DCT
3:24-cv-01953
DPF Alternatives LLC v. DET Diesel Emission Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DPF Alternatives, LLC; DPFSource LLC; DPF Source Holdings, LLC (Colorado)
- Defendant: DET Diesel Emission Technologies, LLC; Synergy Catalyst, LLC (Texas)
- Plaintiff’s Counsel: Bycer & Marion; Kearney, McWilliams & Davis
- Case Identification: 3:24-cv-01953, N.D. Tex., 11/08/2024
- Venue Allegations: Venue is asserted based on a substantial part of the events giving rise to the claims allegedly occurring within the Northern District of Texas.
- Core Dispute: Plaintiffs seek declaratory judgments of non-infringement, invalidity, and unenforceability of a patent related to diesel particulate filter re-coring systems, which Defendant DET asserted against Plaintiffs in a counterclaim.
- Technical Context: The technology concerns systems and methods for refurbishing diesel particulate filters (DPFs) by replacing their internal ceramic cores, a service critical to the diesel engine maintenance industry.
- Key Procedural History: This amended complaint adds claims for declaratory judgment regarding U.S. Patent No. 12,048,920 after Defendant DET asserted it in a counterclaim. Plaintiffs allege the patent is invalid for improper inventorship, claiming the technology was invented by a third party, Don Holt. Plaintiffs also allege the patent is invalid under the on-sale bar, asserting the invention was publicly disclosed and offered for sale years before the patent's priority date.
Case Timeline
| Date | Event |
|---|---|
| 2014-01-01 | Alleged earliest public disclosure/offer for sale of the invention by Don Holt (Compl. ¶70) |
| 2016-10-11 | Plaintiff DPF Alternatives launches franchising system (Compl. ¶29) |
| 2021-07-12 | ’920 Patent earliest priority date (provisional filing) ('920 Patent, p.1) |
| 2022-07-12 | ’920 Patent application filed (Compl. ¶139) |
| 2024-07-30 | ’920 Patent issues ('920 Patent, p.1) |
| 2024-11-08 | Amended Complaint filed (Compl. p.1) |
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), by replacing the internal filter core rather than the entire assembly ('920 Patent, col. 4:4-6; col. 1:12-17).
- The Patented Solution: The invention is a system, centered around a hydraulic press, that uses specialized tooling to first push a used, clogged core out of its metal housing and into a collection container. It then uses different tooling, including a "stuffing funnel," to press a new replacement core, wrapped in a protective matting, back into the same housing ('920 Patent, Abstract; col. 2:25-49). The patent describes specific components for both the removal ("de-coring") and installation ("re-coring") processes, such as a "pushout donut" and a "decore shaft" ('920 Patent, Fig. 3A, 3B).
- Technical Importance: This technology allows for the reuse of the expensive metal housing of a DPF, potentially offering significant cost savings compared to purchasing a completely new unit ('920 Patent, col. 4:4-6).
Key Claims at a Glance
- The complaint’s non-infringement allegations focus on independent claim 1 (Compl. ¶124).
- Independent Claim 1 recites:
- A system for removing an existing core from a DECD housing comprising:
- a core press station having a piston and a working platform;
- a control station for controlling movement of the piston;
- a decore shaft connected to the piston;
- a push plate positioned upon the working platform with a first internal aperture to pass the core;
- a pushout donut demountably connected to the push plate with a second internal aperture to pass the core; and
- a collection container connected between the push plate and the pushout donut, configured to receive the existing core.
- The complaint seeks a declaration of non-infringement for all claims of the patent, reserving the right to address others (Compl. ¶132).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Plaintiff DPFSource’s "New Core™ press," which is part of its "New Core™ DPF core replacement system" (Compl. ¶75).
Functionality and Market Context
- The New Core™ system is described as a "cost-effective solution for rehabilitating DPFs that cannot otherwise be serviced" (Compl. ¶76). The complaint alleges that this system is a direct competitor to the Defendants' "Recore" system and is based on the same underlying technology allegedly invented by Mr. Holt (Compl. ¶¶75, 79). A photo provided in the complaint shows the New Core™ press, which appears to be a large, floor-standing hydraulic press designed for servicing DPFs (Compl. ¶75, p. 14). The complaint’s non-infringement argument centers on the system’s use of a "stand-alone plastic commercial trash can" to catch the removed core, which is alleged not to be part of the sold system (Compl. ¶¶127-128).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes the Plaintiffs' arguments for why their product does not meet the limitations of the asserted claim.
’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 includes a photograph of the accused "New Core™ press," which is a type of press station. | ¶75 | col. 5:56-61 |
| a push plate positioned upon the working platform... | The complaint does not contest this element but focuses its argument elsewhere. | N/A | col. 2:40-44 |
| a pushout donut demountably connected to the push plate... | The complaint does not contest this element but focuses its argument elsewhere. | N/A | col. 2:44-46 |
| a collection container connected between the push plate and the pushout donut... | The complaint alleges that DET's infringement contention identifies a "stand-alone plastic commercial trash can" as the collection container. | ¶127 | col. 2:46-49 |
| ...the collection container configured to receive the existing core | The complaint argues this trash can is not sold by DPF Alternatives and is not "connected... between the push plate and the pushout donut" as required. An annotated photograph shows a receptacle placed under the press but not physically attached. | ¶128, ¶129 | col. 8:29-33 |
- Identified Points of Contention:
- Scope Questions: The central non-infringement issue is whether the claim term "a collection container connected between the push plate and the pushout donut" can be interpreted to cover a physically separate, standalone commercial trash can placed underneath the press. The complaint includes a patent figure showing the claimed arrangement as an integrated, sealed system (Compl. ¶123, Fig. 6Q) and contrasts it with a photograph of the accused device using a separate trash can (Compl. ¶127). This raises the question of whether mere proximity can satisfy the "connected between" limitation.
- Technical Questions: What evidence demonstrates that the accused system's trash can is "connected" in the manner required by the claim? The complaint alleges it is not connected "in any manner" and provides photographic evidence suggesting it is a separate, freestanding item (Compl. ¶129). The disposition of the non-infringement claim may turn on the factual evidence regarding the interaction, if any, between the trash can and the press components during operation.
V. Key Claim Terms for Construction
- The Term: "a collection container connected between the push plate and the pushout donut"
- Context and Importance: This limitation is the crux of the non-infringement argument. The definition will determine whether the accused system, which uses a physically separate trash can, can infringe. Practitioners may focus on this term because the patent figure and description appear to show a specific structural relationship that may not be present in the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for infringement might assert that "connected between" does not require a permanent or rigid physical bond, but rather a functional arrangement where the container is positioned and held between the two components during the de-coring process. The patent summary states the container is "connected between the working platform and the DECD housing," which could be argued to imply a less specific connection ('920 Patent, col. 2:20-22).
- Evidence for a Narrower Interpretation: The patent's detailed description states that the collection container is secured between the pushout donut and the push plate "so as to create a tight seal" ('920 Patent, col. 8:29-33). Figure 6Q, referenced in the complaint, illustrates this sealed connection ('920 Patent, Fig. 6Q; Compl. ¶123). This language strongly supports a narrower construction requiring a direct, physical, and sealing connection, which would not read on a standalone trash can.
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for analysis of any indirect infringement theories.
- Willful Infringement: The complaint does not provide sufficient detail for analysis of any willful infringement theories.
- Invalidity and Unenforceability: The complaint makes explicit allegations that may support invalidity and unenforceability. It alleges that the named inventors on the ’920 Patent are not the true inventors and that the technology was invented by a third party, Don Holt (Compl. ¶¶8, 73, 135). It further alleges that Mr. Holt’s invention was publicly disclosed and offered for sale as early as 2014, which, if proven, could invalidate the patent under the on-sale bar of 35 U.S.C. § 102, as the patent’s priority date is in 2021 (Compl. ¶¶70, 134). Finally, it alleges inequitable conduct for failing to disclose Mr. Holt’s invention to the USPTO during prosecution (Compl. ¶¶139-142). A photograph of what is purported to be Mr. Holt's original press is included as evidence (Compl. ¶73).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction: can the limitation "a collection container connected between the push plate and the pushout donut," which the patent specification describes as creating a "tight seal," be construed broadly enough to cover the accused system's use of a standalone, physically separate commercial trash can?
- A potentially dispositive question will be one of patent validity: can the ’920 Patent survive allegations of invalidity based on improper inventorship and the on-sale bar, given the detailed claims that the patented technology was invented by a third party (Don Holt) and offered for sale as early as 2014, seven years prior to the patent's priority date? The outcome of this factual inquiry could render the infringement question moot.