SWM Intl LLC v. Jacksboro Supply Co LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: SWM International, LLC (Delaware)
  • Defendant: Jacksboro Supply Company, LLC (Delaware); Reach Wireline, LLC (Delaware)
  • Plaintiff’s Counsel: Cabello Hall Zinda, PLLC
• Case Identification: 7:25-cv-00506, W.D. Tex., 10/31/2025
• Venue Allegations: Plaintiff alleges venue is proper against Defendant Reach Wireline based on its regular and established places of business within the district, specifically facilities in Midland and Pleasanton, Texas. Venue against Defendant Jacksboro Supply Company is alleged based on both its own physical presence at customer well sites within the district and an alter ego theory, asserting that the two defendants are intricately intertwined through shared employees, addresses, and business operations.
• Core Dispute: Plaintiff alleges that Defendants’ ORIEN self-orienting perforating gun system infringes five patents related to downhole perforating gun technology that uses gravity to properly orient explosive charges.
• Technical Context: The technology pertains to perforating guns used in oil and gas wells to create openings in the wellbore casing, a critical step for hydrocarbon production. Self-orienting capabilities are designed to improve the accuracy, efficiency, and safety of these downhole operations.
• Key Procedural History: The complaint notes that U.S. Patent No. 11,078,762 was the subject of an inter partes review (IPR) proceeding (IPR2022-01372). The complaint states that while some claims were challenged, others were not, and some of the challenged claims were not found to be unpatentable. This PTAB proceeding may create estoppel effects, potentially limiting the invalidity arguments Defendants can raise against the surviving claims of that patent.

Case Timeline

Date	Event
2019-03-05	Earliest Priority Date for ’762, ’539, ’945, and ’864 Patents
2021-08-03	U.S. Patent No. 11,078,762 Issued
2024-02-02	Priority Date for ’284 Patent
2024-02-05	PTAB Decision in IPR for ’762 Patent (IPR2022-01372)
2024-05-07	U.S. Patent No. 11,976,539 Issued
2025-02-11	U.S. Patent No. 12,221,864 Issued
2025-04-08	U.S. Patent No. 12,270,284 Issued
2025-05-06	U.S. Patent No. 12,291,945 Issued
2025-10-31	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,078,762 - Downhole Perforating Gun Tube and Components

• Patent Identification: U.S. Patent No. 11,078,762, Downhole Perforating Gun Tube and Components, issued August 3, 2021.

The Invention Explained

• Problem Addressed: The complaint describes conventional perforating guns as suffering from drawbacks such as increased friction in the wellbore, inaccurate aiming of explosive charges, and the need for time-consuming manual alignment (Compl. ¶26). The patent addresses the general need for perforating a wellbore after it has been lined with casing and cement to allow hydrocarbons to flow from the formation into the wellbore (’762 Patent, col. 1:10-31).
• The Patented Solution: The invention is a gun tube for a perforating gun assembly that uses gravity to self-orient. It includes a body containing one or more weights within an internal cavity (’762 Patent, Abstract). When the gun is in a horizontal section of a well, gravity acts on these weights, causing the gun body to rotate around its longitudinal axis until the weights settle at the lowest point. This rotation passively orients the explosive charges within the gun to a desired firing position relative to the wellbore (’762 Patent, col. 1:39-48). Key components include the gun tube body (12) containing weights (124A, 124B) and end fittings (16, 20) with bearing assemblies (26) that allow for this rotation (’762 Patent, Fig. 1; col. 6:3-11).
• Technical Importance: This gravity-based, self-orienting mechanism is intended to automate the alignment of perforating charges, thereby improving accuracy and operational efficiency in horizontal well completions (Compl. ¶26, p. 22).

Key Claims at a Glance

• The complaint asserts at least dependent claim 5, which incorporates independent claim 1 (Compl. ¶33).
• The essential elements of independent claim 1 include:
  • An outer casing with a longitudinal axis.
  • A gun body concentrically disposed and rotatable within the outer casing.
  • One or more explosive charges coupled to the gun body.
  • A collar.
  • A bearing assembly, at least partially within the collar, that allows the gun body to rotate.
  • One or more weights, where the gun body is rotatable by the weights via the bearing assembly based on gravity.
• The complaint states Plaintiff will identify all infringed claims pursuant to local rules or after discovery (Compl. ¶29).

U.S. Patent No. 11,976,539 - Downhole Perforating Gun Tube and Components

• Patent Identification: U.S. Patent No. 11,976,539, Downhole Perforating Gun Tube and Components, issued May 7, 2024.

The Invention Explained

• Problem Addressed: Similar to the ’762 Patent, this patent addresses the need for properly orienting perforating guns downhole to effectively create flow paths for hydrocarbons (Compl. ¶25; ’539 Patent, col. 1:20-33).
• The Patented Solution: The patent describes a perforating gun assembly where an "inner body" (containing explosive charges) has an offset weight. This inner body is situated within an "outer casing." An "arrangement" that includes a collar, support, and bearing assembly allows the inner body to rotate relative to the outer casing. This rotation is driven by gravity acting on the offset weight, thereby orienting the charges as desired (’539 Patent, Abstract; col. 1:44-54).
• Technical Importance: The technology aims to provide a reliable self-orienting capability for perforating guns, which is a key feature for efficiency and effectiveness in modern oil and gas well completions (Compl. p. 22).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶39).
• The essential elements of claim 1 include:
  • An outer casing.
  • An inner body disposed in the casing, having at least one explosive charge receptacle and a weight offset from its longitudinal axis.
  • An arrangement (including a collar, a support, and a bearing assembly) disposed between the collar and support, configured to permit radial orientation of the inner body relative to the outer casing based on the weight.
• The complaint reserves the right to assert additional claims (Compl. ¶29).

U.S. Patent No. 12,291,945 - Downhole Perforating Gun System

• Patent Identification: U.S. Patent No. 12,291,945, Downhole Perforating Gun System, issued May 6, 2025.
• Technology Synopsis: This patent describes a downhole perforating gun system that provides for wireless electrical communication between key components, such as an inner body conductor, a switch, and a detonator. The system also incorporates a weight module and bearing assembly, allowing the functional components to be rotated by gravity (’945 Patent, Abstract).
• Asserted Claims: At least independent claim 1 (Compl. ¶45).
• Accused Features: The complaint alleges that the ORIEN system as a whole infringes this patent (Compl. ¶¶28, 45).

U.S. Patent No. 12,221,864 - Downhole Perforating Gun Tube and Components

• Patent Identification: U.S. Patent No. 12,221,864, Downhole Perforating Gun Tube and Components, issued February 11, 2025.
• Technology Synopsis: This patent discloses a gun tube for a perforating assembly that includes weights in a cavity to enable gravity-based rotation for orienting shape charges. It also describes end connectors with electrical contacts that have a first, extended position and a second, contracted position, suggesting a compressible or spring-biased electrical connection between gun segments (’864 Patent, Abstract).
• Asserted Claims: At least independent claim 1 (Compl. ¶51).
• Accused Features: The complaint accuses the ORIEN system of infringing this patent, suggesting the system incorporates both gravity-based orientation and specific end connector features (Compl. ¶¶28, 51).

U.S. Patent No. 12,270,284 - Perforating Gun Having Grounding Assembly

• Patent Identification: U.S. Patent No. 12,270,284, Perforating Gun Having Grounding Assembly, issued April 8, 2025.
• Technology Synopsis: This patent is directed to a grounding assembly within a perforating gun. It describes a charge holder positioned inside a carrier, with at least one elastic conductor extending between the holder and the carrier. This elastic conductor is in electrical communication with the carrier and a ground signal, aiming to improve the grounding of the charge assembly (’284 Patent, Abstract).
• Asserted Claims: At least independent claim 1 (Compl. ¶57).
• Accused Features: The ORIEN system is alleged to practice the claimed grounding assembly technology (Compl. ¶¶28, 57).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is the "ORIEN self-orienting perforating gun system" ("Accused Product") (Compl. ¶5).

Functionality and Market Context

• The Accused Product is manufactured, sold, and/or offered for sale by Defendant JSC and used by Defendant Reach as part of its "perforating services" in the oil and gas industry (Compl. ¶¶5, 7, 28, 30).
• Marketing materials presented in the complaint describe the ORIEN system as eliminating "gun-building costs," reducing "contact points," and featuring "addressable switch flexibility, best-in-class telemetry, and full Warrior compatibility" (Compl. p. 23). A LinkedIn post from JSC shows several assembled ORIEN perforating guns, which are long, black, cylindrical tools, ready for deployment (Compl. p. 23).
• The complaint alleges that JSC supplies the Accused Products to its affiliate Reach, which then deploys them in wells in the Permian Basin (Compl. ¶7, 34). A social media post depicts a shipment of the ORIEN system on a trailer described as "headed to the Permian Basin," reinforcing its use in the venue where the suit was filed (Compl. p. 11).

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Product infringes at least one claim of each Asserted Patent, stating that non-limiting examples of infringement are provided in claim charts attached as Exhibit F (Compl. ¶29). As Exhibit F was not included with the provided complaint, the following summarizes the narrative infringement theories.

U.S. Patent No. 11,078,762 & U.S. Patent No. 11,976,539 Infringement Allegations

• The complaint asserts that the ORIEN system satisfies every element of at least claim 5 of the ’762 Patent and claim 1 of the ’539 Patent, either literally or under the doctrine of equivalents (Compl. ¶33, ¶39). The infringement theory is based on Defendants importing, making, using, selling, leasing, and/or offering for sale the Accused Product in the United States, including for use by customers in the Permian Basin (Compl. ¶34, ¶40). Without the specific claim charts from Exhibits F-1 and F-2, the complaint does not map specific features of the ORIEN system to the claim elements concerning the rotatable gun body, bearing assembly, and gravity-actuated weights.

Identified Points of Contention

• Technical Questions: A central technical question will be whether the mechanism that enables the "self-orienting" feature of the ORIEN system functions "based on gravity acting on the one or more weights" to cause rotation via a "bearing assembly," as required by the asserted claims, or if it utilizes a different orienting principle. Further, for claim 5 of the '762 Patent, a question will be whether the ORIEN system's electrical connectors have a specific "first, extended position and a second, contracted position," suggesting a compressible or spring-loaded design.
• Scope Questions: The case may raise questions regarding the definitional scope of structural terms like "gun body," "collar," and "bearing assembly." The infringement analysis may turn on whether these terms are construed broadly to cover any components performing the recited functions or more narrowly to reflect the specific structures disclosed in the patents' embodiments, which could present a mismatch with the accused product's design.

V. Key Claim Terms for Construction

The Term: "bearing assembly" (’762 Patent, claim 1; ’539 Patent, claim 1)

• Context and Importance: This term is central to the invention's core function of enabling rotation. The infringement analysis will depend on whether the specific rotational mechanism in the ORIEN system falls within the scope of this term. Practitioners may focus on this term because the precise mechanical means by which the accused product achieves rotation relative to its outer casing is a critical point of comparison.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests a broad, functional definition, stating that the assembly could be a "thrust bearing" and that "Any suitable structure to allow the rotation of tube body 12...may be utilized" (’762 Patent, col. 8:7-10).
  • Evidence for a Narrower Interpretation: The patent discloses a specific embodiment comprising a housing that retains ball bearings (’762 Patent, Fig. 2; col. 8:1-5). Parties may argue that the term should be construed more narrowly in light of this specific disclosure, particularly if the accused product uses a different type of rotational interface, such as a simple low-friction bushing.

The Term: "gun body" (’762 Patent, claim 1) / "inner body" (’539 Patent, claim 1)

• Context and Importance: The claims distinguish this rotatable, weight-and-charge-holding component from the static "outer casing" and other parts like the "collar" and "support." Defining the boundaries of the "body" will be critical for determining if the accused product, which may integrate these parts differently, meets this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification uses "gun tube," "tube," and "gun" interchangeably, and refers to the invention as a "gun tube for a downhole perforating gun assembly" (’762 Patent, Abstract). This could support reading "gun body" as the principal structural component that contains the charges and weights.
  • Evidence for a Narrower Interpretation: The patent figures depict the "tube body 12" as a distinct cylindrical component separate from the end fittings (16, 20), which themselves contain the "collar" (24) and "support" (28) components of the bearing assembly (’762 Patent, Fig. 1, Fig. 2). This could support an argument that the "gun body" is only the tube itself, and not an integrated assembly that includes the end fittings.

VI. Other Allegations

Indirect Infringement

• The complaint does not plead specific facts to support claims for induced or contributory infringement, such as allegations related to user manuals or instructions to third parties.

Willful Infringement

• Willfulness is alleged based on Defendants' continued infringement after having notice of the Asserted Patents via the filing and service of the complaint (Compl. ¶¶35, 41, 47, 53, 59). No allegations of pre-suit knowledge are made.

VII. Analyst’s Conclusion: Key Questions for the Case

1. A core issue will be one of technical operation: does the accused ORIEN system's "self-orienting" feature function "based on gravity acting on...one or more weights" to rotate an inner "gun body" via a "bearing assembly" as recited in the asserted claims, or does it achieve orientation through a fundamentally different mechanical principle?
2. A central question of claim construction will be definitional scope: will terms such as "gun body" and "bearing assembly" be interpreted broadly based on their function, or will they be narrowed to the specific structural embodiments disclosed in the patent specifications, potentially creating a non-infringement defense if the accused product is constructed differently?
3. A key procedural issue for the '762 patent will be the effect of post-grant proceedings: how will the prior inter partes review (IPR2022-01372), which upheld certain claims, affect the presumption of validity and limit the invalidity arguments that Defendants are permitted to raise against the asserted claims of that patent in this litigation?