DCT
4:17-cv-03299
Global Tubing LLC v. Tenaris Coiled Tubes LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Global Tubing, LLC (Delaware)
- Defendant: Tenaris Coiled Tubes, LLC (Delaware)
- Plaintiff’s Counsel: Yetter Coleman LLP
- Case Identification: 4:17-cv-03299, S.D. Tex., 02/12/2018
- Venue Allegations: Venue is alleged to be proper as both parties regularly conduct business in the district, and a substantial part of the events giving rise to the action occurred in Houston.
- Core Dispute: Plaintiff seeks a declaratory judgment that its DURACOIL™ products do not infringe Defendant's patent related to high-performance coiled steel tubing, and further alleges Defendant has engaged in false advertising under the Lanham Act.
- Technical Context: The case concerns the specialized market for coiled steel tubing, an essential component in oil and gas operations like hydraulic fracturing, where product durability and fatigue resistance are critical.
- Key Procedural History: The complaint alleges that prior to the patent's issuance, Defendant represented to customers that Plaintiff's products were a "copycat" and that Defendant had a patent covering them. During prosecution of the patent-in-suit, Defendant allegedly submitted a declaration to the U.S. Patent Office arguing that Plaintiff's product line was evidence of "copying" the claimed invention to overcome an examiner's rejection.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-14 | ’256 Patent Priority Date |
| 2015-03 | Defendant Tenaris launches BlueCoil® product line |
| 2016-12 | Plaintiff Global Tubing begins plant construction for DURACOIL™ |
| 2017-03 | Plaintiff Global Tubing launches DURACOIL™ product line |
| 2017-04-25 | Defendant Tenaris submits declaration to USPTO alleging Plaintiff is copying the invention claimed in the pending '256 application |
| 2017-10-31 | U.S. Patent No. 9,803,256 issues |
| 2018-02-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,803,256 - "High Performance Material for Coiled Tubing Applications and the Method of Producing the Same," issued October 31, 2017
The Invention Explained
- Problem Addressed: The patent describes a problem in conventional high-strength coiled tubing where the welding process used to join steel strips creates weak points. This welding deteriorates the refined microstructure of the steel, compromising toughness and fatigue life, particularly at the strip-to-strip joints (’256 Patent, col. 2:50-64).
- The Patented Solution: The invention is a coiled steel tube with a specific chemical composition that undergoes a "full body heat treatment" after the tube is formed and welded (’256 Patent, col. 2:65-68). This process is designed to create a final microstructure that is "homogenous" across all regions of the tube—including the base metal, the weld joints, and the heat-affected zones—thereby eliminating the weak points associated with traditional manufacturing (’256 Patent, col. 2:59-64; Abstract).
- Technical Importance: This approach aims to produce coiled tubing with uniform properties along its entire length, which is critical for the high-stress, cyclical-load environment of oil and gas operations, where failures at weld points can be catastrophic (’256 Patent, col. 1:26-33).
Key Claims at a Glance
- The complaint identifies independent claim 1 as the basis for the declaratory judgment action (Compl. ¶39).
- The essential elements of independent claim 1 include:
- A coiled steel tube formed from a plurality of strips welded together.
- A specific chemical composition comprising iron and defined weight-percentage ranges for carbon, manganese, silicon, aluminum, sulfur, and phosphorus.
- A final microstructure formed from a "full body heat treatment."
- The final microstructure comprises a mixture of tempered martensite and bainite, with "more than 90 volume % tempered martensite" in the base metal regions, weld joints, and heat affected zones.
- The final microstructure is "homogeneous" across all base metal regions, bias weld joints, and heat affected zones.
- The final microstructure comprises a "uniform distribution of fine carbides" across all regions.
- The complaint notes that claims 2-16 are dependent on claim 1 (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
- Plaintiff’s DURACOIL™ coiled tubing products (Compl. ¶2).
Functionality and Market Context
- The DURACOIL™ product line is described as a competitor to Defendant’s BlueCoil® product, serving the same oil and gas industry market (Compl. ¶2, ¶12).
- Plaintiff alleges its DURACOIL™ products are manufactured using a proprietary, patent-pending "HALO Induction Technology™," described as a "one-step quench and temper process" (Compl. ¶19-20). This is contrasted with Defendant's alleged "two steps" manufacturing process (Compl. ¶20).
- Crucially, the complaint alleges that the use of this technology results in a product with a "close to uniform microstructure ... with some non-uniformity in the microstructure across the weld joints and heat affected zones" (Compl. ¶19). This alleged "non-uniformity" is a central pillar of Plaintiff's non-infringement argument.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the Plaintiff's primary arguments for why its DURACOIL™ products do not meet the limitations of the asserted patent claim.
No probative visual evidence provided in complaint.
'256 Patent Non-Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a composition comprising iron and: 0.17-0.35 wt. % carbon; 0.30-2.00 wt. % manganese; 0.10-0.30 wt. % silicon; 0.010-0.040 wt. % aluminum; up to 0.010 wt. % sulfur; and up to 0.015 wt. % phosphorus | The weight percentage of at least one of carbon, manganese, silicon, aluminum, sulfur, or phosphorus in DURACOIL™ products falls outside of the weight percentage ranges required by the claim. | ¶41 | col. 23:14-18 |
| wherein the final microstructure across all base metal regions, bias weld joints, and heat affected zones is homogeneous | DURACOIL™ products do not include a final microstructure that is homogeneous "across all base metal regions, weld joints, and heat affected zones." | ¶41 | col. 24:29-32 |
| wherein the final microstructure comprises a uniform distribution of fine carbides across the base metal regions, the bias weld joints, and the heat affected zones | DURACOIL™ products do not include a final microstructure that has a "uniform distribution of fine carbides across the base metal regions, the weld joints, and the heat affected zones." | ¶41 | col. 24:33-38 |
- Identified Points of Contention:
- Scope Questions: A central dispute will concern the proper construction of the term "homogeneous." The complaint appears to advance a strict interpretation, alleging its own product has "some non-uniformity" at the weld joints and is therefore outside the claim scope (Compl. ¶19, ¶41). The case may turn on whether the patent's use of "homogeneous" allows for any level of variation.
- Technical Questions: A key factual question will be whether the specific chemical composition of the DURACOIL™ products falls within the elemental weight percentage ranges recited in claim 1. The complaint makes this a direct basis for its non-infringement claim, which will require evidentiary support through materials testing and analysis (Compl. ¶41).
V. Key Claim Terms for Construction
- The Term: "homogeneous"
- Context and Importance: This term is the lynchpin of the dispute. Plaintiff explicitly alleges its product has "non-uniformity" in the microstructure across the weld joints (Compl. ¶19) and therefore does not have a "homogeneous" microstructure as required by the claim (Compl. ¶41). The entire infringement analysis for this limitation depends on whether the term allows for minor variations or requires absolute uniformity across all specified regions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of evidence supporting a broader interpretation.
- Evidence for a Narrower Interpretation: The patent abstract states the final microstructures "can be homogeneous." More specifically, claim 1 requires the microstructure to be homogeneous "across all base metal regions, bias weld joints, and heat affected zones" (’256 Patent, col. 24:29-32). This explicit enumeration of all zones could support an argument that the term was intended to mean uniform across the entire structure without exception, bolstering Plaintiff's non-infringement position.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement but seeks a declaration that it does not infringe indirectly (Compl. ¶44). The basis for this preemptive request is Defendant's alleged "false statements and threat of filing suit" (Compl. ¶43).
- Willful Infringement: Similarly, the complaint seeks a declaration of no willful infringement (Compl. ¶44). The allegations of Defendant's pre-issuance knowledge of Plaintiff's product, including statements to the USPTO and to customers, establish the "actual controversy" needed for the declaratory judgment action (Compl. ¶23, ¶30, ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on two fundamental questions for the court:
A core issue will be one of definitional scope: Can the term "homogeneous," as applied to the final microstructure "across all base metal regions, bias weld joints, and heat affected zones," be construed to allow for the "some non-uniformity" that Plaintiff alleges is present in its DURACOIL™ products?
A key evidentiary question will be one of factual composition: Does the specific elemental composition of the DURACOIL™ products, as determined through technical analysis, fall outside the precise weight-percentage ranges recited in claim 1 of the ’256 Patent?