throbber
CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 1 of 31
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MINNESOTA
`
`M-I DRILLING FLUIDS UK LTD.
`AND M-I LLC,
`
`Plaintiffs,
`
`C.A. No.: 14-cv-4857 (ADM/HB)
`
`v.
`
`DYNAMIC AIR INC.,
`
`Defendant.
`
`AMENDED COMPLAINT
`
`JURY TRIAL DEMANDED
`
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiffs M-I Drilling Fluids UK Ltd. and M-I LLC allege as follows:
`
`INTRODUCTION
`
`1.
`
`This is an action brought by M-I Drilling Fluids UK Ltd. (“M-I Drilling”)
`
`and M-I LLC (collectively “Plaintiffs”) against Dynamic Air Inc. (“DAI” or
`
`“Defendant”) for DAI’s infringement under at least 35 USC § 271(b), (c), and/or (f) of
`
`patents owned by M-I Drilling and exclusively licensed to M-I LLC. In particular, DAI
`
`has infringed, and induced and contributed to the infringement of, U.S. Patent 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 1077
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 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, AB11 5DQ, United Kingdom.
`
`3. M-I LLC is a limited liability company existing and organized under the
`
`laws of the State of Delaware. It has a principal place of business at 5950 North Course
`
`Drive, Houston, Texas 77072.
`
`4.
`
`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-I DRILLING, M-I LLC, CLEANCUT® TECHNOLOGY, AND
`THE ASSERTED PATENTS
`
`5.
`
`Plaintiffs are leading suppliers of drilling fluid systems and equipment
`
`
`
`engineered to improve drilling performance by anticipating fluids-related problems, fluid
`
`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.
`
`6. 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
`
`
`
`- 2 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 3 of 31
`
`are in slurry with drilling fluid, and after some degree of separation from the drilling
`
`fluid, form a thick heavy paste. Drill cuttings must be disposed of in an environmentally-
`
`safe way and are typically transported off of the rig for processing and/or disposal
`
`elsewhere. Oftentimes, ships will receive drill cuttings from the oil rig and transport
`
`them to shore for processing and/or disposal.
`
`7.
`
`One of the products and services that Plaintiffs offer 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.
`
`8.
`
`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 as well as systems installed on both
`
`an oil rig and receiving ship and used to transfer cuttings from one to the other.
`
`9. M-I Drilling is the owner by assignment of all of the Asserted Patents. M-I
`
`LLC is an exclusive licensee of the Asserted Patents.
`
`
`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 -
`
`
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 4 of 31
`
`10.
`
`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 539 Patent. M-I LLC is an exclusive licensee to the 539 Patent. A true and correct
`
`copy of the 539 Patent is attached hereto as Exhibit A.
`
`11.
`
`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. M-I LLC is an exclusive
`
`licensee to the 217 Patent. A true and correct copy of the 217 Patent is attached hereto as
`
`Exhibit B.
`
`12.
`
`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. M-I LLC is an exclusive
`
`licensee to the 124 Patent. A true and correct copy of the 124 Patent is attached hereto as
`
`Exhibit C.
`
`13.
`
`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. M-I LLC is an exclusive
`
`licensee to the 062 Patent. A true and correct copy of the 062 Patent is attached hereto as
`
`Exhibit D.
`
`14.
`
`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 018 Patent. M-I LLC is an exclusive licensee
`
`
`
`- 4 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 5 of 31
`
`to the 018 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”)
`
`15. 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
`
`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.
`
`16.
`
`Each DAI system is 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.
`
`17.
`
`In addition
`
`to developing, designing and manufacturing complete
`
`pneumatic conveyance systems, DAI offers support services for its systems on a
`
`worldwide basis, including onsite start up assistance and troubleshooting.
`
`
`
`- 5 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 6 of 31
`
`18. DAI also has a number of subsidiaries, including Dynamic Air Ltda. in
`
`Brazil. These subsidiaries act as local sales offices for DAI and DAI often assists these
`
`subsidiaries with the design of pneumatic conveyance systems. DAI also supplies
`
`component parts for pneumatic systems to its subsidiaries.
`
`The Accused Systems
`
`19.
`
`Sometime between October 2011 and January 2012, Dynamic Air Ltda.
`
`(“DAL”), the Brazilian subsidiary of DAI, submitted a bid in response to a Request for
`
`Proposal (“RFP”) from Petróleo Brasileiro S.A. (“Petrobras”) for a pneumatic
`
`conveyance system that could be used to remove drill cuttings from an oil rig. M-I
`
`Drilling’s sister company and customer, M-I Swaco do Brasil - Comercio, Servicos E
`
`Mineracao Ltda. (“M-I Brazil”), submitted a bid in response to the RFP as well.
`
`20. DAL was founded in 1999 as a foreign sales office of DAI to sell and
`
`provide DAI technology to the Brazilian market. DAL manufactures pneumatic
`
`conveyance systems that use DAI’s technology. To do so, DAL purchases many key
`
`components from DAI for use in pneumatic conveyance systems it makes, sells, and uses.
`
`21. DAL is a “limited company” formed under the laws of Brazil with DAI as
`
`the majority owner and partner. DAI continues to be the majority owner and partner of
`
`DAL. The other partner is Horacio Paez. DAL received much of its startup capital from
`
`DAI.
`
`22. DAL had never designed a pneumatic conveyance system for the transfer of
`
`drill cuttings prior to submitting the Petrobras bid.
`
`
`
`- 6 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 7 of 31
`
`23. 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 provided some aspects of the design and certain key components for
`
`certain pneumatic conveyance systems for Petrobras that convey, contain, and transport
`
`drill cuttings from oil drilling rigs located in international waters.
`
`24.
`
`Specifically, DAL manufactured the Accused Systems in Brazil using
`
`several key components that DAI had supplied DAL, including valves, transporter
`
`vessels, couplers, various air control meters, and hoses, all necessary for the operation of
`
`the pneumatic conveyance systems. Then, the Accused Systems were installed on the
`
`U.S.-flagged ships, HOS Resolution and HOS Pinnacle by DAL. DAL has operated the
`
`Accused Systems aboard the U.S. flagged ships since.
`
`25. As described in the paragraphs below, 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.
`
`26.
`
`The Accused Systems also would infringe the Asserted Patents when
`
`manufactured at DAL’s facility in Brazil, or installed aboard the foreign-flagged P-59, P-
`
`III, and NS-46 rigs or offered for sale or sold to third parties if those activities occurred in
`
`the United States.
`
`27. On or around January 2013, the Accused Systems were manufactured, sold,
`
`delivered, and installed aboard the U.S.-flagged ship HOS Resolution.
`
`28. Beginning on or around February 2013, the Accused Systems were then
`
`used to pneumatically convey drill cuttings from offshore rig P-59, located in
`
`
`
`- 7 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 8 of 31
`
`international waters onto and off of the U.S.-flagged ship HOS Resolution in an
`
`infringing way and this infringing activity continued until the equipment was removed
`
`from the HOS Resolution on or about September 2015. DAL has indicated however, that
`
`the infringing equipment may be reinstalled on another ship at any time.
`
`29. On or around August 2013, a similar Accused System was manufactured,
`
`sold, delivered and installed aboard the U.S.-flagged ship HOS Pinnacle, which
`
`pneumatically conveyed 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 continued until on
`
`or around July 2015 when the equipment was removed from the HOS Pinnacle. DAL has
`
`indicated, however, that the equipment may be reinstalled on a ship at any time.
`
`Likewise, upon information and belief, a similar system is planned to be installed, or has
`
`been installed, aboard the foreign flagged drillship NS-46.
`
`30. As with the system aboard the U.S.-flagged HOS Resolution, DAI provided
`
`some designs and supplied key components for the pneumatic conveyance system on the
`
`U.S-flagged HOS Pinnacle.
`
`31. 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.
`
`32. 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
`
`
`
`- 8 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 9 of 31
`
`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-
`
`American Service Convention between the United States and Brazil.
`
`33. 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.
`
`34. DAI is also liable for infringement under 35 U.S.C. § 271(f)(1) for
`
`supplying or causing to be supplied from the United States a substantial portion of the
`
`components of the Accused Systems in such manner as to actively induce the
`
`combination of such components in Brazil in a manner that would infringe the Asserted
`
`Patents if such combination occurred within the United States.
`
`35.
`
`This case can be adjudicated independently of any liability of DAL because
`
`DAI’s actions alone constitute patent infringement.
`
`JURISDICTION AND VENUE
`
`36.
`
`This Court 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 regardless of their location. The Court
`
`additionally has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) as the culpable activity
`
`under 35 U.S.C. § 271(f)(1) occurred in the United States.
`
`
`
`- 9 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 10 of 31
`
`37.
`
`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.
`
`38. Venue is proper in this District for DAI under 35 U.S.C. 1391(c)(2) and 35
`
`U.S.C. § 1400(b) because DAI resides within this District.
`
`GENERAL ALLEGATIONS
`
`39. M-I Drilling owns by assignment the entire right, title, and interest in and to
`
`the Asserted Patents. M-I LLC is an exclusive licensee to the Asserted Patents.
`
`40. As described above, DAI has contributed to and is contributing to the
`
`infringement of each of the Asserted Patents under 35 U.S.C. § 271(c) by selling and
`
`offering to sell in the United States, and importing into the United States, certain material
`
`conveying systems and components thereof that have no substantial non-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.
`
`41. DAI has also induced, and continues to induce, the infringement under 35
`
`U.S.C. § 271(b) of each of the Asserted 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
`
`infra, 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.
`
`
`
`- 10 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 11 of 31
`
`42. DAI further infringes the Asserted Patents under 35 U.S.C. § 271(f)(1) by
`
`also supplying or causing to be supplied from the United States a substantial portion of
`
`the components of the Accused Systems in such manner as to actively induce the
`
`combination of such components in Brazil in a manner that would infringe the Asserted
`
`Patents if such combination occurred within the United States.
`
`43.
`
`The Asserted Patents contain apparatus, system, and method claims which
`
`cover pneumatic conveyance systems and the use thereof. The direct infringement of the
`
`Asserted Patents occurs when the Accused Systems are made, used, sold or offered for
`
`sale for use aboard the U.S.-flagged ships.
`
`COUNT I
`
`INFRINGEMENT OF U.S. PATENT NO. 6,702,539
`
`44.
`
`Plaintiffs incorporate by reference the allegations set forth in the above
`
`paragraphs as though fully set forth herein.
`
`45. DAI has contributed to and is contributing to the infringement of the 539
`
`Patent by DAL and others in the United States. Under 35 U.S.C. § 271(c).
`
`46. 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 to form
`
`the Accused Systems or operate the Accused Systems according to DAI’s instructions.
`
`
`
`- 11 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 12 of 31
`
`The underlying direct infringement also occurs upon DAL’s sale and offer for sale of the
`
`Accused Systems to Petrobras for delivery into the United States.
`
`47. DAI has performed the acts that constitute contributory infringement with
`
`knowledge of the 539 Patent and knowledge that the pneumatic conveyance systems and
`
`components thereof were 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.
`
`48. 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.
`
`49. 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.
`
`50. DAI has also induced and is inducing the infringement under 35 U.S.C. §
`
`271(b) of the 539 Patent by DAL and others in the United States.
`
`51. As shown in the above paragraphs, DAI has had knowledge of the 539
`
`Patent at least as of August 29, 2013.
`
`52. Despite this knowledge, DAI has specifically provided some degree of
`
`guidance to DAL as well as components used in the Accused Systems, which DAL used
`
`
`
`- 12 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 13 of 31
`
`to manufacture and operate the Accused Systems to convey, contain, or transport drill
`
`cuttings in an infringing way as described herein.
`
`53. DAI provided key components for the Accused Systems and provided
`
`guidance to DAL on the use of those components in the manufacture, installation, and use
`
`the infringing Accused Systems. Further, upon information and belief, 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, and components for, 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.
`
`54.
`
`Further, DAI partnered with DAL in entering into the Petrobras Contract,
`
`thereby actively aiding and abetting in DAL’s offer for sale, sale and use of the Accused
`
`Systems.
`
`55.
`
`Further, DAI sells and imports components of the Accused Systems, which,
`
`as detailed in the above paragraphs, 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.
`
`
`
`- 13 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 14 of 31
`
`56. DAI also is liable under 35 U.S.C. § 271(f)(1) for supplying or causing to
`
`be supplied from the United States a substantial portion of the components of the
`
`Accused Systems in such manner as to actively induce the combination of such
`
`components in Brazil in a manner that would infringe the 539 Patent if such combination
`
`occurred within the United States.
`
`57.
`
`Specifically, DAI provides and/or supplies from the United States one or
`
`more key components of the Accused Systems to DAL with the knowledge that those
`
`components are to be combined in a manner by DAL in Brazil to make pneumatic
`
`conveyance systems that would infringe one or more claims of the 539 Patent if those
`
`activities occurred in the United States. This includes the manufacture of the Accused
`
`Systems by DAL in Brazil and the installation of certain Accused Systems aboard oil
`
`rigs, such as the P-59, P-III, and NS-46, which are, upon information and belief, outside
`
`the United States.
`
`58. DAI’s infringement of the 539 Patent has caused and continues to cause
`
`damage to Plaintiffs 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 Plaintiffs are entitled to enhanced damages.
`
`59. DAI’s acts have caused, and unless restrained and enjoined, will continue
`
`to cause, irreparable injury and damage to Plaintiffs for which there is no adequate
`
`remedy at law. Unless enjoined by this Court, DAI will continue to infringe the 539
`
`Patent.
`
`
`
`- 14 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 15 of 31
`
`60. DAI’s infringement of the 539 Patent is exceptional and entitles Plaintiffs
`
`to attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`COUNT II
`
`INFRINGEMENT OF U.S. PATENT NO. 6,709,217
`
`61.
`
`Plaintiffs incorporate by reference the allegations set forth in the above
`
`paragraphs as though fully set forth herein.
`
`62. DAI has contributed to and is contributing to the infringement of the 217
`
`Patent by DAL and others in the United States. Under 35 U.S.C. § 271(c).
`
`63. 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 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 Petrobras for delivery into the United States.
`
`64. 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 articles or commodities of commerce suitable for
`
`substantial non-infringing use. That is, the Accused Systems are specifically designed to
`
`
`
`- 15 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 16 of 31
`
`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.
`
`65. 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.
`
`66. 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.
`
`67. DAI has also induced and is inducing the infringement under 35 U.S.C. §
`
`271(b) of the 217 Patent by DAL and others in the United States.
`
`68. As shown in the above paragraphs, DAI has had knowledge of the 217
`
`Patent at least as of August 29, 2013.
`
`69. Despite this knowledge, DAI has specifically provided some degree of
`
`guidance to DAL as well as components used in the Accused Systems, which DAL used
`
`to manufacture and operate the Accused Systems to convey, contain, or transport drill
`
`cuttings in an infringing way as described herein.
`
`70. DAI provided key components for the Accused Systems and provided
`
`guidance to DAL on the use of those components in the manufacture, installation, and use
`
`the infringing Accused Systems. Further, upon information and belief, 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
`
`
`
`- 16 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 17 of 31
`
`provides guidance and instruction on, and components for, 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.
`
`71.
`
`Further, DAI partnered with DAL in entering into the Petrobras RFP,
`
`thereby actively aiding and abetting in DAL’s offer for sale, sale and use of the Accused
`
`Systems.
`
`72.
`
`Further, DAI sells and imports components of the Accused Systems, which,
`
`as detailed in the above paragraphs, 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.
`
`73. DAI also is liable under 35 U.S.C. § 271(f)(1) for supplying or causing to
`
`be supplied from the United States a substantial portion of the components of the
`
`Accused Systems in such manner as to actively induce the combination of such
`
`components in Brazil in a manner that would infringe the 217 Patent if such combination
`
`occurred within the United States.
`
`74.
`
`Specifically, DAI provides and/or supplies from the United States one or
`
`more key components of the Accused Systems to DAL with the knowledge that those
`
`components are to be combined in a manner by DAL in Brazil to make pneumatic
`
`
`
`- 17 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 18 of 31
`
`conveyance systems that would infringe one or more claims of the 217 Patent if those
`
`activities occurred in the United States. This includes the manufacture of the Accused
`
`Systems by DAL in Brazil and the installation of certain Accused Systems aboard oil
`
`rigs, such as the P-59, P-III, and NS-46, which are, upon information and belief, outside
`
`the United States.
`
`75. DAI’s infringement of the 217 Patent has caused and continues to cause
`
`damage to Plaintiffs 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 Plaintiffs are entitled to enhanced damages.
`
`76. DAI’s acts have caused, and unless restrained and enjoined, will continue
`
`to cause, irreparable injury and damage to Plaintiffs for which there is no adequate
`
`remedy at law. Unless enjoined by this Court, DAI will continue to infringe the 217
`
`Patent.
`
`77. DAI’s infringement of the 217 Patent is exceptional and entitles Plaintiffs
`
`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
`
`78.
`
`Plaintiffs incorporate by reference the allegations set forth in the above
`
`paragraphs as though fully set forth herein.
`
`79. DAI has contributed to and is contributing to the infringement of the 124
`
`Patent by DAL and others in the United States. Under 35 U.S.C. § 271(c).
`
`
`
`- 18 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 19 of 31
`
`80. DAI contributes to the infringement of the 124 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 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 Petrobras for delivery into the United States.
`
`81. DAI has performed the acts that constitute contributory infringement with
`
`knowledge of the 124 Patent and knowledge that the pneumatic conveyance systems and
`
`components thereof were especially made or especially adapted for infringing use of the
`
`124 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.
`
`82. DAI has had knowledge of the 124 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 124 Patent.
`
`83. DAI has had further knowledge of the 124 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.
`
`
`
`- 19 -
`
`

`
`CASE 0:14-cv-04857-ADM-HB Document 173 Filed 11/13/15 Page 20 of 31
`
`84. DAI has also induced and is inducing the infringement under 35 U.S.C. §
`
`271(b) of the 124 Patent by DAL and others in the United States.
`
`85. As shown in the above paragraphs, DAI has had knowledge of the 124
`
`Patent at least as of August 29, 2013.
`
`86. Despite this knowledge, DAI has specifically provided some degree of
`
`guidance to DAL as well as components used in the Accused Systems, which DAL used
`
`to manufacture and operate the Accused Systems to c

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