In Schoeller Bleckmann Oilfield v. Churchill Drilling Tools U.S., No. 2016-1494 (Fed. Cir. November 9, 2016) (non-prec.), the court affirmed the Board’s IPR decision of unpatentability of claims directed to oil-drilling equipment. The court refused to construe the challenged claims as limited to a disclosed embodiment, rejecting the patentee’s argument that the claim term “ball-like” was given an implicit definition in the specification.
The challenged patent is directed to a mechanism for allowing and restricting the flow of liquid through a drill string to activate and deactivate a downhole tool. In challenged claims 17 and 18, the mechanism includes a deformable activator having a “ball-like portion.” On appeal the parties disputed whether the term “ball-like portion” was limited to a deformable ring shown in the figures or whether it also encompassed a deformable ball. The patentee argued that “ball-like” should be construed to exclude a ball because the term was used only when discussing an embodiment having a seal formed by a deformable ring.
The court rejected this argument, stating that claim 17 did not require a seal to be formed. The court noted that it had repeatedly stated “that it is inappropriate to construe claim terms as limited to preferred embodiments without a clear intent to redefine the term or a clear disavowal of claim scope.” (p. 7). The court referred to language in the specification in which the challenged patent appears to allow a ball as a species of the “ball-like portion” by referring to a “ball.” Further, the court noted that the patent repeatedly uses the phrase “ring” or “deformable ring” to refer specifically to element 51 in select figures, suggesting that the patentee had a narrow term readily available from the specification if the patentee had wanted to limit the scope of claims 17 and 18 to that embodiment.
[I]t is inappropriate to construe claim terms as limited to preferred embodiments without a clear intent to redefine the term or a clear disavowal of claim scope.
The court distinguished In re Abbott Diabetes Care, 696 F.3d 1142 (Fed. Cir. 2012), in which the term “electrochemical sensor” was construed under the BRI standard to include external cables and wires connecting the sensor to its control unit. In Abbott, the court had determined that a narrow construction was appropriate because: (a) “the claims themselves suggest[ed] connectivity without the inclusion of claims or wires”; (b) “every embodiment disclosed in the specification show[ed] an electrochemical sensor without external cables or wires”; and (c) “Abbott’s patents…disparage[ed] sensors with external cables or wires.”
In distinguishing Abbott, the court noted that the challenged patent in this case did not disparage the use of a deformable ball as a “ball-like” portion and that the claim language did not require or imply that the “ball-like” portion formed a seal. Further, an alternative embodiment disclosed in the challenged patent disclosed use of a ball to achieve flow restriction.
Practitioners engaged in claim construction should understand based upon a comparison of this decision and Abbott that whether a claim term will be construed narrowly under the broadest reasonable construction standard will depend upon the claim language, the breadth of embodiments depicted and described in the specification, and whether the patent has disparaged certain features that are relevant to the construction of the claim term.