DCT
1:23-cv-01180
Downing Wellhead Equipment LLC v. Intelligent Wellhead Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Downing Wellhead Equipment, LLC (Oklahoma)
- Defendant: Intelligent Wellhead Systems, Inc. (Canada), Intelligent Wellhead Systems, Corp. (Delaware), and IWS USA Corp. (Delaware)
- Plaintiff’s Counsel: Haynes and Boone, LLP
- Case Identification: 1:23-cv-01180, D. Colo., 08/07/2023
- Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendant IWS USA Corp. maintains a regular and established place of business in the district, and because Defendants have allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s inVision Technology Platform, used for managing hydraulic fracturing operations, infringes patents related to methods and systems for continuously pumping fracturing fluid while switching between wells.
- Technical Context: The technology addresses operational inefficiencies in "zipper fracturing," a process where multiple oil and gas wells on a single pad are fractured in alternating stages to minimize downtime for high-pressure pumps.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the pending application that became the ’779 Patent as early as June 30, 2022, and notice of the issued ’779 Patent on August 31, 2022. Notice of the pending application that became the ’770 Patent was allegedly provided on January 9, 2023.
Case Timeline
| Date | Event |
|---|---|
| 2017-12-14 | Earliest Priority Date for ’779 and ’770 Patents |
| 2022-06-30 | Plaintiff allegedly sends letter notifying Defendant of pending application for ’779 Patent |
| 2022-08-02 | U.S. Patent No. 11,401,779 Issues |
| 2022-08-31 | Plaintiff allegedly sends letter notifying Defendant of issued ’779 Patent |
| 2023-01-09 | Plaintiff allegedly sends letter notifying Defendant of pending application for ’770 Patent |
| 2023-01-24 | U.S. Patent No. 11,560,770 Issues |
| 2023-08-07 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,401,779 - "Hydraulic Fracturing Plan and Execution of Same"
- Issued: August 2, 2022
The Invention Explained
- Problem Addressed: In multi-well "zipper fracturing," conventional methods require shutting down high-pressure pumps when switching fluid flow from a completed well to the next well. This downtime, known as non-productive time (NPT), is costly due to delays and the need to re-prime and restart pumps (Compl. ¶¶19-20).
- The Patented Solution: The invention provides a method and system for a "continuous pumping swap" (CP swap) that transitions fluid flow between wells without stopping the pumps (’779 Patent, Abstract). The system monitors conditions in the first well (e.g., flow rate) and, upon determining a suitable condition is met, opens the valve to the second well before closing the valve to the first well, allowing for a near-instantaneous transition while pumping is maintained (’779 Patent, col. 13:43-50; Fig. 12).
- Technical Importance: This approach aims to eliminate the NPT associated with pump shutdowns during well swaps, thereby increasing operational efficiency and reducing costs in large-scale hydraulic fracturing operations (Compl. ¶21).
Key Claims at a Glance
- The complaint asserts independent claims 15 (method) and 25 (apparatus).
- Essential elements of independent claim 15 include:
- Permitting hydraulic fracturing of a second well, which includes opening its valve and measuring its fluid flow rate.
- Swapping to a first well by opening the first valve and then closing the second valve, while fluid is "continuously pumped" to both via a manifold.
- A "wherein" clause specifying the timing of the valve actions: in response to determining the measured flow rate has "satisfied one or more flow rate conditions," the first valve is opened before the second valve is closed; otherwise, the first valve is opened during or after the second valve is closed.
U.S. Patent No. 11,560,770 - "Hydraulic Fracturing Plan and Execution of Same"
- Issued: January 24, 2023
The Invention Explained
- Problem Addressed: The ’770 Patent, a continuation of the ’779 Patent, addresses the same problem of NPT in zipper fracturing operations caused by pump shutdowns during well transitions (Compl. ¶¶19-20).
- The Patented Solution: The patented solution is a method and apparatus for executing a continuous pumping swap. The system communicates fluid to a first well and, "in response to determining that the fluid...has satisfied one or more conditions," it initiates the swap by opening the valve to a second well, communicating fluid to it, and then closing the first valve (’770 Patent, Abstract; col. 14:43-48). This sequence ensures pumping continues throughout the changeover.
- Technical Importance: Like the parent patent, this invention is significant for enabling more efficient, continuous multi-well fracturing operations, which had become a standard but inefficient industry practice (Compl. ¶23).
Key Claims at a Glance
- The complaint asserts independent claims 1 (method) and 14 (apparatus).
- Essential elements of independent claim 1 include:
- Communicating fluid to a first well via a manifold and a first valve.
- In response to determining the fluid has "satisfied one or more conditions":
- opening a second valve;
- communicating fluid to a second well via the second valve; and
- closing the first valve after opening the second valve.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendants’ "inVision Technology Platform" (also referred to as "IWS's Operations Technology") (Compl. ¶59).
Functionality and Market Context
- The complaint alleges the inVision platform is a technology solution for hydraulic fracturing that includes software, sensors, and controls for digital valve operation (Compl. ¶¶59, 63). It is marketed as enabling "continuous pumping" and eliminating downtime between well transitions (Compl. ¶64). A marketing video referenced in the complaint shows a progression from single well operations to "Continuous Pad Operations" where downtime is eliminated. (Compl. ¶64, p. 27). The complaint alleges IWS has used this technology to achieve "75.4 hours of continuous pumping" with "zero nonproductive time" on a multi-well pad in Colorado (Compl. ¶60, 62).
- The complaint positions the accused technology as a direct competitor to Plaintiff's offerings, designed to reduce time and improve efficiency in multiwell zipper fracturing stimulations (Compl. ¶¶60, 66).
IV. Analysis of Infringement Allegations
The complaint incorporates by reference Exhibits 10 and 11, which contain detailed claim charts that were not filed with the complaint. The following summary is based on the narrative allegations in the complaint body.
’779 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) permitting hydraulic fracturing of the second well, comprising: opening the second valve...and measuring a flow rate... | The IWS Operations Technology controls valves and monitors operational data, including flow rates, during fracturing of a well (Compl. ¶¶59, 61). | ¶79 | col. 13:43-50 |
| (b) swapping...comprising: opening the first valve...and closing the second valve... | The IWS platform is allegedly used to execute well swaps by opening the valve of the next well before closing the valve of the current well (Compl. ¶¶63-64). | ¶79 | col. 14:17-40 |
| wherein, during step (b), hydraulic fracturing fluid is continuously pumped to the first and second valves via a hydraulic manifold; | IWS marketing materials and project descriptions allegedly confirm its technology enables "continuous pumping" without shutting down pumps during well swaps (Compl. ¶¶60, 63). The photograph from an IWS jobsite shows a zipper manifold arrangement for multiple wells. (Compl. ¶62, p. 26). | ¶79 | col. 7:59-64 |
| wherein: in response to determining that the flow rate measured at step (a) has satisfied one or more flow rate conditions, the first valve...is opened at step (b) before the second valve...is closed... | The complaint alleges on information and belief that the IWS platform practices this conditional logic, initiating the "open-before-close" sequence upon satisfaction of certain conditions (Compl. ¶79). | ¶79 | col. 13:43-50; Fig. 12 |
Identified Points of Contention:
- Evidentiary Question: A central question will be what evidence demonstrates that the accused IWS platform performs the specific conditional logic of the "wherein" clause. The complaint alleges this on "information and belief," which suggests a key area for discovery will be the operational software and control logic of the inVision system.
- Scope Question: The analysis will likely focus on the meaning of "satisfied one or more flow rate conditions." The parties may dispute whether this requires a specific threshold comparison (as depicted in ’779 Patent, Fig. 12) or if it can be read more broadly to cover any automated or manual trigger based on flow rate data.
’770 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| communicating fluid to a first well via a manifold and a first valve... | The accused IWS platform is used to control valves to direct fracturing fluid from a manifold to a specific well (Compl. ¶¶59, 99). | ¶99 | col. 14:29-35 |
| in response to determining that the fluid communicated via the manifold has satisfied one or more conditions: | The complaint alleges that the IWS platform's automated system initiates a well swap in response to determining that certain operational conditions, such as flow rate or pressure, are met (Compl. ¶¶56, 99). | ¶99 | col. 13:43-60 |
| opening a second valve; | IWS's digital valve control technology is used to open the valve of the next well in the sequence (Compl. ¶¶59, 63). | ¶99 | col. 14:31-32 |
| communicating fluid to a second well via the second valve; and | After the second valve is opened, fluid is directed to the second well while pumping continues (Compl. ¶64). | ¶99 | col. 14:32-35 |
| closing the first valve after opening the second valve. | The IWS platform allegedly performs an "open-before-close" sequence to transition between wells without stopping the pumps (Compl. ¶¶56, 99). This sequence is illustrated in a graph from the patent. (Compl. ¶30, p. 12, Fig. 16E). | ¶99 | col. 14:38-40 |
Identified Points of Contention:
- Technical Question: What specific "conditions" does the accused IWS platform monitor to trigger a well swap, and do these fall within the scope of the claim term? The patent specification provides examples like flow rate and pressure conditions (’770 Patent, 13:43-60).
- Scope Question: The term "satisfied one or more conditions" is broader than the "flow rate conditions" recited in the ’779 Patent. The litigation may explore whether this term can encompass triggers beyond fluid dynamics, such as timers or manual operator signals, and whether the specification provides support for such an interpretation.
V. Key Claim Terms for Construction
’779 Patent
- The Term: "satisfied one or more flow rate conditions"
- Context and Importance: This term is the central trigger for the inventive "open-before-close" swap logic. Its definition will determine what type of control logic infringes. Practitioners may focus on this term because it is the key distinction between a conventional well swap and the patented method.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of "one or more" suggests that various types of conditions related to flow rate could qualify, not just a single, specific one. The claim language does not explicitly limit the condition to a threshold comparison.
- Evidence for a Narrower Interpretation: The specification provides a specific example in Figure 12, which shows a check for whether the "frac rate" is below an upper threshold ("UT") and above a lower threshold ("LT") (’779 Patent, Fig. 12; col. 13:43-50). A defendant may argue this embodiment limits the term's scope to such a quantitative comparison.
’770 Patent
- The Term: "satisfied one or more conditions"
- Context and Importance: This term dictates the trigger for the entire claimed method. Its breadth is critical to the scope of infringement. The dispute will likely center on what types of events or data points can constitute a "condition" under the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is facially broad. The specification discloses that the condition could be a "flow rate condition" or a "pressure condition" (’770 Patent, col. 13:51-54), suggesting the term is not limited to a single physical parameter.
- Evidence for a Narrower Interpretation: While disclosing multiple types of conditions, the specification consistently describes them in the context of automated system monitoring of fluid properties to ensure a safe and effective swap (’770 Patent, col. 13:43-60). A defendant could argue the term should be limited to conditions related to the physical state of the fracturing fluid, excluding, for example, a simple timer or a manual input from an operator.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement of both patents. It claims Defendants knowingly induce their customers to infringe by providing the IWS Operations Technology along with "product information and instruction materials" that instruct on its use for continuous fracturing operations (Compl. ¶¶88-90, 108-110). A LinkedIn video is cited as an example of such instructional material (Compl. ¶90 n.8).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint states that Plaintiff sent letters to Defendants regarding the patent applications and the issued patents before filing suit, putting Defendants on notice of their allegedly infringing activities (Compl. ¶¶69-71).
VII. Analyst’s Conclusion: Key Questions for the Case
The dispute appears to center on the control logic of Defendant's automated fracturing system. The outcome may depend on the answers to the following key questions:
- A core issue will be one of definitional scope: How broadly will the court construe the trigger terms "satisfied one or more flow rate conditions" (’779 Patent) and the more general "satisfied one or more conditions" (’770 Patent)? The extent to which these terms are limited by the specific embodiments in the specification, such as threshold checks on fluid dynamics, will be critical.
- A key evidentiary question will be what proof emerges from discovery regarding the actual operation of the IWS inVision platform. Does its software contain code that executes the specific "open-before-close" valve sequence in response to monitored system conditions as claimed, or does it operate on a different logic, such as pre-set timers or direct manual commands that may fall outside the scope of the claims?