[00:00:00] Speaker 02:
Our next case is a combination of two, US Wells Services versus Halliburton, 2023, 1799, and 2106.

[00:00:12] Speaker 02:
Mr. Dowd, when you are ready.

[00:00:36] Speaker 02:
This case presents indefiniteness in a different context.

[00:00:41] Speaker 04:
Yes, Your Honor.

[00:00:41] Speaker 04:
Thank you.

[00:00:42] Speaker 04:
May it please the court?

[00:00:44] Speaker 04:
So the issue of indefiniteness here goes to the question of whether the phrase high pressure, as you used to define the pump, that's a limitation in the claim.

[00:00:56] Speaker 04:
It provides a personal order in the art in understanding of how to practice the invention.

[00:01:04] Speaker 04:
In some sense, I think this is a bit of a unique case because it combines the holding of Tillman, for example, which dealt with the high pressure phrase, different context, different invention.

[00:01:15] Speaker 04:
But that combined with, I think, the way I read the Thrust and Holding of the VASF case in terms of the limitation at issue is clearly not the asserted advance of the claimed invention.

[00:01:28] Speaker 02:
But your experts disagreed on the meaning of high pressure here, right?

[00:01:33] Speaker 04:
Well, Judge Lurie, they don't exactly agree.

[00:01:37] Speaker 04:
I'd put it that way.

[00:01:38] Speaker 04:
They have overlapping ranges.

[00:01:40] Speaker 04:
So there's one expert who says that high pressure is from 5,000 to 15,000 psi.

[00:01:46] Speaker 04:
Our second expert says it's from 8,000 to 12,000 psi.

[00:01:50] Speaker 04:
Two things on that.

[00:01:52] Speaker 04:
If anything, to me, that shows you that at least the claim can be construed.

[00:01:58] Speaker 04:
based on knowledge of the art of a very ubiquitous term.

[00:02:02] Speaker 04:
And then the second is the way I would look at it is very typically in a patent specification, even though we don't have it here, you have overlapping or redundant or varying ranges that would describe a particular limitation.

[00:02:15] Speaker 04:
Again, those ranges are not in the patent specification, so we acknowledge that.

[00:02:20] Speaker 04:
But just the mere fact that our experts have different views about what constitutes high pressure does not, by itself, make the claim indefinite.

[00:02:31] Speaker 04:
And the case law from this court is very clear on that.

[00:02:35] Speaker 03:
Well, it really complicates things for you, though.

[00:02:38] Speaker 04:
Judge Rayner, I don't disagree with that.

[00:02:42] Speaker 04:
Clearly, we would have an easier case if our experts had agreed.

[00:02:48] Speaker 04:
And I think the important point here is that, again, it goes back and you have to really look at the planned invention and the limitation.

[00:03:00] Speaker 04:
And I think in hindsight, in a way, no one gave this a second thought in terms of high pressure, describing what a high pressure pump is.

[00:03:07] Speaker 04:
It never came up during prosecution.

[00:03:10] Speaker 04:
The examiner never had an issue with it.

[00:03:12] Speaker 04:
In fact, when our clients proposed the amended claims during the PTAP proceeding,

[00:03:18] Speaker 04:
The board initially had no problem with it in terms of indefiniteness.

[00:03:24] Speaker 04:
Halliburton had argued that it was indefinite, but the preliminary guidance in terms of the board's procedure was that, no, it's OK, and we'll move forward.

[00:03:33] Speaker 04:
But then the board changed course when it came time to rule on Halliburton's motion.

[00:03:41] Speaker 03:
So did anybody argue that this is a term of special industrial usage?

[00:03:50] Speaker 04:
I believe that was a thrust of our argument.

[00:03:51] Speaker 04:
And we certainly made that clear in terms of our briefs before the court.

[00:03:56] Speaker 04:
And I'm not sure if we used, well, I know we didn't use the phrase industrial usage.

[00:04:01] Speaker 04:
But what we did try to convey was that it's a very common term.

[00:04:07] Speaker 04:
And I think I tried to lay that out in our briefs.

[00:04:11] Speaker 04:
In fact, there was prior art that was cited during the prosecution that just used the phrase high pressure pumps.

[00:04:18] Speaker 04:
And it's one of those things that, if you're looking at the invention and trying to understand how to perform in this case, well, in one of the cases.

[00:04:28] Speaker 03:
It's the private art also that created additional complications for you, right?

[00:04:33] Speaker 03:
Because in the prior art, you had other ranges as well that referenced high pressure.

[00:04:41] Speaker 04:
Yes, that's correct, Judge Raina.

[00:04:43] Speaker 04:
But again, I think that goes more to claim construction as to whether the claim is such that you can't construe it.

[00:04:51] Speaker 04:
And we have district court cases and cases before this court all the time where you have experts coming to different opinions.

[00:04:58] Speaker 04:
And I would say that when we look at Durham's, like Halliburton's expert opinion, and this is at appendix 41.11 in the 1799 case,

[00:05:08] Speaker 04:
is that he never says, and he never says that high pressure means something.

[00:05:12] Speaker 04:
All he says is that different ocedas may have different views on it.

[00:05:19] Speaker 01:
When you mentioned claim construction, was there ever any actual construction of the term or the phrase at a high pressure so that fluid passes from the well bore, et cetera?

[00:05:32] Speaker 04:
The simple answer is no, Your Honor.

[00:05:36] Speaker 01:
It strikes me that there are two possible ways to construe that claim language.

[00:05:41] Speaker 01:
One is at a high pressure.

[00:05:44] Speaker 01:
That is to say, a particular thing that is high pressure, which is the way that we've been arguing this case so far, as far as I can tell, between parties.

[00:05:56] Speaker 01:
Another way, possibly, is at a

[00:05:59] Speaker 01:
high pressure, that is to say, at such a pressure so that the fluid passes from the well therefore into the subterranean formation, which if you read it that way, it just means whatever pressure, normally it will be higher than air pressure on the surface of the earth, but whatever pressure is necessary to make the fracking occur.

[00:06:23] Speaker 01:
Was that possible construction ever presented to the board or anyone else?

[00:06:31] Speaker 01:
You understand what I'm saying?

[00:06:32] Speaker 04:
Judge Breckson, I do.

[00:06:33] Speaker 04:
And I think we tried to emphasize that in our brief in the sense that there's a functional aspect to the claim in terms of high enough.

[00:06:41] Speaker 04:
And to answer your question directly, I don't believe it was presented because, again, during the prosecution of the claims,

[00:06:49] Speaker 04:
And during the examination before the board in the PTAB proceeding, that limitation was never asserted.

[00:06:56] Speaker 04:
Because recall, this is an IPR, so the patent challenger can't bring up a 112 challenge.

[00:07:02] Speaker 04:
But when the patent owner goes to amend the claims, that's an opportunity.

[00:07:06] Speaker 04:
And procedurally, it's a little difficult, because at that time, it's a very compressed proceeding.

[00:07:12] Speaker 04:
And there's not too much opportunity to bring in new evidence.

[00:07:15] Speaker 04:
But again, I think from our client's perspective, we had that preliminary guidance from the board that essentially rejected Halliburton's position about the indefiniteness.

[00:07:26] Speaker 04:
And we thought we would be moving forward with all of the amended claims.

[00:07:30] Speaker 02:
Didn't the board find that there was an admission that the process could be used with medium pressure, raising more questions about the importance of the acclaimed language here, high pressure?

[00:07:47] Speaker 04:
Judge, one of our experts did say that in certain circumstances, you can, in fact, cause hydraulic fracturing of the subterranean formation at a medium pressure.

[00:07:59] Speaker 04:
But in our view, that just underscores the point that a person of skill and the art would know the difference between high pressure and medium pressure when

[00:08:07] Speaker 04:
operating in context.

[00:08:09] Speaker 04:
And Dern, Hal Bern's expert, sort of touches on that.

[00:08:14] Speaker 04:
He has four or five paragraphs.

[00:08:16] Speaker 04:
There's really not much testimony at this point in the proceeding.

[00:08:19] Speaker 01:
But to follow up on Judge Lurie's question, that testimony really undercuts

[00:08:27] Speaker 01:
any argument that we should view this limitation function.

[00:08:31] Speaker 01:
Does it not?

[00:08:32] Speaker 01:
In other words, he's saying, well, it can be done at medium pressure, which would exclude doing it at high pressure, implicitly at least, and not support a construction that at high pressure would really ought to be read to mean high enough pressure to make the fraction work.

[00:08:54] Speaker 04:
I agree to some extent.

[00:08:56] Speaker 04:
But again, you're reading this in the context of a limitation that you're talking about a well-known type of pump that's essentially ubiquitous in the industry.

[00:09:07] Speaker 01:
Let me put it to you this way.

[00:09:10] Speaker 01:
Suppose that we were to agree with you and that this claim should survive.

[00:09:18] Speaker 01:
And someone came in and said,

[00:09:21] Speaker 01:
I want to conduct fracking using your method, but at low pressure or medium pressure, would you think that there's no argument for infringement?

[00:09:33] Speaker 04:
Sorry, if our patent survived, is that right?

[00:09:35] Speaker 01:
Your patent survives.

[00:09:37] Speaker 01:
And someone comes in and starts to practice your patent, except that they say, we're running at medium pressure because of what

[00:09:45] Speaker 01:
your expert said was not high pressure.

[00:09:48] Speaker 01:
Would you concede that there's no infringement in that case?

[00:09:52] Speaker 04:
Yes, Your Honor.

[00:09:54] Speaker 04:
And essentially, I think probably what should have happened here, and this goes back to your question, Judge Laurie, about the two ranges provided by our expert, is that at a minimum, we should have had the broader range.

[00:10:07] Speaker 04:
So it's a question about construing the claim and whether one is able to construe the claim.

[00:10:13] Speaker 04:
And when you look at our expert's testimony,

[00:10:15] Speaker 04:
You had two different views.

[00:10:18] Speaker 04:
And under this course, case law, you can have competing experts in terms of the scope of the claim.

[00:10:24] Speaker 04:
But what the board and how the board aired was by just going to those two views and then concluding that that rendered the claim indefinite without

[00:10:35] Speaker 04:
our further explanation, particularly under the BASF case.

[00:10:38] Speaker 04:
And this is, again, going back to my initial point, I think this is why it makes this case a little different in that you have the Tillman case from the Supreme Court that talks about high pressure and the flexibility.

[00:10:50] Speaker 04:
You have a strew of other places that we've discussed in our brief.

[00:10:54] Speaker 04:
But then the BASF case, this claim and this claim to invention, the asserted advance is not about what type of pump you use.

[00:11:04] Speaker 04:
It's about the overall configuration of known components that are routinely used in hydraulic fracturing.

[00:11:14] Speaker 04:
And so if you look at the facts of the BSF case, I think we're squarely within the reasoning and wholly in that case, because that case dealt with a limitation and a process, a chemical process.

[00:11:28] Speaker 04:
And it described catalysts.

[00:11:30] Speaker 04:
But the catalysts were well known.

[00:11:31] Speaker 04:
It didn't really provide much more beyond that.

[00:11:34] Speaker 04:
And the court in that decision essentially ruled that because that limitation is not directed to the asserted advance, then essentially there's a little more ambiguity or flexibility permitted in those types of limitations.

[00:11:51] Speaker 04:
And if I may, Your Honor, there's another case we cite.

[00:11:54] Speaker 04:
And this is in the second case, which is similar.

[00:12:02] Speaker 04:
different context, but claim limitation dealing with high frequency.

[00:12:06] Speaker 04:
And that was the United Access Technologies case.

[00:12:19] Speaker 04:
It's a non-precedential case.

[00:12:21] Speaker 04:
But it's another one where, at the end of the day, you have a term of degree

[00:12:27] Speaker 04:
And in our view, the court's case law is quite clear that when you have terms of degree, like about, and an, or approximately, all of those terms are acceptable under the court's case law for 112B.

[00:12:44] Speaker 01:
And I think that the better way to- Well, at least correct me if this characterization is wrong.

[00:12:52] Speaker 01:
But I would read those cases to mean about is

[00:12:57] Speaker 01:
okay if you can look at the specification or extrinsic evidence that will tell you in this particular art what about really entails so that if you just have about in the abstract who knows whether it's

[00:13:10] Speaker 01:
5% on either side of the described limitation or 20%.

[00:13:15] Speaker 01:
But if, for example, in the pharmaceutical industry, it's generally understood that plus or minus 5% is within the acceptable range of about, then you've got guidance.

[00:13:27] Speaker 01:
But if you have no guidance at all, approximately doesn't tell you much.

[00:13:32] Speaker 01:
How would you know if 25% larger or smaller than the described limitation is about or not, or approximately, unless you have some kind of guidance?

[00:13:44] Speaker 04:
So two points on that, Your Honor.

[00:13:45] Speaker 04:
And typically, it's always expert testimonies providing that response.

[00:13:50] Speaker 04:
Not always, but quite frequently.

[00:13:53] Speaker 04:
And another important point to keep in mind here is that it was Halliburton's burden to show that the claim was indefinite.

[00:14:00] Speaker 04:
And they never addressed that point.

[00:14:04] Speaker 04:
And at a minimum, if you look at our expert testimony, that shows you an acceptable range for high pressure.

[00:14:11] Speaker 02:
You also have a written description issue.

[00:14:14] Speaker 04:
We do, Your Honor, for some of the claims.

[00:14:17] Speaker 04:
Some of the claims.

[00:14:19] Speaker 04:
So for the first case, the 1799 case, it's a written description in terms of the amended claims and the configuration.

[00:14:29] Speaker 04:
And admittedly, the testimony is limited on that.

[00:14:31] Speaker 04:
If you have any particular questions, I'm happy to answer them.

[00:14:35] Speaker 04:
Otherwise, we'll rest on the briefs on that.

[00:14:37] Speaker 04:
For the second case, for the second appeal, it's purely indefiniteness.

[00:14:43] Speaker 02:
Nothing indefinite about that.

[00:14:46] Speaker 04:
Thank you, Your Honor.

[00:14:47] Speaker 04:
Unless there are any further questions, I will reserve my time.

[00:14:50] Speaker 02:
We will save it for you.

[00:14:52] Speaker 02:
Mr. Bover.

[00:15:15] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:15:16] Speaker 00:
Justin Bova for the USPTO.

[00:15:19] Speaker 00:
The Board correctly held that this high-pressure term is indefinite because neither the intrinsic nor the extrinsic evidence provided any reasonable certainty about the scope of its claims.

[00:15:29] Speaker 00:
I agree with Mr. Dowd that this is a unique case, but unique in a different sense in that the specification here provides no guidance at all with respect to what qualifies as high versus not high pressure.

[00:15:42] Speaker 00:
And as US Wells' own experts admitted, there can be fracking, i.e.

[00:15:46] Speaker 00:
achieving the function that's in the claims at different pressures that are not high pressures.

[00:15:53] Speaker 01:
Suppose I have an invention to a fuel injection system, and I describe it in some detail.

[00:16:05] Speaker 01:
And at the end of the claim, it says for use in high-performance vehicles.

[00:16:12] Speaker 01:
Now, suppose further that there's no definition of high-performance vehicles.

[00:16:17] Speaker 01:
Do you think that claim would be indefinite in the University of Wisconsin?

[00:16:21] Speaker 00:
If there's some dispute about what qualifies as a high-performance vehicle versus a not high-performance vehicle.

[00:16:25] Speaker 01:
Well, the dispute would be brought up by the party arguing invalidity based on indefiniteness.

[00:16:30] Speaker 01:
They would say, there's no evidence as to what a high-performance vehicle is.

[00:16:34] Speaker 00:
Right.

[00:16:35] Speaker 00:
And if high-performance vehicle is so well-known in the art, it would be easy to provide any kind of evidence to support here's what a high-performance vehicle is versus not.

[00:16:45] Speaker 01:
And in this case, as you can see... But suppose people disagree that there was some overlap when everybody thinks that an Indy race car is a high-performance vehicle, but some people may not think a Dodge Charger is.

[00:16:58] Speaker 00:
Right.

[00:16:58] Speaker 00:
Well, then you can have expert testimony on that, and you can make the decision.

[00:17:02] Speaker 01:
But suppose the experts disagreed.

[00:17:04] Speaker 01:
Then the fact that.

[00:17:05] Speaker 01:
You think there would be an indefiniteness problem in that situation, where the point of the hypothetical is that no one's really concerned about the high-performance vehicle.

[00:17:16] Speaker 01:
They could have left that out, and the claim would be fine, and everybody would know what it's directed to.

[00:17:24] Speaker 01:
The addition of that, just as I would explain, the context in which this claim arises, would it be enough to invalidate the claim on indefinance?

[00:17:32] Speaker 00:
It's a little bit different because it's not just that they chose to put that into the claim.

[00:17:37] Speaker 00:
So it has to be considered for purposes of meeting the requirements.

[00:17:41] Speaker 00:
And then you have here, you do have experts that are disagreeing.

[00:17:46] Speaker 00:
One of US Wells' own experts, they both provide ranges.

[00:17:49] Speaker 00:
There are overlapping ranges.

[00:17:51] Speaker 00:
Then Mr. Shaft,

[00:17:53] Speaker 00:
expressly rejects Mr. Marsher's range as high pressure.

[00:17:58] Speaker 00:
And if you look at appendix 3727, he was asked, you would not consider 5,000 PSI to be high pressure.

[00:18:09] Speaker 00:
5,000 was in Mr. Marsher's range.

[00:18:12] Speaker 00:
And Mr. Schaff says, not when you're considering crash labs.

[00:18:16] Speaker 00:
Yeah, that is correct.

[00:18:17] Speaker 00:
Please express your objection to that.

[00:18:19] Speaker 02:
Following up on Judge Gryson's comment question, looking at the claims here, in one case, there's a limitation of plurality of transformers supplying power at a step down voltage to the blender.

[00:18:34] Speaker 02:
And in the other, there are limitations about a propant.

[00:18:41] Speaker 02:
sort of seem to focus what the claims are about.

[00:18:45] Speaker 02:
So the high pressure could be understood as simply the system on which these novel process aspects operate.

[00:18:59] Speaker 02:
But I guess your answer, again, is every word in a claim counts?

[00:19:03] Speaker 00:
Well, the word in the claim counts, especially where there is a dispute and us well itself.

[00:19:08] Speaker 00:
If you look at appendix, um, 1884, they are expressly distinguishing prior art based on this high pressure term.

[00:19:20] Speaker 00:
So they gave it meaning or us well gave it meaning.

[00:19:23] Speaker 00:
and said, well, no, this prior art that says medium pressure is not meeting the high pressure term, which tells us that it has to have some meaning in response to your question, Your Honor, Judge Laurie.

[00:19:35] Speaker 00:
But the question then becomes, well, what does that mean?

[00:19:38] Speaker 00:
Where are those bounds?

[00:19:39] Speaker 00:
Where are the clear boundaries that this court requires

[00:19:41] Speaker 00:
that the reasonable certainty standard requires.

[00:19:44] Speaker 00:
And we have nothing there to provide those clear boundaries to determine whether I crack at low pressure and achieve the function.

[00:19:54] Speaker 00:
Is that necessarily within the range?

[00:19:56] Speaker 00:
Mr. Dodd said, no, that's not infringement, but that still doesn't tell us, well, what is the pressure that is within the range?

[00:20:02] Speaker 01:
Let me ask you the same question I asked Mr. Dowd.

[00:20:05] Speaker 01:
Reading the claim language, it seems to me that it's at least amenable to the construction that the term, at a high pressure so that the fluid passes from the well board dot to dot.

[00:20:20] Speaker 01:
It seems to me it's amenable to construction that at such pressure, or at high enough pressure so that the function is performed.

[00:20:30] Speaker 01:
Uh, you would agree, I, I would assume that if it read that way, if those words were in there or if it were construed that way, that that would get rid of the indefiniteness issue.

[00:20:41] Speaker 00:
It certainly makes it easier to prove definite or to survive a definite challenge.

[00:20:45] Speaker 01:
Why not read it that way?

[00:20:48] Speaker 01:
Well, because it seems to me at least a plausible reading.

[00:20:53] Speaker 01:
And we usually try to, uh, construe.

[00:20:58] Speaker 01:
claim language to uphold the validity of the claim.

[00:21:02] Speaker 00:
Yes, Your Honor, but also this court says it should not redraft claims to save them from validity.

[00:21:08] Speaker 00:
And that would be what the court would be doing here.

[00:21:09] Speaker 00:
It would be changing high pressure to high enough pressure to achieve a function.

[00:21:14] Speaker 00:
And again, going back to US Well's argument, which is medium pressure that achieves that function, it would be high enough to achieve that function, but it still wouldn't meet this claim invitation according to US Well with respect to that prior reference.

[00:21:30] Speaker 01:
Thank you.

[00:21:31] Speaker 00:
It would essentially be changing a relative term into a non-existent one.

[00:21:38] Speaker 00:
There was also another question of, has this term been construed before?

[00:21:43] Speaker 00:
The Western District of Texas did assess this term and held that the high pressure term was indefinite.

[00:21:51] Speaker 00:
That was in a patent that was related to?

[00:21:54] Speaker 01:
That's Judge Albright's decision, right?

[00:21:56] Speaker 01:
Yes.

[00:21:57] Speaker 01:
but also another decision by a magistrate judge in the southern district of Texas, I guess it sort of went the other way.

[00:22:03] Speaker 00:
That's right, Your Honor, but that's another data point that the board has considered and said that that's another reason that this is indefinite, because in that decision, that's the TOPS decision.

[00:22:12] Speaker 00:
The court construed that to mean 15,000 PSI or higher.

[00:22:16] Speaker 00:
That would be outside of what that narrower range, 8,000 to 12,000, is here, or pushed for here.

[00:22:23] Speaker 00:
And then it also, US Well, in that case, actually asked that that decision be vacated and was not content with that.

[00:22:33] Speaker 00:
more uncertainty in terms of where that range lies.

[00:22:37] Speaker 00:
There's no clear boundaries for that.

[00:22:44] Speaker 00:
And again, the board did credit, not just, did assess the expert's opinion from U.S.

[00:22:49] Speaker 00:
Wells and said that those were contradictory, but also credited Dr. Durham, which is Halliburton's expert on that score, to say that this did not provide reasonable certainty about the scope of these claims.

[00:23:06] Speaker 00:
Unless Your Honors have any questions about the indefiniteness or the written description.

[00:23:10] Speaker 00:
I didn't hear Mr. Dowd address that on the merits.

[00:23:13] Speaker 02:
Thank you, Mr. Bover.

[00:23:14] Speaker 02:
Thank you.

[00:23:15] Speaker 02:
Mr. Dowd has some rebuttal time.

[00:23:22] Speaker 04:
Thank you, Your Honor.

[00:23:24] Speaker 04:
So I'll leave with two points.

[00:23:27] Speaker 04:
Mainly, if we look at Judge Durham's opinion in that record, and this is at 41-11 through 41-13, his testimony, and it was Halliburton's burden to show that the claims are indefinite, his testimony only goes to show that there is some variability or some disagreement among the experts about what high pressure means.

[00:23:54] Speaker 04:
He never goes so far as to say that nobody would ever know what it means.

[00:23:59] Speaker 04:
And he never goes so far as to say that the board could not have construed that limitation in the context of these claims, which again, that particular limitation is directed to a well-known pump routinely used in the industry.

[00:24:18] Speaker 04:
And it ties it with a functional aspect of the claim.

[00:24:23] Speaker 04:
And when you add on the fact that this, again, is not the asserted advance of the claimed invention for either patents at issue here, our position is that Halberton did not meet its burden to show that the claim was indefinite.

[00:24:42] Speaker 04:
And unless there are any other questions, I'll see the remainder of my time.

[00:24:46] Speaker 02:
Thank you, Mr. Dodd.

[00:24:47] Speaker 02:
The case is submitted.

[00:24:48] Speaker 04:
Thank you.