National Oilwell DHT, LP v. Amega West Services, LLC
Filing
109
MEMORANDUM AND OPINION. Signed by Judge Nancy F Atlas on 10/26/2020. (Atlas, Nancy)
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
NATIONAL OILWELL DHT, L.P.,
Plaintiff,
v.
AMEGA WEST SERVICES, LLC,
Defendant.
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CIVIL ACTION NO. 2-14-1020
MEMORANDUM AND ORDER
This patent case is before the Court on the Motion for Reconsideration or
Clarification of Partial Summary Judgment of Non-Infringement (“Motion for
Reconsideration”) [Doc. # 99] filed by Plaintiff National Oilwell DHT, L.P. (“NOV”)
seeking reconsideration of the Court’s Memorandum and Order [Doc. # 96] entered
April 16, 2020. Specifically, NOV seeks reconsideration of the Court’s entry of
summary judgment on non-infringement as to Claims 11 and 13 of U.S. Patent No.
6,279,670 (“the ’670 Patent”) and Claims 2 and 5 of U.S. Patent No. 6,508,317 (“the
’317 Patent”). Defendant Amega West Services, LLC (“Amega”) filed an Opposition
[Doc. # 101], NOV filed a Reply [Doc. # 102], and Amega filed a Sur-Reply [Doc.
# 103]. At the Court’s request, NOV filed a Supplemental Brief [Doc. # 105], Amega
filed a Response [Doc. # 106], NOV filed a Reply [Doc. # 107], and Amega filed a
Sur-Reply [Doc. # 108].
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The Court has carefully reviewed the full record, including the parties’ briefing
on Amega’s prior Motion for Partial Summary Judgment [Doc. # 79]. Based on that
review, and the application of relevant legal authorities, the Court denies the Motion
for Reconsideration as to literal infringement, but explains the basis for its summary
judgment ruling more fully herein. The Court grants the Motion for Reconsideration
as to the doctrine of equivalents only to the extent explained below.
I.
BACKGROUND
NOV is the owner of the ’670 Patent and the ’317 Patent (“the Patents-in-Suit”),
which cover a vibration tool referred to as a “downhole flow pulsing apparatus.” See
’670 Patent, Abstract; ’317 Patent, Abstract. Vibration tools are used in drilling
operations to create vibratory forces to reduce friction as a drill string is moved within
a bore and/or to vary the downward force exerted on a drill bit.
The ’670 Patent and the ’317 Patent disclose vibration tools that use “a drive
system that includes a positive displacement motor (sometimes referred to as a
‘PDM’) to drive a specially constructed valve assembly that is tailored for use with
a PDM.” Plaintiff’s Written Tutorial [Doc. # 41], p. 4. “[B]ecause the speed of a
PDM is proportional to the rate of flow of fluid through the PDM, the frequency of
the vibrations produced by the tool of the [Patents-in-Suit] can be controlled by
varying the rate of fluid flow through the tool.” Id. at 5.
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The two Patents-in-Suit describe a PDM rotor coupled to a rotating valve plate,
which interacts with a stationary plate. Id. at 6. Each plate contains an opening
through which fluid can pass. See id. As the rotating plate moves relative to the
stationary plate, the overlap between the openings of the two plates will vary the flow
of fluid through the valve. See id. The variations in fluid flow through the
overlapping openings of the valve produce varying drilling fluid pressures that can be
used to create the desired vibrations. See id.
NOV filed this lawsuit, alleging that Amega is infringing the Patents-in-Suit
through its AmegaVIBE friction reduction drilling tools (collectively referred to
herein as “AmegaVIBE”). In its summary judgment briefing, NOV distinguished the
AmegaVIBE devices “produced in 2017 and beyond” from “pre-2017” devices. In
its Supplemental Brief, NOV describes four different versions of the AmegaVIBE,
although Amega argues that the “Original Design” and the “First Modified Pre-2017
Design” have the same valve members. The “Second Modified Pre-2017 Design”
described in NOV’s Supplemental Brief is the same as the First Modified Pre-2017
Design, but with larger openings in the stationary valve member. The “Post-2017
Design” was similar to the Second Modified Pre-2017 Design, with the addition of an
extending ridge at the top of the stationary valve member.
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Following a hearing pursuant to Markman v. Westview Instruments, Inc., 517
U.S. 370 (1996) (“Markman hearing”), the Court issued its Memorandum and Order
on Claim Construction (“Markman Ruling”) [Doc. # 66]. The Court construed the
claim term “open axial drilling fluid flow port,” found in Claims 11 and 13 of the ’670
Patent and Claims 1 and 5 of the ’317 Patent, to mean “a bore extending along a
longitudinal axis of the valve through which drilling fluid can pass and that is always
at least partially open.” See Markman Ruling, p. 13.
Following discovery, Amega filed its Motion for Partial Summary Judgment
of Non-Infringement as to the ’670 Patent and the ’317 Patent. The Court held that
Amega’s accused devices do not literally infringe the ’317 Patent or Claims 11 or 13
of the ’670 Patent because the Amega devices do not include an “open axial drilling
fluid flow port.” See Memorandum and Order [Doc. # 96], pp. 11-12. The Court held
also that NOV was estopped to argue, under the doctrine of equivalents, that a port
that alternatively opens and closes is the equivalent of an “open axial drilling fluid
flow port.” See id. at 15-16.
NOV filed a Motion for Reconsideration challenging the Court’s summary
judgment ruling of no literal infringement and that NOV is estopped to assert
infringement under the doctrine of equivalents. NOV does not seek reconsideration
of the Court’s summary judgment ruling that there is no literal infringement by the
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Original Design of the AmegaVIBE, or that NOV is estopped to argue that the
Original Design AmegaVIBE infringes under the doctrine of equivalents. See
Supplemental Brief [Doc. # 105], p. 4. n. 3. The Motion for Reconsideration has been
fully briefed and is now ripe for decision.
II.
STANDARD FOR MOTION FOR RECONSIDERATION
NOV seeks reconsideration of an interlocutory summary judgment ruling on
some, but not all, claims asserted in this case. Rule 54(b) of the Federal Rules of Civil
Procedure allows a party to seek reconsideration of interlocutory orders and authorizes
the district court to revise at any time an order or other decision that does not end the
case. See Austin v. Kroger Texas, L.P., 864 F.3d 326, 336 (5th Cir. 2017) (citing FED.
R. CIV. P. 54(b)). “Under Rule 54(b), the trial court is free to reconsider and reverse
its decision for any reason it deems sufficient, even in the absence of new evidence
or an intervening change in or clarification of the substantive law.” Id. (internal
quotation marks and citations omitted).
III.
NO LITERAL INFRINGEMENT
The ’317 Patent is a divisional of, and shares a common specification with, the
’670 Patent. Both patents relate to downhole drilling tools. Claim 11 of the ’670
Patent covers a valve that:
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includes first and second valve members each defining a respective axial
flow opening and which openings are aligned to collectively define an
open axial drilling fluid flow port through the valve.
Similarly, Claim 13 of the ’670 Patent and Claim 1 and 5 of the ’317 Patent each
cover a valve containing the following limitation:
a valve located in the bore and including first and second valve members
each defining a respective axial flow opening and which openings are
aligned to collectively define an open axial drilling fluid flow port
through the valve.
The Claims require (1) that the first and second valve members each define “a
respective axial flow opening,” and (2) that those respective openings are aligned “to
collectively define an open axial drilling flow port.” The Court construed the claim
term “open axial drilling fluid flow port” to mean “a bore extending along a
longitudinal axis of the valve through which drilling fluid can pass and that is always
at least partially open.” See Markman Ruling, p. 13. The Court did not construe the
term “respective” in the Claim Construction ruling, but the parties have now briefed
the issue. The Court construes the claim term “respective” to mean “belonging or
relating to each of two or more things individually” and synonymous with “specific,”
“particular,” and “corresponding.”
Amega argued in its motion for summary judgment that the AmegaVIBE does
not include the limitation of “a bore” that is “always at least partially open.” The
Court agreed because the opening created by the alignment of “respective axial flow
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openings” closed as the specific opening in the rotating valve member moved out of
alignment with the respective opening in the stationary valve member. When the
respective axial flow openings were no longer aligned, that “axial drilling flow port”
closed.
For clarification, the Court’s ruling on literal infringement was based on the
limitation that there must be alignment between a single, specific opening in the
rotating valve member and a single, specific opening in the stationary valve member
that “collectively define an open axial drilling fluid flow port through the valve.” This
open axial drilling fluid flow port through the valve, created by the alignment of the
specific opening in the rotating valve member and the specific opening in the
stationary valve member, must be always at least partially open. This limitation is
illustrated by Figures 4 and 5 of the ’670 Patent, which show a single opening in the
rotating valve member that aligns with a single, respective opening the stationary
valve member to create a fluid flow port that is always at least partially open. See
’670 Patent, FIG 4 and FIG 5.
There is always at least one open flow port through the valves in the
AmegaVIBE devices, but those open flow ports are created by the alignment of
different combinations of openings in the rotating valve member and the stationary
valve member. Consequently, as stated in the original summary judgment ruling and
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as clarified herein, there is no literal infringement. The Motion for Reconsideration
on this issue is denied.
IV.
ESTOPPEL AS TO DOCTRINE OF EQUIVALENTS ARGUMENT
Amega argued that NOV is barred by the prosecution history from asserting its
doctrine of equivalents position. When 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.” Festo Corp.
v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34 (2002); see also
Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1363 (Fed. Cir. 2006). For
arguments made during patent prosecution to create an estoppel, “the prosecution
history must evince a clear and unmistakable surrender of subject matter” and a
patentee’s arguments and explanations to the patent examiner are not presumed to
surrender an entire field of equivalents. See Conoco, 460 F.3d at 1364.
Alan Martyn Eddison and Ronnie Hardle (collectively, “patentee”) are the
named inventors and applicants for the ’670 Patent and the ’317 Patent. During the
prosecution of the ’670 Patent, the patentee distinguished the pending claims from
prior art U.S. Patent No. 2,780,438 (“Bielstein”). Specifically, in response to the
Patent Examiner’s rejection of then-pending claim 14 of the ’670 Patent, the patentee
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distinguished Bielstein as having an axial drilling fluid flow port that “is alternatively
closed and opened.” Specifically, the patentee argued that the
Examiner has not identified any feature of Bielstein which corresponds
to the axial flow opening of the recited second valve member. In any
event, claim 14 recites that the alignment of the Openings of the first and
second valve members is varied to vary the open area of the flow port
defined by the openings between a minimum open area and a maximum
Open area. In contrast, the passageways 20 of the plate 19 of Bielstein
are closed when rotated out of alignment with the ports 21 in the valve
housing 18. Thus any axial drilling fluid flow port defined by the
passageways 20 is alternatively closed and opened, and does not vary
between a minimum open area and a maximum open area, as recited in
claim 14.
September 21, 2000 Response to Patent Examiner [Doc. # 44-1], p. 218 (emphasis
added). The patentee later, in its application for the ’317 Patent, again argued that the
flow ports in Bielstein “do not define an open axial drilling fluid port.”
Based on this prosecution history, the Court held in its prior Memorandum and
Order that NOV cannot now argue that a flow port which alternatively opens and
closes is the equivalent of “an open axial drilling fluid flow port.” NOV has not
presented any argument that persuades the Court to alter this ruling.
The Court’s ruling on the doctrine of equivalents was limited, however, to the
holding stated above. The Court did not, based on prosecution estoppel, intend to
preclude NOV from asserting a different argument under the doctrine of equivalents
if one is supported by the evidence and existing legal authorities. In its Reply, NOV
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requested clarification of the Court’s literal infringement ruling because
“understanding the specific grounds underlying the summary judgment of no literal
infringement is critical in assessing whether prosecution history estoppel precludes
resort to the doctrine of equivalents.” See Reply [Doc. # 102], p. 3. NOV noted that
if the Court’s ruling of no literal infringement was based on the AmegaVIBE devices
lacking an open axial drilling fluid flow port defined by the alignment of a single
opening in the rotating valve member and a single respective opening in the stationary
valve member, prosecutorial estoppel should not prevent NOV’s doctrine of
equivalents argument. The Court agrees.
The arguments made during the prosecution history to distinguish Bielstein did
not clearly and unmistakably surrender NOV’s current argument that an open axial
drilling fluid flow port created by the alignment of a specific opening in the stationary
valve member with, at different times, one or more different openings in the rotating
valve member is the equivalent of the patent limitation of an open axial drilling fluid
flow port created by the alignment of a specific opening in the stationary valve
member with a single, respective opening in the rotating valve member.1 NOV is not
1
Amega appears to argue in the Sur-Reply that NOV’s description of Bielstein as
having a fluid flow port that alternatively closes and opens was incorrect and that,
instead, there is always fluid flowing through the Bielstein valve. See Sur-Reply
[Doc. # 108], pp. 3-5. Whether or not NOV’s description of Bielstein was correct,
there is nothing in the prosecution history by which the patentee clearly surrendered
the doctrine equivalents argument now asserted by NOV.
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estopped to present this argument and, therefore, Amega is not entitled to summary
judgment on NOV’s claim that the AmegaVIBE devices, other than the Original
Design, infringe through the doctrine of equivalents. The Motion for Reconsideration
is granted only to the extent that NOV is entitled to assert this now-refined doctrine
of equivalents argument.
V.
CONCLUSION AND ORDER
As set forth in the Court’s Memorandum and Order [Doc. # 96], and as
explained more fully herein, NOV has failed to present evidence that raises a genuine
fact dispute regarding its argument that the AmegaVIBE contains an “open axial
drilling fluid flow port” as that term has been construed by the Court.
NOV is barred by the prosecution history from asserting that a port that
alternatively opens and closes is the equivalent of “an open axial drilling fluid flow
port” for purposes of patent infringement. NOV may, however, assert its current
argument that the later version of the AmegaVIBE infringes under the doctrine of
equivalents because the open axial drilling fluid flow port established by the
alignment of a specific opening in the stationary valve member with, at different
times, one or more different openings in the rotating valve member (NOV’s
description of the later version of the AmegaVIBE) is the equivalent of an open axial
drilling fluid flow port established by the alignment of a single specific opening in the
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stationary valve member with a single specific opening the rotating valve member (the
patented device).
Based on the foregoing, it is hereby
ORDERED that NOV’s Motion for Reconsideration [Doc. # 99] is DENIED
as to NOV’s claims of literal infringement, and is GRANTED as to NOV’s claim that
the later version of the AmegaVIBE device infringes under the doctrine of equivalents
as explained above.
SIGNED at Houston, Texas, this ____ day of October, 2020.
26th
NAN Y F. ATLAS
SENIOR UNI
STATES DISTRICT JUDGE
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