Tubular Rollers, LLC v. Maximus Oilfield Products, LLC ( 2023 )

Case: 21-2319 Document: 51 Page: 1 Filed: 06/28/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TUBULAR ROLLERS, LLC, ROLLING TOOL, INC.,
H. LESTER WALD,
Plaintiffs-Appellants
v.
MAXIMUS OILFIELD PRODUCTS, LLC,
Defendant-Appellee
NABORS DRILLING TECHNOLOGIES USA, INC.,
Defendant
______________________
2021-2319
______________________
Appeal from the United States District Court for the
Southern District of Texas in No. 4:19-cv-03113, Judge An-
drew S. Hanen.
______________________
Decided: June 28, 2023
______________________
RYAN D. LEVY, Patterson Intellectual Property Law,
P.C., Nashville, TN, argued for plaintiffs-appellants. Also
represented by MARK ANDREW KILGORE, NATHAN I. NORTH,
SETH R. OGDEN; PHILLIP LEO FREE, JR., Phillip Free Law,
PLLC, Edmond, OK.
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2 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
JOHN HANSON BARR, JR., Meade Neese & Barr LLP,
Houston, TX, argued for defendant-appellee. Also repre-
sented by KYRIE CAMERON, EDGAR NEIL GONZALEZ, JOHN
ALLEN YATES, Patterson & Sheridan LLP, Houston, TX.
______________________
Before REYNA, HUGHES, and CUNNINGHAM, Circuit Judges.
Opinion for the court filed by Circuit Judge CUNNINGHAM.
Opinion dissenting-in-part filed by Circuit Judge REYNA.
CUNNINGHAM, Circuit Judge.
Tubular Rollers, LLC, Rolling Tool, Inc., and H. Lester
Wald (collectively, “Tubular”) appeal from decisions of the
United States District Court for the Southern District of
Texas granting summary judgment of noninfringement in
favor of Maximus Oilfields Products, LLC (“Maximus”) as
to three of Tubular’s patents: U.S. Patent Nos. 9,057,224,
9,291,009, and 9,598,915 (collectively, the “Asserted Pa-
tents”). Tubular Rollers, LLC v. Maximus Oilfield Prods.,
LLC, 506 F. Supp. 3d 489 (S.D. Tex. 2020) (“Decision I”);
Tubular Rollers, LLC v. Maximus Oilfield Prods., LLC, 554
F. Supp. 3d 886 (S.D. Tex. 2021) (“Decision II”). In its de-
cisions, the district court granted summary judgment of
noninfringement of (i) claims 18–20 of the ’224 patent,
claims 1–4, 6–12, and 15 of the ’009 patent, and claims 16–
20 and 24–26 of the ’915 patent based on its construction
of parallel, 1 and (ii) claims 1–5, 9–12, and 15 of the ’224
patent based on its construction of unrestricted. 2 Decision
1 These asserted claims either recite, or depend from
claims reciting, the Asserted Patents’ parallel axes limita-
tion (the “Parallel Claims”).
2 These asserted claims include one independent
claim reciting the ’224 patent’s unrestricted rotation limi-
tation and certain dependent claims (the “Unrestricted
Claims”).
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TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 3
I at 493–96; Decision II at 891–95; see also Tubular Rollers,
LLC v. Maximus Oilfield Prods., LLC, No. 4:19-CV-3113,
2020 WL 6278284, at *6–10 (S.D. Tex. Sept. 4, 2020)
(“Claim Construction Order”).
Because the district court did not err in its construction
of parallel, we affirm the district court’s grant of summary
judgment of noninfringement of claims 18–20 of the ’224
patent, claims 1–4, 6–12, and 15 of the ’009 patent, and
claims 16–20 and 24–26 of the ’915 patent, which is predi-
cated on that construction. And although we agree with
the district court’s construction of unrestricted, we vacate
the district court’s grant of summary judgment of nonin-
fringement of claims 1–5, 9–12, and 15 of the ’224 patent
and remand for further proceedings because the district
court failed to conduct sufficient infringement analyses as
to those claims.
I. BACKGROUND
A. The Asserted Patents
The Asserted Patents are all entitled “Devices and
Methods for Manually Moving Racked Tubulars.” 3 J.A. 14,
34, 52. The Asserted Patents cover a tool, and the related
method, for moving oil and gas drilling pipes called “tubu-
lars.” ’224 patent col. 1 ll. 6–9, col. 2 ll. 30–34, 47–50; De-
cision I at 490. Tubulars are typically hollow steel or
aluminum alloy pipes that are between 30 and 45 feet long
and weigh between 1100 and 3600 pounds. Decision I at
491. Workers commonly stacked tubulars using a “hand-
over-hand” motion, rolling them by hand to a rack where
they were stacked several layers deep. ’224 patent col. 2 ll.
17–24; Decision I at 491. This technique was time-consum-
ing and dangerous. Decision I at 491; ’224 patent col. 2 ll.
3 Because the Asserted Patents are related and
share a specification, we generally cite to the specification
of the ’224 patent.
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4 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
24–29. The patented tool attempts to solve these problems
by allowing workers “to move the [tubular] faster and more
safely than could be done by moving the [tubular] without
the tool.” ’224 patent col. 2 ll. 44–46.
Figure 1 shows a preferred embodiment of the present
invention:
’224 patent, fig. 1, col. 1 ll. 21–23, col. 3 ll. 1–23. The tool
has a wheel section 16 on one end and handle section 14 on
the other end. Id. col. 3 ll. 1–3. In the wheel section, there
is a wheel assembly 20 mounted for rotation along the
wheel section’s longitudinal axis X. Id. col. 3 ll. 10–11.
One issue in this appeal concerns the axes of the wheel
and handle sections, each of which has a longitudinal axis.
Id. col. 3 ll. 3–4. Independent asserted claim 16 and de-
pendent asserted claim 26 of the ’915 patent contain the
two limitations relevant to this issue.
Asserted claim 16 recites:
16. A tool for manually moving a racked tubular
along a raised horizontal surface, wherein the
racked tubular has an open end continuous with an
inner diameter, the tool comprising:
a shaft having a handle section with a lon-
gitudinal axis and a wheel section with a
longitudinal axis, wherein the longitudinal
axes of the handle section and the wheel sec-
tion are parallel, wherein the handle sec-
tion and the wheel section extend in
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TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 5
opposite directions from each other, and
wherein the wheel section terminates in a
free end that is insertable into the inner di-
ameter of the racked tubular; and
a plurality of interchangeable wheel as-
semblies, wherein each of the plurality of
wheel assemblies comprises a set of two
wheels that are mountable for rotation
about the longitudinal axis of the wheel
section of the shaft, wherein each of the
sets of two wheels has a maximum diame-
ter sized to be received inside the racked
tubular, and wherein the diameter of the
wheels in each of the plurality of wheel as-
semblies is different from the wheels in the
other wheel assemblies.
’915 patent col. 8 ll. 35–55 (emphasis added).
Asserted claim 26 recites:
26. The tool of claim 16 wherein the longitudinal
axes of the handle section and the wheel section are
collinear.
Id. col. 9 ll. 15–16 (emphasis added).
The other issue in this appeal concerns the wheel as-
sembly mounted for unrestricted rotation. Independent as-
serted claim 1 of the ’224 patent contains the limitation
relevant to this issue, reciting:
1. A tool for manually moving a racked tubular
along a raised horizontal surface, wherein the
racked tubular has an open end continuous with an
inner diameter, the tool comprising:
a shaft having a handle section with a lon-
gitudinal axis and a wheel section with a
longitudinal axis, wherein the longitudinal
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6 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
axes of the handle section and the wheel
section are collinear;
a wheel assembly mounted for unrestricted
rotation about the longitudinal axis of the
wheel section of the shaft; and
wherein the wheel section of the shaft and
the wheel assembly mounted thereon form
a distal end of the tool, and wherein the dis-
tal end of the tool is configured to be re-
ceived inside the racked tubular so that the
wheel assembly rollingly engages the
racked tubular.
’224 patent col. 7 ll. 9–24 (emphasis added).
B. Procedural History
In 2019, Tubular sued Maximus and Nabors Drilling
Technologies USA, Inc. (“Nabors”), alleging that the tool
that Maximus manufactures and sells to Nabors for drill-
ing usage infringed certain claims of the Asserted Patents.
See J.A. 78–90; Decision I at 490–91. 4 The district court
construed three claim terms relevant to this appeal. First,
it construed parallel to mean “extending in the same direc-
tion, everywhere equidistant, and not meeting.” Claim
Construction Order at *8–9. In doing so, it rejected Tubu-
lar’s proposed construction of “everywhere equally distant,
including collinear.” Id. (emphasis added). Second, the
district court adopted Tubular’s proposed collinear con-
struction as “lying on or passing through the same straight
4 In its original complaint, Tubular sued Nabors In-
dustries, Ltd., but substituted Nabors Drilling Technolo-
gies USA, Inc. as the proper defendant in its amended
complaint. See Tubular Rollers, LLC v. Maximus Oilfield
Prods., LLC, No. 4:19-CV-3113 (S.D. Tex. Oct. 13, 2020),
ECF No. 44.
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TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 7
line.” Id. at *9. Lastly, it declined to construe unrestricted
beyond its plain and ordinary meaning of “not restricted,”
and rejected Tubular’s proposed construction of “no addi-
tional mechanical resistance to rotation.” 5 Id. at *6–7, 9.
Thereafter, Maximus and Nabors filed their first mo-
tion for summary judgment of noninfringement, arguing
the accused tool could not infringe the Parallel Claims be-
cause the accused tool either has one single axis or two col-
linear axes. See J.A. 1310–11, 1315–17. The district court
granted the motion with respect to the Parallel Claims. See
Decision I at 493–96. Because Tubular admitted that the
axes of the accused tool’s handle and wheel sections were
collinear and because the parallel and collinear claim
terms were “mutually exclusive” as construed, the accused
tool could not infringe the Parallel Claims. See id. at 494–
95.
Maximus and Nabors later filed a second motion for
summary judgment of noninfringement, arguing the ac-
cused tool could not infringe the Unrestricted Claims be-
cause the accused tool’s bolts restrict the rotation of the
wheel assembly. See J.A. 1625–39. The district court
granted the motion in part as to Maximus and denied the
motion in part as to Nabors. See Decision II at 891–95.
On August 13, 2021, the district court entered a final
judgment under Federal Rule of Civil Procedure 54(b) in
favor of Maximus and dismissed with prejudice “any and
all” of Tubular’s claims against Maximus. J.A. 1. Tubular
now appeals, and the district court has stayed the case
pending resolution of this appeal. See Tubular Rollers,
5 Although the district court indicated that unre-
stricted does not require any construction, it also clarified
that a person of ordinary skill would understand unre-
stricted to mean “not restricted.” Claim Construction Or-
der at *7.
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8 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
LLC v. Maximus Oilfield Prods., LLC, No. 4:19-CV-3113
(S.D. Tex. Mar. 18, 2022), ECF No. 108. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. Standard of Review
“While the ultimate construction of a claim term is a
legal question reviewed de novo, underlying factual deter-
minations made by the district court are reviewed for clear
error.” Enzo Biochem Inc. v. Applera Corp., 780 F.3d 1149,
1153 (Fed. Cir. 2015) (citation omitted). “[A] claim term is
given its ordinary and customary meaning—the meaning
that a ‘term would have to a person of ordinary skill in the
art in question at the time of the invention.’” Howmedica
Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1320 (Fed.
Cir. 2016) (quoting Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc)). “[A] skilled artisan
reads a claim term not only in the context of the claim at
issue, but also in the context of the entire patent, including
the written description and prosecution history, as well as
relevant extrinsic evidence.” Id. at 1320–21 (citing Phil-
lips, 415 F.3d at 1313–17).
We review a grant of summary judgment under the law
of the regional circuit, here the Fifth Circuit. See Cheetah
Omni LLC v. AT&T Servs., Inc., 949 F.3d 691, 693 (Fed.
Cir. 2020). The Fifth Circuit reviews a grant of summary
judgment de novo. Cunningham v. Circle 8 Crane Servs.,
L.L.C., 64 F.4th 597, 599–600 (5th Cir. 2023) (citation omit-
ted). Summary judgment is appropriate when the moving
party demonstrates that “there is no genuine dispute as to
any material fact and the movant is entitled to judgment
as a matter of law.” Fed. R. Civ. P. 56(a). We construe the
evidence in the light most favorable to the nonmovant and
draw all reasonable inferences in that party’s favor. Cun-
ningham, 64 F.4th at 599–600 (citation omitted).
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TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 9
Tubular presents three arguments on appeal. First,
Tubular argues that the district court adopted an errone-
ous construction of parallel contradicting the intrinsic evi-
dence and that under the correct construction this court
should reverse or vacate the decision granting summary
judgment of noninfringement as to the Parallel Claims.
See Appellants’ Br. 19–20, 23–41, 57–58. Second, Tubular
argues that the district court adopted an erroneous con-
struction of unrestricted at odds with the prosecution his-
tory. See id. at 20–21, 42–51. Tubular further contends
that the district court’s summary judgment decision as to
the Unrestricted Claims was erroneous because the deci-
sion effectively added a limitation to unrestricted requiring
some minimum angle of rotation, and the decision lacked a
sufficient infringement analysis. See id. Third, Tubular
argues that the district court erred by granting summary
judgment of noninfringement with respect to the Unre-
stricted Claims without addressing infringement under
this court’s capability precedent. See id. at 21–22, 51–57.
We address each argument in turn.
B. Parallel Claims
i. Claim Construction
Tubular first challenges the district court’s construc-
tion of parallel as “extending in the same direction, every-
where equidistant, and not meeting.” See Appellants’ Br.
19–20, 23–41. Tubular argues that the intrinsic evidence
does not support this construction and rather supports its
proposed construction: “everywhere equally distant, in-
cluding collinear.” Id. On appeal, Tubular does not invoke
lexicography or assert that the specification expressly re-
defines the plain and ordinary meaning of parallel. See id.
at 2, 33 & n.6, 34; Appellants’ Reply Br. 1–2, 5–6, 16; Oral
Arg. at 2:38–53, https://oralarguments.cafc.uscourts.gov/de
fault.aspx?fl=21-2319_10052022.mp3. Instead, the crux of
Tubular’s arguments is that collinear is a subset of paral-
lel, Appellants’ Br. 23–24, the former of which the district
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10 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
court construed—as Tubular proposed—to mean “lying on
or passing through the same straight line.” Claim Con-
struction Order at *9 (emphasis added).
We first address a preliminary argument raised by
Tubular. Tubular argues that the district court’s state-
ment in its claim construction order explaining that it was
“not relevant” to the parallel construction whether parallel
and collinear were mutually exclusive, id., shows that the
district court “failed to resolve a dispute[.]” See Appellants’
Br. 29 n.4 (citing O2 Micro Int’l Ltd. v. Beyond Innovation
Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008)). We disa-
gree. The district court construed parallel and collinear,
Claim Construction Order at *8–9, and resolved the par-
ties’ dispute “regarding the proper scope.” See O2 Micro,
521 F.3d at 1360. The “dispute” Tubular raises concerns
the impact of these two constructions: whether the con-
structions render parallel and collinear mutually exclusive.
As the district court correctly explained in its summary
judgment decisions, the constructions “lead to the inescap-
able conclusion that, in this context, the terms are mutu-
ally exclusive.” Decision II at 891 n.2; see also Decision I at
494–95. Although the district court’s statement in its claim
construction order does seem to contradict these later
statements in its summary judgment decisions, this seem-
ing contradiction does not indicate an unresolved claim
construction dispute.
Moving onto the substantive claim construction chal-
lenge, on appeal, Tubular concedes that it is “not argu[ing]
that the specification’s disclosure show[s] a clear intent to
redefine ‘parallel’ by lexicography.” Appellants’ Reply Br.
6; see also Appellants’ Br. 2, 33 & n.6, 34; Appellants’ Reply
Br. 1–2, 5, 16. Rather, Tubular contends that the only two
specification excerpts discussing parallel and collinear
axes both describe collinear as a subset of parallel. See Ap-
pellants’ Br. 31–35. However, we find that the overall spec-
ification supports the opposite reading. One specification
excerpt states that “the longitudinal axis of the wheel
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TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 11
assembly 120, the main handle 116 and the extension han-
dle 118 all are collinear with each other, or at least paral-
lel.” ’224 patent col. 3 ll. 51–54 (emphases added). The use
of the “disjunctive (‘or’) as the coordinating conjunction”
here “reveals the relationship” between collinear and par-
allel as “alternatives,” not as one being a subset of the
other. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d
1187, 1199 (Fed. Cir. 2013) (citations omitted); see also Wa-
sica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272,
1280 (Fed. Cir. 2017) (“Using the disjunctive ‘or’ as in ‘num-
bers or symbols’ designates numbers and symbols as dis-
tinct alternatives to one another.”) (citations omitted)
(emphasis added). The other pertinent portion of the spec-
ification states that “[p]referably these axes are parallel
and most preferably these axes are collinear[.]” ’224 patent
col. 3 ll. 4–6. This excerpt is not dispositive. While this
excerpt can be read to interpret parallel as including col-
linear, it can also be read to interpret collinear and parallel
as distinct, mutually exclusive terms. Accordingly, we find
that the overall specification supports a reading where col-
linear and parallel are mutually exclusive terms.
Tubular also points to the prosecution history, contend-
ing that two separate rejections show a mutual under-
standing between the applicants and the examiner that
collinear is a subset of parallel. See Appellants’ Br. 35–39.
The dissent points to a third rejection for the same conten-
tion. See Dissent at 6. In the rejections—two during pros-
ecution of the ’009 patent and one during prosecution of the
’224 patent—the examiner issued anticipation rejections in
view of U.S. Patent Application Publication No.
2008/0072543 (“Watson”) and U.S. Patent No. 4,102,513(“Guard”), both of which cover wrap dispensers. See J.A.
632 (’009 patent application’s rejections in view of Watson
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12 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
and Guard), 1017–22 (Watson), 6 1042–45 (Guard), 458
(’224 patent application’s rejection in view of Guard). On
appeal, Tubular characterizes the axes of the wheel and
handle sections of these two prior art references as collin-
ear. See Appellants’ Br. 9–11, 36–39. Tubular argues be-
cause the rejected claims recited parallel axes, the
examiner’s rejection in view of these references shows the
examiner believed collinear was a subset of parallel and
the applicants prosecuted the patents based on that under-
standing. See id. at 36–39.
We disagree. Although Tubular characterizes Watson
and Guard’s axes as collinear, the examiner never made
such an express determination. When asked at oral argu-
ment where the examiner said “that it understood explic-
itly collinear to be parallel,” Tubular admitted “[t]he
examiner did not make that statement.” Oral Arg. at 8:17–
24. Moreover, when asked at oral argument whether there
were “any instances in the prosecution history that sup-
port[ed] [its] reading of collinear being a subset of parallel,”
Tubular merely stated that the applicants “never [made]
an argument . . . that there was a mutual exclusivity be-
tween collinear and parallel.” Id. at 35:10–38. But “just as
we can draw no inference from what the examiner did not
say, we can draw no inference from what [the applicants]
did not argue.” DeMarini Sports, Inc. v. Worth, Inc., 239
F.3d 1314, 1326 (Fed. Cir. 2001). We do not find that the
6 The examiner’s rejections were based on the Wat-
son patent application publication, but the parties only pro-
vided the issued patent in the appellate record. J.A.
1017–22. We take judicial notice of the publicly-accessible
Watson patent application publication. See Hoganas AB v.
Dresser Indus., Inc., 9 F.3d 948, 954 n.27 (Fed. Cir. 1993).
Our analysis remains unchanged regardless of which Wat-
son reference we consider.
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TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 13
prosecution history supports Tubular’s proposed construc-
tion.
Lastly, Tubular relies heavily on the Asserted Patents’
independent-dependent claim structure to contend that
collinear is a subset of parallel. See Appellants’ Br. 25–28.
Tubular points to claims 16 and 26 of the ’915 patent as an
example. See id. at 27. While independent claim 16 recites
a tool “wherein the longitudinal axes of the handle section
and the wheel section are parallel,” dependent claim 26 re-
cites the same tool with the only difference being that the
axes “are collinear.” ’915 patent col. 8 ll. 35–55, col. 9 ll.
15–16 (emphases added). Tubular contends that the par-
allel term in the independent claim must include the col-
linear term in the dependent claim. Appellants’ Br. 26–28.
Tubular also argues that the district court’s construction
violates this court’s precedent discouraging constructions
that render dependent claims “meaningless” because the
district court’s construction renders twelve dependent col-
linear claims meaningless: claims 3, 12, 14, 21, and 30 of
the ’009 patent and claims 5, 12, 13, 14, 19, 25, and 26 of
the ’915 patent. 7 See Appellants’ Br. at 26–28 (first citing
Baxalta Inc. v. Genentech, Inc., 972 F.3d 1341, 1341, 1346
(Fed. Cir. 2020); then citing Intellectual Ventures I LLC v.
T-Mobile USA, Inc., 902 F.3d 1372, 1378 (Fed. Cir. 2018);
and then citing Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008)). Similarly, Tub-
ular argues that the district court’s parallel construction
7 Although Tubular lists twelve dependent claims
that may well be rendered meaningless because they recite
collinear axes, Appellants’ Br. 28, only ten of those
claims—five of which are even asserted against Maximus—
actually recite collinear axes. Specifically, claim 14 of the
’009 patent and claim 14 of the ’915 patent recite parallel
axes, contrary to Tubular’s assertion. See ’009 patent col.
7 l. 65–col. 8 l. 5; ’915 patent col. 8 ll. 23–30.
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14 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
excludes the Asserted Patents’ preferred embodiment with
collinear axes. See id. at 31–33.
“While it is true that dependent claims can aid in in-
terpreting the scope of claims from which they depend, they
are only an aid to interpretation and are not conclusive.”
Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plas-
tics Corp., 831 F.3d 1350, 1360 (Fed. Cir. 2016) (citations
omitted). “[C]laim differentiation is a rebuttable presump-
tion that may be overcome by a contrary construction dic-
tated by the written description or prosecution history.”
Howmedica, 822 F.3d at 1323 (citation omitted). This court
has adopted a construction rendering dependent claims
meaningless when that construction was supported by ei-
ther the specification or the prosecution history. See Ma-
rine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350,
1358–59 (Fed. Cir. 2012) (en banc); Regents of Univ. of Cal.
v. Dakocytomation Cal., Inc., 517 F.3d 1364, 1371–76 (Fed.
Cir. 2008); Enzo, 780 F.3d at 1154–57; Multilayer Stretch,
831 F.3d at 1358–62. We, too, do so here where the overall
specification supports a construction of parallel that ex-
cludes collinear. And importantly, although some depend-
ent collinear claims may be rendered meaningless under
the district court’s parallel construction, this construction
would have no effect on independent asserted claim 1 of the
’224 patent, which recites collinear axes and still survives.
See ’224 patent col. 7 ll. 9–24. Likewise, claim 1 of the ’224
patent covers the collinear preferred embodiment.
The cases on which Tubular relies, where this court
adopted a construction that did not render dependent
claims meaningless, underline the importance of not rest-
ing a construction solely on the independent-dependent
claim structure. In those cases, the specification also di-
rectly supported the construction, unlike the specification
here. See Baxalta, 972 F.3d at 1347–48; Intellectual Ven-
tures, 902 F.3d at 1377–78; Ortho-McNeil, 520 F.3d at
1362. Moreover, the support for Tubular’s proposed con-
struction resting solely on this independent-dependent
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TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 15
claim structure unravels when pressure-testing such logic.
For example, if the independent claim recited parallel axes
and the dependent claim recited perpendicular axes, the
independent-dependent claim structure alone would re-
quire us to interpret perpendicular as a subset of parallel.
See Oral Arg. at 6:38–55. Tubular’s argument leads to the
nonsensical result that the plain and ordinary meaning of
parallel could hypothetically include perpendicular lines or
collinear lines that lie on or pass through the same straight
line. “A claim construction that renders asserted claims
facially nonsensical cannot be correct.” Becton, Dickinson
& Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1255
(Fed. Cir. 2010) (refusing to adopt a claim construction that
would create “a physical impossibility” and therefore “ren-
der[] the asserted claims nonsensical”) (internal quotation
marks and citations omitted).
Because the intrinsic evidence supports the district
court’s construction, we need not consult extrinsic evi-
dence, but we may “so long as the extrinsic evidence does
not contradict the meaning otherwise apparent from the
intrinsic record.” Helmsderfer v. Bobrick Washroom
Equip., Inc., 527 F.3d 1379, 1382–83 (Fed. Cir. 2008) (af-
firming district court’s decision to consult extrinsic evi-
dence to determine plain and ordinary meaning of claim
term) (citation omitted); see also Ortho-McNeil, 520 F.3d at
1362. This court’s Helmsderfer decision is instructive. In
Helmsderfer, this court affirmed the district court’s con-
struction of the term partially that excluded the term to-
tally because, among other things, “[a]ll three dictionaries
cited by the district court support[ed] its construction.” 527
F.3d at 1382. This court rejected the patent owner’s pro-
posed partially construction that included totally because
none of the dictionaries supported this construction and in-
stead “specifically contradict[ed]” such a construction. Id.at 1382–83.
Here, the district court adopted Maximus and Nabors’s
proposed plain and ordinary meaning construction of
Case: 21-2319 Document: 51 Page: 16 Filed: 06/28/2023
16 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
“extending in the same direction, everywhere equidistant,
and not meeting,” which is supported by Merriam-Web-
ster’s dictionary’s “1a” definition. See Claim Construction
Order at *8–9; J.A. 909–10; J.A. 1054–55 (Merriam-Web-
ster); see also Merriam-Webster’s Collegiate Dictionary
(11th ed. 2014). This construction is further supported by
parallel definitions found in geometry textbooks cited by
Maximus and Nabors. See J.A. 1069–70 (“Coplanar lines
that do not intersect are called parallel lines.”), 1072–74
(“Two lines are parallel lines if they are coplanar and do
not intersect.”). Like in Helmsderfer, where all three par-
tially definitions supported the district court’s partially
construction that excluded totally, all three parallel defini-
tions here support the district court’s parallel construction
that excludes collinear. And as was also the case in
Helmsderfer, these definitions—which specify that parallel
lines do not meet or intersect—not only fail to support the
patent owner Tubular’s proposed construction, but also
contradict it.
Tubular argues that the district court should have re-
lied on Merriam-Webster’s dictionary’s “1b” definition,
“everywhere equally distant,” because it “is consistent with
the intrinsic evidence and was encapsulated in Tubular[’s]
proposed construction: ‘everywhere equally distant, in-
cluding collinear.’” Appellants’ Br. 30; see also id. at 40–
41; Merriam-Webster’s Collegiate Dictionary (11th ed.
2014). But even Tubular’s selected dictionary definition
aligns with the district court’s construction because it re-
quires there to be some “distan[ce]” between the lines. Alt-
hough Tubular attempted to argue that the “equal[]
distan[ce]” could be “zero” at oral argument, Oral Arg. at
3:43–58, Tubular conceded it “did not argue zero is [the]
equal distan[ce]” anywhere in its appellate briefing. Id. at
4:17–28. Moreover, Tubular notably fails to point to any
support for a definition of parallel where the distance be-
tween the two lines can be zero or stating that collinear can
be a subset of parallel, despite claiming that its proposed
Case: 21-2319 Document: 51 Page: 17 Filed: 06/28/2023
TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 17
construction “is one of several ordinary and customary
meanings of ‘parallel.’” Appellants’ Reply Br. 2.
We have considered all of Tubular’s arguments con-
cerning the parallel construction and find them unpersua-
sive. The plain and ordinary meaning of the claim term
parallel excludes collinear. We conclude that the district
court correctly construed parallel in the Asserted Patents
as “extending in the same direction, everywhere equidis-
tant, and not meeting.”
ii. Summary Judgment of Noninfringement
Moving to the district court’s grant of summary judg-
ment of noninfringement as to the Parallel Claims, Tubu-
lar’s only argument is limited to its claim construction
challenge. See Appellants’ Reply Br. 17. Because we find
that the district court correctly construed parallel, we af-
firm the district court’s grant of summary judgment of non-
infringement as to the Parallel Claims. See Wi-LAN USA,
Inc. v. Apple Inc., 830 F.3d 1374, 1392–93 (Fed. Cir. 2016).
C. Unrestricted Claims
i. Claim Construction
Turning to the other challenged term, unrestricted,
Tubular argues that the district court erred by declining to
construe the term beyond its plain and ordinary meaning
of “not restricted” and by rejecting its proposed construc-
tion of “no additional mechanical resistance to rotation.”
See Appellants’ Br. 20–21, 42–49. Maximus argues the
parties agreed below that unrestricted meant “not re-
stricted” and the district court thus properly found that no
construction was necessary beyond the term’s plain and or-
dinary meaning. See Appellee’s Br. 32. We agree with
Maximus. The district court correctly recognized there was
no actual dispute about the meaning of unrestricted. See
Claim Construction Order at *6–7. Although Tubular ad-
vanced below the “no additional mechanical resistance to
rotation” construction, J.A. 298, Tubular ultimately
Case: 21-2319 Document: 51 Page: 18 Filed: 06/28/2023
18 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
conceded at the Markman hearing that it was “fine with”
adopting the “[p]lain and ordinary meaning,” but did not
believe that a claim construction was necessary to say that
“un” means “not.” J.A. 1215 (internal quotation marks
omitted); Claim Construction Order at *7. Additionally,
Tubular’s complaint about the district court’s alleged fail-
ure to resolve the parties’ dispute over the term’s scope, see
Appellants’ Reply 17, is belied by Tubular’s statements on
appeal stating that “all parties understood ‘unrestricted’ to
refer to resistance to rotation.” Appellants’ Br. 48; see also
id. at 49 (“Appellants believed the plain and ordinary
meaning, as all parties and the district court seemed to
agree, only included resistance to the rotation.”). We con-
clude that the parties previously agreed to the meaning
and scope of unrestricted, leaving no “actual dispute” for
the district court to resolve. See O2 Micro, 521 F.3d at
1360.
We also find Tubular’s prosecution history argument
unavailing. Tubular contends that the prosecution history
is at odds with the district court’s unrestricted construction
and instead supports its construction of “no additional me-
chanical resistance to rotation.” See Appellants’ Br. 20–21,
42–49. Although the applicants intended to amend the
claims to avoid Watson’s resistance and friction mecha-
nism, J.A. 618–19, they “chose to add the term [unre-
stricted] to the claims in order to achieve this result.” See
K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir.
1999); J.A. 615. We must “give effect to the term[] chosen
by the patentee,” not to terms “the applicant[s] could pos-
sibly have added.” K-2, 191 F.3d at 1364. The district court
correctly declined to construe unrestricted beyond its plain
and ordinary meaning of “not restricted.” Claim Construc-
tion Order at *6–7, 9.
Along with challenging the unrestricted construction
as issued in the claim construction order, Tubular argues
that the district court’s second summary judgment decision
“effectively added a limitation that ‘unrestricted’ requires
Case: 21-2319 Document: 51 Page: 19 Filed: 06/28/2023
TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 19
some undetermined minimum angle of rotation, i.e., ‘unre-
stricted’ cannot be met by partial rotation or incomplete ro-
tation.” Appellants’ Br. 42; see also id. at 49–51. We do not
read the decision as “effectively add[ing] a limitation” to
unrestricted. Indeed, in the decision, the district court re-
iterated that its plain and ordinary meaning understand-
ing of unrestricted was “not restricted,” as established in
its claim construction order. Decision II at 893.
We have considered all of Tubular’s arguments on the
unrestricted construction and find them unpersuasive. We
agree with the district court’s decision to decline to con-
strue unrestricted beyond its plain and ordinary meaning
of “not restricted.”
ii. Summary Judgment of Noninfringement
On appeal, Tubular challenges the district court’s sum-
mary judgment decision as to the bolts-in-place non-capa-
bility theory and the bolts-in-place capability theory. See
Appellants’ Br. 49–57. 8
Although we do not find error in the district court’s de-
cision to decline to construe unrestricted beyond its plain
and ordinary meaning of “not restricted,” we agree with
Tubular that the district court erred in granting summary
judgment of noninfringement as to the Unrestricted
Claims “with virtually no substantive analysis.” Appel-
lants’ Br. 49. Tubular contends that the district court
failed to sufficiently analyze whether the accused tool, with
its bolts in place, infringes because the unrestricted con-
struction does not require 360-degree rotation (the “bolts-
in-place non-capability theory”). See id. at 49–50. Tubular
8 Tubular does not challenge the district court’s find-
ing that Maximus does not infringe when the accused tool’s
bolts are removed because there was no evidence that Max-
imus itself removes the bolts (the “bolts-removed theory”).
See Decision II at 893–94.
Case: 21-2319 Document: 51 Page: 20 Filed: 06/28/2023
20 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
asserts that the district court’s infringement analysis
simply “consist[ed] of listing the parties’ arguments and
concluding that [Tubular’s] arguments [we]re ‘not enough
to overcome summary judgment.’” Id. at 49 (quoting Deci-
sion II at 892–93). Tubular is correct. The district court
performed little to no analysis on this issue and failed to
explain how there are no genuine factual disputes concern-
ing the accused tool with its bolts in place—foreclosing any
meaningful review of the district court’s infringement anal-
ysis on appeal. 9 See Decision II at 892–93; Nazomi
Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1372
(Fed. Cir. 2005). “Without such record evidence, this court
cannot tell whether a dispute of material fact bars a finding
of infringement on summary judgment.” Nazomi, 403 F.3d
at 1372.
Similarly, Tubular contests the district court’s grant of
summary judgment of noninfringement as to the Unre-
stricted Claims with respect to Tubular’s theory that the
accused tool, with its bolts in place, infringes because the
tool is capable of infringement given that its bolts are easily
removed (the “bolts-in-place capability theory”). See Appel-
lants’ Br. 21–22, 51–57. Tubular argues the district court
erred by granting summary judgment in Maximus’s favor
as to the Unrestricted Claims without assessing this theory
under this court’s capability precedent. See id. Tubular is
again correct. Although the district court acknowledged
that Tubular asserted its bolts-in-place capability theory,
see Decision II at 893, it performed no analysis of the ap-
plicability of this theory or whether the accused tool in-
fringed the Unrestricted Claims according to this theory
9 Maximus points to the district court’s considera-
tion of statements by Tubular’s counsel and expert, Appel-
lee’s Br. 13–14, 35–36, but the district court’s mention of
these statements was part of its mere listing of party argu-
ments. Decision II at 893.
Case: 21-2319 Document: 51 Page: 21 Filed: 06/28/2023
TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 21
under this court’s capability precedent. Because the dis-
trict court failed to perform any analysis of Tubular’s bolts-
in-place capability theory, we are again foreclosed from
conducting any meaningful review of the district court’s in-
fringement analysis on appeal.
Accordingly, we vacate the district court’s grant of
summary judgment of noninfringement as to the Unre-
stricted Claims with respect to both of Tubular’s bolts-in-
place theories and remand for the district court to conduct
proper infringement analyses. We are not suggesting any
particular outcome on infringement; we are simply in-
structing the district court to conduct sufficient infringe-
ment analyses as to the Unrestricted Claims.
We have considered all of Maximus’s arguments con-
cerning the grant of summary judgment of noninfringe-
ment on the Unrestricted Claims with respect to Tubular’s
bolts-in-place theories, and we find them unpersuasive.
III. CONCLUSION
We hold that the district court correctly construed par-
allel and affirm the district court’s related grant of Maxi-
mus’s motion for summary judgment of noninfringement of
claims 18–20 of the ’224 patent, claims 1–4, 6–12, and 15
of the ’009 patent, and claims 16–20 and 24–26 of the ’915
patent. We also hold that the district court correctly con-
strued unrestricted but vacate the district court’s grant of
Maximus’s motion for summary judgment of noninfringe-
ment of claims 1–5, 9–12, and 15 of the ’224 patent. We
remand to the district court for further proceedings con-
sistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
Case: 21-2319 Document: 51 Page: 22 Filed: 06/28/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TUBULAR ROLLERS, LLC, ROLLING TOOL, INC.,
H. LESTER WALD,
Plaintiffs-Appellants
v.
MAXIMUS OILFIELD PRODUCTS, LLC,
Defendant-Appellee
NABORS DRILLING TECHNOLOGIES USA, INC.,
Defendant
______________________
2021-2319
______________________
Appeal from the United States District Court for the
Southern District of Texas in No. 4:19-cv-03113, Judge An-
drew S. Hanen.
______________________
REYNA, Circuit Judge, dissenting-in-part.
I agree with the majority opinion except for Part II.B.
The issue in Part II.B is whether the term “parallel” in the
Parallel Claims—which require the claimed wheel section
and handle section to have longitudinal axes that are “par-
allel”—should be construed in a way that excludes “collin-
ear” axes (axes that are “lying on or passing through the
same straight line”). Claim terms are given their ordinary
Case: 21-2319 Document: 51 Page: 23 Filed: 06/28/2023
2 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
and customary meaning as understood by skilled artisans
when read in the context of the claims, the specification,
and the prosecution history. Phillips v. AWH Corp., 415
F.3d 1303, 1313–17 (Fed. Cir. 2005) (en banc). Because I
believe that a skilled artisan reading the claims in light of
the intrinsic evidence would clearly understand that “col-
linear” axes are a subset of “parallel” axes, I would reverse
the district court’s claim construction and vacate its grant
of summary judgment of noninfringement based on that
construction. See Playtex Prods., Inc. v. Procter & Gamble
Co., 400 F.3d 901, 909–10 (Fed. Cir. 2005) (vacating district
court’s grant of summary judgment of noninfringement be-
cause it was based on an incorrect claim construction). I
respectfully dissent-in-part.
A. Intrinsic Evidence
“Claim construction begins with the language of the
claim.” Power Integrations, Inc. v. Fairchild Semiconduc-
tor Int’l., Inc., 711 F.3d 1348, 1360 (Fed. Cir. 2013). In an-
alyzing the claim language, we look to “[d]ifferences among
claims,” as they can be “a useful guide in understanding
the meaning of particular claim terms.” Phillips, 415 F.3d
at 1314. And so they are here.
Both the ’009 and ’915 patents, for example, include in-
dependent claims that require the claimed longitudinal
axes to be “parallel” and dependent claims that further re-
quire those axes to be “collinear.” See, e.g., ’915 patent
claims 16 (independent), 19 (dependent), and 26 (depend-
ent); ’009 patent claims 1 (independent), 3 (dependent) and
12 (dependent). Claims 16 and 26 of the ’915 patent, for
instance, recite in relevant part:
16. A tool . . . comprising:
a shaft having a handle section with a
longitudinal axis and a wheel section with
a longitudinal axis, wherein the
Case: 21-2319 Document: 51 Page: 24 Filed: 06/28/2023
TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 3
longitudinal axes of the handle section and
the wheel section are parallel . . . .
26. The tool of claim 16 wherein the longitudinal
axes of the handle section and the wheel section are
collinear.
’915 patent claim 16 and 26 (emphasis added).
“The structure of the[se] claims is enlightening.” Lit-
telfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1379
(Fed. Cir. 2022). It strongly suggests that “parallel” axes
include “collinear” axes. That is because, “[b]y definition,
an independent claim is broader than a claim that depends
from it,” and “so if a dependent claim reads on a particular
embodiment of the claimed invention, the corresponding
independent claim must cover that embodiment as well.”
Id. at 1380. “Otherwise, the dependent claims would have
no scope and thus be meaningless.” Id. Because the de-
pendent claim above reads on an embodiment in which the
axes are “collinear,” the independent claim—which re-
quires the axes to be “parallel”—must also cover that em-
bodiment. The recitation of collinear axes in the dependent
claims is therefore presumptive evidence that the inde-
pendent “parallel” claims also cover collinear axes. See id. 1
The written description further bolsters that conclu-
sion. It twice discusses “parallel” and “collinear” axes. In
describing Figure 1 (a first embodiment), it states that
“[e]ach of the handle section 24 and the wheel section 16
has a longitudinal axis” and that “[p]referably these axes
1 Because Maximus does not dispute that “parallel”
has the same meaning across all patents, we can apply
claim differentiation in any patent across all patents. See
Bio-Rad Labs., Inc. v. Int’l Trade Comm’n., 998 F.3d 1320,
1334 (Fed. Cir. 2021).
Case: 21-2319 Document: 51 Page: 25 Filed: 06/28/2023
4 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
are parallel and most preferably these axes are collinear as
is axis ‘X’ in FIG. 1”:
’224 patent at Fig. 1 & 3:3–6 (emphasis added). And in de-
scribing Figure 2 (a second embodiment), the specification
states that “the longitudinal axis of the wheel assembly
120, the main handle 116 and the extension handle 118 all
are collinear with each other, or at least parallel”:
Id. at Fig. 2 & 3:51–54 (emphasis added).
The structure of these statements mirrors the struc-
ture of the independent/dependent claims. The written de-
scription consequently reinforces that “parallel” is broader
than—yet includes—“collinear.”
The majority reaches the opposite conclusion, finding
that “the overall specification supports a construction of
parallel that excludes collinear.” Maj. Op. 14. That is
Case: 21-2319 Document: 51 Page: 26 Filed: 06/28/2023
TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 5
because, the majority explains, the written description’s
use of the disjunctive “or” in the phrase “are collinear with
each other, or at least parallel” to describe the second em-
bodiment shows that collinear is an “alternative[]” to—not
a “subset of”—parallel. Id. at 11. But “or” does not always
convey distinct alternatives. As the Supreme Court has
noted, for example, “the word ‘or’ may be used to indicate
‘the synonymous, equivalent, or substitutive character of
two words or phrases.’” Hawaiian Airlines, Inc. v. Norris,
512 U.S. 246, 255 (1994) (citation omitted). And when “at
least” is combined with “or,” as it is here, it suggests an
overlapping subset relationship. Cf. 1 Matthews, Anno-
tated Patent Digest § 4:88 (2023) (“The term ‘at least’ can
be construed to mean ‘at a minimum.’”). The written de-
scription’s statement that the axes in the second embodi-
ment “are collinear . . . or at least parallel” thus implies
that parallel includes collinear.
Even if the “or at least” could be read as the majority
suggests, though, I disagree that it overcomes the pre-
sumption that arises from the independent/dependent
claim structure. For one thing, as the majority acknowl-
edges, the written description’s discussion of the first em-
bodiment “can be read to interpret parallel as including
collinear.” Maj. Op. 11 (emphasis added). So the use of “or
at least” for one of the embodiments does not show that the
written description has “dictated” that parallel excludes
collinear. Id. at 14 (quoting Howmedica Osteonics Corp. v.
Zimmer, Inc., 822 F.3d 1312, 1323 (Fed. Cir. 2016)
(“[C]laim differentiation is a rebuttable presumption that
may be overcome by a contrary construction dictated by the
written description or prosecution history.” (emphasis
added))). That is especially so considering that it is far
more natural to read the written description in harmony
with the claim structure and its accompanying differentia-
tion presumption.
A construction that excludes collinear, moreover, ren-
ders the dependent claims not just “meaningless,”
Case: 21-2319 Document: 51 Page: 27 Filed: 06/28/2023
6 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
Littelfuse, 29 F.4th at 1380, but in direct conflict with the
independent claims. It thus leaves the claims potentially
invalid as indefinite. We have cautioned against adopting
a construction that would render the subject claims invalid.
See Omega Engineering, Inc, v. Raytek Corp., 334 F.3d
1314, 1334–35 n.6 (Fed. Cir. 2003) (“[T]he district court’s
claim construction inevitably required the invalidation of
claims 33 and 41 [for indefiniteness], in contradiction to the
canon that courts should attempt to construe claims to pre-
serve their validity.”). And it is appropriate to construe the
claims to preserve their validity when, as here, that con-
struction “is practicable, is based on sound claim construc-
tion principles, and does not revise or ignore the explicit
language of the claims.” Generation II Orthotics Inc v.
Medical Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001)
(internal quotation marks omitted). Simply stated: “[W]e
must not interpret an independent claim in a way that is
inconsistent with a claim which depends from it.” Wright
Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1445
(Fed. Cir. 1997) (emphasis added).
Finally, the prosecution history supports that parallel
includes collinear. During the prosecution of the ’009 pa-
tent, the examiner rejected application claims requiring
the wheel section and the handle section to have longitudi-
nal axes that were “parallel,” as being anticipated by two
prior art references—U.S. Pat. Nos. 7,401,449 (“Watson”)
and 4,102,513 (“Guard”). J.A. 644–650 (pending claims);
J.A. 632 (examiner’s rejections). The examiner relied on
embodiments from Watson and Guard in which the alleged
sections had collinear axes. For Watson, the examiner ex-
plained that it “shows a tool capable of moving certain sized
racked tubulars comprising a shaft (28), two wheels (38),
and an extension handle section (27) threadedly connected
to the main handle.” J.A. 632 (emphasis removed). Figures
1 and 2 of Watson show that the longitudinal axes of handle
section (27), which is attached to shaft (28), and wheels (38)
are “collinear”:
Case: 21-2319 Document: 51 Page: 28 Filed: 06/28/2023
TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 7
J.A. 1019.
For Guard, the examiner explained that “Guard shows
a tool capable of engaging and moving certain sized pipes
comprising a shaft (17) including a stop (34), a handle (37),
and two wheels (21, 31).” J.A. 632 (emphasis removed).
Figures 2 and 3 of Guard (shown rotated 90° and annotated
with red boxes to highlight the components) show that the
handle (37), the shaft (17), and the wheels (21, 31) had “col-
linear” longitudinal axes:
Case: 21-2319 Document: 51 Page: 29 Filed: 06/28/2023
8 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
J.A. 1043–1044.
To reject a claim for anticipation, the examiner must
find that each claim element is in the prior art reference.
See Verdegaal Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d
628, 631 (Fed. Cir. 1987). Because the examiner rejected
claims requiring “parallel” axes as anticipated, it neces-
sarily understood the “parallel” claims to encompass (Wat-
son’s and Guard’s) collinear axes. Or else it could not have
made the rejection. And in response, the applicants did not
argue that either reference failed to disclose the claimed
Case: 21-2319 Document: 51 Page: 30 Filed: 06/28/2023
TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 9
“parallel” axes. J.A. 612–620 (amended claims and appli-
cant remarks). This shows that both the examiner and the
applicants understood that “parallel” axes include—not ex-
clude—collinear axes. Cf. Deere & Co. v. Bush Hog, LLC,
703 F.3d 1349, 1358 (Fed. Cir. 2012) (rejecting a narrow
construction where “during prosecution, the examiner re-
jected claims . . . over prior art mower decks that would be
excluded from [the] proposed construction” and the pa-
tentee “did not argue that the cited references did not dis-
close a ‘rotary cutter deck’”); Ventana Med. Sys., Inc. v.
Biogenex Labs., Inc., 473 F.3d 1173, 1182–83 (Fed. Cir.
2006) (refusing to narrowly construe “dispensing” as “di-
rect dispensing” where examiner’s statements showed that
the examiner did not consider the term to be so limited and
“the inventors did not rely on ‘direct dispensing’ as a dis-
tinction between the claims at issue in this case and the
prior art”). 2
The majority finds this prosecution history evidence in-
conclusive. Maj. Op. 11–13. That is because, it says, the
examiner never made an “express determination” that
Watson’s and Guard’s axes are collinear and neither the
examiner nor the applicants “explicitly” said that they un-
derstood collinear to be parallel. Maj. Op. 12. It is clear
that the embodiments on which the examiner relied can
only be understood to show collinear axes. The examiner’s
anticipation rejection thus speaks for itself. And even if
the prosecution history were neutral, the end result would
be the same—parallel must be construed to include collin-
ear based on the claim differentiation presumption.
2 The ’224 patent examiner also rejected claims that
required “parallel” axes as being anticipated by Guard.
J.A. 483–487 (pending claims); J.A. 457–460 (examiner’s
rejections); J.A. 437–450 (amended claims and applicant
remarks).
Case: 21-2319 Document: 51 Page: 31 Filed: 06/28/2023
10 TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC
In short, the intrinsic evidence all points in the same
direction: collinear is a subset of parallel. Indeed, the claim
structure supports that conclusion; the written descrip-
tion’s mirroring of the claim structure supports that con-
clusion; and the examiner’s rejection of claims requiring
“parallel” axes as anticipated by prior art having “collin-
ear” axes supports that conclusion.
B. Extrinsic Evidence
Once the intrinsic evidence clearly points in one direc-
tion, “there is no reason to resort to extrinsic evidence.”
Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th
1285, 1287 (Fed. Cir. 2021). Despite the clear path re-
vealed by the intrinsic evidence, the majority relies on cer-
tain dictionary definitions to support its construction. Maj.
Op. 15–16 (citing Helmsderfer v. Bobrick Washroom
Equip., Inc., 527 F.3d 1379 (Fed. Cir. 2008)). I disagree
with that approach.
To be sure, as in Helmsderfer, it is proper for the court
to look to dictionaries where “the intrinsic evidence is silent
as to the plain meaning of a term.” 527 F.3d at 1382. But
as explained above, the intrinsic evidence is not silent in
this case.
Nor do I agree with the majority that all the definitions
support excluding collinear from parallel. At least Mer-
riam-Webster’s “1b” definition—“everywhere equally dis-
tant”—aligns with the intrinsic record. See, e.g., Beckson
Marine, Inc. v. NFM, Inc., 292 F.3d 718, 723–25 (Fed. Cir.
2002) (rejecting narrow construction of term where one dic-
tionary narrowly defined a term but another more broadly
defined it and the broader definition better aligned with
the intrinsic evidence). The majority disagrees, explaining
that there must be some distance between the lines. Maj.
Op. 16. But it is unclear why the distance cannot be zero.
While dictionary definitions have an important role in
claim construction, the role is minimized where resorting
Case: 21-2319 Document: 51 Page: 32 Filed: 06/28/2023
TUBULAR ROLLERS, LLC v. MAXIMUS OILFIELD PRODUCTS, LLC 11
to definitions amounts to little more than a battle of dic-
tionaries.
Finally, even if all the dictionary definitions did sup-
port excluding collinear from parallel, “the question is not
whether there is a settled ordinary meaning of the terms
in some abstract sense of the words”; it is whether the
terms have a meaning “in the context of the patent.” Eon
Corp. IP Holdings v. Silver Spring Networks, 815 F.3d
1314, 1321 (Fed. Cir. 2016) (internal quotation marks and
citation omitted). Here, parallel in the context of the pa-
tents includes collinear. Perhaps a mathematician analyz-
ing “parallel” in the abstract would conclude that parallel
axes are “parallel” only until the precise moment when the
distance between them goes to zero and they become “col-
linear.” But there is no evidence that a skilled artisan—
reading patents on a tool for rolling oil and gas drilling
pipes at an oil well—would impose such “strict adherence
to an abstract geometric concept.” Int’l E-Z Up, Inc. v. Car-
avan Canopy Int'l, Inc, No. 01-6530, 2002 WL 34536685,
*3–4 (C.D. Cal. May 14, 2002) (explaining that a person of
ordinary skill “in the art of collapsible tent canopies would
not interpret ‘parallel’ in the ’001 patent with strict adher-
ence to an abstract geometric concept”). We should avoid
creating a “hyper-technical” construction. See Lisle Corp.
v. A.J. Mfg. Co., 398 F.3d 1306, 1314 (Fed. Cir. 2005).
The district court erred in construing “parallel” to ex-
clude “collinear” and based its noninfringement finding on
that construction. I would thus reverse the construction,
vacate the grant of summary judgment on the Parallel
Claims, and remand for the district court to adopt a con-
struction of “parallel” that covers collinear axes.