IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

KERR MACHINE CO., 

 Plaintiff, 

v. 

VULCAN INDUSTRIAL HOLDINGS, LLC, 

VULCAN ENERGY SERVICES, LLC, and 

CIZION, LLC d/b/a VULCAN 

INDUSTRIAL MANUFACTURING, 

 Defendant. 

CIVIL ACTION NO. 6:20-CV-200-ADA 

JURY TRIAL DEMANDED 

 

Plaintiff’s Responsive Claim Construction Brief

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 1 of 23
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Table of Contents 

I. “Tubular Sleeve” ............................................................................................................................ 1

A. Vulcan’s Inclusion of “Stuffing Box” in its Construction is at Odds With the Case 

Law. ................................................................................................................................................. 1

B. Vulcan’s “substantially Cylinder-shaped” Language is Not Supported by the 

Specification as a Whole and should be rejected. ............................................................................ 2

II. “Endless Groove” ........................................................................................................................... 5

A. Vulcan’s Proposed Construction Contains Improper Limitations ................................................... 5

B. Vulcan’s New Indefiniteness Argument Fails. ................................................................................ 7

III. “Therethrough” ............................................................................................................................. 8

IV. “Within the Sleeve”...................................................................................................................... 13

V. “The seal is engaged with the outer surface of the sleeve” ....................................................... 16

VI. “Seal” ............................................................................................................................................ 17

VII. “Closure Element” ....................................................................................................................... 18

VIII. “Fluid end assembly” ................................................................................................................... 20

Conclusion ................................................................................................................................................. 20

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In accordance with the Court’s Agreed Scheduling Order (Dkt. 34), Plaintiff Kerr Machine 

Company (“Kerr”), submits this Responsive Claim Construction Brief to rebut the arguments made 

in Defendants’ Opening Brief (“Defs.’ Brief”) regarding disputed claim terms in U.S. Patent No. 

10,591,070 (“the ’070 Patent”), attached as Exhibit 1. 

Vulcan’s constructions are a mix of unnecessary definitions to overwhelm the jury and 

blatant departures from the evidence driven by Vulcan’s prior art strategy. Vulcan’s resorts to 

misleading interpretations of ambiguous portions of the prosecution history in order argue that 

Kerr somehow unambiguously adopted Vulcan’s proposed constructions. Kerr did no such thing. 

In a few instances, Vulcan even argues a term should just be deemed indefinite if the Court does 

not give Vulcan the construction it wants. Ultimately, a proper reading of the ’070 specification 

and the prosecution history show that Vulcan’s proposed constructions are flat wrong. 

I. “Tubular Sleeve” 

Claims Kerr’s Proposed Construction Defendants’ Proposed Construction 

1, 6 “open or hollow primarily cylindrical 

enclosure” 

“open, substantially cylindrical-shaped 

stuffing box sleeve” 

A. Vulcan’s Inclusion of “Stuffing Box” in its Construction is at Odds With the 

Case Law. 

Vulcan’s inclusion of “stuffing box” in its proposed construction should be rejected. 

Vulcan basis for including “stuffing box” is the number of times the specification uses the phrase. 

Vulcan Brief at 6 (“[T]he ’070 Patent specification describes a ‘stuffing box sleeve’ nineteen 

times...”). However, Vulcan’s basis for limiting “tubular sleeve” to a stuffing box is blatantly at 

odds with Federal Circuit case law. 

In Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012), defendant 

Sony tried to argue the specification’s repeated use of a word in reference to embodiments 

amounted to a disavowal of claim scope and lexicographic choice by the inventor. Id. at 1367 (“As 

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Sony argues, the specification repeatedly uses the term ‘attached’ in reference to embodiments 

where the actuators are ‘attached to [an] outer side.’”). The court recognized that to act as its own 

lexicographer, a patentee must do more than “simply disclose a single embodiment or use a word 

in the same manner in all embodiments, the patentee must clearly express an intent to redefine the 

term.” Id. at 1365 (internal marks omitted). Regarding disavowal, the court explained that “the 

standard for disavowal of claim scope is similarly exacting” and that “[i]t is likewise not enough 

that the only embodiments, or all of the embodiments, contain a particular limitation.” Id. at 1366. 

The court ultimately rejected Sony’s argument and held that repeated use of a word in reference 

to embodiments “does not rise to the level of either lexicography or disavowal” of claim scope. Id. 

at 1367. 

This Court’ should reject Vulcan’s inclusion of “stuffing box” as unsupported by the 

evidence. 

B. Vulcan’s “substantially Cylinder-shaped” Language is Not Supported by the 

Specification as a Whole and Should be Rejected. 

Vulcan urges the Court to construe “tubular sleeve” to mean an “open, substantially 

cylinder-shaped ‘stuffing box’ sleeve.” Vulcan’s construction attempts to erase the specification’s 

express distinction between the invention’s cylindrical tubular sleeve and a conical sleeve. In 

Vulcan’s petition for post-grant review filings before the PTAB, Vulcan improperly relies upon 

irrelevant art featuring conical sleeves. Exh. 2. Vulcan will no doubt argue here these conical 

sleeves are “substantially cylindrical.” While the specification itself draws a hard line between 

cylindrical and conical shapes, and further describes every embodiment as cylindrical in some 

fashion, it describes a single embodiment as “substantially” cylindrical. Compare Exh. 1 at 11:40-

41 (“FIG. 16 also depicts employing the open-cylinder-shaped stuffing box sleeve...”) with Exh. 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 4 of 23
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1 at 11:53-56 (“In yet other contemplated embodiments the stuffing box sleeve 254 can be 

modified to a construction combining a substantially cylindrical-shaped stuffing box...”). 

Rather than read the specification as a whole, as a POSITA would, Vulcan cherry picks a 

single embodiment reference to define the entire claim. With the specification describing a single 

embodiment as “substantially cylindrical” and all others as simply “cylindrical” or “a cylinder,” a 

POSITA would understand the “tubular sleeve” to be primarily cylindrical. See ICU Medical, Inc. 

v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1375 (Fed. Cir. 2009) (“Indeed, the court should 

focus on how such a person would understand the claim term after reading the entire patent.”) 

(emphasis added). 

Vulcan tries to make up for its lack of support by mischaracterizing Fig. 16. Vulcan states 

that the shape of the tubular sleeve is “tapered,” pointing at FIG. 16. Any POSITA looking at FIG. 

16 will readily see that the sleeve 254 comprises two separate perfectly cylindrical sections of 

different diameters, as opposed to “taper,” which means becoming “progressively smaller toward 

one end.” Taper, Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriamwebster.com/dictionary/taper (Last accessed 28 Oct. 2020). Yet again, Vulcan shows its proposed 

construction is driven by its own prior art strategy rather than what is actually in the ’070 patent. 

This Court should reject Vulcan’s attempt to sweep in irrelevant art by broadening “tubular sleeve” 

beyond what a POSITA would understand the term to mean. 

Instead of using Vulcan’s flawed construction, this Court should construe “tubular sleeve” 

as an open or hollow primarily cylindrical enclosure. This is similar to Vulcan’s proposed 

construction, except that it does not (1) improperly limit the purpose or function to only a stuffing 

box sleeve or (2) alter the invention in an attempt to make relevant otherwise irrelevant prior art. 

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The ordinary meaning of “tubular” is having the form of or consisting of a tube, which in 

turn is defined by Merriam-Webster as “a hollow elongated cylinder.” Tube, MerriamWebster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/tube

(Last accessed 13 Oct. 2020). The ordinary meaning of “sleeve,” in the context used in the 

specification, is a tubular part designed to fit over another part. See Sleeve, Merriam-Webster.com 

Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/sleeve (Last 

accessed 13 Oct. 2020) (defining “sleeve” as something “designed to fit over another part”). Thus, 

a person of ordinary skill in the art (“POSITA”) would have understood the ordinary meaning of 

tubular sleeve as an open or hollow cylinder designed to fit over or enclose another part (i.e., an 

enclosure). 

This meaning is consistent with the specification, which explains that embodiments of the 

tubular sleeve 254 are “open-cylinder-shaped.” Exh. 1 at 11:40–42, see also Fig. 11, 16, 19 

(depicting sleeve 254 as a cylindrical enclosure). The specification further distinguishes between 

cylindrical components and components having other shapes. For example, inserts 106a' and 106b' 

in plug valve 100' (Fig. 2) are described as “segments of an open hollow cylinder instead of the 

inserts 106a, 106b in FIG. 1 that are segments of an open hollow cone. In other words, the conical

surfaces in FIG. 1 are replaced here with cylindrical surfaces.” Id. at 4:35–40. Thus, the claimed 

requirement of a tubular sleeve should be understood to specify a cylindrical sleeve, as 

distinguished from a conical sleeve or a sleeve of another shape. 

The Court should construe “Tubular sleeve” to mean an “open or hollow primarily 

cylindrical enclosure.” 

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II. “Endless Groove” 

Claims Kerr’s Proposed Construction Defendants’ Proposed Construction 

1, 5, 6, 

15, 18 

“a channel or recess without 

beginning or end” 

Indefinite, or in the alternative, “an 

annular/concentric channel or recess” 

Vulcan’s proposed construction fails to capture the defining aspect of the claim term, the 

endless nature of the groove, while also creating an additional limitation out of thin air. Vulcan 

cannot meet its burden of establishing that the specification includes a clear disavowal of claim 

scope in support of its inclusion of “annular/concentric.” See Retractable Techs., Inc. v. Becton, 

Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (“To disavow claim scope, the 

specification must contain ‘expressions of manifest exclusion or restriction, representing a clear 

disavowal of claim scope.’”). Vulcan further weakened its proposed construction a month after

proposing it—and only three days before the deadline to file opening briefs—when Vulcan 

abruptly changed its position to simultaneously propose a definite construction and argue that 

“endless groove” is indefinite. Of course, a term cannot be indefinite and have a construction, thus 

Vulcan’s indefiniteness challenge fails on its face. 

A. Vulcan’s Proposed Construction Contains Improper Limitations 

Vulcan’s “annular/concentric” limitation has no support in the claims, which recite an 

“endless groove” without any limitation as to the shape of the groove. The specification, which 

discusses an “endless groove” at 8:60 to 9:14, does not change the result. The “endless groove or 

recess 240” is described as being “characterized by a pair of parallel sidewalls joined by a base.” 

There is no in-depth discussion of the groove being “annular” or ring-shaped or any other term 

that may suggest annular. Id. The specification merely states that sidewalls are joined by a base. 

Thus, the invention claims an endless groove in all manner of shapes, including but not limited to 

concentric shapes. 

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Vulcan can only point to two referenced embodiments of the invention and to drawings 

contained in the specification, but neither are “clear disavowal[s] of claim scope.” Retractable 

Techs, 653 F.3d at 1306. First, the specification itself notes that the drawings are “merely 

illustrative and not limiting of the contemplated embodiments,” and thus are the exact opposite of 

a “disavowal of claim scope.” Exh. 1 at 9:6-7. As to Vulcan’s two embodiment citations, those 

also fail to constitute a clear disavowal of claim scope. The specification describes numerous 

embodiments, among them: “The present invention is also directed to a fluid end assembly 

comprising ... a seal positioned within an annular groove formed in the housing,” Exh. 1 at 2:23-

28, and “The present invention is further directed to ... [a] groove [that] extends concentrically 

around that section,” Id. at 2:37-39. Even if this were the only embodiment of the endless groove, 

the Federal Circuit has “expressly rejected the contention that if a patent describes only a single 

embodiment, the claims of the patent must be construed as being limited to that embodiment.” 

Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). Moreover, beginning the sentences 

with “The present invention is also directed to” and ” and “the present invention is further directed 

to” makes clear that the subsequent descriptions are not disavowals of claim scope. See Cont'l 

Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019) (“[P]hrases such as ‘one technique,’ 

‘can be carried out,’ and ‘a way’ indicate that using Probelec XB 7081 is only one method for 

making the invention and does not automatically lead to finding a clear disavowal of claim 

scope.”). The specification even goes on to say, “any shape necessary to properly mount a desired 

seal is contemplated, whether the seal is elastomeric, spring, metal, and the like” may be used for 

the endless groove. Exh. 1 at 9:7-9 (emphasis added). The claimed invention does not limit the 

“endless groove” to an annular shape. 

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B. Vulcan’s New Indefiniteness Argument Fails. 

At the eleventh hour, nearly a month after the deadline to exchange claim constructions, 

Vulcan now says the “endless groove” is indefinite and that Vulcan’s proposed construction is an 

“alternative.” Exh. 3. In other words, Vulcan contends the term “endless groove” simultaneously 

has a definite meaning while also being indefinite. Not only is Vulcan’s position nonsensical, but 

it is further belied by the fact that Vulcan participated in the claim construction process—by 

serving proposed constructions and conferring on them—for over a month without noticing the 

alleged indefinite nature of “endless groove.” And even after the alleged indefinite nature had 

supposedly become clear, Vulcan still asks this Court to recognize its own proposed construction. 

Vulcan therefore cannot show that this claim term “read in light of the specification, fails to inform, 

with reasonably certainty, those skilled in the art about the scope of the invention” because Vulcan 

itself recognizes the term supports a definite construction, albeit one Kerr disputes. Nautilus, Inc. 

v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). 

Vulcan pins its indefiniteness argument on the fact that a different patent examiner assigned 

to a patent application from a different family than the ‘070 erroneously concluded that the word 

“endless” was indefinite. The ’414 application Vulcan cites does not have a single application in 

common with the ’070 patent. And most importantly, Vulcan ignores the fact that the patent 

examiner assigned to the ’070 patent in this case had no indefiniteness concerns over the term 

“endless groove.” And the ‘070 examiner got it exactly right. The examiner for the unrelated ’414 

patent stated that “endless” is an indefinite term because a structure cannot be endless. But the 

word “endless” modifies a groove within a structure, not the structure itself. Indeed, any child who 

has played with a hula hoop knows that a shape can be without a beginning or an end. While Kerr 

subsequently amended the unrelated patent application, it did not agree with the examiner’s 

conclusion and made the amendment only to accelerate the patent’s issuance. This inconsistent 

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treatment of “endless groove” by different examiners is a great example of why the Federal Circuit 

has cautioned courts from using the prosecution history—here, from a different patent—to resolve 

claim construction disputes. Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) 

(“We have cautioned, however, that ‘because the prosecution history represents an ongoing 

negotiation between the PTO and the applicant, rather than the final product of that negotiation, it 

often lacks the clarity of the specification and thus is less useful for claim construction 

purposes.’”). 

Kerr asks this Court to construe “endless groove” as “a channel or recess without beginning 

or end.” The specification makes clear throughout that “groove” refers to a “channel” or a “recess.” 

See, e.g., Exh. 1 at 10:5, 10: 18, 10:28, 11:4. While groove has a particular meaning in the art, 

“endless” has an obvious plain and ordinary meaning: without a beginning or an end. It cannot be 

more straightforward. This is especially true considering that the person of ordinary skill in this 

case would have significant experience or knowledge in the field of fluid end design and 

manufacturing. See Source Search Techs., LLC v. LendingTree, LLC, 588 F.3d 1063, 1077 (Fed. 

Cir. 2009) (noting that “this court measures indefiniteness according to an objective measure that 

recognizes artisans of ordinary skill are not mindless automatons”) (quotations omitted). 

III. “Therethrough” 

Claims Kerr’s Proposed Construction Defendants’ Proposed Construction 

1, 6 “from one side or surface to the 

opposing side or surface” 

“into (the housing)” 

Vulcan’s proposed construction is at odds with the plain meaning of the term and dispenses 

with a key aspect of the invention, the requirement that there actually be two separate conduits 

extending through the housing. Stating that a conduit extends into a housing is very different from 

stating that a conduit extends through a housing. Vulcan’s construction has no basis in any intrinsic

or extrinsic evidence and was clearly selected to enable Vulcan to shoehorn disclosures lacking 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 10 of 23
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the claimed conduits to read on the claims. For example, in the Y-bore fluid end of US patent 

6,382,940, only the first conduit (suction/discharge) extends through the housing. The plunger bore 

only has a single opening and only extends into the housing, not through it: 

Recognizing the logical flaws in its proposed construction, Vulcan argues Kerr acquiesced 

to the construction even if it does not make sense. Vulcan claims the examiner read the first and 

second conduits on the conduits of the Y-bore fluid end of Blume ’940, and asserts (without 

analysis) that Kerr acquiesced to this as an implicit construction. Pet., 31-32. But Vulcan’s 

evidence falls far below what is required for acquiescence. 

To show Kerr acquiesced to the examiner’s characterization, Vulcan must demonstrate that 

Kerr clearly and unambiguously disclaimed the term’s plain and ordinary meaning. See Omega 

Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003); see also Trivascular, Inc. 

v. Samuels, 812 F.3d 1056, 1063–64 (Fed. Cir. 2016). “A patentee is not required to fight tooth 

and nail every possibly adverse thought an examiner commits to paper.” TorPharm, Inc. v. 

Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003). Importantly, an applicant’s silence 

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in response to an examiner’s characterization of a claim does not, as a matter of law, reflect a 

“clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on 

grounds unrelated to the examiner’s unrebutted characterization.” 3M Innovative Props. Co. v. 

Avery Dennison Corp., 350 F.3d 1365, 1373-74 (Fed. Cir. 2003); see also Salazar v. Proctor & 

Gamble Co., 414 F.3d 1342, 1345 (Fed. Cir. 2005) (“Consequently, an applicant’s silence 

regarding statements made by the examiner during prosecution, without more, cannot amount to a 

‘clear and unmistakable disavowal’ of claim scope.”); Alfred E. Mann Foundation for Scientific 

Research v. Cochlear Corporation, 841 F.3d 1334, 1341 (Fed. Cir. 2016) (“[A]n examiner’s 

unilateral statement does not give rise to a clear disavowal of claim scope by the applicant.”). 

Here, the file history shows Kerr argued that the rejected claims were not anticipated 

because the prior art asserted by the examiner did not disclose packing seals disposed within the 

sleeve. Exh. 4 at 10-11. Kerr remained silent as to the examiner’s characterization of therethrough, 

and the claims were ultimately allowed on unrelated grounds. See id. at 7. As a matter of law, Kerr 

did not acquiesce to the examiner’s application of Blume ’940 to the first and second conduits. 3M 

Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1373-74 (Fed. Cir. 2003) (holding 

silence in response to an examiner’s characterization of a claim does not, as a matter of law, reflect 

a “clear and unmistakable acquiescence to that characterization if the claim is eventually allowed 

on grounds unrelated to the examiner’s unrebutted characterization”). Moreover, Vulcan is 

required to show a clear and unambiguous disclaimer by the patentee. How does Vulcan try to 

establish an alleged clear and unambiguous disclaimer? Vulcan provides the Court with a single 

unclear and ambiguous “see generally” citation. Vulcan Brief at 9 (“See generally Herman Ex.2 at 

38-51.”). Neither the Examiner nor Kerr ever addressed the term “therethrough,” so it cannot 

qualify as a clear and unmistakable acquiescence. 

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Finally, Vulcan throws out a half-hearted indefiniteness argument, which it discloses for 

the first time in its opening brief. Like its “endless groove” argument, Vulcan maintains that 

“therethrough” has a definite meaning and lacks a definite meaning. Even more problematic, 

Vulcan’s argument depends on the POSITA lacking all common sense and reading 

comprehension. Vulcan reads “therethrough” in isolation and contends a POSITA would have no 

way of knowing which surface the conduit extends through. But that is not the standard. “[T]his 

court measures indefiniteness according to an objective measure that recognizes artisans of 

ordinary skill are not mindless automatons.” Source Search Techs., LLC v. LendingTree, LLC, 588 

F.3d 1063, 1077 (Fed. Cir. 2009). And the properly skilled POSITA would reach an understanding 

of the term “after reading the entire patent.” ICU Medical, Inc. v. Alaris Medical Systems, Inc., 

558 F.3d 1368, 1375 (Fed. Cir. 2009). 

The term “therethrough” appears only in claims 1 and 6, where it describes the first and 

second conduits extending therethrough the housing. The descriptions of these conduits in the 

specification starts with respect to the prior art (Fig. 9), which shows first conduit 220 (blue) and 

second conduit 221 (red) extending completely through housing 201, and intersecting to form 

internal chamber 222: 

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Exh. 1 at 7:19–30; Fig. 9 (annotated above). First conduit 220 has first section 223 and 

second section 224 on opposite sides of internal chamber 222; second conduit 221 also has two 

sections, 225 and 226. These conduit sections “independently interconnect” internal chamber 222 

to the fluid end’s external surface. Thus, both first and second conduits extend from the fluid end’s 

external surface on one side through the housing and open to the opposite side. The reason such 

conduits extend completely through the housing is to enable construction, installation and 

maintenance of the internal components of the fluid end. 

The specification next discusses these conduits with respect to the embodiment of Fig. 11. 

Manifold body 232 forms “interconnected bores or conduits” including a first conduit (also 

referenced as the discharge bore) 234. Id. at 8:27–48. The first conduit “defines an intake opening 

231 formed opposite the discharge opening 235.” Id. The second conduit is collectively formed by 

suction bore 247 and plunger bore 252. Id. at 8:27–48 and 10:4–9; see Fig. 11 (annotated) below. 

The prosecution history does not further define therethrough. 

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Unlike Vulcan’s person of underwhelming skill in the art, a POSITA would read the entire 

patent and understand “therethrough” means from one side or surface to the other. Therethrough 

is not a term of art. “Therethrough” is normally defined as simply “through” (it or that), and that 

is how a POSITA would understand it absent some reason to modify the definition. The disclosure 

of the ’070 Patent shows all conduits proceeding from one side of the housing, completely through 

the housing, and to the other side; not merely “into” the housing. 

IV. “Within the Sleeve” 

Claims Kerr’s Proposed Construction Defendants’ Proposed Construction 

1, 6 No construction necessary; plain and 

ordinary meaning applies. 

“bounded by an inner surface of the sleeve” 

The term “within the sleeve” is a term that jurors will readily understand given the context 

of the claim language. Claim 6 recites, inter alia, “a plurality of packing seals disposed within the 

sleeve.” The specification discusses packing seals with respect to FIG. 9 (a prior art figure), stating 

that a plunger 228 “is disposed within a plurality of packing seals 219.” Id. at 7:35–36. With respect 

to FIG. 17, the specification states, “the plunger 228 and packing seals 219 ... may be disposed 

within the stuffing box sleeve 254.” 

Vulcan’s proposed construction does not serve to make the claim term easier to understand. 

“Within the sleeve” is not a confusing term. Vulcan already seeks a construction on the term 

“sleeve” so construing “within the sleeve” only serves to define the word “within.” In drafting the 

patent claims, Kerr did not attempt to become its own lexicographer by using an unusual definition 

of the word “within.” Nothing in the specification suggests Kerr employed “within” to mean 

anything other than “inside,” a word jurors readily understand. Therefore, “within the sleeve” does 

not require a construction. Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 15 of 23
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2004) (no construction is required for “ordinary, simple English words whose meaning is clear and 

unquestionable”). 

Vulcan’s proposed construction also improperly injects an unrelated concept by using the 

term “bounded.” The specification does not say anything about “bounded” sleeves. Vulcan has 

created the term out of whole cloth, which is entirely improper given that an item being “within” 

another item is not at all the same as an item being bound to another item. 

Vulcan repeats this error in arguing Kerr somehow acquiesced to this “bounded” 

construction. Vulcan Brief at 16. Neither the examiner nor Kerr once used the word “bounded.” 

The examiner erroneously suggested the Blume ‘940 reference anticipated the ’070 patent because 

he misunderstood figures in the ‘940 and ’070 application. See, e.g., Exh. 5 at 4-5; Exh. 4 at 10 

(“The Examiner cited the ‘seal’ as one of the packing seals, and the ‘tubular sleeve’ as the packing 

brass.”). The examiner contended that the Blume reference disclosed packing seals “disposed 

within” the packing brass in the same way that Kerr’s invention discloses packing seals disposed 

within the sleeve. Exh. 5 at 4-5. In response, Kerr explained to the examiner that he had incorrectly 

identified the placement of the packing seals in the Blume reference. Exh. 4 at 10-11. The figure 

below shows a cross-section from the Blume reference, with the packing brass in yellow and the 

packing seals in turquoise. Since this is a cross-section, portions of each are omitted. In three 

dimensions, the top and bottom yellow packing brass “squares” actually form a ring and the 

plunger is “within” the packing brass rings. Two red arrows have been added to highlight the area 

“within” the packing brass rings; the turquoise seals are clearly not within either packing brass 

ring. 

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Kerr explained to the examiner that the seals are outside of, but sandwiched between, the 

packing brass rings. Id. It is akin to the difference between wearing two wedding bands on your 

finger and holding a wedding band on each side of your finger. 

From there, Vulcan takes a massive leap on logic. Vulcan contends that by explaining to 

the examiner the ‘070 requires the seals to be within the sleeve, Kerr agreed to a define the seals’ 

exact configuration and placement within the sleeve. Vulcan Brief at 16 (“Thus, Kerr argued that 

the packing seals must be bounded by an inner surface of the sleeve in order to be “within the 

sleeve.”). Kerr said nothing of the sort. Indeed, Vulcan’s logic is akin to guessing that a wedding 

band is tight on all sides simply because someone says they tried on a wedding band. Just because 

you say you are wearing a ring on your finger does not indicate at all how loose or tight that ring 

is. Yet that is how Vulcan would have this Court read the prosecution history for the ’070 patent. 

Vulcan’s staggering speculation is far from a “clear disavowal of claim scope.” See Retractable 

Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (“To disavow claim 

scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing 

a clear disavowal of claim scope.’”). 

There is no need to construe “within the sleeve” and there is certainly no basis to transform 

the term from describing a location inside a sleeve into a term requiring binding directly against 

the sleeve. 

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V. “The seal is engaged with the outer surface of the sleeve” 

Claims Kerr’s Proposed Construction Defendants’ Proposed Construction 

23 No construction necessary; plain and 

ordinary meaning applies. 

“the seal in the groove in the housing 

contacts the outer surface of the sleeve” 

Vulcan proposes a construction for the limitation “the seal is engaged with the outer surface 

of the sleeve” even though each word is easily understood by a juror and the combination of words 

does not create an unusual meaning. Not only is the claim language easily understood, but Vulcan’s 

proposed construction does not functionally differ from the original claim language. “The seal is 

engaged with the” does not technically differ from “the seal in the groove in the housing contacts 

the.” Therefore, there is no dispute about the claim’s technical meaning. Instead, Vulcan is 

wordsmithing the patent’s language post-issuance. Claim construction is improper where there is 

no dispute about the technical scope of the claim language. C.f. U.S. Surgical Corp. v. Ethicon, 

Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of 

disputed meanings and technical scope, to clarify and when necessary to explain what the 

patentee covered by the claims, for use in the determination of infringement.”) (emphasis added); 

see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“[Claim 

construction] is not an obligatory exercise in redundancy.”). 

Vulcan argues that its proposed construction should be adopted because Kerr agreed to 

another one of Vulcan’s proposed constructions on a different term: “at least a portion of the sleeve 

engages with the seal.” Vulcan initially indicated it would be asking the Court to construe an 

absurd 14 terms for one patent. Exh. 6. Vulcan’s constructions for many of those terms were 

entirely unnecessary. In order to make Vulcan’s set of terms more manageable for this Court, Kerr 

agreed to two of the unnecessary constructions. However, it is improper for Vulcan to use Kerr’s 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 18 of 23
17 

goodwill as a basis to add even more unnecessary constructions to overcomplicate issues for the 

jury. 

Vulcan seeks only to increase the number of terms with which the jury will be presented, 

but that is not a proper basis to wordsmith and deviate from the plain and ordinary meaning of 

straightforward claim language about which there is no technical dispute. 

VI. “Seal” 

Claims Kerr’s Proposed Construction Defendants’ Proposed Construction 

1, 6, 

11, 16, 

19, and 

23 

No construction necessary; plain and 

ordinary meaning applies. 

“annular component of elastomeric, spring, 

metal, or similar material that presses tightly 

against a surface upon axial and/or radial 

compression” 

This Court does not need to construe the term “seal,” a non-technical term that lay jurors 

will readily understand. No construction is necessary. Chef Am., 358 F.3d at 1373 (no construction 

is required for “ordinary, simple English words whose meaning is clear and unquestionable”); 

ConocoPhillips Co. v. In-Depth Compressive Seismic, Inc., 2019 WL1877374, at *5 (S.D. Tex. 

Apr. 26, 2019) (holding that claim term was “sufficiently clear to make even resort to a dictionary 

unnecessary” where “[n]either party has argued the existence of a customary meaning in the art 

that differs from or contradicts the plain and ordinary meaning stated by the plaintiff” and nothing 

“in either the specification or the prosecution history clearly support the defendant’s contention 

that the plaintiff intended to use the term [] in a manner other than according to its plain and 

ordinary meaning”). 

Vulcan’s proposal to include “annular” as a new limitation is not supported by the 

evidence. The specification mentions several different types of seals that can be used in various 

embodiments. For example, although radial seals are illustrated in certain drawing figures, 

alternative embodiments may employ other types of constructions such as “axial seals, crush seals, 

and the like.” Nowhere does the specification limit the seal to an “annular” construction, as 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 19 of 23
18 

proposed by Defendants. Indeed, the specification states that “any shape necessary to properly 

mount a desired seal is contemplated, whether the seal is elastomeric, spring, metal, and the like.” 

Exh. 1 at 9:7-9. While annular seals are described in the patent, such a description is only present 

when discussing prior art. Ex. 1 at 5:10–17, describing the use of “annular seal” 140 with respect 

to prior art (see Id. at 2:60–67, describing Figures 1 through 3 as being “previously attempted 

solutions”). 

VII. “Closure Element” 

Claims Kerr’s Proposed Construction Defendants’ Proposed Construction 

7, 8 “a component that is attached or 

otherwise joined to a housing to help 

provide a fluid seal between the 

housing and the component, such as 

but not limited to the discharge plug, 

suction plug, discharge valve seat, 

suction valve seat, stuffing box 

sleeve, discharge flange, suction 

manifold, and the like” 

“a component that is attached or otherwise 

joined to a housing to provide a fluid seal 

between the housing and the component” 

While “closure element” is not defined in the specification, “closure” is defined. From 

11:67 to 12:24, the ‘070 Patent lays out multiple definitions for the term “closure.” Vulcan, 

however, has latched onto a single definition from the specification to the exclusion of all others. 

See Exh. 1 at 11:67-12:4. During the meet and confer process, Kerr indicated it would agree to 

Vulcan’s proposed construction if Vulcan would agree to fold in language from the other “closure” 

definitions in order to provide the jury with a more complete definition that reflected a POSITA’s 

understanding after reviewing the patent as a whole. Vulcan rejected the proposal. 

Vulcan points to the following language in the specification to support its proposed 

construction: “For purposes of this description and meaning of the claims the term ‘closure’ means 

a component that is attached or otherwise joined to the body to provide a high-pressure fluid seal 

between the body and the closure.” Exh. 1 at 11:67-12:4. Vulcan omits the next twelve lines of the 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 20 of 23
19 

specification expounding on the definition of “closure”: “In some embodiments such as the 

described valve embodiments ‘closure’ encompasses a moving component that is selectively 

positionable to control the fluid flow through the valve, such as the plug described and other 

components such as but not limited to a wedge, a clapper, a ball, a segment, and the like. In some 

embodiments such as the described fluid end embodiments ‘closure’ encompasses nonmoving 

components joined to the body to seal an opening such as but not limited to the discharge plug, 

suction plug, discharge valve seat, suction valve seat, stuffing box sleeve, discharge flange, suction 

manifold, and the like.” Id. at 12:4-12:16. 

Vulcan’s proposed construction should be combined with additional language from the 

specification so it accurately reflects all three definitions of “closure.” Claim terms must be 

construed in light of the entire patent rather than individual portions read in isolation. See ICU 

Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1375 (Fed. Cir. 2009) (“Indeed, the 

court should focus on how such a person would understand the claim term after reading the entire 

patent.”) (emphasis added). When read in isolation, Vulcan’s proposed construction could create 

the misimpression that the closure element is the mechanism that creates the seal with the housing 

by stating, “to provide a high-pressure fluid seal between the body and the closure.” The remaining 

definitions make clear that the closure element assists other elements to create the seal, which 

would be clear to a POSITA after reading the remaining definitions in the specification. Rather 

than offer a cumbersome and lengthy construction restating all three definitions, Kerr proposes 

that the word “help” be added before the word “provide” and the list of exemplar embodiments 

from the third “closure” definition be included so that the relationship between the closure element 

and the seal is clearer. 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 21 of 23
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In sum, Kerr asks the Court to adopt the following construction for “closure element”: “a 

component that is attached or otherwise joined to a housing to help provide a fluid seal between 

the housing and the component, such as but not limited to the discharge plug, suction plug, 

discharge valve seat, suction valve seat, stuffing box sleeve, discharge flange, suction manifold, 

and the like.” 

VIII. “Fluid end assembly” 

Claims Kerr’s Proposed Construction Defendants’ Proposed Construction 

1 – 24 No construction necessary; plain and 

ordinary meaning applies. 

This clause is part of the preamble and gives 

no patentable weight to the claimed invention 

Vulcan attempts to use the claim construction process as a vehicle to obtain what amounts 

to an advisory opinion. Kerr’s claim charts and infringement contentions do not rely on the term 

“fluid end assembly” and Kerr is not seeking a construction for “fluid end assembly.” Yet Vulcan 

asks this Court for a ruling that “fluid end assembly” has no patentable weight. There is no reason 

for the Court to make such a ruling, therefore Vulcan’s request is entirely improper. In re CSBSys. Int’l, Inc., 832 F.3d 1335, 1342–43 (Fed. Cir. 2016) (“Without a ‘fundamental dispute 

regarding the scope’ of this term, construction is not necessary.”); EmeraChem Holdings, LLC v. 

Volkswagen Group of Am., Inc., 714 F. App’x 995, 996 (Fed. Cir. 2017) (“Claim terms, however, 

are construed to resolve a ‘controversy, and only to the extent necessary to resolve the 

controversy.’”). 

Conclusion 

This Court should reject Vulcan’s proposed constructions. 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 22 of 23
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Dated: October 29, 2020 By: /s/ Brian D. Melton 

Brian D. Melton (Texas 24010620) 

Daniel A. Wilson (Texas 24070859) 

Rocco Magni (Texas 24092745) 

Thomas V. DelRosario (Texas 24110645) 

(pro hac vice) 

SUSMAN GODFREY LLP 

1000 Louisiana Street, Suite 5100 

Houston, Texas 77002 

Tel: (713) 651-9366 

Fax: (713) 654-6666 

bmelton@susmangodfrey.com 

dwilson@susmangodfrey.com 

rmagni@susmangodfrey.com 

tdelrosario@susmangodfrey.com 

COUNSEL FOR KERR MACHINE CO. 

CERTIFICATE OF SERVICE 

I certify that all counsel of record deemed to have consented to electronic service are being 

served with a copy of this document via the Court’s CM/ECF system. 

/s/ Brian D. Melton 

Brian D. Melton 

Case 6:20-cv-00200-ADA Document 46 Filed 10/29/20 Page 23 of 23