DCT

8:23-cv-02108

Cascade Drilling LP v. Regenesis Bioremediation Products Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:23-cv-02108, C.D. Cal., 11/09/2023
  • Venue Allegations: Venue is alleged to be proper as Defendant Regenesis is subject to personal jurisdiction in the district, has directed business and enforcement activities there, and a substantial part of the events giving rise to the action occurred in the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment of non-infringement, invalidity, and unenforceability of seven of Defendant’s patents related to in-situ groundwater remediation using activated carbon.
  • Technical Context: The technology concerns methods and compositions for injecting colloidal activated carbon into contaminated groundwater aquifers to sorb and biodegrade pollutants.
  • Key Procedural History: The complaint alleges a multi-year history of correspondence, starting in July 2021, in which Regenesis made broad threats of infringement against Cascade and its customers without identifying specific infringing products or patent claims, despite requests from Cascade. The complaint also alleges that Regenesis engaged in inequitable conduct during the prosecution of its patents by intentionally withholding a material prior art reference, the "Kopinke" patent application (EP1462187A2), from the USPTO.

Case Timeline

Date Event
2003-03-27 Priority date for the "Kopinke" prior art reference alleged to be material
2006-06-27 Priority date for U.S. Patent 7,585,132
2009-09-08 Issue date for U.S. Patent 7,585,132
2013-08-02 Priority date for U.S. Patents 9,770,743 and 10,512,957
2014-02-14 Priority date for U.S. Patents 9,776,898 and 10,005,684
2016-06-13 Priority date for U.S. Patent 10,478,876
2017-09-26 Issue date for U.S. Patent 9,770,743
2017-10-03 Issue date for U.S. Patent 9,776,898
2018-01-03 Priority date for U.S. Patent 11,253,895
2018-06-26 Issue date for U.S. Patent 10,005,684
2019-11-19 Issue date for U.S. Patent 10,478,876
2019-12-24 Issue date for U.S. Patent 10,512,957
2021-07-29 Regenesis sends letter to Cascade CEO regarding use of micron-sized activated carbon
2021-09-08 Regenesis issues industry-wide letter threatening legal action over colloidal carbon use
2021-09-21 Cascade responds to threats, demanding a claim chart and providing prior art analysis
2021-10-01 Regenesis responds but allegedly fails to identify any infringing Cascade product or patent claim
2022-02-22 Issue date for U.S. Patent 11,253,895
2023-08-29 Regenesis allegedly threatens Cascade's customer, Dynamic Earth LLC, over project
2023-11-09 Complaint for Declaratory Judgment filed by Cascade

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent 7,585,132 - METHOD FOR REMEDIATING A CONTAMINATED SITE

Issued September 8, 2009

The Invention Explained

  • Problem Addressed: The patent's background describes how conventional groundwater remediation techniques, such as "pump and treat" systems or chemical oxidation, are often costly, ineffective, and can leave significant residual contamination in the soil and water ('132 Patent, col. 1:45-col. 2:20).
  • The Patented Solution: The invention proposes a method of injecting a sorbent material, such as activated carbon, suspended in a carrier fluid to form a slurry. This slurry is introduced directly into the pore space of the contaminated aquifer in a dispersed fashion, which modifies the aquifer's properties to enhance the sorption and degradation of contaminants in-situ ('132 Patent, Abstract; col. 2:44-53). Figure 2 of the patent illustrates a grid pattern of injection points designed to create a treatment zone.
  • Technical Importance: This approach allows for the direct, in-place treatment of contaminants, aiming to improve the efficiency of natural degradation processes and overcome the limitations of systems that require extracting groundwater for above-ground treatment ('132 Patent, col. 2:36-44).

Key Claims at a Glance

  • The complaint, being an action for declaratory judgment, does not specify which claims Regenesis has asserted. A central allegation is that Regenesis has failed to identify any specific claims it believes are infringed (Compl. ¶¶ 28, 32). For the purpose of analysis, independent claim 1 is presented as a representative example.
  • Independent Claim 1 (Method):
    • mixing a sorbent material with a carrier to form a slurry, said sorbent material having one dimension of at least 1 micron; and
    • introducing said slurry into the aquifer in a dispersed fashion within a pore space of the aquifer to promote permanent attenuation of the aquifer.
  • The complaint does not state whether dependent claims have been asserted.

U.S. Patent 9,770,743 - COLLOIDAL AGENTS FOR AQUIFER REMEDIATION

Issued September 26, 2017

The Invention Explained

  • Problem Addressed: The patent identifies a key limitation of using solid remediation agents like activated carbon: their lack of mobility in the subsurface. Conventional granular or powdered forms cannot be easily distributed through soil, leading to high costs, disruption from techniques like trenching, and limited contact with contaminants ('743 Patent, col. 1:15-col. 2:25).
  • The Patented Solution: The invention is a composition designed to overcome this mobility issue. It comprises fine particulate activated carbon (a "colloid") that is stabilized by at least two additives: a "stabilizing polymer" and a "distribution enhancement agent." These additives work together to allow the colloidal carbon to be transported effectively through soil and groundwater upon injection ('743 Patent, Abstract; col. 3:1-8).
  • Technical Importance: By creating a stable, mobile colloidal suspension, the invention aims to enable a more widespread and less disruptive in-situ application of activated carbon, thereby improving treatment efficiency and reducing costs ('743 Patent, col. 2:26-34).

Key Claims at a Glance

  • As noted above, the complaint does not identify asserted claims. For the purpose of analysis, independent claim 1 is presented as a representative example.
  • Independent Claim 1 (Composition):
    • particulate activated carbon;
    • a stabilizing polymer;
    • a distribution enhancement agent chosen from an anionic surfactant, nonionic surfactant, chelating agent, or combinations thereof;
    • wherein the components are present in specific relative weight ratios.
  • The complaint does not state whether dependent claims have been asserted.

U.S. Patent 9,776,898 - TREATMENT OF AQUIFER MATRIX BACK DIFFUSION

Issued October 3, 2017

  • Technology Synopsis: This patent addresses the problem of "back diffusion," where contaminants trapped in low-permeability zones (like clay) slowly leach back into cleaned, high-permeability zones (like sand), causing persistent, low-level contamination. The solution is a method using an injectable "colloidal biomatrix" of sorbent particles to intercept and degrade these diffusing contaminants at the interface between the zones ('898 Patent, Abstract; col. 2:58-col. 3:12).
  • Asserted Claims: The complaint does not specify asserted claims; independent claims 1 and 7 are representative method claims.
  • Accused Features: Cascade’s ColloidalChem products and associated remediation services are the accused instrumentalities (Compl. ¶18).

U.S. Patent 10,005,684 - TREATMENT OF AQUIFER MATRIX BACK DIFFUSION

Issued June 26, 2018

  • Technology Synopsis: As a continuation of the application leading to the '898 patent, this patent similarly addresses the "back diffusion" problem. It claims a method of placing a colloidal biomatrix of sorbent particles (e.g., activated carbon) into permeable aquifer zones to deplete contaminant concentrations and increase the rate of diffusion out of less permeable zones ('684 Patent, Abstract; col. 2:58-67).
  • Asserted Claims: The complaint does not specify asserted claims; independent claim 1 is a representative method claim.
  • Accused Features: Cascade’s ColloidalChem products and associated remediation services are the accused instrumentalities (Compl. ¶18).

U.S. Patent 10,478,876 - METHOD OF INCREASING HYDROPHOBICITY OF NATIVE WATER-BEARING ZONES

Issued November 19, 2019

  • Technology Synopsis: This patent describes a method for permanently emplacing non-degradable, solid colloidal materials into an aquifer to increase its "hydrophobicity" or ability to retard the migration of contaminant plumes. The invention uses stabilized colloidal sorbents that can be distributed via low-pressure injection to create a long-lasting barrier ('876 Patent, Abstract; col. 3:9-21).
  • Asserted Claims: The complaint does not specify asserted claims; independent claim 1 is a representative method claim.
  • Accused Features: Cascade’s ColloidalChem products and associated remediation services are the accused instrumentalities (Compl. ¶18).

U.S. Patent 10,512,957 - COLLOIDAL AGENTS FOR AQUIFER AND METALS REMEDIATION

Issued December 24, 2019

  • Technology Synopsis: This patent discloses compositions and methods using stabilized colloidal agents to remediate both organic and inorganic (metal) contaminants. The composition includes a particulate remediation agent, a stabilizing polymer, and a distribution enhancement agent (such as a chelating agent or surfactant) to facilitate transport through soil and groundwater ('957 Patent, Abstract; col. 3:40-52).
  • Asserted Claims: The complaint does not specify asserted claims; independent claims 1, 5, 6, and 7 are representative composition claims.
  • Accused Features: Cascade’s ColloidalChem products are the accused instrumentalities (Compl. ¶18).

U.S. Patent 11,253,895 - METHODS FOR REMEDIATING CONTAMINATED SOIL AND GROUNDWATER USING SOLID-PHASE ORGANIC MATERIALS

Issued February 22, 2022

  • Technology Synopsis: This patent discloses methods for bioremediation using solid-phase organic materials (e.g., spent coffee grounds, bioplastics) as electron donors. The key is to formulate these materials into an aqueous slurry with a specific particle size that can be injected at a pressure lower than the fracture pressure of the subsurface, allowing for more uniform distribution ('895 Patent, Abstract; col. 3:1-12).
  • Asserted Claims: The complaint does not specify asserted claims; independent claim 1 is a representative method claim.
  • Accused Features: Cascade’s ColloidalChem products and associated remediation services are the accused instrumentalities (Compl. ¶18).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Plaintiff Cascade's "ColloidalChem products," which include "ColloidalChem +ISCR," "ColloidalChem +Anchor," and "ColloidalChem +Bio," as well as the associated remediation services involving their use (Compl. ¶¶ 18, 21).

Functionality and Market Context

The complaint describes the ColloidalChem products as a line of "high mobility and low pressure, injectable colloidal activated carbon products" (Compl. ¶18). They are designed for the in situ remediation of difficult-to-treat groundwater contaminants such as CVOCs and PFAS (Compl. ¶¶ 17-18). Each named product integrates the activated carbon with additional chemistries: "+ISCR" includes chemical reduction agents, "+Anchor" uses enzyme technology for mobility control, and "+Bio" contains chemistries to enhance bioremediation (Compl. ¶18.a-c). The complaint establishes that Cascade and Regenesis are direct competitors who offer "comparable" services and compete for the same customers and projects (Compl. ¶17).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint, an action for declaratory judgment, does not set forth Regenesis’s specific infringement theory on a claim-by-claim basis. A central allegation is that Regenesis has made general threats of infringement without identifying specific products, claims, or providing any infringement analysis (Compl. ¶¶ 28, 32). Therefore, a detailed claim chart summary cannot be constructed from the provided document.

  • Identified Points of Contention:
    • '132 Patent (Method Claim): An issue for the court will be whether the use of Cascade's ColloidalChem products constitutes practicing the claimed method. This raises the question of whether injecting a pre-formulated colloidal product meets the claim element of "mixing a sorbent material with a carrier to form a slurry." Further, the meaning of "permanent attenuation" will be critical, specifically what duration and level of stability are required to satisfy this limitation.
    • '743 Patent (Composition Claim): For the composition claims, the analysis will focus on a direct comparison of Cascade's product formulations to the claimed elements. A key question is whether the additives in the ColloidalChem products (e.g., the integrated chemistries for reduction in "+ISCR" or the enzyme technology in "+Anchor") function as both a "stabilizing polymer" and a "distribution enhancement agent" as required by the claims, and whether they fall within the claimed weight ratios. Cascade may argue its additives have different primary functions that place them outside the claim scope.

V. Key Claim Terms for Construction

  • Term: "permanent attenuation" ('132 Patent, claim 1)

    • Context and Importance: The scope of this term is central to the method claims. Its interpretation will determine the required longevity and effectiveness of the remediation effect. Practitioners may focus on this term because its potential ambiguity could be a basis for both non-infringement (arguing Cascade's effect is not "permanent") and invalidity (arguing the term is indefinite under 35 U.S.C. § 112).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification discusses the goal of making Monitored Natural Attenuation (MNA) more widely applicable and creating long-term treatment solutions, suggesting "permanent" could be read broadly to mean any long-lasting effect that enhances natural processes ('132 Patent, col. 2:19-34).
      • Evidence for a Narrower Interpretation: The word "permanent" itself implies an indefinite or extremely long duration. The specification also states that the sorbent material can be "permanently introduced into an aquifer," which could support a narrow construction requiring the physical material to remain in place indefinitely ('132 Patent, col. 3:6-8).

  • Term: "distribution enhancement agent" ('743 Patent, claim 1)

    • Context and Importance: This term is a core inventive concept of the '743 patent family. The infringement analysis will likely turn on whether the proprietary additives in Cascade's ColloidalChem products fall within its definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: Claim 1 provides a list of examples including "anionic surfactant, nonionic surfactant, chelating agent, or combinations thereof." The use of "chosen from" may support an interpretation that this is an exemplary, rather than exhaustive, list, potentially covering any agent that achieves the "enhancement" function.
      • Evidence for a Narrower Interpretation: The specification describes the agent's purpose is to "facilitate the ability of the composition to become distributed and dispersed" ('743 Patent, col. 3:46-49). Cascade may argue that its additives, such as the chemical reduction chemistry in "+ISCR," have a different primary purpose (e.g., contaminant destruction) and only an incidental effect on distribution, thereby falling outside a functionally-limited construction of the term.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Regenesis has threatened legal action against parties who "induce infringement (e.g. consulting engineering firms)" and those "committing contributory infringement (e.g. product suppliers)" (Compl. ¶25). This suggests Regenesis's underlying theory, which Cascade seeks to rebut, includes claims that Cascade is indirectly infringing by selling its ColloidalChem products to remediation contractors with instructions for an allegedly infringing use.
  • Willful Infringement: The complaint does not allege willfulness in the traditional sense. Instead, it leverages allegations of Regenesis's knowledge to support claims for unenforceability and antitrust violations. The complaint alleges that Regenesis's patents are unenforceable due to inequitable conduct, specifically the willful and intentional withholding of the material "Kopinke" prior art reference from the USPTO during prosecution (Compl. ¶¶ 46-49). This same allegation of knowing assertion of fraudulently procured patents forms the basis of Cascade's Walker Process antitrust claim (Compl. ¶¶ 56-60).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A key evidentiary question will be one of component functionality: do the additives in Cascade's "ColloidalChem" products perform the specific functions of a "stabilizing polymer" and a "distribution enhancement agent" as required by the '743 patent family, or is there a fundamental mismatch in their primary technical purpose and operation?
  • A central issue will be the validity and enforceability of the Regenesis patents. The court will need to determine if the "Kopinke" prior art reference, which allegedly predates the Regenesis patents and discloses the use of colloidal activated carbon for aquifer treatment, anticipates or renders obvious the asserted claims, and whether its alleged withholding from the USPTO rises to the level of inequitable conduct.
  • An initial procedural question will concern the justiciability of the dispute: has Regenesis's alleged campaign of industry-wide threats, without identifying specific infringing products or claims, created a controversy of "sufficient immediacy and reality" to warrant a declaratory judgment, or will Regenesis successfully argue its actions were permissible pre-suit enforcement activities?