A federal jury in Houston that heard eight days of testimony deliberated for about two hours before determining Impulse Downhole Tools USA was entitled to $47.6 million in damages from a competitor that infringed three patents.
Impulse filed suit against Downhole Well Solutions Aug. 10, 2023, alleging two tools the company makes — the PowerGLIDE and the PowerGLIDE On Demand — infringe three patents held by Impulse. The friction reduction tools are used to aid in horizontal drilling for oil and gas.
The jury returned its verdict March 5, finding DWS’s tools infringed three patents held by Impulse and that the infringement was willful. The jury rejected arguments from DWS that the patents were invalid.
Impulse’s lead lawyer, John Keville of Sheppard, told The Lawbook the jury awarded the damages he requested “to the penny.”
“We presented it as a case where we were going to show them that we had tested and could prove [Downhole’s] products infringe,” Keville said, explaining how he set the scene for jurors during opening statements. “We walked through all the testing, and in their case their expert complained about the testing and relief on the mathematical analysis. … When we got to cross examine them on that analysis, they never showed where [the data] came from.”
Jurors heard evidence that Impulse sent DWS a letter in October 2022, notifying it of the alleged infringement of the three patents, long before a lawsuit was filed. The jury found that letter constituted “actual notice of infringement.” At trial, Keville said, jurors were played deposition testimony from one of cofounders of DWS who said he told his parent company’s CEO the letter was “ridiculous.”
“When asked why he thought the letter was ridiculous, he testified it was because [DWS] was very successful in the marketplace,” Keville said. “I think the jury got it — ‘We make a lot of money so we don’t care about your patents.’ I think that was telling … that didn’t play well for them at all.”
DWS had told jurors there was no infringement, but if there was, damages should be limited to $1.5 million.
DWS also filed a motion March 3 for judgment as a matter of law, arguing that based on the evidence Impulse presented at trial, “no reasonable jury could find for Impulse on any of these issues and judgment should be entered in DWS’s favor.”
“DWS moves for judgment as a matter of law that Impulse has failed to carry its burden to
prove that DWS’s accused friction reduction tools — PowerGLIDE and PowerGLIDE
On-Demand — practice any asserted claim, either literally or under the doctrine of equivalents,” the motion reads.
Keville said the case involved extensive motion and discovery practice, including 11 summary judgment and Daubert motions, a first for him in his legal career.
“It was a staggering thing,” he said. “They lost 10 of those completely and one partially, and it was just really them trying to pound us and make us do a lot of work. And I think maybe they thought that would make us go away.”
U.S. District Judge Keith P. Ellison presided over the case that began with jury selection Feb. 23.
Downhole’s lead lawyer did not respond to a request for comment Tuesday.
Impulse is also represented by Michelle Replogle, Robert Green, Michael Krill, Chante B. Westmoreland, Michael K. Heins, Usayd Sadiqi and Evan Lim of Sheppard.
Downhole is represented by Michael D. Karson, Nadia Haghighatian, Austin C. Teng, Cody Carter, David Higer, Eugene Massad III, Jamie McDole, Kyle Watson, Matthew Vitale, Miranda Jones, Omar A. Marawi and Phillip B. Philbin of Winstead.
The case number is 4:23-cv-02954.