NCS Multistage Inc. v. TCO Group AS — Contributory Infringement Stands but Patent Validity Returns for Further Proceedings

Background

NCS Multistage sued TCO over the same U.S. Patent No. 10,465,445 involved in its companion dispute with Nine Energy. The patent concerns a flotation tool used to position casing in an oil or gas well. A Western District of Texas judgment held that TCO contributorily and inducibly infringed claims 28 and 29, that the claims were not invalid, and that NCS was entitled to damages.

This appeal was decided alongside NCS Multistage v. Nine Energy Service, which addressed the same patent and supplied the controlling construction of “casing string.”

TCO challenged the infringement and validity rulings. Some of its appellate theories depended on positions it had not fully presented to the trial court, while its validity challenge implicated the meaning of “casing string” addressed in the companion appeal decided the same day.

The Court’s Holding

The Federal Circuit affirmed contributory infringement. TCO had not preserved its theory that a license with NOV insulated it from responsibility for components made by a subsidiary. It likewise forfeited a developed challenge based on its asserted subjective belief of noninfringement. In any event, competing trial evidence permitted the jury to find that TCO knew the accused components were adapted for infringement.

Because contributory infringement independently supported liability, the panel did not need to decide TCO’s separate attack on induced infringement. The corrected construction of “casing string” also did not require a new infringement trial: the asserted claims cover an apparatus, and undisputed evidence showed the accused devices were configured for connection in line with a casing string.

Validity was different. Applying the claim construction announced in the companion Nine Energy opinion, the court vacated the judgment that the patent was not invalid and remanded. It declined to decide on the existing appellate briefing whether TCO was entitled to judgment as a matter of law, leaving the district court to assess the record first.

Key Takeaways

• An independently sufficient contributory-infringement verdict can preserve liability without appellate resolution of an induced-infringement theory.
• Arguments raised only cursorily or outside the relevant post-trial presentation may be forfeited on appeal.
• A revised claim construction can require renewed validity proceedings without disturbing infringement when the accused apparatus satisfies the corrected language.

Why It Matters

The split result shows that claim-construction errors do not always require an all-or-nothing retrial. Courts examine how the corrected meaning affects each issue separately. Here, the infringement evidence survived, while the validity analysis required another look.

For trial teams, the opinion is equally a preservation lesson. A potentially strong corporate-separateness or state-of-mind theory must be squarely developed in the correct motion and at the correct stage; an appellate court will not rebuild it after judgment.