IP Law Daily, PATENT—Fed. Cir.: Summary judgment of noninfringement of oil drilling pipe patents mostly upheld, (Jun 28, 2023)

By Ursula Furi-Perry, J.D., MBA

The district court did not err in its claim construction, but its invalidity analysis was lacking as to one of four patents.

In a patent infringement case involving a tool and the related method for moving oil and gas drilling pipes called “tubulars,” the Federal Circuit held that the plain and ordinary meaning of the claim term “parallel” excluded “collinear,” as the overall specification supported a reading where “collinear” and “parallel” are mutually exclusive terms. Moreover, the appellate court found no error in the district court’s interpretation of the term “unrestricted,” with the district court correctly recognizing that there was no actual dispute about the meaning of the term. However, the district court failed to analyze sufficiently the issue of noninfringement of the claims of one patent, the appeals court held, vacating the district court’s decision on that issue and remanding the case (Tubular Rollers, LLC v. Maximus Oilfields Products, LLC, June 28, 2023, Cunningham, T.).

Background. Tubular Rollers, LLC, Rolling Tool, Inc., and H. Lester Ward (collectively “Tubular”) sued Maximus Oilfields Products, LLC (“Maximus”) and Nabors Drilling Technologies USA, Inc. (“Nabors”) for patent infringement in the United States District Court for the Southern District of Texas. The claims were predicated on various patents, covering a tool and a related method for moving oil and gas drilling pipes called “tubulars,” which are hollow steel or aluminum alloy pipes, between 30 and 45 feet long and weighing between 1100 and 3600 pounds. Workers would typically roll tubulars by hand to a rack where they were stacked several layers deep, and Tubular’s system allowed workers to move them faster and more safely.

One issue on appeal involved the axes of the wheel and handle sections, each of which have a longitudinal axis; another issue concerned the wheel assembly mounted for unrestricted rotation. The district court construed three different terms within the claim descriptions which were relevant to addressing those issues. First, the court determined that the term “parallel” meant “extending in the same direction, everywhere equidistant, and not meeting,” rejecting Tubular’s proposed construction of “everywhere equally distant, including collinear.” Second, the district court adopted Tubular’s proposed construction of the term “collinear” as “lying on or passing through the same straight line.” Lastly, the court declined to construe “unrestricted” beyond its plain and ordinary meaning of “not restricted,” and rejected Tubular’s proposed construction of “no additional mechanical resistance to rotation.”

The district court granted Maximus’s motions for summary judgment under Rule 56 of the Federal Rules of Civil Procedure, noting no genuine dispute as to any material fact, so that Maximus was entitled to judgment as a matter of law. Specifically, the district court granted summary judgment of noninfringement of (i) claims 18–20 of the ’224 patent, claims 1–4, 6–12, and 15 of the ’009 patent, and claims 16–20 and 24–26 of the ’915 patent based on its construction of parallel, and (ii) claims 1–5, 9–12, and 15 of the ’224 patent based on its construction of unrestricted. Under Federal Rule of Civil Procedure 54(b), the court also dismissed with prejudice all claims against Maximus. Tubular appealed.

The Federal Circuit reviewed the grant of summary judgment under the laws of the Fifth Circuit, de novo.

Claim construction. On appeal, Tubular argued that the district court adopted an erroneous construction of “parallel,” which contradicted the intrinsic evidence, as well as an erroneous construction of the term “unrestricted” based on the prosecution history. Tubular also argued that the court erroneously added a limitation to “unrestricted,” requiring some minimum angle of rotation, and the decision lacked a sufficient infringement analysis, and that the court granted summary judgment without addressing infringement under this court’s capability precedent.

Tubular argued that the only two specification excerpts discussing the terms “parallel” and “collinear” axes both described “collinear” as a subset of “parallel,” but the appellate court found the opposite: that the overall specification supported a reading where “collinear” and “parallel” are mutually exclusive terms. The court noted that the examiner never expressly equated the two terms and that the prosecution history did not support Tubular’s proposed interpretation. The plain and ordinary meaning of the claim term “parallel” excluded “collinear,” the appellate court held, also rejecting Tubular’s heavy reliance on the asserted patents’ independent-dependent claim structure to contend that “collinear” was a subset of “parallel.”

Regarding Tubular’s appellate argument about the term “unrestricted,” the court held that the district court correctly recognized there was no actual dispute about the meaning of the term, as Tubular conceded at the Markman hearing that it was “fine with” adopting the plain and ordinary meaning of the term: “not restricted.” The court also noted that the district court’s decision did not read as if it had effectively added a limitation to the term.

Although the Federal Circuit found no error in the district court’s decision to decline to construe unrestricted beyond its plain and ordinary meaning, it agreed with Tubular that the court erred in granting summary judgment of noninfringement as to the unrestricted claims “with virtually no substantive analysis.” The district court failed to analyze sufficiently the issue of whether the accused tool, with its bolts in place, infringed because the unrestricted construction did not require 360-degree rotation, the appeals court held, vacating the district court’s decision regarding that claim of noninfringement.

The Federal Circuit court affirmed the district court’s decision in part and vacated it in part. The court vacated the district court’s grant of Maximus’s motion for summary judgment of noninfringement of claims 1–5, 9–12, and 15 of the ’224 patent and remanded the for further proceedings because the district court failed to conduct sufficient infringement analyses as to those claims.

Dissenting opinion. In an opinion dissenting in part, Circuit Judge Jimmy Reyna disagreed with the majority’s interpretation of the term “parallel,” arguing that the written description of the claims, supported by prosecution history, reinforced that the term “parallel” was broader than, and yet included the term “collinear.” “Because I believe that a skilled artisan reading the claims in light of the intrinsic evidence would clearly understand that “collinear” axes are a subset of “parallel” axes, I would reverse the district court’s claim construction and vacate its grant of summary judgment of noninfringement based on that construction,” Judge Reyna wrote.

The case is No. 21-2319.

Attorneys: Ryan D. Levy (Patterson Intellectual Property Law, P.C.) for Tubular Rollers, LLC, Rolling Tool, Inc. and H. Lester Wald. John Hanson Barr, Jr. (Meade Neese & Barr LLP) for Maximus Oilfield Products, LLC.

Companies: Tubular Rollers, LLC; Rolling Tool, Inc.; Maximus Oilfields Products, LLC; Nabors Drilling Technologies USA, Inc.

Cases: Patent FedCirNews