Maritime Solutions Inc v. Industrie De Nora Spa

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Maritime Solutions, Inc. (Delaware)
  • Defendant: Industrie De Nora S.p.A. (Italy)
  • Plaintiff’s Counsel: DINOVO PRICE LLP
• Case Identification: 1:24-cv-00085, W.D. Tex., 01/24/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant's U.S. subsidiary, De Nora Marine Technologies, LLC, maintains a regular and established place of business in Texas, employs staff, and sells the accused products to customers in the state, with the infringement claims allegedly arising from this activity.
• Core Dispute: Plaintiff alleges that Defendant’s Hyde Guardian Gold Ballast Water Treatment System infringes a patent related to multi-stage water treatment systems that use filtration, biocidal treatment, and sensor-based flow control.
• Technical Context: Ballast water treatment systems are critical for global shipping, required by international and national regulations to prevent the transfer of invasive aquatic species between different marine environments.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant or its affiliates and predecessors with notice of the patent-in-suit on four separate occasions, beginning with a letter dated June 27, 2016. These notices form the primary basis for the willfulness allegations.

Case Timeline

Date	Event
2007-02-09	’795 Patent Priority Date
2011-09-27	’795 Patent Issue Date
2016-06-27	Plaintiff sent first notice letter regarding the ’795 Patent
2018-05-14	Plaintiff sent second notice letter regarding the ’795 Patent
2020-11-19	Plaintiff sent third notice letter regarding the ’795 Patent
2021-07-07	Plaintiff sent fourth notice letter regarding the ’795 Patent
2024-01-24	Complaint Filing Date

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

U.S. Patent No. 8,025,795 - “Ballast Water Treatment System”

The Invention Explained

• Problem Addressed: The patent’s background section identifies the introduction of invasive marine species via ship’s ballast water as one of the "greatest threats to the world's ocean, coastal and inland waters" (ʼ795 Patent, col. 1:19-22). Existing management practices were insufficient to meet increasingly stringent international and national regulations for discharging treated ballast water (ʼ795 Patent, col. 2:3-18).
• The Patented Solution: The invention is a multi-stage system that first uses a "back washable filter" to remove sediment and larger organisms, then directs the initially processed water to a "biocidal means," such as an ultraviolet (UV) light unit, to kill or disable remaining organisms (ʼ795 Patent, Abstract). A key aspect is the integration of a sensor that monitors water quality (e.g., light transmission) and control means that uses this data to "regulat[e] the flow rate of raw water," ensuring effective treatment even in varying water conditions (ʼ795 Patent, col. 8:50-67).
• Technical Importance: This automated, feedback-controlled approach was designed to provide a more robust and reliable treatment solution capable of consistently meeting strict discharge standards under the dynamic environmental conditions a vessel encounters, a challenge for systems with static operating parameters (ʼ795 Patent, col. 2:40-44).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶44).
• The essential elements of independent claim 1 include:
  • A "pathway means" defining a water pathway with a main inlet, a main outlet to a ballast tank, and a discharge.
  • A "back washable filter" in the pathway that screens sediment to produce initially processed water, featuring three distinct outlets with specific functions and a negative limitation that water from the second and third outlets does not enter the ballast tank.
  • A "biocidal means" (e.g., a UV unit) connected between the filter's first outlet and the ballast tank's main outlet.
  • The pathway being adapted for connection to a vessel’s ballast pump in-line with the filter and biocidal means.
  • A "sensor" for sensing the rate of light transmission through the water.
  • A "control means" connected to the sensor for regulating the raw water flow rate in response to the sensor’s readings.
• The complaint does not explicitly reserve the right to assert dependent claims but references "one or more claims" generally (Compl. ¶44).

III. The Accused Instrumentality

Product Identification

The "Hyde Guardian Gold Ballast Water Treatment System" ("Guardian System"), including models HG6OU through HG1000U (collectively, the "Accused Products") (Compl. ¶18).

Functionality and Market Context

• The complaint alleges the Accused Products are ballast water management systems that incorporate a "back washable filter with a prescreen water chamber," a "biocidal (UV or other) treatment portion," and a "control system with a sensor to monitor light transmission" (Compl. ¶¶19-21).
• This control system is alleged to regulate not only the biocidal dose but also the system's flow rate based on water quality, allowing operations to continue at a reduced flowrate in turbid water to prevent system overload and ensure treatment (Compl. ¶21). The complaint includes technical diagrams that provide front and side views of the HG300U system (Compl. ¶35, p. 8).
• The complaint notes that the Guardian System is U.S. Coast Guard approved, suggesting its position as a commercially significant product in the regulated maritime industry (Compl. ¶28).

IV. Analysis of Infringement Allegations

’795 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
pathway means defining a water pathway having a main inlet for connection to a body of navigable raw water for the vessel... the pathway also having a main outlet for connection to the ballast tank and a discharge for discharging water back to the body of navigable raw water...	The Accused Products have a water pathway or pipe with a main inlet for connection to the sea, a main outlet connected to the ballast tank, and a discharge for returning water to the sea (Compl. ¶27, p. 6).	¶22	col. 4:58-67
a back washable filter in the pathway... screening sediment from the raw water to produce initially processed water... the filter having a first outlet for supplying initially processed water..., a second outlet for supplying back washing water..., and a third outlet... for supplying pre-screened water... wherein said pre-screened water... and back washing water... do not enter the ballast tank	The Accused Products have a filter that screens sediment. This filter is alleged to have three outlets: a first to supply processed water, a second for backwashing water to the discharge, and a third for supplying pre-screened water to the discharge.	¶23	col. 6:38-49
biocidal means connected between the first outlet of the filter and the main outlet to the ballast tank, for receiving initially processed water from the filter and for disabling or killing the marine organisms...	The Accused Products have a biocidal treatment portion (e.g., UV light) connected between the filter's first outlet and the main outlet to the ballast tank, which receives processed water to kill organisms.	¶24	col. 6:60-67
the pathway being adapted for connection to the ballast pump of the vessel, so that the ballast pump is in line with the filter and biocidal means...	The Accused Products have a ballast pump connected in line with the filter and biocidal treatment portion for pumping water through the system. A product brochure image shows the integrated "Compact Filter" and "UV Treatment Chamber" (Compl. ¶27, p. 6).	¶24	col. 6:67-7:3
a sensor along the pathway for at least sensing the rate of light transmission through the water	The Accused Products have a control system with a sensor to monitor light transmission through the ballast water.	¶21	col. 8:3-6
and control means connected to the sensor for regulating the flow rate of raw water for the vessel in response to the sensing by said sensor.	The control system allegedly regulates system flow rate based on water quality monitored by the light sensor, reducing flow in turbid water to "assure treatment."	¶21	col. 8:50-67

• Identified Points of Contention:
  • Scope Questions: The infringement analysis may focus on the detailed "back washable filter" limitation. A key question is whether the accused filter's three-outlet configuration and its associated plumbing meet the specific structural and functional requirements of the claim, including the negative limitation that water from the second and third outlets "do not enter the ballast tank."
  • Technical Questions: Claim 1 requires a causal link where the "control means" regulates "flow rate" in response to the "sensor". A central evidentiary question will be whether the Accused Product's control system performs this specific feedback loop. What evidence does the complaint provide that the accused product’s regulation of "system flowrate" is directly responsive to the "light sensor," as required by the claim, rather than being triggered by other parameters or operating independently?

V. Key Claim Terms for Construction

• The Term: "control means connected to the sensor for regulating the flow rate of raw water for the vessel in response to the sensing by said sensor"

• Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112(f) that covers the "smart" or adaptive aspect of the invention. The scope of this term, defined by the corresponding structure in the specification, will be critical to the infringement analysis. Practitioners may focus on this term because its construction will determine whether the accused system's control logic performs the same function in the same way as the patented invention.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue the corresponding structure is the overall control architecture, including the "ABB Control Panel," its associated "PLC," and the general control sequence described, which paces flow based on UV dosage (ʼ795 Patent, col. 8:50-67).
  • Evidence for a Narrower Interpretation: A party could argue the structure is limited to the specific algorithm disclosed: "If UV transmittance changes so does the Dosage. IF UV Dosage transmittance gets to Low then to the ABB PLC decrease the flow" (ʼ795 Patent, col. 8:60-63). An argument could be made that any control system that does not use this precise logic falls outside the claim's scope.

• The Term: "a back washable filter... having a first outlet..., a second outlet..., and a third outlet... wherein said pre-screened water from said third outlet and back washing water from said second outlet do not enter the ballast tank"

• Context and Importance: This limitation defines the structure and function of the filter with significant particularity, including a negative limitation. Infringement requires the accused filter to meet every aspect of this definition. The complexity and specificity of this element suggest it will be a focal point of claim construction and non-infringement arguments.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the outlets in the context of the overall system but does not provide explicit definitions for the term "outlet" itself (ʼ795 Patent, col. 6:42-49). A party may argue that any filter with three physically distinct paths for water egress meets the structural aspect of the claim.
  • Evidence for a Narrower Interpretation: A party may contend that the claim must be read in light of the preferred embodiment shown in Figure 2. This figure depicts the second outlet (90) and third outlet (92, via the pre-screen purge line) routing water exclusively to an overboard discharge (68, 74), not to the ballast tanks (40). This could support a narrower construction requiring a similar, completely segregated discharge path for backwash and pre-screened water.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement (Compl. ¶¶50-51). The inducement theory may rely on evidence that Defendant's published materials, such as the "Brochure" and "Data Sheet," instruct end-users on how to operate the Accused Products in an infringing manner (Compl. ¶¶25, 32). The contributory infringement allegation is based on the assertion that the Accused Products are a material part of the invention, are especially made or adapted for use in an infringing system, and are not staple articles of commerce (Compl. ¶51).
• Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge of the ’795 Patent. The complaint specifically pleads that Defendant and its predecessors or affiliates received four separate notice letters between June 2016 and July 2021, and nonetheless continued to engage in infringing conduct (Compl. ¶¶53-58).

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

This case appears to present two primary areas of dispute that will be central to its resolution.

• A core issue will be one of structural and functional correspondence: Does the accused "Guardian System" filter, with its alleged three outlets and associated plumbing, meet the precise positive and negative limitations of the "back washable filter" element as defined in Claim 1 of the ’795 Patent?
• A key evidentiary question will concern the means-plus-function control system: What specific algorithm and hardware described in the ’795 patent specification constitute the "corresponding structure" for the claimed function of regulating flow rate in response to a sensor, and does the accused system’s control logic operate in the same way to achieve an identical result?