DCT
0:13-cv-02385
M-I Drilling Fluids Uk Ltd v. Dynamic Air Ltda
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: M-I Drilling Fluids UK Ltd. (United Kingdom)
- Defendant: Dynamic Air Inc. (Minnesota) and Dynamic Air Ltda. (Brazil)
- Plaintiff’s Counsel: Alston & Bird LLP
- Case Identification: 0:13-cv-02385, D. Minn., 08/30/2013
- Venue Allegations: Plaintiff alleges venue is proper in Minnesota because Defendant Dynamic Air Inc. is a Minnesota corporation with its principal place of business in the state. Venue over the Brazilian subsidiary, Dynamic Air Ltda., is based on allegations that it operates as an alter-ego of its Minnesota parent and has purposefully engaged in business in the U.S. by installing and operating the accused systems on U.S.-flagged ships.
- Core Dispute: Plaintiff alleges that Defendants' pneumatic conveyance systems, used to transport drill cuttings from offshore oil rigs, infringe five U.S. patents related to methods and apparatuses for pneumatically conveying non-free flowing pastes.
- Technical Context: The technology addresses the logistical and environmental challenges of safely removing thick, heavy waste paste, such as oil-contaminated drill cuttings, from offshore drilling platforms for transport and disposal.
- Key Procedural History: The complaint alleges that Defendants developed the accused technology after hiring several former employees from Plaintiff's sister company who had intimate knowledge of Plaintiff’s own commercial system. Subsequent to the filing of this complaint, all five asserted patents were the subject of Inter Partes Review (IPR) proceedings. These IPRs resulted in the cancellation of all claims for two of the patents and the cancellation of most claims for the other three, leaving the case to proceed on a small number of dependent claims related to the use of ISO-sized containers.
Case Timeline
| Date | Event |
|---|---|
| 1999-06-16 | Priority Date for all five Asserted Patents |
| 2004-03-09 | U.S. Patent No. 6,702,539 Issued |
| 2004-03-23 | U.S. Patent No. 6,709,217 Issued |
| 2006-04-25 | U.S. Patent No. 7,033,124 Issued |
| 2007-03-06 | U.S. Patent No. 7,186,062 Issued |
| 2009-06-09 | U.S. Patent No. 7,544,018 Issued |
| 2011-10-01 | Alleged infringement begins (approx. date of bid submission) |
| 2013-02-01 | Accused system allegedly used on HOS Resolution (approx. date) |
| 2013-08-01 | Accused system allegedly installed on HOS Pinnacle (approx. date) |
| 2013-08-29 | Plaintiff sends notice letter to Defendants |
| 2013-08-30 | Complaint Filed |
| 2018-02-07 | IPR Certificate issues cancelling all claims of '539 Patent |
| 2018-02-08 | IPR Certificate issues cancelling claims of '217 Patent, except claim 11 |
| 2018-02-08 | IPR Certificate issues cancelling all claims of '124 Patent |
| 2018-02-07 | IPR Certificate issues cancelling claims of '062 Patent, except claim 11 |
| 2018-02-13 | IPR Certificate issues cancelling claims of '018 Patent, except claim 3 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,702,539 - "Pneumatic Conveying"
The Invention Explained
- Problem Addressed: The patent addresses the difficulty, expense, and danger of transporting thick, heavy, non-free flowing pastes, such as oil drill cuttings, from offshore platforms, which conventionally required laborious crane-and-skip operations (’539 Patent, col. 1:43-54).
- The Patented Solution: The invention proposes a method where the paste is loaded into a transportable vessel, and compressed gas is applied to the material's surface to push it out through an outlet pipe (’539 Patent, col. 2:1-7). A key innovation is the use of a vessel with a conical hopper portion designed with a specific cone angle to achieve "mass flow," a state where the entire volume of material moves uniformly toward the outlet, ensuring the vessel can be fully emptied without sticky material remaining on the sides (’539 Patent, col. 2:42-58).
- Technical Importance: The technology enabled the safe and efficient pneumatic transfer of materials previously considered unsuitable for such conveying methods, representing a significant operational improvement for offshore waste management (’539 Patent, col. 1:56-65).
Key Claims at a Glance
- The complaint generally asserts the patent. Independent claim 1, the broadest process claim, was likely the primary claim of interest at the time of filing.
- Independent Claim 1: A process comprising the steps of:
- introducing drill cuttings from an oil rig into a vessel having a conical portion defining a cone angle selected to achieve mass flow of said drill cuttings in said vessel; and
- applying a compressed gas to said drill cuttings in said vessel to cause said drill cuttings to flow out of said vessel as the sole means for inducing movement of said drill cuttings from said vessel.
- Subsequent IPR proceedings resulted in the cancellation of all claims (1-9) of the ’539 Patent.
U.S. Patent No. 6,709,217 - "Method of Pneumatically Conveying Non-Free Flowing Paste"
The Invention Explained
- Problem Addressed: The patent targets the same problem of handling "thick heavy pastes which are normally difficult to move and handle," specifically in the context of oil exploration waste (’217 Patent, col. 1:4-12).
- The Patented Solution: The invention describes a method for conveying a "non-free flowing, heterogeneous, multicomponent, earth extracted paste" by loading it into a vessel and applying compressed gas as the "sole means" of inducing movement for discharge (’217 Patent, col. 2:36-40; col. 5:20-25). The patent also discloses that the vessel can be adapted to fit within a standard ISO container frame, facilitating intermodal transport (’217 Patent, col. 5:49-51).
- Technical Importance: This method provided a systematic and enclosed process for moving difficult waste materials, improving safety and logistical efficiency over traditional open-air methods (’217 Patent, col. 1:26-33).
Key Claims at a Glance
- The complaint generally asserts the patent. Independent claim 1 is the broadest method claim.
- Independent Claim 1: A method comprising the steps of:
- loading said non-free flowing, heterogeneous, multicomponent, earth extracted paste into a vessel;
- providing a compressed conveyance gas to the vessel as the sole means for inducing movement of said paste in said vessel; and
- upon provision of the compressed gas, discharging at least a portion of said non-free flowing paste from the vessel.
- Subsequent IPR proceedings cancelled claims 1-10 and 12-30, but confirmed the patentability of dependent claim 11, which adds the limitation: "wherein the vessel is adapted to fit within an ISO container frame."
U.S. Patent No. 7,033,124 - "Method and Apparatus for Pneumatic Conveying of Drill Cuttings"
- Patent Identification: U.S. Patent No. 7,033,124, "Method and Apparatus for Pneumatic Conveying of Drill Cuttings", issued April 25, 2006.
- Technology Synopsis: Belonging to the same patent family, this patent discloses an apparatus and system for conveying non-free flowing drill cuttings. It claims a first pressure vessel that receives cuttings and uses compressed gas as the sole means of discharge, and may transfer the material to a second vessel. The design also contemplates a mass-flow-enabling conical portion (’124 Patent, col. 7:2-7).
- Asserted Claims: General allegation. Subsequent IPR proceedings resulted in the cancellation of all claims (1-20).
- Accused Features: Defendants' pneumatic conveyance systems used aboard the HOS Resolution and HOS Pinnacle (Compl. ¶54).
U.S. Patent No. 7,186,062 - "Method and Apparatus for Pneumatic Conveying of Drill Cuttings"
- Patent Identification: U.S. Patent No. 7,186,062, "Method and Apparatus for Pneumatic Conveying of Drill Cuttings", issued March 6, 2007.
- Technology Synopsis: This patent claims a method and apparatus for conveying drill cuttings by applying compressed gas to induce movement "without employing a non-pneumatic means." It further specifies that the vessel can be adapted to fit within an ISO container frame for transport and subsequent discharge (’062 Patent, Abstract; col. 7:11-13).
- Asserted Claims: General allegation. Subsequent IPR proceedings cancelled claims 1-10 and 12-49, but confirmed the patentability of dependent claim 11, which requires the vessel to be "adapted to fit within an ISO container frame."
- Accused Features: Defendants' pneumatic conveyance systems used aboard the HOS Resolution and HOS Pinnacle (Compl. ¶65).
U.S. Patent No. 7,544,018 - "Apparatus for Pneumatic Conveying of Drill Cuttings"
- Patent Identification: U.S. Patent No. 7,544,018, "Apparatus for Pneumatic Conveying of Drill Cuttings", issued June 9, 2009.
- Technology Synopsis: This patent claims a system comprising a storage vessel on a drilling rig connected by a conduit to a first pressure vessel on a boat. The boat's pressure vessel is configured to receive the cuttings and use compressed gas to discharge them, without other non-pneumatic means (’018 Patent, Abstract).
- Asserted Claims: General allegation. Subsequent IPR proceedings cancelled claims 1-2 and 4-9, but confirmed the patentability of dependent claim 3, which requires the rig-side "storage vessel" to be an "ISO container sized vessel."
- Accused Features: Defendants' pneumatic conveyance systems used aboard the HOS Resolution and HOS Pinnacle (Compl. ¶76).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are the pneumatic conveyance systems designed, sold, and operated by Defendants to transfer drill cuttings (Compl. ¶23). The complaint specifically identifies the systems installed and operated on the U.S.-flagged ships HOS Resolution and HOS Pinnacle (Compl. ¶¶24, 28).
- Functionality and Market Context: The complaint alleges these systems use pneumatic pressure to move drill cuttings from offshore oil rigs, such as the P-59 and P-III rigs off the coast of Brazil, onto the ships for transport and disposal (Compl. ¶¶23-26). Plaintiff alleges that Defendants won a contract from Petrobras for these systems after hiring former employees from Plaintiff's sister company, and that Defendants had not previously designed such a system (Compl. ¶24).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint provides a high-level narrative theory of infringement without detailed element-by-element analysis. The following charts summarize the allegations by mapping the general description of the accused systems to the elements of the representative independent claims asserted at the time of filing.
- '539 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| introducing drill cuttings from said oil rig into a vessel | Defendants' systems are used to "transfer drill cuttings off an offshore oil rig for storage and disposal." | ¶23 | col. 6:36-45 |
| having a conical portion defining a cone angle selected to achieve mass flow of said drill cuttings in said vessel | The complaint does not provide specific factual allegations regarding the vessel's internal geometry or flow characteristics. | ¶28 | col. 6:39-45 |
| applying a compressed gas...as the sole means for inducing movement of said drill cuttings from said vessel | Defendants' systems use "pneumatic means to transfer drill cuttings." | ¶23 | col. 6:40-45 |
- '217 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| loading said non-free flowing, heterogeneous, multicomponent, earth extracted paste into a vessel | Defendants' systems transfer "drill cuttings," which the complaint characterizes as a "very thick heavy paste." | ¶¶13, 23 | col. 5:20-21 |
| providing a compressed conveyance gas to the vessel as the sole means for inducing movement of said paste | The accused systems are described as "pneumatic conveyance methods, systems and apparatuses." | ¶23 | col. 5:21-24 |
| upon provision of the compressed gas, discharging at least a portion of said non-free flowing paste from the vessel | The accused systems "pneumatically convey drill cuttings onto and off of the HOS Resolution" for disposal. | ¶25 | col. 5:24-25 |
- Identified Points of Contention:
- Technical Questions: A primary factual dispute for the surviving claims ('217, '062, '018) will be whether the accused vessels are in fact "adapted to fit within an ISO container frame" or are "ISO container sized." The complaint does not contain facts to support this specific limitation. Another key technical question, relevant to the originally asserted claims, is whether the accused systems achieve the claimed "mass flow."
- Scope Questions: A central question of claim scope is the meaning of "sole means for inducing movement." The analysis will question whether Defendants' systems use only compressed gas, or if they employ any other non-pneumatic assistance (e.g., vibrators, mechanical screws), which could place them outside the scope of the claims.
V. Key Claim Terms for Construction
The Term: "sole means for inducing movement"
- Context and Importance: This limitation is central to the asserted patents' novelty, distinguishing them from prior art that required mechanical assistance. Its construction is critical because if Defendants' systems use any non-pneumatic aid to move the paste, they may not infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "sole means" refers to the primary motive force and does not exclude incidental aids that do not "convey" the material. The patent specifications do not appear to offer direct support for this reading.
- Evidence for a Narrower Interpretation: The specification explicitly distinguishes the invention from prior art requiring "mechanical agitation" or a "conveying screw," suggesting the inventor intended to disclaim any such components (’539 Patent, col. 1:50-54). This supports a strict interpretation where the presence of any other motive force is non-infringing.
The Term: "adapted to fit within an ISO container frame"
- Context and Importance: This limitation is present in the only surviving claims of the '217 and '062 patents, making its construction potentially dispositive for a significant portion of the case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "adapted to fit" merely requires the vessel's external dimensions to be compatible with the standardized internal dimensions of an ISO frame, without requiring it to be integrated into one.
- Evidence for a Narrower Interpretation: Figures in the patents (e.g., ’539 Patent, Fig. 7C) depict the conveying vessel (31) situated inside a "support frame" (81) that has the appearance of a standard ISO container frame. This embodiment may support an interpretation that the term requires the vessel to be specifically designed for, or integrated with, such a frame.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement. It claims the accused systems have no substantial non-infringing uses and are especially made for infringement (Compl. ¶29). It further alleges inducement based on Defendants providing end users with "specific instructions on how to operate the pneumatic conveyance systems in an infringing way" (Compl. ¶38).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. Pre-suit knowledge is alleged based on Defendants' position as a "close competitor" and, critically, their hiring of former M-I employees with "intimate knowledge" of Plaintiff's patented technology (Compl. ¶34). Post-suit knowledge is established by a notice letter sent to Defendants on August 29, 2013, the day before the complaint was filed (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of physical configuration: are the accused conveyance vessels used by Dynamic Air constructed within, or otherwise "adapted to fit," a standard ISO container frame? The answer to this specific factual question will likely determine the outcome for the claims that survived IPR.
- A core issue for claim construction will be one of functional exclusivity: does the term "sole means for inducing movement" strictly forbid the presence of any non-pneumatic assistance, or can it be read to allow for minor aids that do not serve as the primary conveying force?
- A fundamental question is the viability of the litigation itself: given that post-filing IPRs invalidated the majority of the asserted claims, including all claims of two patents, the dispute has been dramatically narrowed from a broad challenge over core pneumatic conveying technology to a highly specific fight over the physical form factor of the accused vessels.