'142 claims an automatic drilling system that controls the release of a drill string in response to a combination of four parameters (e.g., bit weight, drilling fluid pressure, drill string torque, and drill string RPM). Prior art drillers allegedly relied upon a single parameter, the used weight on the bit (WOB), to regulate the release of the drill string.

Claim 14 was the asserted claim.

14. A method for automatically regulating the release of the drill string of a drilling rig drill, comprising the steps of:
measuring drilling fluid pressure and bit weight;
    producing a first signal in response to changes in drilling fluid pressure, said first signal representing the changes in drilling fluid pressure;
    producing a second signal in response to changes in bit weight, said second signal representing the changes in bit weight;
    selecting any one of said first signal, said second signal, and both said first and said second signals to control the release of said drill string; and
    relaying said selected signal or signals to a drill string controller which regulates the release said drill string in response to said selected signal or signals.

In claim construction, the district court had "limited “selecting” in claim 14 to manual operation of valve selectors by a drilling rig operator," based upon the specification and prosecution, though the prosecution argument had been applied to claim 1, not 14.

Pason's system chooses drilling parameters electronically via computer interface.

Because electronic selection of drilling parameters does not involve manual operation of valve selectors or manual calibration of regulators, the district court concluded that Varco did not prove a likelihood of infringement. The district court did not, however, evaluate whether Varco proved a likelihood of infringement of this element under the doctrine of equivalents (DOE).

"The district court then construed the “relaying” step in claim 14. The district court construed “relaying” to mean “transmitting a signal by means of pneumatically operated valves,”" again based upon the specification.

Turning then to Pason’s system, the district court concluded that Varco was unlikely to prove infringement of this claim element because Pason did not use pneumatically operated valves. Id., slip op. at 15. Again, the district court did not evaluate whether Varco proved a likelihood of infringement under the doctrine of equivalents.

Finally, the district court acknowledged Pason’s affirmative defense of invalidity under 35 U.S.C. §§ 102(b) and/or 103(a) based on U.S. Patent No. 3,233,163 (the ’163 patent) and other prior art. Id., slip op. at 17. Without a likelihood of success on the infringement issue, the district court declined to address the prior art issues.

As recently outlined in this court’s Phillips decision, “[i]t is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The claim terms “‘are generally given their ordinary and customary meaning.’” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation.” Id. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. “In examining the specification for proper context, however, this court will not at any time import limitations from the specification into the claims.” CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002)). Applying these principles to claim 14, this court concludes the trial court’s construction was unduly narrow.

With regard to the selecting step -

The claim language itself suggests a broader reading of claim 14. In the selecting step, the relevant language reads:

14. A method for automatically regulating the release of the drill string of a drilling rig drill, comprising the steps of:
. . . .
selecting any one of said first signal, said second signal, and both said first and said second signals to control the release of said drill string;
. . . .

’142 patent, col. 28, ll. 34-35 (emphasis added).

The preamble recites that the method steps are to be performed automatically by the drilling rig. This language suggests that the selecting step is not limited to manual operation of valve selectors and/or manual calibration of regulators as construed by the district court. See Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)) (“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”); Innova/Pure Water, 381 F.3d at 1118 (“Language in a preamble limits a claim where it breathes life and meaning into the claim . . . but not where it merely recites a purpose or intended use of the invention.”) (internal citations omitted). Hence, the language of claim 14 (particularly the preamble) does not support the district court’s construction of this step.

In addition, the specification does not limit the selecting step to the manual operation of valve selectors or the manual calibration of regulators. Rather, the specification discloses an initial setup procedure in which an operator, using valve selectors 232-235, manually chooses the regulators 200-203 that will control the drilling operation once underway... [T]his portion of the specification sets forth an initial setup or calibration step that precedes the claimed selecting step. In effect, the district court erred by reading the initial setup or calibration step into the claimed selecting step... [T]he prosecution history confirms that selecting in claim 14 does not encompass the initial setup or calibration of the drilling system, but rather the conflict resolution process between primary and secondary controls during operation.

Finally, one potential reading of dependent claim 15 implicitly suggests “selecting” in the context of the initial setup or calibration of the automatic driller differs from “selecting” in the context of claim 14.

In sum, claim 14 does not suggest that the selecting step requires a two-part manual process as interpreted by the district court. Moreover, the specification and prosecution history confirm that the two-part manual process relied upon by the district court is distinct from the claimed selecting step. Thus, the district court’s interpretation of the selecting step was unduly narrow.

As to the relaying step -

[N]othing in the claim language requires or even suggests the use of pneumatically operated valves in performing the relaying step. Rather, the only discussion of pneumatically operated valves in the intrinsic record comes from the specification.

This disclosure and corresponding Figures do not limit the invention as a whole to the use of pneumatically operated valves; rather they merely list such valves as but one example of relays operable in the present invention. See C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (“Statements that describe the invention as a whole, rather than statements that describe only preferred embodiments, are more likely to support a limiting definition of a claim term.”) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)); SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005) (“References to a preferred embodiment, such as those often present in a specification, are not claim limitations.”) (quoting Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988)); Gillette, 405 F.3d at 1374 (“This court has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.”) (quoting Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986)); Gart v. Logitech, Inc., 254 F.3d 1334, 1342 (Fed. Cir. 2001) (noting that “drawings [depicting the preferred embodiment] are not meant to represent ‘the’ invention or to limit the scope of coverage defined by the words used in the claims themselves.”); see also ’142 patent, col. 24, ll. 27-35 (stating the present invention is not limited to the preferred embodiment).

Moreover, the specification’s disclosure of valves that “operate as relays” implicitly suggests that “relay” has a broader meaning than simply the preferred pneumatically operated valves. To illustrate, the applicant could have used terminology such as “relays are pneumatically operated valves” that expressly disavows alternative structures. As written, however, the specification contemplates that other structures may “operate as relays” in addition to the preferred pneumatically operated valves. Hence, the intrinsic record does not support the district court’s interpretation of the relaying step.

In conclusion, the CAFC instructed the district court in remand to also consider validity and the doctrine of equivalents -

For the aforementioned reasons, this court concludes the district court’s interpretation of both the selecting step and the relaying step was unduly restrictive. Because the district court’s flawed claim construction directly led to its denial of the preliminary injunction motion, this court vacates the denial and remands the case back to the district court for further proceedings. On remand, the district court may consider the proper interpretation of claim 14, the validity challenges to claim 14 under § 102 and § 103, and infringement of claim 14 by Pason’s system. Because this case seems to present an instance of after-arising technology (e.g., improvements on prior innovations), the district court may find it appropriate to consider infringement under the doctrine of equivalents. See Datascope Corp. v. SMEC, Inc., 776 F.2d 320, 3226 (Fed. Cir. 1985) (“‘an embellishment’ made possible by technological advances may not permit an accused device to escape ‘the web of infringement’”); Am. Hosp. Supply Corp. v. Travenol Labs., Inc., 745 F.2d 1, 9 (Fed. Cir. 1984) (“An appropriate range of equivalents may extend to post-invention advances in the art in an appropriate case.”); Hughes Aircraft Co. v. United States, 86 F.3d 1566, 1584 (Fed. Cir. 1996), remanded, 520 U.S. 1183 (1997), aff’d, 140 F.3d 1470, reh’g denied, 148 F.3d 1384 (Fed. Cir. 1998), cert. denied, 525 U.S. 1117 (1999) (holding that an inventor is not required to predict all future developments which enable the practice of his invention); SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 880 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc)) (“The law ‘does not require that an applicant describe in his specification every conceivable and possible future embodiment of his invention.’”); Smithkline Beecham Corp. v. Excel Pharm., Inc., 356 F.3d 1357, 1364 (Fed. Cir. 2004) (commenting that the “quintessential example of an enforceable equivalent” is after arising technology); Glaxo Wellcome, Inc. v. Impax Lab. Inc., 356 F.3d 1348, 1354 (Fed. Cir. 2004) (also commenting that the “quintessential example of an enforceable equivalent” is after arising technology).

Vacated and remanded.