United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER
F. ATLAS, SENIOR UNITED STATES DISTRICT JUDGE
patent case is before the Court on the Motion to Exclude
Patent Infringement Testimony by NLB Witnesses [Doc. # 50]
filed by Defendant PSI Pressure Systems LLC d/b/a PSI
Pressure Systems Corp. (“PSI”); Defendant's
Motion to Exclude Testimony of Plaintiff's Expert William
Marscher [Doc. # 51]; Defendant's Motion for Summary
Judgment [Doc. # 52]; and Plaintiff NLB Corp.
(“NLB”)'s Motion for Summary Judgment and to
Strike PSI's Expert Reports [Doc. # 53]. Having reviewed
the record and the governing legal authorities, the Court
grants summary judgment in favor of PSI as
to literal infringement by the NX-series products, as to
infringement under the doctrine of equivalents by the
NX-series products, and as to PSI's permissible repair
defense in connection with the NLB-type replacement parts.
The Court denies summary judgment on the
false advertising claim. The Court denies
NLB's Motion for Summary Judgment. The Court
denies as moot the motions to exclude expert
testimony of NLB corporate witnesses, William Marscher, Dara
Childs, and Randy Hinson.
designs, manufactures, and markets high pressure waterjet
systems (pumps) and components. NLB's pumps can be used
to clean industrial equipment for the oil and gas industry.
the owner of United States Patent No. 7, 121, 812 (“the
'812 Patent”), entitled High Pressure Pump Having
Replaceable Plunger/Valve Cartridges. The pump covered by the
'812 Patent is a double guided system. In single guided
valve assemblies, only the valve stem is guided. The double
guided valve guide, however, guides both the valve stem and
the valve head. It includes one section with a reduced
diameter that guides the stem portion of the valve and a
second section with an increased diameter that guides the
valve head. According to NLB, this double guiding feature
improves valve performance and increases the life of the
manufactures and sells competing high pressure waterjet pumps
and components. PSI sells NX-series pumps, NX-series
cartridges, and NX-series components (the “NX-series
products”) that NLB alleges infringe Claim 33 of the
'812 Patent. Additionally, PSI manufactures and sells
replacement parts for use with NLB's pumps (the
“NLB-type” parts). NLB alleges that these
NLB-type parts infringe Claim 33 when used by PSI's
customers in a pump.
made a statement on its Facebook page that characterizes its
NLB-type parts as made from “superior materials”
and “guaranteed to last longer” than
“competitors' parts.” See Facebook
Posts, Exh. 3 to First Amended Complaint [Doc. # 6]. NLB
alleges that these statements constitute false advertising
under the Lanham Act.
filed this lawsuit alleging that the NX-series products
infringe Claim 33 of the '812 Patent, either literally or
under the doctrine of equivalents. NLB alleges further that
PSI's sale of the NLB-type parts induces infringement of
Claim 33 in violation of 35 U.S.C. § 271(b) and
contributes to infringement in violation of § 271(c).
NLB asserts a violation of the Lanham Act based on PSI's
statements on its Facebook page.
claim construction based on the parties' agreement, and
the completion of discovery, each party moved for summary
judgment on the infringement and Lanham Act claims. Each
party also moved to exclude certain expert testimony offered
by the opposing party. The Motions have been fully briefed
and are now ripe for decision.
SUMMARY JUDGMENT STANDARD
of the Federal Rules of Civil Procedure mandates the entry of
summary judgment, after adequate time for discovery and upon
motion, against a party who fails to make a sufficient
showing of the existence of an element essential to the
party's case, and on which that party will bear the
burden at trial. Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986). “When evaluating a motion for summary
judgment, the court views the record evidence through the
prism of the evidentiary standard of proof that would pertain
at a trial on the merits.” SRAM Corp. v. AD-II
Engineering, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006).
judgment on infringement is appropriate if there is no
genuine issue as to any material fact and the moving party is
entitled to judgment as a matter of law. See
Ultimatepointer, L.L.C. v. Nintendo Co., Ltd., 816 F.3d
816, 824 (Fed. Cir. 2016). The infringement analysis at the
summary judgment stage requires the Court to compare the
patent claims as construed with the accused device. See
Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313,
1317 (Fed. Cir. 2016).
argues that the NX-series products literally infringe Claim
33 of the '812 Patent. Both NLB and PSI have moved for
summary judgment on the literal infringement claim.
Governing Legal Principles
without authority makes, uses, offers to sell, or sells any
patented invention, within the United States . . . infringes
the patent.” 35 U.S.C. § 271(a); Lexmark
Int'l, Inc. v. Impression Prods., Inc., 816 F.3d
721, 726 (Fed. Cir. 2016); Int'l Bus. Machines Corp.
v. Booking Holdings Inc., 775 Fed.Appx. 674, 677 (Fed.
Cir. May 22, 2019). “An infringement analysis has two
steps.” Indivior Inc. v. Dr. Reddy's Labs.,
S.A., 930 F.3d 1325, 1336 (Fed. Cir. 2019) (citing
Clare v. Chrysler Grp. LLC, 819 F.3d 1323, 1326
(Fed. Cir. 2016)).
first step, the Court construes the asserted claims.
Id. In this case, the parties agreed on the proper
construction of the relevant claim terms. See Joint
Proposed Claim Construction Chart [Doc. # 27]. The Court
agreed with, and adopted, the parties' proposed claim
construction. See Order [Doc. # 28].
second step, the Court determines whether the accused product
meets each limitation of the claim as construed. See
Indivior, 930 F.3d at 1336. The comparison is only to
the patent claims as construed, 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); Fleet Eng'rs, Inc. v. Mudguard Techs.,
LLC, 761 Fed.Appx. 989, 992 (Fed. Cir. Feb. 25, 2019).
“The patentee has the burden of proving infringement by
a preponderance of the evidence.” Eli Lilly &
Co. v. Hospira, Inc., 933 F.3d 1320, 1328 (Fed. Cir.
33 of the '812 Patent covers a discharge valve assembly
for a high pressure fluid jetting system comprising:
a discharge valve guide having a discharge valve guide skirt
and a discharge valve guide stem said discharge valve guide
skirt is of a greater diameter than said discharge valve
a discharge valve having a discharge valve stem and a
discharge valve head of a greater diameter than said
discharge valve stem, said discharge valve stem axially
guided within said discharge valve guide stem and
said discharge valve head axially guided ...