DCT
3:22-cv-04469
Earle Refining LLC v. New Vacuum Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Earle Refining, LLC (New Jersey)
- Defendant: New Vacuum Technologies LLC (Delaware) and North Jersey Petroleum Operations, LLC (New Jersey)
- Plaintiff’s Counsel: Sills Cummis & Gross P.C.
- Case Identification: 3:22-cv-04469, D.N.J., 07/07/2022
- Venue Allegations: Venue is asserted based on Defendants having a regular and established place of business in the District of New Jersey and having committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants' "Magnetic Vacuum Upgrading" process for refining crude oil infringes a patent covering a method of treating mineral oil using a combination of pressure waves and system-wide resonance.
- Technical Context: The technology operates in the field of petroleum refining, specifically methods for upgrading low-grade crude oil into more valuable, low-boiling point products like gasoline and diesel fuel.
- Key Procedural History: The complaint alleges a complex history, noting that Plaintiff purchased the patent-in-suit from its original owner, Pristec AG. It further alleges that two inventors of the patent-in-suit are also named inventors on a patent application owned by Defendant NVT that allegedly describes the infringing process. The complaint states these inventors previously worked for Pristec AG, developing the patented technology. Plaintiff also details multiple pre-suit notification letters sent to Defendants, which allegedly received no substantive response.
Case Timeline
| Date | Event |
|---|---|
| 2010-04-14 | U.S. Patent No. 10,053,635 Priority Date |
| 2018-08-21 | U.S. Patent No. 10,053,635 Issued |
| 2019-07-03 | Plaintiff Earle Refining purchases the '635 Patent |
| 2020-02-18 | Defendant NVT files U.S. Patent Application No. 16/793,273 |
| 2020 Fall | Defendant NVT allegedly installs and tests infringing technology |
| 2020-10-15 | NVT's U.S. Patent Application is published as US 2020/0325402 A1 |
| 2021-10-07 | Plaintiff Earle enters cooperation agreement confirming US rights |
| 2022-04-22 | Partner of Defendants posts on Twitter about July 2022 start date |
| 2022-05-13 | Plaintiff's counsel sends first infringement letter to Defendants |
| 2022-07-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,053,635 - "Method for the treatment of a liquid, in particular a mineral oil"
- Patent Identification: U.S. Patent No. 10,053,635, "Method for the treatment of a liquid, in particular a mineral oil," issued August 21, 2018.
The Invention Explained
- Problem Addressed: The patent seeks to improve upon existing methods for treating liquids like mineral oil. The goal is to more effectively break down long-chain, high-boiling point molecules into more valuable short-chain, low-boiling point fractions ('635 Patent, col. 1:15-21, col. 2:1-2).
- The Patented Solution: The invention introduces a dual-frequency approach. A pressure wave generator applies a first frequency to the liquid. Concurrently, the method deliberately excites the entire system—comprising the generator, pipes, and the liquid within—to oscillate at a second frequency that is the system's own resonance frequency. This system-wide resonance is achieved and maintained by withdrawing a portion of the treated liquid and re-feeding it into the system through a recirculation pipe equipped with at least one adjustable throttle valve, which allows for fine-tuning of system pressures ('635 Patent, col. 2:4-9; col. 2:60-col. 3:24; Fig. 1).
- Technical Importance: This method suggests that combining a localized pressure wave with a controlled, system-wide resonance provides a more effective means of destabilizing chemical bonds in hydrocarbons than prior art methods that relied on pressure waves alone ('635 Patent, col. 2:26-41).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 6 ('635 Patent, Compl. ¶22, Ex. 5).
- Independent Claim 1 requires:
- Feeding a liquid (mineral oil) through an application region of a pressure wave generator to subject it to a first frequency.
- The pressure wave generator comprises a rotor in a housing.
- Withdrawing, refeeding, and recirculating a portion of the liquid before it reaches a collection tank.
- Adjusting the pressure of the withdrawn liquid in the recirculation pipe with a throttle valve to achieve or maintain a resonance frequency of the system, which occurs at a second frequency.
- The liquid having a lower temperature before the resonance is achieved than after.
- Collecting the treated liquid, which has an increased portion of low-boiling fractions.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are processes referred to as the "Infringing Processes," specifically the "Magnetic Vacuum Upgrading (MVU) technology" used by Defendants for refining crude oil (Compl. ¶¶ 6, 17).
Functionality and Market Context
- The complaint alleges the accused MVU process is detailed in Defendant NVT’s own patent application, US 2020/0325402 A1 (the "'402 Publication") (Compl. ¶22). This document describes a "cold cracking" system using a "pump magnetic vacuum reactor" (PMVR) that combines a "pump acoustic field generator" with a "vacuum action source unit" to modify the "physical vacuum density" and break down hydrocarbons ('402 Pub., Abstract; ¶¶75-77). The system described in the '402 Publication includes recirculation loops and bypasses for re-feeding processed material back into the reactor ('402 Pub., ¶¶176, 187; Fig. 5).
- The complaint provides a claim chart (Exhibit 5) mapping the elements of the '635 Patent to the system described in the '402 Publication (Compl. ¶22). The claim chart (Exhibit 5) is a visual that outlines the Plaintiff's theory of how the accused functionality operates.
- The MVU technology is allegedly used at an oil treatment facility in northern New Jersey and was tested at a prototype plant in southern New Jersey (Compl. ¶¶ 6, 17, 19). It is marketed as a "disrupter in the oil treatment market" for upgrading low-grade petroleum (Compl., Ex. 3).
IV. Analysis of Infringement Allegations
Claim Chart Summary
- The complaint provides its infringement theory by mapping claims of the '635 Patent to disclosures in Defendant NVT's '402 Publication (Compl. ¶22; Ex. 5).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for the treatment of a liquid consisting essentially of mineral oil to increase the portion of low-boiling fractions... | The '402 Publication describes a "system and procedure for treatment of liquids, in particular a colloid hydrocarbon medium mineral oil...in order to 'increase the content of light, low boiling point fractions....'" | '402 Pub. ¶9 | col. 1:15-18 |
| (a) feeding the liquid through an application region of a pressure wave generator so as to subject the liquid to pressure waves having a first frequency in the application region, | The accused process uses a "reactor oscillator" with an impeller and stator blades that act as "sources of pressure waves" with a "frequency of oscillating and reciprocating pressure waves." | '402 Pub. ¶115 | col. 2:50-54 |
| wherein the pressure wave generator comprises a rotor mounted in a housing, | The accused process utilizes energy "induced by a rotor of a pump." | '402 Pub. ¶9 | col. 4:29-31 |
| (b) withdrawing a portion of the liquid...and refeeding said withdrawn portion of liquid in a recirculation pipe so as to pass through said application region, | The accused system provides for "additional exposure in PMVR 600 by re-feeding the partially-processed hydrocarbon liquid back to the reactor input through one or more bypasses or feedstock circulation loops." | '402 Pub. ¶176 | col. 2:60-65 |
| and adjusting the pressure of the withdrawn liquid in the recirculation pipe by the aid of at least one adjustable throttle valve as needed so as to achieve or maintain a resonance frequency of a system... | The accused system sets pressure via "settings of the bypass valves" and operates in a "vibration mode of the system" to achieve resonance. | '402 Pub. ¶¶180-181 | col. 3:5-15 |
| whereby the resonance frequency of the system occurs at a second frequency, | The accused system allegedly involves a "two-mode (i.e., two frequency) resonant pumping of energy" and the reactor "provides two resonant frequencies." | '402 Pub. ¶¶181, 144 | col. 2:6-9 |
| and wherein the liquid has a lower temperature of before (a) than after the resonance frequency is achieved or maintained; | The accused system is described as creating a "differential temperature between the inlet... and outlet" and that a vortex pump creates "pressure pulsations and an increase in temperature." | '402 Pub. ¶¶93, 187 | col. 5:32-49 |
| and (c) collecting the thus treated liquid in the tank, | The accused system transports feedstock to "temporary storage tanks in the external environment." The complaint includes a Twitter post from a partner of the defendants referencing the "terminal in southern NJ" (Compl., Ex. 8). | '402 Pub. ¶177 | col. 1:19-21 |
Identified Points of Contention
- Scope Questions: A primary question will be whether the Defendants' described technology, which focuses on creating a "modified density of physical vacuum," falls within the scope of the patent's claim language requiring the achievement of a "resonance frequency of a system" via hydraulic tuning. The defense may argue that its "vacuum" and "acoustic" technology is a distinct physical process from the system resonance described in the patent.
- Technical Questions: The complaint's infringement theory relies entirely on a patent application ('402 Pub.), not on direct analysis of the Defendants' actual process. A key factual question for the court will be what evidence demonstrates that the process operating in New Jersey is the same as the one described in the '402 Publication and whether that process, in practice, meets the specific limitations of the asserted claims.
V. Key Claim Terms for Construction
The Term: "resonance frequency of a system"
- Context and Importance: This term appears to be the central inventive concept. The infringement case hinges on whether the Defendants' MVU process—described as using "stochastic resonance" and a "modified physical vacuum"—can be characterized as achieving a "resonance frequency of a system" as claimed. Practitioners may focus on this term because its construction will likely determine whether the accused process, which is described using different terminology, falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines the "system" broadly as what "consists of or comprises the pressure wave generator and the pipings leading to and leading away from the pressure wave generator and... the liquid flowing through the system" ('635 Patent, col. 2:27-32). This could support an argument that any method that causes this entire collection of components to resonate infringes.
- Evidence for a Narrower Interpretation: The patent repeatedly and exclusively links the achievement of this resonance to a specific mechanism: "varying the pressure in the recirculation pipe by the aid of at least one adjustable throttle valve" ('635 Patent, col. 3:5-8). A defendant could argue the term is implicitly limited to resonance achieved through this specific method of hydraulic pressure manipulation.
The Term: "pressure wave generator"
- Context and Importance: The complaint alleges the accused "reactor oscillator feedstock" and "impeller" function as the claimed "pressure wave generator" (Compl., Ex. 5; '402 Pub. ¶115). The validity of this mapping will be a key issue.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the term is not limited to a single structure, stating that "mechanical, electromechanical, piezoelectric and other acoustic emitters can be used as the pressure wave generator" ('635 Patent, col. 4:51-53).
- Evidence for a Narrower Interpretation: The preferred embodiment described in detail is a specific type of rotor with openings interacting with a stator to create pressure waves as a function of rotational speed ('635 Patent, col. 4:54-58; Fig. 2). A party could argue the term should be construed in light of this detailed embodiment.
VI. Other Allegations
Willful Infringement
- The complaint alleges that Defendants' infringement has been and continues to be willful and deliberate (Compl. ¶45). This allegation is supported by claims that two inventors on the '635 Patent are also inventors on NVT's '402 Publication and previously worked for the original patent owner, giving them knowledge of the patent (Compl. ¶¶ 23-24). The complaint further supports this by detailing multiple pre-suit communications sent by Plaintiff's counsel that were allegedly ignored by Defendants (Compl. ¶¶ 29-41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical and claim scope equivalence: can the method described in the patent—achieving a "resonance frequency of a system" through hydraulic tuning with throttle valves—be construed to cover the accused MVU process, which is described as using "acoustic fields" and a "modified density of physical vacuum" to achieve its results? The case may turn on whether these are merely different descriptions of the same underlying physical phenomenon or are fundamentally distinct technologies.
- A key evidentiary question will be one of proof of infringement: The complaint's infringement allegations are based entirely on mapping the patent claims to the Defendants' own patent application. A central challenge for the Plaintiff will be to produce evidence that the process actually being used by Defendants at their New Jersey facilities is the same as the one described in that application and that this real-world process meets all limitations of the asserted claims.