DCT
6:21-cv-00260
Tomax As v. Turbo Drill Industries Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tomax AS (Norway)
- Defendant: Turbo Drill Industries, Inc. d/b/a Scout Downhole (Texas)
- Plaintiff’s Counsel: Whittaker Law Firm
- Case Identification: Tomax AS v. Turbo Drill Industries, Inc., 6:21-cv-00260, W.D. Tex., 03/15/2021
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a regular and established place of business in Midland, Texas, and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Steady Torque" downhole drilling tool infringes two patents related to dynamic dampers and regulating devices designed to mitigate destructive "stick-slip" oscillations in drill strings.
- Technical Context: The technology addresses the problem of torsional vibrations in deep well drilling, where tools must absorb and manage extreme forces to prevent drill bit failure and improve drilling efficiency.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the patents-in-suit via a letter dated November 5, 2020, to which Defendant's president responded on November 20, 2020. The complaint also alleges that Defendant rented and used Plaintiff's own patented tool prior to launching the accused product.
Case Timeline
| Date | Event |
|---|---|
| 2003-04-14 | U.S. Patent No. 7,578,360 Priority Date |
| 2009-08-25 | U.S. Patent No. 7,578,360 Issued |
| 2015-01-29 | U.S. Patent No. 10,533,376 Priority Date |
| 2019-05-19 | Alleged date Defendant first rented Plaintiff's patented "AST tool" |
| 2020-01-01 | Start of period Defendant allegedly rented Plaintiff's tool for 1288+ hours |
| 2020-07-31 | End of period Defendant allegedly rented Plaintiff's tool |
| H2 2020 | Alleged launch of Defendant's "Steady Torque" tool |
| 2020-10-01 | Alleged date of first infringing use of Defendant's tool |
| 2020-11-05 | Plaintiff allegedly sent notice letter to Defendant |
| 2020-11-20 | Defendant allegedly responded to notice letter |
| 2020-01-14 | U.S. Patent No. 10,533,376 Issued |
| 2021-03-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,578,360 - "Dynamic Damper for Use in a Drill String," Issued August 25, 2009
The Invention Explained
- Problem Addressed: The patent describes the problem of a drill bit jamming in a difficult formation. The drill string above continues to turn, building up torsional energy. When the bit suddenly breaks free, this stored energy is released in an uncontrolled, high-speed rotation that can damage sensitive and expensive drilling equipment. (’360 Patent, col. 1:35-44).
- The Patented Solution: The invention is a dynamic damper placed in the drill string. It consists of concentric inner and outer sections connected by a helical thread. When torque exceeds a pre-set value (indicating a jam), the sections rotate relative to one another. This rotation is translated by the helical thread into an axial (vertical) movement, which lifts the drill bit off the bottom of the hole, releasing the jam before extreme torsional energy can accumulate. (’360 Patent, Abstract; col. 2:15-24).
- Technical Importance: The device provides a mechanical, self-actuating solution to mitigate "stick-slip" events, a significant cause of non-productive time and equipment failure in the oil and gas drilling industry. (’360 Patent, col. 1:29-34).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 4. (Compl. ¶¶ 18, 19).
- Independent Claim 1 requires:
- An inner and an outer cylindrical string section engaged via a "spiral trapezoidal threaded section" such that relative rotation causes relative axial movement.
- A spring, pre-tensioned so that movement occurs only when combined force and torque exceed a predetermined value.
- An external cylindrical jacket for protection and to limit axial movement.
- Two oil-filled volumes that are interconnected to provide hydraulic damping.
- Functionally, torque from a locked bit causes relative rotation, which lifts and loosens the bit.
- Independent Claim 4 requires:
- Similar inner/outer sections and a spiral thread.
- A pre-tensioned spring that is specifically a "torsion spring."
- Functionally, torque from a locked bit that exceeds the spring tension causes relative rotation, which lifts and loosens the bit.
U.S. Patent No. 10,533,376 - "Regulating Device and a Method of Using Same in a Borehole," Issued January 14, 2020
The Invention Explained
- Problem Addressed: The patent explains that prior art torque converters suffered from a performance trade-off. Devices with rigid springs were not sensitive enough to protect the drill bit during initial, low-strain engagement with rock. Conversely, more "sensitive" devices lacked the capacity for normal, high-torque drilling operations. (’376 Patent, col. 2:32-39, col. 3:1-7).
- The Patented Solution: The invention is a regulating device featuring two separate biasing devices (e.g., springs). A first biasing device drives the tool toward an extended position. A second, "counterspring" biasing device is configured to "substantially balance" the forces on the tool when it is extended (i.e., off-bottom), making it highly sensitive. When the tool engages the borehole and begins to compress under load, the second biasing device is relieved and the first device is engaged, eventually with the second device acting concurrently, to provide high force capacity for drilling. (’376 Patent, Abstract; col. 4:21-39).
- Technical Importance: This dual-biasing system is designed to create a tool that is both highly sensitive during the critical phase of engaging a new formation and robust enough for high-power drilling, overcoming the limitations of single-spring designs. (’376 Patent, col. 4:46-51).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, 9, and 11. (Compl. ¶¶ 18, 19).
- Independent Claim 1 requires:
- A tubular female portion enclosing a tubular male portion, connected by a helical coupling allowing telescoping movement.
- A "first biasing device" to drive the device towards an extended position.
- A "second biasing device" with an associated driving device, configured to be compressed when the device is extended but compressed in the opposite direction when the device is retracted.
- This second biasing device must have "biasing characteristics capable of substantially balancing the forces" when the device is extended.
- Independent Claim 5 adds further structural detail to Claim 1:
- The first biasing device is in a first chamber controlled by a piston.
- The driving device for the second biasing device includes first and second pressure plates kept spaced by the second biasing device.
III. The Accused Instrumentality
Product Identification
Defendant's "Steady Torque" tool. (Compl. ¶16).
Functionality and Market Context
The complaint describes the Steady Torque tool as a "knock-off" of Plaintiff's own "AST tool," which incorporates the patented technology. (Compl. ¶¶ 13, 16). The complaint alleges that the tool is used in drill strings for oil and gas wells in the Western District of Texas. (Compl. ¶¶ 18, 19). The complaint does not provide any specific technical details, diagrams, or descriptions of the internal operation of the Steady Torque tool.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint alleges infringement but does not map specific features of the accused product to claim elements. The following charts are based on the claim language and the complaint's general allegations.
’360 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an inner cylindrical string section having an upper end connected to an upper portion of the drill string; | The complaint alleges the Steady Torque tool is a dynamic damper for a drill string and necessarily includes internal components for connection within the string. | ¶¶ 18, 24 | col. 2:56-59 |
| an outer cylindrical string section supported concentrically on the inner string section and having a lower end connected to a lower portion of the drill string; | The complaint alleges the Steady Torque tool is a dynamic damper for a drill string and necessarily includes concentric components for connection within the string. | ¶¶ 18, 24 | col. 2:59-62 |
| wherein the inner and outer string sections are engaged via a spiral trapezoidal threaded section oriented so that relative rotation between the string sections will cause relative axial movement... | The complaint's allegation of infringement implies the Steady Torque tool contains a mechanism to convert relative rotation into axial movement. | ¶¶ 18, 24 | col. 2:62-65 |
| a spring disposed between the inner and outer string sections, the spring being pre-tensioned so that axial movement... occurs only when combined axial force and torque... exceed a predetermined value; | The complaint's allegation of infringement implies the Steady Torque tool utilizes a pre-tensioned spring to resist movement until a specific torque threshold is met. | ¶¶ 18, 24 | col. 3:18-22 |
| wherein torque caused by locking of the drill bit... effects relative rotation between the inner and outer string sections when said torque exceeds a selected spring tension; | The complaint alleges the Steady Torque tool functions to react to torque increases from a locked drill bit. | ¶¶ 18, 24 | col. 4:32-37 |
| wherein said relative motion between the inner and outer string sections is an axial movement that lifts and loosens the drill bit from its locked position; | The complaint alleges the Steady Torque tool functions to create an axial movement to free a locked drill bit. | ¶¶ 18, 24 | col. 4:37-40 |
’376 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tubular female portion which at least partly encloses a tubular male portion; | The complaint alleges the Steady Torque tool is a regulating device for a drill string and includes telescoping components. | ¶¶ 18, 27 | col. 5:59-62 |
| a helical coupling between the female portion and the male portion to allow a telescoping movement... occurring when there is a difference in rotational speed... | The complaint's allegation of infringement implies the Steady Torque tool contains a mechanism to convert differences in rotational speed into telescoping movement. | ¶¶ 18, 27 | col. 5:45-48 |
| a first biasing device which is arranged to exert a driving force to drive the regulating device towards its extended position; | The complaint's allegation of infringement implies the Steady Torque tool contains a first spring or similar device that pushes the tool to an extended state. | ¶¶ 18, 27 | col. 5:49-51 |
| a second biasing device... being compressed by the driving device in an axial direction towards the first biasing device when the regulating device is in its extended position, and compressed in an axial direction away from the first biasing device when the regulating device is in its retracted position; | The complaint's allegation of infringement implies the Steady Torque tool contains a second, counter-acting spring mechanism that operates in the specific dual-mode manner required by the claim. | ¶¶ 18, 27 | col. 13:49-54 |
| wherein the second biasing device has biasing characteristics capable of substantially balancing the forces that extends the regulating device into its extended position, when the regulating device is in its extended position. | The complaint's allegation of infringement implies the second biasing mechanism in the Steady Torque tool is configured to balance the extension forces, creating a sensitive, "weightless" state. | ¶¶ 18, 27 | col. 13:55-59 |
Identified Points of Contention
- Evidentiary Question: The primary point of contention appears to be evidentiary. The complaint provides no technical evidence, such as schematics or operational data, for the accused "Steady Torque" tool. A central question will be what evidence Plaintiff can produce to demonstrate that the accused tool incorporates each of the specific structural and functional limitations of the asserted claims, particularly the complex dual-spring mechanism of the ’376 Patent.
- Scope Question (’360 Patent): Will the mechanism within the "Steady Torque" tool that converts rotation to axial motion, if any, fall within the scope of a "spiral trapezoidal threaded section" as required by Claim 1?
- Technical Question (’376 Patent): Does the accused tool contain a "second biasing device" that performs the specific, dual-mode function recited in Claim 1—namely, being compressed towards the first biasing device in an extended state, and away from it in a retracted state, while also "substantially balancing" the extension forces? Proving this complex functionality may be a key hurdle.
V. Key Claim Terms for Construction
Term from the ’376 Patent: "substantially balancing the forces"
- Context and Importance: This term from Claim 1 is critical because it defines the unique "sensitive" state of the patented invention when the drill bit is off-bottom. The degree of "balancing" required will determine whether the accused device infringes. Practitioners may focus on this term because it is a term of degree that is not explicitly defined, leaving its scope open to interpretation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the goal is to make the male portion "appear almost 'weightless'," which could imply that perfect balancing is not required, only enough to significantly reduce friction. (’376 Patent, col. 4:30-32).
- Evidence for a Narrower Interpretation: The claim requires balancing "the forces that extends the regulating device," which the specification identifies as both the "first biasing device and the gravitational force from the major part of the mass of the male portion." (’376 Patent, col. 4:23-26). A defendant might argue this requires balancing a specific combination of forces, not just creating a general low-friction state.
Term from the ’376 Patent: "second biasing device... compressed by the driving device in an axial direction towards the first biasing device when the regulating device is in its extended position, and compressed in an axial direction away from the first biasing device when the regulating device is in its retracted position"
- Context and Importance: This lengthy functional language from Claim 1 describes the core operational principle of the counter-spring mechanism. Infringement will depend on whether the accused tool's second spring, if one exists, operates in this specific, directionally-dependent manner.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's overall objective is to create a "sensitive" tool that also has high capacity. A plaintiff might argue that any mechanism achieving this dual function through two springs should be covered, even if the exact force vectors are not identical to the embodiments.
- Evidence for a Narrower Interpretation: The claim language is highly specific about the direction of compression in two different states (extended and retracted). The patent figures (e.g., Figs. 2 and 3) illustrate this precise mechanical interaction. A defendant could argue that this language limits the claim to the specific structural arrangement shown, where the counterspring (56) is pushed one way by the driving device (58) in the extended state and the opposite way when compressed between pressure plates (52, 54) in the retracted state. (’376 Patent, col. 8:30-38, col. 9:10-21).
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement based on Defendant having received actual notice of the patents-in-suit via a letter dated November 5, 2020. (Compl. ¶17). The complaint further alleges that Defendant's president responded to the letter, establishing knowledge. (Compl. ¶17). The allegation that Defendant rented Plaintiff's own commercial tool and then introduced a "knock-off" product may also be used to support a claim of deliberate copying and willfulness. (Compl. ¶¶ 14-16).
VII. Analyst’s Conclusion: Key Questions for the Case
- An Evidentiary Question of Operation: Given the lack of technical detail in the complaint, a threshold question is whether Plaintiff can produce sufficient evidence to show that the internal mechanics of the "Steady Torque" tool actually perform the specific functions required by the claims. This is particularly salient for the complex, dual-mode counter-spring system claimed in the ’376 patent.
- A Definitional Question of Function: The dispute over the ’376 patent will likely center on claim construction. Can the term "substantially balancing the forces" be defined with sufficient clarity, and will the accused device be found to meet that limitation? The outcome may depend on whether the term requires balancing a specific set of enumerated forces or simply achieving a general state of reduced friction.
- A Question of Willfulness and Copying: The complaint’s narrative suggests a "copying" theory, based on Defendant's rental of Plaintiff's patented tool before launching its own product. A key issue for trial will be whether Plaintiff can prove this narrative, which could significantly impact a finding of willfulness and potential damages enhancement.