throbber
CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 1of31
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MINNESOTA
`
`M-I DRILLING FLUIDS UK LTD.
`
`Plaintiff,
`
`v.
`
`DYNAMIC AIR INC.
`
`Defendant.
`
`14-cv-- - - - -
`
`JURY TRIAL DEMANDED
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff M-I Drilling Fluids UK Ltd. alleges as follows:
`
`INTRODUCTION
`
`1.
`
`This is an action brought by M-I Drilling Fluids UK Ltd. ("M-I Drilling" or
`
`"Plaintiff') against Dynamic Air Inc. ("DAI" or "Defendant") for DAI's direct, induced,
`
`and/or contributory infringement of patents owned by M-I Drilling. In particular, DAI
`
`has directly infringed, and induced and contributed to the infringement of, U.S. Patent
`
`v
`
`Nos. 6,702,539 (the '"539 Patent"), 6,709,217 (the "'217 Patent"), 7,033,124 (the "'124
`
`Patent"), 7,186,062 (the '"062 Patent"), and 7,544,018 (the "'018 Patent") (collectively,
`
`the "Asserted Patents"). This action arises under the patent laws of the United States, 35
`
`U.S.C. § 100, et seq.
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 2 of 31
`
`PARTIES
`
`2.
`
`M-I Drilling is a foreign private limited company existing under the laws of
`
`the United Kingdom, with its principal place of business at Porca Quay, Aberdeen,
`
`Aberdeenshire, AB 11 5DQ, United Kingdom.
`
`3.
`
`Defendant Dynamic Air Inc. is a corporation existing under the laws of the
`
`State of Minnesota, with its principal place of business at 1125 Willow Lake Blvd, Saint
`
`Paul, MN 55110.
`
`BACKGROUND, JURISDICTION AND VENUE
`
`BACKGROUND
`
`I.
`
`M-1 DRILLING, CLEANCUT® TECHNOLOGY, AND THE
`ASSERTED PA TENTS
`
`4.
`
`M-I Drilling is a leading supplier of drilling fluid systems and equipment
`
`engineered to improve drilling performance by anticipating fluids-related problems, fluid
`
`I
`
`systems and specialty tools designed to optimize wellbore productivity, production
`
`technology solutions to maximize production rates, and environmental solutions that
`
`safely manage waste volumes generated in both drilling and production operations.
`
`5.
`
`When oil wells are drilled, the subterranean formation cuttings from the
`
`drilling operation are brought to the drilling rig on the surface. An example of such a
`
`drilling rig is an offshore drilling platform. When brought to the surface, drill cuttings
`
`are in slurry with drilling fluid, and after some degree of separation from the drilling
`
`fluid, form a very thick heavy paste. Drill cuttings must be disposed of in an
`
`environmentally-safe way and are typically transported off of the rig for processing
`
`- 2 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 3 of 31
`
`elsewhere. Oftentimes, ships will receive drill cuttings from the oil rig and transport
`
`them to shore for processing.
`
`6.
`
`One of the products and services that M-I Drilling offers its customers in
`
`the United States is the CLEANCUT® pneumatic drill cuttings collections and
`
`containment system, which is the most widely-used technology for safely handling
`
`drilling waste offshore. CLEANCUT® has been used to effectively complete hundreds
`
`of well sections with nearly 2 million barrels of cuttings safely collected and transported.
`
`7.
`
`The Asserted Patents are directed to methods, systems and apparatuses used
`
`for collecting, conveying, transporting, and storing non-free flowing pastes, such as fluid
`
`containing drill cuttings, in an environmentally-safe way. The Asserted Patents provide a
`
`novel way to pneumatically convey non-free flowing pastes, such as drill cuttings, using
`
`compressed gas and one or more containers or vessels. 1 The claims of the Asserted
`
`Patents cover, inter alia, stand-alone pneumatic conveyance systems as well as systems
`
`specifically located or used aboard a receiving ship.
`
`8.
`
`9.
`
`M-I Drilling is the owner by assignment of all of the Asserted Patents.
`
`The '539 Patent, entitled Pneumatic Conveying, was duly and lawfully
`
`issued on March 9, 2004. M-I Drilling is the current owner of all rights, title, and interest
`
`in the '5 3 9 Patent. A true and correct copy of the '5 3 9 Patent is attached hereto as
`
`Exhibit A.
`
`1 It should be noted that the "vessel" claimed and discussed by the Asserted Patents is not
`the ship or the oil rig - it is a containment structure for the cuttings.
`
`- 3 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 4 of 31
`
`10.
`
`The '217 Patent, entitled Method of Pneumatically Conveying Non-Free
`
`Flowing Paste, was duly and lawfully issued on March 23, 2004. M-I Drilling is the
`
`current owner of all rights, title, and interest in the '217 Patent. A true and correct copy
`
`of the '217 Patent is attached hereto as Exhibit B.
`
`11.
`
`The '124 Patent, entitled Method and Apparatus for Pneumatic Conveying
`
`of Drill Cuttings, was duly and lawfully issued on April 25, 2006. M-I Drilling is the
`
`current owner of all rights, title, and interest in the '124 Patent. A true and correct copy
`
`of the '124 Patent is attached hereto as Exhibit C.
`
`12.
`
`The '062 Patent, entitled Method and Apparatus for Pneumatic Conveying
`
`of Drill Cuttings, was duly and lawfully issued on March 6, 2007. M-I Drilling is the
`
`current owner of all rights, title, and interest in the '062 Patent. A true and correct copy
`
`of the '062 Patent is attached hereto as Exhibit D.
`
`13.
`
`The '018 Patent, entitled Apparatus for Pneumatic Conveying of Drill
`
`Cuttings, was duly and lawfully issued on June 9, 2009. M-I Drilling is the current
`
`owner of all rights, title, and interest in the 'O 18 Patent. A true and correct copy of the
`
`'018 Patent is attached hereto as Exhibit E.
`
`II.
`
`DYNAMIC AIR INC. AND THE INFRINGING CONVEYING
`SYSTEMS
`
`Dynamic Air Inc. ("DAI")
`
`14.
`
`Defendant DAI claims on its website that it is a "world renowned"
`
`developer, designer and manufacturer of pneumatic (gas-driven) conveyance systems
`
`sold "worldwide." DAI provides custom-designed pneumatic systems for world-wide
`
`- 4 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 5 of 31
`
`customers in various industries and for various materials. These pneumatic conveyance
`
`systems use compressed air or gas to move dry bulk solids from one location to another.
`
`DAI claims to have designed and manufactured over 15,000 pneumatic conveyance
`
`systems worldwide, including systems for loading dry bulk materials onto and off of
`
`railroad cars.
`
`15.
`
`Each DAI system 1s custom-designed depending on the needs of the
`
`customer. DAI works closely with its customers to provide specifically-designed
`
`pneumatic solutions for the customer's application, including visiting the customer's site.
`
`DAI also boasts a fully-equipped testing laboratory where DAI tests the customer's
`
`materials in order to determine the appropriate parameters and design of the system.
`
`16.
`
`In addition
`
`to developing, designing and manufacturing complete
`
`pneumatic conveyance systems, DAI offers support services for its systems on a
`
`worldwide basis, including onsite staii up assistance and troubleshooting.
`
`The Accused Systems
`
`17.
`
`Sometime between October 2011 and January 2012, a Brazilian subsidiary
`
`?f DAI called Dynamic Air Ltda. ("DAL") submitted a bid in response to a Request for
`
`Proposal ("RFP") from Petr6leo Brasileiro S.A. Cf~~!robras") for a pneumatic
`
`conveyance system that could be used to remove drill cuttings from an oil rig. M-1
`
`Drilling's sister company and customer, M-I Swaco do Brasil - Comercio, Servicos E
`
`Mineracao Ltda. ("M-1 Brazil"), submitted a bid in response to the RFP as well.
`
`18.
`
`DAL had never designed a pneumatic conveyance system for the transfer of
`
`drill cuttings prior to submitting this bid.
`
`- 5 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 6 of 31
`
`19. DAL won the contract but because DAL was unable to commit to perform
`
`the contract by itself, it entered into the contract with DAI as its "partner." Pursuant to
`
`this contract, DAI directed the design, manufacture and installation of certain pneumatic
`
`conveyance systems for Petrobras that convey, contain, and transport drill cuttings from
`
`oil drilling rigs located in international waters.
`
`20.
`
`DAI then directed that DAL install these conveyance and containment
`
`systems aboard at least two U.S.-flagged ships: the HOS Resolution and the HOS
`
`Pinnacle (hereinafter "Accused Systems"). As described below in paragraphs 41-131,
`
`these Accused Systems infringe the Asserted Patents when the Accused Systems are
`
`made, used, sold for use, or offered for sale for use aboard the U.S.-flagged ships.
`
`21. DAI provided and continues to provide onsite support for the Accused
`
`Systems, including supervising and assisting in the installation and startup of the systems
`
`aboard the two U.S.-flagged ships.
`
`22.
`
`The Accused Systems are operated on the U.S.-flagged ships either directly
`
`by DAI or under the direction and supervision of DAI.
`
`23. On or around January 2013, the Accused Systems were manufactured, sold,
`
`delivered and installed aboard the U.S.-flagged ship HOS Resolution. These activities
`
`were either performed directly by DAI or at the direction of DAI.
`
`24.
`
`Beginning on or around February 2013, the Accused Systems were then
`
`used to pneumatically convey drill cuttings from offshore rig P-59,
`
`located in
`
`international waters onto and off of the U.S.-flagged ship HOS Resolution in an
`
`- 6 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 7 of 31
`
`infringing way and this infringing activity has continued since that time. These activities
`
`were either performed directly by DAI or at the direction of DAI.
`
`25.
`
`DAI provided the conception and design of the pneumatic conveyance
`
`system and additionally supervised and assisted with its manufacture and installation
`
`aboard the U.S.-flagged HOS Resolution. Further, DAI employees visited the system to
`
`assist and supervise its manufacture and installation. DAI employees continue to visit the
`
`system aboard the U.S.-flagged HOS Resolution and provide instructions for its use.
`
`During these visits, DAI employees use the system.
`
`26. On or around August 2013, a similar Accused System was manufactured,
`
`sold, delivered and installed aboard the U.S.-flagged HOS Pinnacle, which pneumatically
`
`conveys drill cuttings from offshore rig P-III, located in international waters in a manner
`
`that infringes the Asserted Patents. Shortly after this, the Accused System began to be
`
`used to pneumatically convey drill cuttings onto and off of the U.S, flagged HOS
`
`Pinnacle in an infringing way and this infringing activity has continued since that time.
`
`These activities were either performed directly by DAI or at the direction of DAI.
`
`27. As with the system aboard the U.S.-flagged HOS Resolution, DAI directly
`
`or indirectly designed, provided and ultimately operated the pneumatic conveyance
`
`system on the US-flagged HOS Pinnacle. Specifically, DAI provided the conception and
`
`design of the pneumatic system and additionally supervised and assisted with its
`
`manufacture and installation aboard the U.S.-flagged HOS Pinnacle. Further, DAI
`
`employees visited the system to assist and supervise its manufacture and installation.
`
`- 7 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 8 of 31
`
`DAI employees continue to visit the system aboard the U.S.-flagged HOS Pinnacle and
`
`provide instructions for its use. During these visits, DAI employees use the system.
`
`28.
`
`Because of these infringing activities, on August 29, 2013, M-I Drilling
`
`sent DAI (as well as DAL) a cease and desist letter notifying them of the Asserted Patents
`
`and how their activities infringe the Asserted Patents.
`
`29.
`
`On August 30, 2013 M-I Drilling filed a patent infringement complaint in
`
`this District against DAI and DAL (the "August 30, 2013 Complaint"). The complaint
`
`was timely served on DAI on September 3, 2013. M-I Drilling also timely moved for and
`
`received Letters Rogatory for DAL so that DAL could be served pursuant to the Inter(cid:173)
`
`American Service Convention between the United States and Brazil.
`
`30. On October 10, 2013, DAI filed a Motion to Dismiss the Complaint for
`
`Failure to State a Claim. The Motion was fully briefed and the Court held a hearing on
`
`the Motion on December 3, 2013. On February 6, 2014, the Court dismissed the case
`
`against DAI without prejudice. The case, no. 13-cv-02385, is still pending against DAL
`
`as M-I Drilling continues to pursue service on DAL via the mandatory letters rogatory
`
`process.
`
`31.
`
`To date, DAL has yet to be served with the August 30, 2013 Complaint
`
`despite the fact that the Complaint and Letters Rogatory were originally submitted to the
`
`U.S. State Department on or around September 23, 2013. Plaintiffs repeated attempts at
`
`obtaining a status update from Brazilian authorities have proven fruitless.
`
`32. On or around August 26, 2014, upon Plaintiffs request, the U.S. State
`
`Department in Brazil re-initiated service of the August 30, 2013 Complaint and Letters
`
`- 8 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 9 of 31
`
`Rogatory.
`
`It remains unclear, however, when exactly DAL will be served with the
`
`August 30, 2013 Complaint and Letters Rogatory.
`
`33. As further explained infi'a, DAI is independently liable for direct, induced
`
`and contributory patent infringement regardless of DAL's involvement in the case. Thus,
`
`rather than continuing to await service of the August 30, 2013 Complaint on DAL in case
`
`no. 13-cv-02385 and then subsequently adding DAI to that case, M-I Drilling files this
`
`complaint against DAI only.
`
`34.
`
`This case can be adjudicated independently of any liability of DAL because
`
`DAI's actions alone constitute direct and indirect patent infringement.
`
`JURISDICTION AND VENUE
`
`35. As described above, DAI designed, sold, installed and began operating an
`
`infringing Accused System aboard the U.S.-flagged HOS Resolution in and around
`
`January 2013. This system, operated aboard the U.S.-flagged HOS Resolution, is used to
`
`convey drill cuttings from off-shore rig P-59 onto the HOS Resolution and contain them
`
`for later transport, conveyance, and disposal. Since its installation, this system has been
`
`continuously located and operated directly by or under the direction of DAI aboard the
`
`U.S.-flagged HOS Resolution in international waters but within the jurisdiction of U.S.
`
`patent law. DAI provided the technology and design parameters for this system and
`
`worked directly or indirectly on its manufacture, installation, and use.
`
`36. As described above, DAI designed, sold, installed and began operating an
`
`infringing Accused System aboard the U.S.-flagged HOS Pinnacle in and around August
`
`2013. This system, operated aboard the U.S.-flagged HOS Pinnacle, is used to convey
`
`- 9 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 10 of 31
`
`drill cuttings from off-shore rig P-III onto the HOS Pinnacle and contain them for later
`
`transport, conveyance, and disposal.
`
`Since its installation, this system has been
`
`continuously located and operated directly by or under the direction of DAI aboard the
`
`U.S.-flagged HOS Pinnacle in international waters but within the jurisdiction of U.S.
`
`patent law. DAI provided the technology and design parameters for this system and
`
`worked directly or indirectly on its manufacture, installation, and use.
`
`37.
`
`By choosing to use US-flagged vessels, DAI is afforded the protection of
`
`the United States government and its laws. A consequence of this choice, however, is
`
`that the U.S. flagged vessel is also subject to the laws of the United States, including U.S.
`
`patent law.
`
`38.
`
`This Comi has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331
`
`and 1338(a) as the HOS Resolution and HOS Pinnacle are U.S.-flagged ships and U.S.
`
`patent laws are applicable to U.S. flagged vessels even when they are in international
`
`waters.
`
`39.
`
`This Court has personal jurisdiction over DAI because DAI is incorporated
`
`in Minnesota, maintains its principal place of business within the State of Minnesota, and
`
`DAI regularly conducts business within the State of Minnesota.
`
`40. Venue is proper in this District for DAI under 35 U.S.C. 139l(c)(2) and 35
`
`U.S.C. § 1400(b) because DAI resides within this District.
`
`GENERAL ALLEGATIONS
`
`41. M-1 Drilling owns by assignment the entire right, title, and interest in and to
`
`the Asserted Patents.
`
`- 10 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 11of31
`
`42. As described above, DAI has infringed and continues to infringe each of
`
`the Asserted Patents by engaging in acts constituting infringement under 35 U.S.C. § 271,
`
`including but not necessarily limited to one or more of making, using, selling and
`
`offering to sell in the United States, and importing into the United States, certain material
`
`conveying systems, including, but not limited to conveying systems for drill cuttings
`
`currently installed on the U.S.-flagged ships HOS Resolution and HOS Pinnacle, which
`
`are part of the United States.
`
`43.
`
`DAI has also contributed to and is contributing to the infringement of each
`
`of the Asserted Patents by selling and offering to sell in the United States, and importing
`
`into the United States, certain material conveying systems that have no substantial non(cid:173)
`
`infringing uses, including, but not limited to conveying systems for drill cuttings
`
`currently installed on the U.S.-flagged ships HOS Resolution and HOS Pinnacle. As
`
`described infra, DAI has done so with knowledge of the Asserted Patents.
`
`44.
`
`DAI has also induced, and continues to induce, the infringement of each of
`
`the Asse1ied Patents by instructing others, including but not limited to DAL, to use
`
`pneumatic conveyance systems, such as the ones aboard the U.S.-flagged ships HOS
`
`Resolution and HOS Pinnacle, in an infringing way. As described iefra, DAI has done so
`
`with knowledge of the Asserted Patents and with the specific intent that DAL and other
`
`end users operate the systems in an infringing manner.
`
`45.
`
`The Asserted Patents contain apparatus, system, and method claims which cover
`
`pneumatic conveyance systems and the use thereof. The infringement of the Asserted Patents
`
`- 11 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 12 of 31
`
`occurs when the Accused Systems are made, used, sold or offered for sale for use aboard the
`
`U.S.-flagged ships.
`
`46.
`
`In all stages of DAL's performance of the contract with Petrobras relating to any
`
`and all acts causing infringement of the Asserted Patents, including manufacturing, installing and
`
`operating the Accused Systems in the United States, DAL has acted as DAi's agent. DAL lacks
`
`the information, experience and know-how to perform the conduct that infringes the Asserted
`
`Patents absent DAi's direction.
`
`In addition, DAL is supervised at a close level by DAI,
`
`providing more than sufficient direction and control of DAL causing DAL to be DAI's agent as a
`
`matter of law.
`
`COUNT I
`
`INFRINGEMENT OF U.S. PATENT NO. 6,702,539
`
`47.
`
`Plaintiff incorporates by reference the allegations set forth in paragraphs 1-
`
`46 as though fully set forth herein.
`
`48.
`
`DAI has directly infringed and is infringing the '539 Patent in this District
`
`and elsewhere in the United States by making, using, offering for sale, selling, and
`
`importing, without authority, products and services including pneumatic conveyance
`
`systems, such as the pneumatic conveyance systems aboard the U.S.-flagged ships HOS
`
`Resolution and HOS Pinnacle.
`
`--
`
`49.
`
`DAI has directly infringed the '539 Patent by offering for sale and selling
`
`the Accused Systems. The Accused Systems were provided pursuant to a contract that
`
`was negotiated and entered into by DAI in the United States, for the provision of Accused
`
`Systems for delivery and operation in the United States aboard the U.S.-flagged ships.
`
`- 12 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 13 of 31
`
`Further, DAI has directly infringed the '539 Patent by installing and using the Accused
`,-
`
`Systems aboard the U.S.-flagged ships HOS Resolution and HOS Pinnacle.
`
`50. DAI has also contributed to and is contributing to the infringement of the
`
`'539 Patent by DAL and others in the United States.
`
`51. DAI contributes to the infringement of the '539 Patent by selling, offering
`
`to sell, and importing into the United States components of the Accused Systems that
`
`have no substantial non-infringing use other than to be combined to form the Accused
`
`Systems. The underlying direct infringement occurs when end users of the pneumatic
`
`conveyance systems,
`
`including DAL and third parties, combine the components
`
`according to DAI' s instructions to form the Accused Systems or operate the Accused
`
`Systems according to DAi's instructions. The underlying direct infringement also occurs
`
`upon DAL's sale and offer for sale of the Accused Systems to Petro bras for delivery into
`
`the United States.
`
`52. DAI has performed the acts that constitute contributory infringement \\:'.!!!!-
`
`knowledge of the '539 Patent and knowledge that the pneumatic conveyance systems and
`
`components thereof we~e especially made or especially adapted for infringing use of the
`
`'539 Patent, and were not staple articles or commodities of commerce suitable for
`
`substantial non-infringing use. That is, the Accused Systems are specifically designed to
`
`convey, contain, or transport drill cuttings in an infringing way and the specific
`
`components thereof have no other use than to be used in the Accused Systems.
`
`- 13 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 14 of 31
`
`53. DAI has had knowledge of the '539 Patent since at least the August 29,
`
`2013 notice letters sent to DAI indicating and explaining how DAI infringes and
`
`contributes to the infringement of the claims of the '539 Patent.
`
`54. DAI has had further knowledge of the '539 Patent and the infringing
`
`activity through the September 19, 2013 service of a Complaint for Patent Infringement
`
`against DAI and DAL that involved the same patents and Accused Systems.
`
`55. DAI has also induced and is inducing the infringement of the '539 Patent
`.
`I
`
`by DAL and others in the United States.
`
`56. As shown above in paragraphs 53 and 54, DAI has had knowledge of the
`
`'539 Patent at least as of August 29, 2013.
`
`57. Despite this knowledge, DAI has specifically instructed end users to
`
`operate the Accused Systems to convey, contain, or transport drill cuttings in an
`
`infringing way as described below.
`
`58. DAI designed the Accused Systems and instructed DAL on how to
`
`manufacture and install the infringing Accused Systems. DAI did so with the knowledge
`
`that DAL would manufacture and install the Accused Systems aboard the U.S.-flagged
`
`ships HOS Resolution and the HOS Pinnacle. DAL has admitted that it manufactures
`
`pneumatic conveyance systems "using DAI technology."
`
`Further, DAI provides
`
`guidance and instruction on the installation and operation of the Accused Systems with
`
`the intention that end users, including DAL and third parties, operate the Accused
`
`Systems in an infringing way. The underlying direct infringement occurs when end users
`
`of the pneumatic conveyance systems, including DAL and third parties, combine the
`
`- 14 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11125/14 Page 15 of 31
`
`components according to DAI's instructions to form the Accused Systems or operate the
`
`Accused Systems according to DAI's instructions.
`
`59.
`
`Further, DAI partnered with DAL m preparing and responding to the
`
`Petrobras RFP, thereby actively aiding and abetting in DAL's offer for sale, sale and use
`
`of the Accused Systems.
`
`60.
`
`Further, DAI sells and imports the Accused Systems and components
`
`thereof which, as detailed in paragraphs 51 and 52, have no substantial non-infringing
`
`uses. As such, DAI performed the acts that constitute the induced infringement with
`
`knowledge of the '539 Patent and with the knowledge or willful blindness that the
`
`induced acts would constitute infringement.
`
`61. DAI's infringement of the '539 Patent has caused and continues to cause
`
`damage to Plaintiff in an amount to be determined at trial. DAI has continued to infringe
`
`the '539 Patent even after having knowledge of the patent and so such infringement is
`
`willful and Plaintiff is entitled to enhanced damages.
`
`62. DAI's acts have caused, and unless restrained and enjoined, will continue
`
`to cause, irreparable injury and damage to Plaintiff for which there is no adequate remedy
`
`at law. Unless enjoined by this Court, DAI will continue to infringe the '539 Patent.
`
`63.
`
`DAi's infringement of the '539 Patent is exceptional and entitles Plaintiff
`
`to attorneys' fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`- 15 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 16 of 31
`
`COUNT II
`
`INFRINGEMENT OF U.S. PATENT NO. 6,709,217
`
`64.
`
`Plaintiff incorporates by reference the allegations set forth in paragraphs 1-
`
`46 as though fully set forth herein.
`
`65.
`
`DAI has directly infringed and is infringing the '217 Patent in this District
`
`and elsewhere in the United States by making, using, offering for sale, selling, and
`
`importing, without authority, products and services including pneumatic conveyance
`
`systems, such as the pneumatic conveyance systems aboard the U.S.-flagged ships HOS
`
`Resolution and HOS Pinnacle.
`
`66. DAI has directly infringed the '217 Patent by offering for sale and selling
`
`the Accused Systems. The Accused Systems were provided pursuant to a contract that
`
`was negotiated and entered into by DAI in the United States, for the provision of Accused
`
`Systems for delivery and operation in the United States aboard the U.S.-flagged ships.
`
`Further, DAI has directly infringed the '217 Patent by installing and using the Accused
`
`Systems aboard the U.S.-flagged ships HOS Resolution and HOS Pinnacle.
`
`67.
`
`DAI has also contributed to and is contributing to the infringement of the
`
`'217 Patent by DAL and others in the United States.
`
`68.
`
`DAI contributes to the infringement of the '217 Patent by selling, offering
`
`to sell, and importing into the United States components of the Accused Systems that
`
`have no substantial non-infringing use other than to be combined to form the Accused
`
`Systems. The underlying direct infringement occurs when end users of the pneumatic
`
`conveyance systems, including DAL and third parties, combine the components
`
`- 16 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 17 of 31
`
`according to DAi's instructions to form the Accused Systems or operate the Accused
`
`Systems according to DAi's instructions. The underlying direct infringement also occurs
`
`upon DAL's sale and offer for sale of the Accused Systems to Petro bras for delivery into
`
`the United States.
`
`69. DAI has performed the acts that constitute contributory infringement with
`
`knowledge of the '217 Patent and knowledge that the pneumatic conveyance systems and
`
`components thereof were especially made or especially adapted for infringing use of the
`
`'217 Patent, and were not staple aiiicles or commodities of commerce suitable for
`
`substantial non-infringing use. That is, the Accused Systems are specifically designed to
`
`convey, contain, or transport drill cuttings in an infringing way and the specific
`
`components thereof have no other use than to be used in the Accused Systems.
`
`70.
`
`DAI has had knowledge of the '217 Patent since at least the August 29,
`
`2013 notice letters sent to DAI indicating and explaining how DAI infringes and
`
`contributes to the infringement of the claims of the '217 Patent.
`
`71. DAI has had further knowledge of the '217 Patent and the infringing
`
`activity through the September 19, 2013 service of a Complaint for Patent Infringement
`
`against DAI and DAL that involved the same patents and Accused Systems.
`
`72. DAI has also induced and is inducing the infringement of the '217 Patent
`
`by DAL and others in the United States.
`
`73. As shown above in paragraphs 70 and 71, DAI has had knowledge of the
`
`'217 Patent at least as of August 29, 2013.
`
`- 17 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 18 of 31
`
`74.
`
`Despite this knowledge, DAI has specifically instructed end users to
`
`operate the Accused Systems to convey, contain, or transport drill cuttings in an
`
`infringing way as described below.
`
`75.
`
`DAI designed the Accused Systems and instructed DAL on how to
`
`manufacture and install the infringing Accused Systems. DAI did so with the knowledge
`
`that DAL would manufacture and install the Accused Systems aboard the U.S.-flagged
`
`ships HOS Resolution and the HOS Pinnacle. DAL has admitted that it manufactures
`
`pneumatic conveyance systems "using DAI technology."
`
`Further, DAI provides
`
`guidance and instruction on the installation and operation of the Accused Systems with
`
`the intention that end users, including DAL and third parties, operate the Accused
`
`Systems in an infringing way. The underlying direct infringement occurs when end users
`
`of the pneumatic conveyance systems, including DAL and third parties, combine the
`
`components according to DAI's instructions to form the Accused Systems or operate the
`
`Accused Systems according to DAi's instructions.
`
`76.
`
`Further, DAI partnered with DAL m preparing and responding to the
`
`Petro bras RFP, thereby actively aiding and abetting in DAL 's offer for sale, sale and use
`
`of the Accused Systems.
`
`77.
`
`Fmiher, DAI sells and imports the Accused Systems and components
`
`thereof which, as detailed in paragraphs 68 and 69, have no substantial non-infringing
`
`uses. As such, DAI performed the acts that constitute the induced infringement with
`
`knowledge of the '217 Patent and with the knowledge or willful blindness that the
`
`induced acts would constitute infringement.
`
`- 18 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 19 of 31
`
`78. DAi's infringement of the '217 Patent has caused and continues to cause
`
`damage to Plaintiff in an amount to be determined at trial. DAI has continued to infringe
`
`the '217 Patent even after having knowledge of the patent and so such infringement is
`
`willful and Plaintiff is entitled to enhanced damages.
`
`79. DAi's acts have caused, and unless restrained and enjoined, will continue
`
`to cause, irreparable injury and damage to Plaintiff for which there is no adequate remedy
`
`at law. Unless enjoined by this Court, DAI will continue to infringe the '217 Patent.
`
`80.
`
`DAI' s infringement of the '217 Patent is exceptional and entitles Plaintiff
`
`to attorneys' fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`COUNT III
`
`INFRINGEMENT OF U.S. PATENT NO. 7,033,124
`
`81.
`
`Plaintiff incorporates by reference the allegations set forth in paragraphs 1-
`
`46 as though fully set fmih herein.
`
`82.
`
`DAI has directly infringed and is infringing the '124 Patent in this District
`
`and elsewhere in the United States by making, using, offering for sale, selling, and
`
`impmiing, without authority, products and services including pneumatic conveyance
`
`systems, such as the pneumatic conveyance systems aboard the U.S.-flagged HOS
`
`Resolution and HOS Pinnacle.
`
`83.
`
`DAI has directly infringed the '124 Patent by offering for sale and selling
`
`the Accused Systems. The Accused Systems were provided pursuant to a contract that
`
`was negotiated and entered into by DAI in the United States, for the provision of Accused
`
`Systems for delivery and operation in the United States aboard the U.S.-flagged ships.
`
`- 19 -
`
`DYNAMIC AIR INC.
`EXHIBIT 1071
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 1 Filed 11/25/14 Page 20 of 31
`
`Further, DAI has directly infringed the '124 Patent by installing and using the Accused
`
`Systems aboard the U.S.-flagged ships HOS Resolution and HOS Pinnacle.
`
`84. DAI has also contributed to and is contributing to the infring

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket