Winston Drills Down to Define Success in Precedential Patent Case for Schlumberger

Winston & Strawn obtained a precedent-setting opinion from the U.S. Court of Appeals for the Federal Circuit involving a patent for an oil well drilling device. The case is not just a win for our client Smith International and parent company Schlumberger, but for other patent holders as well. In its ruling, the Federal Circuit reversed an opinion by the U.S. Patent and Trademark Office and the Patent Trial and Appeal Board that our client’s patent claims were invalid, an unusual decision given the Federal Circuit’s preference for remanding such cases to the patent office for further review over the outright reversal of rejections.

The decision focused on whether the patent office was too broad in defining the term “body” when looking at how it was used in our client’s patent for an expandable underreamer/stabilizer, a downhole drilling tool for oil and gas operations. The patent office is tasked with applying the broadest reasonable interpretation of terms when reexamining a patent, as it was doing in this dispute launched by Schlumberger-rival Baker Hughes. But in this case, the Federal Circuit found that the patent office used too broad a definition, which unfairly allowed prior art to be applied against our client’s patent. 

After reading the opinion, client Schlumberger said that the Winston team “made the arguments with such clarity that the judges had no choice but to rule in our favor. The outright reversal speaks volumes to [Winston’s] diligence and hard work.” The case will now go back to the trial court in Delaware, where Baker Hughes is accused of infringing our client’s patent. That case had been stayed while Baker Hughes asked the patent office to reexamine the patent.

Former Houston Office Managing Partner argued the appeal, working with Partner Drew Sommer.