Key Takeaway: Nine Energy Service successfully appealed a jury verdict of infringement of a NCS Multistage patent. The decision highlights how statements in a patent specification that explicitly state that features are not limited to standard or commonly used size ranges can broaden the interpretation of claim elements relating to features that have industry-standard dimensions.
NCS MULTISTAGE INC., NCS MULTISTAGE, LLC V. NINE ENERGY SERVICE, INC.
Before Reyna, Hughes, and Cunningham. Appeal from the United States District Court for the Western District of Texas
NCS Multistage (“NCS”), a supplier of oilfield equipment, accused Nine Energy Service’s (“Nine”) BreakThru Casing Flotation Device of infringing claims of an NCS patent for a tool used to insert a long pipe section into the bottom of a wellbore. After a jury verdict of infringement, the district court entered final judgment. On appeal, the Federal Circuit vacated the district court’s judgment and remanded the case for a new trial.
We recently wrote, on our Litigation Blog, in detail on the claim construction of “internal diameter”, the issue of NCS’s 2012 sale of its Airlock device to a third party, and the district court’s exclusion of testimony. Here, we review the court’s interpretation of the term “casing string” and consider implications for drafting patent applications covering products having industry-standard dimensions.
The Federal Circuit held that the district court incorrectly construed the claim term “casing string” as requiring a pipe that is “customarily at least 4.5 inches in outer diameter.” The court stated this construction improperly imposed a size limitation that was not supported by the patent’s specification, a form of intrinsic evidence of primary importance in construing a term’s meaning. The specification of NCS’s patent expressly stated that other dimensions were possible and did not clearly disavow casing strings having outer diameters smaller than 4.5 inches.
The court noted that “to act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning. . . . To constitute disclaimer, there must be a clear and unmistakable disclaimer,” citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The court also noted that extrinsic evidence showing that industry practice treats casing strings as commonly 4.5 inches or larger cannot overcome the patent specification’s explicit indication that casing strings are not limited to a particular size.
The court concluded that the district court’s claim construction defining a casing string as being customarily greater than or equal to 4.5 inches in outer diameter was an error that “hinted to the jury how to resolve the factual question of whether the TDP-PO tool was ‘configured for connection in-line with the casing string’ that was itself ‘intended to line the walls of a drilled well.’” The court remanded the case for a new trial, in part, to consider infringement under the correct claim construction.
Therefore, patent applications that describe and claim features having industry standard dimensions or that commonly fall within a specific range of values may benefit from clarifying that the features are not limited to those standard or commonly used ranges, preventing such features from being narrowly construed to only encompass the industry standard dimensions. Such statements may be further strengthened by clarifying that while the example size or sizes are common, other dimensions are possible.
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