DCT
4:17-cv-03028
Stage Completions USA Corp v. Gryphon Oilfield Solutions LLC D
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Stage Completions (USA) Corp. (Delaware/Texas)
- Defendant: Gryphon Oilfield Solutions, LLC (Delaware/Texas)
- Plaintiff’s Counsel: Jackson Walker, LLP
- Case Identification: 4:17-cv-03028, S.D. Tex., 10/10/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Texas because Defendant Gryphon Oilfield Solutions does business in the state and maintains its principal place of business in Houston, within the district.
- Core Dispute: Plaintiff, an oilfield services company, seeks a declaratory judgment that its Bowhead II system does not infringe two of Defendant's patents related to downhole tools for hydraulic fracturing.
- Technical Context: The technology concerns valve systems used in multi-stage hydraulic fracturing, a critical process for extracting hydrocarbons from unconventional reservoirs like shale formations.
- Key Procedural History: The complaint states that Defendant Gryphon first filed an infringement suit against Plaintiff Stage Completions in the Western District of Texas on September 22, 2017. Stage Completions filed this declaratory judgment action in the Southern District of Texas, asserting that venue in the Western District is improper, thereby creating a dispute over the proper forum for the litigation.
Case Timeline
| Date | Event |
|---|---|
| 2010-04-28 | Earliest Priority Date for '727 and '117 Patents |
| 2017-04-04 | U.S. Patent No. 9,611,727 Issues |
| 2017-08-22 | U.S. Patent No. 9,739,117 Issues |
| 2017-09-22 | Defendant Gryphon files initial suit in W.D. Tex. |
| 2017-10-10 | Plaintiff Stage Completions files this DJ action in S.D. Tex. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,611,727, "Apparatus and Method for Fracturing a Well" (issued Apr. 4, 2017)
The Invention Explained
- Problem Addressed: The patent describes shortcomings in conventional multi-stage fracturing systems that use a series of balls dropped from the surface to open valves. These systems suffer from progressively smaller valve openings, which restricts fluid flow rates, and they cannot easily be cemented in place, which increases operational costs ('727 Patent, col. 1:43-59).
- The Patented Solution: The invention is a valve subassembly containing a slidable piston that initially covers fracturing ports. A specially designed "dart" with a unique "dart profile" (e.g., keys) is pumped down the well. This dart bypasses other valves until it lands in a valve with a matching "key profile" on the inner wall of its piston. The pressure of the fracturing fluid behind the seated dart forces the piston to slide, shearing retaining pins and opening the ports to the formation ('727 Patent, Abstract; col. 2:18-55). This allows multiple valves in a well to have the same large internal diameter, improving flow.
- Technical Importance: The technology purports to enable higher-flow-rate fracturing operations and allow the entire well casing assembly to be cemented in place, overcoming key operational and cost limitations of prior art ball-drop systems ('727 Patent, col. 7:5-18).
Key Claims at a Glance
- The complaint identifies independent claims 1 (a method) and 7 (a system) as being asserted in the underlying dispute (Compl. ¶11).
- Independent Claim 1 requires, in essence:
- Providing an apparatus with at least two valves, each having a different "key profile."
- Placing the apparatus in a well casing.
- Placing a "dart" with a "dart profile" into the casing that matches the key profile on only one of the valves.
- Injecting fluid to move the dart until it engages the matching key profile on an interior sidewall of a tubular piston.
- Applying downward force via the dart to move the piston from a closed to an open position, allowing fluid to pass through a port.
- The complaint notes that dependent claims 2 and 7 were also asserted in the prior action (Compl. ¶11).
U.S. Patent No. 9,739,117, "Profile Selective System for Downhole Tools" (issued Aug. 22, 2017)
The Invention Explained
- Problem Addressed: As a continuation-in-part of the '727 patent's application, this patent addresses similar issues with conventional drop ball systems, namely the practical limitations on flow rate and pressure ('117 Patent, col. 1:28-37). It also seeks to provide a more versatile and reliable system for selectively engaging various types of downhole tools, not limited to just fracturing valves.
- The Patented Solution: The patent describes a system comprising a downhole tool with a "profile receiver" and an "actuator tool" with a corresponding "profile key." The actuator tool is conveyed through the well, bypassing tools with non-matching receivers, until it engages and actuates a tool with a matching receiver. The patent also discloses features like a bypass in the actuator tool, which allows fluid to be circulated ahead of the tool for washing or flushing debris ('117 Patent, Abstract; col. 2:11-22).
- Technical Importance: The invention generalizes the key-and-profile matching concept to a broader system applicable to various downhole tools and introduces features for enhanced operational flexibility, such as washing ahead of the tool ('117 Patent, col. 2:6-11).
Key Claims at a Glance
- The complaint identifies independent claims 27 (a method) and 31 (a system) as being asserted (Compl. ¶11).
- Independent Claim 27 requires, in essence:
- Providing a first downhole tool with a first key profile and a second downhole tool (uphole from the first) with a second, different key profile.
- Providing a first "actuator tool" with a mating key profile that engages the first key profile but not the second.
- Providing a second "actuator tool" with a mating key profile that engages the second key profile but not the first.
- Conveying the first actuator tool past the second downhole tool without engagement.
- Further conveying the first actuator tool to engage and actuate the first downhole tool.
- Conveying the second actuator tool to engage and actuate the second downhole tool.
- The complaint notes that dependent claims 29 and 32 were also asserted in the prior action (Compl. ¶11).
III. The Accused Instrumentality
- Product Identification: The Bowhead II system (Compl. ¶10).
- Functionality and Market Context: The complaint, being a declaratory judgment action filed by the accused infringer, does not describe the technical operation of the Bowhead II system. It only identifies the system as being used, sold, and imported by Stage Completions, an oilfield services company providing completion tools and services (Compl. ¶¶8, 10). The specific design and operational characteristics of the Bowhead II system are not detailed. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaration of non-infringement and therefore does not contain affirmative infringement allegations or claim charts. The analysis below outlines the core elements of the asserted claims that are at the center of the dispute, as referenced in the complaint from the prior litigation (Compl. ¶11).
'727 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Functionality at Issue for the Bowhead II System | Complaint Citation | Patent Citation |
|---|---|---|---|
| an apparatus having at least two valves, each valve having a key profile disposed thereon, wherein the key profile of each of the at least two valves is different | Does the Bowhead II system utilize multiple valves with distinct, mechanically distinguishable engagement profiles? | ¶10 | col. 9:22-26 |
| placing a dart into the casing string, the dart having a dart profile disposed thereon, wherein the dart profile matches the key profile on only one of the at least two valves | Does the Bowhead II system employ a dropped or pumped object ("dart") with a specific physical profile for selective actuation? | ¶10 | col. 9:31-34 |
| engages the key profile disposed on an interior sidewall of a tubular piston... to place a downward force on the piston to move the piston from the closed position to an the open position | Does the Bowhead II system's actuating object mechanically engage an internal profile on a sliding piston to open a port? | ¶10 | col. 9:38-44 |
'117 Patent Infringement Allegations
| Claim Element (from Independent Claim 27) | Functionality at Issue for the Bowhead II System | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a first downhole tool, comprising a first key profile... providing a second downhole tool... comprising a second key profile | Does the Bowhead II system comprise at least two distinct downhole tools having different mechanical engagement profiles? | ¶10 | col. 19:53-58 |
| providing a first actuator tool comprising a first mating key profile adapted to selectively engage the first key profile but not the second key profile | Does the Bowhead II system use an actuating component specifically designed to engage one tool's profile while bypassing another? | ¶10 | col. 20:1-3 |
| conveying the first actuator tool into the tubular conduit, past the second downhole tool without engaging the second key profile | Does the operation of the Bowhead II system involve an actuator passing by one tool to engage a different, subsequent tool? | ¶10 | col. 20:4-6 |
- Identified Points of Contention:
- Technical Questions: The central factual dispute will concern the precise mechanical structure and operation of the Bowhead II system. Key questions include: What mechanism does it use for selective actuation? Does it employ a sliding piston engaged on an internal surface, or another mechanism? What is the nature of its actuating object and the corresponding profiles on the downhole tools?
- Scope Questions: The case may turn on the construction of key claim terms. For example, does the term "key profile" from the '727 patent encompass any method of unique mechanical engagement, or is its scope limited by the groove-and-key embodiments shown in the patent's figures? Similarly, does the "actuator tool" of the '117 patent read on any actuating object, or is it implicitly limited to a dart-like structure?
V. Key Claim Terms for Construction
The Term: "key profile" ('727 Patent, claim 1)
- Context and Importance: This term is fundamental to the patent's claim of selective actuation. The definition will determine whether the Bowhead II system's engagement mechanism, if any, falls within the claim's scope. Practitioners may focus on this term because its construction will likely be dispositive of infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims require the profile to be "disposed thereon" and to be "different" from the profile on another valve, which could be argued to encompass any unique mechanical feature used for matching ('727 Patent, col. 9:22-26).
- Evidence for a Narrower Interpretation: The specification repeatedly illustrates the "key profile" as a series of specific grooves with varying locations and widths (e.g., "shoulder 56 is located in different positions in each key profile 55") and provides detailed figures of these configurations ('727 Patent, Fig. 15A-15D; col. 8:28-32). An argument may be made that the term is limited to such specific groove-based patterns.
The Term: "actuator tool" ('117 Patent, claim 27)
- Context and Importance: This term replaced the more specific "dart" used in the parent '727 patent. Its scope is critical for determining what types of actuating objects are covered by the '117 patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the tool by its function: having a "mating key profile adapted to selectively engage" a downhole tool ('117 Patent, col. 20:1-3). The summary also broadly describes it as a tool with a profile key for selective engagement ('117 Patent, col. 2:12-16).
- Evidence for a Narrower Interpretation: The specification explicitly states that "the actuator tool may comprise a dart" ('117 Patent, col. 8:37-38). The figures consistently depict an object that is structurally a dart, with a body, seals (cup 200), and keys ('117 Patent, Fig. 3). This may support an interpretation that limits the term to physically separate, dart-like objects.
VI. Other Allegations
- Indirect Infringement: The plaintiff seeks a declaratory judgment that it does not induce or contribute to infringement of the patents-in-suit (Compl. ¶¶19, 20). The complaint does not, however, detail the specific factual allegations that form the basis of the indirect infringement claims, as those would have been asserted by the defendant in the prior-filed action.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidentiary proof: The case hinges on the specific technical design and operation of the Plaintiff's Bowhead II system. As the complaint lacks these details, the dispute cannot be resolved until discovery reveals whether the system employs a "key profile" on a "tubular piston" actuated by a matching "dart" (as in the '727 patent) or a system of "actuator tools" and "downhole tools" with selectively matching profiles (as in the '117 patent).
- A central legal question will be one of claim scope: How broadly will the term "key profile" be construed? The resolution of the case will likely depend on whether this term is interpreted to cover a wide range of selective mechanical engagement systems, or if it is confined more narrowly to the specific key-and-groove structures heavily featured in the patent specifications. The outcome of this claim construction battle could determine whether the Bowhead II system's actuation mechanism infringes.