DCT
2:23-cv-00236
Masaba Inc v. Solaris Oilfield Site Services Operating LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Masaba, Inc. (South Dakota)
- Defendant: Solaris Oilfield Infrastructure, Inc. (Delaware)
- Plaintiff’s Counsel: Williams, Porter, Day & Neville, P.C.
- Case Identification: 2:23-cv-00236, D. Wyo., 12/14/2023
- Venue Allegations: Venue is alleged to be proper in the District of Wyoming because Defendant Solaris has committed acts of infringement in the district, including placing at least one accused system into service there, and maintains a regular and established place of business in Casper, Wyoming.
- Core Dispute: Plaintiff alleges that Defendant’s "Top Fill Sand Loading System" infringes a patent related to a mobile, self-deploying aggregate transferring system used for filling silos in the hydraulic fracturing industry.
- Technical Context: The technology concerns large-scale, portable conveyor systems designed to rapidly transfer proppant, such as frac sand, from transport vehicles into storage silos at oil and gas well sites, a critical step in the energy extraction supply chain.
- Key Procedural History: The complaint alleges a prior business relationship where Plaintiff Masaba designed and built a "Top Fill System" for Defendant Solaris. After delivering one unit marked "PATENT PENDING" and failing to agree on terms for future units, Masaba alleges Solaris copied the design. The complaint also notes that Masaba’s counsel formally advised Solaris of its pending patent application in April 2022, more than a year before the patent issued.
Case Timeline
| Date | Event |
|---|---|
| 2020-06-15 | Masaba approached to design a portable top fill silo system for Solaris (approx. "mid-2020") |
| 2021-01-15 | Masaba begins work on the "Bucket Elevator Design" concept (approx. "January 2021") |
| 2021-07-21 | '689 Patent Priority Date (Provisional Application No. 63/223,124 filed) |
| 2021-10-15 | Masaba delivers first "Top Fill System" to Solaris, marked "PATENT PENDING" (approx. "October 2021") |
| 2022-04-15 | Masaba's counsel formally advises Solaris of its patent application (approx. "April 2022") |
| 2023-10-10 | U.S. Patent No. 11,780,689 Issues |
| 2023-12-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,780,689 - “Aggregate Transferring System,” issued October 10, 2023
The Invention Explained
- Problem Addressed: The patent describes a need for a material handling apparatus capable of receiving aggregate, like sand, from a vehicle and elevating it for deposit into a structure like a silo (’689 Patent, col. 1:13-19). The detailed description notes the advantage of an apparatus that can "deploy itself at the location of transfer without the need for any significant assistance from other apparatus, such as cranes or telescopic handlers," thereby minimizing deployment complexity and personnel requirements (’689 Patent, col. 4:54-65).
- The Patented Solution: The invention is a highly integrated, mobile aggregate transfer system. It consists of a wheeled base assembly with an unloader structure, a large elevating assembly with a "deployable frame" that moves from a horizontal transport position to a vertical operational position, and a "conveyor extension assembly" at the top (’689 Patent, Abstract). This extension assembly is itself articulated with inboard and outboard segments, allowing it to pivot and extend horizontally to precisely position its outlet over one or more silos (’689 Patent, col. 1:50-col. 2:8; Fig. 1A).
- Technical Importance: The claimed system's "self-deploy" capability and integrated design address a key logistical challenge in the oilfield services industry: the need for rapid, efficient, and safe setup of heavy equipment at temporary well sites (’689 Patent, col. 4:54-65).
Key Claims at a Glance
- The complaint asserts independent claims 1, 12, 13, 16, 22, 23, and 25 (Compl. ¶53).
- Independent Claim 1 recites an apparatus comprising three main assemblies:
- A "base assembly" with a base frame, an unloader structure, and a base conveyor.
- An "aggregate elevating assembly" with a deployable frame movable between a storage position and a deploy position, and an elevating conveyor.
- A "conveyor extension assembly" with an extension conveyor that is "articulated" via an inboard segment, an outboard segment, and associated pivots.
- Independent Claim 12 recites a similar apparatus with additional structural details, including:
- A "trailer structure" on the aggregate elevating assembly that includes at least one "landing leg" and a "kingpin" for towing.
- The complaint reserves the right to assert numerous dependent claims (Compl. ¶54).
III. The Accused Instrumentality
Product Identification
- The "Solaris Top Fill Sand Loading System" (the "Infringing System") (Compl. ¶40, ¶43).
Functionality and Market Context
- The accused system is marketed as a "new, faster alternative to sand loading at the wellsite" that increases efficiency and has a truck offload rate of 400 tons per hour (Compl. ¶43-44).
- The complaint alleges that the accused system is "substantially identical to the one designed, constructed, and patented by Masaba" (Compl. ¶42). To support this, the complaint provides dimensional drawings from Solaris's website. These drawings depict a mobile apparatus with a long base, a vertical truss, and an articulated horizontal boom at the top (Compl. p. 8, Ex. 5).
- The complaint alleges significant commercial use, stating Solaris has thirty-five active systems in service across eight states, which have collectively unloaded thirteen million tons of sand (Compl. ¶41, ¶45).
IV. Analysis of Infringement Allegations
The complaint alleges that the Solaris Top Fill Sand Loading System is "substantially identical" to Masaba's patented design and infringes the '689 Patent (Compl. ¶42). The complaint includes patent figures for comparison with images of the accused product (Compl. p. 7-8).
’689 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an aggregate transferring apparatus for elevating and transferring aggregate | The accused "Top Fill Sand Loading System" is used for loading sand at a wellsite (Compl. ¶43). | ¶43 | col. 1:13-19 |
| a base assembly for receiving aggregate... comprising: a base frame..., an unloader structure..., and a base conveyor... | Visuals of the accused system show a long, wheeled base frame with a structure for receiving material from a truck (Compl. p. 8, Ex. 5). | ¶40, ¶42 | col. 1:22-35 |
| an aggregate elevating assembly for elevating aggregate... comprising: a deployable frame mounted on the base frame and being movable between a storage position and a deploy position... | The accused system includes a large vertical truss structure that elevates the aggregate, which the complaint alleges is a copy of the patented design (Compl. p. 8, Ex. 5). | ¶40, ¶42 | col. 1:36-48 |
| a conveyor extension assembly for conveying aggregate... the extension conveyor being movable with respect to the aggregate elevating assembly... | The accused system features a horizontal conveyor at the top of the vertical truss (Compl. p. 8, Ex. 5). | ¶40, ¶42 | col. 1:49-60 |
| wherein the extension conveyor is articulated between the inlet and outlet with an inboard segment and an outboard segment... | The horizontal conveyor depicted in the accused system's drawings appears to be composed of at least two segments, suggesting it is articulated (Compl. p. 8, Ex. 5). | ¶40, ¶42 | col. 2:1-8 |
- Identified Points of Contention:
- Scope Questions: The complaint's allegations are high-level, relying on claims of the systems being "substantially identical." A central question will be whether the specific components of the Solaris system meet the structural limitations of the claims. For example, does the Solaris extension conveyor have distinct "inboard" and "outboard" segments connected by pivots that function as claimed?
- Technical Questions: The patent describes a specific "self-deploy" mechanism where the elevating frame moves from a storage to a deploy position (’689 Patent, col. 8:30-55). Evidence will be required to determine if the accused system’s deployment mechanism operates in the same way and meets the limitations of claims reciting that functionality. The complaint does not provide sufficient detail for analysis of this specific element.
V. Key Claim Terms for Construction
The Term: "articulated"
Context and Importance: The maneuverability of the "conveyor extension assembly", achieved through its "articulated" nature, appears to be a key feature of the invention. The definition of this term will be critical for determining the scope of claims covering the extension boom. Practitioners may focus on this term because the patent consistently illustrates a specific two-segment, two-pivot configuration (’689 Patent, Fig. 8A-8C), which may create a dispute over whether the term is limited to that embodiment.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue for the term's plain and ordinary meaning of being "jointed" or having sections connected by a flexible joint, without limitation to the number of segments or pivots.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the extension conveyor as comprising an "inboard segment 130" and an "outboard segment 132," connected by an "outboard pivot 136," while the inboard segment connects to the main frame via an "inboard pivot 134" (’689 Patent, col. 9:11-26). A party could argue this consistent description limits the term to this specific structure.
The Term: "movable between a storage position and a deploy position"
Context and Importance: This phrase relates to the core "self-deploying" feature of the elevating assembly. How the frame moves is central to infringement. The dispute may turn on whether any mechanism for moving from horizontal to vertical infringes, or only one that is structurally similar to the detailed embodiment.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad. The "storage position" is described as corresponding to a "transport configuration," and the "deploy position" to an "operational configuration" (’689 Patent, col. 16:37-43). This could support a construction covering any movement between these two general states.
- Evidence for a Narrower Interpretation: The specification and figures describe a specific linkage system to achieve this movement, comprising "lift arm structures" (92, 94) and a "lift actuator" (116) (’689 Patent, col. 8:36-col. 9:28; Figs. 5A-5D). A party might argue these detailed embodiments limit the scope of "movable" to the disclosed mechanism or its equivalent.
VI. Other Allegations
- Indirect Infringement: The complaint pleads active inducement of infringement under 35 U.S.C. § 271(b), alleging Solaris induces others to use the infringing system (Compl. ¶55). The complaint does not, however, specify the acts of inducement, such as providing user manuals or instructions.
- Willful Infringement: The complaint alleges willful infringement based on both pre- and post-suit knowledge (Compl. ¶56). The factual basis includes allegations that Solaris: (1) was involved in the initial design process with Masaba; (2) received delivery of a system marked "PATENT PENDING" in October 2021; (3) was repeatedly advised by a third party of Masaba's patent application; (4) received formal notice of the application from Masaba's counsel in April 2022; and (5) "deliberately" copied the system after the business relationship soured (Compl. ¶28, ¶37, ¶38, ¶40, ¶59).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and interpretation: Can the asserted claims, particularly terms like "articulated" and "movable between a storage position and a deploy position", be construed broadly enough to read on the accused Solaris system, or will they be limited to the specific embodiments detailed in the patent’s specification and figures?
- A key evidentiary question will be the strength of the willfulness allegations: The complaint presents a compelling narrative of a partnership breakdown followed by alleged copying. The extent to which discovery substantiates the claims of deliberate copying and pre-issuance knowledge of Masaba's intellectual property rights will be central to the willfulness determination and potential for enhanced damages.
- An additional point of interest will be the interplay of patent and state law claims: The case includes counts for unjust enrichment and promissory estoppel rooted in the failed business deal. How these equitable claims for recovery of development costs proceed alongside the patent infringement claim will be a significant procedural and substantive aspect of the litigation.