NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

M-I LLC,

Plaintiff-Appellee

v.

FPUSA, LLC,

Defendant-Appellant

______________________ 

2015-1870

______________________ 

Appeal from the United States District Court for the 

Western District of Texas in No. 5:15-CV-00406, Senior 

Judge David A. Ezra.

______________________ 

Decided: September 24, 2015

______________________ 

STEPHEN BURTON CRAIN, Bracewell & Giuliani, LLP, 

Houston, TX, argued for defendant-appellant. Also represented by CHRISTOPHER DODSON, JEFFREY L. OLDHAM,

ANDREW WILLIAM ZEVE; DOUGLAS FRED STEWART, Seattle, 

WA. 

JOHN R. KEVILLE, Winston & Strawn LLP, Houston, 

TX, argued for plaintiff-appellee. Also represented by 

MICHELLE REPLOGLE; TED DALTON LEE, Gunn, Lee & 
2 M-I LLC V. FPUSA, LLC

Cave, P.C., San Antonio, TX; RICHARD L. STANLEY, Law 

Office of Richard L. Stanley, Houston, TX. 

______________________ 

Before PROST, Chief Judge, BRYSON and HUGHES, Circuit 

Judges. 

HUGHES, Circuit Judge. 

FPUSA, LLC, appeals from an order of the district 

court granting M-I LLC’s motion for a preliminary injunction. The district court enjoined FPUSA from promoting, 

selling, or renting a system for recovering drilling fluid 

that infringes claims 1 and/or 16 of M-I’s patent. Because 

the district court did not abuse its discretion in granting 

an injunction with respect to claim 16, we affirm the 

preliminary injunction as to claim 16, vacate as to claim 

1, and remand with instructions to reform the injunction 

consistent with this opinion.

I 

M-I filed suit in the United States District Court for 

the Western District of Texas alleging that FPUSA’s VacScreen system infringes U.S. Patent No. 9,004,288. The 

’288 patent is directed to recovering drilling fluid by using 

an improved shaker. Drilling fluid facilitates the oildrilling process, and becomes contaminated with solid 

particulates during use. The disclosed invention uses 

pressure differential devices on screens to improve the 

rate and efficiency of separating drilling fluid from contaminants, and may include a degassing chamber to 

degas the recovered fluid. The district court granted M-I’s 

motion for a preliminary injunction, denied FPUSA’s 

subsequent motion for reconsideration, and in a third 

order, clarified the enjoined activities. 

The district court found that M-I met its burden to 

show that it will likely prove that FPUSA infringes at 
M-I LLC V. FPUSA, LLC 3

least claim 16 of the ’288 patent, and that this claim is 

valid and enforceable.1 Claim 16 recites, in relevant part:

A system comprising:

a first screen having an upper side and a lower 

side for separating drill cuttings and drilling fluid 

within a shaker; 

a pressure differential generator configured to 

pull air or vapor through the first screen to enhance the flow of drilling fluid through the first 

screen with respect to a second screen within the 

shaker in which the pressure differential generator does not create a pressure differential between 

an area above and an area below the second 

screen; and . . . 

a degassing chamber in fluid communication with 

the pressure differential generator and the sump 

and located external to the shaker for collecting 

all of the air or vapor and the drilling fluid in the 

sump and removing air or vapor from the drilling 

fluid.

’288 patent, col. 12 ll. 47–65 (emphasis added). 

The district court held that the modifiers “first” and 

“second” merely “distinguish between repeated instances 

of an element or limitation, and [did] not construe them to 

denote spatial location relative to the shaker’s inlet.” J.A. 

14. The district court determined that because the VacScreen applies a pressure differential to only one of multiple screens in a shaker, it satisfies the “first screen” 

limitation. 

1 We decline to reach the merits of the district 

court’s findings with respect to claim 1 because the district court did not complete its infringement analysis on 

that claim. See FED. R. CIV. P. 65(d)(1).

 
4 M-I LLC V. FPUSA, LLC

In assessing whether the Vac-Screen products contain 

the “degassing chamber” limitation of claim 16, the district court relied on FPUSA’s patent, U.S. Patent No. 

9,015,959, which FPUSA concedes covers the Vac-Screen 

system; and a “Technology Evaluation Report” that was 

prepared by one of FPUSA’s experts. J.A. 21. The ’959 

patent describes accumulator tanks that provide “fluid/gas separation.” ’959 patent, col. 8 ll. 61–64. The 

report states that “[a]ttached to the manifold is a vacuum 

line with a fluid or air separator.” J.A. 695. Based on 

these disclosures, the district court concluded that the 

Vac-Screen system includes a system by which drilling 

fluid is separated from residual air or gas, as required by

the “degassing chamber” limitation of claim 16. 

In addition to its non-infringement contentions, 

FPUSA argued that the ’288 patent is invalid because it is

only entitled to a 2013 priority date, and the Vac-Screen 

system had been on sale since 2010. The district court 

determined that the claims are properly entitled to a 2006 

priority date, and that FPUSA failed to raise a substantial question as to the validity of the patent. In light of 

the evidence supporting a finding of infringement and 

validity, the district court concluded that M-I’s likelihood 

of success on the merits weighs in favor of granting a 

preliminary injunction.

The district court also determined that M-I would 

likely suffer irreparable harm in the absence of a preliminary injunction. The district court noted M-I’s potential 

loss of market share, and that the parties did not dispute 

that they are each other’s sole competitors. J.A. 26. The 

district court also determined that FPUSA is a small 

subsidiary of a foreign corporation, and that district 

courts often find that money damages are insufficient in 

cases involving foreign infringers. J.A. 28. With respect 

to the remaining factors, the court weighed M-I’s patent 

rights against FPUSA’s business concerns, and ultimately 
M-I LLC V. FPUSA, LLC 5

concluded that the balance of equities is neutral, and that 

the public interest weighs in favor of an injunction. 

FPUSA appeals the district court’s orders on the preliminary injunction. We have jurisdiction under 28 U.S.C. 

§ 1292(a)(1) and (c)(1).

II

We apply the standard of the regional circuit in reviewing preliminary injunctions. Abbott Labs. v. Sandoz, 

Inc., 544 F.3d 1341, 1367 (Fed. Cir. 2008). The Fifth 

Circuit reviews a district court’s ultimate decision to 

grant or deny a preliminary injunction for abuse of discretion. Janvey v. Alguire, 647 F.3d 585, 591-92 (5th Cir. 

2011). As to each element of the district court’s preliminary injunction analysis, findings of fact are reviewed for 

clear error, and conclusions of law are subject to broad 

review and will be reversed if incorrect. Id. at 592.

The district court did not abuse its discretion in granting a preliminary injunction as to claim 16. The district 

court did not err in finding that M-I is likely to prove 

infringement of a valid claim. The court’s construction of 

the “first” and “second” modifiers was proper in light of 

the claim language and the specification. And based on 

FPUSA’s representation that the Vac-Screen system only

applies a vacuum to one screen, the one closest to the 

shaker outlet, the district court’s finding that the VacScreen system meets the “first screen” limitation was not 

clearly erroneous. Nor was the district court’s determination that the Vac-Screen likely meets the “degassing 

chamber” limitation, based on the disclosures in the ’959 

patent and Technology Evaluation Report. 

The district court also did not err in finding that

FPUSA had not raised a substantial question of invalidity. There is a statutory presumption that issued patents 

are valid. 35 U.S.C. § 282. The district court did not err 

in determining that the claims of the ’288 patent are 
6 M-I LLC V. FPUSA, LLC

supported by the written description in the parent application, which was filed in 2006. 

Further, the district court did not err in determining 

that irreparable harm would likely result based on the 

evidence in the record. FPUSA admitted in its briefing

before the district court that enjoining FPUSA would 

“leav[e] M-I as the sole source of a substitute technology,” 

J.A. 480, which means that absent an injunction, M-I 

would likely suffer an irreparable loss of market share. 

See Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 

1151 (Fed. Cir. 2011) (“[The existence of a two-player 

market] creates an inference that an infringing sale 

amounts to a lost sale for the patentee.”). M-I only started marketing its product in 2015, while FPUSA has been 

on the market since 2010. And while FPUSA faulted 

M-I’s reliance on a third-party report as evidence of 

FPUSA’s inability to satisfy a judgment, FPUSA did not 

offer any evidence of its profitability. Finally, the district 

court did not err in finding that the balance of equities is 

neutral, and that the public interest weighs in favor of an 

injunction.

III

FPUSA argues that the preliminary injunction order 

is procedurally defective and should be vacated independent of the merits. Although we affirm the injunction with 

regard to claim 16, we agree that the form of the injunction must be corrected on remand. First, the preliminary 

injunction is overbroad and should not include “other 

products.” As we have previously held, broad injunctions 

that merely instruct the enjoined party not to infringe are 

improper because such an order frustrates the remedy of 

contempt, which is available only with respect to devices 

“which are no more than colorably different [from the 

enjoined product] and which clearly are infringements of 

the patent.” Int’l Rectifier Corp. v. IXYS Corp., 383 F.3d 
M-I LLC V. FPUSA, LLC 7

1312, 1316 (Fed. Cir. 2004) (internal quotation marks 

omitted). 

We also note that on remand, the district court should 

be mindful that the Fifth Circuit “strictly construe[s]” 

Federal Rule of Civil Procedure 65(d)’s requirement that a 

preliminary injunction order must “describe in reasonable 

detail—and not by referring to the complaint or other 

document—the act or acts restrained or required.” Seattle-First Nat’l Bank v. Manges, 900 F.2d 795, 800 (5th Cir. 

1990). The district court did not fully comply with Rule 

65(d), because the description of the enjoined acts was set 

forth in a separate document from the preliminary injunction order. 

IV

We have considered FPUSA’s remaining arguments 

and find them unpersuasive. Because the district court 

did not abuse its discretion in granting the preliminary 

injunction as to claim 16, we affirm on the merits. We 

vacate the preliminary injunction as to claim 1 because 

the district court did not complete its infringement analysis. Further, we remand to the district court with instructions to reform the preliminary injunction consistent with 

this opinion.

AFFIRMED IN PART, VACATED IN PART, AND 

REMANDED IN PART