DCT

4:24-cv-00839

US Well Services LLC v. Liberty Energy Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:24-cv-00839, S.D. Tex., 11/14/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of infringement in the Southern District of Texas and maintain regular and established places of business in the district, including physical locations in Houston and Magnolia.
  • Core Dispute: Plaintiff alleges that Defendant’s digiFrac electric hydraulic fracturing systems infringe five patents related to multi-plunger pump systems, power distribution, and electric fracturing fleet control, and further asserts claims for trade secret misappropriation and breach of contract stemming from a prior business relationship.
  • Technical Context: The technology domain is electric-powered hydraulic fracturing ("E-Frac"), a method for oil and gas well stimulation that aims to increase efficiency and reduce emissions compared to traditional diesel-powered fracturing fleets.
  • Key Procedural History: The complaint alleges that Plaintiff USWS disclosed confidential information regarding its E-Frac technology to Defendant ST9 under a Nondisclosure Agreement (NDA). It further alleges that after Defendant Liberty acquired ST9, Defendants used this confidential information to develop the accused digiFrac product. The complaint also notes that Plaintiff's patents were cited during the prosecution of patents owned by Defendants, which may be used to suggest pre-suit knowledge of the patents-in-suit.

Case Timeline

Date Event
2012-01-01 Plaintiff U.S. Well Services (USWS) was founded
2014-07-01 USWS successfully deployed "Clean Fleet," an all-electric hydraulic fracturing system
2015-10-15 Earliest Priority Date for ’992 Patent
2017-01-01 Defendant ST9 was founded
2017-05-25 ST9 and USWS entered into a Mutual Confidentiality and Nondisclosure Agreement (NDA)
2017-08-01 USWS and ST9 began discussions regarding "Project FOaLT" next-generation E-Frac fleet
2017-10-25 Earliest Priority Date for ’435 Patent
2017-12-05 Earliest Priority Date for ’533 Patent and ’258 Patent
2018-01-01 Liberty acquired ST9
2018-10-09 Earliest Priority Date for ’878 Patent
2020-03-13 Counsel for USWS sent a letter to Liberty alleging breach of the NDA
2020-03-24 ’258 Patent Issued
2020-05-19 ’435 Patent Issued
2021-01-01 Liberty and ST9 launched the accused digiFrac product
2021-08-17 ’992 Patent Issued
2021-12-28 ’878 Patent Issued
2022-01-01 USWS was purchased by ProFrac's parent company
2024-04-16 ’533 Patent Issued
2024-11-14 Plaintiffs’ Second Amended Complaint Filed

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

U.S. Patent No. 11,959,533 - Multi-Plunger Pumps and Associated Drive Systems (Issued Apr. 16, 2024)

The Invention Explained

  • Problem Addressed: The patent describes a problem with conventional diesel-powered hydraulic fracturing pumps, which use transmissions with a limited number of gears. When compensating for an offline pump, operators often must up-shift the remaining pumps, causing them to operate above their "critical speed." This heightened speed can lead to the formation of vacuum bubbles in the fluid, which then implode, causing cavitation damage to the pump's fluid end and reducing the equipment's operational life (U.S. Patent No. 10,598,258, col. 1:36-52).
  • The Patented Solution: The invention replaces the single large diesel engine and geared transmission with a plurality of smaller electric or hydraulic motors coupled to a planetary gear train. This arrangement allows for finer and more continuous control over pump speed, enabling operation at or below the critical plunger speed without sacrificing the overall fluid pumping rate. The system is designed to maintain efficiency and avoid cavitation damage, even when pump rates are adjusted (U.S. Patent No. 11,959,533, Abstract; ’533 Patent, Fig. 1).
  • Technical Importance: This approach provided a method to electrify high-pressure fracturing pumps in a way that directly addressed the mechanical limitations and reliability issues associated with conventional diesel-transmission powertrains (U.S. Patent No. 10,598,258, col. 2:19-24).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶52).
  • Claim 1 of the ’533 Patent includes these essential elements:
    • A multi-plunger hydraulic fracturing pump with a pump crankshaft.
    • A plurality of motors to power the pump.
    • A planetary gear train to translate power from the motors to the crankshaft.
    • A final drive gear connected to the crankshaft by a plurality of arms.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,598,258 - Multi-Plunger Pumps and Associated Drive Systems (Issued Mar. 24, 2020)

The Invention Explained

  • Problem Addressed: The patent addresses the inefficiency and mechanical damage (cavitation) that occurs when conventional diesel-driven fracturing pumps are operated in higher gears, which pushes plunger speeds beyond a critical threshold. This problem is exacerbated in field operations where maintaining a consistent pump rate is necessary, often forcing operators to run equipment in damaging ranges (’258 Patent, col. 1:36-52).
  • The Patented Solution: The invention proposes a drive system using multiple motors (electric or hydraulic) that power a multi-plunger pump through a planetary gear train. The patent teaches that the gear ratio of the train and the speed of the motors can be specifically selected to limit the pump's maximum speed, thereby keeping it at or below the critical plunger speed. This configuration allows for efficient pumping power while avoiding the conditions that cause cavitation (’258 Patent, col. 2:28-44, Fig. 1).
  • Technical Importance: This design allows for the benefits of electric power—such as finer speed control via variable frequency drives—to be applied directly to solving a known mechanical failure mode in high-pressure frac pumps (’258 Patent, col. 2:19-24).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶56).
  • Claim 1 of the ’258 Patent includes these essential elements:
    • A multi-plunger hydraulic fracturing pump.
    • A plurality of motors to simultaneously power the pump.
    • A planetary gear train with a plurality of input pinion gears in rotational contact with the motors.
    • A gear ratio and motor speed that are selected to limit the maximum pump speed.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 11,091,992 - System For Centralized Monitoring And Control Of Electric Powered Hydraulic Fracturing Fleet (Issued Aug. 17, 2021)

  • Technology Synopsis: The patent describes a system for the centralized control and monitoring of an entire E-Frac fleet. This includes a centralized control unit coupled to various pieces of electric-powered equipment (pumps, generators, blenders, etc.) to monitor and control operating characteristics like pressure, temperature, and fluid rates from a single point (’992 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶60).
  • Accused Features: The complaint's allegations suggest that the centralized control and monitoring capabilities of the digiFrac system, including its "Telematics Suite," infringe the ’992 Patent (Compl. ¶41).

U.S. Patent No. 10,655,435 - Smart Fracturing System And Method (Issued May 19, 2020)

  • Technology Synopsis: The patent discloses a control system for a hydraulic fracturing operation that uses a plurality of sensing devices to measure parameters from the pumps and distribution system. A processing device analyzes this data to generate automated control instructions for pumps, blenders, or other components, creating a "smart" or automated fracturing process (’435 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶64).
  • Accused Features: The "intelligent control via Telematics Suite for ultra-fine control, remote capability, and AI integration" alleged to be part of the digiFrac system is accused of infringing the ’435 Patent (Compl. ¶41).

U.S. Patent No. 11,208,878 - Modular Switchgear System And Power Distribution For Electric Oilfield Equipment (Issued Dec. 28, 2021)

  • Technology Synopsis: The invention relates to a modular, often trailer-mounted system for power distribution in an electric oilfield environment. It describes an integrated unit containing an electric pump, motor, a variable frequency drive (VFD), a transformer, and a cooling system arranged in distinct areas on a support structure, designed to simplify power distribution and connectivity at a wellsite (’878 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 (Compl. ¶68).
  • Accused Features: The integrated, trailer-mounted design of the digiFrac system, which includes pumps, motors, VFDs, and other power equipment on a single rig, is accused of infringing the ’878 Patent (Compl. ¶¶40-41; Visual at Compl. p. 12).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the Defendant's "digiFrac" product line, described as an electric hydraulic fracturing system (Compl. ¶51).

Functionality and Market Context

The complaint alleges that digiFrac is marketed as "the industry's first purpose-built fully integrated electric frac pump" (Compl. ¶40). Its key technical features, as described in the complaint, include the use of "ten small electric motors to power each pump," "[b]espoke gear reducer transmissions," "[d]ual VFDs for rectifying and modulating power to the motors," and an "[i]ntelligent control via Telematics Suite for ultra-fine control, remote capability, and AI integration" (Compl. ¶¶40-41). A marketing image in the complaint describes the system as "fully electric" and notes its pump "utilizes ten smaller motors working in parallel to deliver the same total horsepower as a single large motor" (Compl. p. 11). Another diagram illustrates the fully-integrated, trailer-mounted nature of the rig (Compl. p. 12).

IV. Analysis of Infringement Allegations

U.S. Patent No. 11,959,533 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a multi-plunger hydraulic fracturing pump configured to pump fluid to a wellbore ... the multi-plunger hydraulic fracturing pump comprising a pump crankshaft; The digiFrac system is an electric hydraulic fracturing pump. ¶40 col. 4:51-60
a plurality of motors positioned to power the multi-plunger hydraulic fracturing pump; The digiFrac system utilizes "ten small electric motors to power each pump." A visual in the complaint confirms the pump "utilizes ten smaller motors working in parallel." ¶40, p. 11 col. 7:7-12
a planetary gear train positioned to translate power from the plurality of motors to the pump crankshaft of the multi-plunger hydraulic fracturing pump, the planetary gear train comprising: a plurality of input pinion gears connected to the plurality of motors; and The digiFrac system contains "[b]espoke gear reducer transmissions." ¶41 col. 7:7-20
a final drive gear connected to the pump crankshaft of the multi-plunger hydraulic fracturing pump by a plurality of arms extending from the final drive gear. The complaint's allegation of infringement implies that the "bespoke gear reducer transmissions" perform this function. ¶41, ¶52 col. 7:15-20

U.S. Patent No. 10,598,258 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a multi-plunger hydraulic fracturing pump fluidly connected to a well... The digiFrac system is an electric hydraulic fracturing pump used in well services. ¶40 col. 2:45-53
a plurality of motors positioned to simultaneously power the multi-plunger pump; and The digiFrac system utilizes "ten small electric motors to power each pump," which are described as "working in parallel." ¶40, p. 11 col. 2:54-58
a planetary gear train having a plurality of input pinion gears in rotational contact with each of the plurality of motors, The digiFrac system contains "[b]espoke gear reducer transmissions for maximum efficiency." ¶41, p. 12 col. 7:7-15
wherein a gear ratio of the planetary gear train and a speed at which the plurality of motors operates are selected so as to limit a maximum pump speed associated with the multi-plunger pump. The infringement allegation is predicated on the digiFrac system's use of multiple motors and VFDs for speed control, which the patent teaches is a method to avoid exceeding critical plunger speed. ¶41, ¶56 col. 2:58-62

Identified Points of Contention

  • Scope Questions: A primary question may be whether the term "planetary gear train", as described and claimed in the patents, reads on the accused product's "[b]espoke gear reducer transmissions" (Compl. ¶41). The resolution may depend on whether the term is construed to require the specific sun, planet, and ring gear configuration shown in the patents or if it can encompass other forms of gear reduction systems driven by multiple inputs.
  • Technical Questions: For the ’258 Patent, a key factual question may be what evidence the complaint provides that the gear ratio and motor speed of the digiFrac system are specifically "selected so as to limit a maximum pump speed" in relation to the "critical plunger speed" discussed in the patent. The dispute may center on whether the accused system's general speed control functionality meets this purpose-driven limitation, or if proof of a more specific design choice tied to avoiding cavitation is required.

V. Key Claim Terms for Construction

The Term: "planetary gear train" (from Claim 1 of ’533 and ’258 Patents)

Context and Importance

This term is the central mechanical component that enables the inventive concept of combining power from multiple motors. The infringement analysis for the pump-and-drive-system patents will likely hinge on whether the accused "bespoke gear reducer transmissions" (Compl. ¶41) fall within the scope of this term.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification describes the function of the gear train as being "to translate power from the plurality of motors into a desired pump rate of the multi-plunger pump" (’258 Patent, col. 4:60-63). This functional description could support an interpretation that covers various multi-input gear reduction systems.
  • Evidence for a Narrower Interpretation: The detailed description and Figure 1 explicitly illustrate a "planetary gear train 100" with specific components, including "multiple input pinion gears 135," a "main planetary gear 125," a "sun gear 115," and "three planetary gears 120" (’258 Patent, col. 7:5-20). A defendant may argue that the term should be limited to this disclosed embodiment or a structurally similar arrangement.

The Term: "selected so as to limit a maximum pump speed" (from Claim 1 of ’258 Patent)

Context and Importance

This limitation defines the purpose and result of the gear ratio and motor speed combination. Practitioners may focus on this term because it appears to require not just a structure, but also an intent or purpose in its design related to the "critical speed" problem.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The background section extensively discusses the problem of exceeding the "critical speed" of plunger pumps (’258 Patent, col. 1:43-52). Plaintiff may argue that any gear and motor combination in an E-Frac pump that is designed for variable speed control is inherently "selected" to operate within safe speed limits, thus fulfilling the purpose of the invention.
  • Evidence for a Narrower Interpretation: A defendant might argue that this limitation requires proof that the specific gear ratio was chosen based on calculations related to a "critical plunger speed," as detailed in the patent's background, rather than for general-purpose speed control or torque management. The specification states the gear ratios "may be chosen to limit the maximum pump speed, so as to not exceed the plunger critical speed" (’258 Patent, col. 6:1-3), suggesting a specific design choice.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induced and contributed to infringement by making, using, selling, and offering for sale the digiFrac system with the intent that others would use it in an infringing manner (Compl. ¶¶50, 54, 58, 62, 66).
  • Willful Infringement: The complaint alleges Defendants' infringement was willful, malicious, and carried out with conscious disregard for Plaintiffs' rights (Compl. ¶82). The basis for willfulness appears to be alleged pre-suit knowledge of Plaintiffs' technology and patent portfolio, stemming from a prior business relationship between USWS and ST9 and alleged awareness of Plaintiffs' patents from their citation during the prosecution of Defendants' own patents (Compl. ¶22, ¶¶28-36).

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

  • A core issue will be one of definitional scope: can the term "planetary gear train," which is illustrated in the patents with a specific sun-and-planet gear arrangement, be construed to cover the accused product’s more generally described "bespoke gear reducer transmissions"?
  • A key evidentiary question will be one of functional purpose: does the allegation that the digiFrac system uses multiple electric motors and VFDs for speed control suffice to prove that its gear ratio was "selected so as to limit a maximum pump speed" with respect to the "critical plunger speed" problem, or will Plaintiffs need to provide more direct evidence of the Defendants' specific design intent?
  • The case also presents a complex interplay between patent and trade secret law, raising the question of how the alleged misappropriation of confidential information under an NDA relates to the subsequent alleged infringement of patents covering similar technology, which could significantly impact both liability and damages assessments.