DCT
5:21-cv-00778
iBall Instruments LLC v. Butler
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: iBall Instruments, LLC (Oklahoma)
- Defendant: Myron Butler, Mark Robert Davis, David E. Moore, TOC Solutions, Inc., Telecomm Consultants, Inc., and TOC Rural Solutions, LLC (all Oklahoma-based)
- Plaintiff’s Counsel: Stuart & Clover, PLLC; Hall Estill
- Case Identification: 5:21-cv-00778, W.D. Okla., 10/13/2021
- Venue Allegations: Venue is based on the defendants' residence and transaction of business within the district, and the occurrence of events giving rise to the claims in the district.
- Core Dispute: Plaintiff alleges that Defendants, former employees and partners, misappropriated Plaintiff's trade secrets to develop a competing product and obtain a patent, and seeks, among other remedies, a declaration that Defendants' patent is invalid and correction of its inventorship.
- Technical Context: The technology concerns ruggedized, portable communication systems that provide voice and data connectivity in remote locations, such as oilfields, by using cellular networks with redundant failover capabilities.
- Key Procedural History: This federal case follows substantial state court litigation between the parties, which resulted in a 2013 settlement agreement. Plaintiff alleges Defendants breached this agreement by failing to turn over intellectual property that was subsequently used to file for the patent-in-suit. The complaint also details the prosecution history of the patent, noting that the key limitation of "at least two communications boards" was added late in prosecution to overcome prior art rejections.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-01 | Oklahoma State Court litigation between parties begins |
| 2012-06-01 | Defendants begin work on updating iBall's "Bloodhound" device |
| 2013-01-01 | Defendants allegedly offer new "TocBox Device" for sale |
| 2013-07-13 | Parties close on iBall Settlement Agreement |
| 2013-11-14 | '301 Provisional Application filed (Priority Date) |
| 2014-11-14 | '820 Utility Application (leading to '501 Patent) filed |
| 2017-10-02 | Amendment adding "at least two communications boards" filed |
| 2019-01-22 | U.S. Patent No. 10,187,501 issues |
| 2021-10-13 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,187,501 - “Ruggedized Voice and Data Communications System”
- Patent Identification: U.S. Patent No. 10,187,501, issued January 22, 2019 (’501 Patent).
The Invention Explained
- Problem Addressed: The patent describes a need for reliable communication systems in remote and inhospitable environments (e.g., oilfields, disaster sites) where stable power supplies and cellular coverage are lacking or unreliable (Compl. ¶14; ’501 Patent, col. 1:15-28).
- The Patented Solution: The invention is a self-contained, portable communication system housed in a ruggedized enclosure. It includes multiple communication boards and transceivers to connect to different cellular networks (e.g., GSM, CDMA), providing a failover capability. If a connection to a primary network fails, the system automatically attempts to connect to a secondary network to maintain connectivity (’501 Patent, Abstract; col. 11:50-col. 12:65). The system also contains a power supply with a battery to function without a stable external power source (’501 Patent, col. 7:7-14).
- Technical Importance: This approach provides communication redundancy and resilience, which is critical for operations in remote areas that cannot rely on a single cellular provider or a consistent power grid (’501 Patent, col. 1:29-34).
Key Claims at a Glance
- The complaint focuses on independent claim 1, which is the only independent claim in the patent (Compl. ¶60, 99).
- Essential elements of Claim 1 include:
- A ruggedized enclosure.
- At least two communications boards (a primary and a secondary network communicator).
- A processor and memory with instructions for a "failover mode," where upon failure of a first network connection, a second connection is provided by the second board.
- The transceiver of the first board is configured for a first network GSM connection, and the transceiver of the second board is configured for a second network GSM connection.
- A power system with a battery and a switching power supply.
- The complaint does not reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The "TocBox Device" (Compl. ¶14).
Functionality and Market Context
The TocBox Device is described as a stand-alone portable communications system created by packaging communications components, allegedly derived from Plaintiff's "Bloodhound" device, into a ruggedized enclosure (Compl. ¶14). It is designed to provide voice and data communications at remote well sites in the oil and gas industry (Compl. ¶60). The complaint alleges that Defendants currently sell and/or rent the TocBox Device to customers, including former customers of the Plaintiff (Compl. ¶51, 56). The device's development and sale form the basis of the Plaintiff's trade secret and contract claims, and its public use and offers for sale are central to the patent invalidity claims (Compl. ¶101).
IV. Analysis of Infringement Allegations
The complaint does not allege infringement by the Plaintiff. Instead, under its "Fifth Cause of Action," Plaintiff seeks a declaratory judgment that the ’501 Patent is invalid under 35 U.S.C. § 112 for lack of written description and § 102(b) due to an on-sale bar. The core of this allegation is that the limitation "at least two communications boards" was not disclosed in the provisional application, thereby breaking the priority chain and making offers to sell the TocBox Device in 2013 invalidating prior art.
’501 Patent Invalidity Allegations
| Claim Element (from Independent Claim 1) | Alleged Basis for Invalidity | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least two communications boards | Plaintiff alleges the provisional application, to which the patent claims priority, disclosed only a single communications board. | ¶98, ¶99 | col. 14:1-12 |
| [Entire Claim] | Because the "two communications boards" limitation allegedly lacks written description support in the provisional, Plaintiff alleges the claim is not entitled to the provisional's 2013 filing date. | ¶99 | col. 13:65-col. 14:52 |
| [Entire Claim] | Plaintiff alleges the effective filing date is the utility application's filing date of November 14, 2014. | ¶100 | col. 13:65-col. 14:52 |
| [Entire Claim] | Plaintiff alleges that Defendants' offers to sell the TocBox Device as early as January 2013 fall more than one year before the effective filing date, thus creating an invalidating on-sale bar under 35 U.S.C. § 102(b). | ¶101 | col. 13:65-col. 14:52 |
The complaint provides a diagram from the patent, Figure 6, which depicts a first communications board (32-1) and a second communications board (32-2) to illustrate the system with the disputed limitation (Compl. p. 17).
Identified Points of Contention
- Written Description Question: The central dispute will be whether the disclosure of the '301 provisional application, taken as a whole, would have conveyed to a person of ordinary skill in the art that the inventors were in possession of an invention with "at least two communications boards."
- Priority Date Question: The validity of the '501 Patent hinges entirely on whether it can maintain its claim of priority to the 2013 provisional application. If priority is lost, the alleged 2013 commercial activities of the Defendants may become invalidating prior art.
- Evidentiary Question: What evidence exists to substantiate the alleged offers for sale of the "TocBox" in January 2013, and did the device offered for sale embody the claimed invention?
V. Key Claim Terms for Construction
- The Term: "at least two communications boards"
- Context and Importance: This term is the lynchpin of the Plaintiff's invalidity case. Its interpretation relative to the disclosure of the priority document will determine the patent's effective filing date. Practitioners may focus on this term because it was added during prosecution specifically to overcome prior art, a fact that often invites scrutiny regarding written description support (Compl. ¶68, ¶70).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party defending the patent might argue that while a specific embodiment in the priority document showed one board, the overall disclosure contemplated modularity or expansion that would inherently support the concept of adding a second board, even if not explicitly drawn.
- Evidence for a Narrower Interpretation: Plaintiff's argument is that the provisional application explicitly disclosed and claimed a system with only one communications board (Compl. ¶98). The addition of the "at least two" limitation during prosecution to overcome prior art suggests it was a new feature not contemplated in the original filing. The specification of the issued '501 Patent explicitly describes embodiments with two boards, such as in Figure 6 and the accompanying text, which may be contrasted with the alleged disclosure of the provisional (Compl. ¶61, p. 17; '501 Patent, col. 11:39-41).
VI. Other Allegations
- Indirect Infringement: Not alleged by Plaintiff. The complaint seeks to prevent Defendants from enforcing or benefiting from their own patent.
- Willful Infringement: The term "willful" is used extensively, but in the context of trade secret misappropriation and breach of contract, not patent infringement (Compl. ¶12, ¶57, ¶84). The complaint alleges Defendants' entire course of conduct, from misappropriating trade secrets to filing the patent application, was willful and malicious, forming the basis for seeking enhanced damages under the Defend Trade Secrets Act and for arguing that the patent is the "fruit from the poisonous tree" (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents a complex interplay of trade secret, contract, and patent law. The resolution of the patent-specific claims will likely depend on the following questions:
- A central question of priority: Does the disclosure of the '301 provisional application provide adequate written description support for the "at least two communications boards" limitation added to Claim 1 during prosecution? The answer will determine the patent's vulnerability to on-sale bar invalidity challenges.
- A foundational question of inventorship: Was Plaintiff's principal, Carl Bright, the true inventor of the underlying technology allegedly misappropriated by the Defendants? If so, the patent faces invalidity for failure to name the correct inventor, and ownership could be transferred to the Plaintiff.
- A pivotal question of evidence: Can Plaintiff provide sufficient evidence to prove that the "TocBox Device" was subject to commercial offers for sale before the critical date and that the device offered for sale met the limitations of the '501 Patent's claims?