applying the ordinary and customary meaning of "operatively connected" instead of "connected" because otherwise the term "operatively" would be unnecessary and superfluous, as the patentee could have as easily used the term "connected" alone). See also Warner-Jenkinson Co., Inc. v. Hilton

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Davis Chemical Co., 520 U.S. 17, 29 (1997) ("each element contained in a patent claim is deemed material to defining the scope of the patented invention."). Mr. Bowden could have chosen the generic term "regulator," relying upon the subsequent description of its function to clearly claim what this element in the system did--received a signal from the drilling fluid pressure sensor, measured changes in drilling fluid pressure, and outputted a signal representing those changes. Such a claim would surely have been enabled and

sufficiently definite, and would have caused no need to stray from the common understanding of what a regulator was. But instead, he burdened the claim with extra words that the Court cannot disregard. Pason submits that the Bowden Patent represents a rare but permissible example in which the inventor, by eschewing the ordinary and customary construction of a claim term, providing no examples or equivocation beyond element 200 in his disclosures, and including the full, specific term in his Claim, has defined that particular element as the very device he disclosed. See Vitronics, 90 F.3d at 1582 (explaining that a claim term should be given its ordinary and customary meaning, unless the intrinsic evidence compels a contrary result.). And surprisingly, even the inventor, given every opportunity to expand, could not conceive of it being anything other than element 200: Q. (By Mr. Atkinson) All right. Mr. Bowden, while we are still on Exhibit 1, I have just a couple more questions. If you will turn to claim 1, which I think is at column 24, it says, "A drilling fluid pressure regulator coupled to said drilling fluid pressure sensor" -- you see that about four lines into that claim? A. Is that 43 or -Q. Line -- starting out at line 43 -- 42. A. Okay.

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Q. "A drilling fluid pressure regulator coupled to said drilling fluid pressure sensor" -- now, we've talked about a -- spent a fair amount of time going over the function of number 200, which I think in your preferred embodiment is the drilling fluid pressure regulator. And I understand that your claims aren't limited simply to what you have disclosed in the preferred embodiment so I was wondering, sir, if you could give me your working definition of how I should read the phrase "drilling fluid pressure regulator" in the context of claim 1. A. Well, I'm assuming 200 would be the drilling fluid pressure regulator and it's coupled to or gets the signal from the drilling fluid pressure sensor. Q. I guess what I'm looking for is a little bit more generic, not necessarily limited to the preferred embodiment but what you would deem to be a drilling fluid pressure regulator in the context of the claims that you're making in this -this patent. Because you understand, sir, that your claims aren't simply limited to the preferred embodiment that you disclosed, right? A. I'm not really that knowledgeable to interpret even the claims. The only thing I'm assuming is that the--the 200 is a drilling fluid pressure regulator which is measuring changes in drilling fluid pressure, and there's an output signal representing those changes. Ex. C, Bowden Dep. at 104:1-105:14. 2. Or, alternatively, a Device Dedicated to a Drilling Fluid Pressure Sensor, Which Controls (Restricts or Expands) The Flow of a Liquid, Gas, or Electrical Current in a Predetermined Fashion. Varco predictably searches for a broader meaning of a drilling fluid pressure regulator, one that takes it away from the Patent's specifications to a construction that would cause any device that controls a drill string in response to drilling fluid pressure to be infringing, regardless of how that device is constructed and operated. Prejean Dep., at 17:10-22 (attached hereto as Exhibit D). In that effort, Varco has found a willing accomplice in their expert, Mr. Perkin, who first strips away the first four words "a drilling fluid pressure..." and then argues that a "regulator" is "any device capable of detecting or responding to electrical, mechanical, hydraulic or pneumatic signal." Perkin Report, at p. 10 (attached hereto as Exhibit E); Varco Brief, at p.

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27. 3 In doing so, the drilling fluid pressure regulator is converted into an amorphous component similar to what might be found in a means-plus-function clause, 4 rather than a structure with meaning. The construction of a drilling fluid pressure regulator cannot be that broad. To use an outrageous example, when someone kicks a chair across the room, the chair has become a device that detected and responded to a mechanical signal (the kick and resulting flight), but presumably no one of ordinary skill in the art would determine that the chair was a drilling fluid pressure regulator. And even closer to home, during re-examination, Varco took the position that

elements 100 to 124 of the Varney Patent, which detected drilling fluid pressure and generated an electrical signal that changed with changes in that pressure, did not "use a drilling fluid pressure regulator." U.S. Patent No. 3,223,183, at Fig. 8 (the "Varney Patent"), (attached hereto as Exhibit F); and at Exhibit D Patent Owner's Statement on Reexamination, (attached hereto as Exhibit G). That inconsistency, between the prosecution on reexamination and Varco's current,

Mr. Perkin and Varco in its brief dedicate countless pages to characterizing, and mischaracterizing statements or arguments of Pason's initial patent counsel or testimony of its expert before or during the Motion for Preliminary Injunction in this case. Although Pason welcomes the opportunity to address and lend context these arguments at the appropriate time and place, they are irrelevant to the claim construction process. Kahl, Patent Claim Construction, §4.02 (7), at pp. 4-10 (Aspen Publishers 2006) ("although [an apparent admission by a party opponent] is the sort of information prized by parties for use against adversaries...such documentary and testimonial admissions [as extrinsic evidence of no value] should no longer be significant in deciding claim construction issue.") (citing Vitronics, 90 F.3d at 1583). 4 If this were a means-plus-function clause, the analysis would be greatly simplified. All the court would need to do is identify the function (producing a signal in response to changes in drilling fluid pressure) and find the structure [200], and limit the claim to that disclosure. See 35 U.S.C. § 112, ¶ 6. Section 112, paragraph 6 provides: "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."; see e.g. MasHamilton Group v. La Gard, Inc., 156 F.3d 1206, 1214 (Fed. Cir. 1998) (a claim element without express meansplus-function language may be a means-plus functional element if the element invokes purely functional terms, without the additional recital of specific structure or material to for performing that function.); see also Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed.Cir.1999) (The first step in the construction of a means-plus-function claim element is to identify the particular claimed function. The second step in the analysis is to look to the specification and identify the corresponding structure for that function.).

3

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extrinsic evidence, should be resolved in favor of the prosecution history. 5 Vitronics, 90 F.3d at 1582. What the structure repeatedly identified as a drilling fluid pressure regulator does do is regulate (constrict or expand) the flow of air that passes from compressed air nozzle 216 to relay 236. Ex. A, at Fig. 3, C. 8, l. 51-54. ("In normal operation, Bourden tube 210 manipulates flapper 213 in response to changes in drilling fluid pressure to vary the amount compressed air nozzle 216 delivers to valve 236."). So, even without limiting the construction to the precise component disclosed in both the preferred and alternate embodiments, but consistent with the teaching of the Bowden Patent, Pason submits that a "regulator" is a device that responds to a signal by adjusting the flow of air, liquid or electronic current in a predetermined fashion. Excerpt from Responsive and Supplemental Report of J. Ford Brett, at p. 2-4, with supporting definitions and analysis, (attached hereto as Exhibit J) 6 ; Brett Dep., at 321:22-322:4 (attached hereto as Exhibit K) (agreeing that it would be possible to build an electronic or even computerized regulator similar to the Bowden Patent's teaching). But if that is a regulator, as it would be understood by one of ordinary skill in the art, a "drilling fluid pressure regulator" must mean something more. See Warner-Jenkinson, 520 U.S.
Varco argues that the Examiner determined that the Varney disclosure was a regulator, citing the Examiner's preliminary decision to reexamine, issued before Varco had an opportunity to respond. The primary basis for the reexamination, however, was the conclusion that the Patentee had claimed to be the first to control drill string release automatically based upon fluid pressure. Examiner's Decision to Re-Exam attached at Ex. H at page 2. Varney did that and had not been considered in the initial prosecution. After Bowden's submission, the examiner's preliminary conclusion on the regulator did not reappear in the Reexamination Reasons for Patentability/Confirmation, Ex. I. Determination on Reexamination. Ex. I. Nevertheless, the construction Pason proposes is sufficiently broad to include the Varney structure as a drilling fluid pressure regulator, since elements 100-124 of that device are dedicated to drilling fluid pressure and result, through a variable transducer, in controlling the flow of an electronic current. 6 Varco submits a proposed construction of the word "coupled to," as encompassing or synonymous with "attached." Pason does not dispute that construction, but highlighted the term only because, as Mr. Brett stated in his report, its use was consistent with his view that one of ordinary skill in the art, in the context of the Bowden Patent, would understand a regulator to be a flow-control device.
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at 29, Innova/Pure Water, 381 F.3d at 1119-20. The only construction that gives meaning to all of the words in the phrase, is as a device, not just capable of, but dedicated to measuring changes in drilling fluid pressure and outputting a signal representing these changes. The teaching of the Bowden Patent further drives this result. Each sensor, for each Parameter, has a regulator assigned to it. Each of those regulators has a name, its own set of numbered components, and a detailed, separately stated calibration method and function. Compare Ex. A, at C.8, l. 61 to C.9, l. 61 (calibrating the drilling fluid pressure regulator), with C. 12, l. 11 to C.13, l. 17 (bit weight regulator). In Claim 9, another of the Patent's independent claims, and Claim 10, a claim dependent upon Claim 9, each regulator is identified as a separate element, performing a separately-described function. Id. at C. 26, l. 37-42, see Bell

Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (regarding use of claims not at issue to aid in understanding the invention as a whole); Varco, LP v. Pason Systems USA Corp., 436 F.3d at __ (using the language of Claim 15 to assist in evaluating the selection clause in Claim 14 of the Bowden Patent). The balance of the language of Claim 1 also depends upon this dedication. If the drilling fluid pressure regulator is not a device dedicated to that Parameter, then how will a change in pressure "result" in a signal representing that change, and "effect" an increase or decrease in the rate of release? The declarative language would have to change to "may result" and "might effect," to encompass the uncertainty and variability that different inputs could bring. Finally, the prosecution history compels this construction. The Bowden Patent was initially rejected because the specification failed to adequately teach how to make and/or use the invention, i.e., failed to provide an enabling disclosure: "It is the Examiner's view that at the

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least, applicant has failed to provide a logical explanation with respect to how such conflicts can be resolved. Because it is well known in the art that, among other things, the relationship between rate of penetration and the drilling parameters. . . are interrelated and interactive one cannot simply isolate one from the others." PTO Examination Actions dated March 11, 1994 (attached hereto as Exhibit L). (emphasis added). In response to the March 11, 1994 rejection, the applicant filed "Amendment 'A'" on June 21, 1994. Ex. B at Bates WS 130. After adding four additional claims, the applicant responded to the examiner's rejection, stating: "Applicant's automatic drilling system utilizes all four drilling parameters to control a drilling operation even though they are interrelated by selecting one parameter as the primary control parameter and then using the remaining parameters as secondary or back-up controls." Id. at 131 (emphasis added). The applicant further explained that "the secondary controls will only override the primary control when an undesirable drilling condition not registerable by the primary control parameter occurs." Id. at 132. Thus, in

response to a rejection of its patent application, the applicant highlighted the specific teaching that allegedly overcame the enabling deficiency under 35 U.S.C. § 112. However, on August 10, 1994, the patent examiner again rejected the application for failing to adequately teach how to make or use the invention. Ex. M at Bates WS 137. The

examiner specified that the application "fails to teach for example how the drilling fluid affects the bit weight and how and when the secondary control overrides the primary control." Id. at 138. Moreover, the examiner "could not see there exists any overriding mechanism available which would allow one control unit to override the others." Id. at WS 141. And, the "applicant fails to teach in reasonable technical details with respect to the principles regarding how the

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primary control and the secondary control are selected under a specific drilling environment, when such control system is to be implemented without undue experimentation to one of the ordinary skill in the art." Id. at 141. In response to this second rejection, on November 7, 1994, the applicant filed its Amendment After Final Under 37 C.F.R. §1.116, which further explained: "The placement of regulators 200-203 in series permits the selection of one parameter as primary control..." Amendment After Final Under 37 C.F.R. §1.116, at Bates WS 147 (attached hereto as Exhibit N). The Applicant submitted drilling logs and provided examples, concluding: "In view of Applicant's description of each of regulators 200-203 and the discussion of a primary parameter and secondary control parameters, Applicant respectfully submits that a person of ordinary skill in the drilling art could make and practice the claimed invention..." added). It was only after this second filing that the examiner was convinced that the application was sufficiently enabled to overcome a deficiency under 35 U.S.C. § 112. In fact, the examiner stated "[i]n view of the amendments and the arguments filed on November 7, 1994, the prior claim rejections under 35 U.S.C. § 112, and 35 U.S.C. § 103 [were] hereby withdrawn." Notice of Allowability at Bates WS 156, (attached hereto as Exhibit O). In other words, on two occasions Bowden was forced to reinforce the separateness of the regulators and their independent ability to provide exclusive or primary control, in order to overcome the examiner's objections. Varco cannot now walk away from the very distinction that persuaded the Examiner to determine that the Claims were sufficiently enabled. See e.g., Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 736 (2002) (any Id. at 149 (emphasis

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amendment made to overcome objections as to utility, novelty, nonobviousness, or that the patent application fails to describe, enable, or set forth the best mode of carrying out the invention, may give rise to prosecution estoppel); Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1327 (Fed. Cir. 2003) ("the prosecution history is always relevant to claim construction,"). Although the prosecution history may not be used to infer the intentional narrowing of a claim absent the applicant's clear disavowal of claim coverage, id., in this case the Applicant was not disavowing breadth, but explaining attributes that were already written into the claims as phrased and taught in the specifications. Because the examiner found the

explanations necessary and persuasive, they are particularly significant to the proper construction. Simply put, there is nothing in the Bowden Patent disclosure that teaches one of ordinary skill in the art to develop or practice a "regulator" that simultaneously considers data from multiple Parameters. That is something the operator must sort out by calibrating the separate, distinct regulators in the manner taught. To lend meaning to all of the words, consistency both within Claim 1 and between that Claim and the rest of the Patent, and harmony with the specifications and prosecution history, "a drilling fluid pressure regulator," if not strictly limited to numeric designation 200, should be construed as "a device, connected and dedicated to the drilling fluid pressure sensor, that responds to the signal from that sensor to adjust the flow of an electrical, mechanical, hydraulic or pneumatic signal in a predetermined fashion." 7

7

Because the balance of the clause regarding the function of the drilling fluid pressure regulator shares common terms with regard to measuring changes, Pason's discussion of those terms is found in Section V, infra at p. 24.

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B.

A Relay Is a Device, Attached and Dedicated to the Drilling Fluid Pressure Regulator, Which Performs Responsive Signal Processing.

Pason does not contest the essence of the relay element as proposed by Varco: "a device that communicates an electrical, mechanical or pneumatic signal." Based upon the Federal

Circuit's discussion of the "relaying" step, Pason does not believe that the relay element can be properly limited to the specific, pneumatic valves that operate as relays in the preferred and alternate embodiments. But Pason contends that the relay element must, on the claim language itself, also meet three requirements: it must be "coupled" or "attached" to the "drilling fluid pressure regulator;" it must be "responsive" to the output signal of the regulator (i.e., the signal that represents changes in drilling fluid pressure) and therefore must sit after the drilling fluid pressure regulator; and it must "supply" a drill string control signal at the output thereof. It is,

accordingly, something more than a wire or hose connecting the drilling fluid pressure regulator to the drill string controller, and must perform some level of responsive processing and signal supply. Otherwise, the drilling fluid pressure regulator could simply be attached or coupled to the drill-string controller, and the designation of a "relay" as a separate, structural component would be extraneous. Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. at 29 (1997) ("each element contained in a patent claim is deemed material to defining the scope of the patented invention"). Moreover, although the "relay" element in Claim 1 does not contain the extra description of being a "drilling fluid pressure" relay, Pason contends that it is also taught as and should be limited to a device dedicated to the drilling fluid pressure regulator. Again, Claim 9, which deals with the dedicated regulators for two Parameters (bit weight and fluid pressure), calls for

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separate "relays" for the two regulators, called "said first relay" and "said second relay," respectively. Ex. A, at C. 26, l. 42-50. The specifications teach that dedication, and the declarative certainly of function would be impossible without it. See supra p. 17-18. As Mr. Brett explained in his Responsive and Supplemental Report: This dedication appears to be a critical part of the teaching of the '142 patent, which enables the system to control the drill string release independently and exclusively with either parameter and avoid the interference (and perhaps inconsistent control signal) generated by the other, a conclusion expressed in both the disclosures, C. 20, l. 44-49 (...when more than one of the regulators 200-203 is utilized to control a drilling operation, one regulator is adjusted to maintain a desired drilling parameter, while the remaining regulators act as secondary controls") and during Mr. Bowden's the prosecution of the patent. Ex. J, at 8-9. Accordingly, the proper construction of the relay element is a dedicated device, attached at the output of the drilling fluid pressure regulator, capable of generating and communicating an electrical, mechanical, pneumatic or hydraulic signal responsive to the signal of the drilling fluid pressure regulator. C. The term "Drill String Controller," Although Not Taught Completely is a Device Attached to the Relay and Able to Control the Rate of the Downward Movement of the Drill String. The entire invention of the Bowden Patent is "a drill string controller," as that combination of words would be commonly understood and Varco would have them construed: a system or device that controls the release of a drill string. As with the drilling fluid pressure regulator, Varco has opted for a construction sufficiently broad to encompass the entire invention. Varco Br. at p. 48. 8 Indeed, in the European iteration of the Bowden Patent, where

8

In its proposed construction, Varco again drops words from the phrase that allegedly describes the structural element claimed. See Varco Br., at p. 48-49, treating "drill sting" as one topic and "controller" as a second. Under

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protocol dictates numerical designation of the structural element, the entire autodriller device is labeled as the "drill string controller." See EP 0 694 114 B2, at. p. 16, C. 30, l. 6, and Fig. 1, (attached hereto as Exhibit P). Despite these discrepancies, Pason highlighted the phrase to the Court's attention merely to contrast the drill string controller to the drilling fluid pressure regulator claimed, and would accept a broad construction that included any device or system able to control the advancement of the drill string during drilling operations, with the caveat that such device or system must be attached or coupled to a relay as defined in the claim. V. CONSTRUCTION OF FUNCTIONAL TERMS IN CLAIMS 1 AND 11 A. "Measuring Change" and "Increasing" or "Decreasing the Rate of Release" Must be Defined Uniformly and Confined to A Single Meaning Consistent With the Claim Language and Prosecution History.

In Claim 1, the function of the drilling fluid pressure regulator is described as "measuring changes in drilling fluid pressure" and "outputting a signal representing those changes." Ex. A. The two method claims at issue also refer to the production and function of signals representing changes in drilling fluid pressure. Claim 11: "producing a signal in response to changes in drilling fluid pressure, said signal representing the changes in drilling fluid pressure," and Claim 14: "producing a first signal in response to changes in drilling fluid pressure, said first signal representing the changes in drilling fluid pressure." Id. Varco asserts that the concept of measuring has common meaning--"finding out, determining or ascertaining," a construction that Pason does not dispute; nor does Pason contest

Varco's methodology, how does the claim: "a drill string controller coupled to said relay wherein a decrease in drilling fluid pressure...operates said drill string controller to effect an increase in the rate of release of said drill string..." read any differently from: "a controller coupled to said relay wherein a decrease in drilling fluid pressure ... operates said controller to effect an increase in the rate of release of said drill string?"

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the application of that meaning to all three Claims at issue. The difficulty in construction lies in the combination of that determination with the phrase "changes in drilling fluid pressure" in Claims 1 and 11, the generation of a signal "representing" those changes, and the effect those measured changes must have within the control scheme. In the Bowden Patent, the measurement function is performed by the sensors, in the case of Claim 1, the drilling fluid pressure sensor specifically. Id. at C. 5, l. 3-37 (describing two different mechanisms to measure pressure and send a signal representing that measurement); id. at C. 10, l. 9-10 ("drilling fluid pressure sensor 34 measures..."). As pressure increases or decreases, the measurement and hence the signal the sensor produces will "change" correspondingly. But, as Varco concedes, and the language of the three Claims requires, the determination of a value is not in and of itself measuring change--for that a benchmark is needed. There are two candidate's based upon the Patent's teaching: change from the set point calibrated by the operator, and change from a previous value. Varco claims both. Varco Br. at 33, 65. And the Patent's disclosure supports the notion that the signal output by the drilling fluid pressure regulator, and referenced in the method claims as the signal "representing changes," will capture both. 9

9

Any time that the pressure exceeds the optimum target set by the operator, the Bourden tube is deflecting the top of the flapper valve to the right of the original set point, the flapper pivots around pin 224, deflects away from nozzle 221, and reduces air flowing from nozzle 216. Ex. A, at Fig. 3, C. 10, 1. 4-60. The converse occurs when pressure drops below the target. Id. And until adjusting screw 214 is set at a target, the Bowden invention does not function to control pressure. Id. at C. 8, l. 62 ­ C. 9, l. 24. Yet the mechanism taught also varies over time. Assume a target of 1500 psi is set and calibrated. At 1400 psi the flapper deflects to the right at pivot 220, resulting in more air to valve 236, and correspondingly more air to the drill string controller, in the preferred embodiment lifting the brake. The drill string accelerates, placing more force on the bit, driving pressure up. At that point, the sensor detects the increased pressure, the flapper deflects to the right of where it was a moment before, and airflow to the motor controlling the brake is constricted, lowering the handle to increase the braking force and decelerate the drill strings movement down the borehole.

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The subsequent claim language, however, cannot be read consistently with the multiple interpretation of the changes being measured and represented in the signal. Claim 1 states that when this signal representing changes shows a "decrease" in drilling fluid pressure, the Bowden invention will "effect" an increase in the rate of release, and vice versa for a signal representing a measured decrease in pressure. Ex. A. Pason agrees with Varco that "release" would be commonly understood to mean movement down the borehole, and the rate of release would be the equivalent of speed or velocity--movement over time. Accordingly, an increase in the rate of release (increase in speed or velocity) would be acceleration, and a decrease would be deceleration. A simple hypothetical demonstrates that Claims 1 and 11, under Varco's approach, is trying to use a single phrase to describe both an apple and an orange, when they are not at all the same. Assume the operator sets a target drilling fluid pressure of 1000 psi. At that pressure, the valves, motor and brake are adjusted to release the drill string at 10 ft./min., and every 100 psi drop in pressure is calibrated to add one ft./min. to the rate of release, with the opposite occurring upon increases in pressure. Irrespective of time, using only the set point as the target against which changes are measured, there would be a linear depiction of the operation described in Claims 1 and 11: Drilling Fluid Pressure 800 psi 900 psi 1000 psi-target 1100 psi Rate of Release 12 ft./min. 11 ft./min 10 ft./min 9 ft./min

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1200 psi

8 ft./min

Now, add the component of change over time, from T1 to T5.

Time T1 T2 T3 T4 T5

Drilling Fluid Pressure 1000 psi 800 psi 900 psi 1200 psi 1100 psi

Rate of Release 10 ft./min. 12 ft./min 11 ft./min 8 ft./min 9 ft./min

From T1 to T2, the drilling fluid pressure decreased (from both the set point and the prior reading), and the system operated to increase (Claim 11) or effect an increase (Claim 1) in the rate of release. From T2 to T3, the drilling fluid pressure, as measured against the set point, was still reflecting a negative change or decrease, but rate of release decreased (from 12 ft./min. to 11 ft./min.), which is the right result if changes are measured over time but exactly the opposite of the Claims as they relate to the changes from the set point. A similar discrepancy occurred from T4 to T5, where changes from the set point should have called for a deceleration of the drill string, but it in fact accelerated. Pason concedes that it may have been possible, based upon the specifications, for the Bowden Patent to claim the changes and the effect of those changes separately, such that one of ordinary skill in the art might understand that two functions are underway: one time-based and

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the other in reference to a set point. But even the inventor was unable to sensibly convey the changes measured, signals representing those changes, and the effect they would have: Q. Okay. You go on in claim 14, after you've measured drilling fluid pressure and bit weight, to talk about producing a first signal in response to changes in drilling fluid pressure. The -- by "changes in drilling fluid pressure," what do you mean? A. Well, you've got the -- the input of the pump pressure measurement to the 210 tube -- the regulator 200 assembly produces the signal in response to changes in that drilling fluid and the first signal representing those changes. Q. I guess my question is: Changes relative to what? A. To the changes in drilling fluid pressure. Q. Changes in drilling fluid pressure. What's it changing? Changing from one value to another or changing with respect to a target or changing over time? A. Changing one pound plus or minus or more. Any changes in the drilling fluid pressure affects a change in the 210 tube which affects a change in the regulator output. There's an input and then there's an output --a single output which goes to the 244. Ex. C, Bowden Dep., at 100:14-101:10. To make the absolute claim, as the Bowden Patent does, that a given change in pressure will accelerate or decelerate the drill string, requires the adoption of only one function operating dynamically as described and claimed. The same language can't do double duty, meaning one thing from one perspective and a different thing from the other. Where the claim term is ambiguous, having two plausible meanings, there is some authority for adopting the narrower construction if it is enabled. Athletic Alternatives, Inc. v. Prince Manufacturing, Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996). Pason is at a loss in this case to determine which construction represents the narrower reading, and would urge the Court to consider that the claims might be invalid due to indefiniteness. Indefiniteness, as opposed to resolvable ambiguity, should have a

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place in Markman hearings, and there have been rare instances in which a Markman hearing resulted in a holding of invalidity due to indefiniteness of the construed claim. Amgen Inc. v. Hoechst Marion Roussel, Inc., 126 F. Supp. 2d 69, 83-84 (D. Mass. 2001), aff'd, 314 F.3d 1313, 1334-37 (Fed. Cir. 2003). And, it is an old axiom that patents "are to receive a liberal

construction, and under the fair application of the rule, ut res magis valeat quam pereat, are, if practicable, to be so interpreted as to uphold and not to destroy the right of the inventor." Turrill v. Mich. S. & N. Ind. R.R., 68 U.S. 491, 510 (1863) (emphasis added). However, the phrase "if practicable" cannot be ignored, and courts should not rewrite claims to preserve validity. See, e.g., Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). ("[I]f the only claim construction that is consistent with the claim's language and the written description renders the claim invalid, then the axiom does not apply and the claim is simply invalid."). B. The Proper Interpretation of Claims 1 and 11 Involve Both Continuity and Certainty of Result.

Should the Court elect to somehow preserve the Claims by selecting the drilling fluid pressure changes to which they apply, 10 it must be done with an eye toward the precise, declarative language used. The invention Bowden teaches works with the assurance of a

mechanical device, and the words of Claims 1 and 11 reflect that design truism. The drilling fluid pressure regulator, coupled to the drilling fluid pressure sensor, measures changes and outputs a signal representing those changes. A measured decrease in pressure produces a signal

10

Although Pason is indifferent to the choice, the prosecution history in Europe suggests that change over time, rather than from a set point, is the novelty that Varco sold and the examiners bought. See Interlocutory Decision in European Opposition Proceedings, December 9, 2004, at p. 5 (attached hereto as Ex. Q) ("It results therefore that all of the documents on file [prior art] ... disclose systems intervening whenever drilling parameters exceed given predetermined values. All of the claims [of the Bowden Patent] presently on file relate at the contrary to controlling methods or devices which react directly to the increase or decrease of controlling parameters, without waiting for said control parameters to exceed predetermined values.").

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that operates the drill string controller to "effect an increase in" or "increase" (accelerate) the rate of release. There is nothing equivocal in either the specifications or the language used to claim what is taught. The certainty of these declarative terms is further embedded within the prosecution history. In response to the European opposition, Varco went to great lengths to distinguish its invention and claims from the prior art, and in particular the Dillon Patent, which in 1935 provided a method for detecting a rise in fluid pressure, capturing that rise in the generation of variable electronic signal, and transmitting that signal to a drill string controller, which was only activated when a certain limit was reached. See Varco's Responses to Opposition (attached hereto as Exhibits R and S). The European Patent Office, although initially skeptical, was persuaded by the distinction: D1 [Dillon] discloses an automatic drilling system responsive to parameters as drilling fluid pressure ... A drop in drilling fluid pressure exceeding a given amount causes the drill string to be lowered at a predetermined rate until the target fluid pressure is reestablished. ***** The controller according to the present claims at the contrary does not react to changes of controlling parameters exceeding a given value, but to the mere fact that change in the controlling parameter takes place. That behaviour further implies that that the drill string can be lowered at a plurality if different rates, not only one, predetermined rate. Ex. Q, at p. 4. Facing a similar challenge with respect to the Varney Patent on reexamination in the United States, Varco made the same arguments. Ex. G. Varney, like Dillon, detected pressure 11

The pressure Varney measured was drawn from the compressor and expansion of a telescoping joint. Although Varco noted this difference in the re-examination, it did not attempt to limit its claims to the location of the fluid pressure sensor.

11

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and generated an electronic current that varied with that pressure. Under Varney, when the pressure fell below a set limit, the current flipped a switch that "relax[ed] the hoist brake 134 for lowering the drill string," and a converse rise in pressure "tightened the hoist brake 134 to terminate the lowering of the drill string." Ex. F, Varney Patent at C. 10, l. 12-15. Varco labeled this configuration as a classic "on-off" switch, which did not reference or teach increasing or decreasing the rate of release. Ex. G, Patent Owner's Statement, at p. 10-11. In a somewhat cryptic opinion, the USPTD agreed: While Varney shows drill string control based upon drilling fluid pressure that relaxes or tightens the drill string. Varney does not teach or suggest effecting an "increase in the rate of release" or "decrease in the rate of release" [as Bowden claims] Reexamination Reasons for Patentability/Confirmation, at p. 2 (Nov. 2005), (attached hereto as Exhibit I); see also Supplemental Report of Gregg Perkin, at p. 10 (attached hereto as Exhibit T) ("The Miller patent taught a T-joint system similar to Varney. In this respect, Miller taught away from the concept of using drilling fluid pressure to control the ROR of the drill string by stating that providing a 'intermittent type positioning means is preferred over a continuously operating means.'"). 12 Varco's expert has testified that the concept of "rate of release," to one of ordinary skill in the art, equated to the position of neutral point on the drill string, i.e., the point at which the restriction on the drill string by whatever device is used to release the string is equal to the weight of the string below. Perkin Dep., at 28:23-32:16 (attached hereto as Exhibit U). Pason's expert agreed with that testimony. Brett Deposition Supplement, at pp. 5, 7 (attached hereto as Exhibit V). Accordingly, to at least these two individuals of ordinary skill in the art, an
12

See also Ex. T, Perkin Dep., at 120:23-124:4 (explaining this distinction).

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