DCT
2:20-cv-02631
C Innovation LLC v. Trendsetter Engineering Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: C-Innovation, LLC (Louisiana)
- Defendant: Trendsetter Engineering, Inc. (Texas)
- Plaintiff’s Counsel: Jones Walker LLP
- Case Identification: 2:20-cv-02631, E.D. La., 09/29/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Louisiana because the dispute concerns an invention allegedly created within the district and arises from Defendant's conduct and commercial activities within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that it does not infringe Defendant’s patent for remediating hydrate blockages in subsea flowlines, and further that the patent is invalid and unenforceable due to incorrect inventorship and inequitable conduct before the U.S. Patent and Trademark Office.
- Technical Context: The technology concerns methods for clearing ice-like blockages known as hydrates, which can form in deep-sea oil and gas pipelines under high pressure and low temperature, by using a low-pressure gas-lift system.
- Key Procedural History: The complaint outlines a detailed history wherein Plaintiff's affiliate allegedly developed and commercially used the patented process in 2015. Plaintiff alleges it later disclosed the technical details and schematics of this process to Defendant in 2016 during a collaborative project. Subsequently, Defendant allegedly filed for patent protection on this process, naming its own employees as inventors and copying Plaintiff’s technical drawings. Plaintiff, after entering into and then terminating a license agreement under threat of litigation, now seeks to invalidate the patent based on its alleged prior public use and to declare it unenforceable for inequitable conduct.
Case Timeline
| Date | Event |
|---|---|
| 2015-11-01 | FTO Services (Plaintiff's affiliate) hired for "2015 Project" |
| 2015-12-23 | FTO Services begins remediation operations for 2015 Project |
| 2016-02-03 | FTO Services files International Patent Application on related technology |
| 2016-08-01 | FTO Services joint venture terminated |
| 2016-10-01 | "Rio Paper" disclosing the process submitted to conference |
| 2016-10-28 | First "2016 Project" involving Plaintiff and Defendant begins |
| 2016-11-11 | '785 Patent Priority Date (Provisional Application filed) |
| 2016-12-02 | Second "2016 Project" involving Plaintiff and Defendant begins |
| 2017-11-09 | '785 Patent Non-Provisional Application filed |
| 2019-04-30 | '785 Patent Issued |
| 2019-05-30 | Defendant informs Plaintiff of issued patent |
| 2020-09-28 | Plaintiff terminates license agreement with Defendant |
| 2020-09-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,273,785 - "Process for Remediating Hydrates from Subsea Flowlines"
The "’785 Patent," issued April 30, 2019.
The Invention Explained
- Problem Addressed: In deep-water oil and gas operations, a mixture of water and hydrocarbons can freeze into solid plugs called hydrates inside subsea flowlines due to high pressure and low temperatures, blocking production (Compl. ¶1; ’785 Patent, col. 2:32-42). Existing remediation methods, such as heating or injecting chemicals, are described as often being difficult, slow, or impractical (’785 Patent, col. 3:1-10).
- The Patented Solution: The invention proposes a process where a manifold is connected to the blocked flowline. Pressurized inert gas is passed across a pair of inlets on the manifold to establish a low-pressure zone. A valve is then opened to expose the high-pressure hydrate plug to this low-pressure environment, causing the hydrate to disassociate (melt). The inert gas then provides a "gas lift," pushing the cleared fluids and disassociated hydrates out of the manifold through one of the inlets and up to a surface vessel for collection (’785 Patent, Abstract; col. 8:15-19).
- Technical Importance: The process aims to provide an efficient method for clearing hydrate plugs that avoids the need for subsea pumps, which are described as potentially "troublesome for high gas volume fluids" (’785 Patent, col. 9:14-16).
Key Claims at a Glance
- The complaint challenges all claims of the ’785 Patent and specifically recites independent Claim 1 (Compl. ¶41).
- The essential elements of independent Claim 1 are:
- connecting a manifold to the flowline, the manifold having a pair of inlets and an outlet;
- passing an inert gas across the pair of inlets so as to create a reduced pressure across the pair of inlets that is less than a pressure of a fluid in the flow line;
- opening a valve between the pair of inlets and the flowline so as to expose the pressurized fluid in the flowline to the reduced pressure across the pair of inlets;
- disassociating hydrates in the flowline by exposure to the reduced pressure across the pair of inlets; and
- flowing the fluid and the disassociated hydrates from the flowline into the outlet of the manifold and outwardly of the manifold through at least one of the pair of inlets.
- The complaint does not explicitly reserve the right to challenge dependent claims, but its prayer for relief seeks a declaration that C-Innovation does not infringe "any claim" of the patent (Compl., Prayer for Relief ¶C).
III. The Accused Instrumentality
Product Identification
C-Innovation's process for remediating hydrates from subsea flowlines (Compl. ¶1).
Functionality and Market Context
The complaint describes C-Innovation's process as being the same one developed and used by its affiliate in the "2015 Project" (Compl. ¶¶34, 38). This process is described as creating "a low pressure environment in the subsea intervention system to which the flowline could be opened" to cause the hydrate to dissociate or sublimate (Compl. ¶11). The complaint alleges that C-Innovation is actively marketing these services and has prospective customers, but its ability to perform the work is burdened by Defendant's infringement allegations and the now-terminated license agreement (Compl. ¶¶37-39). The complaint's primary focus is on invalidating the ’785 Patent based on prior use of this very process, rather than distinguishing the process from the patent claims for non-infringement purposes.
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action focused on invalidity, the complaint does not contain a traditional infringement claim chart. Instead, it provides a narrative mapping the steps of Claim 1 to the prior art "2015 Project" to support its invalidity contentions.
Invalidity Allegations (per 2015 Project)
| Claim Element (from Independent Claim 1) | Alleged Prior Art Functionality (from 2015 Project) | Complaint Citation | Patent Citation |
|---|---|---|---|
| connecting a manifold to the flowline, the manifold having a pair of inlets and an outlet | The 2015 Project included the deployment of a remediation skid with a manifold having a pair of inlets and an outlet that was connected to a subsea flow line. | ¶42 | col. 7:6-14 |
| passing an inert gas across the pair of inlets so as to create a reduced pressure across the pair of inlets that is less than a pressure of a fluid in the flow line | The 2015 Project included passing an inert gas across the pair of inlets to create a reduced pressure across the pair of inlets that was less than a pressure of a fluid in the flow line. | ¶42 | col. 7:48-55 |
| opening a valve between the pair of inlets and the flowline so as to expose the pressurized fluid in the flowline to the reduced pressure across the pair of inlets | The 2015 Project included opening valve MSA2 to expose the pressurized fluid in the flow line to the reduced pressure across the pair of inlets. | ¶42 | col. 8:1-5 |
| disassociating hydrates in the flowline by exposure to the reduced pressure across the pair of inlets | The 2015 Project included disassociating the hydrates in the flow line by exposure to the reduced pressure across the pair of inlets. | ¶42 | col. 8:8-12 |
| flowing the fluid and the disassociated hydrates from the flowline into the outlet of the manifold and outwardly of the manifold through at least one of the pair of inlets | The 2015 Project included flowing the fluid and the dissociated hydrates from the flow line into the manifold outlet and out of the manifold through one of the inlets. | ¶42 | col. 8:12-19 |
Identified Points of Contention
- Factual Dispute over Inventorship: The central dispute is factual: who invented the claimed process? The complaint alleges the process was developed by C-Innovation's team, documented, and then shared with Trendsetter, which subsequently patented it. To support this, the complaint provides a side-by-side visual comparison of a "C-Innovation Schematic Drawing" and a nearly identical figure from Trendsetter's provisional patent application (Compl. p. 8). This evidence directly raises the question of whether the named inventors on the ’785 Patent conceived the invention or derived it from C-Innovation.
- Invalidity via Prior Public Use/Sale: A primary legal question is whether the "2015 Project" and subsequent "2016 Projects" constitute an invalidating public use or offer for sale under 35 U.S.C. § 102, occurring more than one year before the patent's effective filing date (Compl. ¶42).
- Technical Non-Infringement: In the alternative, the complaint makes a brief argument for non-infringement, stating its process does not include a specific step recited in a dependent claim of the patent (Compl. ¶52). This raises the question of whether C-Innovation's process avoids infringement of any valid claim, including independent Claim 1.
V. Key Claim Terms for Construction
The Term: "passing an inert gas across the pair of inlets"
- Context and Importance: This term defines the core mechanism for creating the low-pressure zone that enables hydrate dissociation. The interpretation of "across" will be critical to determining the scope of the claim. Practitioners may focus on this term because its construction will dictate whether a specific, directed flow path between the two inlets is required, or if simply introducing gas into the manifold housing the inlets is sufficient.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the step is to "pass the inert gas across the pair of inlets 20 and 24 by way of lines 40 and 42" (’785 Patent, col. 7:63-65). This language does not explicitly limit the flow to a single, unidirectional path.
- Evidence for a Narrower Interpretation: Figure 2 of the patent shows a specific circuit where lines 40 and 42 connect the two inlets (20, 24) via an orifice (38), with valves (72, 74) to control flow (’785 Patent, Fig. 2). A party could argue that "passing...across" must be read in light of this detailed embodiment, requiring a controlled flow from one inlet directly toward the other to create the pressure differential.
The Term: "outwardly of the manifold through at least one of the pair of inlets"
- Context and Importance: This limitation describes the exit path for the cleared fluids and is essential to the "gas lift" aspect of the invention. The dispute could turn on whether C-Innovation's process uses this exact return path.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language "through at least one of the pair of inlets" suggests flexibility, allowing the fluid to exit through either or both of the inlets that were initially used for gas injection.
- Evidence for a Narrower Interpretation: The specification describes this step as part of a "gas lift" meant to "force the fluids from the flowline 26 upwardly and outwardly of the manifold 16 so as to be collected by a vessel at the surface" (’785 Patent, col. 8:15-19). This stated purpose could be used to argue that the flow must exit "through" the inlet via the associated surface tubing (18 or 22), not just from the general manifold area, to achieve the intended surface collection.
VI. Other Allegations
- Invalidity (35 U.S.C. §§ 102, 103, 115): The complaint alleges that all claims of the ’785 Patent are invalid. The primary assertions are anticipation under § 102 based on the prior public use and sale of the process in the "2015 Project" (Compl. ¶42), as well as anticipation by prior art publications (Compl. ¶¶43-44). The complaint also alleges invalidity for failure to name the correct inventors (Compl. ¶47).
- Unenforceability (Inequitable Conduct): The complaint includes a count for unenforceability due to inequitable conduct. It alleges that the named inventors, having received detailed technical information and drawings from C-Innovation during collaborative projects, knew they were not the true inventors (Compl. ¶51). The complaint further alleges that they knowingly and with intent to deceive the U.S. Patent and Trademark Office signed false inventor declarations, which constitutes a material misrepresentation (Compl. ¶51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central question will be one of origination and timing: Was the claimed process first conceived and commercially deployed by C-Innovation's personnel during the 2015-2016 projects, as alleged in the complaint? The answer will be determinative for the core claims of incorrect inventorship and invalidity due to prior public use.
- A key evidentiary question will be one of intent to deceive: Can C-Innovation prove by clear and convincing evidence that the named inventors on the ’785 Patent knew they were not the originators of the invention and intentionally misrepresented inventorship to the Patent Office when filing the application and signing inventor declarations?
- Should the patent survive these challenges, a dispositive issue will become one of technical scope: Does the term "passing an inert gas across the pair of inlets," when read in light of the specification, require a specific, valved flow path between the inlets, and does C-Innovation's current process practice that specific limitation?