The opinion
IN THE UNITED STATES DISTRICT COURT December 10, 2020
FOR THE SOUTHERN DISTRICT OF TEXAS David J. Bradley, Clerk
HOUSTON DIVISION
ONESUBSEA IP UK LIMITED, et al., §
Plaintiffs, §
§
v. § CIVIL ACTION NO. 4-16-0051
§
FMC TECHNOLOGIES, INC., §
Defendant. §
MEMORANDUM AND ORDER
This patent case is before the Court on the Motion for Summary Judgment of
Non-Infringement (“Motion for Summary Judgment”) [Doc. # 205] filed by
Defendant FMC Technologies, Inc. (“FMC”), to which Plaintiffs OneSubsea IP UK
Limited and OneSubsea UK Limited (collectively, “OSS”) filed an Opposition [Doc.
# 209]. FMC filed a Reply [Doc. # 218], and OSS filed a Sur-Reply [Doc. # 221].
Also pending is FMC’s Motion to Exclude the Infringement Opinions and
Testimony of Robert Voss (“Motion to Exclude”) [Doc. # 226]. Plaintiffs filed an
Opposition [Doc. # 227], and FMC filed a Reply [Doc. # 228].
Having reviewed the full record and applicable legal authorities, the Court
grants both Motions.1
1 Also pending is FMC’s Motion for Summary Judgment of Invalidity (“Invalidity
Motion”) [Doc. # 211], to which OSS filed an Opposition [Doc. # 222], and FMC
filed a Reply [Doc. # 223]. Where, as here, Defendants raise invalidity only as an
affirmative defense, and not as a counterclaim, it is ordinarily not necessary for the
(continued...)
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I. BACKGROUND
Plaintiff OneSubsea IP UK Limited is the owner by assignment of United States
Patents No. 7,111,687 (“the ’687 Patent”), 8,122,948 (“the ’948 Patent”) and
8,746,332 (“the ’332 Patent”) (collectively, the “Patents-in-Suit”). Plaintiff OneSubea
UK Limited is an exclusive licensee. The Patents-in-Suit relate to the recovery of
production fluids from an oil or gas well, particularly through a connection system for
subsea flow interface equipment.
Subsea “Christmas trees” (“trees”) have long been used in the oil and gas
industry to control the flow of oil and gas coming from a well. The Christmas trees
typically contain “fluid flow passages” or “bores” through which the fluid can flow
from the well, through the tree, and onward toward the flowline. The rate of fluid
flow can be controlled through the use of a choke, either fixed or adjustable.
In low pressure wells, the pressure of production fluids may need to be
increased. In other circumstances, the production fluids may need to be treated.
Installing a pump to increase pressure or a treatment apparatus on an active subsea
well can be difficult and interrupts production. Ian Donald, the named inventor for
1 (...continued)
Court to address validity once it has found noninfringement. See Solomon Techs., Inc.
v. Int’l Trade Comm., 524 F.3d 1310, 1319 (Fed. Cir. 2008). Because the Court grants
FMC’s Motion for Summary Judgment of Non-Infringement, the Invalidity Motion
is denied as moot.
2
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the Patents-in-Suit, invented systems and methods for installing a subsea pump or
treatment apparatus that addressed these problems. Figures in the Patents-in-Suit
illustrate that in various embodiments, the fluid generally flows through the patented
device along a flowpath through a branch of the tree that serves as an export line from
the tree. This path may include (as illustrated) a sharp turn into the branch, followed
by a second, downward turn to the outlet. See, e.g. Fig. 1 of the ’687 Patent; Fig. 1
of the ’948 Patent. In such an embodiment, when a “diverter” is installed within the
existing flowpath through the tree’s branch, the fluid flows along the original
flowpath, including the first turn. As illustrated in several embodiments, when the
fluid flow encounters the diverter, it is forced to change direction and makes a turn to
flow upward to a flowpath different from the original flowpath. See, e.g., Fig. 24 of
the ’687 Patent; Fig. 20 of the ’948 Patent. The diverter blocks the original flowpath
and forces the fluid flow to change direction to follow a different flowpath. See id.;
see also ’687 Patent, col. 16, lines 9-12 (The “fluids are prevented from going
downwards towards outlet 530 by seal 532, so they are forced upwards in annulus
520”).
Defendant FMC markets an Enhanced Vertical Deepwater Tree (“EVDT”) with
a Retrievable Flow Module (the “Accused Device”). It is uncontested that the
Accused Device is inoperable unless a Flow Module is attached. When a Flow
3
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Module is attached and the Accused Device is operable, fluid from a well flows along
the pathway from the production bore, flows into a multi-bore hub in the EVDT, turns
90-degrees, flows into and through the Flow Module, then flows though a second bore
into the multi-bore hub, where the fluid follows the pathway to make a 90-degree turn
before flowing out of the tree toward another component of the well. This is the only
path along which the fluid can flow in the Accused Device.
OSS alleges that FMC’s Accused Device, “a fully assembled and operational
EVDT with a flow module,” infringes the Patents-in-Suit. See Response [Doc. # 209],
p. 11; see also id. at 4 (“OSS’s direct infringement theory is that FMC’s fully
assembled EVDT with an attached Retrievable Flow Module infringes”). Specifically,
OSS alleges that FMC’s Accused Device infringes Claims 1 and 3 of the ’687 Patent.2
2 Claims 1 and 3 of the ’687 Patent read (emphasis added):
1. A tree for a well, having: a first flowpath; a second flowpath; and a flow
diverter assembly providing a flow diverter means to divert fluids from a
first portion of a first flowpath to the second flowpath, and means to divert
fluids returned from the second flowpath to a second portion of the first
flowpath for recovery therefrom via an outlet of the first flowpath, wherein the
first portion of the first flowpath, the second flowpath and the second portion
of the first flowpath form a conduit for continuous passage of fluid; wherein
the flow diverter assembly is located in the first flowpath and separates the
first portion of the first flowpath from the second portion of the first flowpath.
3. The tree claimed in claim 1, including outlets for the first and second
flowpaths to divert the production fluids to a treatment apparatus.
4
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OSS claims also that the Accused Device infringes Claims 7 and 9 of the ’948 Patent,3
3 Claims 7 and 9 of the ’948 Patent read (emphasis added):
7. A diverter assembly for a tree of an oil or gas well, comprising:
a lateral branch having first and second branch bores with the first branch bore
having a first port and the second branch bore having a second port, the
first branch bore forming part of a first flowpath to and from a
production bore of the tree and the second branch bore forming part of
a second flowpath to and from an export line;
a diverter having first and second internal passages, the first internal passage
communicating with the first port and the second passage
communicating with the second port;
a processing apparatus having first and second passageways, the first
passageway communicating with the first internal passage and the
second passageway communicating with the second internal passage;
and
the diverter and processing apparatus communicating the first flowpath with
the second flowpath.
9. The flow diverter assembly of claim 7 wherein the processing apparatus is
selected from the group consisting of at least one of a pump, process fluid
turbine, gas injection apparatus, steam injection apparatus, chemical injection
apparatus, materials injection apparatus, gas separation apparatus, water
separation apparatus, sand/debris separation apparatus, hydrocarbon separation
apparatus, fluid measurement apparatus, temperature measurement apparatus,
flow rate measurement apparatus, constitution measurement apparatus,
consistency measurement apparatus, chemical treatment apparatus, pressure
boosting apparatus, and water electrolysis apparatus.
and Claim 11 of the ’332 Patent.4 See Second Amended Complaint [Doc. # 188].
Each of these claims contains a “divert” limitation.
Following a hearing pursuant to Markman v. Westview Instruments, Inc., 517
U.S. 370, 390 (1996), the Court construed the claim term “divert” and forms of that
term to mean that “the direction of the fluid’s flow is forced to change from its current
flowpath to a different flowpath.”5 See Memorandum and Order on Claim
Construction [Doc. # 147], p. 8. The Court held specifically that “the fluid is not
4 Claim 11 of the ’332 Patent reads (emphasis added):
11. An assembly for a well having a tree with a production bore, comprising:
a first flowpath comprising an outlet;
a flow diverter comprising a second flowpath, the flow diverter to divert
fluids from a first portion of the first flowpath to the second flowpath,
and to divert fluids from the second flowpath to a second portion of the
first flowpath, wherein the first portion of the first flowpath, the second
flowpath, and the second portion of the first flowpath form a
continuous passageway for fluid; and
wherein the flow diverter is located in the first flowpath and separates the first
portion of the first flowpath from the second portion of the first
flowpath;
wherein the fluids are directed to a treatment apparatus that is selected from
the group consisting of pressure boosting apparatus, injection
apparatus, materials injection apparatus, gas injection apparatus,
chemical injection apparatus, chemical treatment apparatus, and
measurement apparatus.
5 In connection with a number of Inter Partes Review (“IPR”) proceedings involving
related OSS patents, the Patent Trial and Appeal Board (“PTAB”) found this Court’s
claim construction of the “divert” related claim terms to be “consistent with the plain
and ordinary meaning of ‘divert’ . . ..” See, e.g., Final Written Decision as to United
States Patent No. 8,540,018, IPR2016-00328, PTAB June 14, 2017, Exh. B to
Motion, p. B70. The Federal Circuit affirmed. See OneSubsea IP UK Ltd. v. FMC
Techs., Inc., 771 F. App’x 482, 483 (Fed. Cir. June 7, 2019).
6
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‘diverted’ if the fluid simply moves through a single flowpath, even if the direction
within the single flowpath changes.” Id.
FMC filed the pending Motion for Summary Judgment, arguing that its
Accused Device does not satisfy the “divert” limitation of the Patents-in-Suit.
Specifically, FMC argues that since its Accused Device has a single flowpath, the
direction of the fluid’s flow is not “forced to change from its current flowpath to a
different flowpath” as required by the Court’s claim construction.
FMC also filed the Motion to Exclude, challenging the opinions of Robert Voss,
OSS’s expert, as lacking a reliable methodology. The motions have been fully briefed
and are now ripe for decision.
II. MOTION TO EXCLUDE
A. Applicable Legal Standard
Witnesses who are qualified by “knowledge, skill, experience, training or
education” may present opinion testimony to the jury. FED. R. EVID. 702; see, e.g.,
Whole Woman’s Health v. Hellerstedt, __ U.S. __, 136 S. Ct. 2292, 2316 (2016);
Moore v. Ashland Chem., Inc., 151 F.3d 269, 276 (5th Cir. 1998) (en banc); Huss v.
Gayden, 571 F.3d 442, 452 (5th Cir. 2009). To be admissible, an expert’s proffered
testimony must be both relevant and reliable. Daubert v. Merrell Dow Pharms., Inc.,
509 U.S. 579, 591-92 (1993); Carlson v. Bioremedi Therapeutic Sys., Inc., 822
7
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F.3d 194, 199 (5th Cir. 2016). The expert testimony must be relevant and the expert’s
proposed opinion must be one that would assist the trier of fact to understand or
decide a fact in issue. See Weiser-Brown Operating Co. v. St. Paul Surplus Lines Ins.
Co., 801 F.3d 512, 529 (5th Cir. 2015); Bocanegra v. Vicar Servs., Inc., 320 F.3d 581,
584 (5th Cir. 2003) (citing Daubert, 509 U.S. at 591-92).
To satisfy the “reliability” prong, a “party seeking to introduce expert testimony
must show (1) the testimony is based upon sufficient facts or data, (2) the testimony
is the product of reliable principles and methods, and (3) the witness has applied the
principles and methods reliably to the facts of the case.” Huss, 571 F.3d at 452 (citing
Smith v. Goodyear Tire & Rubber Co., 495 F.3d 224, 227 (5th Cir. 2007)); see also
Carlson, 822 F.3d at 199. “Reliability” requires that the proponent of the expert
testimony must present some objective, independent validation of the expert’s
methodology. See Brown v. Illinois Cent. R. Co., 705 F.3d 531, 536 (5th Cir. 2013).
The objective of the Court’s gatekeeping role is to ensure that an expert “employs in
the courtroom the same level of intellectual rigor that characterizes the practice of an
expert in the relevant field.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152
(1999); Hodges v. Mack Trucks Inc., 474 F.3d 188, 194 (5th Cir. 2006).
Courts often consider various factors in determining the reliability of proffered
scientific evidence, including: (1) whether the theory or procedure has been subjected
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to testing; (2) whether it has been subjected to peer review and publication; (3) the rate
of error and the existence of standards controlling the theory or procedure; and
(4) whether it has attained general acceptance. See Daubert, 509 U.S. at 593-94.
These factors can “help to evaluate the reliability even of experienced-based
testimony.” Kumho Tire, 526 U.S. at 151. “In certain cases, it will be appropriate for
the trial judge to ask, for example, how often an engineering expert’s
experience-based methodology has produced erroneous results, or whether such a
method is generally accepted in the relevant engineering community.” Id.
The Court is not required to “admit opinion evidence that is connected to
existing data only by the ipse dixit of the expert.” Kumho Tire, 526 U.S. at 157;
Burleson v. Tex. Dept. of Crim. Justice, 393 F.3d 577, 587 (5th Cir. 2004); Chan v.
Coggins, 294 F. App’x 934, 939 (5th Cir. Oct. 2, 2008). Where the challenged
opinion “is fundamentally unsupported, then it offers no expert assistance to the jury.”
Guile v. United States, 422 F.3d 221, 227 (5th Cir. 2005) (quoting Viterbo v. Dow
Chem. Co., 826 F.2d 420, 422 (5th Cir. 1987)). In such cases, there is “simply too
great an analytical gap between the data and the opinion proffered.” Chambers v.
Exxon Corp., 247 F.3d 240, *2 (5th Cir. Jan. 5, 2001) (quoting Gen. Elec. Co. v.
Joiner, 422 U.S. 136, 146 (1997)). “A claim cannot stand or fall on the mere ipse
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dixit of a credentialed witness.” McManaway v. KBR, Inc., 852 F.3d 444, 449 (5th
Cir. 2017).
The Court’s gatekeeping role is no substitute, however, for the adversarial
process. See Pipitone v. Biomatrix, Inc., 288 F.3d 239, 250 (5th Cir. 2002).
“Vigorous cross-examination, presentation of contrary evidence, and careful
instruction on the burden of proof are the traditional and appropriate means of
attacking shaky but admissible evidence.” Daubert, 509 U.S. at 596 (emphasis
added); MM Steel, L.P. v. JSW Steel (USA) Inc., 806 F.3d 835, 852 (5th Cir. 2015).
B. Analysis
Voss’s Qualifications.-- Voss received a Bachelor of Science in
Mechanical Engineering from Texas A&M University in 1979. He is a retired
engineer with over forty (40) years of experience in the design of subsea production
equipment. FMC does not challenge Voss’s qualifications to serve as OSS’s
infringement expert.
Claim Constructions.-- The parties agreed that the claim term “tree”
means “an assembly of pipes, valves and fittings installed between the wellhead and
the flowline.” Joint Claim Construction Chart [Doc. # 136-1]. The parties agreed that
the “flowline” is “the pipeline extending outboard of the terminus of a subsea tree”
and is the same as the “production flowline” and the “export line.” Id.
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The Court construed the “divert” limitation to mean that “the direction of the
fluid’s flow is forced to change from its current flowpath to a different flowpath.” See
Memorandum and Order on Claim Construction, p. 8. The Court noted further that
“the fluid is not ‘diverted’ if the fluid simply moves through a single flowpath, even
if the direction within the single flowpath changes.” Id. The Court’s construction
recognized that the “divert” limitation requires an original flowpath that is disrupted
by the “diverter” that forces the fluid flow to change direction to a different flowpath.
As discussed above, many figures in the Patents-in-Suit demonstrate this. For
example, Figure 1 of the ’687 Patent and Figure 1 of the ’948 Patent show the original
or “current” flowpath, with a sharp turn followed by a second turn downward toward
the outlet. Figure 24 of the ’687 Patent and Figure 20 of the ’948 Patent illustrate the
different, diverted flowpath after the original flowpath encounters the diverter, at
which point the fluid flow is forced to change direction, making an upward turn to a
different flowpath. See, e.g., Fig. 24 of the ’687 Patent; Fig. 20 of the ’948 Patent;
’687 Patent, col. 16, lines 9-12.
Voss’s Opinions.-- Voss opines that the “divert” limitation is satisfied
in the Accused Device because the multi-bore hub forces the fluid flow to change
direction to flow toward the “Flow Module pipework,” which Voss opines constitutes
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a “different flowpath” from the pipework in the rest of the EVDT.6 See Voss Report,
Exh. C to Motion to Exclude, p. 23. Voss opines specifically that “[b]ecause the Flow
Module is independently retrievable and contains its own pipework, . . . this separate
Flow Module pipework can be considered a second flowpath as that term is used and
understood by” a person of ordinary skill in the art (“POSITA”).7 Id. Voss thus
concludes that FMC’s EVDT infringes the OSS patents. See id. at 14.
Relevance.-- Voss’s opinion lacks sufficient relevance, and is unlikely
to assist the trier of fact, because it does not properly consider the agreed construction
of the claim term “tree” and misinterprets the Court’s construction of the claim terms
involving forms of the term “divert.” Expert opinions that are inconsistent with the
established constructions of claim terms are irrelevant and unhelpful to the factfinder.
See, e.g., Mission Pharmacal Co. v. Virtus Pharm., LLC, 2014 SL 12480016, *4
6 Voss in his Report offers the same opinions as to each of the three Patents-in-Suit.
See Voss Report, pp. 23, 56, 80.
7 FMC’s expert, William C. Parks, states that a POSITA for this case would be a person
having “at least a bachelor’s degree in mechanical or petroleum engineering and five
years of experience as a completion or sub-surface engineer or related work
experience in oil and gas completion systems.” Rebuttal Expert Report, Exh. 14 to
Reply [Doc. # 218], ¶ 13. Voss, OSS’s expert, identifies the POSITA for this case as
a person having “a bachelor’s degree in mechanical or petroleum engineering and at
least three to five years of experience as a subsea tree design engineer or related work
experience.” Voss Report, p. 5. There is no indication that the minor differences
between the two descriptions of a POSITA in this case has an impact on the issues
raised in the pending motions.
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(W.D. Tex. Sept. 12, 2014); Personalized User Model, L.L.P. v. Google, Inc., 2014
WL 807736, *1 (D. Del. Feb. 27, 2014).
Voss in his Report did not indicate that he was aware of the parties’ agreed
construction of the claim term “tree.” Indeed, Voss testified in his deposition that he
did not recall having seen a construction of the term “tree.” See Voss Deposition,
Exh. D to Response [Doc. # 227], p. 108. Apparently because he did not know the
parties agreed that the claim term “tree” included all the “pipes, valves and fittings
installed between the wellhead and the flowline,” he based his opinion and testified
that the tree is “a separate assembly from the flow module.”8 See id. at 107. Based
on that misapplication of the claim term “tree,” Voss states that the fluid enters a
second, different flowpath when it enters the Flow Module because the fluid is “routed
out and then back into the system.” See id. This misapplication of the claim term
forms a basis for his opinion that the flowpath inside the Flow Module is a second,
different flowpath. See id. Therefore, Voss’s opinion that there is a second flowpath
should be excluded because it is based on a definition of “tree” that is inconsistent
with the parties’ agreed construction.
8 Voss recognized in his Report that the Flow Module “is incorporated into” the EVDT.
See Voss Report, p. 20. It is undisputed that the EVDT is located between the
wellhead and the flowline and, indeed, EVDT is an acronym for Enhanced Vertical
Deepwater Tree.
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Voss’s infringement opinion regarding the presence of the “divert” limitation
appears based also on a misinterpretation of the Court’s construction of that claim
term. Voss does not identify an original or current flowpath from which the fluid flow
is forced to change, going instead into a different flowpath.9 It is clear from the
undisputed factual record that fluid flows along only one path in the Accused Device
(the EVDT with a Flow Module attached). Voss opines that the pipework in the Flow
Module is a second, different flowpath, but fails to identify the original flowpath from
which there is a forced change of direction. Voss opines that the multi-bore hub is the
“diverter,” but there is nothing in the multi-bore hub that disrupts the current fluid
flow to force it to follow a different flowpath. Instead, the single flowpath in the
multi-bore hub contains a turn. The Court’s claim construction, however, specifically
precludes the existence of the “divert” limitation based only on the change of direction
within a single flowpath. Based on this misapplication of the Court’s claim
construction, Voss’s infringement opinion is irrelevant and excluded under Rule 702.
In summary, Voss’s opinion that “[b]ecause the Flow Module is independently
retrievable and contains its own pipework, . . . this separate Flow Module pipework
can be considered a second flowpath” (Voss Report, p. 23), is not supported by the
9 Voss in his Report cites the Court’s claim construction, highlighting the entire
construction except the requirement for the fluid’s flow to change “from its current
flowpath.” See Voss Report, p. 6.
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patent language as construed by the Court and the parties. For these reasons, Voss’s
misapplication of the established claim constructions in this case render his opinions
excludable under Rule 702 and Daubert as irrelevant and not likely to assist the trier
of fact.
Reliability.-- In support of his opinion that the pipework in the Flow
Module is a second, different flowpath, Voss relies on FMC documents that show the
Flow Module can be removed from the rest of the EVDT, and on OSS’s Final
Infringement Contentions. Voss repeatedly states summarily that a POSITA would
understand the Flow Module pipework to be a second flowpath. See, e.g., id. at 25
(“This second set of pipework is independently retrievable from the Accused EVDT
and is therefore a separate flowpath.”). Voss offers no methodology, no peer-
reviewed publication, and no recognized industry practice, however, to support his
subjective opinion that the flowpath through the Flow Module can be considered a
second, different flowpath simply because the Flow Module can be removed from the
EVDT.10 The absence of a reliable methodology was revealed during Voss’s
deposition. Voss testified that a device with a section that “is designed to be removed
by divers in shallow water” would have two flowpaths but, in “the exact same
10 FMC’s expert stated in his Rebuttal Report that he is “not aware of any support for
[Voss’s opinion that separate pipework and retrievability constitute a second
flowpath] in the Asserted Patents, in industry literature, or in [his] decades of
experience.” See Parks Rebuttal Report, ¶ 47.
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situation” except that the device is in “water that is too deep to be reached by divers,”
Voss testified that the same device has only one flowpath. See Voss Depo., p. 148.
The “infringement of an apparatus claim cannot depend on the location at which the
apparatus is being used.” Beverage Dispensing Sols., LLC v. Coca-Cola Co., 2014
WL 11412882, *5 (N.D. Ga. Dec. 18, 2014), report and recommendation adopted as
modified, 2015 WL 10963979 (N.D. Ga. Feb. 27, 2015).
OSS in its opposition to FMC’s Motion to Exclude argues that FMC’s
Rule 30(b)(6) representative admitted that the Flow Module pipework “corresponds
to the flow path for the fluid within the flow module.” See Response [Doc. # 227],
p. 7 (citing Deposition of Paulo Couto, Exh. A to Response, p. 70). Couto does not,
however, admit that the pipework of the Flow Module is a separate or different
flowpath from that in the EVDT.11 Couto’s deposition testimony does not support
OSS’s position that Voss’s opinions are reliable.
Based only on the undisputed facts that the Flow Module is retrievable and has
separate pipework, Voss opined that the flowpath through the Flow Module is a
second, different flowpath than the path through which the fluid flows elsewhere in
the EVDT. Neither Voss nor OSS identifies any methodology employed by Voss that
explains how he made the leap from the undisputed fact to the proffered opinion.
11 Couto defined a flowpath as “the path of the fluid through [the] equipment.” See
Couto Depo., p. 80. OSS has not suggested a different definition of a “flowpath.”
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There is “simply too great an analytical gap between the data and the opinion
proffered.” Chambers v. Exxon Corp., 247 F.3d 240, *2 (5th Cir. Jan. 5, 2001)
(quoting Gen. Elec. Co. v. Joiner, 422 U.S. 136, 146 (1997)). Because neither Voss
nor OSS offers a reliable methodology to bridge that gap, Voss’s opinion regarding
the existence of a second, different flowpath in the Accused Device is inadmissible
under Rule 702 and Daubert.
C. Conclusion on Motion to Exclude
Voss’s opinions fail to consider the parties’ agreed construction of the claim
term “tree,” and they are based on a construction of the claim term “divert” that is
inconsistent with this Court’s construction of that term. Additionally, Voss’s
infringement opinions lack reliable methodology. These opinions are inadmissible
under Rule 702 and Daubert because they lack the required relevance and reliability,
and they are more likely to confuse than assist the jury in deciding the infringement
issue.
The Court does not base its ruling on a consideration of whether Voss’s
infringement opinions are correct or incorrect, or whether competing opinions are
more persuasive. Instead, the Court bases its ruling on the absence of sufficient
relevance and reliability, which render the opinions unlikely to assist the jury. See
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Guile v. United States, 422 F.3d 221, 227 (5th Cir. 2005). The Court grants the
Motion to Exclude Voss’s infringement opinions and testimony.
III. MOTION FOR SUMMARY JUDGMENT
A. Applicable Legal Standards
Summary Judgment Standard.-- Rule 56 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). Summary 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).
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Standard for Patent Infringement.-- “[W]hoever 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 F. App’x 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)). In the first step, the Court construes the asserted claims. Id.
In the second step, the Court determines whether the accused product meets
each limitation of the claim as construed. See id. 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); Fleet Eng’rs, Inc. v. Mudguard Techs., LLC,
761 F. App’x 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. 2019).
B. Analysis
OSS alleges that FMC’s Accused Device literally infringes the Patents-in-Suit.
Although OSS made passing reference to infringement under the doctrine of
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equivalents in the Preliminary Infringement Contentions filed in 2015, the Final
Infringement Contentions filed in 2019 do not assert a doctrine of equivalents theory.
Similarly, OSS in the Second Amended Complaint [Doc. # 188], does not allege
infringement under the doctrine of equivalents.
FMC argues that it is entitled to summary judgment of non-infringement
because OSS has not presented evidence that raises a genuine issue of material fact
regarding whether the Accused Device satisfies the “divert” limitations in the asserted
claims of the Patents-in-Suit. The “divert” limitation is the only limitation on which
FMC bases its Motion for Summary Judgment of Non-Infringement. Summary
judgment of non-infringement is appropriate if “no reasonable jury could find that
every limitation recited in a properly construed claim is found in the accused device.”
See Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed.
Cir. 2015) (emphasis added). Therefore, “the absence of a single limitation is
sufficient to defeat a claim for infringement.” In re Sebela Patent Litig., 2017 WL
3449054, *15 (D.N.J. Aug. 11, 2017).
As noted above, the Court construed the claim term “divert” and forms of that
term to mean that “the direction of the fluid’s flow is forced to change from its current
flowpath to a different flowpath.” Memorandum and Order on Claim Construction,
p. 8. The Court held clearly that “the fluid is not ‘diverted’ if the fluid simply moves
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through a single flowpath, even if the direction within the single flowpath changes.”
Id.
It is undisputed that the fluid flow changes direction in the multi-bore hub in
the Accused Device. As noted above, however, the Court has ruled that a change in
direction along a single flowpath is insufficient to satisfy the “divert” limitation.
Indeed, OSS concedes this point. See Response [Doc. # 209], p. 21. Therefore, the
parties agree that the dispositive issue is whether the fluid flow changes from an
original or current flowpath into a different flowpath. FMC argues that there is only
one flowpath in the Accused Device along which the fluid can flow. Therefore, FMC
argues, the fluid flow cannot be forced to change from its current flowpath to a
different flowpath.
OSS argues that the pipework in the Flow Module constitutes a “different
flowpath” from the pipework in the EVDT. Therefore, OSS argues, the fluid flow
changes direction in the multi-bore hub to flow from the pipework in the EVDT into
a different flowpath created by the pipework in the Flow Module. OSS has failed,
however, to present admissible evidence to support this argument.12
Initially, there is no admissible evidence that different pipework alone can
constitute a different flowpath. OSS argues that FMC through Couto, its
12 OSS relied primarily on the Report and testimony of its infringement expert, Robert
Voss. As explained above, Voss’s evidence is not admissible.
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Rule 30(b)(6) witness, and Parks, its expert, admitted that the Flow Module pipework
is its own flowpath. See id. at 5. The evidence does not support OSS’s argument. In
the cited deposition testimony, Couto testified that the Flow Module pipework
“corresponds to the flow path for the fluid within the flow module.” See Response
[Doc. # 209], p. 5 (citing Deposition of Paulo Couto, Exh. 4 to Response, p. 70). OSS
cites to Parks’s testimony identifying a flowpath from the multi-bore hub back to the
multi-bore hub. See id. (citing Deposition of Williams Parks, Exh. 1 to Response,
p. 129). Neither Couto nor Parks testified that the pipework of the Flow Module is
a separate or different “flowpath” from that in the EVDT.
Indeed, Parks testified clearly and unequivocally that there is “one single
flowpath in and out. . . . there is only one flowpath. It’s through the . . . dual bore
hub13 into the module, out of the module and back into the dual bore hub. There is no
other way that fluid can go.” Parks Depo., pp. 153-54. As Parks explained, there is
only one flowpath throughout the EVDT because there is nowhere else the fluid can
flow.
OSS fails to identify an original, non-diverted flowpath in the Accused Device
that is different from the diverted flowpath. Instead, OSS relies on the argument that
the pipework in the Flow Module is a different flowpath from the flowpath in the rest
13 The “dual-bore hub” to which Parks referred in his testimony is also referred to by
others as the “multi-bore hub” in the Accused Device.
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of the EVDT because the pipework is distinct and removable. See Response, p. 2. As
noted above, OSS has presented no admissible evidence to support this argument. The
admissible evidence in the record, including the testimony of FMC’s expert, is to the
contrary.
C. Conclusion on Motion for Summary Judgment
OSS has failed to present admissible evidence of more than a single flowpath
through the Accused Device such that the fluid flow can be forced to change direction
from its current flowpath to a different flowpath. Therefore, OSS has not raised a
genuine issue of material fact regarding whether the Accused Device satisfies the
“divert” limitations in the asserted claims of the Patents-in-Suit, as the term has been
construed by the Court. As a result, FMC is entitled to summary judgment of non-
infringement.
IV. CONCLUSION AND ORDER
Voss’s infringement opinions are not supported by reliable methodology, and
they are based on Voss’s failure to consider, or misinterpretation of, the claim
construction of the terms “tree” and “diverter.” As a result, they fail to satisfy the
reliability requirement of Rule 702 and Daubert.
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OSS has failed to present admissible evidence that raises a genuine issue of
material fact supporting its claim that FMC’s Accused Device infringes the Patents-in-
Suit. As a result, it is hereby
ORDERED that FMC’s Motion to Exclude the Infringement Opinions and
Testimony of Robert Voss [Doc. # 226] is GRANTED. It is further
ORDERED that FMC’s Motion for Summary Judgment of Non-Infringement
[Doc. # 205] is GRANTED. It is further
ORDERED that FMC’s Motion for Summary Judgment of Invalidity [Doc.
# 211] is DENIED AS MOOT.
The Court will issue a separate final judgment.
SIGNED at Houston, Texas, this 10th day of December, 2020.
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