Mgm Well Services, Inc. v. Mega Lift Systems, LLC, Civil Action No. H-05-1634.

CourtUnited States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
Citation505 F.Supp.2d 359
Docket NumberCivil Action No. H-05-1634.
PartiesMGM WELL SERVICES, INC., Plaintiff, v. MEGA LIFT SYSTEMS, LLC, Defendant.
Decision Date25 April 2007
505 F.Supp.2d 359
Civil Action No. H-05-1634.
United States District Court, S.D. Texas, Houston Division.
April 25, 2007.

Page 360


Page 361


Page 362


Page 363


Page 364

Joseph Dean Lechtenberger, Howrey LLP, Houston, TX, for Plaintiff.

Kent A. Rowald, Ira Phillip Domnitz, Seyfarth Shaw LLP, Houston, TX, William Prickett, Seyfarth Shaw LLP, Boston, MA, for Defendant.


ATLAS, District Judge.

Plaintiff MGM Well Services, Inc. ("MGM") filed this patent infringement lawsuit against Mega Lift Systems, LLC ("Mega Lift"). The Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1338(a), and venue in this district is proper under 28 U.S.C. §§ 1391(b)-(c) and 1400(b).

The case was tried to the Court beginning April 2, 2007. Having heard and observed the witnesses who testified at trial, having considered the exhibits introduced by the parties, and having reviewed all matters of record in this case, the Court makes the following findings of fact and conclusions of law.1


The United States Patent and Trademark Office ("USPTO") issued United States Patent Number 6,719,060 ("the '060 Patent") on April 13, 2004. Edward A. Wells is the named inventor on the '060 Patent, which he assigned to MGM in December 2004. Integrated Production Services ("IPS") now owns MGM, and Complete Production Services owns IPS.

As will be discussed in more detail below, the '060 Patent relates to a two-piece plunger lift system2 for use in gas wells to remove accumulated liquids and thereby increase the gas flow through the well to

Page 365

the surface. The '060 Patent incorporated by reference two earlier patents for twopiece plunger lift systems owned by MGM — United States Patent Number 6,209,637 ("the '637 Patent") and United States Patent Number 6,467,541 ("the '541 Patent"). The '060 Patent improved on these two-piece plunger lift systems by including a "catcher assembly" located in the housing connected to the well at the surface that utilizes the flow of gas from the well to create a pressure drop that holds the plunger sleeve at the surface against gravity until a motor valve near the surface is closed for a very few seconds to block the gas from the well from reaching the plunger. The plunger sleeve then falls back to the bottom of the well where it reunites with the ball.

MGM became aware that Mega Lift, one of its prior distributors, was selling a twopiece plunger lift system called the "Chaser" system. The Court finds from the evidence at trial that Mega Lift's system, which initially included a teardrop shaped rod, was "developed" fundamentally by Mega Lift's principal, James Bartley, copying an MGM system that he obtained. MGM filed this lawsuit for patent infringement on May 6, 2005, and served the summons and complaint on Mega Lift on May 13, 2005. MGM filed an Amended Complaint [Doc. # 13] on June 1, 2005. On July 19, 2005, the Court issued a preliminary injunction [Doc. # 29] enjoining Mega Lift from infringing or contributing to the infringement of the '060 Patent. In response to the preliminary injunction, Mega Lift began manufacturing and selling a two-piece plunger lift system with a straight separator rod instead of the teardrop shaped rod it was using before the injunction.

The Court conducted a Markman3 hearing on February 1, 2006, and issued its Memorandum on Claim Construction [Doc. # 77] on February 10, 2006.4 Following discovery and briefing of dispositive motions, the Court granted summary judgment in MGM's favor on Mega Lift's defenses regarding invalidity and unenforce ability. The Court also excluded certain evidence proffered by Mega Lift, including its technical "expert," evidence regarding two-piece plunger lift systems attributed to Dan Casey, and evidence of dimensions of Mega Lift's plunger lift systems that differed from those produced during discovery.

The case was tried to the Court without a jury for five days beginning April 2, 2007. The Court heard the witnesses as they testified, reviewed the exhibits introduced by the parties, and questioned witnesses in order to clarify their testimony. Based on the Court's consideration of the evidence presented at trial, and the application of the governing legal authorities from the United States Court of Appeals for the Federal Circuit, the Court finds and concludes that both Mega Lift "Chaser" systems — the system with the teardrop shaped rod and the system with the straight rod — infringe the '060 Patent. MGM is entitled to recover its lost profits and to a permanent injunction. Because the case does not rise to the level of an exceptional case under 35 U.S.C. § 285, the Court denies MGM's request for attorneys' fees.


A. Applicable Legal Principles

"[W]hoever without authority makes, uses, offers to sell, or sells any

Page 366

patented invention, within the United States ... infringes the patent" 35 U.S.C. § 271(a); MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp. 420 F.3d 1369, 1375 (Fed.Cir.2005). An accused infringer may be liable for contributory infringement under 35 U.S.C. § 271(c)5 if the patent holder proves that the defendant made the patented device, that the device has no substantial noninfringing uses, and that the defendant sold the device within the United States to a customer whose use of the device constituted an act of direct infringement. See DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1303 (Fed.Cir.2006).

"A determination of patent infringement requires a two-step analysis: first, the meaning of the claim language is construed, then the facts are applied to determine if the accused device falls within the scope of the claims as interpreted." MBO Lab., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1329 (Fed.Cir.2007). The Court construed the meaning of the disputed claim terms in its Memorandum on Claim Construction [Doc. # 77], as amended by the Order [Doc, # 79] entered March 22, 2006, and the Order [Doc. # 250] entered April 11, 2007. The Court incorporates its claim construction, including the parties' stipulated construction of certain terms, as if set forth in its entirety herein.

The second step, "comparison of the claims to the accused device, is a question of fact, and requires a determination that every claim limitation or its equivalent be found in the accused device." Planet Bingo, LLC v. GameTech Int'l, Inc., 472 F.3d 1338, 1343 (Fed.Cir.2006). The comparison is only to the patent claims, not to any specific embodiment in the patent specification or to the patent holder's commercial embodiment. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1347 (Fed.Cir.2003). The patent holder bears the burden of proving infringement by a preponderance of the evidence. See Warner-Lambert Co. v. Teva Pharin. USA, Inc., 418 F.3d 1326, 1341 n. 15 (Fed.Cir.2005); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1355 (Fed.Cir.2005).

A dependent claim in a patent depends upon and incorporates by reference all the limitations of the independent claim to which it refers. 35 U.S.C. § 112, ¶ 4. The dependent claim refers to an independent claim and then adds a further limitation. Id.

A claim using the words "comprising" or "comprises" in the preamble is not limited to products or methods having only the elements or steps recited in the claim, but also covers products or methods with the elements or steps of the claim and additional elements or steps. See Aguayo v. Universal Instruments Corp., 356 F.Supp.2d 699, 707 (S.D.Tex.2005).

B.The '060 Patent and Plunger Lift Technology

Liquids can accumulate in gas wells and cause a reduction in the amount of gas that

Page 367

flows through the well to the surface. If the accumulated liquids are not removed, the well can reach a point where gas no longer flows because the pressure in the gas reservoir is not able to flow against the pressure of the liquid in the bottom of the well. This is referred to in the industry as a well that has "loaded up."

Plunger lift systems have been used for many years to remove formation liquids from the bottom of gas wells. Previously, conventional plunger lift systems used a one-piece piston that was dropped into the well by stopping the upward flow of gas in the well, generally by closing a valve on the flow line. The one-piece piston would fall through the formation liquids and hit a bumper spring located in the bottom of the well. The valve on the flow line was then opened and the gas in the well pushed the one-piece piston upwardly toward the surface, pushing the formation liquid on top of the piston to the surface for removal from the well. Having to "shut in" or close off the well in order for the piston to fall to the bottom of the well was a major disadvantage because the well cannot produce gas while it is shut in.

Other plunger systems, known as "bypass systems," involve an internal valve mechanism for opening and closing the flow passage through the piston. One type is the "caged ball" system which, although it is a bypass system, involves a one-piece piston because the ball falls into an attached "cage" rather than falling independently to the, bottom of the well. A major disadvantage of these "caged ball" systems is that they often become lodged prior to reaching the bottom of the well and, therefore, do not reach and fully remove the formation liquids from the bottom of the well.

The plunger lift system covered by the. '060 Patent is a two-piece system. There is a sleeve with a flow path through it and a separate lower component, such as the ball, that is designed to seat within the sleeve when the sleeve and the ball are together at the bottom of the well. This MGM plunger lift system allows the plunger to be dropped in...

To continue reading

Request your trial
1 cases
  • Caldwell Mfg. Co. N. America v. Amesbury Grp. Inc., 11-CV-6183T
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • August 11, 2011
    ...F.Supp.2d 592 (D. Del., 2007)(infringement found upon conclusion of bench trial); MGM Well Services, Inc. v. Mega Lift Systems, LLC, 505 F.Supp.2d 359 (S.D.Tex., 2007)(infringement found upon conclusion of bench trial). 3. One recent opinion, decided after plaintiff filed its motion for a p......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT