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Global Tubing

We won a complete defense victory on behalf of our client Global Tubing when the court granted summary judgment that the patents-in-suit were unenforceable due to fraud on the Patent Office.

In 2017, our client Global Tubing sued Tenaris Coiled Tubes in Houston federal court seeking a declaratory judgment that its quench-and-tempered coiled tubing products, marketed as DURACOIL, did not infringe a Tenaris patent. Tenaris counterclaimed that Global Tubing’s product infringed its patent.

During discovery, facts surfaced showing Tenaris had withheld a key sales brochure from the U.S. Patent Office while prosecuting the parent patent. That brochure described a prior art coiled tubing product called CYMAX and made it clear that CYMAX practiced what Tenaris now claimed to be its invention. Tenaris also submitted a declaration by one of its inventors that misrepresented the state of the prior art, but the only way the Patent Office would have been able to know of the misrepresentation was from the withheld CYMAX brochure. Without the correct information before it, the Patent Office allowed the parent patent to issue.

Tenaris then turned to prosecuting two more related “children” patents. Rather than disclose the brochure, Tenaris divided up the brochure into pieces. The Patent Office allowed the children patents to issue, and Tenaris immediately added them to the ongoing lawsuit, accusing Global Tubing of infringement of the children as well as the original parent patent.

Based on the evidence that we developed during discovery, including that a Tenaris inventor intended to deceive the Patent Office, the court issued an important discovery ruling in March 2021. In it, the court applied the crime-fraud exception to evidence related to CYMAX over which Tenaris claimed attorney-client privilege. The court ordered Tenaris to produce all attorney-client communications and other documents that related to CYMAX that were previously withheld from production. One year later, the court concluded that Tenaris had violated the protective order in the case to obtain the additional patents it asserted against Global Tubing.

Based largely on evidence that we obtained from the crime-fraud and sanctions orders, Global Tubing moved for summary judgment that Tenaris’s patents were unenforceable because of its fraud on the Patent Office. On March 17, 2023, seeing no dispute of material fact over whether Tenaris had defrauded the patent office in withholding the CYMAX brochure, the court granted summary judgment of inequitable conduct deeming all three patents-in-suit unenforceable due to the fraud.