 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, Garrett & Dunner, L.L.P., of
Washington, DC, argued for plaintiff-appellant. 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 Court 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 the Western District of Oklahoma granted

summary judgment of noninfringement to Weatherford International, Inc. (Weatherford).

Frank’s Casing Crew & Rental 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 stabbing 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 court correctly decided that the

“means for selectively pivoting” clause must necessarily include a lift plate located under

the boom (not present in the StabMaster), this court affirms.
                                              I.

         The ’020 patent, entitled “Device for Positioning and Stabbing Casing from a

Remote Selectively Variable Location,” claims a system for handling (i.e., “positioning

and stabbing”) sections of well casing suspended within a derrick during oil field

operations. ’020 patent, col. 1, ll. 19-30. Well casing lines a well bore to facilitate

removal of oil or gas. During completion of a well, the derrick suspends sections of

casing from a pulley, known as a crown block, and then lowers the section for

connection to another casing section already in the well bore. Id. at col. 8, ll. 38-44.

The test of engineering skill is to align and connect the sections properly. Id. at col. 2, ll.

3-11. Because the sections of casing may be up to thirty-six inches in diameter and

weigh 300 pounds per foot, manual alignment is difficult and poses a risk of injury. Id.

at col. 6, ll. 8-9; col. 7, ll. 24-25; col. 18, ll. 29-34. The ’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 system mounts the apparatus on the derrick without 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, storage and operative mounting of the entire apparatus at a

selected location in a drilling derrick and above the floor of the derrick.” Id. at col. 7, ll.

1-5. Additionally, the invention has an “extendable boom which carries jaws at one end

for engaging the casing, and which is hydraulically movable in an up-and-down pivoting

motion or in a side-to-side motion, or both such motions simultaneously.” Id. at col. 7, ll.

28-33.




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         The claimed stabbing apparatus thus raises and lowers the boom holding the

casing section. The preferred embodiment for performing this function includes a

hydraulic piston and cylinder subassembly 96, which is connected to the boom through

a plate structure made up of a diagonal boom plate 116, a forwardly extending boom

plate 118, and a lateral lift plate 120,1 which are shown in Figures 2 and 3, reproduced

below. Id. at col. 11, ll. 5-18.




1
    The district court and the parties referred to these plates collectively as a “lift plate.”


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       When not in use, an operator may lift the stabbing apparatus up out of the way

by activating the boom. Frank’s asserted claims 6, 7, and 8 against Weatherford, each

of which involves pivoting the boom up and down but does not require yawing (side-to-

side movement).

       Claim 6, for instance, states2:

       6. A system for making up a vertically 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 and lower the second end of said boom which carries
                       said jaws, and to elevate said boom to a location where it
                       extends in a generally vertical direction;
              ... .
       a remote control assembly detachably connected to said boom and jaw
              subassembly . . .

Id. at col. 22, l. 20 - col. 23, l. 39 (emphasis added). While none of the foregoing claims

requires yawing, other claims of the ’020 patent do include such a limitation. Id. at col.

18, ll. 60-64 (claim 1); col. 19, ll. 42-43 (claim 2); col. 20, ll. 45-51 (claim 3); col. 22, ll.

13-19 (claim 5).

       The parties presented the trial court two limitations for claim construction:

“means for selectively pivoting said boom about said horizontal axis to raise and lower

the second end of said boom which carries said jaws, and to elevate said boom to a

2
  The “means for selectively pivoting” limitations in claims 6, 7, and 8 are identical with
the exception that the location where the boom “extends in a vertical direction” is
identified as a “parked” location in claim 8. Because the parties agree that the addition
of “parked” does not affect the claim construction of the limitations in a way that is
pertinent to this case, this court treats these limitations identically.


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location where it extends in a generally vertical direction” and “detachably.” Frank’s

Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., No. CIV-01-104-F, slip. op.

at 2-8 (W.D. Okla. July 22, 2002). The parties and the district court agreed that the

“means for selectively pivoting” limitation is in means-plus-function format, governed by

35 U.S.C. § 112, ¶ 6. The parties also agreed on the function of the means-plus-

function limitation, namely “selectively pivoting said boom about said horizontal axis to

raise and lower the second end of said boom which carries said jaws, and to elevate

said boom to a location where it extends in a generally vertical direction.” ’020 patent,

col. 22, ll. 61-66. The parties disputed, however, the structure corresponding to the

claimed function disclosed in the specification. For Frank’s, the corresponding structure

is the piston and cylinder subassembly; for Weatherford, the structure includes the lift

and boom plates disclosed in the preferred embodiment of the invention. The district

court agreed with Weatherford:

      [The “means for selectively pivoting”] must necessarily include a lift plate
      located under the boom. The boom rests on the lift plate, and the boom is
      not connected to the lift plate. The 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 disagrees, arguing the district court improperly imported structure unnecessary

to perform the recited function of pivoting the boom about the horizontal axis. Instead,

as noted, Frank’s asserts that the relevant corresponding structure is the piston and

cylinder subassembly.

      In reaching its interpretation, the district court also examined the prosecution

history of the ’020 patent. Id. The ’020 patent is a continuation of Application Ser. No.




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203,252, which issued as Patent No. 4,921,386 (the ’386 patent). During prosecution of

the ’386 patent, the examiner required the applicant to distinguish the invention from the

casing handling device described in U.S. Patent No. 3,840,128 issued to Swoboda, Jr.

et al. (Swoboda). The Swoboda device used a cylinder attached and under the boom

for the lifting function. To distinguish the Swoboda device, the applicant noted that its

position compromises its use: “[a lifting cylinder,] located directly below the boom and

directly connected thereto, [that includes] a yawing piston and cylinder subassembly

which extends at an acute angle to the longitudinal axis of the boom, and is attached 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 response to March 3, 1989 PTO action in Application No. 203,252, at 41 (emphasis in

original) (Amendment).    In other words, a lifting cylinder directly connected to and

located below the boom cannot be used with the ’020 patent. The applicant also argued

that the “spatial and positioning limitation” in Swoboda “is overcome in the present

invention by connecting the [cylinder which lifts the boom] not directly to the boom, but

by connecting it indirectly to the boom through securement” to the lifting plate. Id.

(emphasis in original).

       With respect to the claim term “detachably,” Frank’s would give the word no

special meaning, but read it to include no limitation involving the ease of detachability.

Conversely, Weatherford argued “detachably” should be limited to parts that can be

easily and quickly taken apart or disconnected. The district court ruled “detachably”

“means that the component or subassembly in question may be readily disconnected.”

Frank’s Casing Crew, No. CIV-01-104-F, slip. op. at 16 (W.D. Okla. July 22, 2002).




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       Following the district court’s claim construction, Frank’s filed a motion for

summary judgment of infringement.        Weatherford filed a cross motion for summary

judgment of non-infringement. In granting summary judgment of no literal infringement,

the district court found “that no reasonable jury could find an insubstantial difference

between the two raising and lowering mechanisms” of claims 6, 7, and 8, and of

Weatherford’s StabMaster. Frank’s Casing Crew, No. CIV-01-104-F, slip. op. at 26

(W.D. Okla. May 28, 2003). The court concluded: “The two mechanisms represent two

distinct structural approaches to performing essentially the same function [and] [e]ach

approach has its advantages and disadvantages.” Id. The district court also found no

infringement under the doctrine of equivalents for the same reasons and no literal

infringement under § 112, ¶ 6. Finally, the district court expressly noted that the raising

and lowering mechanism of the StabMaster was not based on “after-developed

technology.” Id. The district court also held that the prosecution history of the ’386

patent “amounted to a disclaimer” of the “below-mounted and directly-attached lifting

means.” Id. On appeal, Frank’s challenges the district court’s interpretation of the

claimed “means for selectively pivoting” clause and the term “detachably” as well as the

summary judgment of non-infringement.

       In a separate ruling, the district court denied Weatherford’s request for attorney

fees and costs, declining to find the case “exceptional” under 35 U.S.C. § 285. Frank’s

Casing Crew, No. CIV-01-104-F (W.D. Okla. July 18, 2003). Weatherford cross appeals

the district court’s finding that this case was not exceptional.




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                                             II.

       This court reviews a district court's grant of a motion for summary judgment

without deference. Kemco Sales Inc. v. Control Papers Co., 208 F.3d 1352, 1359 (Fed.

Cir. 2000). This court also reviews claim construction 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 other 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 trial court may determine infringement on summary judgment only “when no

reasonable jury could find that every limitation recited in the properly construed 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 equivalents of the

invention by statements in the specification that disclaim coverage of subject matter. J

& M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 1366 (Fed. Cir. 2001).               Such

limitations on the scope of equivalents are legal determinations, which this court reviews

without deference. Id. Although the determination of whether a case is exceptional is

a question of fact reviewed for clear error, this court reviews a district court’s decision to

award attorney fees in an exceptional case only for abuses of discretion. Cybor Corp.,

138 F.3d at 1460.

                                             III.

       As noted, the claim element “means for selectively pivoting” is in means-plus-

function format and governed by § 112, ¶ 6. A means-plus-function limitation requires a

court first to identify the claimed function and then to determine the structure in the




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specification that corresponds to that function. Omega Eng’g, Inc. v. Raytek Corp., 334

F.3d 1314, 1322 (Fed. Cir. 2003). The function of the limitation in claims 6 through 8

“selectively pivot[s] said boom about said horizontal axis to raise and lower the second

end of said boom which carries said jaws, and [. . .] elevate[s] said boom to a location

where it extends in a generally vertical direction.” ’020 patent, col. 22, l. 20 - col. 23, l.

39.

       The district court determined that the structure for this function necessarily

includes a lift plate under the boom. The specification amply supports the trial court’s

identification of corresponding structure. The only structure identified in the ’020 patent

for performing the pivoting function is the lift plate under the boom. Id. at Figures 3-5,

col. 11, ll. 5-18. The ’020 patent discloses a piston and cylinder subassembly, but any

mention of that subassembly in connection with 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 on

occasion refers to the piston and cylinder subassembly without mentioning the lift plate,

id. at Abstract; col. 10, ll. 44-50; col. 11, ll. 21-23; col. 17, ll. 15-22, but the only

embodiment showing use of the piston and cylinder subassembly discloses a direct

connection to the lift plate.     The district court correctly identified the lift plate as

necessary structure for the lifting function.

       The prosecution history supports the district court’s reading of the claims. In

distinguishing the Swoboda device, the applicant stated that the lifting cylinder “simply

cannot be used” when directly connected to the boom. Amendment at 41 (emphasis in

original). This statement underscores the essentiality of the lift plate to the claimed

function.




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       A consistent reading of the claims also supports the trial court’s claim

construction. In other words, “the same terms appearing in different portions of the

claims should be given the same meaning unless it is clear from the specification and

prosecution history that the terms have different meanings at different portions of the

claims.” Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001).

If possible, this court construes claim terms “in a manner that renders the patent

internally consistent.” Budde v. Harley-Davidson, 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” should have the same meaning in

these claims as in claims 6 through 8, unless the specification gives some reason to

expect otherwise. Because the specification does not suggest any reason to depart

from a consistent meaning, the pivoting limitation includes a lift plate located under the

boom. Otherwise the device could not perform a yawing function.

       This court recognizes that the principle of consistency within claims operates

within the framework 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 appears in claims of common ancestry.”); Pitney

Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1310 (Fed. Cir. 1999) (“A patent’s

written description can set forth more than one definition of a claim term.”). In this case,

however, this court discerns a sufficient relationship between the claims with and

without a yawing function. In making this determination, this court has read column 17,

lines 19-29, of the ’020 patent.     This passage states that the “piston and cylinder




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subassembly 96 is retracted so that the boom is pulled upwardly” and that the “[r]aising

of the . . . boom . . . is effected by the upward lifting of the . . . plate.” This passage

teaches the role of the piston and cylinder subassembly in the lifting of the boom. This

passage, however, does not expressly disclose use of the piston and cylinder

subassembly to lift the boom without the lift plate. Instead the specification tells one of

skill in this art that the subassembly effects the “upward lifting” by means of the plate.

The lift plate is not superfluous structure between the piston and cylinder subassembly

and the boom, but an essential feature that is necessary to enable the embodiment to

yaw and lift at the same time. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,

1321 (Fed. Cir. 2003) (The corresponding structure to a function set forth in a means-

plus-function limitation “must be necessary to perform the claimed function.”). Thus, the

means-plus-function limitation must have the same structure in claims with and without

the yawing function. The specification gives no reason to read the same limitation

differently in claims with or without yawing. Because the ’020 patent neither clearly

indicates that the pivoting limitation should have 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 inconsistent and the invention

inoperable.    Because these reasons sufficiently support the district court’s claim

construction, this court need not reach the district court’s disclaimer finding.

       Turning now to the infringement inquiry, literal infringement requires that each

and every limitation set forth in a claim appear in an accused product.            Becton

Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 796 (Fed. Cir. 1990).            “Literal




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infringement of a § 112, ¶ 6 limitation requires that the relevant structure in the accused

device perform the identical function recited in the claim and be identical or equivalent

to the corresponding structure in the specification.”     Odetics, Inc. v. Storage Tech.

Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999). Although the issue of whether an accused

device includes a structural equivalent under § 112, ¶ 6 claim is a question of fact, id. at

1268, the district court may find the absence of an equivalent where “no reasonable jury

could have found that the accused device has an equivalent to the disclosed structure.”

Chiuminatta Concrete Concepts Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed.

Cir. 1998).

       Because structural equivalents under § 112, ¶ 6 are included within literal

infringement of means-plus-function claims, “the court must compare the accused

structure with the disclosed structure, and must find equivalent structure as well as

identity of claimed function for the structure.” Pennwalt Corp. v. Durand-Wayland, Inc.,

833 F.2d 931, 934 (Fed. Cir. 1987) (emphasis in original). This inquiry for equivalent

structure under § 112, ¶ 6 examines whether “the assertedly equivalent structure

performs the claimed function in substantially the same way to achieve substantially the

same result as the corresponding structure described in the specification.” Odetics, 185

F.3d at 1267. This case satisfies the requirement of an identity of function between the

under-mounted hydraulic cylinder on Weatherford’s device and the hydraulic cylinder

attached to the lift plate in the ‘020 patent disclosure. Nonetheless, as the district court

correctly discerned, no reasonable jury could fail to find a substantial difference

between the two raising and lowering mechanisms in the accused device and the ’020

patent.   As the trial court observed, the two mechanisms “represent two distinct




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structural 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 incompatibility between the two devices” underscores this

finding. Id. at 26. Thus, this court agrees with the district court that summary judgment

of non-infringement under § 112, ¶ 6 is appropriate.

       There is also no possible equivalent under the doctrine of equivalents.              The

primary difference between structural equivalents 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 court has explained, “[a] proposed equivalent must have

arisen at a definite period in time, i.e., either before or after [patent filing]. If before, a §

112, ¶ 6 structural equivalents analysis applies and any analysis for equivalent structure

under the doctrine of equivalents collapses into the § 112, ¶ 6 analysis. If after, a non-

textual infringement analysis proceeds under the doctrine of equivalents.” Id. In this

case the proposed equivalent – a lifting mechanism without a lift plate – was in use

before filing of the patent, therefore this court need not conduct a separate analysis

under the doctrine of equivalents. See, e.g., Kemco Sales, 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 tests, a structure failing the 35 U.S.C.

section 112, paragraph 6 test under either or both prongs must fail the doctrine of

equivalents test for the same reason(s).”).

       Because affirming the district court’s claim 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 claim construction of “detachably.”




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                                             IV.

       Weatherford’s cross-appeal challenges the district court’s denial of attorney fees.

This court reviews the district court's denial of attorney fees under 35 U.S.C. § 285 for

an abuse of discretion. Va. Panel Corp. v. MAC Panel Co., 133 F.3d 860, 867 (Fed.

Cir. 1997). This court affords trial judges discretion to award attorney fees for good

reasons. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 866-67 (Fed. Cir. 1985).

After presiding over the preparation and trial of the case, the trial judge can best weigh

the relevant considerations, such as the closeness 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 punitive sanctions or to fair allocation of the burdens of

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 attorney fees and costs, the district court

weighed a variety of factors, including the adequacy of Frank’s investigation before it

sued Weatherford and the allegations of litigation misconduct based on its decision to

persist in offering arguments dismissed 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 that “[t]his is simply

not a case in which the conduct of the plaintiff, in filing and prosecuting the action, was

offensive to the court (even mildly so).” Id. at 5.




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                                              V.

       In sum, this court affirms the district court’s conclusion that the “means for

selectively pivoting” must include a lift plate located under the boom and also affirms the

district court’s summary judgment of non-infringement. 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




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