IP Law Daily PTO’s overbroad construction led to improper rejection of drilling tool patent claims
Tuesday, September 26, 2017

PTO’s overbroad construction led to improper rejection of drilling tool patent claims

By Cheryl Beise, J.D.

The Patent Trial and Appeal Board’s construction of the term "body" disclosed in multiple claims of a downhole drilling tool patent has been reversed by the U.S. Court of Appeals for the Federal Circuit as unreasonably overbroad and contrary to descriptions in the patent’s specification. The Board’s rejection of the challenged claims following inter partes reexamination was reversed because the Board’s anticipation and obviousness findings necessarily depended on the erroneous claim construction (In re Smith International, Inc.,September 26, 2017, Lourie, A.).

Smith International, Inc. ("Smith") owns U.S. Patent 6,732,817 ("the ’817 patent"), entitled "Expandable Underreamer/Stabilizer," which is directed to a downhole drilling tool for oil and gas operations. The ’817 patent describes an "expandable tool 500" having "a generally cylindrical tool body 510 with a flowbore 508 extending there through" and "one or more moveable, non-pivotable tool arms 520."

In 2012, Smith’s corporate parents, Schlumberger Holdings Corp. and Schlumberger N.V. (together, "Schlumberger"), sued Baker Hughes Inc. in the United States District Court for the Southern District of Texas. Hughes requested ex parte reexamination of claims 28–37, 39–46, 49, and 50 of the ’817 patent, which the PTO granted.

The examiner allowed new claims 82–91, 101, and 102, and rejected claims 28–36, 39, 40, 42, 79–80, 93–98, and 100 as anticipated by International Publication No. WO 00/31371 ("Eddison"), claims 43–46, and 49 as obvious over Eddison in view of U.S. Patent 6,059,051 ("Jewkes"), and claims 28, 40, 41, 43, 50, 80, 81, 93, and 99 as obvious over Eddison, European Publication No. EP 0 246 789 ("Wardley"), and Jewkes. The Board affirmed the examiner’s rejections. Eddison discloses a drilling tool having a "mandrel" that "extends through the body" and "provides mounting for a cam sleeve 28."

On appeal, Smith challenged the Board’s construction of the term "body" and its anticipation and obviousness determinations.

Meaning of "body." In affirming the examiner’s rejections, the Board determined that the term "body" is a "generic term such as ‘member’ or ‘element’ that by itself provides no structural specificity." The Board reasoned that the patentee did not act as a lexicographer, and that the specification neither defines nor precludes the examiner’s reading of the term "body." The Board rejected Smith’s argument that the person of ordinary skill in the art would understand the term "body" as a distinct element from other components.

On appeal, Smith argued that the term "body" should be interpreted as an "outer housing." The PTO contended that, under the broadest reasonable interpretation, "body" may be understood as "the main cylindrical portion of the device that defines the central conduit."

The Federal Circuit concluded that the Board’s construction of "body" was unreasonably broad. While some of the claims at issue recite a broad term "body," it was undisputed that the ’817 patent specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring. "The correct inquiry in giving a claim term its broadest reasonable interpretation … is an interpretation that corresponds with what and how the inventor describes his invention in the specification," the court explained. The Board’s flawed reasoning in this case, would result in adoption of "the broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise."

The Board compounded its error by finding that the term "body" in the ’817 patent claims was broad enough to encompass the "body," "mandrel," and "cam sleeve" components disclosed by Eddison. Therefore, the Board’s anticipation and obviousness findings—all of which depended on an incorrect claim construction in relation to the Eddison reference—were unsupported by substantial evidence. It was undisputed that the other cited references did not teach or render obvious the missing elements, the court noted.

The Board’s rejections of all of the appealed claims (28–36, 39–46, 49, 50, 79–81, and 93–100) were accordingly reversed.

The case is No. 2016-2303.

Attorneys: John R. Keville (Winston & Strawn LLP) for Smith International, Inc. Nathan K. Kelley, U.S. Patent and Trademark Office, for Joseph Matal.

Companies: Smith International, Inc.

MainStory: TopStory Patent FedCirNews

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