National Oilwell Varco, L.P. v. Omron Oilfield & Marine, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NATIONAL OILWELL VARCO, L.P.,
Plaintiff-Appellant
v.
OMRON OILFIELD & MARINE, INC.,
Defendant-Appellee
______________________
2015-1406
______________________
Appeal from the United States District Court for the
Western District of Texas in No. 1:12-cv-00773-SS, Judge
Sam Sparks.
______________________
Decided: January 25, 2017
______________________
JOHN WESLEY RALEY III, Raley & Bowick, LLP, Hou-
ston, TX, argued for plaintiff-appellant. Also represented
by ROBERT MCGEE BOWICK, JR., BRADFORD TURNER
LANEY.
MATTHEW B. LOWRIE, Foley & Lardner LLP, Boston,
MA, argued for defendant-appellee. Also represented by
KIMBERLY KRISTIN DODD, Milwaukee, WI.
______________________
2 NOV v. OMRON OILFIELD & MARINE, INC.
Before MOORE, CHEN, and HUGHES, Circuit Judges.
CHEN, Circuit Judge.
Plaintiff National Oilwell Varco, L.P. (NOV) filed this
patent case alleging that Defendant Omron Oilfield and
Marine, Inc. (Omron) infringed claims 11 and 14 of U.S.
Patent No. 5,474,142 (’142 Patent). Omron moved to
dismiss the complaint and, in the alternative, for sum-
mary judgment of invalidity and noninfringement. The
district court granted Omron’s motion to dismiss, with
prejudice, finding that NOV lacked standing to assert the
’142 Patent, and awarded attorney fees to Omron based
on the exceptional nature of NOV’s litigation conduct. It
also granted Omron’s alternative motion for summary
judgment of invalidity and noninfringement.
We affirm, in part, and vacate, in part. The parties
agree that this case turns on the proper reading of a
particular asset transfer agreement between two subsidi-
aries, one of them being NOV. We agree with the district
court that NOV lacks standing to assert the ’142 Patent
because the agreement in question did not transfer the
rights to the ’142 Patent to NOV. We find no abuse of
discretion in the district court’s dismissal of this case,
with prejudice, and the award of attorney fees. We vacate
the district court’s grant of Omron’s motion for summary
judgment of invalidity and noninfringement because the
district court had no jurisdiction to rule on the merits
after dismissing this case for lack of standing.
BACKGROUND
Bobbie Bowden is the named inventor on the ’142 Pa-
tent. According to the U.S. Patent & Trademark Office’s
(USPTO) records, the ’142 Patent was assigned twice
since its issuance on December 12, 1995. Bowden as-
signed the ’142 Patent to Wildcat Services, L.P., on Octo-
NOV v. OMRON OILFIELD & MARINE, INC. 3
ber 9, 2001, and Wildcat Services, L.P. assigned the ’142
Patent to MD/Totco, a Division of Varco, L.P., 1 on June
30, 2004. The USPTO’s records show no subsequent
assignment to NOV.
After NOV filed suit against Omron asserting in-
fringement of the ’142 Patent, Omron issued an interroga-
tory to NOV on NOV’s standing to assert the ’142 Patent.
NOV responded that it purchased the ’142 Patent from
Varco, L.P., pursuant to an Asset Contribution Agreement
(ACA) 2 dated January 1, 2006. NOV stated that docu-
ments sufficient to substantiate this transfer would be
produced, including asset purchase agreements and
assignment documents. NOV, however, refused to pro-
duce the ACA, and it instead produced only a document
entitled, “Assistant Secretary’s Certificate.” Omron
sought production of the ACA because the Assistant
Secretary’s Certificate was not an actual assignment and
assigned only “physical assets.” NOV refused to produce
the ACA, stating:
The document is not relevant to any claim or de-
fense in this lawsuit. The Secretary’s Certificate
shows that all assets of Varco, L.P. were sold to
National Oilwell including the ’142 Patent. The
Asset Contribution Agreement would be cumula-
tive and is not needed.
J.A. 4. Omron, in response, filed a motion to dismiss,
arguing that (1) NOV refused to produce the ACA, (2) the
1 NOV and Varco, L.P. are separate subsidiaries of
one parent company, National Oilwell Varco, Inc.
2 Although the ACA defines the purchaser as Na-
tional Oilwell, L.P., NOV asserts that National Oilwell,
L.P. changed its name to National Oilwell Varco, L.P. on
December 22, 2005 or January 26, 2006. The record is
unclear on which of these two dates is correct.
4 NOV v. OMRON OILFIELD & MARINE, INC.
Assistant Secretary’s Certificate could not establish
NOV’s standing, and (3) NOV’s standing position was
inconsistent with positions taken in other infringement
litigations relating to the ’142 Patent that Varco, L.P.—
not NOV—owned the ’142 Patent.
In response to Omron’s motion to dismiss, NOV pro-
duced the ACA. The district court denied the motion in a
summary order, without prejudice to re-filing it at a later
date. After reviewing the ACA, Omron refiled its motion
to dismiss, arguing that (1) the ACA was not a present
assignment of assets, (2) even if the ACA were a present
assignment, the ACA includes only “physical assets,”
which would exclude patents, and (3) even if the ACA
were a present assignment and patents could be physical
assets, the ACA did not cover the ’142 Patent.
The district court agreed with Omron, finding that
NOV could not prove ownership of the ’142 Patent as of
the filing date of this case, and dismissed the case, with
prejudice, for lack of standing. It also granted Omron’s
motion for summary judgment of invalidity and nonin-
fringement. Finally, it granted in part Omron’s motion
for attorney fees, finding that NOV’s refusal to produce
the ACA and NOV’s litigation conduct was exceptionally
unreasonable.
DISCUSSION
I. Standard of Review
“Standing is a jurisdictional issue that implicates the
case-or-controversy requirement of Article III.” Drone
Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1292 (Fed. Cir.
2016). “We review de novo a district court’s determina-
tion of standing.” Id. at 1291. “In determining whether a
dismissal should have been with or without prejudice, this
court applies the law of the pertinent regional circuit.”
H.R. Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378,
1384 (Fed. Cir. 2002). The Fifth Circuit “review[s] the
NOV v. OMRON OILFIELD & MARINE, INC. 5
district court’s decision to grant a motion to dismiss with
or without prejudice only for abuse of discretion.” Club
Retro, L.L.C. v. Hilton, 568 F.3d 181, 215 (5th Cir. 2009).
We review a district court’s decision to award attorney
fees for abuse of discretion. Highmark Inc. v. Allcare
Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 1749 (2014).
II. Standing
We begin with standing. “Standing to sue is a thresh-
old requirement in every federal action.” Sicom Sys., Ltd.
v. Agilent Techs., Inc., 427 F.3d 971, 975 (Fed. Cir. 2005).
“Standing must be present at the time the suit is
brought.” Id. at 975–76. “The party bringing the action
bears the burden of establishing that it has standing.” Id.
at 976.
“Before a court may exercise jurisdiction over a patent
infringement action, it must be satisfied that, ‘in addition
to Article III standing, the plaintiff also possesse[s] stand-
ing as defined by § 281 of the Patent Act.’” Drone Techs.,
838 F.3d at 1292 (quoting Alps S., LLC v. Ohio Willow
Wood Co., 787 F.3d 1379, 1382 (Fed. Cir. 2015)). “Under
§ 281, a patentee shall have remedy by civil action for
infringement of his patent.” Id. (internal quotation marks
omitted). “A patentee is not limited to the person to
whom the patent issued, but also includes successors in
title to the patentee.” Id. (internal quotation marks
omitted). “A party may become the successor in title to
the original patentee by assignment . . . and then may sue
for infringement in its own name.” Id. “Applications for
patent, patents, or any interest therein, shall be assigna-
ble in law by an instrument in writing.” 35 U.S.C. § 261;
see also Sky Techs. LLC v. SAP AG, 576 F.3d 1374, 1379
(Fed. Cir. 2009) (“The Federal Patent Act requires that all
assignments of patent interest be in writing.”).
The district court properly focused its attention on the
ACA. The ACA describes Varco L.P.’s “desire[]” and
“agreement” to contribute assets to a “Partnership” de-
6 NOV v. OMRON OILFIELD & MARINE, INC.
fined as National Oilwell, L.P. 3 The ACA provides, in
relevant part:
WHEREAS, Contributor desires to contribute all
of its physical assets, including but not limited to
those assets generally described in Exhibit A (the
“Property”), excluding any capital or common
stock of subsidiaries or owned companies.
....
1.1 Agreement to Contribute Property and Issue
Partnership Interest. For and in consideration of
the mutual benefits enjoyed by one another under
this Agreement, Contributor agrees to transfer
and convey or assign all of Contributor’s right, ti-
tle, and interest in and to the Property to Part-
nership, and Partnership agrees to accept the
contribution and conveyance of the Property and,
in exchange therefore, to issue a limited partner-
ship interest in Partnership to the Contributor,
pursuant to the terms and conditions set forth in
this Agreement.
1.2 Conveyance of the Property. Concurrently
with the execution of this Agreement, Contributor
shall convey, assign, and transfer the Property to
Partnership, subject only to the liens, encum-
brances, security interests, restrictions, and
claims of public record or referenced on Exhibit A.
Contributor shall execute and deliver any and all
documents or instruments as may be required, or
which may be reasonably requested, by Partner-
ship in order to effect and memorialize such con-
veyance, assignment, and transfer.
3 As noted, National Oilwell, L.P. was purportedly
renamed to NOV in either December 2005 or January
2006.
NOV v. OMRON OILFIELD & MARINE, INC. 7
J.A. 3906. The ACA contains no reference to patents
except within Exhibit A. Exhibit A is a lengthy spread-
sheet with columns corresponding to various divisions of
Varco, L.P and rows corresponding to various assets,
liabilities, equities, and revenues. The only entry related
to patents is a row titled “Patents – Patents.” J.A. 9.
Every column in this row has an entry of “0” except for a
division of Varco, L.P. known as Varco LP Brandt, which
has an entry of “129,647.” J.A. 9, 15.
The district court held that the ACA represented
merely a promise by Varco, L.P. to assign rights in the
future. It also held that even if the ACA were a present
assignment, the ACA covered only “physical assets,”
which did not include the ’142 Patent because patents are
not physical assets. It finally held that even if the ACA
were a present transfer of assets that included patents,
the ACA did not cover the ’142 Patent because the Exhibit
A spreadsheet to the ACA discloses a “0” for the entry
where the row for patents intersects with the column for
MD/Totco, the division of Varco, L.P. that purportedly
assigned the ’142 Patent to NOV.
Because we agree with the district court that the ACA
did not transfer the ’142 Patent from the MD/Totco divi-
sion of Varco, L.P. to NOV, we conclude that the district
court properly dismissed this case for lack of standing.
As an initial issue, we first note that “state law gov-
erns the interpretation of contracts generally.” DDB
Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d
1284, 1290 (Fed. Cir. 2008). The ACA provides that “the
substantive internal laws of the State of Delaware” con-
trol. J.A. 13. Under Delaware law, we “review[] the trial
court’s interpretation of contract terms de novo.” BLGH
Holdings LLC v. enXco LFG Holding, LLC, 41 A.3d 410,
414 (Del. 2012). When “the plain language of a contract is
unambiguous i.e., fairly or reasonably susceptible to only
one interpretation, we construe the contract in accordance
8 NOV v. OMRON OILFIELD & MARINE, INC.
with that plain meaning and will not resort to extrinsic
evidence to determine the parties’ intentions.” Id.The district court correctly interpreted the ACA to
find that its plain meaning did not include transferring
the ’142 Patent from Varco, L.P. to NOV because the
Exhibit A spreadsheet shows a “0” where the patents row
intersects with the MD/Totco column. J.A. 14–15. NOV
does not dispute that MD/Totco owned the ’142 Patent
before the execution of the ACA. NOV only argues that
Exhibit A was not an exhaustive list of assets, but simply
an example of the types of assets owned by Varco, L.P.
and transferred to NOV.
We agree with the district court that, even if Exhibit
A discloses merely an example of the types of transferred
assets, NOV does not account for the “0” entry for
MD/Totco’s patents, showing that no patents were trans-
ferred from MD/Totco to NOV through the ACA. We also
agree that the district court correctly rejected NOV’s
argument that the numerical values in Exhibit A repre-
sent revenue from assets, rather than the asset values,
because other non-revenue-generating entries in Exhibit
A contain non-zero entries—including, e.g., $8.7 million
for “Goodwill” and $44.5 million for “Furniture and Fix-
tures”—and a separate section of Exhibit A is set aside for
revenues. J.A. 16.
We affirm the district court’s conclusion that NOV
lacks standing to assert the ’142 Patent because a plain
reading of the ACA reveals that it did not transfer the
’142 Patent from MD/Totco to NOV. Because we affirm on
this basis, we do not reach the district court’s alternate
findings that the ACA was not a present assignment or
that patents are not physical assets.
III. Dismissal with Prejudice
“Ordinarily, dismissal for lack of standing is without
prejudice.” Fieldturf, Inc. v. Sw. Recreational Indus., Inc.,
NOV v. OMRON OILFIELD & MARINE, INC. 9
357 F.3d 1266, 1269 (Fed. Cir. 2004). “On occasion,
however, a dismissal with prejudice is appropriate, espe-
cially where ‘it [is] plainly unlikely that the plaintiff [will
be] able to cure the standing problem.’” Id. “[I]t is for the
district court to complete these inquiries, and then deter-
mine, in its discretion, whether to dismiss the case with or
without prejudice.” Id. at 1270.
The district court dismissed this case with prejudice
because NOV did not present a consistent picture of
ownership of the ’142 Patent throughout (1) the USPTO
records, (2) this case, and (3) three separate previous
litigations including a case against Pason Systems USA
Corp. (the Pason case), a case in Canada (the Canadian
case), and a case against Auto-Dril (the Auto-Dril case).
In the Pason case and the Canadian case, Varco, L.P.
alleged that it owned the ’142 Patent or the Canadian
counterpart to the ’142 patent, even after the execution of
the ACA, and in the Auto-Dril case, NOV settled when
Auto-Dril presented the same lack of standing argument
that Omron raises here. We affirm because we find no
abuse of discretion in the district court’s analysis.
The district court provided several examples of NOV’s
behavior evidencing a pattern of highly questionable
conduct. We agree with the district court that even if
NOV had been confused about the ownership of the ’142
Patent, NOV was put on notice about its potential lack of
standing in October 2011, when Auto-Dril filed a motion
to dismiss in the Auto-Dril case for lack of standing. In
the Auto-Dril case, NOV also initially relied on the Assis-
tant Secretary’s Certificate, and NOV settled with Auto-
Dril after Auto-Dril responded with the same lack of
standing argument advanced by Omron here. Yet nine
months after settling with Auto-Dril, NOV filed this case
against Omron, without fixing the problem of a lack of
written assignment of the ’142 Patent from Varco, L.P. to
NOV. NOV made numerous conflicting representations in
this case, including stating that the ACA was not relevant
10 NOV v. OMRON OILFIELD & MARINE, INC.
to any claim or defense in this case, or that it was cumu-
lative and not needed, yet NOV now relies on the ACA as
the purported assignment document. Even NOV’s Rule
30(b)(6) designee did not know whether Exhibit A to the
ACA covered the ’142 Patent. We agree that NOV was
aware of the “web of confusion it was weaving” as early as
October 2011, more than nine months before it filed this
case, yet it failed to “fill[] the void that has now consumed
this matter: the absence of a written assignment, as
required by law, of the ’142 Patent from Varco, L.P. to
NOV.” J.A. 3, 22–23. Had NOV been able to fix the
standing problem, “it would have done so a long time ago
and certainly before August 2012,” and it “at no point …
even made an attempt to explain the blatant inconsisten-
cies” in its previous positions on standing. J.A. 23. We
agree and find no abuse of discretion because the district
court’s decision to dismiss this case with prejudice was
not clearly unreasonable, arbitrary, or fanciful, or based
on an erroneous conclusion of law or fact.
IV. Motion for Attorney Fees
After the district court dismissed the case, Omron
filed a motion for attorney fees and costs, which the
district court granted, in part. Although the district court
did not find NOV’s initial filing of the lawsuit or NOV’s
infringement positions exceptional, it did find exceptional-
ly unreasonable “NOV’s refusal to produce the ACA when
Omron specifically requested the document,” and “NOV’s
maintaining of this lawsuit once it was clear NOV lacked
standing.” J.A. 55, 57.
We find no abuse of discretion in the district court’s
award of attorney fees. “[A]n ‘exceptional’ case is simply
one that stands out from others with respect to the sub-
stantive strength of a party’s litigating position (consider-
ing both the governing law and the facts of the case) or
the unreasonable manner in which the case was litigat-
ed.” Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
NOV v. OMRON OILFIELD & MARINE, INC. 11
134 S. Ct. 1749, 1756 (2014). “District courts may deter-
mine whether a case is ‘exceptional’ in the case-by-case
exercise of their discretion, considering the totality of the
circumstances.” Id. Bad faith is not necessary because “a
case presenting either subjective bad faith or exceptional-
ly meritless claims may sufficiently set itself apart from
mine-run cases to warrant a fee award.” Id. at 1757.
The district court acted well within its discretion in
finding this case exceptionally meritless compared with
mine-run cases to warrant an award of attorney fees. It
found that NOV’s offer of the Assistant Secretary’s Certif-
icate, a one-page document tangential to the underlying
transaction, was disingenuous. It found that NOV’s “legal
arguments” were “remarkably weak,” and “NOV offered
no credible arguments to rebut Omron’s grounds for
dismissal.” J.A. 59. It also explained that this case stood
out from the many other patent cases that the district
court had handled because NOV was on notice of the
standing issue, yet was not forthcoming on addressing or
acknowledging it, even when Omron specifically request-
ed the ACA, and NOV intentionally withheld the ACA,
unreasonably claiming it was not relevant to any claim or
defense in this case.
NOV also objects to the period over which the district
court awarded attorney fees. NOV seeks to reduce the
attorney fees award to correspond to the total “delay”
between March 17, 2014, when NOV objected to produc-
ing the ACA, and May 9, 2014, when NOV actually pro-
duced the ACA. Omron responds that the district court
properly exercised its discretion to award all attorney fees
starting from the date that NOV refused to produce the
ACA. We agree with Omron.
The district court did not award fees for the entire lit-
igation, but only starting from March 2014, the date of
NOV’s decision to withhold the ACA. NOV’s subsequent
production of the ACA did not cure the problem because
12 NOV v. OMRON OILFIELD & MARINE, INC.
the ACA itself “totally undermined” NOV’s position. J.A.
59. The district court aptly explained that “NOV at-
tempted to distract the Court with extrinsic evidence but
to no avail,” and NOV presented “no credible arguments”
“in what was not a close call.” J.A. 59. We find no abuse
of discretion in how the district court chose to calibrate
the period of the litigation for which Omron was entitled
to be awarded its attorney fees.
V. Invalidity and Noninfringement
Because the district court properly dismissed this case
based on NOV’s lack of standing to assert the ’142 Patent,
the district court had no jurisdiction to rule on Omron’s
motion for summary judgment. J.A. 46. In Steel Co. v.
Citizens for a Better Environment, the Supreme Court
rejected “the position embraced by several Courts of
Appeals, which f[ou]nd it proper to proceed immediately
to the merits question, despite jurisdictional objections, at
least where (1) the merits question is more readily re-
solved, and (2) the prevailing party on the merits would
be the same as the prevailing party were jurisdiction
denied.” 523 U.S. 83, 94 (1998). The Supreme Court
explained that “[w]ithout jurisdiction the court cannot
proceed at all in any cause.” Id. “Jurisdiction is power to
declare the law, and when it ceases to exist, the only
function remaining to the court is that of announcing the
fact and dismissing the cause.” Id. As explained above,
NOV lacked standing to assert the ’142 Patent. The
district court thus lacked jurisdiction to hear the case and
it was without power to reach any merits decisions. See
Bd. of Trs. of Leland Stanford Junior Univ. v. Roche
Molecular Sys., Inc., 583 F.3d 832, 848–49 (Fed. Cir.
2009) (vacating a district court’s grant of summary judg-
ment of invalidity and remanding with instructions to
dismiss Stanford’s claim for lack of standing because “the
district court lacked jurisdiction over Stanford’s infringe-
ment claim and should not have addressed the validity of
the patents”). Therefore, we vacate the district court’s
NOV v. OMRON OILFIELD & MARINE, INC. 13
grant of Omron’s motion for summary judgment of inva-
lidity and noninfringement of the ’142 Patent. J.A. 46.
CONCLUSION
We affirm the district court’s judgment that NOV
lacks standing to assert the ’142 Patent because the ACA
did not transfer the ’142 Patent from MD/Totco to NOV
based on the “0” listed in Exhibit A to the ACA. Because
we affirm on this basis, we need not reach the district
court’s additional grounds for why the ACA may not have
transferred the ’142 Patent to NOV. We find no abuse of
discretion in the district court’s dismissal of this case with
prejudice or grant of attorney fees, and we affirm those
decisions.
We vacate the district court’s grant of Omron’s motion
for summary judgment of invalidity and noninfringement.
AFFIRMED-IN-PART AND VACATED-IN-PART