## United States Court of Appeals for the Federal Circuit

03-1519, -1563

FRANK’S CASING CREW & RENTAL TOOLS, INC., Plaintiff-Appellant,

v.

WEATHERFORD INTERNATIONAL, INC., Defendant-Cross Appellant.

Donald R. Dunner , Finnegan, Henderson, Farabow, Ga rrett & Dunner, L.L.P., of Washington, DC, argued for plaintiff-appe llant. With him on the brief was Kelly A. Casey . Of counsel on the brief was Dennis D. Brown , Fellers, Snider, Blankenship Bailey & Tippins, P.C., of Tulsa, Oklahoma. Paul E. Krieger , Fulbright & Jaworski, L.L.P., of Houston, Texas, argued for defendant-cross appellant. With him on the brief were William J. Boyce , and Heather K. Fleniken . Of counsel on the brief was Joseph J. Ferretti , Crowe & Dunlevy P.C., of Oklahoma City, Oklahoma. Appealed from United States District Cour t for the Western District of Oklahoma Judge Stephen P. Friot

## United States Court of Appeals for the Federal Circuit

03-1519, -1563 FRANK’S CASING CREW & RENTAL TOOLS, INC., Plaintiff-Appellant,

v. WEATHERFORD INTERNATIONAL, INC., Defendant-Cross Appellant.

__________________ _________ DECIDED: November 30, 2004

__________________ _________ Before RADER, Circuit Judge , FRIEDMAN, Senior Circuit Judge , and DYK, Circuit Judge

. RADER, Circuit Judge

. The United States District Court for t he Western District of Oklahoma granted summary judgment of noninfringem ent to Weatherford Internati onal, Inc. (Weatherford). Frank’s Casing Crew & Re ntal Tools, Inc. v. Weatherford Int’l, Inc. , No. CIV-01-104-F (W.D. Okla. May 28, 2003). The district court determined that Weatherford’s StabMaster, a remotely controlled casing st abbing device mounted in a derrick, does not infringe Frank’s Casing Crew & Rental Tools, Inc.’s (Frank’s) U.S. Patent No. 5,049,020 (the ’020 patent). Because the district cour t correctly decided that the “means for selectively pivoting” clause must necessarily include a lift plate located under the boom (not present in the StabM aster), this court affirms.I. The ’020 patent, entitled “Device for Po sitioning and Stabbing Casing from a Remote Selectively Variable Location,” clai ms a system for ha ndling (i.e., “positioning and stabbing”) sections of well casing s u spended within a derrick during oil fiel d operations. ’020 patent, col. 1, ll. 19-30. Well casing lines a we ll bore to facilitate removal of oil or gas. During c o mpletion of a well, t he derrick suspends sections of casing from a pulley, known as a crown block, and then lowers the section for connection to another casing secti on already in the well bore. Id. at col. 8, ll. 38-44. The test of engin eerin g skill is to a lig n and connect the sections properly. Id. at col. 2, ll. 3-11. Because the s e ctions of casing may be up to thirty-six inches in diameter and weigh 300 pounds per foo t, manual alignment is diffic u lt and pos es a risk of injury. Id. at col. 6, ll. 8-9; co l. 7, ll. 2 4 -25 ; col. 18, ll. 29-34. T he ’020 patent addresses these problems with a remotely controlled device for aligning the casing sections. The ’020 patent’s stabbing apparatus is less bulky than prior art devices. Thus, the ’020 s ystem mounts the apparatus on the derrick wit hout interfering with other operations. Id. at col. 5, l. 62 - col. 6, l. 3. The ’020 patent teaches that the invention has “at least three major interconnectable subassemblies which can be easily taken apart to facilitate transport, st orage and operative mounting of the entire appa ratus at a selected location in a drilling derrick an d above the floor of the derrick.” Id. at col. 7, ll. 1-5. Additionally, the inv ention has an “extendable boom which carries jaws at one end for engaging the casing, and which is hydrau lically movable in an up-and-down pivoting motion or in a s i de-to-side motion, or both s u ch motions simultaneously.” Id. at col. 7, ll.
28-33.

03-1519,-1563 2The claimed stabbing apparatus thus rais es and lowers the boom holding the casing sec t ion. The prefe rred embodiment for performing this function includes a hydraulic piston and c y linder subassembly 96 , which is connected to the boom through a plate structure made up of a diagonal boom plate 116, a forwardly ext ending boo m plate 118, and a lateral lift plate 120, 1 which are shown in Figures 2 and 3, reproduc ed below. Id. at col. 11, ll. 5-18.

1 The district court and the parties referred to these plates colle ctively as a “lift plate.”
03-1519,-1563 3When not in use, an operator may lift t he stabbing apparatus up out of the way by activating the boom. Frank’s asserted cl aims 6, 7, and 8 against Weatherford, each of which involves pivoting the boom up and down but does not require yawing (side-toside movement). Claim 6, for instance, states 2 : 6. A system for making up a v e rtically extending string of interconnected casing sections comprising:

. . . . a derrick . . .

. . . . a derrick bracket subassembly detachably connected to a side of said derrick; a boom and jaw subassembly detachably connected to said derrick bracket subassembly, and including:

. . . . means for selectively pivoting said boom about said horizontal axis to raise a nd low e r the second end of sa id boom which carries said ja w s , and to elevate said boom to a location w h ere it extends in a generally vertical direction ;

. . . . a remote control assembly detachabl y connected to said boom and jaw subassembly . . . Id. at col. 22, l. 20 - col. 23, l. 39 ( e mphasis added) . W h ile non e of the foregoing c l aims requires yawing, other clai ms of the ’020 pat ent do include suc h a limitatio n. Id. at col. 18, ll. 60-64 (claim 1); col. 19, ll. 42-43 (claim 2); co l. 20, ll. 45-51 (claim 3); col. 22, ll. 13-19 (claim 5). The parties presented the trial court tw o limitations for claim constructi on: “means for selectively pivoting s a id boom about said horizontal axis to raise and lower the second end of s a id boom which carries said jaws, and to elevate said boom to a

2 The “means for selecti v ely pivoting” limitatio ns in claims 6, 7, and 8 are identic al with the exception that the locati on where the boom “extends in a vertical direction” is identified as a “parked” locati on in claim 8. B e cause the parties agree that the addition of “parked” does not affect t he claim construction of the lim itations in a way that is pertinent to this case, this court tr eats these limitations identically.
03-1519,-1563 4location where it ext ends in a generally v e rtical dire ction” and “detachably.” Frank’s Casing Crew & Rental Tools, In c. v. Weatherf ord Int’l, Inc. , No. CIV-01-104-F, slip. op. at 2-8 (W.D. Okla. July 22, 2002). The parties and the di strict court agreed that the “means for selectively pivoting” limitation is in means-plus-functi on format, governed b y 35 U.S.C. § 112, ¶ 6. The par ties als o agreed on t he function of the me ans-plusfunction limitation, namely “selectively piv o ti ng said boom about said h o riz ontal a x is t o raise and lower the second end of said boom which carries said jaws, and to elevat e said boom to a loc a tion wher e it extends in a gener ally vertical direction.” ’020 patent, col. 22, ll. 61-66. The parties disputed, however, t he structure corresponding to the claimed function disclosed in the specificati on. For Fr ank’s, the c o rresponding structure is the piston and cylinder subass e mbly; for Weatherford, the struct ure includes the lift and boom plates disclosed in t he preferred embodiment of the invention. T h e district court agreed with Weatherford: [The “means for selectively pivoting”] must necessarily include a lift plate located under the boom. The boom rest s on the lift plate, and the boom is not connec ted to the lift plate. T he boom moves back-and-forth across the lift plate. The boom is raised and lowered by a piston and cylinder that operate against the lift plate, and not directly against the boom. Frank’s Casing Crew , No. CIV-01-104-F, slip. op. at 14 (W.D. Okla. July 22, 2002). Frank’s dis agrees, arguing the district cour t improperly imported st ructure unnecessary to perform the recited function of pivoting the boom about the horizont al axis . Instead, as noted, Frank’s as serts that the relev ant corresponding structure is the piston and cylinder subassembly. In reaching its interpretation, the distri ct court also examined the prosecution history of the ’020 patent. Id. The ’020 patent is a conti nuation of Application Ser. No.

03-1519,-1563 5203,252, which issued as Pat ent No. 4,921,386 (the ’386 patent). During prosecution of the ’386 patent, the examiner required the applic ant to disti nguish the invent ion from the casing handling devic e described in U.S. Patent No. 3,840,128 is sued to Swoboda, Jr. et al. (Swoboda). The Swoboda device us ed a cylinder attached and under the boom for the lifting function. To distinguish the Swoboda device, the applic ant noted that it s position compromises its use: “[ a lifting cy linder,] located directly below the boom and directly connected thereto, [that includes] a yawing pist on and cylinder s u bassembly which extends at an acute angle to the longitudinal axis of the boom, and is a ttached at one end to a different part of the boom and jaw subassembly, and can cause the boom to cant or swing from side-to-side, simply cannot be used .” May 19, 1989 Amendment in respons e to March 3, 1989 PT O action in Application No. 203,252, at 41 (emphasis in original) (Amendment). In other words, a lifting cylinder direct ly connected to and located below the boom cannot be used with t he ’020 patent. The applicant also argued that the “spatial and positioni ng limitation” in Swoboda “i s overcome in the present invention by connecting the [ cylinder which lifts the boom] not directly to the boom, but by connect i ng it indir e ctly to the boom th rough sec u rement” to the lifting plate. Id. (emphasis in original). With respect to the claim term “detac hably,” Frank’s would giv e the word no special meaning, but read it to include no limitation involvin g the ease of detachability. Conversely , Weatherford argued “detachably” should be limited to par ts that can be easily and quickly taken apart or disconnected. The district court ruled “detachably” “means that the component or s ubassembly in question may be readily dis c onnected. ” Frank’s Casing Crew , No. CIV-01-104-F, slip. op. at 16 (W.D. Okla. July 22, 2002).

03-1519,-1563 6Following the district cour t’s claim construction, Fr ank’s filed a motion for summary judgment of infringement. Weather ford filed a cross motion for summary judgment of non-infringement. In granting s u mmary judgment of no literal in fringement, the district court found “that no reasonable jury could find an insubstantial difference between t he two raising and lowering mechani sms” of claims 6, 7, and 8, and of Weatherford’s StabMaster. Frank’s Casin g Crew , No. CIV-01-104-F, slip. op. at 26 (W.D. Okla. May 28, 2003). The court concl uded: “The two mechanisms represent two distinct structural approaches to performing essentially the same function [and] [e]ach approach has its adv antages and disadv antages.” Id. The district court also found n o infringement under the doctrine of equiv a lent s for the same reasons and no litera l infringement under § 112, ¶ 6. Finally, the district court ex pressly noted that the raising and lowering mechanism of the StabM aster was not based on “afte r-developed technology. ” Id. The district court also held that the prosecution hist ory of the ’386 patent “amounted to a disclaimer” of the “below-mounted and directly-attached lifting means.” Id. On appeal, Frank’s challen ges the district court’ s interpretation of the claimed “m eans for selectively pivoting” clause and the term “detachably” as well as the summary judgment of non-infringement. In a separate ruling, the di strict court denied Weatherfo rd’s request for attorney fees and c o sts, declining to find the case “exceptional” under 35 U.S.C. § 285. Frank’s Casin g Cre w , No. CIV-01-104-F (W.D. Okla. July 1 8 , 2003). Weatherford cross appea ls the district court’s finding that th is case was not exceptional.

03-1519,-1563 7II. This court reviews a district court's grant of a motion for summary jud g men t without def erence. Kemco Sales Inc. v. Control Paper s Co. , 208 F.3d 1352, 1359 (Fed. Cir. 2000). This court also reviews cl aim c onstruction without deference. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc); Markman v

. Westview Instruments, Inc. , 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d , 517 U.S. 370 (1996). Infringement, on the othe r hand, either literal or by equivalents, is a question of fact. RF Del., Inc. v. Pac. Keystone Techs. , Inc. , 326 F.3d 1255, 1266 (Fed. Cir. 2003). Thus, a tri a l court may determine infringe ment on summary judgm ent only “when no reasonable jury could find that every limitati on recited in the properly const r ued claim either is or is not found in the accused device.” Gart v. Logitech, Inc. , 254 F.3d 1334, 1339 (Fed. Cir. 2001). A patent applicant may limit the scope of any equiv alents of th e invention by statements in t he specification that disclaim coverage of subjec t matter. J & M Corp. v. Harley-Davids on, Inc. , 269 F.3d 1360, 1366 (Fed. Cir. 2001). Such limitations on the scope of equiv alents are legal determinat ions, which this court reviews without def erence. Id. Although the determination of w hether a case is e x c e ptiona l is a question of fact reviewed for clear error, this court reviews a dis t rict court’s decision to award attorney fees in an exceptional c a se only for abuses of dis c retion. Cybor Corp. , 138 F.3d at 1460.
III. As noted, the claim element “means for se lectively piv o ting” is in means-plusfunction format and governed by § 112, ¶ 6. A means-plus-function limitation requires a court first to identify the cl aimed function and then to determine the structure in the

03-1519,-1563 8specification that corres ponds to that function. Omega Eng’g, Inc. v. Raytek Corp. , 334 F.3d 1314, 1322 (Fed. Cir. 2003). The function of the limitat ion in claims 6 through 8 “selectively pivot[s] said boom about said ho rizontal axis to raise and lo wer the second end of said boom which carries said jaws, and [. . .] elevate[s] said boom to a locatio n where it extends in a general ly v e rtical direction.” ’020 patent, col. 22, l. 20 - col. 23, l.
39. The distric t court determined that the st ructure for this function necessa rily includes a lift plate under the boom. The s pecification ampl y supports the tr ial court’s identification of corr esponding structure. The only struct ure identified in the ’020 patent for performing the piv o ting function is the lift plate under the boom. Id. at F i gures 3-5, col. 11, ll. 5-18. The ’020 patent discloses a piston and cylinder subassembly, but any mention of that subassembly in c onnection wit h the lifting function includes a connection to the lift plate. Id. at Figures 3-5, col. 11, ll. 5-18. In other words, the specification o n occasion r e fers to the piston and cylinder s ubassembly without mentioning the lift plate, id. at Abst ract; col. 10, ll. 44-50; col. 11, ll. 21-23; col. 17, ll. 1 5 -22, but the only embodiment showing use of the piston and cy lind e r subassembly disclos es a direct connection to the lift plate. The district court correctly identified the lift plate a s necessary structure for the lifting function. The prosecution history suppor ts the distri ct court’s reading of the claims. In distinguishing the Swoboda devic e, the applicant stated t hat the lifting cylinder “ simply cannot be used ” when directly c onnected to the boom. Amendment at 41 (emphasis in original). This statement unde rscores the essentiality of the lift plate to the claimed function.

03-1519,-1563 9A cons istent reading of the c l aims al so supports the trial court’s c l aim construction. In other words, “the same terms appearing in dif f erent porti ons of the claims should be given the sam e meaning unles s it is clear from the spec ification an d prosecution history that the terms have different meanings at different portions of the claims.” Fin Control Sys. Pty, L t d. v. OAM, Inc. , 265 F.3d 1311, 1318 (Fed. Cir. 2001). If possible, this court construes claim te rms “in a manner that renders the patent internally c onsistent.” Budde v. Harley-Dav idson, Inc. , 250 F.3d 1369, 1379-80 (Fed. Cir. 2001). In this case, this court observes that the patent includes claims with a yawing function. The term “means for selectively pivoting” s hould hav e the same meaning in these claims as in c l aims 6 through 8, unle ss the specification gives som e reason t o expect otherwise. Because the specificat ion does not suggest any reason to depart from a consistent meaning, t he pivoting lim itation inc l udes a lift plate located under the boom. Otherwise the device could not perform a yawing function. This court recognizes that the principl e of consistenc y within claims operates within the f r amework of related claims. Epcon Gas Sys. Inc. v. Bauer Compressors, Inc. , 279 F.3d 1022, 1031 (Fed. Cir. 2002) (“The same term or phrase should be interpreted consistently where it appear s in claims of common ancestry.”); P i tney Bowes, Inc. v. Hewlett-Packard Co. , 182 F.3d 1298, 1310 (Fed. Cir. 1999) (“A patent’s written des cription can set forth more than one defin ition of a claim term.”). In this case, however, this court discerns a sufficient relationship between the claims with and without a y a wing function. In making this de termination, this court has read column 17, lines 19-29, of the ’020 patent . This pa ssage states that t he “piston and cylinder

03-1519,-1563 10subassembly 96 is retracted so that the boom is pulled upwardly” and that the “[r]aising of the . . . boom . . . is effected by the upw ard lifting of the . . . p l ate.” This passage teaches the role of the piston and cylinder subassembly in t he lifting of the boom. This passage, however, does not express l y discl os e use of the piston and cylinder subassembly to lift the boom without the lift pl ate. Instead the s p ecif ication tells one of skill in this art that the subasse mbly effects the “upward lifting” by means of the plate. The lift plate is not superfluous s t ructure between the piston and cylinder subassembly and the boom, but an essentia l feature that is necessary to enable the embodiment to yaw and lift at the same time. Se e Omega Eng’g, Inc. v. Raytek Corp. , 334 F.3d 1314, 1321 (Fed. Cir. 2003) (The corresponding structur e to a function set forth in a meansplus-function limitation “must be necessary to perform the claimed function.”). Thus, the means-plus-function limitation m u st have the same structure in c l aims with and without the yawing function. The specification gi v e s no reas on to read the same limitation differently in claims with or without yawi ng. Because the ’020 patent neit h er clearly indic a tes that the pivoting limitation should ha ve different meanings in claims that do not have a yawing function, nor discloses an alternative embodiment, the trial court correctly read “means for selectively pivoting” to include a lift plate under the boom. To conclude otherwise would render the patent internally incons istent and the invention inoperable. Becaus e these reasons suffici ently support the district court’s claim construction, this court need not reach the district court’s di sclaimer finding. Turning now to the infringement inquiry, lit eral infringement requires that each and every limitation set forth in a c l aim appear in an ac cused product. Bec t on Dickinson & Co. v. C.R. Bard, Inc. , 922 F.2d 792, 796 (Fed. Cir. 1990). “Literal

03-1519,-1563 11infringement of a § 112, ¶ 6 lim itation requir e s that the relev ant structure in the accused device perform the identical function recited in the claim and be ident ical or equiv a lent to the corresponding structur e in the specification.” Odetics, Inc. v. Storage Tec h

. Corp. , 185 F.3d 1259, 1267 (Fed. Cir. 1999). Alt hough the issue of whether an accused device inc l udes a structural equivalent under § 112, ¶ 6 claim is a question of fact, id. at 1268, the district court may fi nd the abs enc e of an equivalen t where “no reas onable jury could hav e found that the accused device has an equivalent to the discl os ed structure.” Chiuminatta Concrete Concepts Inc. v. Cardinal Indus., Inc. , 145 F.3d 1303, 1309 (Fed. Cir. 1998). Because s t ructural equivalents under § 1 12, ¶ 6 are included within literal infringement of means-plus-function claim s , “the court must compare the accused
structure w i th the dis c losed structure , and must find equivalent structure as well as identity of claimed function for the structure.” Pennwalt Corp. v. Durand-W ayland, Inc

. , 833 F.2d 931, 934 (F ed. Cir . 1987) (emphasis in original). This inquiry for equiv a lent structure under § 112, ¶ 6 examines wh ether “the assertedly equivalent structure performs the claimed f unction in s ubstantially the same way to achieve substantially the same result as the corresponding struct ure described in the specification.” Odetics , 185 F.3d at 1267. This case satisfies the require ment of an identity of function between the under-mounted hydraulic cylinder on Weatherfo rd’s device and the hydraulic cylinder attached to the lift plat e in the ‘020 patent discl osure. Nonetheles s , as the district court correctly discerned, no reasonable jury coul d fail to find a substantial difference between the two raising and lowering mechanism s in the accused device a n d the ’020 patent. As the trial court observed, t he two mechanisms “represent two distinct

03-1519,-1563 12structural approaches to performing essentially the same function.” Frank’s Casing Crew , No. CIV-01-104-F, slip. op. at 24- 25 (W.D . Okla. May 28, 2003). The “indisputable mechanical in c o mpatibility between the tw o devices” underscores this finding. Id. at 26. Thus, this cour t agrees with the dis t rict c ourt that summary judgment of non-infringement under § 112, ¶ 6 is appropriate. There is also no pos sible equiv a lent under the doctrine of equivalents. The primary difference between stru ctural equiv a lents under § 112, ¶ 6 and the doctrine of equivalents is a question of timing. Al-Site Corp. v. VSI Int’l, Inc. , 174 F.3d 1308, 1321 n.2 (Fed. Cir. 1999). As this c ourt has expl ained, “[a] proposed equiv alent must have arisen at a definite per iod in time, i.e., either before or after [patent filing]. If before, a § 112, ¶ 6 structural equivalen ts analysis applies and any analys is for equivalent structure under the doctrine of equiva lents collapses into the § 112, ¶ 6 analysis. If after, a nontextual infringement analysis proceeds und er the doctrine of equivalents.” Id. In this case the proposed equivalent – a lifting me chanism without a lift plate – was in use before filin g of the p a tent, therefore this court need not condu ct a separ ate analys is under the doctrine of equivalents. See, e.g. , Kemco Sa les , 208 F.3d at 1364 ( “ Because the ‘way ’ and ‘result’ prongs are the same under both the 35 U.S.C. section 112, paragraph 6 and the doctrine of equivalents test s, a structure fail ing the 35 U.S.C. section 112, paragraph 6 test under either or both prongs must fail the doctrine of equivalents test for the sa me reason(s).”). Because af firming the district court’s clai m construction of “means for selectively pivoting” and its finding of no infringement based on that construction, this court need not address the district court’s clai m construction of “detachably.”

03-1519,-1563 13IV. Weatherford’s cross-appeal chal lenges the district court’s denia l of attorney fees. This court reviews the district court's denial of attorney fees under 35 U.S.C. § 285 for an abus e of discretion. Va. Pa nel Corp. v. MAC Pan e l Co. , 133 F.3d 860, 867 (Fed. Cir. 1997). This court affords trial judges di scretion to award attorney fees for good

reasons. King Instrument Corp. v. Otari C o rp. , 767 F.2d 853, 866-67 (Fed. Cir. 1985). After presiding over the prepar ation and trial of the case, the trial judge can best weigh the relevant considerations, such as the cl oseness of the case, the tactics of counsel, the flagrant or good faith character of the parties' conduct, and any other factors contributing to imposition of pu nitive sanc tions or to fair allocation of the burdens o f litigation. Modine Mfg. Co. v. Allen Group, Inc. , 917 F.2d 538, 543 (Fed. Cir. 1990); S.C. Johnson & Son, Inc. v. Carter-Wallace, Inc. , 781 F.2d 198, 201 (Fed. Cir. 1986). This court detects no abuse of discretion in the district court’s ruling on attorney fees. In denying Weatherford’s motion for a ttorney fees and c o sts, the district court weighed a variety of factors, including the adequacy of Frank’s investigation before it sued Weat herford and the allegations of lit igation mis c onduct based on its decision to persist in offering arguments dis m issed by the district court’s July 22, 2002 Markman Order. Frank’s Casing Crew , No. CIV-01-104-F, slip. op. at 1

- 6 (W.D. Okla. July 18, 2003). On review of the record, this court agrees with the trial court th at “[t]his is simply not a case in whic h the conduct of the plain t iff, in filing and prosecuting the action, was offensive to the court (even mildly so).” Id. at 5.

03-1519,-1563 14V. In sum, this court affirms the distri ct court’s conclusion that the “means for selectively pivoting” must include a lift plat e located under the boom and also affirms the district court’s summary judgment of non-infri ngement. In addition, this court affirms the district court’s denial of Weatherford ’s request for attorney fees. COSTS Each party shall bear its own costs.
AFFIRMED

03-1519,-1563 15