Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`6:22-cv-1316
`CIVIL ACTION NO. ________
`
`JURY TRIAL DEMANDED
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`§
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`§§
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`§
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`NCS MULTISTAGE INC.
`NCS MULTISTAGE, LLC,
`
` Plaintiffs,
`
`vs.
`
`ENTECH SOLUTIONS, AS
`
` Defendant.
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiffs NCS Multistage Inc. and NCS Multistage LLC (collectively “NCS” or
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`“Plaintiffs”), by and through the undersigned counsel, hereby bring their Complaint for Patent
`
`Infringement against Defendant Entech Solutions, AS (“Entech” or “Defendant”).
`
`NATURE OF THE ACTION
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`1.
`
`This is an action for patent infringement. NCS alleges that Entech infringes the
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`following NCS Patent, which is attached hereto as Exhibit A:
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`• U.S. Patent No. 10,465,445 (“the ’445 Patent”)
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`2.
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`NCS alleges that Entech indirectly infringes the ’445 Patent by inducing its U.S.
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`customer Halliburton to make, use, offer for sale, and/or sell the infringing AirGlide™ Floatation
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`Sub (hereafter “AirGlide”) in the United States, a system used in downhole well construction,
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`and by encouraging U.S. customers to use the AirGlide to perform infringing floatation methods.
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`NCS further alleges that Entech contributes to infringement of the ’445 Patent by shipping
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`components to the United States, including Texas, that have no substantial non-infringing uses
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`and are specifically made to be assembled into the infringing AirGlide. NCS seeks damages,
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`injunctive, and other relief for Entech’s infringement of the ’445 Patent.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`6:22-cv-1316
`CIVIL ACTION NO. ________
`
`JURY TRIAL DEMANDED
`
`§
`§
`
`§§
`
`
`§
`§
`§
`§
`§
`
`NCS MULTISTAGE INC.
`NCS MULTISTAGE, LLC,
`
` Plaintiffs,
`
`vs.
`
`ENTECH SOLUTIONS, AS
`
` Defendant.
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiffs NCS Multistage Inc. and NCS Multistage LLC (collectively “NCS” or
`
`“Plaintiffs”), by and through the undersigned counsel, hereby bring their Complaint for Patent
`
`Infringement against Defendant Entech Solutions, AS (“Entech” or “Defendant”).
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for patent infringement. NCS alleges that Entech infringes the
`
`following NCS Patent, which is attached hereto as Exhibit A:
`
`• U.S. Patent No. 10,465,445 (“the ’445 Patent”)
`
`2.
`
`NCS alleges that Entech indirectly infringes the ’445 Patent by inducing its U.S.
`
`customer Halliburton to make, use, offer for sale, and/or sell the infringing AirGlide™ Floatation
`
`Sub (hereafter “AirGlide”) in the United States, a system used in downhole well construction,
`
`and by encouraging U.S. customers to use the AirGlide to perform infringing floatation methods.
`
`NCS further alleges that Entech contributes to infringement of the ’445 Patent by shipping
`
`components to the United States, including Texas, that have no substantial non-infringing uses
`
`and are specifically made to be assembled into the infringing AirGlide. NCS seeks damages,
`
`injunctive, and other relief for Entech’s infringement of the ’445 Patent.
`
`
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 2 of 10
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`THE PARTIES
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`3.
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`Plaintiff NCS Multistage Inc. is a Canadian corporation with a place of
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`business at 700, 333-7th Ave SW Calgary, AB T2P 2Z1.
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`4.
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`Plaintiff NCS Multistage, LLC is a Texas corporation with a place of business
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`at 19350 State Highway 249, Suite 600, Houston, TX 77070.
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`5.
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`Upon information and belief, Defendant Entech is a Norwegian company with a
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`principal place of business at Storanest 12, 5260 Indre Arna, Norway.
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`JURISDICTION AND VENUE
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`6.
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`This action for patent infringement arises under the Patent Laws of the United
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`States, 35 U.S.C. § 1 et. seq. This Court has original jurisdiction under 28 U.S.C. §§ 1331 and
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`1338.
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`7.
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`This Court has specific personal jurisdiction over Entech because Entech
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`purposefully directed its activities at Texas, the claim arises out of Entech’s activities with
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`Texas, and the assertion of personal jurisdiction is reasonable and fair. Entech conducts business
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`in the State of Texas. Upon information and belief, Entech created and designed the infringing
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`AirGlide. Entech entered into a license and distribution agreement with Halliburton for the
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`AirGlide. Entech provides Halliburton in Texas the assembly drawings and manufacturing
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`specifications for the AirGlide. Halliburton uses those drawings and specifications to make,
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`assemble, and sell the AirGlide in the United States, including substantial sales in this District.
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`Entech instructs or encourages U.S. customers to perform infringing floatation methods in this
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`District, including in the Permian Basin. Furthermore, Entech ships to Halliburton in Texas parts
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`specifically made for the AirGlide. Halliburton assembles those parts into the infringing
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`AirGlide.
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`2
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 3 of 10
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`8.
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`This Court has general personal jurisdiction over Entech because it has availed
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`itself of the rights and benefits of the laws of Texas, has derived substantial revenue from the
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`sales of the infringing AirGlide in Texas, and has systematic and continuous business contacts
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`with Texas.
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`9.
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`Alternatively, this Court has personal jurisdiction over Entech pursuant to Fed. R.
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`Civ. P. 4(k)(2).
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`10.
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`Venue is proper in this District under 28 U.S.C. §§ 1391. As a foreign
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`defendant, Entech may be sued in any judicial district in the United States. 28 U.S.C. §
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`1391(c)(3). Moreover, Entech has committed acts of indirect infringement in this District, as
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`explained above in ¶7, incorporated herein by reference.
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`BACKGROUND
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`A. NCS
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`11.
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`NCS is a leading technology and service company that specializes in multistage
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`well construction and completions. NCS Multistage Inc. initially formed in Canada in 2006 as
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`NCS Oilfield Services and began developing downhole completion tools for conventional and
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`unconventional completions. In 2008, NCS Multistage, LLC was incorporated in the United
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`States and established its worldwide headquarters in Houston, TX. Today, NCS has 20 offices in
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`the U.S. and Canada, and operates in Argentina, the Middle East and the North Sea, with a
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`record of over 12,000 field successes.
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`12.
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`NCS is an expert in developing downhole tools like its AirLock® buoyancy
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`system, a “casing float tool” covered by the ’445 Patent. NCS marks its AirLock® system with
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`the web address of its patent notice which contains the ’445 Patent number. See
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`3
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 4 of 10
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`https://www.ncsmultistage.com/patents/. NCS started marking its Airlock® system with the
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`’445 Patent the day the patent issued (i.e., November 5, 2019).
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`13.
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`As a casing string is run into the horizontal portion of a wellbore, the casing string
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`can drag on the bottom of the wellbore due to its weight and gravity. This makes it challenging
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`to run the casing to the target zone. The AirLock® system is designed to create buoyancy in the
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`casing string, so that the string is lighter and it is easier to run the casing into the wellbore. This
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`is called “floating the casing” into the wellbore. Below is a picture of the patented Airlock®
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`system.
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`14.
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`The AirLock® system (above in green) is a tubular body attached to the casing
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`string (above in grey). Within the tubular body is a rupture disc (above in white). In use, the
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`portion of the casing string above the rupture disc is filled with fluid. The portion of the casing
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`string below the rupture disc is filled with air, which creates buoyancy in the lower portion of the
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`string. This enhanced buoyancy reduces sliding friction up to 50% while the enhanced weight of
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`4
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 5 of 10
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`the vertical section provides the force needed to push the string all the way to the toe of the well.
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`After the casing string is run to the target zone, hydraulic pressure is applied from the surface,
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`which causes the rupture disc to disengage from the tubular body walls and shatter. This process
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`restores the internal diameter of the casing string so that tubing tools can be freely conveyed
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`through the casing string. More than 12,000 AirLock® systems have been installed, and casing
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`has landed on more than 99.9% of first attempts.
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`15.
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`NCS invests substantial resources in innovation and the protection of its valuable
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`intellectual property. To date, NCS has worldwide approximately 106 issued patents, including
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`the ’445 Patent that covers its AirLock® system, and 106 pending patent applications.
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`B. Entech
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`16.
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`Upon information and belief, Entech is a Norwegian oil and gas technology
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`company. Entech offers for sale through its website, entechteam.com, various oil and gas
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`technologies and solutions.
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`17.
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`Upon information and belief, Entech designed the AirGlide, including creating the
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`assembly drawings and manufacturing specifications for the AirGlide. Entech manufactures
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`components specifically designed for the infringing AirGlide (hereafter “Entech Components”).
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`18.
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`Upon information and belief, Entech entered into a license and distribution
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`agreement with Halliburton, where Halliburton is authorized to make, use, sell, and/or offer for
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`sale the infringing AirGlide. Pursuant to the agreement, Entech sends the Entech Components,
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`the assembly drawings, and manufacturing specifications for the AirGlide to the United States,
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`including to Halliburton in Texas. Upon information and belief, Halliburton manufactures or has
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`third parties manufacture certain components of the AirGlide (hereafter the “Halliburton
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`Components”), according to Entech’s manufacturing specifications. Halliburton assembles
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`5
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 6 of 10
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`AirGlides, according to Entech’s assembly drawings, using the Entech Components and
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`Halliburton Components.
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`19.
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`Upon information and belief, Halliburton offers for sale and sells the infringing
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`AirGlide to its customers in the United States, including to customers in this District.
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`Halliburton’s customers use the AirGlide to float casing string in a wellbore.
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`20.
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`An image of the AirGlide from Halliburton’s marketing materials is depicted
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`below.
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`
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`(See https://cdn.brandfolder.io/BQOGXPBX/at/7b244wpsn77xtzktj85k7m/2022-MKTG-CMT-
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`13672_AirGlide_Sales_Data_Sheet.pdf).
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`21.
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`According to Halliburton’s marketing materials, the AirGlide is a casing
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`floatation device, used to create buoyancy in the casing string that makes it easier to run casing
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`through the horizontal portion of a wellbore. The AirGlide is a tubular body that has a glass
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`barrier disc. After the casing is landed in the target zone, the glass barrier is ruptured by
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`applying hydraulic pressure from the surface, which restores the internal diameter of the casing
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`string.
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`C. Entech’s Notice of NCS’s Infringement Concerns
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`22.
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`On October 24, 2022, NCS’ counsel sent a letter to Thomas Rooney, Senior IP
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`Counsel for Halliburton, notifying Halliburton of the ’445 Patent and NCS’ concern that
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`Halliburton’s AirGlide infringed the ’445 Patent.
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`6
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 7 of 10
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`23.
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` On December 1, 2022, Entech’s counsel contacted NCS’s counsel, informing
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`NCS that Entech supplies AirGlide components to Halliburton and that Entech wished to
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`negotiate a license to the ’445 Patent. The parties have been unable to reach an agreement on the
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`license.
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`COUNT 1: INFRINGEMENT OF THE ’445 PATENT
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`24.
`
`The allegations of paragraphs 1-23 of this Complaint are incorporated by
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`reference as though fully set forth herein.
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`25.
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`NCS Multistage Inc. owns by assignment the entire right, title, and interest in the
`
`’445 Patent.
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`26.
`
`27.
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`NCS Multistage, LLC is the exclusive licensee of the ’445 Patent.
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`The ’445 Patent was duly and legally issued by the United States Patent and
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`Trademark Office on November 5, 2019 and is entitled “Casing Float Tool.” A true and correct
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`copy of the ’445 Patent is attached hereto as Exhibit A.
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`28.
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`29.
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`The ’445 Patent is valid and enforceable under the laws of the United States.
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`
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`Entech has indirectly infringed and is indirectly infringing at least claims 28-29 of
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`the ’445 Patent in violation of 35 U.S.C. § 271 et seq.
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`30. With knowledge of the ’445 Patent, and having written notice from NCS that the
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`AirGlide infringes the ’445 Patent, Entech has induced and is inducing Halliburton to directly
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`infringe the ’445 Patent by directing, causing, instructing and/or encouraging Halliburton to
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`manufacture and/or assemble, use, offer for sale, and/or sell the infringing AirGlide. For
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`example, as shown in the claim chart attached as Exhibit B, the AirGlide meets every element of
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`at least claims 28-29 either literally or under the doctrine of equivalents. Upon information and
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`belief, Entech is the designer of the infringing AirGlide. Entech created the assembly drawings
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`7
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 8 of 10
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`and manufacturing specifications for the AirGlide, and provided them to Halliburton. Entech
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`also ships the Entech Components to Halliburton. Halliburton uses the Entech Components and
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`Entech’s assembly drawings and manufacturing specifications to manufacture and assemble the
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`AirGlide in the United States. Halliburton then offers to sell and/or sells the AirGlide to
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`customers in the United States.
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`31. With knowledge of the ’445 Patent, Entech has contributed and is contributing to
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`infringement of at least claims 28-29 of the ’445 Patent in violation of 35 U.S.C. § 271 et seq.
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`Entech ships to Halliburton the Entech Components, which are especially made or adapted for
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`use in the infringing AirGlide. These components are a material part of the AirGlide and the
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`’445 Patent, are not a staple article or commodity of commerce suitable for substantial non-
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`infringing uses, and have no substantial non-infringing uses. Halliburton assembles those
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`components into the infringing AirGlide.
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`32.
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`Entech’s infringement of the ’445 Patent has been and continues to be willful and
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`deliberate. Upon information and belief, Entech has been on notice of the ’445 Patent and its
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`infringement since at least December 1, 2022, when Halliburton contacted Entech to inform
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`Entech of NCS’s infringement concerns. Moreover, upon information and belief, Entech is
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`aware that NCS secured two jury verdicts of infringement and no invalidity of the ’445 Patent in
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`2022, against parties that make virtually identical flotation subs. Notwithstanding the above,
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`upon information and belief, Entech has deliberately and/or intentionally continued to engage
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`in the above-described infringing acts despite a known or obvious risk of infringement of the
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`’445 Patent.
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`33.
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`As a result of Entech’s acts of infringement, NCS has suffered and will continue
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`to suffer damages in an amount to be proved at trial.
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`8
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 9 of 10
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`PRAYER FOR RELIEF
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`WHEREFORE, NCS prays for the following relief:
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`A.
`
`B.
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`A judgment that Entech has infringed the ’445 Patent;
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`An order enjoining Entech, its officers, agents, employees, and those persons in
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`active concert or participation with any of them, and Entech’s successors and
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`assigns, from continuing to infringe the ’445 Patent;
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`C.
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`An order awarding NCS its damages pursuant to 35 U.S.C. § 284, including
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`supplemental damages for any continuing post-verdict infringement up until entry
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`of final judgment, with an accounting, as needed;
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`D.
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`An order finding that Entech’s infringement has been willful and increasing the
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`damages awarded to NCS to three times the amount assessed pursuant to 35
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`U.S.C. § 284;
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`E.
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`An order finding that this case is exceptional within the meaning of 35 U.S.C. §
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`F.
`
`G.
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`H.
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`285 and awarding NCS its attorneys’ fees;
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`An order awarding NCS prejudgment and post-judgment interest on its damages;
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`An order awarding NCS its costs;
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`An order awarding NCS an ongoing royalty pursuant to 35 U.S.C. §283 for any
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`continuing post-judgment infringement, with an accounting, as needed;
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`I.
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`An order awarding NCS any other and further relief as the Court deems proper.
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`DEMAND FOR JURY TRIAL
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`
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`Pursuant to Federal Rule of Civil Procedure 38, NCS hereby demands a jury trial on all
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`issues so triable.
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`9
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`Case 6:22-cv-01316-ADA Document 1 Filed 12/30/22 Page 10 of 10
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`Respectfully submitted,
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`
`
`
`/s/ Domingo M. LLagostera
`BLANK ROME LLP
`Domingo M. LLagostera
`(Attorney-in-charge)
`State Bar No. 24070157
`Tel.: (713) 632-8682
`DLLagostera@BlankRome.com
`717 Texas Avenue, Suite 1400
`Houston, TX 77002
`
`Attorneys for Plaintiffs NCS Multistage Inc.
`& NCS Multistage, LLC
`
`
`
`Dated: December 30, 2022
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