Duhn Oil Tool Inc v. Cooper Cameron Corporation

Filing 500

MEMORANDUM DECISION GRANTING in Part and Denying in Part Cameron's Motion for Partial Summary Judgment of No Infringement (Docs 445 & 446 ), signed by Judge Oliver W. Wanger on 12/2/2010. (Gaumnitz, R)

Duhn Oil Tool Inc v. Cooper Cameron Corporation

Doc. 500

1 2 3 4 5 6 7 8 9 10 11 12 13 COOPER CAMERON CORPORATION, 14 15 16 17 18 19 20 21 22 23 24 25 26 In seeking partial summary judgment, Cameron does not concede that it has infringed the `925 Patent. 1
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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA

DUHN OIL TOOL, INC.,

Plaintiff, vs.

Defendant.

) ) ) ) ) ) ) ) ) ) ) ) ) ) )

No. CV-F-05-1411 OWW/GSA MEMORANDUM DECISION GRANTING IN PART AND DENYING IN PART CAMERON'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO INFRINGEMENT (Docs. 445 & 446)

Cooper Cameron Corporation ("Cameron") moves for partial summary judgment on the ground that Duhn Oil Tool, Inc. ("Duhn") cannot carry its burden of proof as to the following subset of Duhn's allegations:1 1. No direct infringement based on use or sales of an allegedly infringing wellhead assembly, for instances that Cameron has proof of noninfringement; 2. No direct infringement based on contributing to or, after April 2, 2009,

Dockets.Justia.com

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inducing infringement; and 3. No infringement under the doctrine of equivalents. GOVERNING STANDARDS.

Summary judgment is proper when it is shown that there exists "no genuine issue as to any material fact and that the 6 moving party is entitled to judgment as a matter of law." 7 Fed.R.Civ.P. 56. 8 element of a claim or a defense, the existence of which may 9 affect the outcome of the suit. 10 Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th 11 Cir.1987). 12 governing a claim or a defense. 13 inferences drawn from it must be construed in the light most 14 favorable to the nonmoving party. 15 The initial burden in a motion for summary judgment is on 16 the moving party. 17 by identifying the parts of the materials on file it believes 18 demonstrate an "absence of evidence to support the non-moving 19 party's case." 20 (1986). 21 summary judgment. 22 party "may not rely on the mere allegations in the pleadings in 23 order to preclude summary judgment," but must set forth by 24 affidavit or other appropriate evidence "specific facts showing 25 there is a genuine issue for trial." 26 2 Id. The nonmoving party T.W. Elec., 809 F.2d at 630. The nonmoving The burden then shifts to the nonmoving party to defeat Celotex Corp. v. Catrett, 477 U.S. 317, 325 The moving party satisfies this initial burden Id. Id. The evidence and all Materiality is determined by the substantive law T.W. Elec. Serv., Inc. v. A fact is "material" if it is relevant to an

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may not simply state that it will discredit the moving party's evidence at trial; it must produce at least some "significant probative evidence tending to support the complaint." Id. The

question to be resolved is not whether the "evidence unmistakably favors one side or the other, but whether a fair-minded jury could return a verdict for the plaintiff on the evidence presented." United States ex rel. Anderson v. N. Telecom, Inc., This requires more than the

52 F.3d 810, 815 (9th Cir.1995).

"mere existence of a scintilla of evidence in support of the plaintiff's position"; there must be "evidence on which the jury could reasonably find for the plaintiff." Id. The more

implausible the claim or defense asserted by the nonmoving party, the more persuasive its evidence must be to avoid summary judgment." Id. In Scott v. Harris, ___ U.S. ___, 127 S.Ct.

1769, 1776 (2007), the Supreme Court held: When opposing parties tell different stories, one of which is blatantly contradicted by the record, so that no reasonable jury could believe it, a court should not adopt that version of the facts for purposes of ruling on a motion for summary judgment. As explained in Nissan Fire & Marine Ins. Co. v. Fritz Companies,

20 210 F.3d 1099 (9th Cir.2000): 21 22 23 24 25 26 The vocabulary used for discussing summary judgments is somewhat abstract. Because either a plaintiff or a defendant can move for summary judgment, we customarily refer to the moving and nonmoving party rather than to plaintiff and defendant. Further, because either plaintiff or defendant can have the ultimate burden of persuasion at trial, we refer to the party with and without the ultimate burden of persuasion at trial rather 3

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than to plaintiff and defendant. Finally, we distinguish among the initial burden of production and two kinds of ultimate burdens of persuasion: The initial burden of production refers to the burden of producing evidence, or showing the absence of evidence, on the motion for summary judgment; the ultimate burden of persuasion can refer either to the burden of persuasion on the motion or to the burden of persuasion at trial. A moving party without the ultimate burden of persuasion at trial - usually, but not always, a defendant - has both the initial burden of production and the ultimate burden of persuasion on a motion for summary judgment ... In order to carry its burden of production, the moving party must either produce evidence negating an essential element of the nonmoving party's claim or defense or show that the nonmoving party does not have enough evidence of an essential element to carry its ultimate burden of persuasion at trial ... In order to carry its ultimate burden of persuasion on the motion, the moving party must persuade the court that there is no genuine issue of material fact .... If a moving party fails to carry its initial burden of production, the nonmoving party has no obligation to produce anything, even if the nonmoving party would have the ultimate burden of persuasion at trial ... In such a case, the nonmoving party may defeat the motion for summary judgment without producing anything ... If, however, a moving party carries its burden of production, the nonmoving party must produce evidence to support its claim or defense ... If the nonmoving party fails to produce enough evidence to create a genuine issue of material fact, the moving party wins the motion for summary judgment ... But if the nonmoving party produces enough evidence to create a genuine issue of material fact, the nonmoving party defeats the motion. 210 F.3d at 1102-1103.

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II.

DUHN'S OBJECTIONS TO DECLARATION OF ROSS TOBIN.

Exhibit B to Cameron's motion is the Declaration of Ross Tobin dated September 10, 2010. Although a copy of this

declaration in included with Cameron's courtesy copies, it is not included in Doc. 446 and is, therefore, not yet part of the record. Mr. Tobin avers that he is currently an Account Manager III for Cameron and that he had previously been District Manager at the Cameron facility located at 2326 I-70 Frontage Road, Grand Junction, Colorado. In Paragraph 4 of his declaration, Mr. Tobin avers: 4. It was my responsibility to supervise and coordinate the installation of Cameron's frac mandrels at my facility. At least since August 21, 2008, Cameron personnel, whether in the field or at the Grand Junction facility, have not placed the tubing-head lockscrew in a configuration such that the lockscrew would be in contact with the frac mandrel. Cameron only offers and installs it [sic] frac mandrels in a configuration where the tubing head lockscrews do not contact the frac mandrel. Since February 2009, when the Installation Checklist procedure was instituted, Cameron installed more than 841 frac mandrels with the lockscrews not in contact with the frac mandrel. No customer has complained or criticized Cameron's new installation procedure. Duhn objects to Paragraph 4 of Mr. Tobin's Declaration on

22 the grounds of lack of foundation and/or personal knowledge. 23 Duhn contends: 24 25 26 Mr. Tobin fully relied on spreadsheets prepared by Cameron's counsel and took no steps to verify that the information contained therein was accurate. 5

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Duhn refers to Mr. Tobin's deposition testimony at 28:14-20 and 31:2-11, attached as Exhibit 5 to Mr. Kolegraff's declaration (Doc. 484). Mr. Tobin's deposition testimony makes clear that he

was referring to frac mandrels maintained at Vernal or Longview, Texas, not Grand Junction, Colorado. Duhn further objects to Paragraph 4 on the ground that Mr. Tobin never saw "these" spreadsheets until October 27, 2010, the day before his deposition and six weeks after he signed his declaration: Mr. Tobin's position has moved from Grand Junction to Denver, so he does not even have access to the underlying checklists, and is no longer responsible for day to day activities in Grand Junction ... Instead of having any personal knowledge, Mr. Tobin has placed complete and unwavering trust that Cameron's installers and field workers are following Cameron's procedures ... Mr. Tobin states that Cameron has installed more than 841 frac mandrels with the lockscrews not in contact with the frac mandrel. He has no personal knowledge to support this statement ... The number `841' was provided by his counsel, and came from a spreadsheet Mr. Tobin never saw until weeks after signing the declaration. In Paragraph 7 of his declaration, Mr. Tobin avers: 7. To date, at least 685 frac mandrels have been received and documented under the return-checklist procedure. The Return Checklists of at least 615 mandrels indicate the absence of dimples, thus, establishing that each given frac mandrel was not placed in the allegedly infringing `dual load path' configuration. It establishes at least 615 instances of noninfringement. Duhn objects to Paragraph 7 for lack of foundation and/or personal knowledge as stated in connection with Paragraph 4. 6 See

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supra. In Paragraph 8 of his declaration, Mr. Tobin avers: 8. To date, Cameron has documented the lifecycle of at least 535 mandrels. That is, Cameron has in Installation and Return checklist for at least 535 mandrels, each such Installation Checklist indicating that given mandrel was installed with the lockscrews not run in and had no dimples on it and each Return Checklist indicating the condition of that mandrel when it returned. Of those 535 lifecycles, these checklists indicate that at least 523 mandrels left Cameron's facility without dimples and returned to Cameron's facility in the same condition. Thus, these checklists evidence at least 523 wells at which a Cameron mandrel was used in a confirmed-as-noninfringing manner. Duhn objects to Paragraph 8 for lack of foundation and/or personal knowledge as stated in connection with Paragraph 4. supra. Cameron replies that Duhn's objections to Mr. Tobin's declaration should be disregarded: Mr. Tobin made it clear throughout his deposition that he had been working with Cameron's frac mandrel checklists continuously over the past two years as the District Manager of Cameron's Grand Junction, Colorado facility, and worked with the underlying spreadsheet in which information from each of the checklists is recorded on a monthly basis ... Duhn takes the quotes from Mr. Tobin's testimony regarding the particular charts generated from the spreadsheets, and the particular compilations of the checklists, which were prepared by Cameron's counsel after the filing of the Motion, and mischaracterizes the testimony to assert that Mr. Tobin had not seen the checklists he referred to in his Declaration until after he signed the Declaration. 7 See

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Mr. Tobin has not laid the foundation to admit this information as a business record under Rule 803(6), Federal Rules of Evidence. Cameron's response changes nothing. If Cameron is

presenting a compilation, summary, or abstract of business records, it must lay the proper foundation. Mr. Tobin's declaration are sustained. III. STATEMENTS OF UNDISPUTED FACTS. A. CAMERON. 1. CUDF 1: U.S. Patent No. 6,920,925 ("the `925 Patent"). Duhn's objections to

The `925 patent, entitled Wellhead Isolation Tool,

was issued on July 26, 2005, listing only Rex Duhn and Robert Meek as inventors. Duhn's Response: UNDISPUTED. CUDF 2: The asserted claims of the `925 patent contain the

following limitations: "a production tubular member" and "wherein an axial force acts on the generally elongate annular member and is reacted in both the first tubular member flange and the secondary flange". Additionally, claim 1, and the claims based

thereon, of the `925 patent contains the limitation: "a casing." Supporting Evidence: Ex. A.1 (the `925 Patent) at col. 13, lines 42-62; col. 24, lines 26-56. Duhn's Response: UNDISPUTED that the claims contain the language quoted, but DISPUTED because the meaning of a patent claim limitation is a question of law for the Court, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-971 (Fed.Cir.1995). Duhn objects that Cameron is attempting to read 8

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a claim limitation outside of its context by inappropriately parsing limitation language, contending that the claim must be read as a whole. CUDF 3: Claims 13, 14, 31, and 86 contain limitations Supporting Evidence: Ex. A.1 (the `925

requiring "lock screws."

Patent) at col. 14, lines 42-67; col. 17, lines 8-25; col. 24, lines 26-56. Duhn's Response: UNDISPUTED that the claims contain the language quoted, but DISPUTED because the meaning of a patent claim limitation is a question of law for the Court, see Markman, supra. Duhn objects that Cameron is attempting to read

a claim limitation outside of its context by inappropriately parsing limitation language, contending that the claim must be read as a whole. CUDF 4: A "casing" is a "pipe extending from the surface of

the well down into the ground ... to the oil reservoir many thousands of feet below ground." Expert Report of Boyadjieff, p. 4. Duhn's Response: UNDISPUTED that a casing is a pipe extending from the surface into the ground, but DISPUTED that a casing necessarily must reach the oil reservoir many thousands of feed below ground and DISPUTED that the meaning of a patent claim term is a question of law, citing Markman, supra. CUDF 5: A "production tubular member" is "the inner round Supporting Evidence: Ex. A.2,

pipe extending from the surface down to the oil or gas reservoir." Supporting Evidence: 9 Ex. A.2, Expert Report of

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Boyadjieff, p. 5. Duhn's Response: Duhn does not dispute this construction but clarifies that a production tubular member may be the inner-most casing for a well. CUDF 6: The claimed wellhead assembly "of the `925 patent

does not include every element of those claims until it is fully assembled at the location of the well." Ex. A.11, Declaration of Robert Meek, ¶ 2. Duhn's Response: Duhn objects as vague the phrase "fully assembled." DISPUTED: The wellhead assembly is complete There is no Supporting Evidence:

when each limitation of the claims has been met.

requirement that the wellhead assembly include anything more than the claimed limitations or that it be in a specific location. As

defined by the Markman ruling, there is no requirement that the wellhead assembly be in use for a finding of infringement. CUDF 7: During prosecution of the application for the `925

patent, then-pending claim 90 was a dependent claim based on then-pending independent claim 72. The USPTO rejected then-

pending claim 72 but indicated that then pending claim 90 would be allowable if rewritten into independent form. Duhn Oil amended then-pending claim 72 to include "a plurality of lock-screws," and rewrote then-pending claim 90 into independent form. Supporting Evidence: Ex. A.3, Duhn Oil's February 2005 Response

to Office Action, p. 23, 30 and 33. Duhn's Response: Duhn objects to CUDF 7 as incomplete: The applicants amended original claim 72 by adding 10

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"and a plurality of lockscrews each radially threaded through one of said first flange and second flange and engaging the generally elongate, annular member, wherein the other of said first flange and second flange is threaded on the generally elongate annular member, wherein the second flange is fastened to the first flange, and wherein the second flange is separate from the generally elongate member." 2. CUDF 8: Otherwise UNDISPUTED.

The Accused Products.

8. Cameron has never sold or offered for sale

underground pipes, such as the casing or production tubular member recited in the claims of the `925 patent. Evidence: Ex. B, Tobin Declaration, ¶ 10. Duhn's Response: DISPUTED to the extent Cameron purports to construe the meaning of the terms of the `925 Patent; otherwise UNDISPUTED. 3. CUDF 9: No Infringement if Lockscrews Are Not Run-In. Supporting

The Court determined that if the lockscrews are not

in contact with the frac mandrel, then there is no "dual load path" as required by the "wherein" clause and, thus, no infringement. Supporting Evidence: Transcript of Hearing on

January 6, 2009 (Doc. 287) at 183:20-184:13. Duhn's Response: DISPUTED. The Court only

indicated that it would make a ruling regarding what was "not within the call of the patent." CUDF 10: If a Cameron frac mandrel is installed such that the lockscrews are not in contact with the mandrel, there is no 11

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infringement. Duhn's Response: DISPUTED. Duhn contends that if

a Cameron frac mandrel is installed in such a way that the lockscrews cannot be in contact with the mandrel, there is no infringement, referring to Duhn's proposed Order (Doc. 476-1 at 2), with respect to which the Court has not ruled. CUDF 11: During Mr. Rex Duhn's deposition on September 19,

2007, the following exchange took place: Q [Cameron's Counsel]: So it is your opinion that when a lock screw is screwed down to engage the mandrel, that there will be no load transfer unless there is a depression in the frac mandrel? A [Mr. Duhn]: Yes. Q: And why is that? A: You would have to have a contact shoulder for lock pin to engage. Q: So, in this configuration shown, are you saying that's effectively the same as if the [lockscrews] were removed, pin 58? O [Duhn Oil's Counsel]: Objection, vague.

18 19 20 21 22 23 24 25 26 Q: That's because there's no correspondent depression on the frac mandrel for pin 58 to 12 Q: What if the pin 58 is screwed in real tight, is your answer the same? A: It would be insufficient friction coefficient to maintain the mandrel. A [Mr. Duhn]: There's no place for it to react the force. Q [Cameron's Counsel]: No place for 58-- A: To react the force on the elongate mandrel.

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engage? A: Correct, you would have no shear point. Supporting Evidence: at 39:14-40:12. Duhn's Response: UNDISPUTED that the quoted exchange occurred during Mr. Duhn's deposition with regard to Claim 13. Objection: FRE 802. Mr. George Boyadjieff believes that any contact Ex. A.8, Duhn Depo., dated Sept. 19, 2007,

CUDF 12:

between the lockscrews and the frac mandrel would be sufficient to transfer loads in accordance with the "wherein" clause. Supporting Evidence: Ex. A.9, First Supp. Boyadjieff Report, p. 3. Duhn's Response: UNDISPUTED. CUDF 13: On August 21, 2008, Cameron issued an engineering

bulletin to its field locations reminding Cameron personnel that the lockscrews should not be run-in and should not contact the frac mandrel. Supporting Evidence: Ex. B to Docket No. 255. Duhn's Response: UNDISPUTED that Cameron sent out an engineering bulletin to at least some Cameron installers; otherwise DISPUTED: It is unclear if the bulletin went to all "field locations" and whether the installers had previously been informed not to tighten the lockscrews. CUDF 14: The vast majority of Cameron's surface U.S. frac

mandrel installations are coordinated out of Cameron's Grand Junction, Colorado facility. Declaration, ¶ 4. 13 Supporting Evidence: Ex. B, Tobin

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 CUDF 16:

Duhn's Response: Objection on the ground that the cited evidence does not support the fact. [OWW - I agree; paragraph 4 of Mr. Tobin's declaration quoted above does not support this fact] and on the ground of vagueness as it is unclear what "vast majority" means. DISPUTED: Cameron maintains

at least two other facilities that store and install frac mandrels, i.e., Longview, Texas and Vernal, Utah. For the Encana

installations that are done by Cameron, the installations are all done from Cameron's facility in Vernal, Utah. 4. Installation Checklists.

CUDF 15: In February 2009, Cameron began documenting the installation of its frac mandrels at its Grand Junction facility. Duhn's Response: UNDISPUTED. The below pictures are accurate representations of

the type of marking plate Cameron places on the hold-down flange of its frac mandrels: [OWW - I could not copy the picture but it is in Cameron's statement of undisputed facts]. Evidence: Ex. B, Tobin Decl., ¶ 3. Duhn's Response: DISPUTED. Cameron has not placed Supporting

marking plates on all its frac mandrels and has no defined plan to get marking plates installed on all Encana-owned frac mandrels. CUDF 17: Cameron's marking plates conspicuously instruct

"DO NOT RUN IT TUBING HEAD LOCKSCREWS TO CONTACT FRAC MANDREL. THIS HOLD-DOWN FLANGE FIRMLY SECURES THE FRAC MANDREL DURING FRAC OP". 14

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Duhn's Response: UNDISPUTED as to correct quotation of plate text. DISPUTED on ground that not all

mandrels have been so marked and Cameron has presented no evidence that the plates are conspicuously placed considering the dirty, hostile and dangerous well site environment. CUDF 18: Additionally, Cameron delivered its updated

installation procedures--which expressly state that the lockscrews should not contact the frac mandrel--to its customers, and to third parties that may come in contact with Cameron's mandrels. Supporting Evidence: Ex. B, Tobin Decl. at ¶¶ 11-19. Duhn's Response: DISPUTED as to whether all customers, all third parties, and all operating companies that may come in contact with the Cameron frac mandrel. CUDF 19: Cameron has received from the field managers of its customers Orion, Williams, Barrett, Anadarko and Bass, signed acknowledgments indicating that his or her respective company has received Cameron's revised installation procedures. Evidence: Ex. B, Tobin Decl. at ¶¶ 11-19. Duhn's Response: UNDISPUTED that Cameron has received signed acknowledgements from customers Orion, Williams, Barrett, Anadarko and Bass; DISPUTED to the extent the acknowledgements do not identify the person signing as a "field manager." 5. Cameron's Confirmed Non-Infringing Frac Supporting

Mandrel is "Substantial". CUDF 20: Cameron's checklists indicate that Cameron has 15

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installed at least 841 mandrels with the lockscrews not run in and, as such, not in contact with the mandrel. Evidence: Ex. B, Tobin Decl. ¶ 4. Duhn's Response: Objection to foundation. discussion supra. DISPUTED. See Supporting

The evidence demonstrates that the

checklists that purportedly underlie this calculation are unreliable. Cameron's own checklists show that Cameron has had

to buff out over 1000 dimples from its frac mandrels from September 2009 to April 2010. CUDF 21: Cameron's checklists indicate that at least 615

mandrels have returned to Cameron's facilities without dimples. Supporting Evidence: Ex. B, Tobin Decl. ¶¶ 7-8. Duhn's Response: Objection to foundation. discussion supra. DISPUTED for same reasons as CUDF 20. See

CUDF 22: Cameron has an Installation Checklist and a Return Checklist for at least 535 mandrels. Tobin Decl. ¶¶ 7-8. Duhn's Response: Objection as irrelevant, misleading and lacking foundation. See discussion supra. Supporting Evidence: Ex. B,

DISPUTED because Cameron's pairing of Installation Checklists and Return Checklists did not start until at least June 11, 2009 and does not cover all of the infringing installations. CUDF 23: Cameron's checklists indicate that of the at least

535 mandrels for which Cameron has both an Installation and a Return Checklist, at least 523 mandrels were returned without dimples. Supporting Evidence: Ex. B, Tobin Decl. ¶¶ 7-8. 16

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Patent. CUDF 24:

Duhn's Response: same as to CUDF 22 supra. In Cameron's reply brief in reply to Duhn's evidentiary objections to CUDF 20-23, Cameron attaches as Exhibits A, B and C the Declaration of Joe Norris, District Manager for Cameron's Grand Junction, Colorado district office: I am the person in charge of maintaining Cameron's frac mandrel checklists for the Grand Junction office. The following checklists are records of Cameron's returns, buffing, and installations of frac mandrels in the Grand Junction office. These checklists were made at or near the time of these events, by (or from information transmitted by) a person with knowledge of these events. These checklists were kept in the course of Cameron's regularly conducted business activities. It has been the regular practice of Cameron to make these checklists since Cameron began its checklists procedures. 6. Duhn Oil's Lockscrews.

There are only so many horizontal penetrations a

flange can have, and the space necessary for the vertical bolts extending through this flange defines the maximum limit. It is

impossible to have an "infinite number of lockscrews" within a flange. Supporting Evidence: Ex. A.7, Devlin Declaration at ¶ 4. Duhn's Response: UNDISPUTED as to there being

only so many horizontal penetrations and that it is not possible to have an infinite number of lockscrews; DISPUTED as to the cause for the limitation. B. DUHN'S STATEMENT OF ADDITIONAL MATERIAL FACTS. 1. Cameron's Direct Infringement of the `925

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DUDF 25: When a customer purchases or rents a Cameron frac mandrel, Cameron installs the frac mandrel in the tubing head at its facility. Supporting Evidence: Kolegraff Decl., Ex. 7, Tobin

4/9/10 depo. at 23:19-24; Ex. 6, Tobin 9/8/09 depo. at 12:5-15. DUDF 26: At the well site in the field, Cameron assembles the wellhead assembly, including the frac mandrel in the tubing head. This assembly includes attaching to "a casing" and Supporting Evidence: Ex.

aligning "a production tubular member."

7, Tobin Depo. at 24:1-25:9, 25:24-26:3; Ex. 6, Tobin Depo. at 12:6-17. DUDF 27: In addition to assembling the wellhead, Cameron performs testing of the wellhead assembly. Supporting Evidence:

Ex. 7, Tobin Depo. at 25:4-9; Ex. 6, Tobin Depo. at 43:18-44:4; Ex. 1, Devlin 1/8/08 Depo. at 49:7-50:14. DUDF 28: Cameron has assembled a wellhead that is within the scope of claim 2 of the `925 Patent. Supporting Evidence: Ex. 1,

Devlin Depo. 15:16-21, 25:13-19, 27:14-17, 30:15-18, 31:22-24, 32:16-21, 33:5-11, 33:12-17, 20:15-18, 40:20-24, 41:14-24; Ex. 1a, Devlin Depo, Exh. 16; Ex. 8 Boyadjieff Report, 4-5; Ex. 9 Boyadjieff Supp. Report, 3. 2. Cameron's Indirect Infringement of `925 Patent.

DUDF 29: Cameron's frac mandrels have been used in an infringing manner after April 2, 2009. Supporting Evidence: Ex.

6, Tobin Depo., 50:13-51:15, 68:9-69:23; Ex. 6a, Tobin Depo., Ex. 15; Ex. 6b, Tobin Depo. Ex. 17.; Ex. 4 and table summarizing buffing checklists at Kolegraff Decl. ¶ 6. 18

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DUDF 30: Cameron did not install placards of all of its frac mandrels by April 2, 2009. Depo. at 15:5-14, 15:18-25. DUDF 31: Cameron did not instruct its employees to install the frac mandrel without engaging the lockscrews - Cameron's purported non-infringing use - until some time in 2008. Supporting Evidence: Ex. 5, Tobin Depo. at 14:4-15:12. 3. Prosecution of the `925 Patent. Supporting Evidence: Ex. 6, Tobin

DUDF 32: The `925 Patent matured from Application Number 10/369,070 filed on February 19, 2003. 18. DUDF 33: Claim 86 of the `925 Patent was first submitted to the Patent Office on November 15, 2004 as claim 90, which depended upon claim 72. Amendment at 34, 41. DUDF 34: In a January 10, 2005, Final Office Action, the Examiner allowed claim 90 as submitted. 14, 1/10/05 Final Office Action at 4. DUDF 35: In a January 10, 2005 Final Office Action, the Examiner rejected claim 72 as anticipated. Ex. 14, 1/10/05 Final Office Action at 2. DUDF 36: In an Amendment After Final submitted on February 22, 2005, the applicants amended then claim 90 to include the limitations of base claim 72 - converting claim 90 from a dependent to an independent claim. the scope of claim 90. The applicants did not change Supporting Evidence: Supporting Evidence: Ex. Supporting Evidence: Ex. 13, 11/15/04 Supporting Evidence: Ex.

Supporting Evidence: Ex. 15, Amendment 19

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After Final at 30, 33. DUDF 37: In the February 22, 2005 Amendment After Final, the applicants amended claim 72, adding a limitation. Evidence: Ex. 15, Amendment After Final at 23, 33. DUDF 38: On March 30, 2005, the Examiner issued a Notice of Allowability, allowing, inter alia, claims 72 and 90 as submitted in the February 22, 2005 Amendment After Final. Evidence: Ex. 16, Notice of Allowability. DUDF 39: The `925 Patent issued on July 26, 2005 with original claim 90 issuing as claim 86 and original claim 72 issuing as claim 77. Classification. 4. The Accused Device's "Lock Collar". Supporting Evidence: Ex. 17; Ex. 18, Issue Supporting Supporting

DUDF 40: The "lock collar" of Cameron's accused devices transfers a portion of the axial load from the elongate annular member to the secondary flange. Supporting Evidence: Ex. 8,

Boyadjieff Depo. at 141:2-25, 144:7-16; Cameron brief (Doc. 447) at 24. IV. OR USE. Cameron moves for partial summary judgment on the ground that Duhn cannot support its allegations of patent infringement pursuant to 35 U.S.C. § 271(a) based on use, sales, or offers for sale of allegedly infringing wellhead assemblies.2
2

NO DIRECT INFRINGEMENT BASED ON SALES, OFFERS FOR SALE,

Cameron

35 U.S.C. § 271(a) provides: 20

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asserts that the acts underlying each category of patent infringement are different: For example, if a supplier sells an infringing widget to a customer, the supplier is liable for infringement based on that sale. However, the customer is not liable for infringement, because there is no purchased-based infringement. If the customer then exports the infringing widger overseas, he again would not be liable for infringement. There is no export-based infringement. The customer obviously cannot be accused of infringement based on manufacturing the widget, he did not make it, he just bought it. However, if the customer were to use the widget, he would be liable based on that use. Thus, the supplier is only liable to the patentee for an infringing sale, while the customer is only liable to the patentee for an infringing use. Who the accused infringer is depends on which category of infringement the patentee asserts. "Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device, i.e., when the properly constructed claim reads on the accused device exactly." Cole v. Kimberly-Clark Corp., 102 F.3d 524, 532 "[A]ny

(Fed.Cir.1996), cert. denied, 522 U.S. 812 (1997).

deviation from the claim precludes a finding of literal

Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. Duhn conceded at the hearing that Cameron does not sell or offer to sell the "casing" or "production tubular member" and that Cameron is entitled to partial summary judgment on this ground. 21

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infringement."

Litton Systems, Inc. v. Honeywell, Inc., 140 F.3d See also London v. Carson Pirie Scott

1449, 1454 (Fed.Cir.1998).

& Co., 946 F.2d 1534, 1539 (Fed.Cir.1991): "There can be no infringement as a matter of law if a claim limitation is totally missing from the accused device." Cameron contends: Thus, if an accused infringer can show that he `used' a device lacking a component corresponding to a claim limitation, he is not liable for infringement based on that use. Similarly, if an accused infringer can show he sold a device lacking a component corresponding to a claim limitation, he is not liable for infringement based on that sale. Cameron contends that it does not use a wellhead assembly with a "casing" or a "production tubular member," which are required limitations of all of Duhn's asserted patent claims. Cameron asserts that each of the patent claims describe a "wellhead assembly" and includes the limitation "a production tubular member." Claim 1 and the claims based thereon further Cameron refers to the expert Relying on these principles,

include the limitation "a casing."

report of Mr. Boyadjieff, one of Duhn's designated expert witnesses, that "a casing" is a "pipe extending from the surface of the well down into the ground ... to the oil reservoir many thousands of feet below ground" and that a "`production tubular member' is the inner round pipe extending from the surface down to the oil or gas reservoir." Cameron contends that both of

these claim components are fixed in the ground and located at the well site. Cameron refers to testimony of Mr. Meek, a named 22

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inventor as well as a Duhn expert, that the claimed wellhead assembly "of the `925 patent does not include every element of those claims until it is fully assembled at the location of the well." Cameron moves for partial summary judgment on the ground that it does not "use" an allegedly infringing wellhead assembly. Asserting that "[t]his Court noted that infringing use of a frac mandrel in a wellhead assembly requires employment in the purpose from which the wellhead assembly's frac mandrel is sold and intended," and to Duhn's assertion that "use" encompasses testing and installation, Cameron refers to the Court's statement at a hearing on January 25, 2010: THE COURT: How is that a use? I understand, and I think as Mr. Rogers stated it, a frac mandrel is used by actually employing it to carry out its designed function, which is to dissipate force when the frac'ing of the well is going on. And so I don't understand testing or installation to be use in that sense. In other words, I think the use of a frac mandrel that is alleged to be infringed would be employing the frac mandrel for the purpose for which it's sold and intended. (Doc. 408, 10:2-9). Duhn responds that there is evidence that when a customer purchases or rents a Cameron frac mandrel, Cameron installs the frac mandrel in the tubing head at its facility; then Cameron goes to the well site and assemblies the wellhead assembly, including the frac mandrel in the tubing head, which assembly includes attaching to "a casing" and aligning "a production tubular member"; and that Cameron performs testing of the 23

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completed assembly. Duhn asserts that these activities, performed on the entire structure, constitute "use" of the `925 Patent, relying on the following cases. In Waymark Corp. v. Porta Systems Corp., 245 F.3d 1364, 1367-1368 (Fed.Cir.2001), the Federal Circuit noted: This court has established that testing is a use of the invention that may infringe under § 271(a) ... Nevertheless, the infringer must use the `patented invention.' Paper Converting Machine Co. v. Magna-Graphics Corp., 745 F.2d

10 11, 19-20 (Fed.Cir.1984), held: 11 12 13 14 15 16 See also General Electric Co. v. Sonosite, Inc., 568 F.Supp.2d 17 983, 992 (W.D.Wis.2008)("Testing is a `use' of an invention that 18 may infringe."); McKesson Information Solutions, Inc. v. Bridge 19 Medical, Inc., 2005 WL 2346919 at * 5 (E.D.Cal., Sept. 23, 20 2005)("`Using' requires use of the complete invention, and 21 encompasses `assembly' and `testing' of that invention."). 22 Duhn notes, Cameron cites no case authority that testing and 23 assembly may constitute "use," relying instead upon spontaneous 24 comments from the Court responding to an issue that had not been 25 briefed by the parties. 26 24 As Where, as here, significant, unpatented assemblies of elements are tested during the patent term, enabling the infringer to deliver the patented combination in parts to the buyer, without testing the entire combination together as was the infringer's usual practice, testing the assemblies can be held to be in essence testing the patented combination and, hence, infringement.

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Cameron replies that the testing of seals to which Duhn refers is part of the alleged "making," not "use": Duhn Oil refers to the installation of Cameron's tubing head at the well site, and testing of seals ... This is a part of Duhn Oil's `making' allegations. To the extent there is ever any testing of seals by Cameron at the well site, any such testing would be done to confirm that the assembly is complete (which would fall under the category of `making'), and therefore would not be a `use' of the wellhead assembly for the purpose set forth in the `925 patent, which is fracing. Cameron is not a fracing company. Cameron's customers and the fracing companies that they hire are the only persons that `use' Cameron's accused products. To the extent that Cameron may be accused of infringement for any such `use,' those claims would be limited to indirect infringement, which would be a claim that Cameron allegedly induced or contributed to the direct infringement of the user. Duhn Oil's claims of direct infringement against Cameron for alleged `use' should be disposed of as a matter of law. Cameron requests that the Court finds as a matter of law that Duhn's direct infringement claims to be presented at trial be limited to making. Cameron's motion for partial summary judgment on this ground is DENIED; case authority supports Duhn's position that testing and assembly in the field can constitute use for purposes of direct infringement. Cameron further seeks partial summary judgment of no infringement for instances where Cameron can prove that its frac mandrel was used in a noninfringing manner: Duhn Oil cannot satisfy its burden by 25

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alleging that infringement occurred in one instance and then assume infringement occurred in every instance. Duhn Oil must prove the totality of its allegations with a preponderance of evidence. Duhn Oil cannot meet its burden. In contrast, Cameron's checklist procedure proves that Cameron's mandrels were used hundreds of times in a nonfringing manner. Cameron cites L & W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed.Cir.2006): Shertech [the patentee] cannot simply `assume' that all of L & W's products are like the one Dr. Holmes tested and thereby shift the burden to L & W to show that is not the case. When a patentee with the burden of proof seeks summary judgment of infringement, it must make a prima facie showing of infringement as to each accused device before the burden shifts to the accused infringer to offer contrary evidence. Relying on L & W, Inc., Cameron asserts that "the Federal Circuit

14 has repeatedly rejected a patentee's attempt to establish 15 infringement against an entire category of products by presenting 16 evidence relating to only a subset of that category." 17 contends: 18 19 20 21 22 23 24 25 26 Duhn Oil cannot assert that all of Cameron's mandrels are used in an allegedly infringing manner by asserting, or even proving, that some of Cameron's mandrels were used that way. Cameron should not have to pay damages for instances where Duhn Oil cannot prove with a preponderance of evidence that infringement occurred. Cameron refers to evidence of allegedly non-infringing use when the lockscrews are not run in and asserts that it can prove hundreds of instances pursuant to its checklist procedure, commenced in early 2009. 26 Cameron

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Cameron further argues that Duhn's purported evidence of infringement does not "outweigh" Cameron's evidence of noninfringement. Essentially, Cameron argues that Duhn's

evidence that the frac mandrel will not work if the lockscrews are not run in is not credible: Duhn Oil contends that Cameron's frac mandrel will not work with the lockscrews not run in because they will `dance.' Mr. Boyadjieff, Duhn Oil's expert, stated that `[c]ustomers needed to use the lock screws in the tubing spool to contain the frac tree.' Duhn Oil's assertions are without support and simply wrong. Mr. Boyadjieff conceded that he has not done any calculation to determine if or when Cameron's mandrel would fail because the lockscrews were not run in. Further, he conceded that the only Cameron frac mandrels he has seen undergo a fracing process were in two videos provided by Cameron. And he agreed that those videos show Cameron's mandrels undergoing a frac job with tubing head lockscrews not run in, and that there was no failure or so-called `dancing.' Cameron contends that Duhn has presented no evidence that a

16 Cameron frac mandrel would fail or fail to work properly if the 17 tubing head lockscrews were not run in: 18 19 20 21 22 23 Cameron contends that it "is also quite telling" that Duhn 24 presents no evidence from a third party stating that the 25 lockscrews must be run in for Cameron's frac mandrel to work. 26 27 Duhn Oil bases its entire argument by taking out of context a statement by Mr. Tom Taylor, a Cameron engineer, discussing that he had heard someone was concerned about the possible occurrence of `dancing.' However, after reading Mr. Boyadjieff's perversion of his testimony, Mr. Taylor made it clear that there has never been any instance of `dancing.'

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Cameron cites E-Pass Technologies, Inc. v. 3Com Corp., 473 F.3d 1213, 1222-1223 (Fed.Cir.2007): If, as E-Pass argues, it is `unfathomable' that no user in possession of one of the accused devices and its manual has practiced the accused method ..., E-Pass should have had no difficulty in meeting its burden of proof and in introducing evidence of even one such user. Cameron contends that it has received written acknowledgements from its customers, acknowledging that they are aware of

Cameron's procedures that the lockscrews not be run in to contact the mandrel. Cameron also refers to evidence that Duhn's

inspection of Cameron's facilities and seen "countless" mandrels without dimples and asserts that Duhn has repeatedly presented isolated instances where the lockscrews were run in to assert that the lockscrews are always run in. Cameron contends that the

Court should hold Duhn to its evidentiary burden and grant partial summary judgment of noninfringement for Cameron for the at least 615 instances in which Cameron can show through its checklists that its mandrel was used with the lockscrews not run in. Duhn responds that Cameron's position is without merit because it attempts to conflate standards for damages with standards for infringement liability. Duhn cites Lucent

Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed.Cir.2009), cert. denied sub nom. Microsoft Corp. v. Lucent Technologies, Inc., ___ U.S. ___, 130 S.Ct. 3324 (2010): To infringe a method claim, a person must 28

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have practiced all steps of the claimed method ... [A] finding of infringement can rest on as little as one instance of the claimed method being performed during the pertinent time period. That Cameron can identify some instances of purported noninfringement, Duhn contends, has no bearing on whether Cameron is liable for direct infringement of the `925 Patent: [E]ven if Cameron can show some instances where there is no direct infringement, that is not sufficient to grant summary judgment of non-infringement; Duhn need only sow that there is some direct infringement ... [T]here is not disputing that Cameron infringed. The amount of infringement is a factual question - here, a genuine factual dispute - for determining damages, not liability. Duhn also argues that Cameron's evidence of non-infringement where the lockscrews are not run in is "highly suspect," referring to Duhn's objections to Mr. Tobin's declaration discussed supra. Cameron's motion for partial summary judgment on this ground is DENIED; questions of fact remain to be resolved at trial. V. NO CONTRIBUTORY INFRINGEMENT.

Cameron moves for partial summary judgment on the ground that Cameron's "confirmed-as-noninfringing configuration is substantially used, and, as such, precludes a finding of contributory infringement as a matter of law." 35 U.S.C. § 271(c) provides: Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a 29

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patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. Cameron cites Cross Medical Products, Inc. v. Medtronic Sofamor Danek, 424 F.3d 1293, 1312 (Fed.Cir.2005): In order to succeed on a claim of contributory infringement, in addition to proving an act of direct infringement, plaintiff must show that defendant `knew that the combination for which its components were especially made was both patented and infringing' and that defendant's components have `no substantial non-infringing use.' Cameron asserts that Duhn cannot satisfy this test.

12 Cameron asserts that Duhn must make a prima facie showing 13 that there are no substantial non-infringing uses for the 14 allegedly infringing product and must overcome any rebuttal 15 evidence presented by Cameron. 16 H. Peterson Co., 438 F.3d 1354, 1363 (Fed.Cir.2006). 17 fails to provide evidence that the accused device has no 18 substantial non-infringing use, the allegation of contributory 19 infringement cannot stand. 20 Inc., 2007 WL 925502 at *4 (S.D.Cal., March 19, 2007): 21 22 23 24 25 26 Under 35 U.S.C. § 271(c), the determination of whether there are substantial noninfringing uses focuses on `the thing sold' by the one accused of contributing to infringement. Hodosh v. Block Drug Co., Inc., 833 F.3d 1575, 1578 (Fed.Cir.1987); see also Aquatex Industries, Inc. v. Techniche Solutions, 419 F.3d 1374, 1380 n. ** (Fed.Cir.2005)(noting that the proper question for contributory infringement was 30 Lucent Technologies, Inc. v. Gateway, If Duhn See Golden Blount, Inc. v. Robert

1 2 3

whether defendant's product as sold was a staple article, not whether the product contained components that themselves could have other noninfringing uses. Cameron submits it can prove the "confirmed-as-noninfringing

4 configuration of its mandrels is substantially used": 5 6 7 8 9 Duhn responds that Cameron's analysis is faulty because it 10 relies upon later developed installation procedures to excuse 11 earlier infringing sales and contends that the focus should be on 12 whether the products had a non-infringing use at the time of the 13 sale. 14 Corporation, 52 F.2d 36, 40 (2nd Cir.1931) and the Scheduling 15 Order Following Pretrial Conference filed on September 29, 2010 16 (Doc. 467): 17 18 19 20 Duhn argues that there is no dispute that Cameron sold and placed 21 into its rental pool the bulk of its frac mandrels prior to 22 developing its modified installation procedures and there is no 23 evidence that, prior to 2008, Cameron had developed a non24 infringing method of using its product. 25 contends, Cameron bears the burden of showing substantial non26 31 Therefore, Duhn 1. The issue of contributory infringement in Cameron's Motion for Partial Judgment of No Infringement (Docket 446, filed September 12, 2010), shall be limited to the issue of contributory infringement after April 2009. Duhn cites Bassick Mfg. Co. v. Adams Grease Gun Cameron's checklists conclusively show that its mandrels have been used hundreds of times in a confirmed noninfringing manner. And while Duhn Oil may present instances of alleged infringement, isolated instances do not support Duhn's claim that there is no substantial noninfringing use.

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infringing uses for all sales of the product, including those before the development of Cameron's non-infringing method. Moreover, Duhn asserts, there is a genuine issue of material fact whether Cameron's purported non-infringing use even is an acceptable substitute for the patented system, referring to evidence that installers continued to run in the lockscrews after 2008: Thus, even if Cameron had instructed its installers or customers not to run in the screws, the continued running in of the screws creates a genuine issue of fact as to whether the purportedly non-infringing configuration is acceptable to customers. In reply, Cameron submits additional charts summarizing the

12 checklists since the filing of the motion and contends: 13 14 15 16 17 18 19 20 21 22 23 24 25 26 These charts summarizing Cameron's summary judgment evidence, and the corresponding compilations of these checklists, demonstrate the irrefutable evidence through which Cameron has established the substantial noninfringing use for its accused frac mandrel products. For example, the Exhibit F chart listing the `Documented Lifecycles' of Cameron's frac mandrels show that since the April 16, 2009 implementation of the buffing procedures through which Cameron confirmed that its mandrels were `clean' and without dimples or indentations when sent into the field, Cameron has documented 531 returns with a corresponding installation after buffing. Of those 531 `Documented Lifecycles,' 519 of the returns confirmed that the frac mandrels had no dimples/indentations when returned to Cameron's facility. Having established at least 519 instances in which Cameron's accused frac mandrels were installed and then returned with no dimples/indentations on the frac mandrels (which confirms that the mandrels were used 32

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in a confirmed non-infringing configuration with the tubing head lockscrews not in contact with the frac mandrel), Cameron has established the substantial noninfringing use for its accused frac mandrel products. Cameron acknowledges the Court's limitation regarding contributory infringement to contributory infringement after April 2009. In its reply brief, Cameron requests the Court

reconsider the limitation and recognize that the "substantial confirmed noninfringing use for which Cameron's accused products are suitable ... is a suitable use that is inherent in the design of the product and has existed since the first sale of the accused products": Although Cameron's implementation of its checklists procedures in 2009 provides the evidentiary proof through which Cameron has established that its accused products are suitable for such use, this proven suitable use did not come about by any change in the product design, just a change in the use. Cameron's accused frac mandrel products have always been suitable for use with the tubing head lockscrews not in contact with the frac mandrel. A finding of no contributory infringement after April, 2009, based on the indisputable fact that the accused products are suitable for use with the lockscrews not in contact with the frac mandrel, inherently means that there can be no liability for contributory infringement since the first sale of the accused product. Cameron's request for reconsideration is denied because it

22 was requested for the first time in the reply brief. 23 Cameron has three versions of the frac mandrel ("old style" with 24 a narrow grove; "new style" with a wide grove; and "original 25 "original design" with no groove). 26 33 The only one at issue where Moreover,

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the lockscrews were not run in is the Original Design, not the New Style Design. Cameron is not entitled to partial summary

judgment because questions of fact remain to be resolved at trial. VI. NO INDUCEMENT OF INFRINGEMENT AFTER APRIL 2, 2009.

Cameron argues that, since April 2, 2009, Cameron, in accordance with the Court's Order, has been specifically instructing its customers not to run in the lockscrews and to only use the confirmed-as-noninfringing configuration. Even if a

third party were to run in the lockscrews, Cameron asserts, Cameron did not have the specific intent to induce that infringement and is entitled to partial summary judgment that it did not induce others to infringe after April 2, 2009. As explained in Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed.Cir.1988): The patent statute provides that `[w]hoever actively induces infringement of a patent shall be liable as an infringer.' 35 U.S.C. § 271(b). Thus, a person infringes by actively and knowingly aiding and abetting another's direct infringement. Although section 271(b) does not use the word `knowingly,' the case law and legislative history uniformly assert such a requirement. See also Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1363 (Fed.Cir.2003): To succeed on this theory, a plaintiff must prove that the defendants' `actions induced infringing acts and that [they] knew or should have known [their] actions would induce actual infringement.' ... However, that defendants have `knowledge of the acts alleged to constitute infringement' is not 34

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enough ... `[P]roof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement.' ... `While proof of intent is necessary, direct evidence is not required; rather, circumstantial evidence may suffice. Duhn responds that partial summary judgment on this ground

5 is inappropriate: "While Cameron may have taken steps at some 6 point to discourage infringement, there is a legitimate question 7 of fact as to when these steps actually occurred." 8 to evidence that the placards instructing customers not to run in 9 the lockscrews were applied as the mandrels were returned and 10 that, as of September 9, 2009, he could not say how many placards 11 had been applied to the mandrels. 12 evidence of direct infringement after April 2, 2009 indicates 13 that Cameron's efforts were incomplete, referring to evidence 14 that some mandrels left Cameron's facility without dimples after 15 April 2, 2009 and returned with dimples. 16 there is a genuine issue of material fact as to if or when there 17 is a cut-off date for Cameron's inducement of infringement. 18 Cameron replies that Duhn has no evidence that Cameron 19 encouraged anyone to use the frac mandrels in the allegedly 20 infringing configuration after April 2, 2009: 21 22 23 24 25 Cameron's motion for partial summary judgment is DENIED on 26 35 Any possible questions regarding the steps that Cameron has taken to encourage the use of the confirmed-as-noninfringing configuration is still no evidence of inducement of the alleged direct infringement of others, which would be encouragement of allegedly infringing configuration. Thus, Duhn argues, In addition, Duhn contends, Duhn refers

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this ground; issues of fact and issues relating to damages remain for trial. VII. NO INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS.

Cameron moves for partial summary judgment on the ground that there is no infringement of the `925 Patent under the doctrine of equivalents. Cameron asserts that Duhn is estopped

from asserting the doctrine of equivalents for the asserted claims; that Duhn may not vitiate the recited "lockscrews"; and that the "lock collar" employed by Cameron is not legally equivalent to the claimed "lockscrews." Infringement under the doctrine of equivalents requires that the accused product contain each limitation of the claim or its equivalent. KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, Infringement under the doctrine of

1359 (Fed.Cir.2000).

equivalents occurs when a claimed limitation and the accused product perform substantially the same function in substantially the same way to obtain substantially the same result. V-

Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1313 (Fed.Cir.2005). An element in the accused product is equivalent

to a claim limitation if the differences between the two are "insubstantial to one of ordinary skill in the art. id. KCJ Corp.,

Each element contained in a patent claim is deemed material

to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. Warner-Jenkinson

Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997). 36

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However, prosecution history estoppel prevents the application of the doctrine of equivalents as a tool to recapture subject matter surrendered during prosecution. KCJ Corp., id. Application of

the rule precluding use of the doctrine of equivalents to recapture claim scope surrendered during patent acquisition is a question of law. Id.

In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), the Supreme Court held: Prosecution history estoppel requires that the claims of a patent be interpreted in light of the proceedings before the PTO during the application process. Estoppel is a `rule of patent construction' that ensures that claims are interpreted by reference to those `that have been cancelled or rejected.' ... The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent. On the contrary, `[b]y the amendment [the patentee] recognized and emphasized the difference between the two phrases[,] ... and [t]he difference which [the patentee] thus disclaimed must be regarded as material.' .... A rejection indicates that the patent examiner does not believe the original claim could be patented. While the patentee has the right to appeal, his decision to forego an appeal and submit an amended claim is taken as a concession that the invention as patented does not reach as far as the original claim ... Were it otherwise, the inventor might avoid the PTO's gatekeeping 37

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role and seek to recapture in an infringement action the very subject matter surrendered as a condition of receiving the patent. Prosecution history estoppel ensures that the doctrine of equivalents remains tied to its underlying purpose. Where the original application once embraced the purported equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannot assert that he lacked the words to describe the subject matter in question. The doctrine of equivalents is premised on language's inability to capture the essence of innovation, but a prior application describing the precise element at issue undercuts that premise. In that instance the prosecution history has established that the inventor turned his attention to the subject matter in question, knew the words for both the broader and narrower claim, and affirmatively chose the latter. 535 U.S. at 733-734. A. Prosecution History Estoppel/Duhn May Not Vitiate

the Recited "Lockscrews". Cameron argues that Duhn is estopped from asserting the doctrine of equivalents for Claims 13, 14, 31 and 86 because of the amendments Duhn made to obtain the `925 Patent. Cameron

contends that the prosecution history regarding Claims 13, 14, 31 and 86 is "virtually identical" to that addressed in Honeywell Int'l, Inc. v. Hamilton, Sundstrand Corp., 370 F.3d 1131 (Fed.Cir.2004), cert. denied, 545 U.S. 1127 (2005). In Honeywell, the Federal Circuit addressed "whether rewriting a dependent claim into independent form, coupled with the cancellation of the original independent claim, constitutes a narrowing amendment when the dependent claim includes an 38

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additional claim limitation not found in the cancelled independent claim or circumscribes a limitation found in the cancelled independent claim." Circuit stated: In this case there is no question that the original independent claims (application claims 16 and 32 of the `893 and application claims 48 and 49 of the `194 patent) were rejected for reasons related to patentability. All of the original independent claims were rejected as obvious in view of the prior art. The original independent claim upon which application claim 35 depended was also rejected as indefinite under 35 U.S.C. § 112, paragraph two. These rejected independent claims (application claims 17 and 35 of the `893 patent and claim 51 of the `194 patent) were rewritten into independent form in order to secure their allowance. A presumption of surrender therefore arises if rewriting the dependent claims into independent form, along with canceling the original independent claims, constitutes a narrowing amendment. Honeywell argues that prosecution history estoppel cannot occur where a dependent claim is merely rewritten into independent form. Honeywell contends that, although it surrendered its broader independent claims, there is no presumption of surrender because the scope of the rewritten claims themselves have not been narrowed. We disagree. Id. at 1141. Relying on Festo Corp. v. Shoketsu Kinzoku Kogyo 370 F.3d at 1141. The Federal

21 Kabushiki Co., 535 U.S. 722 (2002), and Federal Circuit opinions 22 following Festo, the Honeywell Court held: 23 24 25 26 In Festo the Supreme Court explained that `[a] patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim.' 535 U.S. at 740 ... When the scope of the 39

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patent claim is narrowed to secure the patent, the court `must regard the patentee as having conceded an inability to claim the broader subject matter.' Id. at 737 ... The scope of the patentee's concession is determined on a limitation-by-limitation basis ... It necessarily follows that the presumption of surrender applies only to the amended or newly added limitation; there is no surrender of territory as to unamended limitations that were present in the original claim. Thus, when a claim is rewritten from dependent into independent form and the original independent claim is cancelled, `the correct focus is on whether [the] amendment surrendered subject matter.' ... Under such circumstances, the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation. Equivalents are presumptively not available with respect to that added limitation. In this case there is a presumptive surrender of all equivalents to the inlet guide vane limitation. The only independent claims asserted in this case, claims 4, 8 and 19, were originally dependent on independent application claims 16, 32, 48 and 49, which did not include the inlet guide vane limitation. Claims, 4, 8 and 19 included the inlet guide vane limitation. Claims 4, 8 and 19 were rewritten into independent form, and the original independent claims were cancelled, effectively adding the inlet guide vane limitation to the claimed invention. Honeywell is presumptively estopped from recapturing equivalents to the inlet guide vane limitation. 370 F.3d at 1143-1144. Cameron argues that Duhn amended its claims "in almost exactly the same manner" as the patentee in Honeywell. During

the prosecution of the `925 Patent, then-pending Claim 90 was a dependent claim based on then-pending independent Claim 72. 40 In

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order to overcome rejections from the USPTO, Duhn amended the