DCT
2:18-cv-01084
Dirk Thomas Solutions LLC v. In Situ Treatment Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dirk Thomas Solutions, LLC (Pennsylvania)
- Defendant: In-Situ Treatment Technologies, LLC (Pennsylvania) and Raymond J. Roccon (individual)
- Plaintiff’s Counsel: FisherBroyles, LLP; Honigman Miller Schwartz and Cohn LLP
- Case Identification: 2:18-cv-01084, W.D. Pa., 08/17/2018
- Venue Allegations: Venue is alleged to be proper as both the plaintiff and defendants are residents of the district, maintain principal places of business there, and a substantial part of the events giving rise to the claims occurred within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its methods for treating hydraulic fracturing wastewater do not infringe Defendants' patents covering water disinfection processes, and further seeks a declaration that those patents are invalid and unenforceable.
- Technical Context: The technology concerns methods for disinfecting and reusing "production water" from oil and gas hydraulic fracturing operations, a field of significant commercial importance due to the high costs and environmental regulations associated with water use and disposal.
- Key Procedural History: The complaint alleges that after a prior business relationship between the parties terminated in 2015, Defendants sent letters in 2017 and 2018 accusing Plaintiff of patent infringement, including to one of Plaintiff's largest customers. The complaint also highlights the prosecution history of the '966 Patent, alleging that a key "pH Adjustment Step" was added to the claims to overcome an examiner's rejection, a fact which may give rise to prosecution history estoppel. A prior declaratory judgment action involving the '966 Patent against a third party was reportedly dismissed within three months of filing.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-03 | Priority Date for '966 and '716 Patents |
| 2015-09-01 | U.S. Patent No. 9,120,966 Issued |
| 2015-Fall | Defendants allegedly terminate business agreement with Plaintiff |
| 2015-11-03 | Defendants allegedly send infringement notice to Ecosphere Tech. |
| 2016 | Plaintiff begins servicing EQT wells |
| 2017-09-12 | U.S. Patent No. 9,758,716 Issued |
| 2017-10-04 | Defendants send letter to Plaintiff's customer (EQT) alleging infringement |
| 2017-Late | EQT acquires Rice Energy |
| 2018-07-17 | Defendants send letter to Plaintiff alleging infringement |
| 2018-08-17 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,120,966 - Process for Disinfecting and Stabilizing Production Water Using In-Situ Hyprobromous Acid Generation (Issued Sep. 1, 2015)
The Invention Explained
- Problem Addressed: The patent addresses the difficulty and cost associated with disposing of large volumes of wastewater generated during hydrocarbon production operations ('966 Patent, col. 2:1-6).
- The Patented Solution: The invention proposes a method to reuse this wastewater as a disinfectant. It leverages the bromide ions naturally present in the water by first adjusting the water's pH downward with an acid and then adding an oxidizing agent. This chemical process converts the bromide into hypobromous acid, a strong disinfectant, creating a usable disinfectant solution from the waste stream itself ('966 Patent, Abstract; col. 3:20-28). The pH adjustment step is also described as a means to prevent the formation of "scale-forming salts" ('966 Patent, col. 3:62-65).
- Technical Importance: This process offers a potential method to reduce operational costs and the environmental footprint of hydraulic fracturing by recycling production water, thereby reducing the need for both freshwater inputs and wastewater disposal ('966 Patent, col. 5:1-6).
Key Claims at a Glance
- The complaint asserts non-infringement of the patent's claims, with a focus on representative Claim 1 (Compl. ¶¶18, 86).
- Independent Claim 1 requires:
- A method of reusing waste-water resulting from hydrocarbon production operations as a disinfectant comprising:
- a) providing waste-water resulting from hydrocarbon production operations containing greater than 3 ppm bromide ion;
- b) adjusting the pH of the waste-water with an acid to less than 8.5; and
- c) adding a sufficient amount of an oxidizing agent that is different from the acid used in step b) to convert the bromide ion to hypobromous acid to provide a disinfectant solution.
- The complaint states that all claims of the '966 Patent include the pH Adjustment Step (Compl. ¶15).
U.S. Patent No. 9,758,716 - Process for Treating a Wastewater Stream Produced by Hydrocarbon Production Operations for Repurposing as a Disinfectant for Hydrocarbon Production Operations (Issued Sep. 12, 2017)
The Invention Explained
- Problem Addressed: Like its parent patent, the '716 Patent addresses the need for alternative uses for wastewater from hydrocarbon production to avoid disposal ('716 Patent, col. 2:11-14).
- The Patented Solution: This invention also describes a method to create a disinfectant from production wastewater. The process involves adding an oxidizing agent and "providing a source of ammonia." This combination is intended to yield chloramines and/or bromamines, which are effective disinfectants ('716 Patent, Abstract; col. 2:50-56). The specification notes that this chemistry may be beneficial for avoiding the formation of certain regulated byproducts, known as trihalomethanes (THMs), that can result from other disinfection methods ('716 Patent, col. 6:1-15).
- Technical Importance: The method provides an alternative disinfection chemistry that may allow for effective water treatment while managing the formation of potentially undesirable disinfection byproducts.
Key Claims at a Glance
- The complaint asserts non-infringement of the patent's claims, with a focus on representative Claim 1 (Compl. ¶¶20, 87).
- Independent Claim 1 requires:
- A method of treating a waste-water stream produced from hydrocarbon production operations for repurposing as a disinfectant used in hydrocarbon production operations comprising:
- a) providing waste-water resulting from hydrocarbon production operations in which the bromide ion concentration is known to be greater than 3 ppm bromide ion; and
- b) adding a sufficient amount of an oxidizing agent to the wastewater and providing a source of ammonia to yield at least one of a chloramine and a bromamine in amounts sufficient to provide a disinfectant solution for use in hydrocarbon production operations.
- The complaint notes that Claim 1 and its dependent claims require the use or introduction of ammonia (Compl. ¶87).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the water treatment processes and methods employed by Plaintiff, Dirk Thomas Solutions, LLC, at hydrocarbon well sites (Compl. ¶¶22, 30).
Functionality and Market Context
- Dirk Thomas provides well-servicing operations that include treating production water with disinfectants to maintain well productivity (Compl. ¶¶27, 29, 38). The complaint states that Dirk Thomas services wells for major industry participants such as EQT Corporation (Compl. ¶31). The core of the Plaintiff's position is that its processes are factually different from the methods claimed in the patents-in-suit (Compl. ¶¶39, 41).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint seeks a declaratory judgment of non-infringement. The following tables summarize the plaintiff's non-infringement positions with respect to the core limitations of each patent's representative independent claim.
'966 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per DJ Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) providing waste-water resulting from hydrocarbon production operations containing greater than 3 ppm bromide ion | The complaint describes Plaintiff's business as servicing hydrocarbon wells, implicitly acknowledging this step occurs. | ¶30, ¶38 | col. 5:53-57 |
| b) adjusting the pH of the waste-water with an acid to less than 8.5 | Plaintiff alleges its processes "never included and to this day do not include treating the pH of production water." | ¶39, ¶86 | col. 5:58-59 |
| c) adding a sufficient amount of an oxidizing agent...to convert the bromide ion to hypobromous acid... | The complaint states Plaintiff uses "disinfectants" but centers its non-infringement argument on the absence of step (b). | ¶38 | col. 6:0-4 |
'716 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per DJ Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) providing waste-water resulting from hydrocarbon production operations in which the bromide ion concentration is known to be > 3 ppm | The complaint describes Plaintiff's business as servicing hydrocarbon wells, implicitly acknowledging this step occurs. | ¶30, ¶38 | col. 8:49-52 |
| b) adding a sufficient amount of an oxidizing agent...and providing a source of ammonia to yield at least one of a chloramine and a bromamine... | Plaintiff alleges it "does not and never has added or utilized a source of ammonia to well wastewater as part of its processes." The complaint further states that its processes do not include practicing this method. | ¶21, ¶41, ¶87 | col. 8:53-58 |
- Identified Points of Contention:
- Technical Questions: The primary disputes appear to be factual. For the '966 Patent, the question is whether Plaintiff's process includes a step of "adjusting the pH...with an acid" (Compl. ¶86). For the '716 Patent, the question is whether Plaintiff's process involves "providing a source of ammonia" (Compl. ¶87).
- Scope Questions: The complaint raises a significant legal question regarding the '966 Patent by alleging that the "pH Adjustment Step" was added to the claims to secure allowance from the patent office (Compl. ¶¶14-15). If established, this prosecution history could estop the patentee from arguing that processes lacking this specific step infringe under the doctrine of equivalents.
V. Key Claim Terms for Construction
The Term: "adjusting the pH of the waste-water with an acid to less than 8.5" ('966 Patent, Claim 1)
- Context and Importance: This term is the crux of the non-infringement allegation for the '966 Patent, as Plaintiff claims its process entirely omits this step (Compl. ¶¶39, 86). The construction of "adjusting" will determine whether an affirmative, deliberate step is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue that the term could encompass any addition of an acidic substance that results in the claimed pH, even if the primary purpose of the additive was not pH adjustment. The complaint does not provide sufficient detail for further analysis of this point.
- Evidence for a Narrower Interpretation: The claim language "adjusting...with an acid" suggests a deliberate action to modify pH. The complaint alleges this limitation was added to overcome a rejection, which strongly supports that it is an essential, not incidental, feature of the invention (Compl. ¶14). The patent specification describes this step as a way to "maximize the conversion of bromide" and "minimize the formation of scale forming salts," framing it as a distinct, purposeful step ('966 Patent, col. 3:51-65).
The Term: "providing a source of ammonia" ('716 Patent, Claim 1)
- Context and Importance: This limitation is central to the non-infringement case for the '716 Patent. Plaintiff asserts it has "never...added or utilized a source of ammonia" (Compl. ¶21). The dispute will likely focus on what constitutes "providing."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '716 Patent specification contemplates situations where ammonia may already be present, stating "if sufficient ammonia is not already present in the wastewater, to yield at least one of a chloramine and a bromamine" ('716 Patent, col. 2:51-55). A patentee could argue that "providing" includes utilizing wastewater that inherently contains sufficient ammonia, without needing to add it.
- Evidence for a Narrower Interpretation: The claim requires providing a source "to yield" the haloamines in "amounts sufficient to provide a disinfectant solution," which implies a functional requirement that may not be met by trace or incidental amounts. The specification also lists "Suitable sources of ammonia" such as anhydrous ammonia and ammonium salts, suggesting that the affirmative addition of a chemical is a primary embodiment ('716 Patent, col. 6:15-19).
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration of non-infringement both directly and indirectly (Compl. ¶89). However, as a declaratory judgment action focused on the Plaintiff's own conduct, the complaint does not set forth a factual theory for indirect infringement that would be asserted against it, but rather makes a blanket denial.
- Willful Infringement: Willfulness is not alleged against the Plaintiff. Instead, the complaint contains extensive allegations that the Defendants engaged in "Bad Faith Assertions of Patent Infringement" (Compl. p. 10). It alleges Defendants knew Plaintiff's processes did not infringe because they lacked the required pH adjustment and ammonia addition steps, and that the infringement accusations were made for an improper purpose to interfere with Plaintiff's business relationships (Compl. ¶¶40, 42, 76, 80). These allegations appear intended to support claims for tortious interference and a finding that the case is "exceptional" under 35 U.S.C. § 285, which would permit an award of attorney's fees (Compl., Prayer for Relief ¶i).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to hinge on a small number of discrete, fact-intensive questions related to the Plaintiff's accused water treatment process.
A primary issue will be one of evidentiary proof for the '966 Patent: Does the Dirk Thomas process, in fact, include a step of "adjusting the pH...with an acid"? The outcome may depend on discovery into the precise chemical composition and purpose of the additives used by the Plaintiff. This factual question is amplified by the legal question of whether prosecution history estoppel limits the scope of this claim element.
A parallel evidentiary question exists for the '716 Patent: Does the Dirk Thomas process "provid[e] a source of ammonia" sufficient to practice the claimed method? This raises a question of definitional scope—whether "providing" is limited to affirmatively adding ammonia or can include utilizing water with sufficient naturally occurring ammonia—and a factual question of whether the water used by Plaintiff contains such levels.
Finally, a central theme of the complaint concerns the Defendants' conduct: Did the Defendants make infringement allegations in bad faith, knowing that the Plaintiff's process did not practice key steps of the patented methods? The resolution of this question will be critical to the Plaintiff's non-patent claims for tortious interference and its request for attorney's fees.