E.D. Tex.: Halliburton’s Fragile Gel Patent Found Indefinite

HalliburtonHalliburton v. M-I LLC (E.D. Tex., Oct 18, 2006).

Halliburton decided to take advantage of the E.D. Texas patent excitement and sued M-I for infringing its patents directed to a method of drilling a borehole without losing “fragile gel” drilling fluid. 

On motion, the district court granted summary judgment of invalidity based on indefiniteness. In particular, the court could not find any way to give meaning to the claim term “fragile gel.”

Datamize makes clear that adequate support in the specification can make a purely subjective claim term definite. However, when, as here, the specification provides only a subjective definition for a subjective claim term, there is no “objective anchor” by which skilled artisans can identify the bounds of the claims.


14 thoughts on “E.D. Tex.: Halliburton’s Fragile Gel Patent Found Indefinite

  1. 14

    91 patents with “fragile gel” is a little misleading.

    The USPTO site lists only 7 patents containing “fragile gel” AND drill. Only 4 seem to have titles related to drilling for oil. Searching for “fragile gel” alone lists hair gel patents, etc, which are probably not a related field. It may indeed be a term of the art, but maybe not the right art.

    Maybe some of you guys with your fancy search tools can find more.

  2. 13

    Although I’ve only read the postings above, it seems to me that the use of the term “fragile gel” in 91 other patents would imply that it is a “term of art” and therefore its meaning should be known to one of ordinary skill and not require further definition. I wonder if the drafter’s attempts to define what might be considered a term of art actually worked against him by a) implying that it is not commonly known or requires explanation, and b) introducing relative terms (e.g., easily, quickly, minimum) that might provide some substance to an argument for indefiniteness.

    Maybe the lesson here is that if the meaning of a term is relatively well known, describing it in the specification may actually be counterproductive.

    Still, if it is a term commonly used in the art, and the drafter’s definition(s) do not conflict with a PHOSITA’s understanding of it, I would think it should not be indefinite.

  3. 12

    The law of claim construction at the Federal Circuit is actually the opposite to one of the assumptions above. There is NO requirement that the meaning be “easily ascertained.” Bancorp v Hartford (2004), Metabolite (2004), Smithkline Beecham (2004)(claims NEED NOT be plain on their face; must be amenable to construction, however difficult); Energizer Holdings (2006) (claim indefinite only if reasonable efforts at claim construction prove futile; job may be “formidable” and conclusion may be one over which reasonable persons will disagree); Invitrogen v Biocrest (2005) (indefinite only if insolubly ambiguous; test is not whether infringer can determine infringement but rather whether A SKILLED ARTISAN can understand the bounds of the invention). Moreover, the challenged phrase in method claim 1 is only in the preamble. That opens up another whole question of whether this is a limitation anyway. Does this phrase breathe life and meaning into a well recited series of method steps that DO NOT EVEN MENTION THE GEL? Moreover, these broader claims don’t explicitly say anything about the change in “state” from gel to liquid.

  4. 11

    Malcolm, unless the inventor chooses to be his own lexicographer, the PHOSITA shall look at the term as normally understood in his art or as found in the dictionary. In that regard, it is not always required that the applicant define with specificity each and every claim term. If in fact a claim term has been found in 10,000 patents, as you offer, it would have relevance since that term then would be already known and understood. However, the applicant in THIS instance would then be bound by that understanding in the absence of any other discussion in his specification. Whether he wanted that or not is another story.

    Having said all this, I have no opinion one way or the other on this particular case since one would have to delve into the level of skill in that field and what a person of ordinary skill there would understand. Certainly, though, it appears off hand that something more descriptive than “fragile” could have been used without narrowing the claim.

  5. 10

    Exactly…the patent expressly states
    A fragile gel –as used herein–…

    It does not say something like “a fragile gel such as found in patent X,XXX,XXX has the following properties…”

    Given what the applicant (or applicant’s attorney) wrote the written description is completly silent as to the metes and bound of what was intended by a fragile gel. It certainly does not state anything with regard to its properties when the drill string is spinning.

  6. 9

    DD set forth the problem quite plainly in his comment above. The issue is not whether one skilled in the art COULD come up with a definition based on the specification and his/her knowledge.

    The issue is: is the term “fragile” defined with sufficient definiteness such that one of skill in the art is on notice as to the exact scope of the claimed invention.

    Whether the term “fragile gel” is “mentioned” in one patent or ten thousand patents is of zero relevance to the patentee unless the term has a fixed unambiguous meaning that is easily ascertained upon reading the specification of THIS patent.

    Can anyone suggest a possible reason why the applicant in this case did not define “fragile” in an unambiguous way? I can think of two.

  7. 8

    The claims arn’t indefinite, but the main ones probably are obvious. Fragile gel basically is an oil drill lubricating gel the becomes more viscous as the drill spins (gel heats up) and returns to its original viscosity once the drill stops (gel cools).

    U.S. 6,887,832 Claim 1 reads:
    1. A method for conducting a drilling operation in a subterranean formation using a fragile gel drilling fluid comprising: (a) an invert emulsion base; (b) one or more thinners; (c) one or more emulsifiers; and (d) one or more weighting agents, wherein said operation includes running casing in a borehole.

    I’ve got a drill press down in my basement (my subterranean formation). The goop I put on the drill bit has an invert emulsion base, thinners, emulsifiers, weighting agents, and who knows what else. The goop gets liquidy when it heats up and goes back to a gel on cooling (e.g. fragile gel).

    There are 150 claims and the lower court was reading part of the specification into the claims to make them indefinite. The lower court was probably pissed at having to decipher the “writing style” contained in U.S. 6,887,832 and figured a trip up to the big house for Cheney and his boys might be a good way to express the lower court’s displeasure.

  8. 7

    I symphathize with DD’s comments but really the question is not what the district judge, DD or I think these words mean. Rather, the question is what the overall description means to a person skilled in this art. I don’t think it serves the patent system well to pin a claim down to narrow details when the claim says “fragile gel.” It would seem evident from what I’ve read thus far (which is not a lot) that such a substance becomes a non-gel without a lot of coaxing. The PTO apparently didn’t recognize a problem with this phrase (though I have not see the file history). I also suspect that Michael is right in wondering whether the district judge might have wanted a mechanism to get this patent to the Fed. Cir. for some claim construction ASAP.

  9. 6

    I read the patent as well. I perused what is likely one of the most extensive list of references cited that I have ever seen, at least two of which relate to other work by the con-inventors. I also quickly perused the approximately 150 claims of the patent (yes…about 150).

    I also perused the alleged infringer’s website and noted that it is recognized for its “drill mud” products.

    My off-hand impression is that M-I is doing its very best to help out PHOSITAs since M-I is likely familiar with what a fragile get comprises given what is likely its extraordinally high level of skill in the relevant art. Never mind that it likely has a fairly good handle on what the patent covers. What is important is that M-I is extending a helping hand to the little guys who are not as well versed in “muds” as M-I.

    I do not envy the CAFC on this one, an “overdrafted” specification coupled with claims in such numbers that they would easily fill a football field.

    IMHO the Texas judge did what he thought was expedient, and the CAFC will do the same…send it back and tell the judge to roll up his sleeves and get to work.

  10. 5

    A “fragile gel” as used herein is a “gel” that is
    –easily– disrupted
    –easily– thinned
    becomes –less gel-like– and –more liquid-like–

    –quickly– returns to a gel

    reversing from a gel back into a liquid form with
    –minimum– pressure,
    –minumum– force
    –minimum– time

    Yeah….that’s a definite description of a substance. Anyone care to tell me what ranges are involved with “easily”, “quickly”, “less gel-like”, “more liquid-like”, or “minimum”?

  11. 4

    From reading the post and Datamize, it seems that the summary judgment of invalidity for indefiniteness is at least suspicious. The holding of Datamize was that the phrase “aestethically pleasing” in a claim rendered the claim indefinite where the patent did not tell how to determine when that condition was met or not met. To me, the word “fragile” is easier to define than “aesthetically pleasing” which is inherently directed to subjective opinion. Moreover, the Halliburton patent as quoted in the prior comment seems to give a technical description. If a PHOSITA could understand that, in the full context of the patent, the other claim elements, and the objective(s) served by the invention as claimed, etc., some pretty powerful evidence should be needed to sustain the adverse ruling if it were after trial. Since this ruling seems to have been on summary judgment, all that Halliburton should have needed to defeat the motion was credible evidence sufficient to raise an issue of fact as to whether a PHOSITA could have understood the phrase objectively.

  12. 3

    If you are interested in 112 claim “indefiniteness” fatality legal and factual issues, you should have attended the excellent presentation just given on that subject last week at the Annual AIPLA Meeting.

  13. 2

    I just looked at the patent. That one is likely going back down! Indefinite?

    “A “fragile gel” as used herein is a “gel” that is easily disrupted or thinned, and that liquifies or becomes less gel-like and more liquid-like under stress, such as caused by moving the fluid, but which quickly returns to a gel when the movement or other stress is alleviated or removed, such as when circulation of the fluid is stopped, as for example when drilling is stopped. The “fragileness” of the “fragile gels” of the present invention contributes to the unique and surprising behavior and advantages of the present invention. The gels are so “fragile” that it is believed that they may be disrupted by a mere pressure wave or a compression wave during drilling. They seem to break instantaneously when disturbed, reversing from a gel back into a liquid form with minimum pressure, force and time and with less pressure, force and time than known to be required to convert prior art fluids from a gel-like state into a flowable state.”

  14. 1

    The Federal Circuit’s statement in Datamize that that a claim limitation “requires an objective anchor” sureley went further than necessary to invalidate a claim with the phrase “aesthetically pleasing.” The Federal Circuit, like diligent patent drafters, ought to be careful before stating that something is “required.” Accused infringers now have a proven new weapon: the “objective anchor” standard. To get a sense of the force of this argument, look at Halliburton’s patent, 6887832, including its express definition of “fragile gel.”

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