DCT
2:19-cv-01320
Green Source Holdings LLC v. Ingevity Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Green Source Holdings LLC (Delaware)
- Defendant: Ingevity Corporation, Ingevity Arkansas, LLC, and Ingevity South Carolina, LLC (collectively "Ingevity") (Delaware)
- Plaintiff’s Counsel: PPGMR Law; Raley Bowick
- Case Identification: 2:19-cv-01320, W.D. Ark., 10/30/2018
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining a regular and established place of business, including an office and chemical plant, within the district from which infringing products are allegedly manufactured, sold, and shipped.
- Core Dispute: Plaintiff alleges that Defendant’s "Envasolv" line of chemical products, used for enhanced oil and gas recovery, infringes nine patents related to methods and compositions for extracting hydrocarbons from various materials.
- Technical Context: The patents relate to using turpentine-based liquids to dissolve and extract hydrocarbons from sources like coal, oil shale, tar sands, and in-situ crude oil reservoirs, aiming to improve recovery efficiency under milder conditions than conventional methods.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-20 | Earliest Priority Date for all Asserted Patents |
| 2012-01-24 | U.S. Patent No. 8,101,812 Issues |
| 2012-09-25 | U.S. Patent No. 8,272,442 Issues |
| 2013-03-26 | U.S. Patent Nos. 8,404,107 and 8,404,108 Issue |
| 2013-09-03 | U.S. Patent No. 8,522,876 Issues |
| 2014-04-01 | U.S. Patent No. 8,685,234 Issues |
| 2015-08-11 | U.S. Patent No. 9,102,864 Issues |
| 2015-11-10 | U.S. Patent No. 9,181,468 Issues |
| 2016-08-16 | U.S. Patent No. 9,416,645 Issues |
| 2018-10-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,101,812 - "Extraction of Hydrocarbons from Hydrocarbon-Containing Materials"
- Patent Identification: U.S. Patent No. 8,101,812, "Extraction of Hydrocarbons from Hydrocarbon-Containing Materials," issued January 24, 2012.
The Invention Explained
- Problem Addressed: The patent's background describes the significant technical challenges and high costs associated with extracting fossil fuels from solid, semi-solid, or viscous sources like coal and tar sands, noting that prior art methods often require extreme pressures, high temperatures, and toxic, non-renewable reagents (’812 Patent, col. 1:15-62).
- The Patented Solution: The invention provides methods and solvents for extracting hydrocarbons by contacting the source material with a "turpentine liquid-containing fluid." This fluid, which is rich in compounds like α-terpineol, is described as being effective at milder temperatures and pressures than conventional methods, and without the need for catalysts or an external hydrogen supply (’812 Patent, Abstract; col. 6:7-20). The process involves mixing the turpentine liquid with the hydrocarbon source material, allowing it to extract the organic matter, and then separating the resulting hydrocarbon-laden liquid from the residual solids (’812 Patent, col. 6:7-20).
- Technical Importance: The described solution suggests a "green" and renewable alternative to petroleum-derived solvents like tetraline or xylene, offering a potentially less expensive and environmentally impactful method for liquefying and processing challenging fossil fuel sources (’812 Patent, col. 7:51-58).
Key Claims at a Glance
- The complaint does not identify any specific claims, but asserts infringement of one or more claims of each Asserted Patent (Compl. ¶13). Independent claim 1 is representative of the patent's composition/method claims.
- Independent Claim 1:
- Providing a first liquid consisting essentially of a turpentine liquid (alone or in combination with a miscible second liquid).
- Contacting a hydrocarbon-containing material with the first liquid to form an extraction mixture.
- Extracting the hydrocarbon material into the turpentine liquid.
- Separating the extracted hydrocarbon material from a residual material.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,272,442 - "In Situ Extraction of Hydrocarbons from Hydrocarbon-Containing Materials"
- Patent Identification: U.S. Patent No. 8,272,442, "In Situ Extraction of Hydrocarbons from Hydrocarbon-Containing Materials," issued September 25, 2012.
The Invention Explained
- Problem Addressed: The patent addresses the problem of poor oil recovery from underground reservoirs, particularly with heavy or viscous crude oil. Conventional methods often leave a large portion of the original oil trapped in the formation due to the complexities of multi-phase fluid flow in porous rock (’442 Patent, col. 6:58-67).
- The Patented Solution: The invention is a method for enhanced oil recovery that involves injecting a turpentine liquid directly into the underground formation. This liquid dissolves the trapped crude oil in-situ, creating a single-phase, lower-viscosity fluid that can more easily flow through the reservoir to a production well, thereby increasing the total amount of oil recovered (’442 Patent, Abstract; col. 7:11-24). The patent's Figure 4 illustrates a configuration with an injection well (410) and a production well (406) for this purpose (’442 Patent, Fig. 4).
- Technical Importance: This method suggests a way to improve the efficiency of secondary or tertiary oil recovery operations, potentially making previously non-viable or depleted reservoirs economically productive by mobilizing trapped hydrocarbons (’442 Patent, col. 7:1-4).
Key Claims at a Glance
- The complaint does not identify any specific claims (Compl. ¶13). Independent claim 1 is representative of the patent's in-situ method claims.
- Independent Claim 1:
- Providing a hydrocarbon-extracting liquid consisting essentially of a turpentine liquid.
- Contacting heavy crude oil, crude oil, or natural gas in-situ in an underground formation with the liquid to form an extraction mixture.
- Removing the extraction liquid from the formation.
- Separating the extracted organic matter from a residual material.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsules
- U.S. Patent No. 8,404,107, "Extraction of Hydrocarbons from Hydrocarbon-Containing Materials," issued March 26, 2013: This patent relates to apparatus and methods for extracting hydrocarbons from materials like tar sands, oil shale, and coal using a turpentine liquid, focusing on the processing equipment such as contacting vessels and separation tanks (’107 Patent, Abstract; Figs. 1-3). The complaint alleges that Ingevity's Envasolv products are used in processes that infringe this patent (Compl. ¶13).
- U.S. Patent No. 8,522,876, "In Situ Extraction of Hydrocarbons from Hydrocarbon-Containing Materials," issued September 3, 2013: This patent discloses methods for in-situ extraction of hydrocarbons from underground formations using a turpentine liquid, similar to the ’442 Patent (’876 Patent, Abstract). The asserted claims include method claims (e.g., Claim 1). The complaint alleges that the use of Envasolv products infringes this patent (Compl. ¶13).
- U.S. Patent No. 8,685,234, "Extraction of Hydrocarbons from Hydrocarbon-Containing Materials and/or Processing of Hydrocarbon-Containing Materials," issued April 1, 2014: This patent covers methods for extracting hydrocarbons using a turpentine liquid and also discloses specific formulations of the liquid for different source materials (e.g., high vs. low-grade coal) (’234 Patent, Abstract; Tables 1-5). Asserted claims include method claims (e.g., Claim 1). The complaint alleges that Ingevity's Envasolv products infringe this patent (Compl. ¶13).
- U.S. Patent No. 9,181,468, "Extraction of Hydrocarbons from Hydrocarbon-Containing Materials and/or Processing of Hydrocarbon-Containing Materials," issued November 10, 2015: This patent is directed to methods of extracting hydrocarbons and specific multi-component formulations of turpentine liquids, and includes claims covering the use of these liquids to reduce the viscosity of crude oil (’468 Patent, Abstract; Claim 13). The complaint alleges that Ingevity's Envasolv products infringe this patent (Compl. ¶13).
- U.S. Patent No. 8,404,108, "Extraction of Hydrocarbons from Hydrocarbon-Containing Materials and/or Processing of Hydrocarbon-Containing Materials," issued March 26, 2013: This patent discloses methods and compositions for extracting hydrocarbons, with claims directed to specific compositions of turpentine liquids for treating different types of crude oil based on API density (’108 Patent, Abstract; Table 5). The complaint alleges that Ingevity's Envasolv products infringe this patent (Compl. ¶13).
- U.S. Patent No. 9,102,864, "In Situ Extraction of Hydrocarbons from Hydrocarbon-Containing Materials," issued August 11, 2015: This patent covers methods for in-situ extraction and also includes claims directed to a method for recovering natural gas trapped in a reservoir and avoiding subsidence (’864 Patent, Abstract; Claim 7). The complaint alleges that the use of Envasolv products infringes this patent (Compl. ¶13).
- U.S. Patent No. 9,416,645, "Extraction of Hydrocarbons from Hydrocarbon-Containing Materials and/or Processing of Hydrocarbon-Containing Materials," issued August 16, 2016: This patent claims methods for inhibiting the corrosive and toxic effects of sulfur in hydrocarbon materials by contacting them with a turpentine liquid (’645 Patent, Abstract; Claim 1). The complaint alleges that Ingevity's Envasolv products infringe this patent (Compl. ¶13).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant's "trade name 'Envasolv' line of products for use with enhanced oil and gas recovery applications" (Compl. ¶13).
Functionality and Market Context
- The complaint alleges these products are made, used, offered for sale, and sold by Ingevity for oil and gas recovery (Compl. ¶13). The complaint incorporates by reference a brochure and press release (Exhibit K), which are not provided, for further description of the accused products and processes (Compl. ¶13). The complaint does not provide sufficient detail for analysis of the specific technical functionality or chemical composition of the Envasolv products. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint makes a general allegation that Ingevity's actions related to the Envasolv product line infringe one or more claims of the Asserted Patents, but does not map any specific features of the accused products or methods to any specific claim elements (Compl. ¶13). The following charts summarize a potential infringement theory for representative claims based on the alleged purpose of the accused products.
'812 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a first liquid consisting essentially of a turpentine liquid... | The complaint alleges Ingevity makes, uses, sells, and offers for sale the Envasolv products, which are alleged to be infringing liquids. | ¶13 | col. 15:16-24 |
| contacting a hydrocarbon-containing material with said first liquid... | The Envasolv products are allegedly for use in enhanced oil and gas recovery applications, which involve contacting hydrocarbon materials. | ¶13 | col. 15:25-27 |
| extracting said hydrocarbon material into said turpentine liquid... | This is the alleged function of the Envasolv products when used for their intended purpose in oil and gas recovery. | ¶13 | col. 15:28-29 |
| separating said extracted hydrocarbon material from a residual material... | This is an alleged step in the processes where Envasolv products are used. | ¶13 | col. 15:30-32 |
'442 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a hydrocarbon-extracting liquid consisting essentially of turpentine liquid... | The complaint alleges Ingevity makes and sells the Envasolv products, which are alleged to be infringing liquids. | ¶13 | col. 17:13-18 |
| contacting heavy crude oil, crude oil, natural gas, or a combination thereof in-situ in an underground formation...with said hydrocarbon-extracting liquid... | The Envasolv products are allegedly for use in enhanced oil and gas recovery, which involves contacting hydrocarbons in underground formations. | ¶13 | col. 17:19-25 |
| removing said extraction liquid from said formation... | This is an alleged step in the processes where Envasolv products are used for enhanced oil recovery. | ¶13 | col. 17:26-29 |
| separating said extracted hydrocarbon-containing organic matter from a residual material not extracted. | This is an alleged downstream processing step following the use of Envasolv products. | ¶13 | col. 17:30-32 |
- Identified Points of Contention:
- Pleading Sufficiency: A primary legal question may be whether the complaint's conclusory allegations, which lack any mapping of accused product features to claim elements, meet the plausibility standard for pleading patent infringement under Twombly and Iqbal.
- Scope Questions: A central technical question will be whether the chemical composition of the accused Envasolv products falls within the scope of the term "turpentine liquid" as defined and used across the Asserted Patents.
- Technical Questions: For the in-situ method patents (e.g., the ’442 Patent), a key evidentiary question will be whether the use of Envasolv products by Ingevity or its customers actually involves the claimed steps of in-situ injection and subsequent removal from a formation as part of an enhanced recovery process.
V. Key Claim Terms for Construction
- The Term: "turpentine liquid"
- Context and Importance: This term is foundational to the independent claims of all asserted patents. The infringement analysis for both the composition and method claims will depend entirely on whether the accused Envasolv products are properly characterized as a "turpentine liquid." Practitioners may focus on this term because its construction will likely determine the outcome of the case for all nine patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications provide an extensive and non-limiting list of substances that qualify, including "natural turpentine, synthetic turpentine, mineral turpentine, pine oil, α-pinene, β-pinene, α-terpineol, β-terpineol," and dozens of other specific chemical compounds and polymers thereof (’812 Patent, col. 15:32-45; ’442 Patent, col. 17:44-60). This list suggests the patentee intended a broad definition beyond the common dictionary meaning of turpentine.
- Evidence for a Narrower Interpretation: A party might argue that the term should be understood in light of the preferred embodiments and examples, which frequently emphasize α-terpineol as the primary active reagent (’812 Patent, Examples 1-3, col. 9:62-10:37). It could also be argued that "mineral turpentine," a petroleum distillate, is distinct from the other listed natural plant extracts, creating ambiguity that could support a narrower construction limited to pinenes and their derivatives.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced and contributory infringement, asserting that Ingevity markets, promotes, and provides instructions for its customers on how to use the Envasolv products in an infringing manner (Compl. ¶14). The basis for knowledge is alleged as "actual knowledge of the Asserted Patents" (Compl. ¶14).
- Willful Infringement: Willfulness is alleged based on Ingevity's purported knowledge of the Asserted Patents "during all relevant time periods" and its choice to "commit egregious acts of infringement...despite this knowledge" (Compl. ¶17). The complaint does not specify whether this knowledge was pre- or post-suit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of chemical scope: can the term "turpentine liquid," as defined expansively in the patents' specifications, be construed to read on the specific chemical formulation of Defendant's Envasolv products? The case will likely require discovery into the precise composition of the accused products to resolve this question.
- A key evidentiary question will be one of infringing acts: for the method claims, what evidence demonstrates that Defendant or its customers perform all the claimed steps, particularly the in-situ injection and recovery methods central to patents like the ’442 Patent?
- An immediate procedural question will be one of pleading sufficiency: does the complaint's failure to connect any specific product features to any specific claim limitations provide Defendant with fair notice of the infringement allegations, or does it fail to state a plausible claim for relief, potentially subjecting it to a motion to dismiss?