Frazier v. Map Oil Tools, Inc.
| Decision Date | 06 December 2010 |
| Docket Number | CIVIL ACTION NO. C-10-3 |
| Parties | WLYNN FRAZIER, Plaintiff, v. MAP OIL TOOLS, INC., Defendant. |
| Court | U.S. District Court — Southern District of Texas |
On this day came on to be considered (1) Defendant's Motion for Partial Summary Judgment of Non-infringement of Claims 1-3 and of Invalidity of Claim 1 of U.S. Patent No. 6, 796, 376 (D.E. 54) ("Non-Infringement Summary Judgment Motion") and (2) Defendant's Motion for Partial Summary Judgment of Invalidity of All Claims Based on Best Mode Violation and Indefiniteness and of Claims 2 and 3 Based On Anticipation, Obviousness, and Written Description Defenses (D.E. 87) ("Invalidity Summary Judgment Motion"). For the reasons stated herein, Defendant's Non-Infringement Summary Judgment Motion is GRANTED IN PART. (D.E. 54.) The Court, in its discretion, dismisses without prejudice Defendant's invalidity counterclaims (D.E. 19 at 27) and therefore DENIES AS MOOT Defendant's Invalidity Summary Judgment Motion (D.E. 87) as well as the invalidity section of Defendant's Non-Infringement Summary Judgment Motion. (D.E. 54 at 26-30.)
This Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331 (federal question) and 28 U.S.C. § 1338(a) ().
On January 5, 2010, Plaintiff W. Lynn Frazier filed this patent infringement action under 35 U.S.C. § 271 against Defendant Map Oil Tools, Inc. (D.E. 1.) The relevant patent, U.S. Patent No. 6, 796, 376 ("'376 Patent"), was issued to Plaintiff Frazier on September 28, 2004. The '376 Patent relates to a composite bridge plug, a device utilized in oil well drilling, and has four claims. Plaintiff accuses Defendant's ProDrill bridge plugs of infringing the '376 Patent. On July 16, 2010, the Court granted Defendant's Motion for Summary Judgment with respect to Claim 4, finding that Defendant's tools did not infringe this Claim, and finding this Claim invalid under 35 U.S.C. § 101, 112. (D.E. 45.) The Court issued a Claim Construction Order on July 26, 2010, following a July 13, 2010 Markman hearing. (D.E. 49.)
Defendant now seeks summary judgment with respect to the three remaining claims of the '376 Patent. (D.E. 54; 87.) Defendant filed its Non-Infringement Summary Judgment Motion on August 23, 2010. (D.E. 54.) Plaintiff filed a Response on September 17, 2010. (D.E. 73.) Thereafter, Defendant filed a Reply and Plaintiff filed a Surreply. (D.E. 80; D.E. 111.)
Summary judgment in a patent case is subject to standard procedures established in Federal Rule of Civil Procedure 56. See, e.g., AFG Industries, Inc. v. Cardinal IG Co., Inc., 375 F.3d 1367, 1371 (Fed. Cir. 2004). "[A] trial court cannot reach a conclusive finding of non-infringement if the record shows some evidence supporting a finding of non-infringement and some evidence to the contrary." Id.
"Clear and convincing evidence" is required for an invalidity claim. TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1158 (Fed. Cir. 2004). Summary judgment on invalidity is also considered under standard summary judgment rules. Zenith Electronics Corp. v. PDI Communication Systems, Inc., 522 F.3d 1348, 1356-57 (Fed. Cir. 2008).
Under Federal Rule of Civil Procedure 56, summary judgment is appropriate if the "pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). The substantive law identifies which facts are material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Ellison v. Software Spectrum, Inc., 85 F.3d 187, 189 (5th Cir. 1996). A dispute about a material fact is genuine only "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248; Judwin Props., Inc., v. U.S. Fire Ins. Co., 973 F.2d 432, 435 (5th Cir. 1992).
On summary judgment, "[t]he moving party has the burden of proving there is no genuine issue of material fact and that it is entitled to a judgment as a matter of law." Rivera v. Houston Indep. Sch. Dist., 349 F.3d 244, 246 (5th Cir. 2003); see also Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party meets this burden, "the non-moving party must show that summary judgment is inappropriate by setting forth specific facts showing the existence of a genuine issue concerning every essential component of its case." Rivera, 349 F.3d at 247. The nonmovant "may not rely merely on allegations or denials in its own pleading; rather, its response must... set out specific facts showing a genuine issue for trial." Fed. R. Civ. P. 56(e)(2); see also First Nat'l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 270 (1968). The nonmovant's burden "is not satisfied with some metaphysical doubt as to the material facts, by conclusory allegations, by unsubstantiated assertions, or by only a scintilla of evidence." Willis v. Roche Biomedical Labs., Inc., 61 F.3d 313, 315 (5th Cir. 1995); see also Brown v. Houston, 337 F.3d 539, 541 (5th Cir. 2003) ().
Summary judgment is not appropriate unless, viewing the evidence in the light most favorable to the non-moving party, no reasonable jury could return a verdict for that party. Rubinstein v. Adm'rs of the Tulane Educ. Fund, 218 F.3d 392, 399 (5th Cir. 2000).
A patent infringement analysis involves two steps. Solvay S.A. v. Honeywell Intern., Inc., 622 F.3d 1367, 1379 (Fed. Cir. 2010). An accused device infringes MicroStrategy Inc. v. Business Objects, S.A., 429 F.3d 1344, 1352 (Fed. Cir. 2005) (citations omitted; emphasis added); Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 1370 (Fed. Cir. 2000). This case is at the second stage of the infringement analysis.
Claims 1 and 2 of the '376 Patent contain the following limitation: "A bridge plug comprising... an upper collar positioned about the upper portion of the mandrel." (D.E. 1-1 at 13.)1 Claim 3 is identical to Claim 2, except it provides that "the engaging portion is above the collar." (D.E. 1-1 at 14.) This Court previously invalidated Claim 4. (D.E. 45.)
With respect to the "upper collar" limitation, Plaintiff's amended infringement contentions state "[t]he 'setting sleeve' is the upper collar that is positioned about the upper portion of the mandrel." (D.E. 55-1 at 9.) Although Plaintiff previously relied upon the doctrine of equivalents as an alternative to literal infringement, he has since abandoned this argument and relies solely on literal infringement. (D.E. 112 at 5 ().)2 As Claim 3 is identical to Claim 2 in all respects except one, the Court understands that Plaintiff intends to rely only on literal infringement for this claim as well. The question on summary judgment, therefore, is whether the "setting sleeve" on Defendant's ProDrill bridge plugs literally infringes the "upper collar" limitation of Claims 1-3 of the '376 Patent.3
Defendant argues that the "setting sleeve" on the ProDrill bridge plug does not literally infringe the "upper collar" limitation of the '376 Patent for the following reasons: (1) the "setting sleeve" is not itself part of the bridge plug, but rather a separate tool used to set the bridge plug into place in a wellbore; (2) Frazier has admitted that the "setting sleeve" is in fact the "engaging tube" as that term is used in the '376 Patent, not the upper collar; and (3) the "setting sleeve" is not "positioned about" the mandrel. (D.E. 54 at 7-12; see also D.E. 80 at 8-14.) Plaintiff disagrees, and argues that (1) the "setting sleeve" is literally the "upper collar," because it meets the Court's definition, (2) the "setting sleeve" is not in fact the "engaging tube," as a separate feature known as the "setting cylinder" in fact sets the bridge plug into place, (3) the "setting sleeve" is not "separate and distinct" from the bridge plug, and (4) the "setting sleeve" is in fact "positioned about" the mandrel. (D.E. 73 at 18-20; see also D.E. 111 at 6-16.)
The Court must first consider whether the bridge plug claimed in the '376 Patent is required to be a single device, such that all components (including the upper collar) must be a part of the tool itself. The relevant terms for this analysis appear at the beginning of the claims: "a bridge plug comprising...." (D.E. 1-1 at 13.)
The term "bridge plug" is defined in relevant part as "any tool that isolates one wellbore zone from another." (D.E. 49 at 28.) The Court's definition contemplates only one "tool" that is used to isolate a wellbore zone, and does not also include separate devices used to set the bridge plug into place. Plaintiff argues that "[t]here is no requirement that the bridge plug be a single unitary structure." (D.E. 73 at 19.) While it is true that the bridge plug as described in the '376 Patent is composed of different parts, it would be incorrect to conclude that the term "bridge plug" can include other tools used only at certain times in operation of the bridge plug. Rather, the term is limited to...
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