NCS Multistage Inc. v. Nine Energy Service, Inc.

NCS Multistage Inc. v. Nine Energy Service, Inc. The Federal Circuit held that the district court misconstrued both “internal diameter” and “casing string,” and that TCO’s August 2012 sale of the TDP-PO tool to Apache and Apache’s use were prior art as a matter of law. The court vacated the infringement, no-invalidity, and damages judgments and remanded for a new trial under the corrected constructions and prior-art ruling. The decision reinforces that AIA grace-period “public disclosure” requires more than a private commercial sale, and that common industry sizes should not be imported into claims absent clear intrinsic support. Vacated and remanded; costs awarded to Nine. The court also rejected Nine’s challenge to the exclusion of late-produced TCO-Maersk communications. Claim construction: “internal diameter” has its plain meaning as a measured diameter across the width of the casing string; the intrinsic record did not clearly justify giving the same term different meanings in different claim locations. Infringement: the court did not enter judgment of noninfringement because a jury could still find, under the corrected construction, that portions of Nine’s accused BreakThru device satisfy the parallel-attachment limitation. Claim construction: “casing string” is not limited to pipe customarily at least 4.5 inches in outer diameter; the specification described 4.5 inches as common/permissive, not definitional or limiting. Prior art: under Sanho, NCS’s private sale of AirLock devices to Tundra did not publicly disclose the claimed subject matter for § 102(b)(1)(B), so it did not remove TCO’s later Apache sale/use from prior art. Procedure: the district court did not abuse its discretion by striking TCO-Maersk materials produced two days before fact discovery closed where Nine had not been diligent in pursuing that discovery. claim construction infringement § 102 remand waiver / forfeiture precedential damages claim construction infringement § 102 remand waiver / forfeiture precedential damages claim construction § 102 infringement remand damages