4:24-cv-02177
Tracer Construction Co v. Faseler
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tracer Construction Company (Delaware/Texas) and nVent Thermal LLC (Delaware/California)
- Defendant: Brad Faseler (Texas) and Terrapin Industrial LLC (Texas)
- Plaintiff’s Counsel: Shook, Hardy & Bacon L.L.P.
- Case Identification: 4:24-cv-02177, S.D. Tex., 06/07/2024
- Venue Allegations: Venue is alleged to be proper based on Defendants having a regular and established place of business within the district, and because the underlying dispute over patent ownership and contractual obligations arose from Defendant Faseler's employment and actions in Houston, within the district.
- Core Dispute: Plaintiffs, the former employer of Defendant Faseler, allege that they own U.S. Patent No. 10,712,181 under an employment agreement and that Defendants’ ThermaGuard Enclosure product infringes this patent.
- Technical Context: The technology relates to protective enclosures for field instruments, which are sensors and monitors used in harsh industrial environments like petrochemical plants and oil and gas facilities.
- Key Procedural History: The complaint's central procedural event is a 2001 Employment Agreement signed by Defendant Faseler, which contained a clause allegedly assigning all inventions conceived during his employment to Plaintiff Tracer. Plaintiffs allege that Faseler conceived of the invention, filed for the patent-in-suit, and assigned it to his own company, Terrapin Industrial, in breach of this agreement. The ownership of the patent is therefore a threshold issue for the infringement claim.
Case Timeline
| Date | Event |
|---|---|
| 2001-10-01 | Defendant Faseler executes Employment Agreement with Plaintiff Tracer. |
| 2017-04-04 | Earliest Priority Date: '680 provisional application filed. |
| 2018-03-13 | '128 non-provisional application (leading to '181 Patent) filed. |
| 2020-07-14 | U.S. Patent No. 10,712,181 issues. |
| 2021-10-21 | Defendant Terrapin Industrial LLC is created. |
| 2023-XX-XX | Defendant Faseler voluntarily resigns from Tracer. |
| 2024-06-07 | Complaint filed. |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,712,181 ("the '181 Patent"), "Instrument Enclosure," issued July 14, 2020. (Compl. ¶40).
The Invention Explained
- Problem Addressed: The patent describes challenges with protecting "field instruments" (e.g., pressure, flow, or temperature sensors) in industrial settings. Conventional rigid enclosures require the instrument to be installed inside the box before the entire assembly is mounted, which is cumbersome. Alternatively, soft removable covers are often custom-fit and difficult to reinstall correctly after maintenance, leaving the instrument exposed to the elements. ('181 Patent, col. 1:21-54).
- The Patented Solution: The invention is a multi-part rigid enclosure that can be assembled around an instrument that is already installed on its standpipe. The solution features a bottom section made of two separable parts that clamp around the standpipe, and a top section that hinges onto the bottom section to form a complete, protective housing. ('181 Patent, Abstract; col. 2:50-65). This is illustrated in Figure 1 of the patent, which shows a "left half" (104-1) and "right half" (104-2) of the bottom section.
- Technical Importance: This design purports to improve productivity for contractors by allowing them to enclose an instrument in the field without taking it offline or requiring pre-assembly in a workshop. ('181 Patent, col. 2:1-11).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶59).
- Independent Claim 1 requires:
- A top section;
- A bottom section comprising a first part and a second part;
- One or more fasteners to fasten the first part to the second part;
- One or more hinges to hinge the top section to the bottom section for rotation between open and closed positions;
- The top and bottom sections defining an enclosed space suitable for receiving a field instrument;
- The bottom section being configured to be fastened to a standpipe or a bracket fastened to the standpipe;
- The first part of the bottom section defining a first notch, and the second part defining a second notch; and
- The two notches being configured to define an opening in the bottom section.
- The complaint does not explicitly reserve the right to assert other claims, though this is common practice in subsequent filings.
III. The Accused Instrumentality
Product Identification
- The accused product is the "ThermaGuard Enclosure." (Compl. ¶53).
Functionality and Market Context
- The complaint alleges the ThermaGuard Enclosure is a "modular" system designed to "simplify the installations of rigid enclosures." (Compl. ¶¶ 53, 59-60). Its key feature is the purported ability to be "installed as a pre-assembled enclosure or piecemeal around an existing instrument without taking the instrument offline." (Compl. ¶57). An exploded-view diagram of the ThermaGuard design is provided in the complaint, showing its constituent parts including top and bottom housing shells, insulation, and brackets. (Compl. ¶58, Fig. 1). The complaint alleges the product directly competes with Plaintiffs' own RAYCHEM® and TRACER® product lines and is marketed by Defendants as a "patented ThermaGuard modular design." (Compl. ¶¶ 54-55).
IV. Analysis of Infringement Allegations
Claim Chart Summary
The complaint provides a narrative infringement theory that directly maps the elements of Claim 1 of the '181 Patent to the accused ThermaGuard Enclosure. (Compl. ¶59). The allegations are supported by images from the Defendant’s website. (Compl. ¶¶ 58, 59). One such image depicts a schematic of the accused product in an assembled state. (Compl. ¶58, Fig. 2).
’181 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a top section; a bottom section comprising a first part and a second part; one or more fasteners to fasten the first part to the second part | The ThermaGuard Enclosure is alleged to have a top section and a bottom section composed of two parts fastened together. | ¶59 | col. 5:44-51 |
| one or more hinges configured to hinge the top section to the bottom section... to rotate between a close positioned and one or more open positions | The product is alleged to include hinges that connect the top and bottom sections, allowing the top to open and close. | ¶59 | col. 5:15-17 |
| the top section and the bottom section define an enclosed space in the closed position; the enclosed space is suitable for receiving a field instrument | When closed, the ThermaGuard Enclosure allegedly forms an enclosed space to house an industrial instrument. | ¶59 | col. 5:5-9 |
| the bottom section is configured to be fastened to a standpipe or to a bracket fastened to the standpipe | The ThermaGuard Enclosure is allegedly designed to be fastened to a standpipe. | ¶59 | col. 5:55-59 |
| the first part of the bottom section defines a first notch; the second part of the bottom section defines a second notch; and the first notch and the second notch are configured to define an opening in the bottom section | The two parts of the accused product's bottom section allegedly have notches that combine to form an opening for a standpipe. | ¶59 | col. 6:64-67 |
Identified Points of Contention
- Scope Questions: The primary dispute is over patent ownership. Should the case proceed to an infringement analysis, a potential question of claim scope could arise regarding the term "notch." Defendants may argue that the opening in their product for a standpipe is not formed by a "notch" on each of two separate parts, as contemplated by the patent.
- Technical Questions: A key technical question will be whether the construction of the ThermaGuard Enclosure's bottom section meets the "first part and a second part" limitation. The complaint's visual evidence, an exploded diagram, shows a "Bottom Left" and "Bottom Right" housing shell, which appears to support the allegation of a two-part construction. (Compl. ¶58, Fig. 1). The court would need to determine if these components function as the claimed "first part" and "second part" that are fastened together.
V. Key Claim Terms for Construction
The Term: "a bottom section comprising a first part and a second part"
This term is fundamental to the patent's core concept of an enclosure that can be assembled around an existing instrument. The infringement analysis depends on whether the accused product's structure maps onto this two-part bottom section. Practitioners may focus on this term because the defense could argue that the ThermaGuard Enclosure's bottom is assembled from more than two primary components or that its pieces are not "parts" in the manner claimed.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification refers to the bottom section as including a "left half 104-1" and a "right half 104-2," suggesting the term broadly covers any two components that combine to form the bottom structure. ('181 Patent, col. 5:44-46).
- Evidence for a Narrower Interpretation: The specific embodiment illustrated in Figure 1 of the patent shows two distinct, L-shaped halves that are mirror images. A defendant may argue that the term should be limited to this specific configuration, potentially excluding designs where the bottom is split differently. ('181 Patent, Fig. 1).
VI. Other Allegations
Indirect Infringement
The complaint does not contain a formal count for indirect or induced infringement. However, it alleges that Defendants market the ThermaGuard Enclosure for its specific installation method (Compl. ¶57), which could provide a factual basis for an inducement claim in a future pleading.
Willful Infringement
The complaint does not use the term "willful infringement." However, it alleges facts that may support such a claim. Specifically, it alleges that Defendant Faseler is the named inventor on the '181 Patent and the Founder/CEO of Defendant Terrapin Industrial. (Compl. ¶1; '181 Patent, front page). Further, it alleges Defendants market the accused product as a "patented... modular design." (Compl. ¶54). These allegations suggest Defendants have had knowledge of the '181 patent since its issuance.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to hinge on two sequential questions, one legal and one technical:
A central threshold question will be one of ownership: does the "hereby assigns" clause in Defendant Faseler's 2001 Employment Agreement operate as a present assignment of future inventions, automatically vesting title to the '181 patent in the Plaintiffs and rendering the inventor's subsequent assignment to his own company void?
If Plaintiffs establish ownership, a key evidentiary question will be one of structural correspondence: does the accused ThermaGuard Enclosure's multi-piece construction, particularly its bottom housing shells and the opening for a standpipe, contain every element of Claim 1, including the "first part and a second part" and corresponding "notch" limitations?