DCT
6:20-cv-00277
NCS Multistage Inc v. Nine Energy Service Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NCS Multistage Inc. (Canada) and NCS Multistage, LLC (Texas)
- Defendant: Nine Energy Service, Inc. (Delaware)
- Plaintiff’s Counsel: Blank Rome LLP
- Case Identification: 6:20-cv-00277, W.D. Tex., 02/08/2021
- Venue Allegations: Venue is alleged to be proper based on Defendant having regular and established places of business in the district and having committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s BreakThru™ Casing Flotation Device, used in downhole well completions, infringes a patent related to a "casing float tool."
- Technical Context: The technology concerns tools that create buoyancy in long casing strings used in oil and gas wells, particularly in horizontal drilling, to overcome friction and allow the casing to reach its target depth.
- Key Procedural History: The complaint alleges that Plaintiff notified Defendant of the patent and its infringement concerns on November 1, 2019, and followed up with a letter from counsel on December 16, 2019, which included a claim chart and an invitation to license the patent.
Case Timeline
| Date | Event |
|---|---|
| 2013-02-05 | '445 Patent Priority Date |
| 2019-11-01 | Plaintiff allegedly notifies Defendant of infringement concerns |
| 2019-11-05 | '445 Patent Issue Date |
| 2019-12-16 | Plaintiff's counsel allegedly sends letter with claim chart to Defendant |
| 2021-02-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,465,445 - "Casing Float Tool"
- Issued: November 5, 2019.
The Invention Explained
- Problem Addressed: In oil and gas wells, particularly those with long horizontal sections, friction and drag can make it difficult or impossible to run a long pipe (a "casing string") to its target depth. The weight of the casing string in the vertical section of the well may be insufficient to overcome the drag in the horizontal section. (’445 Patent, col. 1:21-30).
- The Patented Solution: The invention is a tool installed within the casing string that uses a "rupture disc" to seal off a lower portion of the string, creating an air-filled, buoyant chamber. This makes the horizontal portion of the casing lighter, allowing it to be "floated" into place with less force. (’445 Patent, col. 4:10-24). Once the casing is in position, hydraulic pressure is applied, which causes a securing mechanism (like a shear ring) to fail. This frees the disc to move downward and shatter against an impact surface inside the tool, thereby restoring a full, unobstructed internal diameter to the casing for subsequent operations. (’445 Patent, col. 2:3-19).
- Technical Importance: This design aims to provide a reliable, low-cost method for extending casing reach in challenging wells while ensuring a full internal diameter is restored after activation, which is critical for subsequent well completion activities. (’445 Patent, col. 2:45-49).
Key Claims at a Glance
- The complaint alleges infringement of at least claims 14-15, 22-25, 27, 28-31, 36, 37-43, 46, 50-53, and 55-57, and specifically highlights claim 28 as an example of direct infringement (Compl. ¶21).
- Independent claim 28 recites:
- A float tool for positioning a casing string in a wellbore.
- The tool comprises a rupture disc assembly, which includes a tubular member and a rupture disc in sealing engagement with the tubular member.
- The rupture disc is configured to "disengage from sealing engagement" when exposed to a pressure greater than the hydraulic pressure in the casing string after positioning.
- The region of the tubular member where the disc is attached has a larger internal diameter than the rest of the casing string.
- The complaint does not explicitly reserve the right to assert other claims, but the broad list of asserted claims suggests a comprehensive infringement theory.
III. The Accused Instrumentality
Product Identification
Defendant Nine Energy Service, Inc.’s "BreakThru™ Casing Flotation Device" (Compl. ¶2).
Functionality and Market Context
- The complaint alleges the BreakThru™ device is a casing flotation device that creates buoyancy to make it easier to run casing through the horizontal portion of a wellbore (Compl. ¶14).
- Its technical operation is described as involving a tubular body containing a "glass barrier disc." This disc is ruptured by applying hydraulic pressure from the surface after the casing is landed, which "restores the internal diameter of the casing string" (Compl. ¶14). The complaint includes a marketing image of the accused device, which shows a translucent barrier labeled "GLASS BARRIER" situated inside a section of pipe (Compl. p. 5).
IV. Analysis of Infringement Allegations
The complaint alleges that the BreakThru™ device meets every element of claim 28, but does not include the referenced claim chart exhibit in the filing (Compl. ¶21). The infringement theory can be summarized from the complaint's narrative allegations.
'445 Patent Infringement Allegations
| Claim Element (from Independent Claim 28) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A float tool configured for use in positioning a casing string in a wellbore... | The BreakThru™ device is described as a "casing floatation device" used to run casing through a horizontal portion of a wellbore. | ¶14 | col. 4:6-9 |
| a rupture disc assembly comprising (i) a tubular member... | The BreakThru™ device is described as a "tubular body." | ¶14 | col. 7:31-33 |
| ...and (ii) a rupture disc having a rupture burst pressure and in sealing engagement with a region of the tubular member... | The tubular body is alleged to have a "glass barrier disc." | ¶14 | col. 7:36-39 |
| ...wherein the rupture disc is configured to disengage from sealing engagement when exposed to a pressure greater than a hydraulic pressure in the casing string after the casing string has been positioned... | The complaint states that "the glass barrier is ruptured by applying hydraulic pressure from the surface," which restores the internal diameter of the casing. | ¶14 | col. 9:60-65 |
| ...and the region of the tubular member where the rupture disc is attached has a larger internal diameter than the internal diameter of the casing string... | The complaint does not provide sufficient detail for analysis of this element. | col. 7:1-5 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over the meaning of "disengage from sealing engagement." The patent specification describes a specific mechanism where a shear ring fails first, releasing the disc to travel and then shatter upon impact (’445 Patent, col. 10:35-51). The question for the court will be whether the accused product's "rupture" of a "glass barrier" involves a distinct "disengagement" step as required by the claim, or if it shatters in place in a manner outside the claim's scope.
- Technical Questions: Evidence will be needed to determine the precise failure mechanism of the accused "glass barrier." Does it simply break under a specified pressure, or does it first unseat or move from its initial sealed position before breaking? The complaint's description of the accused product "rupturing" (Compl. ¶14) does not, on its own, resolve whether this action constitutes "disengagement" as claimed.
V. Key Claim Terms for Construction
- The Term: "disengage from sealing engagement" (Claim 28)
- Context and Importance: This term is the functional heart of the claim, defining how the tool is activated. The interpretation of this phrase will be critical to the infringement analysis. Practitioners may focus on this term because if it is construed narrowly to require a multi-step release-then-impact sequence, it may be more difficult for the plaintiff to prove that the accused device's "rupture" meets the limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not explicitly require a shear ring or an impact event, only that the disc "disengage" from its sealed position upon application of pressure. A party could argue this covers any pressure-induced mechanism that unseals the disc.
- Evidence for a Narrower Interpretation: The specification consistently describes the invention’s operation through a specific embodiment where a shear ring with tabs is designed to fail first, which "releas[es] the rupture disc" and allows it to "move suddenly downward" to "impinge upon" an impact surface (’445 Patent, col. 9:62-63; col. 10:1-12). A party may argue that these detailed descriptions limit the claim term to this specific two-stage mechanism of action.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant instructs and encourages its customers to use the BreakThru™ device in an infringing manner, specifically by advertising that customers can apply pressure to rupture the disc after the casing is in place (Compl. ¶22).
- Willful Infringement: The willfulness allegation is based on pre-suit knowledge. The complaint asserts that Defendant had notice of the ’445 Patent and the infringement allegations as of at least November 1, 2019, via direct contact from Plaintiff's CEO, and received a claim chart from Plaintiff's counsel on December 16, 2019 (Compl. ¶15, ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely hinge on two primary questions that intertwine claim interpretation and technical evidence:
A core issue will be one of claim construction: Must the term "disengage from sealing engagement" be interpreted to require the specific two-step, release-then-impact mechanism detailed in the ’445 Patent's specification, or can it be construed more broadly to cover any pressure-induced unsealing and breaking of a barrier?
A key evidentiary question will be one of technical operation: What is the precise failure mechanism of the accused BreakThru™ device's "glass barrier"? Does the evidence show that it first unseats from its sealed position and travels before breaking, or does it shatter in place? The answer will determine whether its operation falls within the scope of the key claim term as construed by the court.