Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 1 of 27
`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 1 of 27
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`EXHIBIT 1
`EXHIBIT 1
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 2 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 1 of 26
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`JOE W. REDDEN, JR., admitted pro hac vice
`BECK, REDDEN & SECREST
`One Houston Center
`1221 McKinney St., Suite 4500
`Houston, Texas 77010-2029
`Telephone: (713) 951-3700
`Facsimile: (713) 951-3720
`e-mail: jredden@brsfirm.com
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`CHARLES J. ROGERS, admitted pro hac vice
`CONLEY ROSE, P.C.
`1001 McKinney St., Suite 1800
`Houston, Texas 77002-6421
`Telephone: (713) 238-8049
`Facsimile: (713) 238-8008
`e-mail: CRogers@conleyrose.com
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`Attorneys for Defendant
`Cameron International Corporation
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`UNITED STATES DISTRICT COURT
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`EASTERN DISTRICT OF CALIFORNIA, FRESNO DIVISION
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`Case No. 1:13-cv-00281-MLH-SKO
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`DEFENDANT CAMERON’S
`SECOND AMENDED ANSWER
`AND COUNTERCLAIMS TO
`SEABOARD'S COMPLAINT
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`Hon. Marilyn L. Huff
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`SEABOARD INTERNATIONAL, INC.,
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`CAMERON INTERNATIONAL CORP.,
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`Plaintiff/Counterclaim-Defendant,
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`vs.
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`Defendant/Counterclaim-Plaintiff.
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`Defendant Cameron International Corporation (“Cameron”) files this Second
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`Amended Answer and Counterclaims
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`to Plaintiff Seaboard
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`International,
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`Inc.
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`(“Seaboard”)’s Complaint. Cameron amends its Answer and Counterclaims in response to
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`the Court’s Order (Doc. No. 46) granting in part and denying in part Seaboard’s Rule 12
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`motion to dismiss counterclaims and strike defenses (Doc. Nos. 37-38), which granted
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`leave for Cameron to amend its Answer and Counterclaims.
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`In addition to amending its Answer to Plaintiff Seaboard’s Complaint for alleged
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`patent infringement, Cameron amends its Counterclaims against Seaboard seeking a
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`declaratory judgment as to the noninfringement, invalidity, and unenforceability of the
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`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 2 of 26
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`asserted patent, and amends its Counterclaims seeking a declaratory judgment as to the
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`unenforceability of United States Patent Nos. 7,322,407 (“the ‘407 patent”), 7,416,020
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`(“the ‘020 patent”), 7,493,944 (“the ‘944 patent”), 7,520,322 (“the ‘322 patent”), 7,726,393
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`(“the ‘393 patent”), and 8,272,433 (“the ‘433 patent”).
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`JURISDICTION AND VENUE
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`1.
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`Defendant Cameron admits that this is an action alleging patent infringement
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`under the patent laws of the United States, admits that the Complaint purports to state a
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`cause of action over which this court has subject matter jurisdiction under 28 U.S.C.
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`§§ 1331 and 1338(a). Cameron denies that it has committed any patent infringement as
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`alleged in the Complaint.
`2.
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`Defendant Cameron admits that venue is proper in this District pursuant to
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`28 U.S.C. §§ 1391(b) and 1400. Defendant denies that venue in this District is the most
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`convenient district for the parties, witnesses, and the interest of justice under 28 U.S.C.
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`§ 1404(a).
`3.
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`Defendant Cameron denies the averments contained in paragraph 3 of
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`Plaintiff’s Complaint.
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`PARTIES
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`4.
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`Defendant Cameron is without sufficient knowledge and information to form
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`a belief as to the truth of the averments contained in paragraph 4 of Plaintiff’s Complaint.
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`Defendant therefore denies those averments.
`5.
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`Defendant Cameron admits the averments contained in paragraph 5 of
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`Plaintiff’s Complaint.
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`GENERAL ALLEGATIONS
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`6.
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`Defendant Cameron is without sufficient knowledge and information to form
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`a belief as to the truth of the averments contained in paragraph 6 of Plaintiff’s Complaint.
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`Defendant therefore denies those averments.
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`-2-
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`Defendant Cameron’s Second
`Amended Answer and Counterclaims
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`7.
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`Defendant Cameron admits the averments contained in paragraph 7 of
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`Plaintiff’s Complaint.
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`FIRST CLAIM FOR RELIEF
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`8.
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`Defendant Cameron admits that on December 18, 2012 the United States
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`Patent and Trademark Office issued United States Patent No. 8,333,237, entitled “Wellhead
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`Isolation Tool and Wellhead Assembly Incorporating the Same,” but denies that the patent
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`was “duly and legally issued” as alleged in paragraph 8 of Plaintiff’s Complaint. Cameron
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`admits that a copy of the ‘237 patent is attached as Exhibit 1 to Plaintiff’s Complaint.
`9.
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`Defendant Cameron is without sufficient knowledge and information to form
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`a belief as to the truth of the averments contained in paragraph 9 of Plaintiff’s Complaint
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`regarding ownership of the ‘237 patent, especially considering Plaintiff Seaboard’s past
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`history of participating in the assignment of rights in a related patent involved in litigation
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`adverse to Cameron without notifying Cameron or the Court of the assignment. Defendant
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`therefore denies those averments.
`10.
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`Defendant Cameron denies the averments contained in paragraph 10 of
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`Plaintiff’s Complaint.
`11.
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`Defendant Cameron denies the averments contained in paragraph 11 of
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`Plaintiff’s Complaint.
`12.
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`Defendant Cameron denies the averments contained in paragraph 12 of
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`Plaintiff’s Complaint.
`13.
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`Defendant Cameron denies the averments contained in paragraph 13 of
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`Plaintiff’s Complaint.
`14.
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`Defendant Cameron denies the averments contained in paragraph 14 of
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`Plaintiff’s Complaint.
`15.
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`Defendant Cameron denies the averments contained in paragraph 15 of
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`Plaintiff’s Complaint.
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`-3-
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`Defendant Cameron’s Second
`Amended Answer and Counterclaims
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 5 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 4 of 26
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`PRAYER FOR RELIEF
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`16.
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`Defendant Cameron denies that Plaintiff is entitled to any relief in
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`connection with the averments contained in Plaintiff’s Complaint.
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`DEMAND FOR JURY TRIAL
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`17.
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`Defendant Cameron admits that Plaintiff has demanded a jury trial for all
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`issues triable of right before a jury.
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`OBJECTIONS AND AFFIRMATIVE DEFENSES
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`18.
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`The following objections and affirmative defenses to Plaintiff’s Complaint
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`are pled, in whole or in part, to provide notice to the Plaintiff pursuant to Rules 8(c) and
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`12(b) of the Federal Rules of Civil Procedure. Defendant Cameron reserves the right to
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`make appropriate motions pursuant to Rule 12(c) of the Federal Rules of Civil Procedure.
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`The following objections and affirmative defenses should not be construed as improperly
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`shifting the burden of proof to Defendant Cameron.
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`FAILURE TO STATE A CLAIM
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`19.
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`Plaintiff’s Complaint fails to state a claim upon which relief can be granted.
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`NON-INFRINGEMENT
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`20.
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`Defendant Cameron does not infringe and has never infringed, either directly
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`or indirectly, any valid claim of the ‘237 patent.
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`INVALIDITY
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`21.
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`The claims of the ‘237 patent are invalid for failure to meet the conditions
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`for patentability specified in 35 U.S.C. Sections 102 and 103, and for failure to comply with
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`the requirements of 35 U.S.C. Section 112.
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`UNENFORCEABILITY
`PROSECUTION LACHES
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`22.
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`The ‘237 patent is unenforceable due to the equitable defense of prosecution
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`laches arising from Seaboard and its predecessor in interest Duhn Oil’s unreasonable and
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`unexplained delay in prosecution of the applications that led to the issuance of the ‘237
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`patent. The ‘237 patent issued on December 18, 2012, from a string of ten applications
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`over a period of almost eleven years dating back to an initial provisional application filed
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`on February 19, 2002. The equitable defense of “prosecution laches” renders a patent
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`unenforceable when unreasonable and unexplained delays in the prosecution of a patent
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`causes prejudice to a defendant, such as when the delayed issuance of a patent otherwise
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`could be enforced to remove a product from the market that existed prior to the patent
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`applicant’s delayed filing of the patent claims at issue.
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`23.
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`The ‘237 patent claims were first filed on May 24, 2012. The ‘237 patent
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`claims directed to a “single load path” configuration were unreasonably delayed for over
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`six and a half years after Seaboard’s predecessor in interest Duhn Oil had disclaimed the
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`Figure 2 “single load path” embodiment and defined the invention as limited to a “dual load
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`path” design. In response to a prior art rejection from the Patent Office, Duhn Oil amended
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`its application claims and narrowed its invention to a “dual load path” design by adding the
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`disputed “wherein” clause on November 15, 2004 in the parent ‘925 patent application.
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`Duhn Oil then delayed over six and a half years to then broaden its patent claims to purport
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`to cover a “single load path” design, thereby attempting to recapture subject matter that
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`Duhn Oil had previously disclaimed.
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`24.
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`Duhn Oil’s unreasonable delay could now result in the removal of
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`Cameron’s products from the marketplace which Cameron has been selling for ten years
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`-5-
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`Defendant Cameron’s Second
`Amended Answer and Counterclaims
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 7 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 6 of 26
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`dating back to 2003. The prejudice to Cameron is severe, and compounded by Duhn Oil’s
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`positions taken in the ‘925 patent litigation, which Cameron relied upon to modify its
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`products, change its running procedures, and continue marketing the products with the
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`understanding that they would be free from charges of patent infringement as long as the
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`tubing head lockscrews were not run in. Cameron’s ongoing sales, and management of sold
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`products, may now be subject to the newly issued ‘237 patent resulting from unreasonably
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`delayed “single load path” claims. Furthermore, if Cameron had been faced with these
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`newly asserted ‘237 “single load path” claims sooner, Cameron could have and would have
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`shifted to a different design rather than devoting its resources to the running procedure
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`change and the expenses associated with the tracking of the products to ensure that its
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`customers were not running in the lockscrews.
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`25.
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`The ‘237 patent claims should be held unenforceable under the equitable
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`defense of prosecution laches due to Seaboard’s unreasonable and unexplained delay in
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`submitting its “single load path” claims, which have severely prejudiced Cameron because
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`Cameron relied upon Duhn Oil’s ‘925 patent litigation positions that defined the invention
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`as limited to “dual load path,” which caused Cameron to change its running procedures and
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`continue marketing its wellhead assemblies as “single load path” products, which Seaboard
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`now belatedly asserts is its proprietary design.
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`JUDICIAL ESTOPPEL
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`26.
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`Plaintiff’s claims are barred, in whole or in part, by the doctrine of judicial
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`estoppel. For example, Plaintiff Seaboard should be estopped from asserting that
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`Cameron’s “single load path” products infringe the ‘237 patent, due to its predecessor in
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`interest Duhn Oil’s ‘925 patent litigation positions that defined the invention as limited to
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 8 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 7 of 26
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`“dual load path,” which caused Cameron to change its running procedures and continue
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`marketing its wellhead assemblies as “single load path” products, which Seaboard now
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`belatedly asserts is its proprietary design.
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`UNENFORCEABILITY
`INEQUITABLE CONDUCT
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`27.
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`The ‘237 patent is unenforceable due to the actions and/or omissions of
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`Plaintiff Seaboard, its predecessor in interest Duhn Oil, and their agents, (collectively
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`“Applicants”), constituting inequitable conduct during the prosecution of the application
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`that issued as the ‘237 patent, including the string of ten applications over a period of
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`almost eleven years dating back to an initial provisional application filed on February 19,
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`2002. See paragraphs 32-44 at pages 19-24 below for the inequitable conduct from the
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`string of applications which infects the ‘237 patent.
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`28.
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`The ‘237 patent is unenforceable because Seaboard, including the named
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`inventors Rex Duhn and Bob Meek, and the prosecution attorney Constantine Marantidis,
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`intentionally did not include Mr. John Rogers as an inventor of the ‘237 patent. Mr. Rogers
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`conceived of and materially contributed to the subject matter claimed in the ‘237 patent.
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`For example, Mr. Rogers conceived of and contributed the concepts of using a frac
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`mandrel, sealing the frac mandrel in the tubing head, retaining the frac mandrel through the
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`use of the tubing head lockscrews, and providing a frac mandrel having an inner diameter at
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`least as large as the inner diameter of production tubular it would be in communication
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`with, among others. Mr. Rogers communicated these concepts to Mr. Duhn and Mr. Meek,
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`as was confirmed by Mr. Duhn’s own courtroom testimony during the ‘925 patent
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`litigation.
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 9 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 8 of 26
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`29.
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`Notwithstanding Mr. Duhn and Mr. Meek’s knowledge that Mr. Rogers was
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`a co-inventor of the subject matter found in the claims of the ‘237 patent, Mr. Duhn and Mr.
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`Meek declared with deceptive intent to the Patent Office that they were the original and
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`only inventors of the subject matter claimed in the ‘237 patent.
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`EQUIVALENTS BAR
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`30.
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`Plaintiff Duhn Oil is precluded from a finding of infringement under the
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`doctrine of equivalents because of statements, representations, and admissions made, and/or
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`actions taken during the prosecution of the application that issued as the ‘237 patent, and/or
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`because of statements, representations, and admissions made, and/or actions taken during
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`the prosecution of related continuation/divisional applications.
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`PROSECUTION HISTORY ESTOPPEL
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`31.
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`Plaintiff Duhn Oil is estopped from enforcing the ‘237 patent as alleged
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`because of statements, representations, and admissions made, and/or actions taken during
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`the prosecution of the application that issued as the ‘237 patent, and because of statements,
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`representations, and/or admissions made, and/or actions taken during the prosecution of
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`related continuation/divisional applications.
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`EQUITABLE ESTOPPEL
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`32.
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`Plaintiff’s claims are barred, in whole or in part, by the doctrine of equitable
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`estoppel. For example, Plaintiff Seaboard should be estopped from asserting that
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`Cameron’s “single load path” products infringe the ‘237 patent, due to its predecessor in
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`interest Duhn Oil’s ‘925 patent litigation positions that defined the invention as limited to
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`“dual load path.” Duhn Oil’s litigation positions caused Cameron to change its running
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`procedures and continue marketing its wellhead assemblies as “single load path” products,
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 10 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 9 of 26
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`which Seaboard now belatedly asserts is its proprietary design. Seaboard through its
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`predecessor’s misleading conduct reasonably led Cameron to infer that it did not intend to
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`pursue infringement claims against Cameron’s “single load path” products. Cameron relied
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`on Seaboard’s misleading conduct, and prejudice would result from such reliance if
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`Seaboard is not estopped from asserting that Cameron’s “single load path” products
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`infringe the ‘237 patent.
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`UNCLEAN HANDS
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`33.
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`Plaintiff’s claims are barred, in whole or in part, by the doctrine of unclean
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`hands.
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`FAILURE TO MARK – LIMITATION ON DAMAGES
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`34.
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`Plaintiff is precluded from recovering any alleged damages for any patent
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`infringement occurring prior to the filing date of its Complaint because Plaintiff has failed
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`to plead, and cannot prove, compliance with the marking requirements of 35 U.S.C. § 287,
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`which provides that in the event of such a failure to mark “no damages shall be recovered
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`by the patentee in any action for infringement, except on proof that the infringer was
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`notified of the infringement [which includes the filing of an action for infringement] and
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`continued to infringe thereafter, in which event damages may be recovered only for
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`infringement occurring after such notice.”
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`STANDING
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`35.
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`To the extent that inventorship of the ‘237 patent is corrected, Seaboard
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`lacks appropriate standing to maintain this action under 35 U.S.C. § 281 and has failed to
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`join and cannot join all necessary parties and owners of the ‘237 patent. Thus, Seaboard
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`lacks jurisdiction.
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`EXCEPTIONAL CASE
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`36.
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`Defendant Cameron asserts that this is an exceptional case such that Plaintiff
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`should be required to pay Defendant’s reasonable attorney fees in accordance with 35
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`U.S.C. § 285.
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`PRAYER FOR RELIEF
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`Defendant Cameron respectfully requests a judgment from this Court including the
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`following:
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`a.
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`a finding in favor of Cameron as to each and every allegation and
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`cause of action asserted against it in Plaintiff’s Complaint;
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`b.
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`a finding in favor of Cameron as to each of its above-pleaded
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`objections, defenses, and limitations on Plaintiff’s recover;
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`c.
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`a finding that this case is exceptional, and ordering Plaintiff to pay
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`Cameron’s reasonable attorney fees in accordance with 35 U.S.C. § 285;
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`d.
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`e.
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`an order dismissing Plaintiff’s Complaint; and
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`an order awarding Cameron costs and all such other and further relief
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`as is available, at law or in equity, that this Court deems just, equitable, and proper
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`under the circumstances.
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 12 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 11 of 26
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`CAMERON’S SECOND AMENDED
`COUNTERCLAIMS AGAINST SEABOARD
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`1.
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`Pursuant to Rule 13 of the Federal Rules of Civil Procedure, Cameron files
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`the following Second Amended Counterclaims against Seaboard.
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`I.
`INTRODUCTION
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`2.
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`The following counterclaims brought by Defendant/Counter-Plaintiff
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`Cameron against Plaintiff/Counter-Defendant Seaboard seek a declaratory judgment as to
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`the noninfringement, invalidity, and unenforceability of the ‘237 patent.
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` These
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`counterclaims also seek a declaratory judgment as to the unenforceability of the ‘407, ‘020,
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`‘944, ‘322, ‘393, and ‘433 patents.
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`II.
`PARTIES
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`3.
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`Defendant/Counter-Plaintiff Cameron
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`is a corporation organized and
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`existing under the laws of the State of Delaware. Its principal place of business is located at
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`1333 West Loop South, Suite 1700, Houston, Texas 77027.
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`4.
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`Plaintiff/Counter-Defendant Seaboard asserts in its Complaint that it is a
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`Texas corporation with a place of business at 3912 Gilmore Avenue, Bakersfield,
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`California.
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`III.
`JURISDICTION AND VENUE
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`5.
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`These counterclaims state claims arising under the patent laws of the United
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`States, 35 U.S.C. § 282. Defendant/Counter-Plaintiff Cameron seeks a declaratory
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`judgment, under 28 U.S.C. § 2201, regarding noninfringement,
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`invalidity, and
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`unenforceability issues concerning the ‘237 patent, of which Seaboard has asserted to be the
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 13 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 12 of 26
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`owner. Cameron also seeks a declaratory judgment, under 28 U.S.C. § 2201, regarding
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`unenforceability issues concerning the ‘407, ‘020, ‘944, ‘322, ‘393, and ‘433 patents, of
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`which Plaintiff/Counter-Defendant Seaboard is identified as the assignee. This Court has
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`original and exclusive subject matter jurisdiction over these claims under 28 U.S.C. §§
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`1331 and 1338(a).
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`6.
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`Plaintiff/Counter-Defendant Seaboard is subject to personal jurisdiction in
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`this action because it alleges that it resides in this judicial District and has sufficient
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`minimum contacts with the State of California to subject it to specific personal jurisdiction
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`through forum contacts that are directly related to causes of action asserted by Cameron in
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`8,333,237 these counterclaims.
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`7.
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`Venue for these counterclaims is proper in this judicial District under 28
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`U.S.C. §§ 1391(b)(1), (c), and 1400(b) because Plaintiff/Counter-Defendant Seaboard
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`alleges that it resides in this judicial district. Cameron files these claims in this District as
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`counterclaims and as such does not assert that this District is the most convenient district
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`for the parties, witnesses, and the interest of justice under 28 U.S.C. § 1404(a).
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`IV.
`CLAIMS FOR RELIEF
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`COUNTERCLAIM COUNT I
`DECLARATORY JUDGMENT REGARDING
`UNITED STATES PATENT NO. 8,333,237
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`8.
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`United States Patent No. 8,333,237, entitled “Wellhead Isolation Tool and
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`Wellhead Assembly Incorporating the Same” was issued on December 18, 2012.
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`Plaintiff/Counter-Defendant Seaboard has asserted that it is the owner of the ‘237 patent. A
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`copy of the ‘237 patent is attached to the Plaintiff’s Complaint.
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 14 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 13 of 26
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`9.
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`An actual controversy exists between Defendant/Counter-Plaintiff Cameron
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`and Plaintiff/Counter-Defendant Seaboard as to the noninfringement, invalidity, and
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`unenforceability of the ‘237 patent. Plaintiff/Counter-Defendant Seaboard has created a
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`reasonable apprehension on the part of Cameron that it will continue to be subject to this
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`ongoing infringement suit if it continues to sell its accused products.
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`NON-INFRINGEMENT
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`10.
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`Defendant/Counter-Plaintiff Cameron’s accused products do not infringe
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`any valid claims of the ‘237 patent. Cameron seeks a declaratory judgment that its products
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`do not infringe any valid claims of the ‘237 patent.
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`INVALIDITY
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`11.
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`The claims of the ‘237 patent are invalid for failure to meet the conditions
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`for patentability specified in 35 U.S.C. Sections 102 and 103, and for failure to comply with
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`the requirements of 35 U.S.C. Section 112. Cameron seeks a declaratory judgment of
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`invalidity for all claims of the ‘237 patent.
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`UNENFORCEABILITY
`PROSECUTION LACHES
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`16.
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`The ‘237 patent is unenforceable due to the equitable defense of prosecution
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`laches arising from Seaboard and its predecessor in interest Duhn Oil’s unreasonable and
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`unexplained delay in prosecution of the applications that led to the issuance of the ‘237
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`patent. The ‘237 patent issued on December 18, 2012, from a string of ten applications
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`over a period of almost eleven years dating back to an initial provisional application filed
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`on February 19, 2002. The equitable defense of “prosecution laches” renders a patent
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`unenforceable when unreasonable and unexplained delays in the prosecution of a patent
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`causes prejudice to a defendant, such as when the delayed issuance of a patent otherwise
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`-13-
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`Defendant Cameron’s Second
`Amended Answer and Counterclaims
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 15 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 14 of 26
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`could be enforced to remove a product from the market that existed prior to the patent
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`applicant’s delayed filing of the patent claims at issue.
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`17.
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`The ‘237 patent claims were first filed on May 24, 2012. The ‘237 patent
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`claims directed to a “single load path” configuration were unreasonably delayed for over
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`six and a half years after Seaboard’s predecessor in interest Duhn Oil had disclaimed the
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`Figure 2 “single load path” embodiment and defined the invention as limited to a “dual load
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`path” design. Duhn Oil amended its application claims and narrowed its invention to a
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`“dual load path” design by adding the disputed “wherein” clause on November 15, 2004 in
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`the parent ‘925 patent application. Duhn Oil then delayed over six and a half years to then
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`broaden its patent claims to purport to cover a “single load path” design, thereby attempting
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`to recapture subject matter that Duhn Oil had previously disclaimed.
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`18.
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`Duhn Oil’s unreasonable delay could now result in the removal of
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`Cameron’s products from the marketplace which Cameron has been selling for ten years
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`dating back to 2003. The prejudice to Cameron is severe, and compounded by Duhn Oil’s
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`positions taken in the ‘925 patent litigation, which Cameron relied upon to modify its
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`products, change its running procedures, and continue marketing the products with the
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`understanding that they would be free from charges of patent infringement as long as the
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`tubing head lockscrews were not run in. Cameron’s ongoing sales, and management of sold
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`products, may now be subject to the newly issued ‘237 patent resulting from unreasonably
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`delayed “single load path” claims. Furthermore, if Cameron had been faced with these
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`newly asserted ‘237 “single load path” claims sooner, Cameron could have and would have
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`shifted to a different design rather than devoting its resources to the running procedure
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 16 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 15 of 26
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`change and the expenses associated with the tracking of the products to ensure that its
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`customers were not running in the lockscrews.
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`19.
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`The ‘237 patent claims should be held unenforceable under the equitable
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`defense of prosecution laches due to Seaboard’s unreasonable and unexplained delay in
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`submitting its “single load path” claims, which have severely prejudiced Cameron because
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`Cameron relied upon Duhn Oil’s ‘925 patent litigation positions that defined the invention
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`as limited to “dual load path,” which caused Cameron to change its running procedures and
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`continue marketing its wellhead assemblies as “single load path” products, which Seaboard
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`now belatedly asserts is its proprietary design.
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`UNENFORCEABILITY
`JUDICIAL ESTOPPEL
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`20.
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`The ‘237 patent is unenforceable due to the doctrine of judicial estoppel.
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`For example, Plaintiff Seaboard should be estopped from asserting that Cameron’s “single
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`load path” products infringe the ‘237 patent, due to its predecessor in interest Duhn Oil’s
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`‘925 patent litigation positions that defined the invention as limited to “dual load path,”
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`which caused Cameron to change its running procedures and continue marketing its
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`wellhead assemblies as “single load path” products, which Seaboard now belatedly asserts
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`is its proprietary design.
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`UNENFORCEABILITY
`INEQUITABLE CONDUCT
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`21.
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`The ‘237 patent is unenforceable due to the actions and/or omissions of
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`Plaintiff/Counter-Defendant Seaboard, its predecessor in interest Duhn Oil, and their agents
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`(collectively “Applicants”), constituting inequitable conduct during the prosecution of the
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`application that issued as the ‘237 patent, including the string of ten applications over a
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`period of almost eleven years dating back to an initial provisional application filed on
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`-15-
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`Defendant Cameron’s Second
`Amended Answer and Counterclaims
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`Case 3:17-cv-05659-WHA Document 150-2 Filed 07/06/18 Page 17 of 27
`Case 1:13-cv-00281-MLH-SKO Document 48 Filed 08/13/13 Page 16 of 26
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`February 19, 2002. See paragraphs 32-44 at pages 19-24 below for the inequitable conduct
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`from the string of applications which infects the ‘237 patent.
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`22.
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`The ‘237 patent is unenforceable because Seaboard, including the named
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`inventors Rex Duhn and Bob Meek, and the prosecution attorney Constantine Marantidis,
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`intentionally did not include Mr. John Rogers as an inventor of the ‘237 patent. Mr. Rogers
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`conceived of and materially contributed to the subject matter claimed in the ‘237 patent.
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`For example, Mr. Rogers conceived of and contributed the concepts of using a frac
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`mandrel, sealing the frac mandrel in the tubing head, retaining the frac mandrel through the
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`use of the tubing head lockscrews, and providing a frac mandrel having an inner diameter at
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`least as large as the inner diameter of production tubular it would be in communication
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`with, among others. Mr. Rogers communicated these concepts to Mr. Duhn and Mr. Meek,
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`as was confirmed by Mr. Duhn’s own courtroom testimony during the ‘925 patent
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`litigation.
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`23.
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`Notwithstanding Mr. Duhn and Mr. Meek’s knowledge that Mr. Rogers was
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`a co-inventor of the subject matter found in the claims of the ‘237 patent, Mr. Duhn and Mr.
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`Meek declared with deceptive intent to the Patent Office that they were the original and
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`only inventors of the subject matter claimed in the ‘237 patent.
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`24.
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`If appropriate under 35 U.S.C. § 256, Mr. John Rogers should be added as a
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`joint inventor to the ‘237 patent because he contributed to the conception of subject matter
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`claimed in the ‘237 patent.
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`Defendant Cameron’s Second