GLOBAL TUBING LLC v. TENARIS COILED TUBES LLC
Authored by: Jeremy J. Gustrowsky
The Federal Circuit vacated summary judgment on both sides of a dispute over coiled tubing patents, finding that genuine factual disputes remained about whether an inventor deliberately withheld prior art from the Patent Office and whether the patent holder attempted to monopolize the market. The case centered on three patents — U.S. Patent Nos. 9,803,256, 10,378,074, and 10,378,075 — owned by Tenaris, covering quenched-and-tempered coiled tubing used in the oil and gas industry.
Tenaris had acquired assets from a predecessor company, Southwestern Pipe, including documents describing a similar product called “CYMAX.” During patent prosecution, inventor Dr. Martín Valdez provided these CYMAX Documents to Tenaris’ attorneys with a now-infamous margin comment: “I am not sure it is a good idea to disclose this document.” The district court called this “a rare example of direct evidence of an intent to defraud” and granted summary judgment of inequitable conduct to competitor Global Tubing. But the Federal Circuit disagreed, noting that Dr. Valdez offered a plausible alternative explanation — he believed the CYMAX Documents described a different carbon chemistry range that didn’t overlap with the patent claims, thought the documents would be “confusing” to include, and believed a previously submitted reference called “Chitwood” already covered the same ground. Whether those explanations are credible is a question for trial, not summary judgment.
The court also found a genuine factual dispute on materiality. Tenaris argued the CYMAX Documents were merely cumulative of the Chitwood reference, which disclosed overlapping steel chemistry information and was already before the examiner. The court noted that a reasonable factfinder could credit testimony that a skilled artisan could have derived the same chemical composition details from Chitwood and publicly available industry standards. Additionally, when Tenaris later submitted the complete CYMAX Documents during prosecution of related “grandchild” patent applications, the Patent Office still allowed those claims — evidence that could suggest the documents were not critical to patentability.
On the flip side, the Federal Circuit also vacated summary judgment in Tenaris’ favor on Global Tubing’s Walker Process fraud claim, which alleged Tenaris tried to monopolize the coiled tubing market using fraudulently obtained patents. The district court had dismissed this claim based on Tenaris being “such a small market player,” but the Federal Circuit found the lower court never properly defined the relevant product or geographic market — a necessary first step in any monopolization analysis. The parties presented competing market definitions supported by expert testimony, creating factual disputes that a jury would need to resolve. The appellate court also pointed to evidence that Tenaris threatened litigation against Global Tubing at a 2017 trade show, which could support a finding of predatory or anticompetitive conduct.
The case now heads back to the district court for further proceedings, potentially including a trial where a factfinder will weigh Dr. Valdez’s credibility, determine whether the withheld documents were truly material, and evaluate the monopolization claims. The decision reinforces that inequitable conduct findings generally require a trial when the accused party offers non-frivolous explanations for its conduct that raise credibility questions unsuitable for resolution on paper.