DCT
1:18-cv-00145
Vertical Tank Inc v. Bakercorp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Vertical Tank, Inc. (California)
- Defendant: BakerCorp (Delaware); United Rentals (North America), Inc. (Delaware)
- Plaintiff’s Counsel: EASTMAN MCCARTNEY DALLMANN LLP
- Case Identification: 1:18-cv-00145, E.D. Cal., 11/13/2018
- Venue Allegations: Venue is alleged to be proper based on Defendants regularly conducting business in the district, operating a facility in Shafter, California, and committing the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ vertical cone-bottom storage tanks, which are equipped with upper and lower fluid manifolds, infringe one of Plaintiff's utility patents and two of its design patents.
- Technical Context: The technology pertains to large-scale, modular hydraulic tank systems used in field operations, such as the oil and gas industry, for storing and managing fluids like drilling mud.
- Key Procedural History: The complaint alleges that on July 31, 2018, Defendant BakerCorp merged with and into Defendant United Rentals (North America), Inc., with its operations becoming part of United Rentals.
Case Timeline
| Date | Event |
|---|---|
| 2013-08-27 | ’543 Patent Priority Date |
| 2013-12-04 | ’842 Patent Filing Date |
| 2013-12-04 | ’843 Patent Filing Date |
| 2014-11-04 | ’842 Patent Issue Date |
| 2014-11-04 | ’843 Patent Issue Date |
| 2017-10-03 | ’543 Patent Issue Date |
| 2018-07-31 | BakerCorp merges with URNA |
| 2018-11-13 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,777,543, "Device and Method for Multi-Path Flow from Vertical Hydraulic Tank," Issued Oct. 3, 2017
The Invention Explained
- Problem Addressed: The patent’s background describes inefficiencies with conventional steel vertical tanks used at industrial job sites. These tanks have limited fluid flow options and are difficult to clean, often requiring manual entry to switch between fluid types (e.g., water-based to oil-based mud), which leads to significant equipment downtime and labor costs (’543 Patent, col. 1:43-52).
- The Patented Solution: The invention is a vertical hydraulic tank system featuring a conical bottom and distinct upper and lower multi-path manifolds (’543 Patent, Abstract). This dual-manifold system provides multiple valved connection points, which allows for flexible fluid routing, the linking of multiple tanks into a larger array, and a closed-loop cleaning process that circulates fluid through the tank without requiring manual entry (’543 Patent, col. 2:54-65).
- Technical Importance: This system architecture was designed to reduce equipment and labor standby costs by simplifying the process of cleaning tanks in the field and increasing storage capacity through modular tank arrays (’543 Patent, col. 1:57-61).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 4 (Compl. ¶22).
- Independent Claim 1 of the ’543 Patent recites the core system, including the following essential elements:
- A tank with a cylindrical upper section and a conical lower section with a centered outlet.
- A lower manifold with a lower vertical conduit connected to the outlet, a plurality of lower horizontal conduits, and associated valves.
- An upper manifold with a central conduit surrounding the perimeter of the tank's conical section, a plurality of upper horizontal conduits, an upper vertical conduit feeding into the top of the tank, and associated valves.
- The complaint reserves the right to assert other claims.
U.S. Design Patent No. D716,842, "Lower Manifold," Issued Nov. 4, 2014
The Invention Explained
- Problem Addressed: Design patents protect the unique, ornamental appearance of an article of manufacture rather than its utilitarian features.
- The Patented Solution: The ’842 Patent claims the specific ornamental design for a lower manifold assembly (’842 Patent, Claim). As depicted in the patent’s figures, the design consists of a central T-junction from which four horizontal conduits extend in a cross-like configuration, with each conduit featuring flanged connectors and valve assemblies (’842 Patent, Fig. 1, 6).
- Technical Importance: The complaint frames this component as part of the overall design and selection of parts for Plaintiff's fluid tank system (Compl. ¶14).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a lower manifold, as shown and described" (’842 Patent, p. 1).
Multi-Patent Capsule: U.S. Patent No. D716,843
- Patent Identification: U.S. Design Patent No. D716,843, "Upper Manifold," Issued Nov. 4, 2014 (Compl. ¶11).
- Technology Synopsis: This patent protects the ornamental design for an upper manifold assembly, which is distinct from the lower manifold (Compl. ¶15). The claimed design features a square-shaped piping loop (the central conduit) with four valved connection points, and an integrated vertical pipe that rises and curves from one corner of the loop (’843 Patent, Fig. 1).
- Asserted Claims: The single claim for "The ornamental design for an upper manifold, as shown and described" (’843 Patent, p. 1).
- Accused Features: The complaint alleges the upper manifold of the Defendants' tanks is "substantially the same" as the design claimed in the ’843 Patent (Compl. ¶36).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are identified as "the Accused Tanks," which are described as "vertical cone bottom tanks equipped with nearly identical upper and lower manifolds" to those patented by Plaintiff (Compl. ¶17).
Functionality and Market Context
- The complaint alleges that Defendants manufacture and rent the Accused Tanks as part of their tank rental business, placing them in direct competition with Plaintiff's own "Protected Tanks" (Compl. ¶¶17-18). The complaint presents a side-by-side photograph comparing Plaintiff's tank with a "Baker Corp Accused Tank," both of which are large, frame-mounted vertical tanks with conical bottoms and external piping (Compl. p.5). The core allegation is that the Accused Tank is a "copy of the Vertical Tank design" (Compl. ¶21).
IV. Analysis of Infringement Allegations
’543 Patent Infringement Allegations
The complaint alleges that the Accused Tanks infringe, either literally or under the doctrine of equivalents, at least Claim 1 and Claim 4 of the ’543 Patent (Compl. ¶¶22-23). The allegations rely heavily on visual comparisons and assertions that the accused product is a "copy."
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tank having a cylindrical upper section...and a conical lower section...an outlet in the conical lower section and centered at the bottom... | The Accused Tanks are described as "vertical cone bottom tanks" (Compl. ¶17). A photo provided in the complaint depicts a large cylindrical tank with a conical bottom section (Compl. p.5). | ¶17, p.5 | col. 10:20-26 |
| a lower manifold having a lower vertical conduit in fluid communication with the outlet...a plurality of lower horizontal conduits...a lower vertical conduit valve, and a plurality of lower horizontal conduit valves... | The complaint alleges the Accused Tanks possess a "nearly identical" lower manifold (Compl. ¶17). A side-by-side visual comparison is offered, showing the accused manifold with a similar cross-shaped piping structure and valves as the patented design (Compl. p.6). | ¶17, ¶29, p.6 | col. 10:27-48 |
| an upper manifold having a central conduit surrounding a perimeter of the conical lower section; a plurality of upper horizontal conduits...an upper vertical conduit...an upper vertical conduit valve...and a plurality of upper horizontal conduit valves... | The complaint alleges the Accused Tanks possess a "nearly identical" upper manifold (Compl. ¶17). A visual comparison shows the accused upper manifold with an elevated piping assembly, which Plaintiff alleges is "substantially the same" as the patented design (Compl. p.7). | ¶17, ¶36, p.7 | col. 10:49 - 11:3 |
’842 and ’843 Design Patent Infringement Allegations
For the design patents, infringement is a question of visual similarity from the perspective of an ordinary observer.
- Lower Manifold (’842 Patent): The complaint alleges that a "side by side comparison" reveals the accused lower manifold is "substantially the same" as the claimed design (Compl. ¶29). This allegation is supported by an image comparing a drawing from the ’842 Patent with a photograph of the accused manifold (Compl. p.6).
- Upper Manifold (’843 Patent): Similarly, the complaint alleges that the accused upper manifold is "substantially the same" as the claimed design, supporting this with a comparison between a patent drawing and a photograph of the accused product with the upper manifold highlighted (Compl. ¶36, p.7).
Identified Points of Contention
- Technical Questions: The complaint's utility patent allegations depend on conclusory statements like "copy" and "nearly identical." A central question for the court will be whether discovery reveals that the Accused Tanks meet every structural limitation of the asserted claims. The alternative pleading of the doctrine of equivalents (Compl. ¶23) suggests the possibility of literal differences that Plaintiff may argue are insubstantial.
- Scope Questions: The case may feature disputes over the scope of claim terms. For instance, does the accused upper manifold's piping arrangement constitute a "central conduit surrounding a perimeter of the conical lower section" as required by claim 1 of the ’543 patent? The provided visuals are insufficient to resolve this without further evidence.
V. Key Claim Terms for Construction
The Term: "central conduit surrounding a perimeter of the conical lower section" (’543 Patent, Claim 1)
- Context and Importance: This term defines the fundamental structure of the claimed upper manifold. The infringement analysis will hinge on whether the accused manifold’s configuration, which is not fully detailed in the complaint, meets this "surrounding a perimeter" limitation. Practitioners may focus on this term because the patent figures show a very specific square-shaped arrangement, and any deviation in the accused product could be a basis for a non-infringement defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the central conduit "may be roughly square...or may be circular or provided in any other suitable shape," which could support a construction that is not limited to the exact square loop shown in the figures (’543 Patent, col. 5:14-17).
- Evidence for a Narrower Interpretation: The primary embodiment clearly illustrates a square conduit (element 36) that fully encloses the perimeter of the conical section (’543 Patent, Fig. 3). This could support a narrower construction limited to a continuous, enclosing loop.
VI. Other Allegations
Willful Infringement
- The complaint alleges that Defendants' infringement was willful, asserting they continued their infringing activities despite a "demand" from Vertical Tank and with "conscious disregard" of Plaintiff's patent rights (Compl. ¶¶18, 26, 33, 40). The prayer for relief seeks enhanced damages and a finding that the case is exceptional (Compl. p.8, ¶b).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural identity: does the accused tank system, particularly its upper and lower manifolds, contain structures that literally meet each limitation of Claim 1 of the ’543 patent? The case may turn on whether any identified differences between the accused product and the claim language are legally insubstantial under the doctrine of equivalents.
- For the design patents, a key question will be one of visual perception: from the viewpoint of an ordinary purchaser of industrial tank systems, is the overall ornamental appearance of the accused manifolds substantially the same as the designs claimed in the ’842 and ’843 patents, or are there sufficient visual differences to distinguish them?
- A third central question will be factual and related to willfulness: what evidence supports the "demand" allegedly made to Defendants, and what was their conduct upon receiving notice of Plaintiff's patent rights? The answers will determine potential exposure to enhanced damages.