DCT
6:24-cv-00646
SitePro Inc v. Plow Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SitePro, Inc. (Delaware)
- Defendant: Plow Technologies LLC, Plow Technologies Texas LLC, PakEnergy, LLC, and related entities (Oklahoma, Texas, Delaware)
- Plaintiff’s Counsel: Perkins Coie LLP
- Case Identification: 6:24-cv-00646, W.D. Tex., 12/24/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendants have committed acts of infringement in the district and maintain regular and established places of business there, including offices for Plow Technologies Texas, PakEnergy, and Energy OnRamp. The complaint also asserts venue based on agency and alter-ego theories among the various defendant entities.
- Core Dispute: Plaintiff alleges that Defendants’ OnPing cloud SCADA platform infringes four patents related to the remote monitoring and control of industrial fluid-handling equipment.
- Technical Context: The technology involves systems for remotely managing equipment in the oil and gas industry, combining on-site hardware controllers with cloud-based software to provide centralized monitoring, control, and data analytics.
- Key Procedural History: The complaint notes that this action is related to prior cases filed by SitePro in the same court, specifically against WaterBridge Resources and TankLogix, where patents from the same family were asserted and the court had previously construed claims.
Case Timeline
| Date | Event |
|---|---|
| 2012-01-01 | Alleged conception date of the patented inventions |
| 2012-12-07 | Earliest priority date for all Asserted Patents |
| 2016-05-17 | U.S. Patent No. 9,342,078 issues |
| 2019-11-26 | U.S. Patent No. 10,488,871 issues |
| 2022-04-05 | U.S. Patent No. 11,294,403 issues |
| 2024-06-25 | U.S. Patent No. 12,019,461 issues |
| 2024-08-20 | PakEnergy announces acquisition of Plow Technologies |
| 2024-12-24 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,342,078 - "Remote control of fluid-handling devices," issued May 17, 2016
The Invention Explained
- Problem Addressed: The patent describes the difficulty of monitoring and controlling geographically distributed fluid-handling equipment, such as that found at oil wells. Traditional methods are costly and time-consuming, and existing SCADA systems often lose functionality during network outages and may require specialized client-side software. (’078 Patent, col. 1:28-64).
- The Patented Solution: The invention proposes a system architecture featuring a local "site master-controller" at the equipment site. This controller receives commands from a remote server, translates them from a common protocol into various device-specific protocols, and executes the commands to completion, maintaining local control even if the connection to the remote server is lost. The system allows users to issue commands through a standard web browser, avoiding the need for special software installation. (’078 Patent, col. 3:6-44; Fig. 1).
- Technical Importance: This approach aimed to provide more robust, accessible, and protocol-agnostic remote control for industrial processes in sectors like energy, where equipment is often in remote locations with intermittent network connectivity. (’078 Patent, col. 1:28-47).
Key Claims at a Glance
- The complaint asserts independent method Claim 1. (Compl. ¶51).
- Essential Elements of Claim 1:
- Receiving, via a network interface, user-directed instructions encoded in a "shared protocol" to control fluid-handling devices at specific industrial sites.
- Obtaining a target state for a device, which involves determining a plurality of different target states corresponding to different times.
- For each instruction, selecting a respective device-specific protocol different from the shared protocol.
- Translating the received instructions into translated instructions encoded in the selected respective protocol, with the translated instructions including the determined target states.
- Sending the translated instructions to the fluid-handling device to cause it to attempt to achieve the target state.
- The complaint reserves the right to assert claims 1-9, 11-13, and 15-19. (Compl. ¶40).
U.S. Patent No. 10,488,871 - "Remote control of fluid-handling devices," issued November 26, 2019
The Invention Explained
- Problem Addressed: The patent addresses the need for a centralized system to manage remote control access for multiple users and entities operating distinct sets of geographically distributed equipment. (’871 Patent, col. 1:28-47).
- The Patented Solution: The invention describes a hosted, networked system that uses a central datastore to manage a plurality of accounts. These accounts correspond to different entities and associate them with specific fluid-handling facilities. The system provides a user interface module to present control interfaces and a facility interface module to send commands, enforcing permissions such that users can only control or view data for facilities associated with their account. (’871 Patent, col. 7:25-44; col. 16:1-30).
- Technical Importance: This patent details a multi-tenant, software-as-a-service (SaaS) architecture for industrial control, enabling a single platform to securely serve multiple customers by segregating access to different physical assets based on account permissions. (’871 Patent, col. 7:25-34).
Key Claims at a Glance
- The complaint asserts independent method Claim 18. (Compl. ¶75).
- Essential Elements of Claim 18:
- Storing records comprising a plurality of accounts for different entities operating geographically distributed facilities, and addresses for the equipment at those facilities.
- Obtaining data from sensors and sending commands to actuators at the facilities.
- Sending instructions to present control interfaces on user devices logged into respective accounts.
- Receiving a user command to actuate an actuator.
- Identifying the facility address for that actuator.
- Sending instructions to the facility to actuate the actuator.
- The claim further specifies a structure of at least four accounts, where first and second accounts control different facility groups, and third and fourth accounts are limited to viewing data from those respective facility groups.
- The complaint reserves the right to assert claims 18-34. (Compl. ¶64).
Multi-Patent Capsule: U.S. Patent No. 11,294,403 - "Remote control of fluid-handling devices," issued April 5, 2022
Technology Synopsis
This patent claims a system comprising a local computer system at a fluid-handling site and a remote server system. The architecture enables the server to receive sensor data from the local site, authenticate a user's credentials from a client device, provide a user interface, and then cause the local computer to execute a command by changing a device's state through a sequence of target states over time, while ensuring the user is not authorized to interact with other fluid-handling sites. (’403 Patent, Abstract; col. 15:47-col. 18:14).
Asserted Claims
Independent system Claim 1 and dependent claims 2-30. (Compl. ¶¶ 95, 106).
Accused Features
The complaint accuses the combination of Defendants' Lumberjack edge computer (as the "first computer system") and the OnPing cloud platform (as the "server system") of infringing this patent. (Compl. ¶¶ 109-111).
Multi-Patent Capsule: U.S. Patent No. 12,019,461 - "Remote control of fluid-handling devices," issued June 25, 2024
Technology Synopsis
This patent claims a method of fluid processing that mirrors the system of the ’403 Patent. The method involves a local computer receiving sensor data and providing remote control, while a remote server receives that data, authenticates a user for a specific site, provides a user interface, and causes the local computer to effectuate a command as a sequence of different target states. (’461 Patent, Abstract; col. 16:50-col. 18:19).
Asserted Claims
Independent method Claim 1 and dependent claims 2-17. (Compl. ¶¶ 121, 132).
Accused Features
The complaint alleges that Defendants' operation of the OnPing system, which utilizes the Lumberjack edge computer and OnPing cloud services, performs the steps of the claimed method. (Compl. ¶¶ 135-137).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the OnPing system, which the complaint identifies as an "innovative cloud SCADA platform for oilfield applications, manufacturing, and more." (Compl. ¶¶ 37-38). The system includes on-site "Lumberjack" edge computers. (Compl. ¶55).
Functionality and Market Context
- The OnPing system is alleged to provide remote, real-time monitoring and control of industrial equipment such as pumps and valves at oil and gas facilities. (Compl. ¶¶ 54, 77). The complaint includes a screenshot of the OnPing control interface showing set points for tank levels and other parameters. (Compl. p. 16).
- Functionality is delivered through a cloud-based platform accessible via web browsers. (Compl. ¶¶ 26, 78). The complaint provides a screenshot of the OnPing login portal. (Compl. p. 28).
- At the equipment site, "Lumberjack" edge computers are used to poll field devices, which may use various protocols (e.g., Modbus, Controllogix), and communicate with the remote OnPing cloud servers. (Compl. ¶¶ 57, 80). An architectural diagram from OnPing's website is included in the complaint, illustrating this local-to-cloud communication via a cell tower. (Compl. p. 18).
- The system is marketed as a "leader in oil and gas production well site automation" for upstream, midstream, and saltwater disposal (SWD) applications. (Compl. ¶36).
IV. Analysis of Infringement Allegations
’078 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving, via a network interface, a plurality of user-directed instructions to control fluid-handling devices...the plurality of instructions being received encoded in a shared protocol | The OnPing system receives user commands via its web-based interface (e.g., to set tank levels or control pumps), which constitutes a shared protocol for communicating with the OnPing cloud. | ¶54 | col. 2:9-12 |
| obtaining a target state of at least one of the fluid-handling devices...comprises...determining a plurality of different target states...each corresponding to different times | When a user provides a new target speed, an accused VFD allegedly ramps up through intermediate RPM stages to reach the target, which the complaint alleges constitutes a plurality of different target states. | ¶56 | col. 8:29-34 |
| for each of the plurality of instructions, selecting a respective protocol or protocols from among a plurality of protocols different from the shared protocol...wherein at least some of the selected protocols are different from one another | The OnPing system's Lumberjack edge computer supports a "Wide Range of Available Protocols" (e.g., Modbus, ROC, Bristol) and selects the appropriate protocol to communicate with the specific field device. | ¶57 | col. 9:18-24 |
| translating each received instructions into one or more translated instructions encoded in the selected respective protocol or protocols, the one or more translated instructions including the determined plurality of different target states | The Lumberjack device translates the general command received from the cloud into the device-specific protocol (e.g., Modbus) required by the end device. | ¶58 | col. 10:32-34 |
| sending each translated instructions to at least the fluid-handling device...wherein at least some of the translated instructions are effective to cause the at least one of the fluid-handling devices to attempt to achieve the target state | The system sends instructions like "start, stop, enable, and disable" to devices to control their state and achieve target setpoints for pressure, level, or other conditions. | ¶59 | col. 2:18-20 |
Identified Points of Contention (’078 Patent)
- Scope Questions: A central question may be the construction of "shared protocol." The infringement theory appears to depend on this term covering the high-level communication between a user's web browser and the OnPing cloud, while the "respective protocol" refers to device-level industrial protocols like Modbus. The defense may argue that "shared protocol" requires a more specific, formally defined protocol than general web traffic.
- Technical Questions: The allegation that a VFD ramping up in speed constitutes "determining a plurality of different target states" may be contested. The defense could argue this is an inherent, automatic function of the VFD hardware to manage mechanical stress, rather than a sequence of distinct target states determined and commanded by the accused OnPing software as required by the claim.
’871 Patent Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| storing, with one or more processors, records comprising: a plurality of accounts, each account corresponding to an entity operating one or more geographically distributed fluid-handling facilities | OnPing provides a single portal where users from different entities can log in. The complaint alleges user accounts are stored in a datastore and provides a screenshot showing a "New User" creation interface. | ¶¶78-79 | col. 7:25-30 |
| addresses by which industrial monitoring or control equipment at the facilities is accessible via network connections | The system allows for configuring new locations by entering network information like "PLC URL, PLC port, lumberjack URL, and lumberjack port information" to establish a connection to field equipment. | ¶80 | col. 16:21-23 |
| sending...respective instructions to present respective control interfaces on respective user-computing devices logged in to respective ones of the accounts | OnPing is alleged to be "accessible from any mobile internet enabled device," providing access to conditions, data, HMIs, and setpoints. | ¶82 | col. 7:54-58 |
| receiving, with the user-interface module or modules, a user command to actuate an actuator entered via a presented control interface | The complaint alleges that users can issue commands to, for example, "close multiple wells simultaneously and pause production for an entire field" through the OnPing interface. | ¶83 | col. 17:1-4 |
| identifying...an address in the datastore corresponding to a facility at which the actuator is located; and sending...instructions...to the facility to actuate the actuator | Adding a new device requires entering its address information (PLC URL, port, etc.). When a command is given, the system uses this stored address to send instructions to the correct facility. | ¶84 | col. 17:1-4 |
| wherein: the plurality of accounts include a first account, a second account, a third account, and a fourth account... | On "information and belief," the complaint alleges that OnPing has more than four users and that its permission system allows for creating the specific four-account structure for controlling and viewing two different groups of facilities. | ¶¶86-90 | col. 17:5-29 |
Identified Points of Contention (’871 Patent)
- Scope Questions: The claim requires a very specific four-part account structure with distinct permissions for controlling versus viewing two different groups of facilities. A primary point of contention will be whether the OnPing system's user and permission model can be mapped to this exact structure.
- Technical Questions: The complaint alleges the existence of the four-account structure on "information and belief" but does not provide direct evidence. A key factual question will be what evidence Plaintiff can produce through discovery to show that Defendants' customers actually use the OnPing system in a way that creates the specific sets of user permissions recited in the claim.
V. Key Claim Terms for Construction
Term: "shared protocol" (’078 Patent, Claim 1)
- Context and Importance: This term is fundamental to the ’078 Patent’s infringement theory, which relies on a two-step communication process: user-to-server via a "shared protocol" and server-to-device via a translated "respective protocol." The definition of "shared" will determine whether general web communication (like HTTPS) meets this limitation.
- Evidence for a Broader Interpretation: The specification does not define the term with particularity, which may support an interpretation that it means any common protocol used for receiving the initial user-directed instruction, as distinct from the various device-specific protocols.
- Evidence for a Narrower Interpretation: The patent focuses on industrial control systems. A defendant may argue that in this context, the term implies a more specific industrial or data-exchange protocol rather than the general-purpose protocols of the web.
Term: "plurality of accounts" comprising a "first account, a second account, a third account, and a fourth account" with specific permissions (’871 Patent, Claim 18)
- Context and Importance: This term defines the specific multi-tenant access control structure required by the claim. The infringement case for the ’871 patent hinges on whether the accused system's user management functionality can be shown to implement this exact configuration.
- Evidence for a Broader Interpretation: The specification describes organizing controllers "according to user accounts, with each site master-controller 16 corresponding to at least one user account and some user accounts corresponding to multiple site master-controllers 16." (’871 Patent, col. 7:25-29). This suggests flexibility in how accounts are structured.
- Evidence for a Narrower Interpretation: The detailed recitation of four distinct accounts with specific relationships (e.g., first account controls what the third account views) may be interpreted as a strict structural requirement. The defense might argue that a generic role-based permission system does not inherently create this specific four-part structure unless configured in a particular, and perhaps atypical, way.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by providing "product manuals and other technical information" that instruct and encourage customers to use the OnPing system in an infringing manner. (Compl. ¶¶ 45, 69).
- Willful Infringement: Willfulness is alleged based on Defendants' knowledge of the Asserted Patents since "at least as early as the filing of this lawsuit," and potentially earlier if Defendants' employees accessed Plaintiff's public patent marking information online. (Compl. ¶¶ 50, 61, 74).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of factual mapping: can Plaintiff produce evidence demonstrating that the accused OnPing system is actually configured and used by customers in a manner that satisfies the specific four-part account structure of Claim 18 of the ’871 Patent, which requires distinct user groups for controlling versus viewing two separate sets of facilities?
- A key legal question will be one of definitional scope: can the term "shared protocol" in Claim 1 of the ’078 Patent be construed to encompass general-purpose web protocols used for user-to-server communication, or is its meaning limited by the patent's context to a more specific type of industrial data protocol?
- An evidentiary question will be one of functional interpretation: does the accused system's alleged use of VFDs to ramp up motor speed constitute "determining a plurality of different target states," as required by claims in the ’078, ’403, and ’461 patents, or is this an inherent hardware function outside the scope of the claimed software-directed process?