DCT

4:23-cv-02954

Impulse Downhole Solutions Ltd v. Downhole Well Solutions LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:23-cv-02954, S.D. Tex., 08/10/2023
  • Venue Allegations: Venue is alleged to be proper in the Southern District of Texas because the Defendant is a Texas limited liability company with its principal place of business in the District.
  • Core Dispute: Plaintiff alleges that Defendant’s downhole vibration tools, used in oil and gas drilling, infringe five patents related to generating specific fluid pressure patterns to vibrate drill strings and to selectively activate such tools.
  • Technical Context: The technology involves downhole tools that create vibrations to reduce friction during complex directional or horizontal drilling, which is critical for efficiently accessing subterranean oil and gas deposits.
  • Key Procedural History: The complaint alleges that Defendant was aware of the asserted patents through multiple events, including a May 2019 patent office action citing the '584 patent family during prosecution of a patent belonging to Defendant's founder, and an October 2022 notice letter from Plaintiff. The complaint also notes that an investor in Defendant previously acquired a company that Plaintiff had sued over the '584 patent in a case that resulted in a settlement.

Case Timeline

Date Event
2012-12-13 U.S. Patent No. 9,637,976 Priority Date
2013-12-03 U.S. Patent No. 9,765,584 Priority Date
2015-08-14 U.S. Patent Nos. 11,268,337, 10,648,265, & 10,633,920 Priority Date
2017-05-02 U.S. Patent No. 9637976 Issues
2017-09-19 U.S. Patent No. 9765584 Issues
2019-01-01 Defendant DWS Founded
2019-05-01 DWS allegedly receives notice of '584 Patent via patent office action
2020-03-12 U.S. Patent No. 10648265 Issues
2020-04-28 U.S. Patent No. 10633920 Issues
2020-05-01 Accused PowerGLIDE OD Product Launch Date
2022-03-08 U.S. Patent No. 11268337 Issues
2022-10-01 Plaintiff sends notice letter to Defendant regarding patents-in-suit
2023-08-10 Complaint Filed

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

U.S. Patent No. 9,765,584 - Flow controlling downhole tool

Issued September 19, 2017.

The Invention Explained

  • Problem Addressed: The patent describes the problem of prior art vibration tools that generated rhythmic pulse patterns, which could interfere with sensitive "measurement while drilling" (MWD) equipment also present in the drill string (Compl. ¶17; ’584 Patent, col. 10:9-28). Such interference could disrupt the collection of critical data during drilling operations.
  • The Patented Solution: The invention is a downhole tool that uses a motor to rotate a valve component (a "flow head") against a stationary valve component (a "flow restrictor"). Both components have multiple fluid ports of varying configurations. As the flow head rotates, the interaction of these ports creates a "cyclic, polyrhythmic pattern" of fluid pressure spikes, which vibrates the drill string to reduce friction without creating the kind of regular, rhythmic interference that could disrupt MWD tools (’584 Patent, Abstract; col. 3:45-50). The complaint includes a diagram showing the arrangement of a motor, rotary valve, and stationary valve within the tool assembly (Compl. ¶16; Exhibit 1, Fig. 1).
  • Technical Importance: This approach aimed to provide the friction-reducing benefits of vibration while mitigating the negative side effect of interference with MWD equipment, thereby improving the efficiency and data-gathering capabilities of long, horizontal drilling operations (’584 Patent, col. 10:22-28, 10:60-63).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 (Compl. ¶38).
  • The essential elements of independent claim 1 include:
    • A motor with a rotor.
    • A flow head with a plurality of ports, coupled to the rotor.
    • A stationary flow restrictor with a plurality of ports.
    • Wherein rotation causes the ports of the flow head and flow restrictor to align and misalign such that the resulting fluid pressure is constrained to a "cyclic, polyrhythmic pattern."
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,637,976 - Downhole drilling tool

Issued May 2, 2017.

The Invention Explained

  • Problem Addressed: The patent addresses the same general problem as the ’584 patent: the need for vibration to reduce friction in directional drilling, and the drawbacks of prior art tools (’976 Patent, col. 1:25-30).
  • The Patented Solution: The solution is similar to the ’584 patent, involving a motor-driven rotary flow head and a stationary flow restrictor, both with multiple ports. However, this patent focuses on creating an "irregular pattern" of fluid flow. This irregularity is achieved through a combination of the motor’s eccentric motion and the specific arrangement of ports on the flow head and restrictor, and is defined in the claim by requiring that the orientation of the flow head is different at the same point in consecutive cycles of the rotor (’976 Patent, Abstract; col. 2:25-31). This arrhythmia is intended to vary tension and prevent the drill string from sticking (’976 Patent, col. 7:1-4).
  • Technical Importance: By generating an irregular or arrhythmic vibration pattern, the invention sought to further distinguish its vibrations from the regular pulses used by MWD tools, potentially offering superior friction reduction with even less risk of electronic interference (’976 Patent, col. 1:62-65).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 (Compl. ¶62).
  • The essential elements of independent claim 1 include:
    • A motor with an eccentrically-driven rotor.
    • A flow head with multiple ports, driven by the rotor in eccentric rotational motion.
    • A stationary flow restrictor with multiple ports.
    • Wherein rotation varies fluid flow in an "irregular pattern," which is further defined as a pattern where "an orientation of the flow head at a defined position in a cycle of the rotor is different between consecutive cycles of the rotor."
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,268,337 - Friction reduction assembly

Issued March 8, 2022.

  • Technology Synopsis: This patent discloses a "selectively-activatable" friction reduction tool. The tool contains a central passage that allows drilling fluid to bypass the motor, keeping the tool inactive. To activate it, a projectile (e.g., a ball) is dropped from the surface to block this central passage, which diverts the fluid flow into the motor and turns the tool on (’337 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶83).
  • Accused Features: The complaint alleges that the "PowerGLIDE OD" ("On-Demand") tool infringes by incorporating a selectively activatable mechanism that uses an "activation ball" dropped from the surface to turn the tool on (Compl. ¶22, ¶81).

U.S. Patent No. 10,648,265 - Lateral drilling method

Issued March 12, 2020.

  • Technology Synopsis: This patent claims a method of drilling that involves using multiple friction reduction tools in a single drill string. The method includes activating a first tool, drilling a portion of the well, connecting a second tool, and then activating the second tool while the first remains active (’265 Patent, Abstract; Claim 1).
  • Asserted Claims: At least independent claim 1 (Compl. ¶104).
  • Accused Features: The complaint accuses the method of using multiple PowerGLIDE OD tools in tandem. It points to a social media post from the Defendant showing two tools connected together for a "Tandem... Run" as evidence of this infringing method (Compl. ¶100, ¶103; Exhibit 11, p. 5).

U.S. Patent No. 10,633,920 - Selective activation of motor in a downhole assembly

Issued April 28, 2020.

  • Technology Synopsis: This patent describes the mechanical details of a selective activation system. It claims a rotor assembly that includes a "catch component" with a receiving end and an interior seat designed to retain a "blocking implement" (e.g., a ball). When no implement is present, fluid flows through a bypass; when the implement is seated, fluid is redirected to activate the motor (’920 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶118).
  • Accused Features: The complaint alleges the PowerGLIDE OD tool infringes by including a catch component for an "activation ball" that functions as the claimed "blocking implement" to selectively activate the tool's motor (Compl. ¶22, ¶122).

III. The Accused Instrumentality

Product Identification

The "Accused Products" are Defendant's downhole vibration tools, specifically the PowerGLIDE and PowerGLIDE On Demand ("OD") models (Compl. ¶21, ¶28).

Functionality and Market Context

  • The complaint alleges the PowerGLIDE tools are designed to produce axial oscillations to increase the rate of penetration and mitigate drilling challenges like "stick-slip" (Compl. ¶21). The functionality is allegedly achieved using a Moineau-type positive displacement motor and a valve assembly that creates pressure pulses (Compl. ¶25, ¶34). The complaint provides a social media image showing the PowerGLIDE OD tool and describing its on-demand activation (Compl. ¶29; Exhibit 11, p. 3).
  • The PowerGLIDE OD model is specifically alleged to be "selectively activatable" by dropping an "activation ball" from the surface, which allows customers to turn the tool on when needed downhole (Compl. ¶22, ¶81).
  • The complaint also alleges that Defendant's customers use multiple PowerGLIDE tools in tandem runs, providing a social media post as evidence (Compl. ¶100; Exhibit 11, p. 5). The image from that post shows two PowerGLIDE tools connected, with one labeled "ON DEMAND" (Compl. p. 35).

IV. Analysis of Infringement Allegations

'584 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a motor comprising a rotor The Accused Products include a Moineau-type positive displacement pulse motor with a rotor and stator. ¶34 col. 4:10-14
a flow head comprising a plurality of ports permitting fluid communication therethrough...the flow head being coupled to a rotor of the motor to be driven thereby The Accused Products allegedly use a valve assembly with a rotary valve plate (the flow head) that has multiple ports and is attached to and rotates with the motor's rotor. ¶35 col. 4:50-54
a flow restrictor in fluid communication with the flow head, the flow restrictor comprising a plurality of ports...the flow restrictor being stationary The Accused Products allegedly have a stationary valve plate (the flow restrictor) with multiple ports that is fixedly attached to the main tool body. ¶36 col. 4:54-58
rotation of the flow head...causes one or more of the plurality of ports of the flow head to enter into and out of alignment with one or more of the plurality of ports of the flow restrictor such that fluid pressure...is constrained to a cyclic, polyrhythmic pattern The complaint alleges that as the rotary valve plate rotates, it intermittently overlaps with the stationary plate, generating pulses of different amplitudes and wavelengths in each rotational cycle. ¶37 col. 3:45-50

Identified Points of Contention

  • Scope Questions: The central dispute may turn on the definition of "cyclic, polyrhythmic pattern." The complaint supports its allegation by citing a third-party patent (the "Cuddapah Patent") that describes the accused tool as generating "pulses of different amplitudes and different wavelengths in each rotational cycle" (Compl. ¶37). The question for the court will be whether this described functionality meets the legal definition of "polyrhythmic" as contemplated by the patent.
  • Technical Questions: What evidence demonstrates that the accused tool's pressure signature is "polyrhythmic" rather than simply multi-pulsed or irregular? The analysis will require a technical comparison between the pressure pattern generated by the interaction of the accused tool's specific valve port geometries and the pattern described and claimed in the patent.

'976 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a motor comprising an eccentrically-driven rotor The Accused Products are alleged to include a Moineau-type pulse motor where the rotor nutates (an eccentric motion) within the stator. ¶58 col. 2:5-9
a flow head comprising a plurality of ports...the flow head being coupled to a rotor...to be driven thereby in eccentric rotational motion The Accused Products allegedly have a rotary valve plate (the flow head) with multiple ports that is attached to and rotates with the rotor. ¶59 col. 2:10-14
a flow restrictor...comprising a plurality of ports...the flow restrictor being stationary The Accused Products allegedly have a stationary valve plate (the flow restrictor) with multiple ports. ¶60 col. 2:15-19
rotation of the flow head...causes the plurality of ports...to enter into and out of alignment...such that fluid flow...is varied in an irregular pattern, the irregular pattern comprising a pattern in which an orientation of the flow head at a defined position in a cycle of the rotor is different between consecutive cycles of the rotor The complaint alleges that the intermittent overlap of the valve ports generates pulses of different amplitudes and wavelengths in each rotational cycle, creating an irregular pattern. ¶61 col. 2:20-28

Identified Points of Contention

  • Scope Questions: The key term is "irregular pattern," which the claim itself defines with high specificity: "an orientation of the flow head at a defined position in a cycle of the rotor is different between consecutive cycles of the rotor." This is a narrow, functional definition. The question will be whether the accused tool's operation meets this precise requirement.
  • Technical Questions: Does the combination of the accused tool's motor type (Moineau), rotor/stator lobe ratio, and valve port geometry cause the flow head's orientation to actually differ between consecutive cycles at a given point in the cycle? This raises a highly technical evidentiary question about the precise kinematics of the accused device.

V. Key Claim Terms for Construction

"cyclic, polyrhythmic pattern" (’584 Patent, Claim 1)

  • Context and Importance: This term is the central feature distinguishing the invention from prior art that allegedly produced simple rhythmic pulses. The infringement case for the '584 patent hinges on whether the pressure signature of the Accused Products falls within the scope of this term. Practitioners may focus on this term because the complaint's own evidence describes the accused functionality as generating pulses of "different amplitudes and different wavelengths" (Compl. ¶37), which may or may not be synonymous with "polyrhythmic."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the pattern as comprising "a plurality of fluid pressure peaks of varying amplitude within a single revolution" and "a plurality of time intervals of different durations between adjacent fluid pressure peaks" (’584 Patent, col. 2:34-40). This language could support a broad definition covering any pattern that is not strictly monotonous.
    • Evidence for a Narrower Interpretation: The term "polyrhythmic" itself has a specific meaning (multiple rhythms played simultaneously). The detailed description links the pattern to the interaction of multi-port valves and eccentric motor motion (’584 Patent, col. 3:45-50). A defendant may argue that the term requires more than just varying amplitudes, but a specific type of complex, repeating pattern generated by these structures.

"irregular pattern" defined as "a pattern in which an orientation of the flow head at a defined position in a cycle of the rotor is different between consecutive cycles of the rotor" (’976 Patent, Claim 1)

  • Context and Importance: Unlike "polyrhythmic," this term is explicitly defined within the claim itself. The dispute will not be about the plain meaning of "irregular," but whether the accused device meets this precise functional definition. The infringement case for the '976 patent depends entirely on proving this specific kinematic behavior.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A plaintiff may argue that any Moineau-type motor with an appropriate rotor/stator lobe ratio (e.g., 7/8) inherently produces this effect, as suggested by the specification: "a quasi-irregular effect is achieved, whereby consecutive cycles of the rotor... can result in a different orientation of the flow head" (’976 Patent, col. 6:46-51).
    • Evidence for a Narrower Interpretation: A defendant may argue that this is a very specific mechanical behavior that requires concrete proof. The patent's use of "quasi-irregular" and "can result" in the specification suggests the effect may not be inherent or guaranteed in all configurations, potentially narrowing the claim's reach to only those devices proven to exhibit this precise non-repeating cyclical orientation.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement by asserting that Defendant provides instructions, advertising, and marketing materials (e.g., its website and spec sheets) that direct customers to use the Accused Products in an infringing manner (Compl. ¶39, ¶63, ¶84, ¶105, ¶125). Contributory infringement is alleged on the basis that the Accused Products have special features specifically designed for infringement and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶40, ¶64, ¶85, ¶106, ¶126).

Willful Infringement

The complaint alleges willfulness based on both pre- and post-suit knowledge. It alleges pre-suit knowledge based on: (1) a May 2019 Examiner rejection of claims in a patent application owned by Defendant's founder, which cited the application leading to the '584 Patent (Compl. ¶42); (2) an October 2022 letter from Plaintiff to Defendant's managing partners notifying them of the asserted patents (Compl. ¶43, ¶66, ¶87); and (3) an investor in Defendant, Innovex, having previously acquired a company (Rubicon) that Plaintiff sued for infringing the '584 patent in a case that settled (Compl. ¶44-45).

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

  • A core issue will be one of definitional scope and proof: Can the pressure pattern generated by the accused tools, described as having "pulses of different amplitudes and different wavelengths," be proven to meet the specific claim definitions of a "cyclic, polyrhythmic pattern" ('584 patent) or an "irregular pattern" where orientation differs between consecutive cycles ('976 patent)? This will likely require expert testimony and detailed technical analysis of the accused devices' operation.
  • A second central question will be one of knowledge and intent: The complaint presents multiple factual allegations to support willful infringement, including an office action citation and a prior lawsuit involving a related corporate entity. The key question for the court will be whether these events establish that Defendant acted with the requisite knowledge and objective recklessness to support a finding of willfulness.
  • Finally, a key issue for the method and activatable tool patents will be evidence of use: Does the marketing material and product literature for the PowerGLIDE OD, such as social media posts showing "tandem" use and discussing an "activation ball," provide sufficient evidence that Defendant's customers necessarily perform the patented methods and use the patented activation features as claimed?