DCT

1:24-cv-08279

Northern Divers USA Inc v. Atlantic Subsea Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-08279, D.N.J., 05/12/2025
  • Venue Allegations: Venue is alleged to be proper because the defendants reside in the District of New Jersey, maintain a regular and established place of business in the district, and have committed the alleged acts of patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ method of cleaning underwater intake pipes at a nuclear power plant infringes a patent covering Plaintiff’s proprietary pipe cleaning process.
  • Technical Context: The technology concerns methods for removing accumulated debris from large-scale, submerged water intake pipes used in industrial facilities like power plants to prevent obstruction and maintain water quality.
  • Key Procedural History: The complaint alleges a detailed history between the parties, beginning with Defendants hiring Plaintiff in 2015 to clean a pipe at the PSEG Salem Plant after their own attempts failed. Plaintiff alleges it disclosed its proprietary, patent-pending method to Defendants under confidentiality agreements. After the patent issued, Defendants allegedly continued to use the patented method without authorization or payment. The complaint also references demand letters and admissions made by a defendant in a separate court case regarding awareness of the patent application.

Case Timeline

Date Event
2014-03-15 ’891 Patent Priority Date
2015-01-28 Plaintiff and Defendant PSEG enter Confidentiality Agreement
2015-01-30 Plaintiff and Defendant ASI enter Confidentiality Agreement
2015-01-30 First authorized cleaning of PSEG pipe using Plaintiff's method
2015-02-02 Plaintiff and Defendant XYLEM enter Confidentiality Agreement
2015-03-12 Non-provisional application for ’891 Patent filed
2017-06-27 U.S. Patent No. 9,687,891 issues
2017-XX-XX Second authorized cleaning of PSEG pipe
2021-11-XX First alleged unauthorized cleaning of PSEG pipe
2021-12-09 Plaintiff approaches Defendant ASI regarding unauthorized operations
2022-02-03 Plaintiff sends first demand letter to ASI
2022-02-22 ASI rejects Plaintiff's first demand
2022-09-22 Plaintiff sends second demand letter to ASI
2022-10-17 ASI rejects Plaintiff's second demand
2025-05-12 First Amended Complaint filed

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

U.S. Patent No. 9,687,891 - "Intake Pipe Cleaning System and Method"

The Invention Explained

  • Problem Addressed: The patent’s background section describes the technical challenge of cleaning large industrial water intake pipes, which become clogged over time with debris such as zebra mussels, sand, and silt. This accumulation increases water turbidity, raising treatment costs. Previously known cleaning methods are described as "quite complicated, expensive and/or not environmentally friendly," sometimes requiring human divers or the removal of sensitive structures inside the pipe ('891 Patent, col. 1:40-2:28).
  • The Patented Solution: The invention is a method that reverses the normal operational flow of the pipe to dislodge and eject debris. The method involves fluidly isolating the plant-side end of the pipe, maintaining the submerged intake end open to the body of water, and using one or more pumps to force a high-volume "cleaning flow" of water into the pipe through a junction. This reverse flow travels the length of the pipe and exits through the submerged intake end, carrying the dislodged debris with it back into the body of water ('891 Patent, Abstract; col. 3:41-51). The specification also discloses using a specially constructed manifold to create a turbulent or swirling flow to enhance the "scrubbing effect" on the pipe's internal walls ('891 Patent, col. 7:17-30; Fig. 3).
  • Technical Importance: This approach allows for cleaning long, submerged pipes without requiring divers, submersible devices, or disassembly of internal components, offering a potentially simpler and more cost-effective solution ('891 Patent, col. 2:6-28).

Key Claims at a Glance

  • The complaint asserts independent claim 1 ('891 Patent, col. 9:8-49; Compl. ¶62).
  • The essential elements of independent claim 1 include:
    • fluidly isolating one end of the water intake pipe opposite an inlet end;
    • maintaining the inlet end in fluid communication with the body of water;
    • arranging at least one pump to draw liquid water from the body of water;
    • fluidly connecting the pump's output to the pipe through a junction located between the pipe's two ends;
    • activating the pump to draw water;
    • providing the flow of water through the junction to create a continuous water circuit that passes through the pipe and removes debris out the inlet end; and
    • maintaining the pump active until the pipe is clean, using a flow rate that is "higher than a normal flow of liquid water through the water intake pipe during normal operation."
  • The complaint alleges infringement of "one or more claims," which may include dependent claims not explicitly detailed (Compl. ¶61).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentality is not a product but a method: the underwater pipe cleaning services performed by Defendants ASI, Talwar, and Menezes for Defendant PSEG at the Salem Plant, allegedly using equipment supplied by Defendant XYLEM (Compl. ¶¶17, 40, 63).
  • Functionality and Market Context: The complaint alleges that after 2017, Defendants performed cleaning operations on a 700-foot underwater pipe at PSEG's nuclear power plant (Compl. ¶¶19, 40). These operations allegedly involved the same or a substantially similar process that Plaintiff's inventor, Frank Frosolone, designed and demonstrated to Defendants in 2015 (Compl. ¶64, 65). The accused method is alleged to use pumps and a specially designed manifold to create a high-volume water flow to clear blockages from the pipe (Compl. ¶¶40, 72). A photograph in the complaint shows multiple large pumps and hoses arranged on a barge, configured to perform this function (Compl. FIG. 4, ¶69). The complaint frames these services as a continuation of work for which Plaintiff was previously compensated, but performed after the patent's issuance without Plaintiff's authorization or license (Compl. ¶¶40-41).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,687,891 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
fluidly isolating one end of the water intake pipe that is disposed opposite an inlet end... The process allegedly used a flange to cap off one end of PSEG's underwater pipe. A photograph depicts a large pipe with a bolted flange cover (Compl. FIG. 1). ¶65 col. 9:13-15
maintaining the inlet end the water intake pipe in fluid communication with the body of water... The Salem Plant's underwater pipe is alleged to take in water from the Delaware River, with its inlet end remaining adjacent to the river bottom. ¶66 col. 9:16-22
arranging at least one pump to draw a flow of liquid water directly from the body of water; At least one pump was allegedly used to draw water directly from the Delaware River. A photograph shows multiple pumps on a barge (Compl. FIG. 4). ¶69 col. 9:23-25
fluidly connecting an output of the at least one pump to the one end of the water intake pipe through a junction... The output of the pump(s) was allegedly connected to an end of the pipe via a junction. A photograph shows multiple hoses feeding into a manifold connected to the pipe system (Compl. FIG. 5). ¶70 col. 9:26-30
activating the at least one pump to draw the flow of liquid water directly from the body of water; The pump was allegedly operated to draw a flow of water from the Delaware River. ¶71 col. 9:31-33
providing the flow of liquid water to the water intake pipe through the junction such that a flow of liquid water passes through the water intake pipe to create a continuous water circuit...to remove the debris... The process allegedly provides a flow of water through the pipe to create a continuous circuit that ejects debris from the pipe's end into the river until the pipe is clean. ¶71 col. 9:34-42
maintain the pump active...wherein the liquid flow of water provided through the water intake pipe for cleaning is higher than a normal flow...during normal operation. The pump was allegedly kept active until the pipe was clean, and the cleaning flow rate was higher than the pipe's normal operational flow, in part by using a "specifically designed manifold." ¶72 col. 9:43-49
  • Identified Points of Contention:
    • Factual Questions: The central dispute may be factual: what specific steps did Defendants perform in the cleaning operations subsequent to the patent's issuance in June 2017? The complaint alleges the process was identical to the one taught by the inventor (Compl. ¶65), but demonstrating this with evidence for each required step of the claim will be necessary.
    • Scope Questions: The interpretation of "higher than a normal flow" could be a point of contention. The analysis may require comparing the flow rate of the accused cleaning operations with the standard water intake rate of the Salem Plant during its normal power generation activities.

V. Key Claim Terms for Construction

  • The Term: "junction"

  • Context and Importance: This term is central to how the cleaning system is physically configured and is a key element in the contributory infringement claim against XYLEM, which allegedly supplied a "specially adapted manifold" that includes a junction (Compl. ¶102, 103). A defendant could argue that the equipment used was a standard, off-the-shelf manifold and not the specific "junction" contemplated by the patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself is general, requiring only "a junction disposed between the one end of the water intake pipe and the inlet end" ('891 Patent, col. 9:28-29). This could support a reading that covers any fitting used to connect the pump output to the pipe.
    • Evidence for a Narrower Interpretation: The specification describes specific embodiments, such as a "T-junction, Y-junction, or any other type of junction" (Compl. '891 Patent, col. 5:35-36) and a manifold with internal fins designed to impart a "turbulent or swirling flow characteristic" ('891 Patent, col. 7:25-30; FIG. 3). This may support an argument that the term "junction" should be construed to require more than a simple connection point, potentially one that modifies the water flow. The complaint's visual evidence of a complex manifold could be used by either side (Compl. FIG. 7, ¶103).

  • The Term: "higher than a normal flow of liquid water through the water intake pipe during normal operation"

  • Context and Importance: This limitation defines a key operational parameter of the claimed method and distinguishes it from regular pipe operation. Proving infringement requires establishing that the accused cleaning method meets this relative threshold.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The plain language suggests any flow rate that is measurably greater than the "normal" operational flow would satisfy the limitation.
    • Evidence for a Narrower Interpretation: The specification provides a specific example, stating the cleaning flow "is selected to be about 3 to 4 times the normal flow rate of water through the pipe" ('891 Patent, col. 3:26-28). A defendant may argue this disclosure limits the scope of "higher than" to a flow that is substantially, not just marginally, greater than the normal operational flow.

VI. Other Allegations

  • Indirect Infringement:
    • Inducement by PSEG: The complaint alleges PSEG had knowledge of the pending patent application via a 2015 confidentiality agreement and knowledge of the issued patent as of its issue date (Compl. ¶79). It is further alleged that PSEG actively instructed ASI to perform the patented cleaning method on its pipes, knowing the process was covered by the patent (Compl. ¶¶77, 80-81).
    • Contributory Infringement by XYLEM: The complaint alleges XYLEM supplied "especially made or especially adapted" pumps and manifolds that are a material component of the patented method (Compl. ¶104). It alleges these components are not staple articles of commerce and have no substantial non-infringing use (Compl. ¶104). Knowledge is alleged based on a 2015 confidentiality agreement, direct discussions with the inventor about the proprietary design, and express communication about the patent grant status (Compl. ¶¶92, 94, 108).
  • Willful Infringement: Willfulness allegations against all defendants are based on alleged pre-suit knowledge of the patent and the infringing nature of their activities. This knowledge is allegedly derived from the parties' extensive history, including confidentiality agreements referencing the patent application, direct communications with the inventor, admissions in a prior lawsuit, and formal demand letters sent prior to the current litigation (Compl. ¶¶41, 46, 56-59, 75).

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

  • A central issue will be one of evidentiary proof: Given the defendants' undisputed, authorized use of the plaintiff's method before the patent issued, what evidence can be produced to demonstrate that the exact method performed in the allegedly infringing operations (e.g., in 2021) met every limitation of the asserted patent claims?
  • The case will also present a question of claim scope: Will the term "junction" be construed broadly to cover any standard manifold connecting the pumps to the pipe, or will it be limited to a more specialized apparatus that imparts unique flow characteristics as described in the patent's specification?
  • For the indirect and willfulness counts, a key question will be the defendants' state of mind: While the complaint alleges a long history of notice and knowledge, the dispute will likely focus on whether the defendants possessed the specific intent to infringe after the patent issued, or if they developed a good-faith belief that their subsequent cleaning activities were non-infringing or that the patent was invalid.