DCT
7:18-cv-00185
Endurance Lift Solutions LLC v. Finalrod IP LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Endurance Lift Solutions, LLC (Delaware)
- Defendant: Finalrod IP, LLC, and R2R AND D, LLC d/b/a Superod (Texas)
- Plaintiff’s Counsel: Morgan, Lewis & Bockius LLP
- Case Identification: 7:18-cv-00185, N.D. Tex., 07/16/2018
- Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because Defendants are Texas limited liability companies with their primary places of business located in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its Series 300 end fittings do not infringe Defendants' patents related to sucker rod apparatus, and that those patents are invalid.
- Technical Context: The dispute centers on technology for end fittings used to connect segments of fiberglass sucker rods, which are critical components in artificial lift systems for oil and gas production.
- Key Procedural History: The complaint states that this action arises in the context of a separate, pre-existing lawsuit where Defendants asserted the same patents against Plaintiff’s earlier "Series 200" product line. Plaintiff alleges that Defendants have threatened to expand the scope of that litigation to include the "Series 300" product, creating the basis for this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-09 | Priority Date for ’757 and ’951 Patents |
| 2015-06-02 | ’951 Patent Issued |
| 2015-11-10 | ’757 Patent Issued |
| 2018-06-15 | Fact Discovery Deadline in Separate Lawsuit |
| 2018-07-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,181,757 - “Sucker Rod Apparatus and Method,” issued November 10, 2015
The Invention Explained
- Problem Addressed: Conventional methods for connecting fiberglass sucker rods can create high stress concentrations where the rod enters the metal end fitting, leading to premature failure of the rod, a condition described as "pinching" (’951 Patent, col. 2:10-23). This requires costly and time-consuming operations to retrieve the broken rod string from the wellbore (Compl. ¶1; ’951 Patent, col. 2:18-23).
- The Patented Solution: The invention describes an end fitting with an internal "wedge system" designed to distribute operational forces more effectively along the fiberglass rod. The system utilizes wedge-shaped portions with specific geometries, including an "arcuate apogee" and "perigee," to create a force differential that concentrates compressive forces toward the stronger, closed end of the fitting and away from the more vulnerable open end (’757 Patent, Abstract; col. 3:41-50).
- Technical Importance: This design approach aims to mitigate a primary failure mode in fiberglass sucker rods, thereby increasing the operational life and reliability of artificial lift systems in oil and gas wells (’951 Patent, col. 2:39-53).
Key Claims at a Glance
- The complaint seeks a declaration of invalidity and non-infringement for all claims but focuses its non-infringement argument on Claim 1 (Compl. ¶¶23, 32).
- Independent Claim 1 requires, in relevant part:
- An end fitting for a sucker rod comprising: an exterior surface, a closed end, an open end, and an interior surface;
- the interior surface comprising a wedge system defining a cavity, wherein the wedge system comprises at least one wedge shaped portion having an arcuate apogee, a perigee, a leading edge and a trailing edge;
- each apogee forming an arcuate perimeter that is the narrowest part of the cavity and each perigee forming a perimeter that is the widest part of the cavity;
- such that the leading edge is longer than the trailing edge; and
- such that a force differential along the wedge greater at the closed end of the fitting and decreasing toward the open end of the fitting system is created having compressive forces.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,045,951 - “Sucker Rod Apparatus and Method,” issued June 2, 2015
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem of stress-induced failure in fiberglass sucker rods at the junction with a metal end fitting, which can sever the sucker rod string downhole (’951 Patent, col. 2:10-23).
- The Patented Solution: This invention employs a multi-part wedge system within the end fitting, comprising distinct "outer," "intermediate," and "inner" wedge portions. The geometry of each wedge portion—specifically the respective lengths of their "leading" and "trailing" edges and the angles between them—is configured to create a graduated distribution of force. This design ensures that the compressive load on the rod is greatest near the closed end of the fitting and progressively less toward the open end (’951 Patent, Abstract; col. 3:25-45).
- Technical Importance: By actively managing the distribution of stress, the invention provides a structural solution intended to enhance the durability of sucker rod assemblies and reduce operational failures (’951 Patent, col. 2:45-53).
Key Claims at a Glance
- The complaint seeks a declaration of invalidity and non-infringement for all claims but centers its non-infringement analysis on Claim 7 (Compl. ¶¶38, 51).
- Independent Claim 7 requires, in relevant part:
- An end fitting for a sucker rod comprising: a body having an interior, a closed end, an open end, and a wedge system formed in the interior;
- The wedge system comprises an outer wedge portion, an intermediate wedge portion, and an inner wedge portion, each with a leading edge, a trailing edge, and an angle;
- wherein the first trailing edge, the second trailing edge, and the third trailing edge differ in length;
- such that a compressive load applied at the inner portion is greater than at the intermediate portion, which is in turn greater than at the outer portion; and
- such that compressive forces applied to the sucker rod at the closed end of the body exceed compressive forces at the open end of the body.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Plaintiff’s "Series 300" end fittings (Compl. ¶10).
Functionality and Market Context
The complaint describes the Series 300 end fittings as a new design for use with fiberglass sucker rods in artificial lift operations for oil and gas wells (Compl. ¶¶9-10). It alleges the Series 300 offers competitive advantages, such as being "lighter and hav[ing] a narrower outer diameter than currently existing end fittings," which reduces space and power consumption (Compl. ¶10). The complaint does not provide technical details on the internal structure or operational mechanics of the Series 300, focusing instead on what it allegedly does not do in relation to the patent claims (Compl. ¶¶33, 52). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following tables summarize the Plaintiff's core allegations as to why its product does not meet the claim limitations.
’757 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...such that a force differential along the wedge greater at the closed end of the fitting and decreasing toward the open end of the fitting system is created having compressive forces. | The Series 300 end fitting "does not have 'a force differential along the wedge system is created having compressive forces greater at the closed end of the fitting and decreasing toward the open end of the fitting.'" | ¶33 | col. 3:41-50 |
- Identified Points of Contention:
- Scope Questions: A central issue may be the proper construction of the phrase "force differential... greater at the closed end... and decreasing toward the open end." Questions may arise as to whether this requires a specific gradient of force reduction or if any profile where the force at the closed end is highest and generally lessens toward the open end meets the limitation.
- Technical Questions: The primary factual dispute will be whether the Series 300 end fitting, in operation, actually generates the force differential required by the claim. The complaint makes a conclusory denial without providing technical evidence regarding the force distribution profile of the accused product.
’951 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Plaintiff's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...such that compressive forces applied to the sucker rod at the closed end of the body exceed compressive forces at the open end of the body. | The Series 300 end fittings "does not have 'compressive forces applied to the sucker rod at the closed end of the body [that] exceed compressive forces at the open end of the body.'" | ¶52 | col. 3:25-33 |
- Identified Points of Contention:
- Scope Questions: The interpretation of "at the closed end" and "at the open end" may be disputed. The parties may contest whether these terms refer to specific points, averaged forces over a region, or peak forces.
- Technical Questions: The core of the non-infringement case rests on the factual question of the force dynamics within the Series 300 fitting. The complaint does not offer data or a technical explanation to support its assertion that forces at the closed end do not exceed those at the open end.
V. Key Claim Terms for Construction
The Term: "such that a force differential... is created having compressive forces greater at the closed end... and decreasing toward the open end" (’757 Patent, Claim 1)
Context and Importance: This functional language is the lynchpin of Plaintiff's non-infringement argument for the ’757 patent. The definition of this term—specifically, whether it is tied to the patent's disclosed structures or can be read more broadly—will be critical to determining the scope of the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue that the "such that" clause defines the claim by its function, meaning any structure that achieves this specific force distribution profile infringes. The specification describes the overall goal as preventing destruction of the sucker rod by "distributing compressive forces at multiple points" (’951 Patent, col. 2:32-34).
- Evidence for a Narrower Interpretation: The declaratory judgment plaintiff may argue that the claim's functional language must be interpreted in light of the specification's disclosure, which ties the creation of the force differential to a specific "wedge shaped portion having an arcuate apogee, a perigee, a leading edge and a trailing edge" (’757 Patent, Claim 1).
The Term: "such that compressive forces applied to the sucker rod at the closed end of the body exceed compressive forces at the open end of the body" (’951 Patent, Claim 7)
Context and Importance: This is the key limitation Plaintiff alleges its product does not meet for the ’951 patent. Its construction will likely determine the outcome of the infringement analysis. Practitioners may focus on this term because it appears purely functional, but it follows a detailed recitation of structural elements.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent owner may contend this is a straightforward functional requirement: if a measurement shows higher force at the closed end than the open end, the limitation is met, irrespective of the mechanism. The claim language does not quantify the required difference in force.
- Evidence for a Narrower Interpretation: Plaintiff may argue that this functional result is defined by the preceding structural limitations in the claim, namely the system of three distinct wedges whose "trailing edge[s] differ in length" to produce the outcome (’951 Patent, Claim 7). The abstract links the force distribution directly to the "triangular configuration, length of the leading edge, the length of the trailing edge, and size of the angle in each wedge portion" (’951 Patent, Abstract).
VI. Other Allegations
- Indirect Infringement: The complaint contains a general denial that Plaintiff "induces others to infringe" or "contributes to the infringement by others" (Compl. ¶17). No specific facts are alleged by either party regarding inducement or contributory infringement.
- Willful Infringement: The complaint does not contain allegations of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope: will the functional "such that" clauses in the asserted claims be interpreted broadly to cover any device that achieves the claimed force distribution, or will their scope be limited to devices that operate using the specific multi-wedge structures and geometries described in the patent specifications?
- A key evidentiary question will be one of technical proof: what evidence will Plaintiff present to support its conclusory allegation that its Series 300 end fittings do not generate greater compressive forces at the closed end than the open end, and how will Defendants rebut that evidence through testing and expert analysis?
- The case will also turn on a parallel question of validity: does the prior art cited in the complaint, such as the Morrow and Iwasaki patents, disclose every element of the asserted claims, rendering them invalid as anticipated or obvious?