DCT
2:19-cv-01192
Dan Hewson v. Tranzgaz Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tube-Mac Industries, Inc. (Pennsylvania), Gary Mackay (Canada), and Dan Hewson (Canada)
- Defendant: Steve Campbell (Canada) and Transgaz, Inc. (Canada)
- Plaintiff’s Counsel: Buchanan Ingersoll & Rooney PC
- Case Identification: 2:19-cv-01257, W.D. Pa., 09/17/2019
- Venue Allegations: Venue is asserted based on harm allegedly caused to Plaintiff Tube-Mac within the Western District of Pennsylvania by the issuance of the patent with incorrect inventorship.
- Core Dispute: Plaintiffs seek to correct the inventorship of U.S. Patent No. 9,376,049, alleging that individuals Gary Mackay and Dan Hewson were significant contributors to the conception of the claimed invention and were erroneously omitted as co-inventors.
- Technical Context: The patent relates to systems for transporting refrigerated gaseous fluids, such as natural gas, in large, lightweight composite pressure vessels for intermodal transport.
- Key Procedural History: The patent at issue, assigned to Defendant Transgaz, Inc., issued from a PCT application claiming priority to two 2011 U.S. provisional applications. The complaint alleges that the key inventive concept at the heart of the dispute was conceived and demonstrated by the putative inventors to the named inventor in 2007, several years before the patent’s priority date.
Case Timeline
| Date | Event |
|---|---|
| 2007 | Alleged conception and demonstration of port boss by Mackay and Hewson to Campbell |
| 2011-08-22 | Earliest Priority Date ('049 Patent) |
| 2012-08-22 | PCT Application Filing Date |
| 2014-02-25 | '049 Patent assigned to Transgaz, Inc. |
| 2016-06-28 | '049 Patent Issue Date |
| 2019-09-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,376,049 - "Method of Fabricating Type 4 Cylinders and Arranging in Transportation Housings for Transport of Gaseous Fluids"
The Invention Explained
- Problem Addressed: The patent's background describes challenges in transporting refrigerated gaseous substances by road, rail, or sea. Existing pressure vessels were allegedly heavy, prone to corrosion, or unsuitable for low-temperature service due to material limitations and the risk of seal failure at connection points (port bosses) ('049 Patent, col. 1:19-54). Specifically, refrigerating conventional composite vessels could compromise the integrity of the liner and port boss seals ('049 Patent, col. 2:6-18).
- The Patented Solution: The invention claims a system using large (at least three feet in diameter), lightweight, low-temperature resistant "Type 4" pressure vessels. A key feature is a multi-part metallic "polar port boss" that is affixed to the vessel's domed ends by compressing an inner and outer component together, sandwiching the vessel's polymeric liner to create a robust seal suitable for refrigerated conditions ('049 Patent, Abstract; col. 5:4-21). This assembly is detailed in Figures 5 through 8 of the patent.
- Technical Importance: This approach seeks to enable the bulk transport of densified (refrigerated) gases in lightweight containers, potentially increasing payload capacity and economic viability compared to traditional steel tanks or non-refrigerated systems ('049 Patent, col. 1:26-33).
Key Claims at a Glance
- The complaint focuses on Independent Claim 1, which is the only independent claim in the patent (Compl. ¶14).
- Essential elements of Independent Claim 1 include:
- A lightweight intermodal container or road trailer based system for transporting refrigerated gaseous fluids;
- An enclosed and insulated transportation housing;
- A plurality of low-temperature resistant pressure vessels of at least three feet in diameter secured within the housing;
- At least one port boss affixed to each domed end portion of the pressure vessels, with the port boss comprising an inner component and an outer component;
- The inner component includes an inner pipe and an inner plate, and the outer component includes an outer pipe and an outer plate;
- The components are assembled such that the inner pipe passes through an opening in the vessel's domed end and through the outer pipe;
- The inner and outer components are "compressed together" to cause the inner plate to engage the inner surface of the domed end and the outer plate to engage the outer surface of the domed end, thereby affixing the port boss.
III. The Accused Instrumentality
This action is for correction of inventorship, not patent infringement. Therefore, there is no accused instrumentality.
IV. Analysis of Inventorship Allegations
The central allegation is that Plaintiffs Mackay and Hewson co-invented the "port boss" recited in Claim 1 of the '049 patent (Compl. ¶15). The complaint alleges that in 2007, Defendant Campbell presented them with a problem of obtaining a good seal for a port boss on a fiberglass vessel, and in response, Mackay and Hewson "designed and made the boss" and demonstrated it to Campbell (Compl. ¶¶16-18). The complaint alleges that this design meets all the requirements of the port boss claimed in the '049 patent (Compl. ¶21). The complaint further alleges that Figures 5-7 of the '049 patent are drawings of the very boss created by Mackay and Hewson (Compl. ¶20). The complaint includes a visual reference described as "dated photographs and engineering drawings attached as Exhibit 3" that allegedly shows the port boss designed by Mackay and Hewson (Compl. ¶17).
'049 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Alleged Contribution of Mackay & Hewson | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one port boss affixed to each of said domed end portions... | Mackay, Hewson, and Campbell allegedly "co-invented the port boss claimed in claim 1." | ¶22 | col. 12:49-65 |
| said at least one port boss including an inner component and an outer component... | The complaint alleges Mackay and Hewson designed and made a boss that could be "compressed together" with an inner and outer component. | ¶15 | col. 12:52-54 |
| wherein said inner pipe is inserted through said opening in each of said domed end portions and through said outer pipe... | The complaint describes the allegedly designed boss as being installed by inserting an inner pipe through an opening in the vessel and through an outer pipe. | ¶21 | col. 12:59-62 |
| ...such that said inner component and said outer component are compressed together to cause said inner plate to engage an inner surface...and said outer plate to engage an outer surface...to affix said at least one port boss... | Mackay and Hewson allegedly conceived and demonstrated that the "inner component and said outer component could be compressed together to cause said inner plate to engage an inner surface...and said outer plate to engage an outer surface" of the vessel end. | ¶15 | col. 12:62-67 |
- Identified Points of Contention:
- Conception vs. Reduction to Practice: The core legal question is whether the contributions of Mackay and Hewson amounted to "conception" of the claimed invention. The complaint alleges they "conceived and demonstrated" the port boss (Compl. ¶15). A defense may argue their work was merely a reduction to practice of an idea already conceived by Campbell, or that it did not contain all limitations of the claimed invention.
- Corroboration: A claim of co-inventorship requires corroborating evidence. The complaint asserts the existence of such evidence, including engineering drawings (Exhibit 3), a 2007 video of a demonstration, and a declaration from a third-party observer (Compl. ¶¶17-19). The sufficiency and credibility of this evidence will be a primary focus.
- Scope of Contribution: A key factual question is whether the port boss allegedly designed by Mackay and Hewson in 2007 (and depicted in Exhibit 3) contains every structural and functional limitation of the "port boss" element as recited in Claim 1 of the '049 patent. The complaint makes this direct allegation (Compl. ¶21).
V. Key Claim Terms for Construction
- The Term: "port boss"
- Context and Importance: This term is the locus of the inventorship dispute. The case hinges on whether the contribution of Mackay and Hewson constitutes conception of the specific "port boss" claimed in the patent. Its definition will be critical for mapping their alleged contribution onto the claim language.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself provides a structural definition, reciting a boss with an inner and outer component that are compressed together to affix to the vessel wall ('049 Patent, col. 12:52-67). Plaintiffs may argue this functional definition governs, encompassing the device they allegedly designed.
- Evidence for a Narrower Interpretation: The detailed description and Figures 5-8 show a specific embodiment of the port boss, including features like a flared inner pipe, a pipe-type crimp fitting, and particular grooves and o-ring placements ('049 Patent, col. 5:4-col. 6:67). A defense could argue the term is implicitly limited to embodiments with these specific features. However, the Plaintiffs' allegation that these very figures depict their invention (Compl. ¶20) suggests the parties may agree that the figures represent the technology in dispute.
VI. Other Allegations
- The complaint seeks a declaration that the case is "exceptional" pursuant to 35 U.S.C. § 285, which would permit an award of attorneys' fees (Compl. p. 7, ¶(c)). This claim may be predicated on the allegation that Campbell was asked to add Mackay and Hewson as co-inventors but "has refused to do so" (Compl. ¶28). The complaint also asks the court to order the correction of inventorship for corresponding Canadian, Chinese, and European patents and applications (Compl. p. 7, ¶(b)).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to two central questions:
A core issue will be one of inventive contribution: Can Plaintiffs prove with clear and convincing evidence that Mackay and Hewson contributed to the "conception" of the complete, specific port boss structure recited in Claim 1? This will involve distinguishing their alleged contribution from mere reduction to practice or the development of an un-claimed alternative.
A key evidentiary question will be one of corroboration: Does the proffered evidence—including the 2007 drawings, video, and third-party declaration—sufficiently corroborate the testimony of the purported inventors and demonstrate that their contribution met all the limitations of the "port boss" element as it was ultimately claimed in the patent?