DCT

2:18-cv-05630

Benton Energy Service Co doing Business As Besco Tubular v. Cajun Services Unltd LLC doing Business As Spoked Mfg

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-05630, E.D. La., 06/04/2018
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Louisiana because the Defendant’s registered office and principal place of business are located in the district.
  • Core Dispute: This is a declaratory judgment action in which Plaintiff Besco seeks a ruling that Defendant Cajun's patent is invalid, unenforceable, and not infringed by Besco's oilfield pipe running services and equipment.
  • Technical Context: The technology relates to specialized inserts for oilfield elevators, which are large clamps used to lift and handle sections of pipe (tubulars) on a drilling rig.
  • Key Procedural History: The complaint alleges that this action was precipitated by an "imminent threat of a lawsuit" from the Defendant. It also references a prior lawsuit between the parties (Case No. 2:17-cv-00491) that was dismissed on standing grounds, in which Defendant Cajun allegedly stated its intent to sue for infringement as soon as the patent-in-suit issued.

Case Timeline

Date Event
2015-03-23 '862 Patent Priority Date (Provisional Application 62/136,978)
2018-06-04 Complaint for Declaratory Judgment Filed
2018-06-05 U.S. Patent No. 9,988,862 Issues

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

U.S. Patent No. 9,988,862 - "Elevator Roller Insert System"

  • Patent Identification: U.S. Patent No. 9,988,862, "Elevator Roller Insert System", issued June 5, 2018.

The Invention Explained

  • Problem Addressed: In oil and gas drilling, when connecting segments of pipe (tubulars), the heavy weight of a suspended segment can create immense friction. This makes it difficult to rotate the pipe for threading, which can lead to damaged threads ("galling" or "crushing") or cause the entire elevator holding the pipe to rotate on a swivel, creating safety risks (’862 Patent, col. 2:16-44).
  • The Patented Solution: The patent describes an insert system containing multiple sets of rollers that fits inside a standard pipe elevator. These rollers bear the vertical weight of the tubular while allowing it to rotate with very little torque. This arrangement facilitates the proper alignment and connection of threaded pipe segments without damaging them and avoids the need for a rotating elevator (’862 Patent, Abstract; col. 2:45-50).
  • Technical Importance: The invention aims to reduce costly downtime caused by destroyed pipe connections and improve rig safety by allowing heavy tubulars to be rotated within a stationary elevator (’862 Patent, col. 2:65-67).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement and invalidity of all claims 1-29 (Compl. ¶31, ¶37). The primary independent claims are 1 (system), 9 (insert), 19 (method), and 26 (method).
  • Independent Claim 1 (System Claim) requires:
    • A tubular with a larger upper outer diameter and a smaller lower outer diameter.
    • An elevator with arms that form an aperture.
    • A plurality of "upper rollers" and a plurality of "lower rollers" disposed within the elevator.
    • The upper and lower rollers are configured to contact the tubular.
    • The configuration allows the tubular to be "capable of freely rotating relative to the elevator" when the elevator arms are closed.
  • The complaint seeks a declaration of non-infringement of all claims, including dependent claims (Compl. ¶37).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Plaintiff Besco’s "pipe running services and/or related goods," specifically including "HSJE roller die inserts" and "Besco Roller Dies" (Compl. ¶1, ¶24; Prayer for Relief (b)).

Functionality and Market Context

  • The complaint states that Besco, an oilfield service provider, developed a concept for "installing rollers into the replaceable die inserts" of a standard hydraulic single joint elevator (HSJE) (Compl. ¶15).
  • The purpose of these roller die inserts is to "permit pipe to spin inside the Tesco HSJE," thereby accommodating pipe rotation during connection operations (Compl. ¶14).
  • After a business dispute with Defendant Cajun, who had initially been contracted to create drawings and prototypes, Besco engaged a third-party manufacturer to "independently design and manufacture new roller die inserts" based on Besco's original concept (Compl. ¶24).

IV. Analysis of Infringement Allegations

The complaint is for declaratory judgment of non-infringement and does not contain a detailed infringement analysis from the patentee. Instead, it makes a general assertion that Besco's products and services do not infringe.

The complaint alleges that Besco's "pipe running services and related products do not infringe any claim of the ’862 Patent because they do not contain certain limitations set forth in each of the independent and dependent Claims of the ’862 Patent" (Compl. ¶38). The complaint does not specify which limitations are allegedly not met or provide any element-by-element comparison.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Factual Dispute (Inventorship): The central dispute articulated in the complaint is not over technical infringement but over the patent's origin. Besco alleges that its employee, Jamie Lovell, conceived of the invention and that Cajun was merely a contractor hired to produce drawings and prototypes (Compl. ¶15, ¶17, ¶25). This directly raises the question of whether the patent correctly names the true inventors, which is a fundamental condition for validity and enforceability (Compl. ¶32, ¶43).
    • Technical Questions: While not detailed in the complaint, any infringement analysis would likely focus on the specific architecture of the claimed roller system. A key question would be whether the "Besco Roller Dies" (Compl., Prayer for Relief (b)) contain the distinct "plurality of upper rollers" and "plurality of lower rollers" as required by independent claim 1 of the '862 Patent, or if they employ a different roller configuration.

V. Key Claim Terms for Construction

While the complaint does not identify specific terms for construction, the following terms from independent claim 1 appear central to a potential dispute.

  • The Term: "upper rollers" and "lower rollers"

    • Context and Importance: Claim 1 requires both upper and lower rollers. The patent specification describes these as having distinct positions and, implicitly, functions—with the upper rollers bearing the primary weight of the tubular and the lower rollers providing alignment (’862 Patent, col. 6:30-40; Fig. 5). Practitioners may focus on these terms because if Besco’s device uses only a single set of rollers, or rollers that do not conform to this two-tiered structure, it may not infringe claims requiring both.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The terms are not explicitly defined, which could support an argument that any rollers in a higher vertical position qualify as "upper" and any in a lower position qualify as "lower," regardless of specific function.
      • Evidence for a Narrower Interpretation: Claim 1 requires the rollers to be in "upper recesses" and "lower recesses" (’862 Patent, col. 8:31-32). Figures 1A and 1B depict them as structurally separate components. Dependent claim 3 further specifies they are arranged in "a first common plane" and "a second common plane" (’862 Patent, col. 8:58-62), suggesting a distinct spatial separation that could support a narrower definition.

  • The Term: "freely rotating"

    • Context and Importance: This term describes the key functional benefit of the invention. Practitioners may focus on this term because its meaning is relative and could be a point of factual dispute. The degree of rotational freedom provided by Besco’s product compared to the standard defined by the patent will be critical.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification uses phrases like "rotate rather freely" (’862 Patent, col. 5:8), suggesting the term does not require completely frictionless rotation but rather a significant reduction in torque compared to conventional methods.
      • Evidence for a Narrower Interpretation: The objective is to allow connections to be "started by hand with the use of a strap wrench" (’862 Patent, col. 2:24-25), which could be argued to set a specific, low-torque performance threshold for what "freely rotating" means in the context of the patent.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaration that Besco does not infringe "either directly or indirectly" (Compl. ¶37), but it provides no specific facts related to allegations of inducement or contributory infringement.
  • Willful Infringement: The complaint does not allege willfulness against the Defendant. However, the factual background establishes the basis upon which the Defendant (patentee) could eventually allege willfulness against the Plaintiff (accused infringer). The complaint notes that in a prior action, Cajun "expressly informed the Court and Besco" of its intent to sue for infringement upon patent issuance (Compl. ¶27). This prior notice could be used by Cajun to argue that any continued accused activity by Besco after the patent issued was willful. Besco, in turn, alleges "unclean hands" and seeks a finding that the case is exceptional, likely based on its allegations of improper inventorship (Compl. ¶43; Prayer for Relief (e)).

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

The complaint frames the dispute around two central issues, one of which may be dispositive before any technical analysis is required.

  1. A threshold question will be one of inventorship and enforceability: who is the rightful inventor of the patented technology? The answer to this factual question—whether it was Plaintiff’s employee as alleged, or Defendant's named inventors—could determine the patent's validity and enforceability under the doctrine of unclean hands, potentially resolving the case.
  2. If the patent is deemed validly invented and enforceable, a key issue will be one of technical scope: does the specific design of Plaintiff's "Besco Roller Dies" meet every limitation of the asserted patent claims, particularly the requirements for distinct "upper" and "lower" roller sets that enable the pipe to be "freely rotating"?