DCT
2:19-cv-00268
Green Source Holdings LLC v. Halliburton Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Green Source Holdings LLC (Delaware)
- Defendant: Halliburton Company and Halliburton Energy Services Inc (Delaware)
- Plaintiff’s Counsel: Raley & Bowick LLP
- Case Identification: 2:19-cv-00268, E.D. Tex., 03/16/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains at least four regular and established places of business in the district and has committed acts of infringement there, including injecting the accused products into formations within the East Texas Basin.
- Core Dispute: Plaintiff alleges that Defendant’s oilfield services and related chemical products, used for enhanced oil and gas recovery, infringe nine patents related to methods for extracting hydrocarbons using turpentine-based solvents.
- Technical Context: The technology concerns the use of terpene-based chemical compositions, such as turpentine, as solvents to liquefy and extract hydrocarbons from materials like coal, oil shale, tar sands, and crude oil in underground formations.
- Key Procedural History: The complaint does not specify any significant pre-suit procedural history, such as prior litigation involving the asserted patents, licensing negotiations, or post-grant validity challenges.
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 No. 8,404,107 Issues |
| 2013-03-26 | U.S. Patent No. 8,404,108 Issues |
| 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 |
| 2020-03-16 | 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,” Issued January 24, 2012 (’812 Patent)
The Invention Explained
- Problem Addressed: The patent’s background section describes the liquefaction and extraction of fossil fuels (e.g., coal, oil shale, tar sands) as "extremely challenging and thus difficult" ('812 Patent, col. 1:20-22). It notes that prior art technologies were often commercially unviable due to factors such as requiring elevated pressures and temperatures, expensive or toxic reagents, and long processing times ('812 Patent, col. 1:36-52).
- The Patented Solution: The invention proposes using a "turpentine liquid" as a solvent to extract hydrocarbon-containing organic matter from various fossil fuels ('812 Patent, Abstract). The process involves contacting the hydrocarbon-containing material with the turpentine liquid to form an extraction mixture, thereby dissolving the desired hydrocarbons into the solvent, and then separating the hydrocarbon-rich solvent from the remaining residual material ('812 Patent, col. 6:12-20).
- Technical Importance: This approach is presented as an improvement over prior art methods because the turpentine-based reagents are described as "renewable and 'green,' i.e., low in toxicity, and relatively inexpensive" compared to then-conventional solvents like tetraline and xylene ('812 Patent, col. 7:51-58).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶13, p. 6).
- The essential elements of claim 1 are:
- providing a first liquid consisting essentially of a turpentine liquid alone or a combination of a turpentine liquid and a turpentine-miscible second liquid wherein the ratio of said turpentine liquid to said turpentine-miscible liquid is greater than or equal to 1:1;
- contacting a hydrocarbon-containing material with said first liquid to form an extraction mixture;
- extracting said hydrocarbon material into said turpentine liquid; and
- separating said extracted hydrocarbon material from a residual material not extracted.
- The complaint states that Plaintiff "does not and will not limit its infringement allegations to these independent claims" (Compl. ¶13, n.2).
U.S. Patent No. 8,272,442 - “In Situ Extraction of Hydrocarbons from Hydrocarbon-Containing Materials,” Issued September 25, 2012 (’442 Patent)
The Invention Explained
- Problem Addressed: The patent describes challenges in in situ (in place, underground) oil recovery, particularly the complex behavior of multi-phase fluid flow in porous reservoirs, which often leaves a large portion of the original oil unrecovered ('442 Patent, col. 6:65-7:3). Existing methods like water injection can also trap gas, further impeding recovery ('442 Patent, col. 7:64-8:2).
- The Patented Solution: The invention discloses a method for in situ extraction by injecting a turpentine-based liquid into an underground formation ('442 Patent, Abstract). This liquid dissolves the targeted hydrocarbons (e.g., heavy crude oil), creating a homogenous, one-phase liquid that can flow more easily through the reservoir from an injection well to a production well, thereby enhancing recovery ('442 Patent, col. 7:11-24).
- Technical Importance: The claimed method purports to enhance oil recovery by overcoming the complexities of multi-phase flow, dissolving previously trapped hydrocarbons, and facilitating recovery from reservoirs containing highly viscous oil ('442 Patent, col. 7:1-3, 7:49-54).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶13, p. 6).
- The essential elements of claim 1 are:
- providing a hydrocarbon-extracting liquid consisting essentially of turpentine liquid alone or a combination of a turpentine liquid and a turpentine-miscible second liquid;
- contacting heavy crude oil, crude oil, natural gas, or a combination thereof in-situ in an underground formation with said liquid to form an extraction mixture;
- removing said extraction liquid from said formation; and
- separating said extracted hydrocarbon-containing organic matter from a residual material not extracted.
- The complaint reserves the right to assert other claims (Compl. ¶13, n.2).
U.S. Patent No. 8,404,107 - “Extraction of Hydrocarbons from Hydrocarbon-Containing Materials,” Issued March 26, 2013
- Technology Synopsis: This patent claims a method for extracting hydrocarbons from various materials (e.g., coal, tar sands, crude oil) by contacting them with α-terpineol. The process forms an extraction mixture containing the dissolved hydrocarbons, which is then separated from the residual, non-soluble material (’107 Patent, Abstract).
- Asserted Claims: Independent claim 27 (Compl. p. 6).
- Accused Features: The use of Halliburton's Accused Products, which allegedly contain terpene chemicals, to extract hydrocarbons in oilfield operations (Compl. ¶11, ¶16).
U.S. Patent No. 8,522,876 - “In Situ Extraction of Hydrocarbons from Hydrocarbon-Containing Materials,” Issued September 3, 2013
- Technology Synopsis: This patent discloses a method for extracting organic matter from fossil fuel materials like oil shale or coal sands. The method involves providing a fluid "consisting essentially of turpentine fluid" and contacting it with the fossil fuel material to form a mixture, thereby extracting the desired hydrocarbons (’876 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. p. 7).
- Accused Features: The injection and use of Halliburton's Accused Products in underground formations to enhance oil and gas recovery (Compl. ¶11, ¶16-17).
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
- Technology Synopsis: This patent claims a method for increasing the flowability of viscous hydrocarbons in formations, flow lines, or storage tanks. The method involves contacting the hydrocarbon-containing material with a non-aqueous turpentine liquid to form a mixture with decreased viscosity, and then causing that mixture to flow as a one-phase liquid (’234 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. p. 7).
- Accused Features: The use of Halliburton's Accused Products to decrease viscosity and increase flowability of hydrocarbons in underground formations (Compl. ¶11, ¶17).
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
- Technology Synopsis: This patent is directed to a method for increasing the flowability of viscous or immobile hydrocarbons in an underground formation or flow line. The method involves contacting the hydrocarbon material with a non-aqueous turpentine liquid to form a mixture with decreased viscosity, which is then caused to flow as a one-phase liquid (’468 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. p. 7).
- Accused Features: The use of Halliburton's Accused Products to decrease viscosity and increase flowability of hydrocarbons in underground formations (Compl. ¶11, ¶17).
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
- Technology Synopsis: This patent describes a method of extracting hydrocarbons using a "substantially surfactant-free" liquid that consists "essentially of a turpentine liquid." The turpentine liquid is selected from a large group of specified terpene-related chemicals. The process involves contacting this liquid with hydrocarbon-containing material and separating the resulting mixture (’108 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. p. 8).
- Accused Features: The use of Halliburton's Accused Products, alleged to be or contain turpentine liquids, to extract hydrocarbons (Compl. ¶11, ¶16).
U.S. Patent No. 9,102,864 - “Extraction of Hydrocarbons from Hydrocarbon-Containing Materials and/or Processing of Hydrocarbon-Containing Materials,” Issued August 11, 2015
- Technology Synopsis: This patent discloses a method for increasing the recovery of hydrocarbons from a production well coupled to a sub-surface formation. The method involves injecting a "substantially surfactant-free non-aqueous hydrocarbon-extracting composition" consisting "essentially of a turpentine liquid" into the formation, recovering the resulting mixture, and separating it to produce a hydrocarbon stream (’864 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. p. 8).
- Accused Features: The injection and use of Halliburton's Accused Products in underground formations to enhance recovery from oil and gas wells (Compl. ¶11, ¶16-17).
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
- Technology Synopsis: This patent claims a method for inhibiting the corrosive and toxic effects of reactive sulfur species in hydrocarbons from a geological formation. The method involves contacting the sulfur-containing material with a "substantially surfactant-free, non-aqueous turpentine liquid" to extract the reactive sulfur species, thereby recovering a hydrocarbon material with reduced corrosive and toxic effects (’645 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. p. 8).
- Accused Features: The use of Halliburton's Accused Products in oilfield operations (Compl. ¶11, ¶16).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentalities as Halliburton’s (1) SuperFlo 2000, (2) OilPerm FMM-9, (3) OilPerm I, (4) OilPerm Fmm-9-21, and any variations thereof (collectively, the "Accused Products") (Compl. ¶11).
Functionality and Market Context
The Accused Products are alleged to be used for "enhanced oil and gas recovery and enhanced flowback applications" (Compl. ¶11). The complaint alleges that Halliburton injects these products into underground formations after fracturing operations to contact hydrocarbons such as oil or natural gas (Compl. ¶15-16). The alleged function is to extract hydrocarbons by dissolving them and separating them from residual material like shale rock (Compl. ¶16). An additional alleged function is to "increase flowability from underground formations by decreasing viscosity" (Compl. ¶17). The complaint alleges that the Accused Products "all have a Turpentine Liquid or Fluid as defined in the Asserted Patents, which comprises (at least in part) the various terpene chemicals described in Exhibit A" (Compl. ¶11). The complaint includes a screenshot from a Halliburton promotional video depicting fractures created in a downhole formation, into which such products are allegedly injected (Compl. p. 12).
IV. Analysis of Infringement Allegations
’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 alone or a combination of a turpentine liquid and a turpentine-miscible second liquid wherein the ratio of said turpentine liquid to said turpentine-miscible liquid is greater than or equal to 1:1 | Halliburton provides the Accused Products, which allegedly are or contain a "Turpentine Liquid or Fluid as defined in the Asserted Patents." | ¶11 | col. 7:10-24 |
| contacting a hydrocarbon-containing material with said first liquid to form an extraction mixture | Halliburton injects the Accused Products into underground formations where they come in contact with hydrocarbon-containing materials like oil or natural gas. | ¶16 | col. 6:15-17 |
| extracting said hydrocarbon material into said turpentine liquid | The Accused Products are used to extract desirable hydrocarbons from the underground material. | ¶16 | col. 6:17-18 |
| separating said extracted hydrocarbon material from a residual material not extracted | The process separates the desirable hydrocarbons from residual material such as shale rock, which is not extracted. | ¶16 | col. 6:18-20 |
’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 alone or a combination of a turpentine liquid and a turpentine-miscible second liquid | Halliburton provides the Accused Products, which are alleged to be or contain a "hydrocarbon-extracting liquid consisting essentially of turpentine liquid." | ¶11 | col. 8:8-9 |
| contacting heavy crude oil, crude oil, natural gas, or a combination thereof in-situ in an underground formation... with said hydrocarbon-extracting liquid, to form an extraction mixture | Halliburton injects the Accused Products into fractured underground formations to contact oil and gas in situ. A screenshot from a Halliburton video shows such fractures (Compl. p. 12). | ¶15-16 | col. 6:40-45 |
| removing said extraction liquid from said formation | The process is used to extract desirable hydrocarbons from the formation, which implies removal of the mixture. | ¶16 | col. 6:26-28 |
| separating said extracted hydrocarbon-containing organic matter from a residual material not extracted | The process separates extracted hydrocarbons from residual materials like shale rock. | ¶16 | col. 6:31-34 |
Identified Points of Contention
- Scope Questions: A primary point of dispute may be the scope of the term "consisting essentially of." The analysis will question whether any unlisted ingredients in Halliburton's Accused Products materially alter the "basic and novel properties" of the claimed invention, and what those properties are. Does Halliburton's alleged process of injecting fluids for "enhanced flowback" and "decreasing viscosity" (Compl. ¶11, ¶17) align with the claimed method steps of "extracting" and "separating" as recited in the claims?
- Technical Questions: The complaint broadly alleges that the Accused Products contain a "Turpentine Liquid or Fluid as defined in the Asserted Patents" (Compl. ¶11). A central technical question will be whether the specific chemical compositions of the Accused Products meet the detailed definitions of "turpentine liquid" provided in the patents, which list dozens of potential chemical components.
V. Key Claim Terms for Construction
- For the ’812 and ’442 Patents:
The Term: "turpentine liquid"
- Context and Importance: This term is the central component of the claimed invention. The outcome of the infringement analysis depends on whether the chemical compositions of the Accused Products fall within the scope of this term's definition. Practitioners may focus on this term because the complaint alleges infringement based on the presence of "various terpene chemicals" (Compl. ¶11), and the patents define "turpentine liquid" through extensive lists of such chemicals.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications provide an extensive Markush group listing dozens of chemical compounds that can constitute the "turpentine liquid," including natural, synthetic, and mineral turpentines, pine oil, and numerous specific terpenes like α-terpineol, pinene, and geraniol. This suggests the patentee intended a broad and inclusive definition ('812 Patent, col. 15:2-45).
- Evidence for a Narrower Interpretation: The detailed description and examples repeatedly emphasize α-terpineol or synthetic turpentine "rich in α-terpineol" as the "most preferred" embodiment ('812 Patent, col. 6:50-53). A party could argue that the invention’s true scope is centered on, or even limited to, compositions dominated by α-terpineol, rather than any arbitrary combination of the listed chemicals.
The Term: "consisting essentially of"
- Context and Importance: This transitional phrase is a term of art that limits the scope of the claimed liquid to the specified components (turpentine liquid and an optional miscible second liquid) and unlisted ingredients that do not materially affect the basic and novel properties of the invention. The dispute will question what those properties are and whether any other chemicals in the Accused Products materially affect them.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents describe the basic and novel property as the ability to liquefy, solubilize, and extract hydrocarbons from fossil fuels ('812 Patent, col. 6:8-12). An argument could be made that any unlisted ingredient in the Accused Products that does not interfere with this fundamental extractive function is permissible under this phrase.
- Evidence for a Narrower Interpretation: The specification also touts the "renewable and 'green,' i.e., low in toxicity" nature of the reagents as a key advantage over the prior art ('812 Patent, col. 7:51-58). A party may argue that these "green" characteristics are a basic and novel property, and the presence of any unlisted, non-"green" additives in the Accused Products would materially alter this property and place the product outside the claim scope.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Halliburton contributed to and induced infringement by its customers through "marketing, promoting (including providing instructions for use), selling, offering for sale, importing, and/or renting its Accused Products" (Compl. ¶18). It further alleges Halliburton had "actual knowledge of the Asserted Patents" and instructed customers on infringing uses (Compl. ¶18).
- Willful Infringement: The complaint alleges willful infringement based on Halliburton's purported "knowledge of the Asserted Patents" and its choice "to commit egregious acts of infringement... despite this knowledge" (Compl. ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "turpentine liquid," defined in the patents by extensive lists of chemical compounds, be construed to read on the specific, and as-yet undisclosed, formulations of Halliburton’s Accused Products? The case may depend heavily on chemical analysis of the accused products during discovery.
- A second central question will be one of claim construction: how will the court interpret the phrase "consisting essentially of"? This will require determining the "basic and novel properties" of the patented invention—whether they are limited to the technical function of hydrocarbon extraction or also include commercial and environmental characteristics like being "green" and "inexpensive"—and whether any unlisted components in the Accused Products materially affect those properties.
- A key evidentiary question will be one of process alignment: does the commercial use of the Accused Products for "enhanced oil and gas recovery and enhanced flowback applications" (Compl. ¶11) constitute the complete, ordered series of steps recited in the asserted method claims, such as "contacting," "extracting," and "separating"?