This disposition is nonprecedential

LINN, Circuit Judge.

Schoeller-Bleckmann Oilfield Equipment AG ("Schoeller") appeals from a decision in an inter partes review ("IPR") of the United States Patent and Trademark Office Patent Trial and Appeal Board ("Board") holding invalid as anticipated and obvious claims 13-15, 17, and 18 of Schoeller's U.S. Patent No. 7,866,397 ("`397 patent"). Churchill Drilling Tools US, Inc. v. Schoeller-Bleckmann Oilfield Equip. AG, IPR2014-00814 (P.T.A.B. Oct. 9, 2015) ("Op."). Because we see no reason to disturb the claim construction of "ball-like portion," we affirm the Board's decision of unpatentability of claims 17 and 18.

BACKGROUND1

The '397 patent is directed to a mechanism for allowing and restricting the flow of liquid through a drill string to activate and deactivate a downhole tool.

The '397 patent includes several relevant embodiments of its invention. The first, shown in Figures 1-5 uses a ball activator, which is dropped down the drill string to land on a seat, which, in turn, restricts the flow of fluid, and builds pressure above the seated ball. The pressure builds until it is sufficient to slide the entire sleeve down, exposing side ports to allow a flow of fluid. This embodiment does not allow a return to the default flow state.

Another embodiment uses "a deformable activator in the form of [a] ball-dart combination, which takes the place of the large non-deformable ball 14." '397 patent, col. 8, ll. 59-61. Figures 8 and 9 show such a deformable activator, which can be "launched down the drill string to engage a seat provided in the axially shiftable sleeve." Id., col. 6, ll. 34-40. This activator has "a ball-like portion 51 which engages the seat 13, and a dart-like portion 52 projecting downwardly therefrom." Id., col. 8, ll. 64-65. This mechanism may be deactivated by launching a set of small non-deformable balls, which block the flow control device, increasing pressure, which "eventually causes downward movement (accompanied by sufficient inward deformation of actuator 50) through the seat 13 and the sleeve 12." Id., col.9, ll. 36-38.

A further embodiment is pictured in Figures 9a and 9b, which show deformable activators 50a and 50b. To activate the bypass mode, a non-deformable ball blocks the passageway through the center of the activator and the slideable sleeve slides down the drill string to align the bypass ports. To deactivate the bypass mechanism, deactivating balls are launched, which further increases pressure by blocking the bypass ports, until the pressure deforms "the deformable portion 51 of the activator [which] then yields under this load, thereby allowing the entire activator to pass downwardly through the valve seat." Id., col.10, ll. 19-21.

On May 23, 2014, Churchill filed a petition for IPR. The Board instituted review as to claims 13-15, 17, and 18, as (1) anticipated by prior art WO 02/14650 A1, PCT/GB01/03492 (published Feb. 21, 2002) ("WO 02/14650"); (2) anticipated by U.S. Patent No. 4,310,050 ("Bourgoyne"); and (3) obvious over a combination of both.

After claim construction, the Board issued a final written decision, holding claims 13-15, 17, and 18 unpatentable on all three grounds.

We have jurisdiction over an appeal from a final decision in an IPR under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 319.

DISCUSSION

Schoeller contests the Board's claim construction2 of "ball-like portion" and contends that under a proper construction of that term, claims 17 and 18 are neither anticipated nor obvious.3 Schoeller's anticipation and obviousness challenges regarding claims 17 and 18 are dependent on its construction of the term "ball-like portion."

We review the Board's ultimate claim construction de novo as an issue of law, and review any factual determinations underlying its claim construction and based on extrinsic evidence for substantial evidence. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279-80 (Fed. Cir. 2015) (citing Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015)), aff'd, Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131 (2016).

Claim 17 depends from claim 13, and reads as follows, with the limitations from claim 13 included in braces and the terms at issue emphasized:

'397 patent, col. 15, ll. 22-44; id., col. 16, ll. 1-5. Claim 18 adds that "the activator is hollow and is provided with an internal flow control device." Id., col. 16, ll. 6-8. Claims 17 and 18 are not argued separately on appeal.

The first disputed issue is whether the Board properly construed "ball-like portion" in Claim 17 as "a structure with at least one outer curve." More concretely, the issue is whether "ball-like portion" is limited to the "deformable ring" 51 shown in Figures 8, 9, 9(a), and 9(b), or whether it also encompasses a deformable ball.

Schoeller argues that the '397 patent exclusively uses "ball-like" portion to refer to the deformable ring of the ball-dart combination shown in Figures 8, 9, 9(a), and 9(b), and that when referring to an actual ball as used in the embodiments shown in Figures 1-5, the specification uniformly uses some variation of the term "ball." Schoeller particularly points to the following passages:

'397 patent, col. 8, ll. 1-4; id., col. 8, l. 59 through col. 9, l. 1 (emphasis added). Schoeller does not explain, however, why the passage noted above with respect to Figures 8 and 9 is limiting. There is no doubt that the deformable ring 51 shown in Figures 8, 9, 9(a), and 9(b) is "ball-like," but this does not necessarily indicate that "ball-like" is thereby limited to a deformable ring. We have repeatedly stated that it is inappropriate to construe claim terms as limited to preferred embodiments without a clear intent to redefine the term or a clear disavowal of claim scope. See, e.g., Thorner v. Sony Comput. Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).

Relying on In re Abbott Diabetes Care, 696 F.3d 1142 (Fed. Cir. 2012), Schoeller argues that the '397 patent manifests an implicit definition of "ball-like" as excluding a ball, and including only a ring that interacts in a particular way with the dart-like portion, namely by "forming a seal at the outer circumference of the cylindrical dart." Appellant's Br. 32. Schoeller argues that claim 17 requires a particular interaction between a "ball-like portion" and a "dart-like portion," and that because those terms are only used in reference to the components in Figures 8, 9, 9(a), and 9(b), the claim must cover only that particular interaction between the elements.

Schoeller reads Abbott too broadly. In Abbott, the claims themselves suggested the exclusion of wires from the "electrochemical sensor" and the only discussion of wires in the specification of the patents at issue was to disparage their use in the prior art. Abbott, 696 F.3d at 1149. As we stated, "Abbott's patents `repeatedly, consistently, and exclusively' depict[ed] an electrochemical sensor without external cables or wires while simultaneously disparaging sensors with external cables or wires." Id. at 1150 (quoting Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1303 (Fed. Cir. 2004)). The same is not true of the instant '397 patent, which does not disparage the use of a deformable ball as a "ball-like" portion.

Similarly, in claiming the interaction between the "ball-like" and the "dart-like" portions of the deformable activator, claim 17 requires only that the "ball-like portion at least is deformable and is capable of seating on said seat," and the "dart-like portion is capable of projecting downwardly through the seat." '397 patent, col. 16, ll. 3-5. The claim does not require or imply that the "balllike" portion form a seal on the outer circumference of the dart.

Moreover, the '397 patent itself appears to allow a ball as a species of the "ball-like portion":

'397 patent, col. 5, ll. 44-53 (emphasis added). Schoeller attempts to parse the two sentences above as referring to two different embodiments, relying on the use of the indefinite article "a" instead of the definite article "the" in the second sentence. This argument is inapposite—both sentences are referring to the "deformable activator," and that portion of the specification is talking about generalities and not particular embodiments. Schoeller also argues that because the second mention of the word "ball" is in quotes, this means that "ball" is referring to the genus that includes both "actual balls" and "ball likeportions." We find this argument unconvincing, as it fails to account for the first use of "the ball," and is contrary to the natural reading of "ball-like portion" as the genus of both a ball and a ring.

We also note that the '397 patent repeatedly uses the phrase "ring" or "deformable ring" to refer specifically to element 51 in Figures 8, 9, 9(a), and 9(b). See '397 patent, col. 10, ll. 23-25 ("The deformable activators 50, 50a, 50b disclosed herein effectively are a form of deformable dart, and having an external resilient ring . . . ."); id., col. 10, ll. 27-28 ("[T]he deformable ring can shear under load . . . ."); id., col. 10, ll. 30-31 ("The ring therefore forms a seal on the outer circumference of the dart . . . ."). If the patentee had wanted to limit the scope of claim 17 to those embodiments, the patentee had a narrow term readily available from the specification.

For these reasons, we affirm the Board's construction of "ball-like portion" under the broadest reasonable construction standard as a "structure with at least one outer curve."

Schoeller does not contest on appeal that claims 17 and 18 are anticipated by WO 02/14650 under the construction affirmed above. The Board's decision of unpatentability of claims 17 and 18 is therefore affirmed on that basis. We need not and do not address the Board's conclusions that Bourgoyne also anticipated claims 17 and 18, or that the combination of WO 02/14650 and Bourgoyne rendered obvious claims 17 and 18. Finally, we do not address the Board's construction of "deformable," which relates only to the Bourgoyne anticipation issue we do not reach.

AFFIRMED.