Opinion
Civil Action No. 4:19-CV-3113
12-09-2020
TUBULAR ROLLERS, LLC, et al., Plaintiffs, v. MAXIMUS OILFIELD PRODUCTS, LLC, et al., Defendants.
Phillip L. Free, Jr, Phillip Free Law, PLLC, Edmond, OK, John Christopher Reynolds, Reynolds Frizzell LLP, Houston, TX, for Plaintiffs Tubular Rollers, LLC, H. Lester Wald. John Christopher Reynolds, Reynolds Frizzell LLP, Houston, TX, for Plaintiff Rolling Tool, Inc. John Hanson Barr, Jr, Edgar Neil Gonzalez, John Allen Yates, Patterson Sheridan, LLP, Houston, TX, for Defendants Maximus Oilfield Products, LLC, Nabors Drilling Technologies USA, Inc. John Hanson Barr, Jr, Patterson Sheridan, LLP, Houston, TX, for Defendant Nabors Industries, Ltd.
Phillip L. Free, Jr, Phillip Free Law, PLLC, Edmond, OK, John Christopher Reynolds, Reynolds Frizzell LLP, Houston, TX, for Plaintiffs Tubular Rollers, LLC, H. Lester Wald.
John Christopher Reynolds, Reynolds Frizzell LLP, Houston, TX, for Plaintiff Rolling Tool, Inc.
John Hanson Barr, Jr, Edgar Neil Gonzalez, John Allen Yates, Patterson Sheridan, LLP, Houston, TX, for Defendants Maximus Oilfield Products, LLC, Nabors Drilling Technologies USA, Inc.
John Hanson Barr, Jr, Patterson Sheridan, LLP, Houston, TX, for Defendant Nabors Industries, Ltd.
ORDER
Andrew S. Hanen, United States District Judge
Pending before the Court is the Defendants', Maximus Oilfield Products, LLC ("Maximus") and Nabors Drilling Technologies USA, Inc. ("Nabors Drilling"), Motion for Summary Judgment. (Doc. No. 42). The Plaintiffs, Tubular Rollers, LLC ("Tubular"), Rolling Tool, Inc. ("Rolling Tool"), and H. Lester Wald filed a Response. (Doc. No. 48). The Defendants filed a Reply. (Doc. No. 50). After considering the briefing and applicable law, the Court grants in part and denies in part the Defendants' Motion.
I. Background
Plaintiffs are the owners of the Patents-in-Suit, all of which relate to a tool for moving oil and gas drilling pipes called "tubulars." The Patents cover the tubular-moving tool and related method. The '224 Patent was originally issued in 2015. (Doc. No. 28, Ex. 1). The '009 Patent was a continuation of the '224 Patent and was issued in 2016. (Doc. No. 28, Ex. 2). Lastly, the '915 Patent was a continuation of the '009 Patent (and thus a further continuation of the '224 Patent). (Doc. No. 28, Ex. 3). The '915 Patent was issued in 2017. (Id. ). According to Plaintiffs, tubulars "are typically hollow steel or aluminum alloy pipe [that] come in a variety of sizes, strengths, and wall thickness, and are typically 30 to 45 feet in length. Each piece of pipe is very heavy, weighing between 1100 and 3600 pounds." (Id. at 7). The customary technique of stacking tubulars is for workers to stand on both ends of the pipe and roll each piece to a pipe rack where the tubulars are stacked several layers deep. (See id. ). This "hand-over-hand" technique is time consuming and can result in injuries to the workers. (See id. at 7–8).
The Patents-in-suit first came into being in 2014 when Andrew J. Cogburn, Jr. invented a tool and method of using the tool to assist in moving the tubulars. (See id. at 8). According to Plaintiffs, the tool covered by and used in conjunction with the Patents "is inserted into the [tubular] and has a handle that extends out from [it], allowing the workers to hold the handle of the tool rather than touching the [tubular] itself. The inventions facilitate moving pipe and also reduce injuries associate with handling the pipe, such as hand injuries." (Id. ).
According to Plaintiffs' complaint, Maximus manufactures "pipe-handling tools" that allegedly infringe the Patents-in-Suit and sells those tools to Nabors Drilling, who uses them in its drilling operations. (Doc. No. 1 at 6–12). Defendants, of course, disagree; they assert that their accused product "is not a rolling tool, but a sliding tool." (Doc. No. 29 at 5–6). Additionally, Defendants claim their product is different because, unlike the invention covered by the Patents, it has "circular spacers—typically, greased circular spacers—that remain stationary while the racked tubular rolls." (Id. at 6) (emphasis omitted; footnote omitted).
The Court held a Markman hearing in this case and subsequently issued a Memorandum and Order on Claim Construction. (Doc. No. 35). It is these claim constructions in part on which the Defendants now base their motion for summary judgment.
II. Legal Standard
Summary judgment is warranted "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "The movant bears the burden of identifying those portions of the record it believes demonstrate the absence of a genuine issue of material fact." Triple Tee Golf, Inc. v. Nike, Inc. , 485 F.3d 253, 261 (5th Cir. 2007) (citing Celotex Corp. v. Catrett , 477 U.S. 317, 322–25, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ). Once a movant submits a properly supported motion, the burden shifts to the non-movant to show that the Court should not grant the motion. Celotex , 477 U.S. at 321–25, 106 S.Ct. 2548.
The non-movant then must provide specific facts showing that there is a genuine dispute. Id. at 324, 106 S.Ct. 2548 ; Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A dispute about a material fact is genuine if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The Court must draw all reasonable inferences in the light most favorable to the nonmoving party in deciding a summary judgment motion. Id. at 255, 106 S.Ct. 2505. The key question on summary judgment is whether there is evidence raising an issue of material fact upon which a hypothetical, reasonable factfinder could find in favor of the nonmoving party. Id. at 248, 106 S.Ct. 2505.
Evaluation of a motion for summary judgment of noninfringement is a two-step process. See Abbott Labs. v. Sandoz, Inc. , 566 F.3d 1282, 1288 (Fed. Cir. 2009), cert. denied , 558 U.S. 1136, 130 S.Ct. 1052, 175 L.Ed.2d 927 (2010). First, the claims are properly construed and then those construed terms are compared to the accused product. Id. "[A] determination of noninfringement, either literal or under the doctrine of equivalents, is a question of fact." Crown Packaging Tech., Inc. v. Rexam Beverage Can Co. , 559 F.3d 1308, 1312 (Fed. Cir. 2009). To infringe a claim literally, the accused product must incorporate every limitation in a valid claim, exactly. Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc. , 206 F.3d 1408, 1415 (Fed. Cir. 2000). "Absent any limitation of a patent claim, an accused device cannot be held to literally infringe the claim." Id. To infringe a claim under the doctrine of equivalents, the accused product must incorporate every limitation in a valid claim by a substantial equivalent. Id. As with literal infringement, there can be no infringement under the doctrine of equivalents if one limitation of a claim is not present in the accused device. Id. ; see also Crown Packaging , 559 F.3d at 1312 ("A finding of infringement under the doctrine of equivalents requires a showing that the difference between the claimed invention and the accused product was insubstantial.").
III. Discussion
The Defendants' arguments as to why they are entitled to summary judgment are as follows. First, they argue that all of the independent claims in the Patents-in-Suit specify that the tools have more than one "longitudinal axis." (Doc. No. 42 at 4). According to Defendants, their Accused Tools have only a single axis, and therefore cannot infringe the Patents-in-Suit. (Id. at 5). Next, the Defendants argue that, even if the Accused Tools could be seen as having two axes, those axes are not "parallel" as some of the independents claims of the Patents-in-Suit provide. (Id. at 6–7). Last, the Defendants contend that the wheel assembly on their tool has a bolt that prevents the wheels from turning, which means that the Accused Tools' wheel assembly is not "unrestricted" as required by the claim language of Claim 1 of the '224 Patent as construed. (Id. at 12). The Court will address each of these arguments in turn.
A. "Longitudinal Axes" Limitation
All of the asserted claims in the three patents have a "longitudinal axes" limitation that specifies that the patented tools have a handle section with a longitudinal axis and a wheel section with a longitudinal axis (Claims 1 and 18 of the '224 Patent, Claim 1 of the '009 Patent, and Claim 16 of the '915 Patent). Previously, the Court construed "longitudinal axes" to mean "more than one longitudinal axis" and construed "longitudinal axis" with its plain and ordinary meaning, which is "the long, straight central part in a structure to which other parts are connected." (Doc. No. 35 at 15). The Defendants contend that Plaintiffs have only identified a single longitudinal axis in the Accused Tools in their Infringement Contentions (Doc. No 42, Ex. 1) and that the Accused Tools are made up of only a "single pipe" which cannot have two axes. (Doc. No. 42 at 8). Plaintiffs respond that two longitudinal axes can, and here do, fall on the same straight line. (Doc. No. 48 at 4–5). In Plaintiffs' view, the handle section and wheel section each have a distinct axis—those axes simply "fall on the same line, just as the preferred embodiment of the Patent does." (Id. at 6).
The Court agrees with Plaintiffs that a reasonable jury could find that the Accused Tools have two longitudinal axes. Claim 1 of the '224 Patent provides that the two longitudinal axes of the patented tool are "collinear," which this Court construed to mean "lying on or passing through the same straight line." (Doc. No. 35 at 17). This language in the patent is some evidence that it is possible for two axes to fall on the same line and still be two distinct axes. Therefore, there is a genuine dispute of fact as to whether the Accused Tools meet the "longitudinal axes" limitation and summary judgment is hereby denied.
B. "Parallel" Limitation
Claim 1 of the '009 Patent and Claim 16 of the '915 Patent both claim a tool "wherein the longitudinal axes of the handle section and the wheel section are parallel." In addition, Claim 18 of the '224 Patent claims a method for moving racked tubulars that uses a pipe-rolling tool "wherein the longitudinal axes of the handle section and the wheel section are parallel." The Defendants contend that, even if the the Accused Tools have two longitudinal axes, no reasonable jury could find those axes to be parallel because they fall along the same line. (Doc. No. 41 at 9–11). Plaintiffs respond by re-urging their argument from claim construction—that the patents treat collinear axes as a subset of parallel axes. (Doc. No. 48). At claim construction, the Plaintiffs asked this Court to define "parallel" to mean "everywhere equally distant, including collinear." (Doc. No. 35 at 15) (citing Doc. No 28 at 13; Doc. No. 30 at 17). The Defendants asked that it be construed as "extending in the same direction, everywhere equidistant, and not meeting." (Id. ) (citing Doc. No. 29 at 21). The Court concluded:
In contrast, the tool claimed by Claim 1 of the '224 patent is one "wherein the longitudinal axes of the handle section and the wheel section are collinear. " (emphasis added).
Having considered all of the evidence and the parties' arguments, the Court finds that the plain and ordinary meaning of the word "parallel" as it is used in the Patents is the well-established definition that Defendants propose. Plaintiffs argue that the specification clarifies that parallel axes must include a smaller subset of collinear axes (See Doc. No. 28 at 18) (quoting Doc. No. 28, Ex. 1 at 16 ("Preferably these axes are parallel and most preferably these axes are collinear.")). Additionally, Plaintiffs assert that the Patents' claims depend on "parallel" and "collinear" not being mutually exclusive. (Id. at 14–15). Nothing in this order precludes Plaintiffs from arguing that collinear lines are parallel. Indeed, at the Markman Hearing, Plaintiffs' counsel suggested they would make such an argument. By the same token, however, the Court will not stop Defendants from arguing that collinear lines are not parallel. Regardless of which party ultimately prevails on this issue, it is not relevant to the Court's construction of the term "parallel."
The Patents do not clearly express an intent to define "parallel" as something aside from its plain and ordinary meaning. See Thorner v. Sony Computer Entm't Am. LLC , 669 F.3d 1362, 1365 (Fed. Cir. 2012). Accordingly, the Court construes the term "parallel" as "extending in the same direction, everywhere equidistant, and not meeting. ["]
(Doc. No. 35 at 15–16) (emphasis added). Citing this Court's order, the Plaintiffs now contend in response to Defendants' argument that "the Court already ruled in Plaintiffs' favor on this claim construction issue" and that "the Court has already ruled that this is a fact issue for the jury to decide." (Doc. No. 48 at 6, 7).
Plaintiffs misunderstand this Court's statement in its claim-construction order that the parties could make arguments about whether collinear lines are parallel. The Court did not imply and certainly never stated that this issue could only be decided by a jury; indeed, if there is no genuine factual dispute on this issue, it is not an appropriate issue for a jury. See Magenau v. Aetna Freight Lines, Inc. , 360 U.S. 273, 278, 79 S.Ct. 1184, 3 L.Ed.2d 1224 (1959) (juries decide only disputed questions of fact). The Court was clearly reserving the issue and the parties are free to move for summary judgment on this issue just like any other. See Fed. R. Civ. P. 56(a).
As evidence that, if the Accused Tools have two axes, they cannot be parallel as a matter of law, the Defendants provide Plaintiffs' Infringement Contentions, which includes the following labeled images of the Accused Tools:
(Doc. No. 42, Ex. 1 at 6, 10, 13). The Plaintiffs cite to no evidence to contradict this.
The images appear three times in the Plaintiffs' Infringement Contentions with slightly different labeling depending on the patent at issue.
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The images show clearly that, even if the wheel section and handle section (labeled (g) and (b) respectively in the above photos) could be considered two separate axes, those axes are certainly not parallel. The operative part of the definition of the term "parallel" here is "not meeting." Whether defined by this Court or by Euclid, parallel lines, by definition, do not meet. Here, if the Accused Tools have more than one axis, those axes either meet in the center of the tool or they are collinear (letter (c) in the photos points to the axis that both sections share). Plaintiffs have attempted to argue that "parallel axes must include a smaller subset of collinear lines," (Doc. No. 48 at 6), but the terms "parallel" and "collinear," as defined by this Court using their ordinary and customary meanings, are in fact mutually exclusive. "Parallel" means "extending in the same direction, everywhere equidistant, and not meeting." (Doc. No. 35 at 16). "Collinear" means "lying on or passing through the same straight line." (Id. at 17). If two axes are equidistant and do not meet, then, necessarily, they never lie on or pass through the same straight line. As evident from the images, it is possible that the Accused Tools have two axes that are collinear, but it is not possible that the same two axes are parallel.
The Plaintiffs seem to recognize as much in the section headings of their response brief. They state first: "The Accused Tools have two axes that fall on the same line." (Doc. No. 48 at 3). Then, "Defendants' two longitudinal axes are parallel." (Id. at 6). The axes cannot possibly fall on the same line and be parallel.
As Plaintiffs pointed out in their brief on claim construction, the recognition that the axes cannot be both parallel and collinear may "yield[ ] the bizarre result that Plaintiffs' own claims would not cover its own preferred embodiment as shown in the patent." (Doc. No. 28 at 15). It is not the role of this Court, at this juncture, however, to determine whether the claims in the patents properly describe the patented tools. Instead, this Court only compares "the claim as properly construed" with "the accused device or process." Carroll Touch, Inc. v. Electro Mech. Sys., Inc. , 15 F.3d 1573, 1576 (Fed. Cir. 1993).
No reasonable jury could conclude that the Accused Tools have axes that are parallel. Accordingly, summary judgment as to this limitation is proper. The Court grants summary judgment of noninfringement on Claim 18 of the '224 Patent, Claim 1 of the '009 Patent, and Claim 16 of the '915 Patent (and their dependent Claims).
C. "Unrestricted Rotation" Limitation
Finally, the Defendants argue that they are entitled to summary judgment of noninfringement on Claim 1 of the '224 Patent because the Accused Tools do not meet the "unrestricted" limitation. (Doc. No. 42 at 12). The '224 Patent claims a tool with "a wheel assembly mounted for unrestricted rotation about the longitudinal axis of the wheel section of the shaft." According to Defendants, the Plaintiffs' counsel admitted at the Markman hearing that the Accused Tools have a bolt that prevents "unrestricted rotation." (Id. ). Plaintiffs respond that the wheel does not have to rotate a full 360 degrees in order to be considered as having "unrestricted rotation." (Doc. No. 48 at 8). Moreover, the Plaintiffs provide evidence in the form of a video and affidavit that, when used in the field, the bolt in the Accused Tools is removed to allow 360-degree rotation of the wheels. (Id.; Ex. 1, 3). Additionally, the Plaintiffs contend that they need further discovery to determine whether the Accused Tools' rotation is restricted. (Id. at 11).
At this point, the Court cannot say as a matter of law that the Accused Tools do not meet the "unrestricted rotation" limitation. Both parties have provided scant evidence and argument as to this point. It seems to the Court that both parties could benefit from further discovery on this issue to better illuminate it. Therefore, the Court denies summary judgment now, but leaves open the possibility that the Defendants may move for summary judgment on this issue again after further discovery has taken place.
IV. Conclusion
For the foregoing reasons, the Court grants summary judgment of noninfringement for all claims that include the "parallel" limitation. Those are: Independent Claim 18 of the '224 Patent (plus Dependent Claims 19–20), Independent Claim 1 of the '009 Patent (plus Dependent Claims 2–4, 6–12, and 15), and Independent Claim 16 of the '915 Patent (plus Dependent Claims 17–20 and 24–26). The Court denies summary judgment as to the remaining asserted claim, Independent Claim 1 of the '224 Patent (plus Dependent Claims 2–4, 9–12, and 15).