DCT
4:19-cv-01072
Backoff LLC v. Samoco Oil Tools Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Backoff, LLC (Louisiana) and NuTec, Inc. (Alaska)
- Defendant: Samoco Oil Tools, Inc. (Texas); Samoco Downhole Equipment & Engineering, LLC (Texas); and Mohammed Salem Hellail (Texas)
- Plaintiff’s Counsel: Hanor Law Firm, PC
- Case Identification: 4:19-cv-01072, S.D. Tex., 04/01/2019
- Venue Allegations: Venue is alleged as proper in the Southern District of Texas because Defendant Samoco Oil Tools, Inc. is incorporated in Texas, has a regular and established place of business in Houston, and the alleged acts of infringement occurred in the district.
- Core Dispute: Plaintiffs allege that Defendants' "three-in-one" blowout preventer (BOP) test tools infringe a patent covering a method and apparatus for testing multiple BOP components in a single trip into a wellbore.
- Technical Context: The technology concerns specialized tools for testing the integrity of safety-critical blowout preventers on offshore oil rigs, where the ability to perform multiple tests in one operation can yield significant cost and time savings.
- Key Procedural History: The complaint details an extensive history of alleged derivation, asserting that Defendants developed their accused product after gaining knowledge of Plaintiffs' confidential technology through Plaintiffs' customer, Shell Oil. Plaintiffs also allege that Defendants failed to disclose Plaintiffs' technology as prior art to the U.S. Patent and Trademark Office during the prosecution of Defendants' own patent.
Case Timeline
| Date | Event |
|---|---|
| 2014-03-01 | Plaintiffs begin confidential discussions with Shell Oil (approx. date). |
| 2014-07-01 | Plaintiffs meet with Shell Oil to discuss BOP testing tool design (approx. date). |
| 2014-10-31 | Plaintiff offers its "3 in 1" BOP test tool for rent to Shell Oil. |
| 2015-01-05 | Plaintiffs make confidential presentation of tool operation to Shell Oil. |
| 2015-02-03 | Priority Date for U.S. Patent No. 9,506,312. |
| 2015-05-26 | Plaintiff NuTec enters into a confidential contract with Shell Oil. |
| 2016-05-18 | Defendant Samoco files a provisional patent application for its own tool. |
| 2016-08-04 | Plaintiffs' '312 Patent application is published. |
| 2016-08-24 | Defendants allegedly access Plaintiffs' website featuring the tool. |
| 2016-11-29 | U.S. Patent No. 9,506,312 is issued. |
| 2017-02-21 | Society of Petroleum Engineers publishes an article on the accused Samoco tool. |
| 2017-03-03 | Defendants allegedly make misrepresentations to the USPTO. |
| 2017-05-01 | Accused Samoco tool allegedly displayed at Offshore Technology Conference. |
| 2017-12-13 | Representatives of Plaintiffs and Defendants meet to discuss Defendants' product. |
| 2019-04-01 | Complaint Filing Date. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,506,312 - BLOWOUT PREVENTER TEST JOINT ASSEMBLY, FOR TESTING VARIABLE BORE RAMS, SHEAR RAMS, AND ANNULARS
The Invention Explained
- Problem Addressed: The patent's background describes the inefficiency of testing subsea blowout preventer (BOP) stacks, which often requires multiple, costly trips into the well to test different components against various drill pipe diameters ('312 Patent, col. 1:16-30). It also notes that prior art solutions using a "wireline retrievable dart" to control fluid flow could be problematic if the dart became lodged in the well ('312 Patent, col. 1:60-64).
- The Patented Solution: The patent discloses a "multi-gage" test tool that can test different BOP components (variable bore rams, shear rams, annulars) in a single trip without a wireline dart ('312 Patent, col. 2:5-15). The tool uses a telescoping assembly of an inner and outer mandrel. A key feature is a "rotation lug insert" which allows the inner mandrel to be selectively engaged with or disengaged from a bottom sub by rotating the entire tool from the surface. This allows the tool to be first used in a collapsed position for one set of tests, and then extended to a second position for another set of tests, such as testing shear rams ('312 Patent, col. 2:41-50; Fig. 3).
- Technical Importance: This design aims to provide a more reliable and efficient method for conducting mandatory BOP safety tests, thereby saving significant rig time and operational expense associated with offshore drilling ('312 Patent, col. 1:26-30).
Key Claims at a Glance
- The complaint asserts independent claim 4 ('312 Patent, col. 9:4-29).
- The essential elements of independent claim 4 are:
- a tubular inner mandrel;
- a bottom sub member securable to a bottom end of the inner mandrel for connecting the inner mandrel to a wellhead sealing member;
- a tubular outer mandrel telescopically receiving the inner mandrel in a surrounding relationship;
- a tubular backoff sub member having a lower end configured for threadable engagement with the bottom sub member and an upper part configured for threadable engagement with the outer mandrel, wherein the bottom sub member comprises a hollow upper portion with internal threads, said upper portion being configured to threadably engage an externally threaded lower end of the backoff sub member; and
- a rotation lug insert mounted in a surrounding relationship over the internal mandrel, the rotation lug insert forms a lug engagement area between the rotation lug insert and the internal mandrel for backing off the internal mandrel.
- The complaint does not explicitly reserve the right to assert other claims, but its prayer for relief seeks damages for infringement generally (Compl. ¶ B, p. 19).
III. The Accused Instrumentality
Product Identification
- The "Samoco three-in-one BOP test tool," also referred to by Defendants as the "Blow Out Preventer (BOP) OneTrip Test Tool," "OneTrip Universal BOP Test Tool," "UBTT," or "OneTrip" (Compl. ¶ 68).
Functionality and Market Context
- The complaint alleges the accused product is a BOP test tool that "enables the testing of a BOP with only one trip into a wellbore" (Compl. ¶ 68). Its core accused functionality involves the ability to engage "teeth to lock two subs together after fully telescoping" which allows the tool to be reconfigured downhole to test different BOP components, including blind shear rams (Compl. ¶ 74).
- The complaint alleges the tool provides significant commercial benefits, citing a report that it "had saved a 12-hour trip at a daily rig spread rate of USD 600,000" (Compl. ¶ 51).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'312 Patent Infringement Allegations
| Claim Element (from Independent Claim 4) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tubular inner mandrel; | The accused tool is comprised of an assembly of subs, including an inner component. | ¶74 | col. 3:21-25 |
| a bottom sub member securable to a bottom end of the inner mandrel...; | The accused tool's assembly of subs includes a component that connects to a well plug. | ¶74 | col. 3:46-53 |
| a tubular outer mandrel telescopically receiving the inner mandrel...; | The accused tool includes two subs that can move telescopically relative to each other to reach "extended positions." | ¶74 | col. 3:39-45 |
| a tubular backoff sub member having a lower end configured for threadable engagement with the bottom sub member...; | The accused tool is comprised of "two subs" that can be locked together. | ¶74 | col. 4:10-20 |
| a rotation lug insert mounted... [that] forms a lug engagement area... for backing off the internal mandrel. | The accused tool allegedly uses "teeth to lock two subs together," which allows the tool to be disconnected from the well plug to enable testing of different BOP components. | ¶74 | col. 4:46-65 |
- Identified Points of Contention:
- Scope Questions: The complaint's infringement theory relies on functional similarities, such as the accused tool's "teeth" locking "two subs" together (Compl. ¶ 74). A central question will be whether the specific components of the accused Samoco tool meet the structural definitions of the claimed "bottom sub member," "backoff sub member," and "rotation lug insert." The dispute may center on whether the accused tool's components are structurally equivalent to those claimed, or merely achieve a similar result through a different structure.
- Technical Questions: The complaint alleges the accused tool's "teeth" perform the function of the claimed "rotation lug insert" (Compl. ¶ 74). The court will need to determine if the accused mechanism for locking and unlocking the telescoping parts operates in substantially the same way as the claimed "lug engagement area" used for "backing off the internal mandrel." The complaint does not provide the technical detail necessary to resolve this question.
V. Key Claim Terms for Construction
The Term: "rotation lug insert"
- Context and Importance: This term appears central to the patented invention's mechanism for reconfiguring the tool downhole. Practitioners may focus on this term because the infringement allegation hinges on equating the accused tool's "teeth" with this specific claimed structure (Compl. ¶ 74). The definition will determine whether the claim is limited to the specific embodiment shown in the patent or can cover a broader range of locking mechanisms.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims state the insert "forms a lug engagement area... for backing off the internal mandrel," which is functional language that a plaintiff may argue covers any structure that performs this function ('312 Patent, col. 9:25-29).
- Evidence for a Narrower Interpretation: The specification describes a specific structure for the "rotation lug insert" (16) and its interaction with a "cutout" (100) on the inner mandrel, including an "angled wall" (102) that allows for directional engagement ('312 Patent, col. 4:46-65; Fig. 3). A defendant may argue the term should be limited to a structure with these specific characteristics.
The Term: "backoff sub member"
- Context and Importance: This is another specific structural element of the claimed assembly. As the complaint alleges the accused tool uses "two subs" that lock together, the precise definition of the "backoff sub member" and its relationship to the other components will be critical for mapping the claim onto the accused device.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue the term refers generally to any intermediate tubular component that connects the outer mandrel to the bottom sub and facilitates the telescoping and locking functions.
- Evidence for a Narrower Interpretation: The specification provides a detailed description of the "backoff sub member" (14), including specific sets of "vertically spaced inner thread sets" (68, 70, 72) for engaging other components ('312 Patent, col. 4:10-20). A defendant could argue the term requires these specific thread configurations.
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of inducing and contributory infringement (Compl. ¶¶ 75, 76). It does not, however, plead specific facts to support the requisite knowledge and intent for these claims, such as alleging that Defendants provided instruction manuals or other materials that encouraged direct infringement by customers.
- Willful Infringement: The complaint alleges willful and deliberate infringement (Compl. ¶ 77). This allegation is supported by an extensive factual narrative asserting that Defendants had pre-suit knowledge of Plaintiffs' technology through confidential disclosures from a mutual customer (Compl. ¶¶ 34-41), accessed Plaintiffs' public marketing materials (Compl. ¶ 45), and developed a "strikingly" similar product (Compl. ¶ 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the term "rotation lug insert", which is described with specific structural detail in the patent's preferred embodiment, be construed broadly enough to read on the accused tool's "teeth" mechanism, or is it limited to the specific angled-lug design disclosed?
- A second central question will be evidentiary and factual, extending beyond the patent claim to the related allegations of trade secret misappropriation. The court will need to weigh evidence regarding the alleged confidential disclosures and determine whether Defendants' tool was the product of independent development or was derived from Plaintiffs' proprietary information, as the complaint alleges.
- Finally, the infringement analysis raises a question of technical mapping: do the components of the accused Samoco tool, which the complaint describes functionally as "two subs," correspond on an element-by-element basis to the specifically named "bottom sub member" and "tubular backoff sub member" as recited in claim 4? The outcome will depend on evidence of the accused tool's actual construction.