DCT
4:23-cv-01351
Tempress Tech Inc v. Texas Oilwell Partners LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tempress Technologies, Inc. (Washington)
- Defendant: Texas Oilwell Partners LLC (Texas)
- Plaintiff’s Counsel: Morgan, Lewis & Bockius LLP
- Case Identification: 4:23-cv-01351, S.D. Tex., 04/11/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Texas because Defendant resides there, has a regular and established place of business in the district, and has allegedly committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s hydraulic pulse tool for well intervention infringes a patent related to a valve for generating pressure pulses in borehole applications.
- Technical Context: The technology relates to downhole tools used in oil and gas drilling that generate hydraulic pulses to improve drilling efficiency and enable "seismic-while-drilling" (SWD) data acquisition.
- Key Procedural History: The complaint alleges that Plaintiff contacted Defendant on January 31, 2023, to provide notice of the alleged infringement. It further alleges that after initially agreeing to cease its activities, Defendant reversed course and refused to stop, based on what Plaintiff characterizes as an "objectively unreasonable position" regarding the patent's validity.
Case Timeline
| Date | Event |
|---|---|
| 2004-02-12 | U.S. Patent No. 7,139,219 Priority Date |
| 2006-11-21 | U.S. Patent No. 7,139,219 Issued |
| 2023-01-31 | Plaintiff contacted Defendant regarding infringement |
| 2023-04-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,139,219 - Hydraulic Impulse Generator and Frequency Sweep Mechanism for Borehole Applications
- Patent Identification: U.S. Patent No. 7,139,219, Hydraulic Impulse Generator and Frequency Sweep Mechanism for Borehole Applications, issued November 21, 2006.
The Invention Explained
- Problem Addressed: Prior art downhole pulse-generating tools were often mechanically complex, difficult to manufacture, and prone to premature failure and erosion from drilling mud, particularly those with "in-line" configurations requiring long, intersecting fluid passages ('219 Patent, col. 4:36-49). These tools also had limitations in their ability to generate the varied seismic signals needed for advanced geological imaging.
- The Patented Solution: The invention is a valve for generating hydraulic pressure pulses that features a "pilot" spool disposed coaxially within a main "poppet" spool ('219 Patent, col. 6:22-24). Pressurized drilling fluid causes the internal pilot to shuttle back and forth, which in turn directs fluid to drive the outer poppet between open and closed positions, thereby interrupting flow and creating a pressure pulse ('219 Patent, col. 15:1-16:44). This coaxial design allows for "extremely short and direct" flow paths, aiming to simplify construction and improve reliability compared to prior art ('219 Patent, col. 6:24-27).
- Technical Importance: This compact, coaxial valve architecture was designed to create a more robust and reliable downhole tool capable of producing powerful, controlled pressure pulses for both enhancing drilling and acting as a sophisticated seismic source for real-time formation analysis ('219 Patent, col. 8:8-18).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶24).
- Independent Claim 1 recites a valve for generating a pressure pulse, comprising:
- An inlet port for receiving pressurized fluid.
- An outlet port for the fluid.
- A plurality of fluid passages.
- A poppet actuated by the fluid to cycle between open and closed positions to interrupt flow through the outlet port.
- A pilot disposed within the poppet, where the pilot is reciprocated by the fluid and the pilot's position determines which fluid passages are active.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Delta Pulse II," described as a "pulse tool" (Compl. ¶14).
Functionality and Market Context
- The complaint provides minimal detail on the specific functionality of the Delta Pulse II. It alleges, "on information and belief," that the Accused Product "embodies the design shown in TOP's U.S. Patent Application No. 17/473,244" (Compl. ¶15, ¶25). No further technical description of the accused product's operation or its market position is provided.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed infringement contentions. Its infringement theory rests on the allegation that the Accused Product embodies the design of the Defendant's own patent application, and that this design meets all elements of at least Claim 1 of the ’219 Patent (Compl. ¶25).
’219 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A valve configured for generating a pressure pulse within a conduit by at least partially interrupting flow of a pressurized fluid circulating through the conduit, comprising: | The complaint alleges the Accused Product embodies a design that performs this function. | ¶25 | col. 6:63-66 |
| (a) an inlet port configured to couple in fluid communication with the conduit through which the pressurized fluid is circulating; | The complaint alleges the Accused Product embodies a design that includes this feature. | ¶25 | col. 13:55-60 |
| (b) an outlet port configured to couple in fluid communication with the conduit through which the pressurized fluid is circulating; | The complaint alleges the Accused Product embodies a design that includes this feature. | ¶25 | col. 13:66-14:2 |
| (c) a plurality of fluid passages configured to selectively couple in fluid communication with said inlet port; | The complaint alleges the Accused Product embodies a design that includes this feature. | ¶25 | col. 14:21-27 |
| (d) a poppet that is actuated by the pressurized fluid to cycle between an open position and a closed position, such that when in said closed position, said poppet at least partially interrupts a flow... | The complaint alleges the Accused Product embodies a design that includes this feature. | ¶25 | col. 13:17-19 |
| (e) a pilot disposed within said poppet, said pilot being reciprocated back and forth... by the pressurized fluid, such that a position of said pilot determines which of said plurality of fluid passages is coupled... | The complaint alleges the Accused Product embodies a design that includes this feature. | ¶25 | col. 13:28-39 |
- Identified Points of Contention:
- Evidentiary Question: The central issue will be whether Plaintiff can produce evidence to substantiate its core allegation: that the Delta Pulse II product actually incorporates the design shown in Defendant's '244 patent application, and that this design, in turn, maps onto the elements of the asserted claim. The complaint itself offers no direct evidence comparing the product to the claim.
- Technical Question: Assuming the general architecture is similar, a key technical dispute may arise over claim element 1(e). The analysis will focus on whether the accused device's internal components function as a "pilot disposed within said poppet" and whether its reciprocation is driven by pressurized fluid in the specific manner required by the claim and described in the patent's specification.
V. Key Claim Terms for Construction
- The Term: "pilot disposed within said poppet"
- Context and Importance: This phrase defines the core architectural innovation of the patent—the coaxial relationship between the pilot and poppet. The outcome of the infringement analysis will heavily depend on whether the accused device's internal structure falls within the scope of this term. Practitioners may focus on this term because it distinguishes the invention from prior art that used physically separate components connected by complex fluid passages.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a degree of enclosure or a particular orientation beyond "within." A party could argue this encompasses any configuration where one component is located inside the other, even if not fully encapsulated.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the arrangement as "coaxially" disposed, with the pilot "captured inside poppet assembly 2" ('219 Patent, col. 6:24, col. 13:28). This language may support a construction requiring a more specific, nested, and axially aligned configuration.
VI. Other Allegations
- Indirect Infringement: The complaint asserts both induced and contributory infringement "on information and belief" (Compl. ¶¶31-32). For inducement, it alleges Defendant encourages its customers to use the Accused Product in an infringing manner (Compl. ¶31). For contributory infringement, it alleges the product is a material part of the invention, not a staple article of commerce, and is especially made for infringing use (Compl. ¶32). The factual basis for knowledge relies on "prior communications between the parties" (Compl. ¶32).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It specifically pleads that Defendant was put on notice of the ’219 Patent and the alleged infringement on January 31, 2023 (Compl. ¶¶16, 26). The complaint further alleges that Defendant's continuation of infringing activities after this notice was "willful, deliberate, and intentional" (Compl. ¶27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidence: Can the Plaintiff, having pleaded infringement by reference to an external document (the Defendant's own patent application), produce the technical evidence necessary to prove that the commercial "Delta Pulse II" product actually practices the design in that application, and that the design, in fact, reads on every element of the asserted claim?
- A second core issue will be one of technical and definitional scope: Does the term "pilot disposed within said poppet", as understood in light of the patent's specification, cover the specific internal architecture and fluid-actuated mechanism of the accused "Delta Pulse II" tool, or is there a fundamental mismatch in the components' spatial relationship or method of operation?
- A third question will relate to willfulness: Did the Defendant's decision to continue its activities after receiving express notice from the Plaintiff, particularly after allegedly agreeing to stop, constitute the kind of "objectively reckless" conduct required to support a finding of willful infringement and potential enhanced damages?