DCT
2:24-cv-00181
Del Corp v. J&J Tamez LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Del Corp (Louisiana)
- Defendant: J&J Tamez LLC (Texas)
- Plaintiff’s Counsel: Jones Walker LLP
- Case Identification: 2:24-cv-00181, S.D. Tex., 08/09/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the district, maintains a regular and established place of business in the district, and has committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "SandDevils" flowback separation systems infringe three patents related to systems and methods for separating gas, liquid, and solids from slurry recovered from hydrocarbon wells.
- Technical Context: The technology concerns mobile, multi-stage systems used in the oil and gas industry to process flowback fluid on-site, a critical step in managing waste and recovering materials from well operations.
- Key Procedural History: The complaint alleges Defendant had notice of U.S. Patent No. 10,751,654 as of April 27, 2021, and of U.S. Patent Nos. 11,326,406 and 11,634,953 as of June 26, 2024. These dates are cited to support allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2017-12-21 | Priority Date for ’654, ’406, and ’953 Patents |
| 2020-08-25 | Issue Date for U.S. Patent No. 10751654 |
| 2021-04-27 | Alleged Notice Date for ’654 Patent |
| 2022-05-10 | Issue Date for U.S. Patent No. 11326406 |
| 2023-04-25 | Issue Date for U.S. Patent No. 11634953 |
| 2024-06-26 | Alleged Notice Date for ’406 and ’953 Patents |
| 2024-08-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,634,953 - Flow Back Separation System and Method
The Invention Explained
- Problem Addressed: The patent family addresses the general need for a system and method to separate solids from fluid, specifically in the context of slurry recovered from a hydrocarbon well during flowback operations (’654 Patent, col. 1:12-14).
- The Patented Solution: The invention is an integrated, multi-stage system within a single tank designed to process well slurry. The process begins with a degassing unit removing entrained gas. Settled solids are moved by a conveying device to a pump, which sends a concentrated slurry to a hydrocyclone unit. The hydrocyclone separates the mixture into a clean fluid overflow and a solids-heavy underflow. A shaker then dewaters the solids from the underflow, and critically, the shaker produces its own underflow (a "third slurry") that is deposited back into the tank for recirculation through the system (’953 Patent, Abstract; ’654 Patent, col. 1:15-col. 2:12).
- Technical Importance: The system provides a mobile, all-in-one apparatus for on-site processing of flowback fluids, which is a significant logistical component of modern oil and gas well operations (’654 Patent, col. 5:63-col. 6:6).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶12).
- The essential elements of claim 1 include:
- A tank with front, mid, and rear sections.
- A degassing unit to remove gas and discharge a first slurry into the tank for initial settling.
- A conveying device to move the settled solids toward a conduit inlet.
- A pump to move a second slurry through the conduit.
- A hydrocyclone unit to process the second slurry into a clean fluid overflow and a solids underflow.
- A shaker to dewater solids from the hydrocyclone underflow and produce its own underflow (a "third slurry") that is deposited back into the tank for recirculation.
- A second conduit to return the clean fluid overflow from the hydrocyclone back into the tank.
- An overflow device to allow the clean fluid to exit the tank.
- The complaint reserves the right to assert additional claims upon discovery (Compl. ¶42).
U.S. Patent No. 11,326,406 - Flow Back Separation System and Method
The Invention Explained
- Problem Addressed: As with the ’953 Patent, the invention aims to efficiently separate solids from flowback slurry at a well site (’654 Patent, col. 1:12-14).
- The Patented Solution: The ’406 Patent claims a very similar system but with specific structural limitations. Claim 1 requires the tank to have "sloping side walls," the conveying device to be "operatively positioned on the bottom of the tank," and the shaker to be "operatively positioned underneath the one or more hydrocyclone units" (’406 Patent, Claim 1). These elements describe a specific geometric and spatial arrangement of the system components.
- Technical Importance: This specific configuration is presented as an effective arrangement for a mobile, gravity-assisted separation process (’654 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶21).
- The essential elements of claim 1 are nearly identical to those of the ’953 Patent's claim 1, but with the added specificity of "sloping side walls," a conveying device "on the bottom of the tank," and a shaker positioned "underneath" the hydrocyclone unit (Compl. ¶21).
- The complaint reserves the right to assert additional claims (Compl. ¶42).
U.S. Patent No. 10,751,654 - Flow Back Separation System and Method
The Invention Explained
- As the parent patent in the asserted family, the ’654 Patent discloses the core separation system. Its claims introduce more granular features, including a "V-shaped compartment" with "sloping side walls," a "first series of baffles" to facilitate settling, a "shaftless auger" as the conveying device, and a "linear shaker." The claims also recite a "second series of baffles" and an "underflow weir" to further purify the fluid before it exits the tank (’654 Patent, Claim 1).
Asserted Claims & Accused Features
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶30, ¶57).
- Accused Features: The complaint alleges that the Accused SandDevils embody the specific features of claim 1, including the V-shaped compartment, degassing units, baffles, shaftless auger, pump, hydrocyclones, and linear shaker configured for recirculation (Compl. ¶¶31-41).
III. The Accused Instrumentality
Product Identification
- The accused products are flowback separation systems marketed as "SandDevils" (Compl. ¶1).
Functionality and Market Context
- The complaint alleges the SandDevils are systems used for separating gas, liquid, and solids from slurry recovered from hydrocarbon wells (Compl. ¶1). The allegations describe the product's functionality by mapping its components directly to the elements of the asserted patent claims (Compl. ¶¶13-41). The complaint alleges the products are manufactured, used, offered for sale, and sold by Defendant within the Southern District of Texas but provides no further detail on their market positioning or commercial significance (Compl. ¶6). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’953 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tank having side walls, a bottom, and a top, the tank having a front section, a mid-section, and a rear section; | The Accused SandDevils include a tank with these specified features and sections. | ¶13 | col. 5:18-24 |
| a degassing unit operatively associated with the tank, the degassing unit removing an entrained gas from the slurry... | The Accused SandDevils include a degassing unit that removes entrained gas and discharges slurry into the tank, causing solids to settle. | ¶14 | col. 6:11-30 |
| a conveying device operatively positioned within the tank, the conveying device configured to cause the first solids to move proximate to an inlet of a first conduit... | The Accused SandDevils include an internal conveying device configured to move settled solids to the inlet of a conduit. | ¶15 | col. 9:3-13 |
| a pump in fluid communication with the first conduit, the pump configured to pump a second slurry containing the first solids through the first conduit; | The Accused SandDevils include a pump that moves the solids-containing slurry through the first conduit. | ¶16 | col. 6:66-col. 7:10 |
| a hydrocyclone unit in fluid communication with an outlet of the first conduit...to produce an overflow comprising a first clean fluid and an underflow comprising the first solids; | The Accused SandDevils include a hydrocyclone unit that receives the slurry and separates it into a clean fluid overflow and a solids underflow. | ¶17 | col. 6:41-56 |
| a shaker operatively associated with the hydrocyclone unit...configured for depositing the third slurry into the tank for recirculation through the first conduit to the hydrocyclone unit; | The Accused SandDevils include a shaker that dewaters the solids and produces an underflow (third slurry) that is deposited into the tank for recirculation. | ¶18 | col. 12:52-60 |
| a second conduit...to receive and provide a flow path for the overflow comprising the first clean fluid... | The Accused SandDevils include a second conduit that returns the clean fluid overflow from the hydrocyclone back into the tank. | ¶19 | col. 7:11-15 |
| an overflow device operatively positioned within the tank...configured to provide an outlet for the first clean fluid to exit the tank. | The Accused SandDevils include an overflow device that provides an outlet for the clean fluid to exit the system. | ¶20 | col. 8:65-col. 9:2 |
’406 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tank having sloping side walls, a bottom, and a top, the tank having a front section, a mid-section, and a rear section; | The Accused SandDevils include a tank with sloping side walls and the specified sections. | ¶22 | col. 5:28-34 |
| one or more degassing units operatively associated with the tank...whereby a first settling of a first solids within the first slurry takes place; | The Accused SandDevils include one or more degassing units that remove gas and discharge slurry into the tank for settling. | ¶23 | col. 6:11-30 |
| a conveying device operatively positioned on the bottom of the tank, the conveying device configured to cause the first solids to move proximate to an inlet of a first conduit... | The Accused SandDevils include a conveying device on the bottom of the tank that moves solids toward a conduit inlet. | ¶24 | col. 9:3-9 |
| a pump in fluid communication with the first conduit...configured to pump a second slurry containing the first solids through the first conduit; | The Accused SandDevils include a pump to move the slurry through the conduit. | ¶25 | col. 6:66-col. 7:10 |
| one or more hydrocyclone units in fluid communication with an outlet of the first conduit...to produce an overflow comprising a first clean fluid and an underflow comprising the first solids; | The Accused SandDevils include one or more hydrocyclone units that separate the slurry into a clean fluid overflow and a solids underflow. | ¶26 | col. 6:41-56 |
| a shaker operatively positioned underneath the one or more hydrocyclone units...configured for depositing the third slurry into the tank for recirculation... | The Accused SandDevils include a shaker positioned underneath the hydrocyclone units that dewaters solids and deposits an underflow back into the tank for recirculation. | ¶27 | col. 7:16-24 |
| a second conduit...to receive and provide a flow path for the overflow comprising the first clean fluid... | The Accused SandDevils include a second conduit to return the clean fluid overflow from the hydrocyclones back into the tank. | ¶28 | col. 7:11-15 |
| an overflow device operatively positioned within the tank...configured to provide an outlet for the first clean fluid to exit the tank. | The Accused SandDevils include an overflow device that provides an outlet for clean fluid to exit the tank. | ¶29 | col. 8:65-col. 9:2 |
Identified Points of Contention
- Scope Questions: The complaint's allegations are conclusory and based on "information and belief" for several key elements (e.g., Compl. ¶15, ¶24). The primary point of contention will likely be whether the specific arrangement and function of the components in the Accused SandDevils meet the precise structural and operational limitations of the claims. For example, for the ’406 Patent, does the accused system have a conveying device "on the bottom of the tank" and a shaker "underneath" the hydrocyclone units in the manner claimed?
- Technical Questions: A key technical question, central to claim 1 of both the ’953 and ’406 patents, is whether the accused shaker actually produces a "third slurry" and is configured to deposit it back into the tank "for recirculation through the first conduit to the hydrocyclone unit." This specific functional loop is a critical limitation, and the complaint does not provide technical evidence demonstrating that the accused product performs this exact function.
V. Key Claim Terms for Construction
- The Term: "recirculation" (e.g., ’953 Patent, Claim 1)
- Context and Importance: This term is critical because it defines a specific functional loop where underflow from the shaker is not merely drained but is intentionally returned to the system for re-processing. Practitioners may focus on this term because infringement may depend on whether the accused product's handling of shaker underflow constitutes this specific, purposeful recirculation path or a more general drainage function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term simply means any return of material from the shaker area to the main tank, a common design feature for fluid management.
- Evidence for a Narrower Interpretation: The claim language itself provides a narrower definition: "depositing the third slurry into the tank for recirculation through the first conduit to the hydrocyclone unit" (’953 Patent, col. 4:32-35). This suggests the term requires not just a return, but a return for the specific purpose of being re-processed through the hydrocyclone, as described in the specification (’654 Patent, col. 11:53-60).
- The Term: "operatively positioned" (e.g., ’406 Patent, Claim 1)
- Context and Importance: This term appears throughout the claims to define the relationship between components. Its construction is important because the patents claim a combination of known components, making their specific arrangement and functional relationship a cornerstone of the invention. For the ’406 Patent, the dispute may focus on whether the shaker is "operatively positioned underneath" the hydrocyclones, which implies a specific spatial and functional dependency.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses the term generally to describe components that are connected and work together, which might support an interpretation of "able to operate in conjunction with."
- Evidence for a Narrower Interpretation: The drawings and specific embodiments show a distinct physical layout where components are placed in specific locations relative to one another (e.g., '654 Patent, Fig. 1). A party could argue that "operatively positioned" should be limited by these embodiments to configurations that achieve the system's intended gravity-fed and flow-management functions.
VI. Other Allegations
- Indirect Infringement: The complaint includes allegations of induced and contributory infringement (Compl. ¶¶51, 54, 57). However, it does not plead specific facts, such as referencing user manuals or instructions given to customers, that would be required to substantiate the element of intent for inducement.
- Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful and deliberate (Compl. ¶¶52, 55, 58). These allegations are supported by specific claims of pre-suit knowledge based on notice letters sent on April 27, 2021 for the ’654 Patent and June 26, 2024 for the ’953 and ’406 Patents (Compl. ¶¶44-45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functional specificity: Do the accused "SandDevils" systems perform the precise, multi-step recirculation process required by the claims, where an underflow from the shaker is intentionally deposited back into the tank for the express purpose of being re-processed by the hydrocyclones? The case may turn on whether the accused product’s fluid handling meets this specific functional limitation or reflects a more general design.
- A second key question will be one of structural correspondence: Given that the patents claim a specific combination of components, does the physical arrangement of the accused systems meet every spatial limitation recited in the claims, such as the "sloping side walls" and the positioning of the shaker "underneath" the hydrocyclones as required by the ’406 patent? The notice-style pleading leaves open whether discovery will reveal a literal match for every structural detail.