United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER
patent case is before the Court on the “Motion for
Summary Judgment of Unenforceability Due to Inequitable
Conduct” (“Motion”) [Doc. # 170] filed by
Defendant Marine Well Containment Company LLC
(“MWCC”). Plaintiff Deep Fix, LLC (“Deep
Fix”) filed an Opposition [Doc. # 177], and MWCC filed
a Reply [Doc. # 181]. Having reviewed the record and applied
relevant legal authorities, the Court denies
the Motion in favor of a bench trial on MWCC's equitable
Adams is the sole inventor of the cap valve covered by United
States Patent No. 8, 833, 393 (“the '393
Patent”). Through a series of assignments, Deep Fix
asserts sole ownership of all interest in the '393
Patent. Adams died on July 15, 2019, while this lawsuit was
a consortium of oil and gas companies including ExxonMobil,
British Petroleum (“BP”), and others. MWCC
manufactures oil and gas well containment systems used in
well blowout situations.
September 3, 2010, Adams filed a provisional patent
application for his cap valve invention. See
Complaint [Doc. # 1], ¶ 14. On September 2, 2011, Adams
filed a non-provisional patent application and claimed
priority based on the provisional patent application filed in
2010. See Id. The '393 Patent issued on
September 16, 2014. See id.
Fix filed this patent infringement lawsuit on March 26, 2018,
alleging that three well containment systems manufactured by
MWCC infringe the claims of the '393 Patent. MWCC
asserted the affirmative defense of inequitable conduct.
See Fourth Amended Answer [Doc. # 60], pp. 24-61.
Fix has conceded that it has no viable infringement claim
against MWCC in light of the Court's Memorandum and Order
on Claim Construction [Doc. # 127]. Therefore, MWCC's
equitable affirmative defense that inequitable conduct bars
Deep Fix from enforcing the '393 Patent against MWCC is
an issue to be tried to the Court without a jury. See
Gardco Mfg., Inc. v. Herst Lighting Co., 1209');">820 F.2d 1209,
1213 (Fed. Cir. 1987); In re Ethicon, Inc., 64 F.3d
671, *1 (Fed. Cir. June 26, 1995).
Motion for Summary Judgment has been fully briefed and is now
ripe for decision.
SUMMARY JUDGMENT STANDARD
of the Federal Rules of Civil Procedure provides for the
entry of summary judgment when there are no genuine issues of
material fact. Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986). Where the movant bears the burden of proof
at trial on the issues at hand, as is the case here, it
“bears the initial responsibility of demonstrating the
absence of a genuine issue of material fact with respect to
those issues.” Transamerica Ins. Co. v.
Avenell, 15');">66 F.3d 715, 718 (5th Cir. 1995); see also
Brandon v. Sage Corp., 808 F.3d 266, 269-70 (5th Cir.
2015); Lincoln Gen. Ins. Co. v. Reyna, 1 F.3d 347');">401 F.3d 347,
349 (5th Cir. 2005).
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). In this case, the defendant has
the burden to prove the elements of an inequitable conduct
defense by clear and convincing evidence. See Energy
Heating, LLC v. Heat On-The-Fly, LLC, 1291');">889 F.3d 1291,
1299 (Fed. Cir. 2018).
issue of credibility exists, a motion for summary judgment
should be denied. See Balboa Ins. Co. v. United
States, 1158');">775 F.2d 1158, 1163 (Fed. Cir. 1985) (citing
United States v. Diebold, Inc., 369 U.S. 654
(1962)). Stated differently, where there are specific facts
that tend to discredit a key witness, this may create a
genuine issue of material fact for trial. See Typeright
Keyboard Corp. v. Microsoft Corp., 1151');">374 F.3d 1151, 1159
(Fed. Cir. 2004).
Jurisdiction to Decide ...