DCT
1:23-cv-16544
Deublin Co LLC v. Beijing JJC Petroleum Equipment Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deublin Company, LLC (Delaware, PPoB Illinois)
- Defendant: Beijing JJC Petroleum Equipment Co., Ltd. (China)
- Plaintiff’s Counsel: Husch Blackwell LLP
- Case Identification: 1:23-cv-16544, N.D. Ill., 12/06/2023
- Venue Allegations: Plaintiff alleges venue is proper in any judicial district because Defendant is a foreign corporation not resident in the United States.
- Core Dispute: Plaintiff alleges that Defendant’s Mechanical Seal Washpipe products, used in oil and gas drilling, infringe a patent related to high-pressure seal assemblies.
- Technical Context: The technology concerns specialized seal assemblies for fluid couplings in high-speed, high-pressure geological drilling operations, where durability and service life are critical to minimizing operational downtime.
- Key Procedural History: The complaint alleges Defendant has directed activities toward the United States by seeking U.S. patents, attending U.S. trade conferences, and marketing products to U.S. customers. No prior litigation or post-grant proceedings involving the patent-in-suit are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2004-08-27 | ’968 Patent Priority Date |
| 2008-03-18 | ’968 Patent Issued |
| 2023-06-13 | Defendant allegedly provides price quote for Accused Products for U.S. delivery |
| 2023-12-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,343,968, “Washpipe Seal Assembly” (Issued: Mar. 18, 2008)
The Invention Explained
- Problem Addressed: In high-pressure oil and gas drilling, swivel seal assemblies that couple a stationary fluid source to a rotating drill string are subject to extreme wear from abrasive "drilling mud" and high rotational speeds. Prior art seals had a limited lifetime (as low as 20-30 hours under severe conditions), leading to frequent and costly rig downtime for replacement (’968 Patent, col. 1:39-48).
- The Patented Solution: The invention is an "extended life sealing arrangement" featuring a "floating seal assembly" mounted to the non-rotating part of the coupling (’968 Patent, col. 2:19-24). This assembly uses a pair of durable ceramic seal rings—one stationary and one rotating—to create a robust seal. A key aspect is a design that isolates a secondary seal from the high-pressure abrasive fluid and allows for precise alignment and easier replacement of the primary seal faces, thereby increasing operational life (’968 Patent, col. 3:9-24; Fig. 3).
- Technical Importance: The patent claims to provide a seal assembly operable at pressures up to 10,000 PSI with an extended life of up to 500-1,000 hours, a significant improvement over prior art that reduces expensive downtime in drilling operations (’968 Patent, col. 2:62-65).
Key Claims at a Glance
- The complaint asserts at least independent claim 18 (’968 Patent, col. 8:18-52).
- Independent Claim 18 requires a swivel assembly with:
- A non-rotating conduit member.
- A seal guide member secured to the non-rotating conduit, which has a tubular washpipe extension.
- A tubular floating seal member that is telescopically mounted around the washpipe extension and is "adjustably secured" to the non-rotating conduit member.
- A first seal ring member "structurally secured" to the distal end of the tubular floating seal member.
- A rotating conduit member.
- A second seal ring member "structurally secured" to the proximal end of the rotating conduit member.
- The first and second seal ring members must be in sealing engagement when high-pressure fluid is conducted through the assembly.
- The complaint's use of "at least claim 18" suggests the right to assert additional claims is reserved (Compl. ¶29).
III. The Accused Instrumentality
Product Identification
- The accused products are JJC’s “Mechanical Seal Washpipe” products (Compl. ¶1).
Functionality and Market Context
- The Accused Products are components for use in oil and gas drilling equipment (Compl. ¶1). The complaint provides diagrams from a JJC User Manual, including an exploded view that depicts components such as a "Washpipe," "Floating Seal Assembly," a "Top Stationary Seal," and a "Bottom Rotary Seal" (Compl. p. 8, Fig. 1-4). This diagram shows the "Floating Seal Assembly" being installed between an upper and lower housing section (Compl. p. 7, Fig. 2-6). The complaint alleges Defendant markets these products to U.S. customers through an interactive website, social media accounts, and by providing price quotes for delivery to U.S. locations (Compl. ¶13-19, 27).
IV. Analysis of Infringement Allegations
’968 Patent Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a non-rotating conduit member having a first end attached to the source of high pressure fluid and having an end opposite said first end, | The Accused Product is alleged to have a non-rotating conduit member with a first end for fluid attachment (Compl. p. 8, Fig. 1-4). | ¶32 | col. 4:62-65 |
| a seal guide member structurally secured to said end opposite said first end... with said seal guide member having a tubular washpipe extension portion which permits the passage of high pressure fluid therethrough; | The Accused Product is alleged to have a seal guide member with a tubular washpipe extension for fluid passage (Compl. p. 8, Fig. 1-4). | ¶32 | col. 5:5-14 |
| a tubular floating seal member telescopically mounted about said tubular washpipe extension portion and providing a seal chamber therebetween, with said tubular floating seal member... being adjustably secured to said non-rotating conduit member; | The "Floating Seal Assembly" in the Accused Product is alleged to be a tubular floating seal member telescopically mounted and adjustably secured (Compl. p. 7, Fig. 2-6). | ¶32 | col. 5:14-20 |
| a first seal ring member structurally secured to and aligned with said tubular floating seal member on said distal end thereof; | The "Top Stationary Seal" within the Accused Product's "Floating Seal Assembly" is alleged to be the first seal ring member (Compl. p. 8, Fig. 1-4). | ¶32 | col. 5:32-35 |
| a rotating conduit member having a proximal end aligned with respect to said distal end of said tubular floating seal member; | The Accused Product is alleged to have a rotating conduit member. | ¶32 | col. 4:62-65 |
| and a second seal ring member structurally secured to said proximal end of said rotating conduit member, | The "Bottom Rotary Seal" of the Accused Product is alleged to be the second seal ring member (Compl. p. 8, Fig. 1-4). | ¶32 | col. 5:40-44 |
| with said first and said second seal ring members being in sealing engagement when a high pressure fluid is conducted through the swivel assembly. | The complaint alleges that the "Top Stationary Seal" and "Bottom Rotary Seal" are in sealing engagement during operation. An overall view of the assembled Accused Product is provided as evidence of its operational configuration (Compl. p. 7). | ¶32 | col. 5:1-5 |
- Identified Points of Contention:
- Technical Questions: A primary question will be whether the components identified in the JJC User Manual diagrams, such as the "Top Stationary Seal" and "Bottom Rotary Seal," are "structurally secured" in the manner required by the claim. The complaint's visual evidence does not detail the specific method of attachment (e.g., keyed, heat-shrunk, bolted), which may be critical to the infringement analysis.
- Scope Questions: The interpretation of "adjustably secured" will be significant. The complaint alleges the accused "Floating Seal Assembly" is adjustably secured (Compl. ¶32), but provides limited detail on the mechanism. The court will have to determine whether the method of securing in the accused device falls within the scope of this claim term, as construed in light of the patent's specification.
V. Key Claim Terms for Construction
The Term: "adjustably secured"
Context and Importance: This term is critical as it defines the relationship between the non-rotating conduit and the floating seal member. The nature of this "adjustment" may be a key point of dispute, determining whether the accused product's method of assembly and fastening meets this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the mechanism of adjustment, which may support a construction covering any means of securing that allows for adjustment, such as threaded nuts or bolts.
- Evidence for a Narrower Interpretation: The preferred embodiment describes a specific mechanism where a "retracting nut 36 compresses a spring member 37 which provides a squeeze force" (’968 Patent, col. 5:36-40). This description of a spring-biased adjustment mechanism could be used to argue for a narrower construction that requires more than simple static fastening.
The Term: "structurally secured"
Context and Importance: This term defines how the first and second seal rings are affixed to the floating seal member and the rotating conduit member, respectively. Practitioners may focus on this term because the durability and alignment of the seal faces depend on this connection, and infringement will hinge on whether the accused product's assembly method falls within the term's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This term could be interpreted broadly to mean any method of attachment that fixes one component to another, directly or indirectly.
- Evidence for a Narrower Interpretation: The specification discloses specific methods, such as keying the seal ring assembly to the floating seal member and heat-shrinking a ceramic ring within a steel holder (’968 Patent, col. 5:30-35). This detailed disclosure may be used to argue that "structurally secured" implies a specific type of robust, precision-aligned connection suitable for high-pressure applications.
VI. Other Allegations
- Indirect Infringement: The complaint alleges indirect infringement, supported by the allegation that Defendant provides a "user manual" for the Accused Products (Compl. ¶27, 29, 31). This may form the basis for an induced infringement claim, arguing that the manual instructs customers on how to use the product in an infringing manner.
- Willful Infringement: The complaint pleads willful infringement and seeks treble damages (Compl. Prayer ¶C, E). The factual basis provided in the complaint relates to Defendant's marketing activities and an offer for sale, but does not include any allegations of pre-suit knowledge of the ’968 Patent. The willfulness claim appears to be predicated on continued infringement after the filing of the lawsuit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction: how will the court define the terms "adjustably secured" and "structurally secured"? The case may turn on whether these terms are given their broad, plain meaning or are limited by the specific spring-biased and heat-shrunk embodiments described in the patent's specification.
- A key evidentiary question will be one of structural and functional correspondence: does the accused JJC washpipe, particularly its "Floating Seal Assembly," possess the specific components and interconnections recited in Claim 18? The complaint relies on high-level user manual diagrams, and the court will require more detailed technical evidence to determine if there is a literal match for each claim limitation.