Onesubsea Ip Uk Limited v. Fmc Technologies, Inc.

Case: 22-1099 Document: 50 Page: 1 Filed: 05/23/2023
United States Court of Appeals
for the Federal Circuit
______________________
ONESUBSEA IP UK LIMITED, ONESUBSEA UK
LIMITED,
Plaintiffs/Counterclaim Defendants-Appellees
CAMERON INTERNATIONAL CORPORATION,
ONESUBSEA LLC,
Counterclaim Defendants-Appellees
v.
FMC TECHNOLOGIES, INC.,
Defendant/Counterclaimant-Appellant
______________________
2022-1099
______________________
Appeal from the United States District Court for the
Southern District of Texas in No. 4:16-cv-00051, Judge Al-
fred H. Bennett.
______________________
Decided: May 23, 2023
______________________
WILLIAM H. BURGESS, Kirkland & Ellis LLP, Washing-
ton, DC, argued for OneSubsea UK Limited, OneSubsea IP
UK Limited, Cameron International Corporation, and One-
Subsea LLC. Also represented by GREGG LOCASCIO, SEAN
M. MCELDOWNEY, JOHN C. O’QUINN.
MICHAEL VINCENT, Fish & Richardson P.C., Dallas, TX,
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2 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
argued for FMC Technologies, Inc. Also represented by
MATT COLVIN, BRET THOMAS WINTERLE; JOHN A.
DRAGSETH, Minneapolis, MN.
______________________
Before MOORE, Chief Judge, CLEVENGER and DYK, Circuit
Judges.
CLEVENGER, Circuit Judge.
FMC Technologies, Inc. (“FMC” or “Defendant”) ap-
peals from the final judgment of the United States District
Court for the Southern District of Texas denying its motion
under 35 U.S.C. § 285 for attorneys’ fees and non-taxable
costs. OneSubsea IP UK Ltd. v. FMC Techs., Inc., No. 4:16-
CV-51, 2021 WL 5121651 (S.D. Tex. Sept. 27, 2021). Be-
cause the district court did not abuse its discretion in deny-
ing FMC’s § 285 motion, we affirm.
BACKGROUND
FMC and OneSubsea IP UK Limited, OneSubsea UK
Limited, Cameron International Corporation, and OneSub-
sea LLC (together, “OSS” or “Plaintiffs”) are competitors in
the subsea oil and gas exploration and extraction industry.
Both parties own patents that cover various structures for
subsea oil and gas recovery, known in the industry as
“Christmas trees” or “trees.” The structures took their
name from their original appearance: mounted at the top
of a well as the well exits the earth and composed of an
assembly of pipes with attached valves and fittings, the
structures loosely resembled a Christmas tree. Modern
subsea trees are housed in generally square structures.
OSS brought suit with jury demand in the United
States District Court for the Eastern District of Texas
against FMC in March 2015, alleging that FMC’s En-
hanced Vertical Deepwater Tree equipped with FMC’s Re-
trievable Choke and Flow Module (“Flow Module”)
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ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 3
infringes ninety-five claims across ten OSS patents. 1 FMC
asserted counterclaims against OSS alleging infringement
of twenty-nine claims across two FMC patents. 2 FMC
moved to transfer the case to the Southern District of
Texas, a more convenient forum where both parties main-
tained their headquarters. In December 2015, FMC’s
transfer motion was granted over OSS’s objection and as-
signed to Judge Nancy Atlas.
The OSS patents relate to the subsea recovery of pro-
duction fluids from an oil or gas well having a Christmas
tree. See, e.g., ’687 Patent col. 1 ll. 20–21. The OSS patents
explain that in some circumstances, it is desirable to con-
duct subsea processing of fluids that pass through an oper-
ating Christmas tree, such as by adding chemicals to and
separating water and sand from the hydrocarbons. See,
e.g., id. col. 5 l. 66–col. 6 l. 3. In other circumstances, it is
desirable to increase the pressure of the fluids flowing
through the production line, by addition of a pressure-
boosting pump. See, e.g., id. col. 1 ll. 47–52. Installing the
required structure to achieve such subsea processing is a
difficult operation, requiring cutting existing pipes, in-
stalling new pipes, and risking environmental hazards
from release of fluids into the ocean. See, e.g., id. col. 1
ll. 52–55. The OSS patents describe and claim various ap-
paratus and methods for diverting fluids in a Christmas
tree to enable subsea processing of the fluids. See generally
id. The infringement question in the suit boiled down to
1 Patent Nos. 6,637,514, 7,111,687, 8,066,076,
8,122,948, 8,272,435, 8,281,864, 8,540,018, 8,573,306,
8,746,332, and 8,776,893 (together, the “OSS Patents”).
2 FMC’s counterclaims were later severed and re-
solved in OSS’s favor. See FMC Techs., Inc. v. OneSubsea
IP UK Ltd., No. 18-2459, 2018 WL 5014147 (S.D. Tex. Oct.
16, 2018).
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4 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
whether fluid flows through FMC’s accused device as re-
quired by the OSS Patents.
Claim 1 of the ’687 Patent, which is representative for
purposes of this appeal and which defines specific claimed
flowpaths, reads:
A tree for a well, having: a first flowpath; a second
flowpath; and a flow diverter assembly providing a
flow diverter means to divert fluid from a first por-
tion of a first flowpath to the second flowpath, and
a 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 flow-
path, the second flowpath and the second portion of
the first flowpath form a conduit for continuous
passage of fluid; wherein the flow diverter assem-
bly is located in the first flowpath and separates
the first portion of the first flowpath from the sec-
ond portion of the first flowpath.
col. 17 ll. 8–19.
The parties could not agree on the precise meaning for
the many iterations of “divert” in the asserted claims. OSS
argued that the term needed no construction, but if con-
struction was necessary, the term should be understood as
“directing” or “direct,” as described in OSS’s tutorial.
J.A. 2293, 2299. FMC argued that the references to divert-
ing or divert should be understood to require “directing to
an alternate passage” or “direct to an alternate passage,”
respectively. J.A. 2293, 2299. After conducting a Mark-
man hearing, the district court issued its Markman Order
on July 12, 2016, construing “[t]he term ‘divert’ or a form
of that word . . . to mean that ‘the direction of the fluid’s
flow is forced to change from its current flowpath to a dif-
ferent flowpath.’” J.A. 2773–74. The district court empha-
sized that mere changes in direction in a flowpath did not
satisfy the “divert” claim limitations: in order to “divert”
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ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 5
under the claims, the fluid's flow must be forced from one
flowpath to another flowpath. J.A. 2774. The district
court, however, did not elaborate on what it meant by "cur-
rent flowpath," and the parties had not mentioned the con-
cept of a current flowpath in the Markman hearing.
Three weeks after the district court's Markman Order,
FMC moved for summary judgment of noninfringement.
According to FMC, its accused tree has only one continuous
flowpath, running from the wellhead through the tree to
the production line, and, consequently, "OSS cannot show
any change from a current flowpath to a different flow-
path." J.A. 2787. FMC produced an image of its subsea
system structure to illustrate the flowpath within its sys-
tem, as shown below. J .A. 2794-95 ("Flow to the
PRODUCTION LINE" and "Flow from the WELLHEAD"
added for clarity).
SUB SEA SYSTEM STRUCTUR.E
OSS opposed FMC's summary judgment motion, argu-
ing that a genuine issue of material fact existed as to
whether FMC's accused tree infringes the "divert" limita-
tions of the asserted claims. OSS supported its argument
with an expert declaration by Mr. Boyadjieff that referred
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6 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
to FMC’s internal documents and diagrams to identify the
alleged “current” and “different” flowpaths in the accused
FMC tree. J.A. 6504–06. OSS argued specifically: (a) the
flowpath in FMC’s accused device from the wellhead to its
multi-bore hub is the “first portion of a first flowpath” (i.e.,
the “current flowpath” in the district court’s definition of
“divert”), (b) the flowpath leaving from and returning to
FMC’s multi-bore hub is the “second flowpath” (i.e., the
“different flowpath” in the district court’s definition of “di-
vert”), and (c) the flowpath from FMC’s multi-bore hub to
the production line is the “second portion of the first flow-
path.” OSS’s expert’s mapping of the district court’s claim
construction onto FMC’s accused tree emphasized that
FMC’s multi-bore hub serves to force the fluid’s flow from
the current flowpath to the different flowpath (i.e., diverts
the fluid’s flow).
Moreover, OSS stressed that the claims require a “con-
tinuous passage of fluid” from the first portion of the first
flowpath through the second flowpath and through the sec-
ond portion of the first flowpath, meaning FMC could not
escape infringement just because its accused device had a
continuous flowpath. By mapping the flow of fluid through
FMC’s accused tree onto claim 1 of the ’687 Patent, OSS at
least believed that it had raised a genuine issue of material
fact as to whether FMC’s accused tree infringes the as-
serted claims.
Before the district court acted on FMC’s summary
judgment motion, the parties learned of some results in co-
pending proceedings at the United States Patent and
Trademark Office. FMC had previously filed for inter
partes review (“IPR”) for many of the OSS Patents, and
OSS had suggested that a stay of the district court proceed-
ings might be prudent. On August 9, 2016, FMC advised
the district court that the Patent Trial and Appeal Board
(“PTAB”) had instituted IPR proceedings on all asserted
claims for three of the OSS Patents, with an institution de-
cision on a fourth challenged patent expected soon.
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ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 7
J.A. 6034. As such, FMC noted that ordinarily a stay of
district court proceedings would be agreeable but was un-
necessary in the light of the pending summary judgment
motion. J.A. 6035–36. FMC argued that, on the record al-
ready before the district court, no reasonable jury could
find infringement by FMC. J.A. 6035. FMC urged the dis-
trict court to grant its motion for summary judgment of
noninfringement without delay. J.A. 6035, 6040.
On August 30, 2016, the district court, having consid-
ered the record before it and the ongoing PTAB proceed-
ings, entered an order staying proceedings in the case.
Regarding FMC’s argument that it would be prejudiced by
a stay because the district court “should grant FMC’s Mo-
tion for Summary Judgment without delay,” the district
court declined to grant FMC’s motion and instead re-
sponded: “This argument is unpersuasive because it is un-
clear from the current record whether FMC’s dispositive
motion would be granted.” J.A. 6582.
The case remained stayed for nearly three years, dur-
ing which the PTAB invalidated seventy-six claims of the
OSS Patents challenged by FMC, and this court affirmed
the PTAB decisions. See OneSubsea IP UK Ltd. v. FMC
Techs., Inc., 771 F. App’x 482, 482–83 (Fed. Cir. 2019). The
claims now asserted here were not at issue in the IPR pro-
ceedings. On July 22, 2019, the district court lifted the stay
and reinstated the case. Thereafter, the district court or-
dered the parties to mediate their dispute, and when that
effort failed to resolve the case, the parties and the district
court discussed the going-forward options at a pre-trial
hearing on February 11, 2020, which included whether to
proceed with FMC’s validity challenges or to focus on
FMC’s infringement challenge. J.A. 6919–29.
At the hearing, OSS reminded the district court that
FMC’s motion for noninfringement had been briefed origi-
nally in 2016, when OSS argued that the motion should be
denied because a genuine issue of material fact exists.
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8 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
J.A. 6925. In response, the district court agreed that OSS
“had an expert to raise a fact issue.” J.A. 6926. Because
OSS viewed FMC’s 2016 motion as based only on attorney
argument, OSS argued that additional expert discovery
was necessary to refresh FMC’s 2016 motion. Id. FMC’s
counsel doubted the need for more discovery, pointing to
the 3,200 record pages illustrating differences between de-
signs of the accused device and the patented devices.
J.A. 6932–34. In response, the district court stated, “And
you really think I’m going to be able to grant summary
judgment on that?” J.A. 6934. The hearing concluded after
the parties agreed to additional briefing that would lead to
a renewed summary judgment motion by FMC. For rea-
sons unexplained in the record, OSS retained a different
expert, Mr. Voss, to provide support for its opposition to
FMC’s renewed motion for summary judgment of nonin-
fringement.
FMC’s renewed motion for summary judgment, filed on
March 24, 2020, repeated the arguments made in its origi-
nal motion, asserting that its accused tree had but a single
continuous flowpath through it, and thus did not meet the
“divert” limitations, which require a different flowpath.
OSS’s opposition brief relied entirely on Mr. Voss’s expert
report, which essentially repeated Mr. Boyadjieff’s earlier
analysis and arguments that the Flow Module was a sepa-
rate flowpath, but placed strong emphasis on the fact that
the Flow Module in FMC’s tree is retrievable, meaning that
it can be removed and replaced with different structures.
FMC’s reply to OSS’s opposition brief focused on OSS’s
emphasis on the retrievability of the Flow Module, as
stated in Mr. Voss’s expert report. FMC characterized
Mr. Voss’s infringement theory as depending on the re-
trievability of the Flow Module, because OSS needed to an-
alyze the FMC tree without the Flow Module in order to
find the required flow diverter means (alleged to be FMC’s
multi-bore hub) but needed to analyze the FMC tree with
the Flow Module installed to find the required second
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ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 9
flowpath and thus infringement. J.A. 9484. FMC argued
that Mr. Voss’s treatment of FMC’s tree and Flow Module
as separate structures violated the parties’ stipulated con-
struction of the patent term “tree.” J.A. 9484–85. The
agreed construction of “tree” was “an assembly of pipes,
valves and fittings installed between the wellhead and the
[production line]” and does not contemplate breaking a tree
into separate parts. J.A. 2292. FMC argued that
Mr. Voss’s violation of the definition of tree was even more
egregious, because during his deposition, when Mr. Voss
was asked, “[w]hen you were performing your analysis in
this case, did you use and apply the agreed construction of
the term ‘tree?,’’’ he replied, “I must admit, I don’t remem-
ber seeing a stated definition for ‘tree.’” J.A. 9504. Conse-
quently, FMC argued that Mr. Voss’s expert report
amounted to “ipse dixit opinions with no guiding principles
or methods.” J.A. 9492.
Five days after FMC filed its response to OSS’s opposi-
tion brief, the district court sua sponte issued an order,
which noted that FMC’s response appeared to challenge
the admissibility of Mr. Voss’s expert report and ordered
FMC to move separately to exclude the expert report if
FMC challenged its admissibility. J.A. 9868–69. In due
course, FMC moved to exclude Mr. Voss’s expert report un-
der Federal Rule of Evidence 702 and Daubert v. Merrell
Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).
J.A. 9870–99.
On December 10, 2020, the district court entered a
combined Memorandum and Order addressing and grant-
ing FMC’s pending motions to exclude OSS’s expert’s re-
port and to grant summary judgment of noninfringement.
OneSubsea IP UK Ltd. v. FMC Techs., Inc., No. CV 4-16-
0051, 2020 WL 7263266, at *9 (S.D. Tex. Dec. 10, 2020).
The district court agreed with FMC that OSS’s expert’s
analysis was based on the Flow Module as a separate as-
sembly from the tree, which violated the definition of “tree”
and failed to identify the different flowpath required by the
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10 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
“divert” limitations of the OSS Patents. Id. at *5, *9. The
district court found that “Voss’s misapplication of the es-
tablished claim constructions in this case render his opin-
ions excludable under Rule 702 and Daubert as irrelevant
and not likely to assist the trier of fact.” Id. at *6. Without
Mr. Voss’s evidence, the district court found that “OSS has
failed to present admissible evidence of more than a single
flowpath through . . . [FMC’s Enhanced Vertical Deep-
water Tree equipped with FMC’s Flow Module] such that
the fluid flow can be forced to change direction from its cur-
rent flowpath to a different flowpath.” Id. at *9. Because
OSS thus failed to raise a genuine issue of material fact
regarding whether FMC’s accused devices met the “divert”
limitations of the OSS Patents, the district court granted
summary judgment to FMC and entered a final judgment
in FMC’s favor, which OSS elected not to appeal.
J.A. 10671–72; Appellee’s Br. 20. The district court noted
that it did not base its ruling “on a consideration of whether
Voss’s infringement opinions are correct or incorrect, or
whether competing opinions are more persuasive.” One-
Subsea, 2020 WL 7263266, at *7. Instead, the district court
based “its ruling on the absence of sufficient relevance and
reliability, which render the [Mr. Voss] opinions unlikely
to assist the jury.” Id.On January 11, 2021, FMC filed a motion for Attorneys’
Fees and Non-Taxable Costs under 35 U.S.C. § 285, which
provides that a district court “in exceptional cases may
award reasonable attorney fees to the prevailing party.”
The Supreme Court defined an exceptional case under
§ 285 as “one that stands out from others with respect to
the substantive strength of a party’s litigating position
(considering both the governing law and the facts of the
case) or the unreasonable manner in which the case was
litigated.” Octane Fitness, LLC v. Icon Health & Fitness,
Inc., 572 U.S. 545, 554 (2014). District courts are directed
to determine if a particular case is exceptional on a case-
by-case basis, in the exercise of the district court’s
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ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 11
discretion, taking account of the totality of the circum-
stances. Id. A § 285 movant must prove its case by a pre-
ponderance of the evidence. Id. at 557–58.
FMC’s § 285 motion argued that this case demon-
strates that OSS’s “substantively weak infringement
claims” and “litigation misconduct,” J.A. 10680, satisfy the
test for an exceptional case, J.A. 10685–706. Regarding
the alleged substantive weakness, FMC argued that the
district court’s Markman Order foreclosed any legitimate
diverter infringement claims going forward, thus making
OSS’s litigation position on infringement objectively base-
less. FMC also argued separately that the substantive
weakness of OSS’s infringement claims is shown by OSS’s
failure to produce any admissible evidence in support of its
position. With regard to litigation misconduct, FMC
faulted OSS for presenting an expert witness who disre-
garded the district court’s claim constructions and for mis-
representing to FMC which of the infringement claims had
been dropped throughout the litigation. FMC alleged ad-
ditional litigation misconduct by OSS as unreasonably pro-
longing the case by (1) filing suit originally in the Eastern
District of Texas, (2) not promptly providing final conten-
tions of infringement, (3) making late-stage changes to its
infringement theory, and (4) ignoring the import of the
PTAB rulings.
OSS responded to the charge of a substantive weakness
based solely on the Markman Order by emphasizing that
FMC’s 2016 summary judgment motion was not granted
when the district court stated that it was unclear from the
record that FMC’s motion would be granted. For OSS, the
unwillingness of the district court to end the case following
the Markman Order undermined FMC’s assertion that the
infringement case was so objectively baseless in light of the
claim constructions that OSS’s continuation made the case
exceptional under Octane Fitness. Although OSS’s evi-
dence—Mr. Voss’s expert report—was ultimately found in-
admissible, OSS argued that the evidence had been
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12 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
adduced in good faith. As for FMC’s allegations of litiga-
tion misconduct, OSS pointed out that FMC only raised a
challenge to Mr. Voss’s expert report for the first time in
its reply to OSS’s response to FMC’s 2020 motion for sum-
mary judgment, and that OSS had not misled FMC about
which claims had been dropped. As to FMC’s allegations
that OSS had unreasonably prolonged the litigation, OSS
pointed out that FMC did not object initially to the case
proceeding in the Eastern District of Texas, and even filed
its counterclaims in that district, agreeing that venue was
proper there. J.A. 10909. OSS noted that FMC had de-
manded that OSS produce its infringement contentions be-
fore the date required by the district court’s scheduling
order, and that in any event FMC was on notice of OSS’s
infringement contentions as early as August of 2016 when
it responded to FMC’s initial motion for summary judg-
ment. OSS denied changing its infringement theory, by
pointing to its briefing on the 2016 summary judgment mo-
tion, where it described FMC’s Flow Module as “separate”
and “retrievable,” and pointed out that the first portion of
the first flowpath is identified “before a Flow Module is in-
stalled.” J.A. 10934–35. Finally, OSS responded to FMC’s
charge that OSS engaged in litigation misconduct by refus-
ing to reevaluate its case in light of the PTAB decisions—
which invalidated certain diverter claims in patents other
than the diverter claims before the district court in 2020—
by pointing out that the patents before the district court in
2020 were different from the ones before the PTAB, and the
PTAB decisions relied on evidence different from that pre-
sented to the district court. J.A. 10935.
Briefing on FMC’s § 285 motion concluded on March 2,
2021, and two days later, the district court announced that
the case had been reassigned to the docket of Judge Alfred
H. Bennett, following Judge Atlas’s retirement.
J.A. 11169. The only remaining matter on the case docket
was FMC’s § 285 motion. FMC raised no objection to hav-
ing Judge Bennett rule on the motion during the six
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ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 13
months between the case reassignment and Judge Ben-
nett’s decision on the motion on September 27, 2021.
Stating and applying the test set by Octane Fitness, the
district court denied FMC’s § 285 motion. OneSubsea,
2021 WL 5121651, at *2–5. The district court flatly re-
jected FMC’s view that OSS’s case was objectively baseless
going forward after the claim construction order: “The
Court cannot say that Plaintiffs’ infringement claims were
‘objectively baseless’ after the court released its Markman
Order, or that Plaintiffs should have recognized such, when
the Court could not determine the same despite the benefit
of its [Markman] Order, Defendant’s Motion for Summary
Judgment of Non-Infringement, and Plaintiffs’ Response.”
Id. at *3. The district court also rejected FMC’s contention
that rejection of OSS’s evidence, which was based on
Mr. Voss’s opinions, demonstrated the substantive weak-
ness of OSS’s case, noting that FMC offered no case in
which “a court awarded fees based on a party’s offering of,
and primary reliance on, evidence that was ultimately
found to be inadmissible.” Id.The district court rejected FMC’s claim of litigation
misconduct on account of Mr. Voss’s failure to have recog-
nized the parties’ stipulated construction of “tree,” because
FMC raised the matter late in the litigation—in its reply to
OSS’s opposition to FMC’s summary judgment motion—
and because OSS had argued that the Flow Module was a
removable part of FMC’s tree “rather than its own tree,”
which weighed “against a finding of bad faith.” Id. at *4.
On FMC’s challenge that OSS had misrepresented which
claims had been dropped throughout the litigation, the dis-
trict court found that the evidence showed that OSS pro-
posed dropping certain claims, but not that the parties
reached agreement on OSS’s proposals. Id. The district
court found that the evidence also showed that the parties
made inconsistent statements regarding which claims
were at issue and attempted to remedy those statements.
Id. “Given the large number of patents, claims, and
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14 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
counterclaims at issue in the case,” the three-year stay dur-
ing PTAB proceedings, and additional procedural complex-
ities, the district court rejected this ground of alleged
litigation misconduct. Id.The district court further rejected FMC’s claim that
OSS had unreasonably prolonged the litigation. Id. at *5.
The district court explained that FMC admitted the venue
was proper in the Eastern District of Texas, where FMC
filed its counterclaims, and FMC failed to cite any author-
ity treating opposition to transfer a case to a more conven-
ient forum as litigation misconduct. Id. The district court
found that OSS had not erred with regard to the timing of
presentation of its infringement contentions. Id. The dis-
trict court also rejected FMC’s allegation that OSS had
made late-stage changes in its theory of infringement, not-
ing that OSS’s theory was stated as early as August 2016
in response to FMC’s initial summary judgment motion.
Id. Finally, the district court agreed with OSS that it had
no obligation to revise its litigation strategy just because
the PTAB had invalidated diverter claims in different pa-
tents. Id.In conclusion, the district court denied FMC’s § 285
motion, with its overall reflection on the case:
There is no question that Plaintiffs utilized an ag-
gressive litigation strategy in this case. But it can-
not be said that Defendant’s strategic decisions,
such as the requested IPR proceedings and which
claims to request IPRs for, did not have significant
impacts on the trajectory of this litigation and the
resources expended for it. Industry competitors
zealously advocating their positions often results in
resource- and time-intensive litigation. But that
alone is insufficient to make a case “exceptional,”
and the prevailing competitor is not entitled to fees
simply because it won the hard-fought case. Hav-
ing considered the totality of the circumstances,
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ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 15
the Court finds that Defendant has failed to show
that Plaintiffs’ claims were exceptionally meritless
or that their actions were unreasonable such that
an award of fees and non-taxable costs is war-
ranted under Section 285. Accordingly, the Motion
is hereby DENIED.
Id.
FMC timely appealed the final order denying its § 285
motion, and we have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
A district court may award attorney fees and non-tax-
able costs to the prevailing party if it determines that the
case is exceptional. 35 U.S.C. § 285. A patent case is ex-
ceptional if it “stands out from others with respect to the
substantive strength of a party’s litigating position . . . or
the unreasonable manner in which the case was litigated,”
and “[d]istrict courts may determine whether a case is ‘ex-
ceptional’ in the case-by-case exercise of their discretion,
considering the totality of the circumstances.” Octane Fit-
ness, 572 U.S. at 554. A party seeking fees under § 285
must prove its case by a preponderance of the evidence. Id.
at 557–58. Because whether a patent case is exceptional is
decided as a matter of discretion by a district court, the de-
cision of the district court is reviewed for abuse of discre-
tion. Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572
U.S. 559, 564 (2014). The abuse-of-discretion standard of
review directs the reviewing court to accept the district
court’s decision unless “the district court has made ‘a clear
error of judgment in weighing relevant factors or in basing
its decision on an error of law or on clearly erroneous fac-
tual findings.’” Bayer CropScience AG v. Dow AgroSciences
LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor
Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d
1374, 1377 (Fed. Cir. 1998)); see also Highmark, 572 U.S.
at 563 n.2.
Case: 22-1099 Document: 50 Page: 16 Filed: 05/23/2023
16 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
I
As an initial matter, FMC suggests that we should re-
ject the abuse-of-discretion standard of review required by
Highmark, and instead apply de novo review to the deci-
sion denying its § 285 motion. Its suggestion derives from
one of the Supreme Court’s grounds in Highmark for im-
posing the abuse-of-discretion review standard, which is
the fact that “the district court ‘is better positioned’ to de-
cide whether a case is exceptional . . . because it lives with
the case over a prolonged period of time.” Highmark, 572
U.S. at 564 (quoting Pierce v. Underwood, 487 U.S. 552,
559–60 (1988)). Judge Bennett replaced Judge Atlas at the
end of the case and decided the motion on the written rec-
ord made before Judge Atlas. Because Judge Bennett only
briefly “lived with the case,” FMC believes Judge Bennett
sitting as the district court should be disqualified from ex-
ercising discretion in deciding FMC’s § 285 motion. Appel-
lant’s Br. 38–39. FMC in essence maintains that we are
better positioned than Judge Bennett to decide the merits
of the motion based on the written record made before
Judge Atlas.
FMC overlooks the substantial body of law in which ap-
pellate courts have consistently reviewed successor judges’
decisions on discretionary issues for abuse of discretion. In
an analogous case from the Ninth Circuit, one judge pre-
sided over trial and final judgment before fully retiring
from the bench, and the case was reassigned to a different
judge who subsequently denied a motion for costs, a discre-
tionary matter. Escriba v. Foster Poultry Farms, Inc., 743
F.3d 1236, 1249 (9th Cir. 2014). On appeal, the party that
was denied costs argued the appellate court should review
the district court’s costs order with “skepticism” and “not
afford it the benefit of any deference” because the successor
judge had no more familiarity with the underlying facts
than the appeals court. Id. The Ninth Circuit disagreed,
finding “no reason to apply a heightened standard of re-
view” to the successor judge’s order denying costs and
Case: 22-1099 Document: 50 Page: 17 Filed: 05/23/2023
ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 17
affirmed under the abuse-of-discretion standard. Id. See
also Atl. Specialty Ins. Co. v. Coastal Env’t Grp. Inc., 945
F.3d 53, 63–65 (2d Cir. 2019); United States v. Chapman,
851 F.3d 363, 383 n.11 (5th Cir. 2017); Marantz v. Perma-
nente Med. Grp., Inc. Long Term Disability Plan, 687 F.3d
320, 327 (7th Cir. 2012); United States v. Soto, 48 F.3d
1415, 1421 (7th Cir. 1995); United States v. Bourgeois, 950
F.2d 980, 987–88 (5th Cir. 1992).
Similarly, the circuits have uniformly held that when a
successor judge reconsiders an interlocutory order entered
by the original judge under Federal Rule of Civil Procedure
54(b), the reconsideration decision by the successor judge
receives the same deferential review on appeal as the orig-
inal judge would have received. See, e.g., Stoffels ex rel.
SBC Tel. Concession Plan v. SBC Commc’ns, Inc., 677 F.3d
720, 727–30 (5th Cir. 2012); Rimbert v. Eli Lilly & Co., 647
F.3d 1247, 1251 (10th Cir. 2011); Langevine v. District of
Columbia, 106 F.3d 1018, 1023 (D.C. Cir. 1997); Amarel v.
Connell, 102 F.3d 1494, 1515 (9th Cir. 1996); In re United
States, 733 F.2d 10, 13–14 (2d Cir. 1984).
The only authority FMC cites to support abandonment
of the abuse-of-discretion standard of review in this case
are two outlier cases in which the reviewing court decided
not to apply a deferential standard of review. In both of
those cases, the credibility of witnesses was deemed mate-
rial to the outcome of the cases. In one, Henry A. Knott Co.
v. Chesapeake & Potomac Telephone Co., 772 F.2d 78, 79–
80 (4th Cir. 1985), a magistrate judge who heard witness
testimony that was transcribed recused himself and was
replaced by a judge who made fact findings based on the
testimony as recorded in the transcripts, without giving the
parties an opportunity to object and resubmit evidence.
The reviewing court found the normal clearly erroneous
standard of review for factual findings by the successor
judge was inappropriate because the factual findings de-
pended on credibility determinations. Id. at 87. Because
the successor judge could not assess witness credibility
Case: 22-1099 Document: 50 Page: 18 Filed: 05/23/2023
18 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
based on a review of the transcript, the reviewing court re-
manded the case for a new trial. Id. In the other case,
Bankcard America, Inc. v. Universal Bancard Systems,
Inc., 203 F.3d 477, 479 (7th Cir. 2000), the district court
judge who entered judgment in a jury trial case later as-
sumed senior status and was replaced by a circuit court
judge sitting by designation as a district court judge. The
successor judge granted a motion for a new trial. Id. On
appeal following the new trial, the reviewing court declined
to apply the usual abuse-of-discretion standard of review
to the successor judge’s grant of the motion for a new trial.
Id. at 481. Citing Henry A. Knott, the appellate court found
that customary deference was not warranted given the
“unique circumstances of this case.” Bankcard, 203 F.3d at
480–81; see id. at 481 (“Because [the successor judge] did
not preside over the first trial, he enjoyed no special ad-
vantage in determining [witness] credibility and gauging
the evidence . . . .”).
We reject FMC’s invitation to abandon the abuse-of-
discretion standard of review for this case. The only au-
thority cited by FMC for support is clearly inapposite, and
Highmark as well as substantial other authority favors ap-
plication of the abuse-of-discretion review standard. FMC
points to no issue in the case while pending before Judge
Atlas that turned on the credibility of testimony. Judge
Atlas did not have the “special advantage” of assessing the
credibility of witnesses and gauging the evidence through
that lens. FMC had ample notice that a successor judge
would decide its § 285 motion and did not object. Neces-
sarily, the merits of the motion had to be judged on the ba-
sis of the written record. FMC offers no reason why this
court is better positioned than Judge Bennett to decide its
motion.
II
FMC’s primary argument for treating OSS’s case as ex-
ceptional is its view that the case was entirely objectively
Case: 22-1099 Document: 50 Page: 19 Filed: 05/23/2023
ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 19
baseless as soon as the district court defined the divert/di-
verter limitations, and that OSS pursued the litigation
thereafter in misconduct. In addition, FMC alleges that
the district court made legal errors in reaching its judg-
ment and made clearly erroneous fact findings by misun-
derstanding the written record.
FMC’s primary argument wholly lacks merit, because
it fails to come to grips with the district court’s observation
that FMC’s demand for a prompt favorable noninfringe-
ment judgment based only on the Markman Order was “un-
persuasive” because it was “unclear from the current
record whether FMC’s dispositive motion would be
granted.” J.A. 6582. By the time of that observation, the
district court had heard the theory of OSS’s case, as ex-
pressed in OSS’s tutorial, repeated by OSS during the
Markman hearing, and evidenced by Mr. Boyadjieff’s dec-
laration, which carefully mapped each limitation of claim 1
of the ’687 Patent onto FMC’s accused device. At the con-
clusion of the Markman hearing, when OSS counsel
summed up the OSS view of the claimed flowpaths, the dis-
trict court retorted, “Okay. I got it. I understand.”
J.A. 2443–44. And three years later, at a hearing on re-
starting the litigation, the district court recalled that OSS
“had an expert to raise a fact issue” at the time of the first
motion for summary judgment, J.A. 6926, and when re-
sponding to FMC’s reference to the then record in the case
as adequate for summary judgment, the district court said
to FMC’s counsel: “And you really think I’m going to be able
to grant summary judgment on that?” J.A. 6934. There
can be no doubt that the district court was unwilling to
grant summary judgment to FMC in 2016 and willing to
allow the case to proceed. When a district court, fully
aware of the competing contentions of the parties, declines
to end the case on summary judgment and allows a plain-
tiff’s case to proceed, the district court may have effectively
determined that the position of the party opposing sum-
mary judgment is not objectively baseless, making it nearly
Case: 22-1099 Document: 50 Page: 20 Filed: 05/23/2023
20 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
impossible for the plaintiff’s case (on the issue that was the
subject of the summary judgment motion) to “stand out” as
lacking substance at that time.
FMC makes a failing attempt to neuter the importance
of the district court’s view of the case immediately follow-
ing the Markman Order. FMC argues that in denying its
§ 285 motion, Judge Bennett factually erred by misunder-
standing the observation by Judge Atlas that it was un-
clear whether FMC’s motion would be granted. FMC
points out that the observation came in the decision to stay
the case, which happened shortly after briefing on the sum-
mary judgment motion was completed. FMC hypothesizes
that the district court would not have had enough time to
know the record well enough to make such an observation
meaningfully. This hypothesis is without merit: at the con-
clusion of the Markman hearing, the district court indi-
cated that it understood OSS’s arguments and three years
later could recall that it had been unable to grant summary
judgment after the Markman Order.
In addition, FMC argues that the order staying the
case stated that the district court was reserving interpre-
tation of other claim terms pending the stay, and therefore
that somehow the lack of interpretation for those claims
formed some of the basis for the observation that FMC’s
summary judgment motion was insufficient. This too is
without merit, because the district’s court’s observation
was directed solely to the merits of FMC’s summary judg-
ment motion, in which FMC was demanding an immediate
decision. Reserving other claims for later adjudication had
nothing to do with the grounds for FMC’s motion or its
merit. Unable to neuter the consequences of the district
court’s permission to let the case proceed, FMC has no
ground on which to claim that OSS’s case was, from the
Markman Order on, so substantively empty as to make the
case exceptional for § 285 purposes.
Case: 22-1099 Document: 50 Page: 21 Filed: 05/23/2023
ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 21
Even if OSS’s case going forward did not lack substan-
tive merit, FMC argued below, and again here, that the ul-
timate failure to produce admissible evidence to support
OSS’s infringement theory alone makes this case excep-
tional. The district court disagreed, as do we. As the dis-
trict court noted, this is not a case in which OSS produced
no evidence at all to support its case from the early stage
of the case in 2016 through the 2020 summary judgment
proceeding. OSS produced evidence from two experts, with
the evidence based on the first expert’s declaration suffi-
cient to undermine FMC’s initial summary judgment mo-
tion. The second expert’s report, on which OSS’s challenge
to FMC’s 2020 summary judgment motion relied, repeated
the same theory of infringement as the first expert. The
second expert, however, emphasized the retrievability of
FMC’s Flow Module, leading the expert into the error of
failing to appreciate the stipulated construction of “tree,”
which in turn led to the district court’s exclusion of the ex-
pert’s report. As the district court noted, OSS adduced ev-
idence to support its infringement theory, but the
shortcomings of its expert undermined the admissibility of
that evidence. In the district court, FMC did not offer any
authority for finding a case exceptional simply because a
party offered and relied on evidence that was ultimately
found to be inadmissible. FMC has likewise produced no
such authority here. There was no abuse of discretion in
the district court’s finding that OSS’s reliance on inadmis-
sible evidence failed to make this case exceptional.
At the district court, FMC asserted several grounds of
alleged litigation misconduct: (1) OSS’s expert’s failure to
have considered the stipulated construction of “tree,” (2)
OSS’s misrepresentation of which of their infringement
claims had been dropped throughout the litigation, and
OSS unreasonably prolonging the case by (3) filing suit in
the Eastern District of Texas, (4) not promptly providing
final infringement contentions, (5) making late-stage
changes in its infringement theory, and (6) ignoring the
Case: 22-1099 Document: 50 Page: 22 Filed: 05/23/2023
22 ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC.
impact of the PTAB proceedings. As noted above, the dis-
trict court carefully reviewed each of these alleged exam-
ples of litigation misconduct and rejected them all as
without merit. In its briefs before this court, FMC makes
multiple references to OSS “prolonging” the litigation, Ap-
pellant’s Br. 3, 4, 9–11, but does not specifically challenge
the district court’s rulings on the specific examples as a
ground for reversal of the decision denying § 285 relief. We
nonetheless have subjected each of the findings to clear-er-
ror review and detect no such error.
Finally, FMC argues that the district court misapplied
the Octane Fitness standard for assessing whether a case
is exceptional under § 285. Specifically, FMC refers to a
passage in the district court’s opinion discussing FMC’s
charge that a reasonable pre-suit investigation by OSS
would have revealed the baselessness of its assertion
against FMC of certain diverter claims with “coaxial” flow-
paths or “bypass conduit” limitations. OneSubsea, 2021
WL 5121651, at *3. In its brief to the district court, FMC
had argued that “any reasonable litigant conducting an ad-
equate pre-suit investigation” would have known the base-
lessness of the assertions. J.A. 10695–96. Responding to
FMC’s argument, the district court’s opinion stated that
FMC had not “offered any evidence that no reasonable liti-
gant would agree with Plaintiffs’ understanding of the
terms and interpretation of the images, especially at the
early stage of a pre-suit investigation.” OneSubsea, 2021
WL 5121651, at *3. FMC contends that the district court
created a “no reasonable litigant” test for assessing excep-
tionality and thereby deviated from the Octane Fitness
standard. Appellant’s Br. 27–28. FMC’s contention is
wrong: the district court was simply replying to and reject-
ing FMC’s argument in FMC’s own words. The district
court correctly applied Octane Fitness’s test for judging the
strength of a legal position.
Case: 22-1099 Document: 50 Page: 23 Filed: 05/23/2023
ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. 23
CONCLUSION
The district court properly applied Octane Fitness in
denying FMC’s § 285 motion. After careful review of the
record and all of FMC’s arguments, we hold that FMC has
shown no error in the district court’s discretionary decision
that OSS did not present an exceptional case to the district
court.
AFFIRMED
COSTS
Costs to Appellee.