MEMORANDUM DECISION GRANTING IN PART AND DENYING IN PART CAMERON’S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO INFRINGEMENT (Docs. 445 & 446)

Cooper Cameron Corporation (“Cameron”) moves for partial summary judgment on the ground that Duhn Oil Tool, Inc. (“Duhn”) cannot carry its burden of proof as to the following subset of Duhn’s allegations:

I. GOVERNING STANDARDS.

Summary judgment is proper when it is shown that there exists “no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56. A fact is “material” if it is relevant to an element of a claim or a defense, the existence of which may affect the outcome of the suit. T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass’n, 809 F.2d 626 , 630 (9th Cir. 1987). Materiality is determined by the substantive law governing a claim or a defense. Id. The evidence and all inferences drawn from it must be construed in the light most favorable to the nonmoving party. Id.

The initial burden in a motion for summary judgment is on the moving party. The moving party satisfies this initial burden by identifying the parts of the materials on file it believes demonstrate an “absence of evidence to support the non-moving party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325 , 106 S.Ct. 2548 , 91 L.Ed.2d 265 (1986). The burden then shifts to the nonmoving party to defeat summary judgment. T.W. Elec., 809 F.2d at 630. The nonmoving party “may not rely on the mere allegations in the pleadings in order to preclude summary judgment,” but must set forth by affidavit or other appropriate evidence “specific facts showing there is a genuine issue for trial.” Id. The nonmoving party may not simply state that it will discredit the moving party’s evidence at trial; it must produce at least some “significant probative evidence tending to support the complaint.” Id. The question to be resolved is not whether the “evidence unmistakably favors one side or the other, but whether a fair-minded jury could return a verdict for the plaintiff on the evidence presented.” United States ex rel. Anderson v. N. Telecom, Inc., 52 F.3d 810, 815 (9th Cir.1995). This requires more than the “mere existence of a scintilla of evidence in support of the plaintiffs position”; there must be “evidence on which the jury could reasonably find for the plaintiff.” Id. The more implausible the claim or defense asserted by the non-moving party, the more persuasive its evidence must be to avoid summary judgment.” Id. In Scott v. Harris, 550 U.S. 372 , 127 S.Ct. 1769, 1776 , 167 L.Ed.2d 686 (2007), the Supreme Court held:

As explained in Nissan Fire & Marine Ins. Co. v. Fritz Companies, 210 F.3d 1099 (9th Cir.2000):

210 F.3d at 1102-1103.

II. DUHN’S OBJECTIONS TO DECLARATION OF ROSS TOBIN.

Exhibit B to Cameron’s motion is the Declaration of Ross Tobin dated September 10, 2010. Although a copy of this declaration in included with Cameron’s courtesy copies, it is not included in Doc. 446 and is, therefore, not yet part of the record.

Mr. Tobin avers that he is currently an Account Manager III for Cameron and that he had previously been District Manager at the Cameron facility located at 2326 1-70 Frontage Road, Grand Junction, Colorado.

In Paragraph 4 of his declaration, Mr. Tobin avers:

Duhn objects to Paragraph 4 of Mr. To-bin’s Declaration on the grounds of lack of foundation and/or personal knowledge. Duhn contends:

Duhn refers to Mr. Tobin’s deposition testimony at 28:14-20 and 31:2-11, attached as Exhibit 5 to Mr. Kolegraff s declaration (Doc. 484). Mr. Tobin’s deposition testimony makes clear that he was referring to frac mandrels maintained at Vernal or Longview, Texas, not Grand Junction, Colorado.

Duhn further objects to Paragraph 4 on the ground that Mr. Tobin never saw “these” spreadsheets until October 27, 2010, the day before his deposition and six weeks after he signed his declaration:

In Paragraph 7 of his declaration, Mr. Tobin avers:

Duhn objects to Paragraph 7 for lack of foundation and/or personal knowledge as stated in connection with Paragraph 4. See supra.

In Paragraph 8 of his declaration, Mr. Tobin avers:

Duhn objects to Paragraph 8 for lack of foundation and/or personal knowledge as stated in connection with Paragraph 4. See supra.

Cameron replies that Duhn’s objections to Mr. Tobin’s declaration should be disregarded:

Mr. Tobin has not laid the foundation to admit this information as a business record under Rule 803(6), Federal Rules of Evidence. Cameron’s response changes nothing. If Cameron is presenting a compilation, summary, or abstract of business records, it must lay the proper foundation. Duhn’s objections to Mr. Tobin’s declaration are sustained.

III. STATEMENTS OF UNDISPUTED FACTS.

A. CAMERON.

1. U.S. Patent No. 6,920,925 (“the '925 Patent”).

CUDF 1: The '925 patent, entitled Wellhead Isolation Tool, was issued on July 26, 2005, listing only Rex Duhn and Robert Meek as inventors.

Duhn’s Response: UNDISPUTED.

CUDF 2: The asserted claims of the '925 patent contain the following limitations: “a production tubular member” and “wherein an axial force acts on the generally elongate annular member and is reacted in both the first tubular member flange and the secondary flange”. Additionally, claim 1, and the claims based thereon, of the '925 patent contains the limitation: “a casing.” Supporting Evidence: Ex. A.1 (the '925 Patent) at col. 13, lines 42-62; col. 24, lines 26-56.

Duhn’s Response: UNDISPUTED that the claims contain the language quoted, but DISPUTED because the meaning of a patent claim limitation is a question of law for the Court, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-971 (Fed.Cir.1995). Duhn objects that Cameron is attempting to read a claim limitation outside of its context by inappropriately parsing limitation language, contending that the claim must be read as a whole.

CUDF 3: Claims 13, 14, 31, and 86 contain limitations requiring “lock screws.” Supporting Evidence: Ex. A.1 (the '925 Patent) at col. 14, lines 42-67; col. 17, lines 8-25; col. 24, lines 26-56.

Duhn’s Response: UNDISPUTED that the claims contain the language quoted, but DISPUTED because the meaning of a patent claim limitation is a question of law for the Court, see Markman, supra. Duhn objects that Cameron is attempting to read a claim limitation outside of its context by inappropriately parsing limitation language, contending that the claim must be read as a whole.

CUDF 4: A “casing” is a “pipe extending from the surface of the well down into the ground ... to the oil reservoir many thousands of feet below ground.” Supporting Evidence: Ex. A.2, Expert Report of Boyadjieff, p. 4.

Duhn’s Response: UNDISPUTED that a casing is a pipe extending from the surface into the ground, but DISPUTED that a casing necessarily must reach the oil reservoir many thousands of feed below ground and DISPUTED that the meaning of a patent claim term is a question of law, citing Markman, supra.

CUDF 5: A “production tubular member” is “the inner round pipe extending from the surface down to the oil or gas reservoir.” Supporting Evidence: Ex. A.2, Expert Report of Boyadjieff, p. 5.

Duhn’s Response: Duhn does not dispute this construction but clarifies that a production tubular member may be the inner-most casing for a well.

CUDF 6: The claimed wellhead assembly “of the '925 patent does not include every element of those claims until it is fully assembled at the location of the well.” Supporting Evidence: Ex. A.11, Declaration of Robert Meek, ¶ 2.

Duhn’s Response: Duhn objects as vague the phrase “fully assembled.” DISPUTED: The wellhead assembly is complete when each limitation of the claims has been met. There is no requirement that the wellhead assembly include anything more than the claimed limitations or that it be in a specific location. As defined by the Markman ruling, there is no requirement that the wellhead assembly be in use for a finding of infringement.

CUDF 7: During prosecution of the application for the '925 patent, then-pending claim 90 was a dependent claim based on then-pending independent claim 72. The USPTO rejected then-pending claim 72 but indicated that then pending claim 90 would be allowable if rewritten into independent form. Duhn Oil amended then-pending claim 72 to include “a plurality of lock-screws,” and rewrote then-pending claim 90 into independent form. Supporting Evidence: Ex. A.3, Duhn Oil’s February 2005 Response to Office Action, p. 23, 30 and 33.

Duhn’s Response: Duhn objects to CUDF 7 as incomplete: The applicants amended original claim 72 by adding “and a plurality of lockscrews each radially threaded through one of said first flange and second flange and engaging the generally elongate, annular member, wherein the other of said first flange and second flange is threaded on the generally elongate annular member, wherein the second flange is fastened to the first flange, and wherein the second flange is separate from the generally elongate member.” Otherwise UNDISPUTED.

2. The Accused Products.

CUDF 8: 8. Cameron has never sold or offered for sale underground pipes, such as the casing or production tubular member recited in the claims of the '925 patent. Supporting Evidence: Ex. B, Tobin Declaration, ¶ 10.

Duhn’s Response: DISPUTED to the extent Cameron purports to construe the meaning of the terms of the '925 Patent; otherwise UNDISPUTED.

3. No Infringement if Lockscrews Are Not Run-In.

CUDF 9: The Court determined that if the lockscrews are not in contact with the frac mandrel, then there is no “dual load path” as required by the “wherein” clause and, thus, no infringement. Supporting Evidence: Transcript of Hearing on January 6, 2009 (Doc. 287) at 183:20-184:13.

Duhn’s Response: DISPUTED. The Court only indicated that it would make a ruling regarding what was “not within the call of the patent.”

CUDF 10: If a Cameron frac mandrel is installed such that the lockscrews are not in contact with the mandrel, there is no infringement.

Duhn’s Response: DISPUTED. Duhn contends that if a Cameron frac mandrel is installed in such a way that the lockscrews cannot be in contact with the mandrel, there is no infringement, referring to Duhn’s proposed Order (Doc. 476-1 at 2), with respect to which the Court has not ruled.

CUDF 11: During Mr. Rex Duhn’s deposition on September 19, 2007, the following exchange took place:

Supporting Evidence: Ex. A.8, Duhn Depo., dated Sept. 19, 2007, at 39:14-40:12.

Duhn’s Response: UNDISPUTED that the quoted exchange occurred during Mr. Duhn’s deposition with regard to Claim 13. Objection: FRE 802.

CUDF 12: Mr. George Boyadjieff believes that any contact between the lock-screws and the irac mandrel would be sufficient to transfer loads in accordance with the “wherein” clause. Supporting Evidence: Ex. A.9, First Supp. Boyadjieff Report, p. 3.

Duhn’s Response: UNDISPUTED.

CUDF 13: On August 21, 2008, Cameron issued an engineering bulletin to its field locations reminding Cameron personnel that the lockscrews should not be run-in and should not contact the frac mandrel. Supporting Evidence: Ex. B to Docket No. 255.

Duhn’s Response: UNDISPUTED that Cameron sent out an engineering bulletin to at least some Cameron installers; otherwise DISPUTED: It is unclear if the bulletin went to all “field locations” and whether the installers had previously been informed not to tighten the lockscrews.

CUDF 14: The vast majority of Cameron’s surface U.S. frac mandrel installations are coordinated out of Cameron’s Grand Junction, Colorado facility. Supporting Evidence: Ex. B, Tobin Declaration, ¶4.

Duhn’s Response: Objection on the ground that the cited evidence does not support the fact. [OWW-I agree; paragraph 4 of Mr. Tobin’s declaration quoted above does not support this fact] and on the ground of vagueness as it is unclear what “vast majority” means. DISPUTED: Cameron maintains at least two other facilities that store and install frac mandrels, i.e., Longview, Texas and Vernal, Utah. For the Encana installations that are done by Cameron, the installations are all done from Cameron’s facility in Vernal, Utah.

4. Installation Checklists.

CUDF 15: In February 2009, Cameron began documenting the installation of its frac mandrels at its Grand Junction facility.

Duhn’s Response: UNDISPUTED.

CUDF 16: The below pictures are accurate representations of the type of marking plate Cameron places on the hold-down flange of its frac mandrels: [OWW — I could not copy the picture but it is in Cameron’s statement of undisputed facts]. Supporting Evidence: Ex. B, Tobin Deck, ¶ 3.

Duhn’s Response: DISPUTED. Cameron has not placed marking plates on all its frac mandrels and has no defined plan to get marking plates installed on all Encana-owned frac mandrels.

CUDF 17: Cameron’s marking plates conspicuously instruct “DO NOT RUN IT TUBING HEAD LOCKSCREWS TO CONTACT FRAC MANDREL. THIS HOLD-DOWN FLANGE FIRMLY SECURES THE FRAC MANDREL DURING FRAC OP”.

Duhn’s Response: UNDISPUTED as to correct quotation of plate text. DISPUTED on ground that not all mandrels have been so marked and Cameron has presented no evidence that the plates are conspicuously placed considering the dirty, hostile and dangerous well site environment.

CUDF 18: Additionally, Cameron delivered its updated installation procedures— which expressly state that the lockscrews should not contact the frac mandrel — to its customers, and to third parties that may come in contact with Cameron’s mandrels. Supporting Evidence: Ex. B, Tobin Decl. at ¶¶ 11-19.

Duhn’s Response: DISPUTED as to whether all customers, all third parties, and all operating companies that may come in contact with the Cameron frac mandrel.

CUDF 19: Cameron has received from the field managers of its customers Orion, Williams, Barrett, Anadarko and Bass, signed acknowledgments indicating that his or her respective company has received Cameron’s revised installation procedures. Supporting Evidence: Ex. B, Tobin Decl. at ¶¶ 11-19.

Duhn’s Response: UNDISPUTED that Cameron has received signed acknowledgements from customers Orion, Williams, Barrett, Anadarko and Bass; DISPUTED to the extent the acknowledgements do not identify the person signing as a “field manager.”

5. Cameron’s Confirmed Non-Infringing Frac Mandrel is “Substantial”.

CUDF 20: Cameron’s checklists indicate that Cameron has installed at least 841 mandrels with the lockscrews not run in and, as such, not in contact with the mandrel. Supporting Evidence: Ex. B, Tobin Decl. ¶ 4.

Duhn’s Response: Objection to foundation. See discussion supra. DISPUTED. The evidence demonstrates that the checklists that purportedly underlie this calculation are unreliable. Cameron’s own checklists show that Cameron has had to buff out over 1000 dimples from its frac mandrels from September 2009 to April 2010.

CUDF 21: Cameron’s checklists indicate that at least 615 mandrels have returned to Cameron’s facilities without dimples. Supporting Evidence: Ex. B, Tobin Decl. ¶¶ 7-8.

Duhn’s Response: Objection to foundation. See discussion supra. DISPUTED for same reasons as CUDF 20.

CUDF 22: Cameron has an Installation Checklist and a Return Checklist for at least 535 mandrels. Supporting Evidence: Ex. B, Tobin Decl. ¶¶ 7-8.

Duhn’s Response: Objection as irrelevant, misleading and lacking foundation. See discussion supra. DISPUTED because Cameron’s pairing of Installation Checklists and Return Checklists did not start until at least June 11, 2009 and does not cover all of the infringing installations.

CUDF 23: Cameron’s checklists indicate that of the at least 535 mandrels for which Cameron has both an Installation and a Return Checklist, at least 523 mandrels were returned without dimples. Supporting Evidence: Ex. B, Tobin Decl. ¶¶ 7-8.

Duhn’s Response: same as to CUDF 22 supra.

In Cameron’s reply brief in reply to Duhn’s evidentiary objections to CUDF 20-23, Cameron attaches as Exhibits A, B and C the Declaration of Joe Norris, District Manager for Cameron’s Grand Junction, Colorado district office:

6. Duhn Oil’s Lockscrews.

CUDF 24: There are only so many horizontal penetrations a flange can have, and the space necessary for the vertical bolts extending through this flange defines the maximum limit. It is impossible to have an “infinite number of lockscrews” within a flange. Supporting Evidence: Ex. A.7, Devlin Declaration at ¶ 4.

Duhn’s Response: UNDISPUTED as to there being only so many horizontal penetrations and that it is not possible to have an infinite number of lockscrews; DISPUTED as to the cause for the limitation.

B. DUHN’S STATEMENT OF ADDITIONAL MATERIAL FACTS.

1. Cameron’s Direct Infringement of the '925 Patent.

DUDF 25: When a customer purchases or rents a Cameron frac mandrel, Cameron installs the frac mandrel in the tubing head at its facility. Supporting Evidence: Kolegraff Deck, Ex. 7, Tobin 4/9/10 depo. at 23:19-24; Ex. 6, Tobin 9/8/09 depo. at 12:5-15.

DUDF 26: At the well site in the field, Cameron assembles the wellhead assembly, including the frac mandrel in the tubing head. This assembly includes attaching to “a casing” and aligning “a production tubular member.” Supporting Evidence: Ex. 7, Tobin Depo. at 24:1-25:9, 25:24-26:3; Ex. 6, Tobin Depo. at 12:6-17.

DUDF 27: In addition to assembling the wellhead, Cameron performs testing of the wellhead assembly. Supporting Evidence: Ex. 7, Tobin Depo. at 25:4-9; Ex. 6, Tobin Depo. at 43:18-44:4; Ex. 1, Devlin 1/8/08 Depo. at 49:7-50:14.

DUDF 28: Cameron has assembled a wellhead that is within the scope of claim 2 of the '925 Patent. Supporting Evidence: Ex. 1, Devlin Depo. 15:16-21, 25:13-19, 27:14-17, 30:15-18, 31:22-24, 32:16-21, 33:5-11, 33:12-17, 20:15-18, 40:20-24, 41:14-24; Ex. la, Devlin Depo., Exh. 16; Ex. 8 Boyadjieff Report, 4-5; Ex. 9 Boyadjieff Supp. Report, 3.

2. Cameron’s Indirect Infringement of '925 Patent.

DUDF 29: Cameron’s frac mandrels have been used in an infringing manner after April 2, 2009. Supporting Evidence: Ex. 6, Tobin Depo., 50:13-51:15, 68:9-69:23; Ex. 6a, Tobin Depo., Ex. 15; Ex. 6b, Tobin Depo. Ex. 17.; Ex. 4 and table summarizing buffing checklists at Kolegraff Deck ¶ 6.

DUDF 30: Cameron did not install placards of all of its frac mandrels by April 2, 2009. Supporting Evidence: Ex. 6, Tobin Depo. at 15:5-14, 15:18-25.

DUDF 31: Cameron did not instruct its employees to install the frac mandrel without engaging the lockscrews — Cameron’s purported non-infringing use — until some time in 2008. Supporting Evidence: Ex. 5, Tobin Depo. at 14:4-15:12.

3. Prosecution of the '925 Patent.

DUDF 32: The '925 Patent matured from Application Number 10/369,070 filed on February 19, 2003. Supporting Evidence: Ex. 18.

DUDF 33: Claim 86 of the '925 Patent was first submitted to the Patent Office on November 15, 2004 as claim 90, which depended upon claim 72. Supporting Evidence: Ex. 13, 11/15/04 Amendment at 34, 41.

DUDF 34: In a January 10, 2005, Final Office Action, the Examiner allowed claim 90 as submitted. Supporting Evidence: Ex. 14, 1/10/05 Final Office Action at 4.

DUDF 35: In a January 10, 2005 Final Office Action, the Examiner rejected claim 72 as anticipated. Supporting Evidence: Ex. 14, 1/10/05 Final Office Action at 2.

DUDF 36: In an Amendment After Final submitted on February 22, 2005, the applicants amended then claim 90 to include the limitations of base claim 72— converting claim 90 from a dependent to an independent claim. The applicants did not change the scope of claim 90. Supporting Evidence: Ex. 15, Amendment After Final at 30, 33.

DUDF 37: In the February 22, 2005 Amendment After Final, the applicants amended claim 72, adding a limitation. Supporting Evidence: Ex. 15, Amendment After Final at 23, 33.

DUDF 38: On March 30, 2005, the Examiner issued a Notice of Allowability, allowing, inter alia, claims 72 and 90 as submitted in the February 22, 2005 Amendment After Final. Supporting Evidence: Ex. 16, Notice of Allowability.

DUDF 39: The '925 Patent issued on July 26, 2005 with original claim 90 issuing as claim 86 and original claim 72 issuing as claim 77. Supporting Evidence: Ex. 17; Ex. 18, Issue Classification.

4. The Accused Device’s “Lock Collar”.

DUDF 40: The “lock collar” of Cameron’s accused devices transfers a portion of the axial load from the elongate annular member to the secondary flange. Supporting Evidence: Ex. 8, Boyadjieff Depo. at 141:2-25,144:7-16; Cameron brief (Doc. 447) at 24.

IV. NO DIRECT INFRINGEMENT BASED ON SALES, OFFERS FOR SALE, OR USE.

Cameron moves for partial summary judgment on the ground that Duhn cannot support its allegations of patent infringement pursuant to 35 U.S.C. § 271 (a) based on use, sales, or offers for sale of allegedly infringing wellhead assemblies. Cameron asserts that the acts underlying each category of patent infringement are different:

“Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device, i.e., when the properly constructed claim reads on the accused device exactly.” Cole v. Kimberly-Clark Corp., 102 F.3d 524, 532 (Fed.Cir.1996), cert. denied, 522 U.S. 812 , 118 S.Ct. 56 , 139 L.Ed.2d 20 (1997). “[A]ny deviation from the claim precludes a finding of literal infringement.” Litton Systems, Inc. v. Honeywell, Inc., 140 F.3d 1449, 1454 (Fed.Cir.1998). See also London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1539 (Fed.Cir.1991): “There can be no infringement as a matter of law if a claim limitation is totally missing from the accused device.” Relying on these principles, Cameron contends:

Cameron contends that it does not use a wellhead assembly with a “casing” or a “production tubular member,” which are required limitations of all of Duhn’s asserted patent claims. Cameron asserts that each of the patent claims describe a “wellhead assembly” and includes the limitation “a production tubular member.” Claim 1 and the claims based thereon further include the limitation “a easing.” Cameron refers to the expert report of Mr. Boyadjieff, one of Duhn’s designated expert witnesses, that “a casing” is a “pipe extending from the surface of the well down into the ground ... to the oil reservoir many thousands of feet below ground” and that a “ ‘production tubular member’ is the inner round pipe extending from the surface down to the oil or gas reservoir.” Cameron contends that both of these claim components are fixed in the ground and located at the well site. Cameron refers to testimony of Mr. Meek, a named inventor as well as a Duhn expert, that the claimed wellhead assembly “of the '925 patent does not include every element of those claims until it is fully assembled at the location of the well.”

Cameron moves for partial summary judgment on the ground that it does not “use” an allegedly infringing wellhead assembly. Asserting that “[t]his Court noted that infringing use of a frac mandrel in a wellhead assembly requires employment in the purpose from which the wellhead assembly’s frac mandrel is sold and intended,” and to Duhn’s assertion that “use” encompasses testing and installation, Cameron refers to the Court’s statement at a hearing on January 25, 2010:

(Doc. 408,10:2-9).

Duhn responds that there is evidence that when a customer purchases or rents a Cameron frac mandrel, Cameron installs the frac mandrel in the tubing head at its facility; then Cameron goes to the well site and assemblies the wellhead assembly, including the frac mandrel in the tubing head, which assembly includes attaching to “a casing” and aligning “a production tubular member”; and that Cameron performs testing of the completed assembly.

Duhn asserts that these activities, performed on the entire structure, constitute “use” of the '925 Patent, relying on the following cases.

In Waymark Corp. v. Porta Systems Corp., 245 F.3d 1364, 1367-1368 (Fed.Cir.2001), the Federal Circuit noted:

Paper Converting Machine Co. v. Magna-Graphics Corp., 745 F.2d 11, 19-20 (Fed. Cir.1984), held:

See also General Electric Co. v. Sonosite, Inc., 568 F.Supp.2d 983, 992 (W.D.Wis.2008) (“Testing is a ‘use’ of an invention that may infringe.”); McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 2005 WL 2346919 at *5 (E.D.Cal., Sept. 23, 2005) (“‘Using’ requires use of the complete invention, and encompasses ‘assembly’ and ‘testing’ of that invention.”). As Duhn notes, Cameron cites no case authority that testing and assembly may constitute “use,” relying instead upon spontaneous comments from the Court responding to an issue that had not been briefed by the parties.

Cameron replies that the testing of seals to which Duhn refers is part of the alleged “making,” not “use”:

Cameron requests that the Court finds as a matter of law that Duhn’s direct infringement claims to be presented at trial be limited to making.

Cameron’s motion for partial summary judgment on this ground is DENIED; case authority supports Duhn’s position that testing and assembly in the field can constitute use for purposes of direct infringement.

Cameron further seeks partial summary judgment of no infringement for instances where Cameron can prove that its frac mandrel was used in a noninfringing manner:

Cameron cites L & W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed.Cir.2006):

Relying on L & W, Inc., Cameron asserts that “the Federal Circuit has repeatedly rejected a patentee’s attempt to establish infringement against an entire category of products by presenting evidence relating to only a subset of that category.” Cameron contends:

Cameron refers to evidence of allegedly non-infringing use when the lockscrews are not run in and asserts that it can prove hundreds of instances pursuant to its checklist procedure, commenced in early 2009.

Cameron further argues that Duhn’s purported evidence of infringement does not “outweigh” Cameron’s evidence of non-infringement. Essentially, Cameron argues that Duhn’s evidence that the frac mandrel will not work if the lockscrews are not run in is not credible:

Cameron contends that Duhn has presented no evidence that a Cameron frac mandrel would fail or fail to work properly if the tubing head lockscrews were not run in:

Cameron contends that it “is also quite telling” that Duhn presents no evidence from a third party stating that the lock-screws must be run in for Cameron’s frac mandrel to work. Cameron cites E-Pass Technologies, Inc. v. 3Com Corp., 473 F.3d 1213, 1222-1223 (Fed.Cir.2007):

Cameron contends that it has received written acknowledgements from its customers, acknowledging that they are aware of Cameron’s procedures that the lockscrews not be run in to contact the mandrel. Cameron also refers to evidence that Duhn’s inspection of Cameron’s facilities and seen “countless” mandrels without dimples and asserts that Duhn has repeatedly presented isolated instances where the lockscrews were run in to assert that the lockscrews are always run in. Cameron contends that the Court should hold Duhn to its evidentiary burden and grant partial summary judgment of noninfringement for Cameron for the at least 615 instances in which Cameron can show through its checklists that its mandrel was used with the lockscrews not run in.

Duhn responds that Cameron’s position is without merit because it attempts to conflate standards for damages with standards for infringement liability. Duhn cites Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed.Cir.2009), ce rt. denied sub nom. Microsoft Corp. v. Lucent Technologies, Inc., — U.S. -, 130 S.Ct. 3324 , 176 L.Ed.2d 1240 (2010):

That Cameron can identify some instances of purported non-infringement, Duhn contends, has no bearing on whether Cameron is liable for direct infringement of the '925 Patent:

Duhn also argues that Cameron’s evidence of non-infringement where the lock-screws are not run in is “highly suspect,” referring to Duhn’s objections to Mr. To-bin’s declaration discussed supra.

Cameron’s motion for partial summary judgment on this ground is DENIED; questions of fact remain to be resolved at trial.

V. NO CONTRIBUTORY INFRINGEMENT.

Cameron moves for partial summary judgment on the ground that Cameron’s “confirmed-as-noninfringing configuration is substantially used, and, as such, precludes a finding of contributory infringement as a matter of law.”

35 U.S.C. § 271 (c) provides:

Cameron cites Cross Medical Products, Inc. v. Medtronic Sofamor Danek, 424 F.3d 1293, 1312 (Fed.Cir.2005):

Cameron asserts that Duhn cannot satisfy this test.

Cameron asserts that Duhn must make a prima facie showing that there are no substantial non-infringing uses for the allegedly infringing product and must overcome any rebuttal evidence presented by Cameron. See Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354, 1363 (Fed.Cir.2006). If Duhn fails to provide evidence that the accused device has no substantial non-infringing use, the allegation of contributory infringement cannot stand. Lucent Technologies, Inc. v. Gateway, Inc., 2007 WL 925502 at *4 (S.D.Cal., March 19, 2007):

Cameron submits it can prove the “confirmed-as-noninfringing configuration of its mandrels is substantially used”:

Duhn responds that Cameron’s analysis is faulty because it relies upon later developed installation procedures to excuse earlier infringing sales and contends that the focus should be on whether the products had a non-infringing use at the time of the sale. Duhn cites Bassick Mfg. Co. v. Adams Grease Gun Corporation, 52 F.2d 36, 40 (2nd Cir.1931) and the Scheduling Order Following Pretrial Conference filed on September 29, 2010 (Doc. 467):

Duhn argues that there is no dispute that Cameron sold and placed into its rental pool the bulk of its frac mandrels prior to developing its modified installation procedures and there is no evidence that, prior to 2008, Cameron had developed a non- infringing method of using its product. Therefore, Duhn contends, Cameron bears the burden of showing substantial non-infringing uses for all sales of the product, including those before the development of Cameron’s non-infringing method. Moreover, Duhn asserts, there is a genuine issue of material fact whether Cameron’s purported non-infringing use even is an acceptable substitute for the patented system, referring to evidence that installers continued to run in the lockscrews after 2008:

In reply, Cameron submits additional charts summarizing the checklists since the filing of the motion and contends:

Cameron acknowledges the Court’s limitation regarding contributory infringement to contributory infringement after April 2009. In its reply brief, Cameron requests the Court reconsider the limitation and recognize that the “substantial confirmed noninfringing use for which Cameron’s accused products are suitable ... is a suitable use that is inherent in the design of the product and has existed since the first sale of the accused products”:

Cameron’s request for reconsideration is denied because it was requested for the first time in the reply brief. Moreover, Cameron has three versions of the frac mandrel (“old style” with a narrow grove; “new style” with a wide grove; and “original “original design” with no groove). The only one at issue where the lockscrews were not run in is the Original Design, not the New Style Design. Cameron is not entitled to partial summary judgment because questions of fact remain to be resolved at trial.

VI. NO INDUCEMENT OF INFRINGEMENT AFTER APRIL 2, 2009.

Cameron argues that, since April 2, 2009, Cameron, in accordance with the Court’s Order, has been specifically instructing its customers not to run in the lockscrews and to only use the confirmed-as-noninfringing configuration. Even if a third party were to run in the lockscrews, Cameron asserts, Cameron did not have the specific intent to induce that infringement and is entitled to partial summary judgment that it did not induce others to infringe after April 2, 2009.

As explained in Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed.Cir.1988):

See also Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1363 (Fed.Cir.2003):

Duhn responds that partial summary judgment on this ground is inappropriate: “While Cameron may have taken steps at some point to discourage infringement, there is a legitimate question of fact as to when these steps actually occurred.” Duhn refers to evidence that the placards instructing customers not to run in the lockscrews were applied as the mandrels were returned and that, as of September 9, 2009, he could not say how many placards had been applied to the mandrels. In addition, Duhn contends, evidence of direct infringement after April 2, 2009 indicates that Cameron’s efforts were incomplete, referring to evidence that some mandrels left Cameron’s facility without dimples after April 2, 2009 and returned with dimples. Thus, Duhn argues, there is a genuine issue of material fact as to if or when there is a cut-off date for Cameron’s inducement of infringement.

Cameron replies that Duhn has no evidence that Cameron encouraged anyone to use the frac mandrels in the allegedly infringing configuration after April 2, 2009:

Cameron’s motion for partial summary judgment is DENIED on this ground; is sues of fact and issues relating to damages remain for trial.

VII. NO INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS.

Cameron moves for partial summary-judgment on the ground that there is no infringement of the '925 Patent under the doctrine of equivalents. Cameron asserts that Duhn is estopped from asserting the doctrine of equivalents for the asserted claims; that Duhn may not vitiate the recited “lockscrews”; and that the “lock collar” employed by Cameron is not legally equivalent to the claimed “lockscrews.”

Infringement under the doctrine of equivalents requires that the accused product contain each limitation of the claim or its equivalent. KCJ Corp. v. Kinetic Concepts, Inc., 228 F.3d 1351, 1359 (Fed.Cir.2000). Infringement under the doctrine of equivalents occurs when a claimed limitation and the accused product perform substantially the same function in substantially the same way to obtain substantially the same result. V-Formation, Inc. v. Benetton Group SpA 401 F.3d 1307, 1313 (Fed.Cir.2005). An element in the accused product is equivalent to a claim limitation if the differences between the two are “insubstantial to one of ordinary skill in the art.” KCJ Corp., id. Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 , 117 S.Ct. 1040 , 137 L.Ed.2d 146 (1997). However, prosecution history estoppel prevents the application of the doctrine of equivalents as a tool to recapture subject matter surrendered during prosecution. KCJ Corp., id. Application of the rule precluding use of the doctrine of equivalents to recapture claim scope surrendered during patent acquisition is a question of law. Id.

In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 , 122 S.Ct. 1831 , 152 L.Ed.2d 944 (2002), the Supreme Court held:

535 U.S. at 733-734 , 122 S.Ct. 1831 .

A. Prosecution History Estoppel/Duhn May Not Vitiate the Recited “Lockscrews”.

Cameron argues that Duhn is es-topped from asserting the doctrine of equivalents for Claims 13, 14, 31 and 86 because of the amendments Duhn made to obtain the '925 Patent. Cameron contends that the prosecution history regarding Claims 13, 14, 31 and 86 is “virtually identical” to that addressed in Honeywell Int'l, Inc. v. Hamilton, Sundstrand Corp., 370 F.3d 1131 (Fed.Cir.2004), cert. denied, 545 U.S. 1127 , 125 S.Ct. 2928 , 162 L.Ed.2d 865 (2005).

In Honeywell, the Federal Circuit addressed “whether rewriting a dependent claim into independent form, coupled with the cancellation of the original independent claim, constitutes a narrowing amendment when the dependent claim includes an additional claim limitation not found in the cancelled independent claim or circumscribes a limitation found in the cancelled independent claim.” 370 F.3d at 1141. The Federal Circuit stated:

Id. at 1141 . Relying on Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 , 122 S.Ct. 1831 , 152 L.Ed.2d 944 (2002), and Federal Circuit opinions following Festo, the Honeywell Court held:

370 F.3d at 1143-1144.

Cameron argues that Duhn amended its claims “in almost exactly the same manner” as the patentee in Honeywell. During the prosecution of the '925 Patent, then-pending Claim 90 was a dependent claim based on then-pending independent Claim 72. In order to overcome rejections from the USPTO, Duhn amended then-pending Claim 72 to include “a plurality of lock-screws,” and re-wrote then-pending Claim 90, which already included the “lock-screws” limitation, into independent form. Cameron argues that, by amending then-pending Claim 72 to include the “lock-screws,” Duhn conceded that then-pending Claim 72 was not patentable as originally presented and that, accordingly, this amendment carries the same effect as cancellation for purposes of the doctrine of equivalents. By amending these claims, Cameron contends, which issued as Claims 77 and 86, respectively, Duhn narrowed the scope of its claims by adding the “lock-screws” limitation to obtain the '925 Patent. Cameron further argues that Duhn’s amendments to then-pending Claims 72 and 90 precludes application of the doctrine of equivalents with respect to the “lock screws” recited in issued Claims 13, 14 and 31. By making the claim amendments, Duhn surrendered claim scope between the original claim and the specific structure of the “lock screws.” Cameron contends:

Duhn responds that Honeywell has no application because Honeywell requires the cancellation of the independent claim, which was not done here.

At a hearing on May 5, 2008, Cameron conceded that Duhn did not cancel an independent claim as was done in Honeywell but argues:

(CT, Doc. 199, p. 81:18-82:7).

At the hearing, Duhn responded that Honeywell is not applicable, even given Cameron’s effective cancellation argument:

(CT, Doc. 199, p. 108:25-109:25).

For the reasons stated by the Court at the hearing on November 15, 2010, Duhn’s contention that Honeywell is inapplicable is rejected and Duhn is estopped by the prosecution history from arguing that Cameron’s frac mandrel is the equivalent of Duhn’s frac mandrel as to Claims 13,14, 31 and 86 of the '925 Patent.

With regard to Claims 13, 14 and 31, at the hearing Cameron cited Glaxo Wellcome, Inc. v. Impax Laboratories, Inc., 356 F.3d 1348 (Fed.Cir.2004). Cameron described Glaxo:

(CT, Doc. 199, p. 80:24-81:8).

In Glaxo, Glaxo applied for a patent and obtained the '798 patent for a sustained release formulation of bupropion hydrochloride. The key ingredient for achieving sustained release is HPMC. Many of the patent claims as originally filed did not recite HPMC as a limitation. During the prosecution of the patent, the examiner rejected the claims that did not recite HPMC for lack of enablement under 35 U.S.C. § 112 . Glaxo amended those claims to overcome the rejection. Impax filed two Abbreviated New Drug Applications with the FDA in which Impax certified that its generic sustained release bupropion hydrochloride did not infringe Glaxo’s '798 patent because the sustained release agent in Impax’s proposed composition was HPC. Glaxo sued Impax for patent infringement. Impax was granted summary judgment on the basis of prosecution history estoppel. The District Court ruled that Glaxo’s amendments narrowed the patent with respect to sustained release and that at the time of Glaxo’s amendments, anyone skilled in the art would have known that HPMC and HPC were substantially equivalent. On appeal, the Federal Circuit ruled that, by the amendments, Glaxo surrendered other controlled sustained release agents known to act as equivalents of HPMC. 356 F.3d at 1352 . In the section of the opinion captioned “Infectious Estoppel,” the Federal Circuit ruled:

Id. at 1356 .

The net effect in Glaxo was that Glaxo was limited to HPMC and could not claim the doctrine of equivalents to other sustained release agents.

Cameron’s motion for partial summary judgment is GRANTED as to 13, 14 and 31 of the '925 Patent on the ground of infectious estoppel.

CONCLUSION

For the reasons stated:

1. Cameron’s motion for partial summary judgment of no infringement is GRANTED IN PART AND DENIED IN PART;

2. Counsel for Cameron shall prepare and lodge a form of order consistent with this Memorandum Decision within five (5) court days following service of this Memorandum Decision.

IT IS SO ORDERED.

. In seeking partial summary judgment, Cameron does not concede that it has infringed the '925 Patent. . 35 U.S.C. § 271 (a) provides: Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. Duhn conceded at the hearing that Cameron does not sell or offer to sell the “casing” or "production tubular member” and that Cameron is entitled to partial summary judgment on this ground. . This ruling makes unnecessary consideration of Cameron's contention that partial summary judgment should be granted on the ground that the "lock collar” or "lock ring” of the TSWS is not legally equivalent to the "lock screws” of Claims 13, 14, 31 and 86 of the '925 Patent.