DCT

3:24-cv-01953

DPF Alternatives LLC v. DET Diesel Emission Tech LLC

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:24-cv-01953, N.D. Tex., 03/03/2025
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because a substantial part of the events or omissions giving rise to the claims occurred within the district.
  • Core Dispute: Plaintiffs seek declaratory judgment that their diesel particulate filter "re-coring" press does not infringe Defendant's patent, and that the patent is invalid and unenforceable, amidst broader allegations of anticompetitive business practices.
  • Technical Context: The technology concerns systems and methods for refurbishing diesel emission control devices by mechanically removing an old filter core and inserting a replacement, a key service in the heavy-duty vehicle maintenance market.
  • Key Procedural History: The complaint states that Defendant DET asserted the patent-in-suit via a counterclaim in the present action. Plaintiffs’ invalidity and unenforceability claims are based on allegations of improper inventorship, contending that the technology was invented by a third party, Don Holt, whose work constitutes undisclosed prior art.

Case Timeline

Date Event
< 2014 Don Holt's invention allegedly publicly disclosed and offered for sale
2016-06-01 DPF Alternatives established
2016-10-11 DPF Alternatives launched its franchising system
2021-07-12 ’920 Patent Priority Date
2021-08-01 Defendants allegedly made presentation to DPF Alternatives
2022-07-12 ’920 Patent Application Filing Date
2024-07-30 ’920 Patent Issue Date
2024-11-15 Plaintiffs allegedly sent letter to Defendants regarding non-infringement
2025-01-01 DPFSource to begin providing its New Core™ system
2025-03-03 Second Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 12,048,920 - "SYSTEM AND PROCESS FOR REPLACING A CORE OF DIESEL EMISSION CONTROL DEVICE," issued July 30, 2024

The Invention Explained

  • Problem Addressed: The patent addresses the need for an efficient and economical way to refurbish diesel emission control devices (DECDs), such as diesel particulate filters (DPFs), whose internal cores become clogged over time and require service ('920 Patent, col. 4:4-7). The complaint notes this service is an alternative to complete replacement of the expensive unit (Compl. ¶¶ 53, 58).
  • The Patented Solution: The invention is a system, centered around a hydraulic press, for mechanically pushing an old filter core out of its housing and pressing a new one in ('920 Patent, Abstract). The removal process utilizes a "decore shaft" to push the old core through a "pushout donut" and into a "collection container" ('920 Patent, col. 1:31-38). The process for installing a new core involves a "recore shaft" and a "stuffing funnel" to guide the replacement core into the housing ('920 Patent, col. 2:60-65).
  • Technical Importance: This type of re-coring technology allows for the salvage and reuse of the main DECD housing, which can significantly reduce maintenance costs for operators of diesel vehicles and equipment (Compl. ¶¶ 57, 96).

Key Claims at a Glance

  • The complaint’s non-infringement analysis focuses on independent claim 1 (Compl. ¶147).
  • Independent Claim 1 of the ’920 Patent recites the following essential elements:
    • a core press station having a piston and a working platform;
    • a control station for controlling piston movement;
    • a decore shaft connected to the piston;
    • a push plate on the working platform with an aperture for the core to pass through;
    • a pushout donut demountably connected to the push plate, also with an aperture for the core; and
    • a collection container connected between the push plate and the pushout donut, configured to receive the core.
  • The complaint seeks a declaratory judgment of non-infringement for all claims of the patent (Compl. ¶155).

III. The Accused Instrumentality

Product Identification

  • The "DPFSource New Core™ press" and the associated system and services for replacing DPF cores (Compl. ¶¶ 95, 99).

Functionality and Market Context

  • The New Core™ press is a machine that replaces the filter core of a DPF (Compl. ¶95). A photograph provided in the complaint shows the accused press, which is a vertical hydraulic press apparatus. (Compl. p. 16, ¶95). The complaint positions the New Core™ system as a direct, lower-cost competitor to the Defendants' "Recore" system and alleges it is based on the same underlying technology invented by Don Holt (Compl. ¶¶ 95, 99).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement, arguing that the accused New Core™ press is missing at least one key element of the asserted claims. The analysis centers on claim 1.

’920 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
a core press station having a piston and a working platform The complaint does not contest that the accused system includes a press with a piston and platform. — col. 11:19-21
a control station for controlling movement the piston The complaint does not contest that the accused system includes a control station. — col. 11:22-23
a decore shaft connected to the piston The complaint does not contest that the accused system includes a shaft connected to the piston. — col. 11:24
a push plate positioned upon the working platform... The complaint does not contest that the accused system includes a push plate. — col. 11:25-28
a pushout donut demountably connected to the push plate... The complaint does not contest that the accused system includes a pushout donut. — col. 11:28-31
a collection container connected between the push plate and the pushout donut... The complaint alleges this element is not met because Defendant's infringement theory identifies a "stand-alone plastic commercial trash can" as the container. This trash can is not "connected" to the press and is not sold by Plaintiffs. A photograph shows the accused press with a separate, unattached trash can underneath. (Compl. p. 23, ¶150). ¶¶148, 150-153 col. 11:31-35

Identified Points of Contention

  • Scope Questions: A central dispute will be the proper construction of "connected between the push plate and the pushout donut." Does this claim language require a direct physical or structural attachment, as Plaintiffs allege and as Figure 6Q of the patent appears to illustrate, or could it be construed more broadly to mean functionally positioned to receive the core? (Compl. ¶¶ 146, 148).
  • Technical Questions: A key factual question is what constitutes the "accused instrumentality." Plaintiffs allege they do not sell the "collection container" (the trash can) at all, which raises the question of whether it can be considered part of the accused "system" for infringement purposes (Compl. ¶151).

V. Key Claim Terms for Construction

  • The Term: "a collection container connected between the push plate and the pushout donut"
  • Context and Importance: The definition of "connected" is dispositive for the Plaintiffs' non-infringement argument. If the term requires a physical attachment, and the accused system uses a separate, unattached receptacle, the non-infringement position may be significantly strengthened. Practitioners may focus on this term because it appears to be the primary basis for the non-infringement claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A defendant might argue that "connected" does not necessitate a rigid fastener. The patent describes the pushout donut as "demountably connected," which may suggest the patent contemplates various forms of connection, not just permanent ones ('920 Patent, col. 11:28). An argument could be made that being held in place by gravity and the alignment of other parts constitutes a functional "connection" for the purpose of receiving the spent core.
    • Evidence for a Narrower Interpretation: Plaintiffs will likely point to specific language and figures in the patent. The specification describes securing the collection container "so as to create a tight seal between the collection container and pushout donut" ('920 Patent, col. 8:30-32). Figure 6Q, which the complaint references, depicts the collection container (622) physically held and sealed between the push plate (180) and the pushout donut (182), which suggests a direct structural relationship, not just proximity (Compl. ¶146).

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain allegations related to indirect infringement. The central patent claims are directed to a system (apparatus), for which liability typically arises from direct infringement by making, using, or selling the claimed system.
  • Willful Infringement: The complaint does not allege willfulness in the traditional sense of a patentee accusing an infringer. Instead, as part of its business tort claims, it alleges that Defendants have continued to make infringement accusations against Plaintiffs and their customers despite allegedly having "specific knowledge" that the claims are baseless, particularly after receiving a letter from Plaintiffs on November 15, 2024 (Compl. ¶¶ 171-172).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A core issue will be one of claim construction: does the phrase "collection container connected between the push plate and the pushout donut" require a direct physical attachment as depicted in the patent’s figures, or can the term be construed to cover a physically separate, but functionally positioned, receptacle?
  2. A second central issue will be the validity and enforceability of the ’920 Patent. The case will require a significant factual inquiry into whether a third party, Don Holt, was the true inventor and whether his alleged prior work and public disclosures render the patent invalid under 35 U.S.C. § 102 and/or unenforceable due to inequitable conduct.
  3. An important evidentiary question will be the scope of the accused product: what constitutes the "system" that Plaintiffs sell? If the "collection container" is proven to be a generic, stand-alone item not supplied by Plaintiffs, it raises the question of whether that element can be part of the basis for a direct infringement claim against them.