“What we see ourselves as here to do is to help the court - to put the other side of the argument to the extent we think it should be put and to make such criticisms of Halliburton’s submissions as we believe appropriate.”
“103. Whether the specification is sufficient or not is highly sensitive to the nature of the invention. The first step is to identify the invention and decide what it claims to enable the skilled man to do. Then one can ask whether the specification enables him to do it.”
“timescale does not come into it.”
“The need for appellate caution in reversing the judge’s evaluation of the facts is based upon much more solid grounds than professional courtesy. It is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge’s overall evaluation. It would in my view be wrong to treat Benmax as authorising or requiring an appellate court to undertake a de novo evaluation of the facts in all cases in which no question of the credibility of witnesses is involved. Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge’s evaluation.”
“[16] Both patents are addressed to persons wishing both to design and use simulation systems for drill bit design. Although the claims are directed to methods of design, and are hence the concern of a designer, the underlying equipment, if I can put it that way, is a simulation system that the patents say is new. The Force Balancing patent uses a ‘Rock Bit computer model’ for the purpose of working out the dynamics of a rotating bit and describes the design of a bit in terms of a ‘general nonlinear optimisation problem with bounds and nonlinear constraints’ applied to design variables, objectives expressed in terms of the design variables and the bounds on the design variables and the constraints on the system. [He then summarised the other patent]. Plainly, therefore, the specifications are addressed to (1) engineers who understand drilling and drill bits (2) engineers who understand simulations and their graphical display and (3) if not included among the others, engineers who can understand the mathematics of the interaction of a drill tooth and rock and design the software necessary to model the dynamics and kinematics of the bit. I return to this subject in more detail below.”
‘[0001] The present invention relates to down-hole drilling and especially to the optimisation of drill bit parameters. In particular it relates to a roller cone drill bit, a method of designing the same, and a rotary drilling system.’ [20] Paragraphs [0002]-[0004] set out very general background material, all of which I have covered in my discussion of the background above. The section on drill string oscillation is common general knowledge. Reduction of such oscillations is claimed as an advantage of drill bits designed according to the invention (paragraph [0034]), but it is not otherwise referred to in the specification. [21] The section concerned with Optimal Drilling with Various Formation Types (paragraphs [0007]-[0010]) is … all common general knowledge. Set out in summary form are the factors affecting how a formation is drilled and the types of bit suitable for soft formation (long teeth, high gouge), hard formation (short rounded teeth, no gouge) and medium formation (between the two). [22] The next background section, ‘Roller Cone Bit Design’ …. was accepted by Mr Hall to be common general knowledge at the priority date. … I should refer to paragraphs [0011] and [0014]. Paragraph [0011] is concerned with the shape of the cones. It is pointed out that they need not be perfectly conical or frustoconical but may have what is called a ‘swollen’, that is bulging, axial profile. Apart from the shape of the cone itself, it is pointed out that both the angle between the axis of the cone and the radius of the bit (the offset angle) and the angle between the axis of the cone and the plane of the bottom of the hole (the journal angle, plainly related to the angle of the cone) are design parameters and affect the rolling of the cone, which, because it cannot necessarily roll true, causes gouging and scraping which, as is pointed out, is complex in nature. [23] Paragraph [0014] outlines the interrelationship of these design parameters and the effect of varying them. Two examples are given: cone angle and offset, which it is pointed out can be modified so as to increase or decrease the amount of bottom hole scraping. The other example is tooth length: ‘Many other design parameters are limited in that an increase in one parameter may necessarily result in a decrease of another. For example, increases in tooth length may cause interference with the adjacent cones.’ [24] Paragraphs [0015] to [0017] are concerned with tooth design. Although the other paragraphs just set out a summary of the common general knowledge in respect of the range of shapes of teeth and their relationship to the formation intended to be drilled, I should just refer briefly to paragraph [0017] because the shape of the tooth and its interaction with the formation is important. ‘Chisel shaped inserts have opposing flats and a broad elongated crest resembling the teeth of a steel tooth bit. Chisel shaped inserts are used for drilling soft to medium formations. The elongated crest of the chisel insert is normally oriented in alignment with the axis of cone rotation. Thus, unlike spherical and conical inserts the chisel insert may be directionally oriented about its center axis. (This is true of any tooth which is not axially symmetric.) The axial angle of orientation is measured from the plane intersecting the center of the cone and the center of the tooth.’ [25] There is no doubt that oriented teeth were part of the common general knowledge of the designer. The angle of orientation affects the interaction of tooth and formation, and hence the relative movement (both rotational and translational) of the cone as the bit rotates. The gouging motion represents a translational movement between the tooth and the hole bottom. The movement of the tooth in the formation between the moment the tooth enters the formation and the moment it leaves takes a time and covers a distance determined by the rotation of the cone as it skids round the bottom of the hole. In the absence of a gouging motion, it should be remembered that the tooth movement can be visualised as a rolling movement about the point of the tooth, a movement whose translational element is small. The movement of the tooth in the coordinates of the hole bottom is shown by Professor Newland in Figure 7 in his principal report, explained further at transcript 1047 line 22. [26] The final section on background, “Bottom Hole Analysis’, sets the scene for the description of the invention. Paragraph [0018] does not call for much comment: it trivially points out that bit design affects rate of penetration, and that rate of penetration plays a ‘significant role’ in the economics of drilling a well. [27] Paragraph [0019] begins to approach the heart of the invention: ‘[0019] It has long been desirable to predict the development of bottom hole patterns on the basis of the controllable geometric parameters used in drill bit design, and complex mathematical models can simulate bottom hole patterns to a limited extent. To accomplish this it is necessary to understand first, the relationship between the tooth and the rock, and second, the relationship between the design of the drill bit and the movement of the tooth in relation to the rock. It is also known that these mechanisms are interdependent.’
“[145] Mr Hall accepted that this was ‘a lot of work’. Even if it were legitimate to look at the Ma book, which is not shown to be common general knowledge, this evidence would support a suggestion of insufficiency. Without the Ma book not enough is disclosed, and it was not suggested that the Ma paper helped in this respect. As I have indicated, I feel uneasy with the allegation of insufficiency based on geometric and kinematic considerations alone, but in the end I think that the balance of the evidence tips in favour of a conclusion of insufficiency.”
“The problem is what this [i.e. ordinary CAD] software cannot do is simulate the motion of the cones and the drill bit simultaneously in such a way that the trajectory of the teeth can be followed without having the appropriate sub-program which would enable equations like the equations in chapter 2 of Ma.” (Transcript p.850) And, when pressed: “What I am saying is that these are equations which are difficult to derive, and they are complicated, and they include a lot of variables and angles and you have to go through that agony in order to be able to say where the teeth are and reference to the formation. Whatever method of calculation you use, in effect, you come down to those equations.”
“Ma is using these equations [i.e. those in the book] which he had published some 10 years earlier in a paper to the American Society of Mechanical Engineers with his Professor J.J. Azar when he worked as a research fellow in the United States at the University of Tulsa. That was a refereed paper -- you can see that from the credentials of the paper and the dates of receipt and publication -- of the ASME and that was regarded at the time as a major step forward in understanding the dynamics of these drill bits. If it had not been, it would not have been published and nor would Azar have been associated with it. That is what Ma is quoting here. All I am saying is that is a difficult and big calculation. It merited a scientific paper when it was done and it remains a significant feat of 3-D geometry for an engineer.”
“Each cone may have its own speed. The initial value is calculated from the bit geometric parameters or just estimated from experiment. In the calculation the cone speed may be changed based on the torque acting on the cone.”
“According to equation (1) the force acting on an element is proportional to the rock volume removed by that element”
“[30] This passage seems to me to carry on the discussion in paragraph [0020] of the Ma paper, which is concerned with the modelling of the bottom hole pattern, and it is dismissive in tone, suggesting that Ma’s program can be used only to predict the presence of obvious problems such as tracking. Halliburton contend that the disclosure of the Ma paper, which is rather more comprehensive than paragraphs [0020] and [0022] suggest, is incorporated by reference. The words used are not, in my judgment, capable of incorporating this disclosure into the disclosure of the patent. Patent specifications should be complete in themselves and while they must be read like any other document these words do no more than dismiss the Ma paper (and the other citations) as ineffective components of the state of the art.”
“Background: Bottom Hole Analysis” which is not an indication that Ma is relevant to bit design. d) There is no suggestion in the passage that the Ma paper contains a force model. So why would the skilled addressee expect to find one there at all, still less one that might be adapted for force balancing? e) The very presentation of the invention is not consistent with the notion that you can use existing methods of calculation but with the difference that you aim to force balance – just add the “big idea” to known techniques. The whole method is presented as new in itself, as for instance in [0025] where the steps of claim 3 are set out as a completely new calculation. f) The patent actually goes out of its way, in [0057] to identify three publications of which it says “all of which are hereby incorporated by reference”
“[166] The last objection that Halliburton make to this formidable case on insufficiency depends upon the contrast they draw between the wide experience of Mr Hall on the one hand and Professor Newland’s lack of specific experience in the industry on the other. It was submitted that Professor Newland’s lack of experience deprives his evidence of much weight when it is set against that of Mr Hall. I reject this submission. I have already indicated that in a number of respects Mr Hall’s evidence was not consistent. No aspect of the insufficiencies that I find established depends upon a close knowledge of the drilling industry or of the manufacture of drills. They are, on the contrary, really objections based upon the difficulty of constructing a model given the data and other information made available by the specification. The objections of insufficiency that I have set out in paragraph 136 above are all established.”