More than five years ago, 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.
During the case, Tenaris obtained two more patents and accused Global Tubing of infringing all three patents. But during discovery, facts surfaced showing Tenaris had withheld a key sales brochure from the U.S. Patent Office. That brochure described a prior art coiled tubing product called CYMAX and made it clear that CYMAX practiced what Tenaris claimed to be its invention. Based on this and other evidence that a Tenaris inventor intended to deceive the Patent Office, the court issued a discovery ruling in March 2021, finding the crime-fraud exception applied and ordering Tenaris to produce attorney-client communications and other documents that related to CYMAX that were previously withheld from production as privileged. 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.
On March 17, 2023, the court granted Global Tubing’s motion for summary judgment of inequitable conduct, seeing no dispute of material fact over whether Tenaris had defrauded the patent office in withholding the CYMAX sales brochure. The summary judgment order deems all three patents-in-suit unenforceable due to the fraud.
Yetter Coleman’s team was led by Jeff Andrews and includes Paul Yetter, Matt Zorn, Pamela Hemphill, Chris Johnson, Kay Dannenmaier, and David Gutierrez. The case is No. 4:17-CV-03299 in the Southern District of Texas.