DCT
6:23-cv-00117
US Well Services Inc v. Halliburton Energy Services Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: U.S. Well Services, LLC (Delaware)
- Defendant: Halliburton Energy Services, Inc. (Delaware) and Cimarex Energy Co. (Delaware)
- Plaintiff’s Counsel: Patterson + Sheridan LLP
- Case Identification: 6:21-cv-00367, W.D. Tex., 07/06/2021
- Venue Allegations: Venue is alleged to be proper because Defendants have committed acts of infringement and maintain regular and established places of business within the Western District of Texas.
- Core Dispute: Plaintiff alleges that Defendants’ "All-Electric Fracturing Fleet" systems and associated services infringe seven patents related to electric-powered pumps, control systems, and operational methods for hydraulic fracturing.
- Technical Context: The technology concerns a shift in the oil and gas industry from traditional diesel-powered hydraulic fracturing equipment to systems fully powered by electricity, often from the power grid, aiming to reduce emissions, operational costs, and equipment footprint.
- Key Procedural History: The currently operative Second Amended Complaint follows an Original Complaint filed on April 15, 2021. The complaint alleges that Defendant Cimarex had actual notice of potential infringement as of January 19, 2021, via a notice letter. It further alleges both Defendants had at least constructive notice as of March 31, 2021, based on their participation in an industry conference where Plaintiff presented its technology as "patented."
Case Timeline
| Date | Event |
|---|---|
| 2012-11-16 | Earliest Priority Date for Asserted Patents |
| 2014-07-29 | U.S. Patent No. 8,789,601 Issues |
| 2014-07-XX | Plaintiff USWS Deploys its "Clean Fleet" Electric Fracturing System |
| 2016-08-09 | U.S. Patent No. 9,410,410 Issues |
| 2017-04-04 | U.S. Patent No. 9,611,728 Issues |
| 2017-08-29 | U.S. Patent No. 9,745,840 Issues |
| 2018-05-18 | U.S. Patent No. 9,970,278 Issues |
| 2019-07-02 | U.S. Patent No. 10,337,308 Issues |
| 2019-09-10 | U.S. Patent No. 10,408,030 Issues |
| 2020-11-XX | Defendants Allegedly Begin Infringing Operations in Permian Basin |
| 2021-01-19 | Plaintiff Sends Notice Letter to Defendant Cimarex |
| 2021-03-31 | Energy ESG Conference Allegedly Providing Notice to Defendants |
| 2021-04-15 | Original Complaint Filed |
| 2021-05-31 | First Amended Complaint Filed |
| 2021-07-06 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,410,410 - "System for Pumping Hydraulic Fracturing Fluid using Electric Pumps"
- Patent Identification: U.S. Patent No. 9410410, "System for Pumping Hydraulic Fracturing Fluid using Electric Pumps," issued August 9, 2016.
The Invention Explained
- Problem Addressed: The patent's background describes traditional hydraulic fracturing as reliant on large, heavy, diesel-powered pumps that are expensive to transport, maintain, and fuel (Compl. Ex. A; ’410 Patent, col. 1:12-44).
- The Patented Solution: The invention is a system for hydraulic fracturing that replaces diesel engines with electric motors to power the pumps. A key component is a variable frequency drive (VFD) that controls the electric motor's speed and "frequently performs electric motor diagnostics to prevent damage to the ... motor" (’410 Patent, Abstract; col. 2:1-25).
- Technical Importance: This technological approach sought to address significant operational costs and logistical inefficiencies associated with conventional diesel-powered fracturing fleets (’410 Patent, col. 1:31-44).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶41).
- Essential elements of Claim 1 include:
- A system for hydraulically fracturing an underground formation in an oil or gas well.
- A plurality of electric pumps fluidly connected to the well, powered by at least one electric motor, and configured to pump fluid at high pressure to fracture the formation.
- A variable frequency drive (VFD) connected to the electric motor to control its speed.
- The VFD frequently performs electric motor diagnostics to prevent damage to the motor.
U.S. Patent No. 10,337,308 - "System for Pumping Hydraulic Fracturing Fluid using Electric Pumps"
- Patent Identification: U.S. Patent No. 10337308, "System for Pumping Hydraulic Fracturing Fluid using Electric Pumps," issued July 2, 2019.
The Invention Explained
- Problem Addressed: The patent addresses the same problems as the ’410 Patent: the high cost, inefficiency, and maintenance burden of diesel-powered pumps used in hydraulic fracturing (’308 Patent, col. 1:12-46).
- The Patented Solution: The invention is a fracturing system comprising an electric motor powering a specific type of high-capacity pump. The patent claims a "triplex or quinteplex pump rated at about 2250 hydraulic horsepower or more," specifying a configuration capable of the high pressures needed to fracture subterranean formations (’308 Patent, Abstract; col. 2:19-21).
- Technical Importance: The patent specifies a particular class and power rating of pump, suggesting a focus on ensuring that an electric-powered system can meet or exceed the performance benchmarks of incumbent diesel-powered technology (’308 Patent, col. 4:20-26).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶58).
- Essential elements of Claim 1 include:
- A system for hydraulically fracturing an underground formation.
- A pump fluidly connected to the well.
- An electric motor to power the pump, which is configured to pump fluid at high pressure to fracture the formation.
- The pump is a triplex or quinteplex pump rated at about 2250 hydraulic horsepower or more.
U.S. Patent No. 9,970,278 - "System for Centralized Monitoring and Control of Electric Powered Hydraulic Fracturing Fleet"
- Patent Identification: U.S. Patent No. 9970278, "System for Centralized Monitoring and Control of Electric Powered Hydraulic Fracturing Fleet," issued May 18, 2018.
Technology Synopsis
The patent addresses the operational complexity of managing an entire fleet of electric fracturing equipment. The invention is a "centralized control unit" coupled to the fleet's pumps and generators, configured to monitor operational parameters such as pressure and temperature (’278 Patent, Abstract; Compl. Ex. C).
Asserted Claims
Independent Claim 1 (Compl. ¶73).
Accused Features
The "Electric Tech Command Center" or "Integrated Well Completions (IWC) Unit" of Halliburton's fleet is accused of being the claimed centralized control unit (Compl. ¶77-78).
U.S. Patent No. 9,611,728 - "Cold Weather Package for Oil Field Hydraulics"
- Patent Identification: U.S. Patent No. 9611728, "Cold Weather Package for Oil Field Hydraulics," issued April 4, 2017.
Technology Synopsis
The patent addresses the problem of hydraulic fluids gelling in cold weather, an issue exacerbated in electric systems that lack the significant waste heat produced by diesel engines. The invention is a "working fluid system comprising working fluid, and a heater that is in thermal contact with the working fluid" to maintain its operational temperature (’728 Patent, Abstract; Compl. Ex. D).
Asserted Claims
Independent Claim 1 (Compl. ¶88).
Accused Features
The Halliburton fleet is alleged to include a working fluid system with "outward facing radiators mounted behind the variable frequency drive houses with fluid lines from the electric pump" that functions as the claimed heater system (Compl. ¶92).
U.S. Patent No. 8,789,601 - "System for Pumping Hydraulic Fracturing Fluid using Electric Pumps"
- Patent Identification: U.S. Patent No. 8789601, "System for Pumping Hydraulic Fracturing Fluid using Electric Pumps," issued July 29, 2014.
Technology Synopsis
This patent describes a fracturing system comprising a plurality of pumps "mounted on a trailer or truck" and powered by electric motors. The system also includes a VFD to control the motors and a plurality of generators to provide power (’601 Patent, Abstract; Compl. Ex. E).
Asserted Claims
Independent Claim 1 (Compl. ¶103).
Accused Features
The complaint alleges Halliburton's "Zeus Electric Pumps" are mounted on a trailer or truck, thereby meeting a key limitation of this patent (Compl. ¶105).
U.S. Patent No. 9,745,840 - "Electric Powered Pump Down"
- Patent Identification: U.S. Patent No. 9745840, "Electric Powered Pump Down," issued August 29, 2017.
Technology Synopsis
The patent describes a system for "pump down" operations, where a pump pressurizes fluid to push a tool (e.g., a perforating gun) down a wellbore. The claimed system uses an electric motor to drive the pump down pump and also comprises a hydraulic fracturing pump (’840 Patent, Abstract; Compl. Ex. F).
Asserted Claims
Independent Claims 1 and 16 (Compl. ¶120, ¶128).
Accused Features
The accused Halliburton fleet is alleged to comprise an electric motor driving a pump down pump and a tool positioned in the wellbore that is pushed by the pressurized fluid (Compl. ¶122-125).
U.S. Patent No. 10,408,030 - "Electric Powered Pump Down"
- Patent Identification: U.S. Patent No. 10408030, "Electric Powered Pump Down," issued September 10, 2019.
Technology Synopsis
This patent claims a method of operations related to the system in the ’840 Patent. The claimed method includes driving a pump with an electric motor to pressurize fluid, inserting a tool into a wellbore, and directing the pressurized fluid to push the tool into the wellbore (’030 Patent, Abstract; Compl. Ex. G).
Asserted Claims
Independent Claim 1 (Compl. ¶145).
Accused Features
Defendants' operations at the "Electric Frac Operation Site" are alleged to practice the claimed method by using an electrically powered pump to pressurize fluid and push a tool into the wellbore (Compl. ¶146-150).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Halliburton's "All-Electric Fracturing Fleet" system, its components (such as the "Zeus Electric Pumps" and "Electric Tech Command Center"), and associated hydraulic fracturing services (Compl. ¶25, ¶29, ¶38).
- Functionality and Market Context: The complaint describes the accused fleet as a system "fully powered by electricity" that can connect directly to the power grid to operate its equipment (Compl. ¶26). It utilizes "Zeus Electric Pumps" to pump fluid at high pressure to fracture downhole formations and an "Electric Tech Command Center" for electronic measurement and control (Compl. ¶26-27). The complaint alleges this system was used by Defendant Cimarex in the Permian Basin beginning in November 2020 in what Halliburton announced as the "first successful grid-powered fracturing operation" in the region (Compl. ¶30, Ex. I). The complaint provides a marketing brochure image showing the layout of the accused fleet, including the command center, pumps, and blender (Compl. ¶42).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,410,410 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of electric pumps fluidly connected to the well and powered by at least one electric motor, and configured to pump fluid into the wellbore at high pressure... | The accused fleet comprises a plurality of Halliburton’s 5000HHP “Zeus Electric Pumps,” which are powered by at least one electric motor and configured for high-pressure pumping. | ¶43, ¶44 | col. 3:10-26 |
| a variable frequency drive connected to the electric motor to control the speed of the motor... | The accused products comprise a variable frequency drive (VFD) connected to the electric motor. An image in the complaint explicitly labels the VFD on the accused pump unit. | ¶45, p. 12 | col. 3:42-47 |
| wherein the variable frequency drive frequently performs electric motor diagnostics to prevent damage... | The complaint alleges on information and belief that the VFD performs electric motor diagnostics to prevent damage to the motor. | ¶46 | col. 3:66-4:2 |
- Identified Points of Contention:
- Technical Question: What evidence does the complaint provide that the accused VFD "frequently performs electric motor diagnostics" as required by the claim? The allegation is made "on information and belief" (Compl. ¶46), suggesting this specific function will be a central point of discovery and potential dispute.
U.S. Patent No. 10,337,308 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pump fluidly connected to the well... | The accused products include a pump, the "Zeus Electric Pumping Unit," that is fluidly connected to the well. | ¶60 | col. 1:53-54 |
| an electric motor to power the pump, the pump configured to pump fluid into the wellbore at high pressure... | The Zeus pump is powered by an electric motor via an "electric-based powertrain" and is engineered to achieve high-pressure pumping performance. | ¶61, ¶62 | col. 1:55-58 |
| wherein the pump is a triplex or quinteplex pump rated at about 2250 hydraulic horsepower or more. | The Zeus Electric Pump is alleged to deliver 5,000HHP, which is more than the claimed 2250 hydraulic horsepower. | ¶63 | col. 2:10-13 |
- Identified Points of Contention:
- Technical Question: While the complaint alleges the accused pump meets the horsepower requirement, what evidence does it provide that the pump is structurally a "triplex or quinteplex pump" as specifically required by the claim? This structural characteristic, distinct from the power rating, may become a focus of the technical dispute.
V. Key Claim Terms for Construction
For the ’410 Patent:
- The Term: "frequently performs electric motor diagnostics"
- Context and Importance: This functional limitation is central to distinguishing the invention from a simple electric motor with a speed controller. Practitioners may focus on this term because the allegation is made only on "information and belief" (Compl. ¶46), and the definitions of "frequently" and the scope of "diagnostics" will be critical to proving infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests diagnostics can be performed "on the application of power, or with each start" (’410 Patent, col. 3:66-4:2), which a fact-finder could interpret as supporting a broad definition of "frequently."
- Evidence for a Narrower Interpretation: The specification states that the diagnostics prevent damage if motors become "grounded or shorted" (’410 Patent, col. 4:1-2). A defendant may argue this narrows the term "diagnostics" to specific electrical fault detection, rather than general performance or thermal monitoring.
For the ’308 Patent:
- The Term: "about 2250 hydraulic horsepower or more"
- Context and Importance: The scope of "about" is a common point of contention in claim construction. While the accused pump's alleged 5,000HHP is well over 2250, the construction of this term could be relevant if discovery reveals different operating parameters or models.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses the term "about," which is generally understood to provide some flexibility around the stated numerical value (’308 Patent, col. 2:20).
- Evidence for a Narrower Interpretation: The specification repeatedly refers to a pump "optionally rated at about 2250 hydraulic horsepower or more," consistently framing this value as the benchmark for the invention's power capability (’308 Patent, col. 2:10-13), which may suggest the term was not intended to be indefinite.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement for all asserted patents. The allegations are based on Halliburton allegedly controlling the design and manufacture of the accused fleet and providing documentation, user manuals, and guidance to its customers, such as Cimarex, with the knowledge and intent to cause infringement (Compl. ¶47, ¶65, ¶79). The complaint further alleges the components are material to the inventions and not staple articles of commerce (Compl. ¶48, ¶66, ¶80).
- Willful Infringement: Willfulness is alleged against both Defendants for all asserted patents. The complaint alleges knowledge based on at least two events: (1) post-suit knowledge from the service of the original complaint on April 15, 2021; and (2) pre-suit knowledge based on a March 31, 2021 industry conference where a Halliburton manager was a speaker and Plaintiff presented its technology as a "patented remote electric frac" (Compl. ¶49-50, ¶67-68). For Defendant Cimarex, the complaint also alleges actual notice from a letter sent by Plaintiff's counsel on January 19, 2021, which specifically identified the '308 patent (Compl. ¶31, ¶68, Ex. K).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary sufficiency: For functional claim limitations alleged "on information and belief," such as the "electric motor diagnostics" of the '410 Patent, what technical evidence will discovery produce to demonstrate that the accused Halliburton VFDs actually perform the specific functions required by the claims?
- A second key question will be one of structural identity: Does the accused "Zeus" pump meet the specific structural definitions required by certain claims, such as being a "triplex or quinteplex pump" ('308 Patent), or is there a fundamental mismatch in its technical design, irrespective of its performance ratings?
- The dispute over willfulness will likely turn on the effectiveness of pre-suit notice: Can Plaintiff establish that Defendants had the requisite knowledge for willful infringement based on a manager's attendance at an industry conference panel, or will knowledge be found to attach only upon receipt of a specific notice letter or the complaint itself?