6:18-cv-00249
Eco Stim Energy Solutions Inc v. McIntyre
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Eco-Stim Energy Solutions, Inc. (Nevada)
- Defendant: Ted McIntyre, II, Turbine Powered Technology, LLC, Marine Turbine Technology, LLC, and MTT Properties, LLC (Louisiana)
- Plaintiff’s Counsel: McKool Smith, P.C.
- Case Identification: 6:18-cv-00249, S.D. Tex., 08/17/17
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Texas because substantial events giving rise to the claims, including meetings between the parties and threatening communications from Defendants, occurred within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its hydraulic fracturing equipment does not infringe Defendant's patent related to multi-compatible digital engine controllers, and further alleges breach of contract and that Defendants' infringement accusations are baseless.
- Technical Context: The technology involves digital controllers for repurposed gas turbine engines used to power high-pressure pumps in the hydraulic fracturing (fracking) industry.
- Key Procedural History: The dispute arises from Plaintiff's purchase of "Green Field Equipment" from the bankrupt estate of a company affiliated with Defendant TPT. Plaintiff alleges it received a "freedom-to-operate" assurance from TPT prior to the purchase. After Plaintiff hired a competitor (AZT) to refurbish the equipment's pump controllers, Defendants began accusing Plaintiff of infringing the patent-in-suit. The complaint references prior and ongoing litigation between Defendants and third parties (TES, AZT) over the same technology, including a court finding that Defendant TPT failed to adequately identify its alleged trade secrets.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-14 | '078 Patent Priority Date |
| 2013-10-01 | Green Field files for bankruptcy (approx. date) |
| 2013-11-15 | '078 Patent application filed |
| 2014-10-13 | EcoStim purchases Green Field Equipment and receives freedom-to-operate assurance from TPT |
| 2015-08-06 | EcoStim enters service agreement with AZT to refurbish pump controllers |
| 2016-08-30 | '078 Patent issues |
| 2016-10-12 | TES assigns certain rights in the '078 patent to TPT |
| 2017-01-13 | Defendants' counsel sends demand letter to EcoStim alleging infringement |
| 2017-08-17 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,429,078 - “Multi-Compatible Digital Engine Controller,” issued August 30, 2016
The Invention Explained
- Problem Addressed: The patent describes the significant cost, time, and complexity of integrating stand-alone components (like engines) from different manufacturers into complex systems (like aircraft or ships). Each component often uses a unique, proprietary interface, leading to costly, duplicative, and "unmaintainable" "stovepipe" architectures ('078 Patent, col. 1:24-44).
- The Patented Solution: The invention is a "capability driven architecture" centered on a digital engine controller that can work with multiple, different variants of a gas turbine engine. The controller is programmed to receive an identification of the specific engine variant it is connected to (e.g., from a physically associated data source or "bullet") and then automatically "determine and adjust inputs to the engine" based on pre-stored rules and parameters for that specific variant. This creates a standardized, reusable interface that abstracts away the specific implementation details of any single engine ('078 Patent, Abstract; col. 2:50-59; Fig. 2).
- Technical Importance: This architecture aims to make the integration of new or replacement components in safety-critical systems faster and cheaper by creating an interface that is "verifiable, certifiable, and reusable within a given industry" ('078 Patent, col. 2:47-49).
Key Claims at a Glance
The complaint seeks a declaratory judgment of non-infringement of all claims of the '078 Patent (Compl. ¶207; Prayer for Relief ¶A). The key independent claims are Claim 1 (apparatus) and Claim 11 (method).
Independent Claim 1: A digital engine controller comprising:
- Compatibility with multiple variants of gas turbine engine.
- Programmed to receive engine-specific data from a machine-readable data source that is physically associated with a target gas turbine engine.
- Responsive to that data, determining combustion inputs (fuel, air, ignition) for the engine according to predetermined rules and parameters.
- Operating the engine in accordance with the determined inputs.
Independent Claim 11: A method of controlling a gas turbine engine comprising:
- Physically associating a machine-readable data source with a target engine.
- Providing a digital engine controller that is compatible with multiple engine variants but is "free from said physical association."
- Coupling the controller to the engine's controls and sensors.
- The controller receiving data from the associated data source.
- The controller determining combustion inputs and operating the engine based on that data.
III. The Accused Instrumentality
Product Identification
Plaintiff’s turbine-powered hydraulic fracturing pump trailers, referred to as the "Green Field Equipment" (Compl. ¶5, 19). The specific technology at issue is the control system for the turbine engines on this equipment (Compl. ¶88).
Functionality and Market Context
The Green Field Equipment was purchased by EcoStim from a bankrupt entity and is used in its oil-field services business for hydraulic fracturing operations (Compl. ¶4-5). The complaint asserts that the equipment includes two distinct controllers: a turbine engine controller and a pump controller (Compl. ¶100). Plaintiff alleges that the original turbine engine controllers ("iDEC" or "blue box" controllers) have not been modified since the purchase (Compl. ¶94, 101). The dispute appears to have been triggered when EcoStim hired a third-party, AZT, to replace the separate pump controllers, not the turbine engine controllers (Compl. ¶90, 93). The complaint includes a photograph of an original, unmodified iDEC controller, which it states is still installed on its equipment (Compl. p. 23). This visual evidence is presented to support the claim that the core engine control technology has not been altered or replaced (Compl. ¶101).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. Its theory is that Defendants' accusations are baseless because EcoStim's equipment does not practice the core features of the '078 patent. The following chart summarizes EcoStim's non-infringement arguments as they map to the elements of Claim 1.
'078 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (Plaintiff's Position) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A digital engine controller compatible with multiple variants of gas turbine engine... | The complaint, citing a separate lawsuit filing by an inventor of the '078 patent, asserts that the controller technology at issue (AZT's "iTxc") is "non-adaptive and hard-coded for use with a single type of gas turbine engine" and is not multi-compatible. | ¶151, 214 | col. 2:50-52 |
| ...receiving engine-specific data from a machine readable data source physically associated with a target gas turbine engine... | The allegedly relevant controller technology "has no need for, and does not receive, engine-specific data" and is "not responsive to engine-specific data because it is designed to receive none." | ¶151, 214 | col. 2:53-59 |
| ...responsive to receiving the engine-specific data determining combustion inputs...in accordance with predetermined target-engine-specific rules and parameters... | Because no engine-specific data is received, this step is not performed. The controller is allegedly not capable of managing an engine it is not "pre-programmed to manage," with parameters "hard-coded into its DEC software." | ¶151, 214 | col. 2:55-59 |
Identified Points of Contention
- Factual Question: A threshold issue is identifying the technology in dispute. Does the infringement accusation relate to the original, unmodified "iDEC" turbine engine controllers that EcoStim purchased, or does it relate to the replacement pump controllers installed by AZT? The complaint argues Defendants have conflated the two separate systems (Compl. ¶163, 209-210).
- Technical Question: Assuming the relevant controllers are at issue, what evidence will show whether they are "multi-compatible" as claimed? The complaint, relying on statements from an inventor, posits that the controllers are hard-coded for a single engine type (Compl. ¶151). This raises the question of whether there is a fundamental mismatch between the claimed adaptable architecture and the allegedly single-purpose, non-adaptive operation of the accused system.
- Prior Art Question: The complaint presents a figure from a 1970 textbook showing a gas turbine engine used for hydraulic fracturing in 1966 to suggest the underlying concepts are old (Compl. ¶43, p. 12). This raises the question of how the patent distinguishes its specific "multi-compatible" digital control method from the general, long-standing practice of using turbine engines for fracking.
V. Key Claim Terms for Construction
The Term: "compatible with multiple variants of gas turbine engine" (Claim 1)
- Context and Importance: This phrase is at the heart of the invention and the non-infringement dispute. Practitioners may focus on whether this term requires the claimed controller to have the built-in, automatic capability to adapt to different engine types, as described in the specification, or if it could more broadly cover a controller architecture that is merely capable of being configured for different engines, one at a time.
- Intrinsic Evidence for a Broader Interpretation: The plain language of the claim term itself does not explicitly use words like "automatic" or "adaptive."
- Intrinsic Evidence for a Narrower Interpretation: The Abstract, Summary of the Invention, and detailed description consistently frame the invention as a solution to "stovepipe" systems by providing a controller that can "receive identification of a variant of gas turbine engine... and thereafter to automatically determine and adjust inputs" ('078 Patent, Abstract; col. 2:53-59). This suggests the compatibility is an active, automatic feature, not a passive one.
The Term: "machine readable data source physically associated with a target gas turbine engine" (Claim 1)
- Context and Importance: This element defines the mechanism through which the claimed "multi-compatibility" is achieved. The non-infringement case may turn on whether the accused systems contain this specific component.
- Intrinsic Evidence for a Broader Interpretation: A party could argue that "physically associated" is broad and could encompass any data source located on the same equipment trailer as the engine.
- Intrinsic Evidence for a Narrower Interpretation: The specification provides specific examples of this data source, such as a "bullet" storing engine data, an RFID tag, or a barcode, which is physically attached to or integrated with the engine or its frame ('078 Patent, col. 15:5-12; col. 25:43-54). This suggests a discrete component whose purpose is to provide the engine's identity to the controller.
VI. Other Allegations
Indirect Infringement
The complaint seeks a declaration of non-infringement for all forms, including direct, induced, and contributory infringement (Compl. ¶207). As a declaratory judgment action, it does not plead facts supporting inducement but rather denies that any such infringement has occurred.
Willful Infringement
The complaint does not allege willfulness by the Plaintiff. Instead, it alleges that the Defendants' accusations of infringement are made in bad faith and form the basis for an "exceptional case" finding under 35 U.S.C. § 285 (Prayer for Relief ¶B). The complaint alleges that Defendants knew or should have known that EcoStim was not infringing based on, among other things, a separate lawsuit filed by an inventor of the '078 patent that details the non-infringing nature of the relevant technology (Compl. ¶147-151, 172).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual identification: what specific controller is the subject of the infringement dispute? The case may turn on whether Defendants' claims are directed at the original, unmodified turbine engine controllers, or at the separate, replacement pump controllers that Plaintiff alleges are unrelated to the patented technology.
- A key legal and technical question will be one of definitional scope: can the claim term "compatible with multiple variants," which the patent specification describes as an automatic, adaptive capability, be construed to read on a controller that is allegedly "hard-coded" and non-adaptive for a single engine type?
- A significant legal question, extrinsic to the patent claims themselves, will be the enforceability of the "freedom-to-operate" assurance that Plaintiff alleges it received from Defendants. The court will have to determine whether this agreement, and the related doctrine of patent exhaustion from the bankruptcy sale, bars Defendants from bringing infringement claims regardless of the technical merits.