DCT

4:19-cv-02459

Exacta Fracenergy Services Inc v. Lee

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:19-cv-02459, S.D. Tex., 07/08/2019
  • Venue Allegations: Venue is asserted on the basis that the Defendant, a non-U.S. resident, threatened suit for patent infringement in correspondence directed to the Plaintiffs, who reside within the Southern District of Texas.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their oilfield completion tools do not infringe two of the Defendant's patents related to downhole packer apparatuses.
  • Technical Context: The technology involves packer tools used in oil and gas wells to create a seal within the well casing, a critical step for isolating zones for hydraulic fracturing.
  • Key Procedural History: The action was prompted by a cease-and-desist letter from the Defendant. Subsequent to the filing of this complaint, both patents-in-suit were subject to inter partes review (IPR) proceedings (IPR2020-01424 and IPR2020-01425). In October 2021, the U.S. Patent and Trademark Office issued certificates cancelling all claims asserted against the Plaintiffs in the Defendant's original letter, a development that may be dispositive of the controversy.

Case Timeline

Date Event
2011-01-20 Earliest Priority Date for '989 and '163 Patents
2015-11-17 U.S. Patent No. 9,187,989 Issued
2018-01-16 U.S. Patent No. 9,869,163 Issued
2019-06-19 Defendant sends cease-and-desist letter to Plaintiffs
2019-07-08 Complaint for Declaratory Judgment Filed
2021-10-13 IPR Certificate issues cancelling asserted claims of '989 Patent
2021-10-15 IPR Certificate issues cancelling asserted claims of '163 Patent

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

U.S. Patent No. 9,187,989, "PACKER APPARATUS," issued November 17, 2015

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of reliably perforating and sealing well casings, particularly in modern long, horizontal wells with tight formations and small diameters. In such environments, there is a "lack of hydraulic working area available in the downhole tool to provide a force for moving parts to operate" (’989 Patent, col. 1:56-60).
  • The Patented Solution: The invention is a packer apparatus designed to overcome this force limitation. It employs a "plurality of pistons" arranged to move an activation member. Fluid pressure from the tool's central bore is directed into separate pressure chambers for each piston, allowing the forces to be aggregated. This combined force deforms an elastomeric packer element outward to create a strong annular seal against the well casing (’989 Patent, col. 4:1-15, Abstract). The configuration is shown in figures such as Fig. 14a (undeformed) and Fig. 14b (deformed).
  • Technical Importance: This design provides a method for multiplying the available hydraulic force to ensure reliable packer seal integrity in space-constrained downhole applications (’989 Patent, col. 4:20-29).

Key Claims at a Glance

  • The controversy arises from Defendant's assertion of claims 1-3 and 6 (Compl. ¶11). Independent claim 1 is central.
  • Independent Claim 1 of the ’989 Patent requires:
    • A body arranged to be disposed in a well casing.
    • An activation member mounted to the body, moveable relative to the body to deform an elastomeric packer element outwardly.
    • A plurality of pistons arranged to move the activation member, each piston defining a respective pressure chamber.
    • The pressure chambers are arranged to be filled with fluid in response to an increase in fluid pressure in the body, causing the pistons to move.
  • The complaint seeks a declaratory judgment of non-infringement of any claim of the patent (Compl. ¶14).

U.S. Patent No. 9,869,163, "PACKER APPARATUS AND METHOD OF SEALING WELL CASING," issued January 16, 2018

The Invention Explained

  • Problem Addressed: Similar to its parent '989 Patent, the '163 Patent addresses the need for reliable and repeatable methods for fracturing formations, which requires tools that can effectively isolate sections of a well casing (’163 Patent, col. 1:36-44).
  • The Patented Solution: The patent describes a packer apparatus that uses multiple pistons to generate sufficient force to deform a packer element. A key characteristic recited in some claims is the ability of the activation member to return the packer element to an undeformed condition when fluid pressure is reduced (’163 Patent, Claim 1). The general mechanical principle of using multiple pistons to aggregate force is consistent with the parent patent (’163 Patent, col. 2:15-24).
  • Technical Importance: The invention aims to provide a "highly advantageous work string that simplifies completion operations" by enabling reliable sealing and anchoring during fracturing (’163 Patent, col. 4:5-9).

Key Claims at a Glance

  • The controversy arises from Defendant's assertion of claims 1-3, 5-6, 15-17, 20-21, and 24-25 (Compl. ¶11). The independent claims asserted are 1, 15, and 20.
  • Independent Claim 1 of the ’163 Patent requires:
    • A body, an activation member, and an elastomeric packer element.
    • A plurality of pistons to move the activation member.
    • A characterizing feature that "when fluid pressure is reduced in the body, the activation member is able to move to return the elastomeric packer element to an undeformed condition."
  • The complaint seeks a declaratory judgment of non-infringement of any claim of the patent (Compl. ¶17).

III. The Accused Instrumentality

Product Identification

  • The "ExactaStim device" (Compl. ¶8, 11).

Functionality and Market Context

  • The complaint describes the Plaintiffs as "oilfield services companies that develop and build completion tools... including, but not to, the ExactaStim device" (Compl. ¶8). No further technical details, diagrams, or descriptions of the structure or operation of the ExactaStim device are provided in the complaint. The complaint also does not contain allegations regarding the product's specific commercial importance beyond its status as a tool developed by the Plaintiffs.

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, it does not contain affirmative infringement allegations or claim charts mapping patent claims to the accused product. The complaint states that the Defendant alleged infringement in a letter, but the complaint's own allegations are limited to conclusory denials of infringement (Compl. ¶14, 17). The complaint does not provide a narrative infringement theory to analyze, nor does it describe how the ExactaStim device operates. Therefore, a claim chart summary cannot be constructed.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Factual Questions: Given the lack of information, a primary question for the court would be to determine the actual structure and method of operation of the ExactaStim device. Without this factual record, no infringement analysis is possible.
    • Scope Questions: Assuming the case proceeded, a likely point of contention would involve the scope of "plurality of pistons." The court would need to determine if the mechanism in the ExactaStim device that responds to hydraulic pressure meets the definition of this term as used in the patents.
    • Functional Questions ('163 Patent): For the '163 Patent, a key question would be whether the ExactaStim device possesses the claimed return functionality, whereby the packer element returns to an "undeformed condition" when fluid pressure is reduced (Claim 1). The evidence would need to show whether the accused device is "able to move to return" in the manner required by the claim.

V. Key Claim Terms for Construction

  • The Term: "piston" (’989 Patent, Claim 1)

  • Context and Importance: This term is the central structural element of the claimed force-multiplying mechanism. The outcome of the infringement analysis would hinge on whether the accused device's pressure-actuated components fall within the legal scope of "piston."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which may suggest the term should be given its plain and ordinary meaning to one of skill in the art—a sliding piece moved by or moving against fluid pressure within a cylinder or chamber.
    • Evidence for a Narrower Interpretation: The embodiments consistently depict the piston (e.g., element 110) as a discrete, annular component that slides along a central cylindrical body (106) within an outer housing (’989 Patent, Fig. 14a, col. 9:56-61). A party could argue the term is implicitly limited to this disclosed structure.

  • The Term: "the activation member is able to move to return the elastomeric packer element to an undeformed condition" (’163 Patent, Claim 1)

  • Context and Importance: This functional limitation is a key differentiator in Claim 1 of the '163 Patent. The dispute would center on what mechanism or capability satisfies the "able to move to return" requirement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The phrase "is able to move" could be interpreted to mean the device is simply not permanently locked in its deployed state, and can be returned via external forces (e.g., pulling the tool out of the well) rather than an internal mechanism.
    • Evidence for a Narrower Interpretation: The specification discloses a "return spring (36)" as a mechanism for returning the cutter blocks, a similar functional component, to their retracted state (’163 Patent, col. 8:18-24). A party may argue this disclosure suggests the "able to move" language requires an active, built-in return mechanism.

VI. Other Allegations

  • Indirect Infringement: Plaintiffs seek a declaratory judgment that they do not induce or contribute to infringement (Compl. ¶¶14, 17). The complaint does not provide a factual basis for this denial, other than the general assertion of non-infringement.
  • Willful Infringement: Willfulness is not alleged by the Plaintiffs. However, the complaint establishes that Plaintiffs were on notice of the patents-in-suit as of the June 19, 2019 cease-and-desist letter (Compl. ¶10). This fact would be relevant to willfulness for any infringement occurring after that date, should infringement be found.

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

  1. A threshold issue is one of mootness: given that the U.S. Patent and Trademark Office has issued certificates cancelling all patent claims originally asserted by the Defendant, the primary question is whether a legally sufficient case or controversy still exists for the court to adjudicate.

  2. A foundational evidentiary question is one of product operation: the complaint provides no technical description of the accused ExactaStim device. Before any infringement analysis could occur, the parties would need to establish the precise structure and functionality of the accused product.

  3. Assuming the claims were valid, a central legal issue would be one of claim construction: the dispute would likely turn on the scope of the term "piston." The court’s interpretation of whether this term is limited to the annular embodiments shown in the patent or covers a broader range of pressure-activated components would be critical to the infringement outcome.