DCT
6:21-cv-00104
Repeat Precision LLC v. DynaEnergetics Europe GmbH
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Repeat Precision, LLC (Texas)
- Defendant: DynaEnergetics Europe GmbH (Germany) and DynaEnergetics US, Inc. (Colorado)
- Plaintiff’s Counsel: Susman Godfrey L.L.P.
- Case Identification: 6:21-cv-00104, W.D. Tex., 02/05/2021
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant DynaEnergetics US, Inc. maintains a "regular and established place of business" in Blum, Texas, and has committed alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s DS MicroSet disposable setting tool infringes a patent related to gas-operated downhole tools for setting frac plugs.
- Technical Context: The technology concerns single-use tools for oil and gas well completions, which are used to set plugs that isolate different zones within a wellbore for hydraulic fracturing.
- Key Procedural History: The complaint alleges pre-suit communications between the parties' counsel and an affiliate of the Plaintiff regarding the accused product, beginning in July 2020. These discussions allegedly culminated in an August 2020 confidentiality agreement for the purpose of evaluating the accused product against related intellectual property rights, which may be relevant to the question of when Defendant became aware of potential infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-29 | '035' Patent Priority Date |
| 2017-11-07 | '035 Patent Issue Date |
| 2020-07-08 | Defendant announces DS MicroSet product launch |
| 2020-07-23 | Pre-suit meeting alleged between parties/affiliates |
| 2020-08-21 | Parties allegedly execute a confidentiality agreement |
| 2020-09-24 | Defendant releases YouTube video describing the DS MicroSet |
| 2021-02-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,810,035 - "Disposable Setting Tool"
- Patent Identification: U.S. Patent No. 9,810,035, "Disposable Setting Tool," issued November 7, 2017.
The Invention Explained
- Problem Addressed: The patent's background describes conventional well-setting tools as large, heavy, and expensive equipment that uses hydraulic fluid. It notes that these tools require complete disassembly, cleaning, and reassembly in the field for each use, a process that is inefficient, labor-intensive, and creates opportunities for error ('035 Patent, col. 1:15-24, 1:49-53).
- The Patented Solution: The invention is a "disposable" and "gas operated" setting tool designed to be used once and then discarded ('035 Patent, col. 1:54-55). Instead of hydraulic fluid, the tool uses the pressurized gas generated by igniting a "power charge" to directly drive a barrel piston over a stationary mandrel ('035 Patent, col. 2:15-19). This "dry fired" mechanism, as illustrated in figures like FIG. 2A, eliminates the need for hydraulic fluid and field servicing, thereby simplifying operations ('035 Patent, col. 2:19-24).
- Technical Importance: This approach aims to provide a lower-cost, factory-assembled, single-use tool that reduces operational time, cost, and the risk of field assembly errors associated with conventional, reusable setting tools ('035 Patent, col. 7:1-5).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('Compl. ¶43).
- The essential elements of Claim 1 include:
- A mandrel with distinct first, intermediate, and second sections, where the intermediate section contains an interior bore defining a power charge chamber and has flow ports extending to its exterior.
- A barrel piston with a tubular body and an enclosed end, dimensioned to slidably receive the mandrel sections, creating an annular-shaped space between the two components.
- A first seal between the piston body and the mandrel's intermediate section, and a second seal between the piston's enclosed end and the mandrel's second section.
- Lowermost ends on the mandrel and piston adapted for securing to a setting sleeve and packer mandrel, respectively.
- A functional step where an ignited power charge generates gas that passes through the ports to stroke the piston over the mandrel, thereby setting a well tool.
- The complaint reserves the right to assert additional claims of the ’035 Patent (Compl. ¶43, ¶51).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's "DS MicroSet" disposable setting tool (Compl. ¶24).
Functionality and Market Context
- The complaint alleges the DS MicroSet is a "compact, disposable setting tool" that is delivered to customers "fully assembled, quality assured and ready for deployment" (Compl. ¶25). Marketing materials cited in the complaint state that the tool "functions based on pressure generated from gas combustion" and that "no hydraulic oil is required," which "improves reliability and reduces the risk of human error" (Compl. ¶29). The complaint provides a screenshot from Defendant's website promoting the DS MicroSet as a "Plug and Go™ Disposable Setting Tool" (Compl. p. 9). The product is allegedly used to install plugs that isolate stages in multi-stage oil and gas wells (Compl. ¶25).
IV. Analysis of Infringement Allegations
The complaint supports its infringement allegations primarily by referencing figures from a patent application allegedly filed by Defendant on the accused DS MicroSet technology (the "'654 Application"), as well as Defendant's own marketing materials. The complaint provides an annotated figure from the '654 Application showing the alleged correspondence of the DS MicroSet's mandrel to the claimed structure (Compl. ¶30, p. 10).
'035 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a mandrel having a first section, an intermediate section and a second section... | The DS MicroSet is alleged to comprise a mandrel with first, intermediate, and second sections. | ¶30 | col. 3:60-61 |
| said intermediate section having an interior bore...defining a power charge chamber, wherein one or more flow ports extend radially outward from said power charge chamber... | The complaint alleges the DS MicroSet's intermediate section has an interior bore defining a power charge chamber with one or more flow ports extending outward. | ¶32-33 | col. 3:64-68 |
| a barrel piston having a tubular body with an enclosed end...for slidably receiving said intermediate section and said second section of said mandrel, with an annular-shaped space defined... | The DS MicroSet allegedly includes a barrel piston with a tubular body and enclosed end that slidably receives the mandrel, defining an annular-shaped space. | ¶34 | col. 5:26-38 |
| a first seal extending between said tubular body of said barrel piston and said intermediate section of said mandrel... and a second seal extending between said bore in said enclosed end of said barrel piston and said second section of said mandrel... | The DS MicroSet is alleged to include a first seal and a second seal in the locations required by the claim. | ¶35 | col. 2:5-10 |
| said mandrel and said barrel piston have lowermost ends adapted for securing to respective ones of a setting sleeve and a packer mandrel... | The complaint points to a YouTube video showing the ends of the DS MicroSet's mandrel and barrel piston, alleging they are adapted for securing to a packer mandrel and setting sleeve. | ¶36-37 | col. 2:12-14 |
| wherein a power charge is disposed in said power charge chamber and ignited to generate pressurized gas, pass said pressurized gas through said one or more ports and stroke said barrel piston... | The DS MicroSet is alleged to operate by igniting a power charge, which generates pressurized gas that passes through flow ports to stroke the barrel piston and set a well tool. | ¶38 | col. 2:15-19 |
Identified Points of Contention
- Scope Questions: The complaint alleges infringement "either literally or through the doctrine of equivalents" (Compl. ¶43). This raises the question of whether there are subtle structural differences between the DS MicroSet and the claimed invention that may require the Plaintiff to rely on an equivalency argument for certain elements.
- Technical Questions: The infringement case appears to rest on a direct structural and functional mapping between the accused product and the claim limitations. A central technical question will be whether the DS MicroSet's components, particularly its sealing mechanisms and gas flow paths, operate in a manner that is identical or equivalent to the specific configuration described and claimed in the '035 patent. The complaint's reliance on Defendant's own technical drawings from the '654 Application suggests Plaintiff's belief that there is a direct correspondence (Compl. ¶30-34, 36, 38).
V. Key Claim Terms for Construction
The Term: "gas operated setting tool"
- Context and Importance: This preamble term defines the fundamental nature of the invention and distinguishes it from the prior art hydraulic tools discussed in the patent's background. The construction of this term will frame the overall scope of the patent. Practitioners may focus on this term because the '035 patent repeatedly emphasizes its "dry fired" nature, which could be a point of contention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The body of claim 1 describes the operation in terms of a "power charge" that is "ignited to generate pressurized gas," which then "stroke[s] said barrel piston." This language could support a construction that covers any tool where pressurized gas is the direct motive force for setting the tool, regardless of other minor components.
- Evidence for a Narrower Interpretation: The specification explicitly states the tool is "dry fired" and does not "use hydraulic fluid such as oil," allowing for disposal "without the need to recover oil" ('035 Patent, col. 2:19-24). This could support a narrower construction that excludes any tool containing functional liquids, even if they are not the primary motive fluid.
The Term: "in fluid communication with said interior bore"
- Context and Importance: This limitation describes the relationship between the exterior of the mandrel's second section and the power charge chamber. The precise path of the gas from the chamber to the piston is critical to the tool's operation and is a central feature of the claimed design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself does not specify a particular path, suggesting any arrangement where gas can flow from the chamber to the specified exterior location would satisfy the limitation.
- Evidence for a Narrower Interpretation: The preferred embodiment discloses a specific pathway where "two flow ports 72 extend from the blind end 70 of the power charge chamber 68 to an exterior of the mandrel" and into an "annular-shaped space 94" ('035 Patent, col. 4:26-30; Fig. 3B). A party might argue this specific arrangement informs the meaning of "in fluid communication," limiting it to a similar ported design.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. For inducement, it alleges that Defendant encourages its customers to infringe by using the DS MicroSet through its "sales and marketing efforts and staff" and product documentation (Compl. ¶45-46). For contributory infringement, it alleges the DS MicroSet is not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶49). To support these claims, the complaint includes a screenshot of Defendant's website marketing the accused product (Compl. ¶48, p. 16).
- Willful Infringement: The complaint does not use the term "willful infringement," but it alleges that Defendant has known its customers' acts constituted infringement "since at least the date of service of this complaint" (Compl. ¶46). The detailed allegations of pre-suit communications and the execution of a confidentiality agreement to evaluate the technology may serve as a factual basis for a future claim of pre-suit knowledge (Compl. ¶26-27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of structural correspondence: does the accused DS MicroSet, as depicted in Defendant's own technical and marketing materials, embody the specific combination of a multi-section mandrel, a slidably-received barrel piston, and a dual-seal system as recited in Claim 1 of the '035 patent, or are there material design differences that place it outside the literal scope of the claims?
- The case will also present a question of functional operation: does the accused tool's "dry fire" mechanism, which uses gas from a power charge to actuate a piston, function in substantially the same way to achieve the same result as the specific gas-flow pathway and stroking action described in the '035 patent, or can Defendant establish a distinct, non-infringing method of operation?
- A key factual question for indirect infringement and potential damages enhancement will be the timing and substance of Defendant's knowledge: given the alleged pre-suit communications regarding the accused product and related IP, what did Defendant know about the '035 patent and its relevance to the DS MicroSet, and when did it possess this knowledge?