Opinions — Monday, September 14, 2026

The Federal Circuit affirmed-in-part and vacated-in-part in NCS Multistage Inc. v. TCO Group AS, a dispute concerning U.S. Patent No. 10,465,445 covering float tools for oil and gas well casing operations. The court affirmed the district court's contributory infringement judgment but vacated the jury's finding of no invalidity and remanded for a new trial on validity, applying claim construction principles addressed in a companion case decided the same day. TCO appealed after a jury found infringement of claims 28 and 29 and rejected TCO's invalidity defenses based on prior TDP-PO device versions.

The court's treatment of forfeiture principles is particularly instructive. TCO argued on appeal that it could not be liable for contributory infringement because its subsidiary TCO Products—not TCO itself—sold the infringing glass disc assemblies to licensed manufacturer NOV, and that TCO's subjective belief in non-infringement negated the scienter element under § 271(c). The Federal Circuit held TCO forfeited both arguments by failing to raise them in post-trial briefing before the district court, applying Fifth Circuit procedural law. The court also rejected TCO's attempt to relitigate claim construction on appeal where TCO had proposed the very construction it later challenged, holding a party to the claim construction it advocated below and that the district court adopted.

The Federal Circuit vacated and remanded a jury verdict from the Western District of Texas that Nine Energy Service, Inc. directly infringed claims 28 and 29 and induced infringement of claims 36, 39, 50-52, and 55-57 of U.S. Patent No. 10,465,445 held by NCS Multistage Inc. and NCS Multistage LLC, and that the asserted claims were not invalid. The central issue was the proper construction of "internal diameter" in the patent claims directed to oil and gas wellbore float tools using rupture discs. The district court had adopted NCS's position that "internal diameter" could refer to both an inner surface along the length of the casing string and a measured diameter across its width. The Federal Circuit held this construction violated the presumption that the same term appearing in different portions of the claims must have the same meaning unless clearly indicated otherwise. Applying Fin Control Systems Pty, Ltd. v. OAM, Inc., the court found neither the specification nor the prosecution history—including NCS's distinction of the Gano prior art reference during prosecution—sufficiently established that "internal diameter" was intended to have two different meanings within the same claim.

The decision reinforces the strength of the claim-term consistency presumption and sets a high bar for overcoming it through prosecution history. The court rejected NCS's argument that describing an internal diameter as "defining a fluid passageway" necessarily meant the term referred to an inner surface rather than a measured line, finding that Nine's construction also allowed a diameter line to define a passageway. The court further declined to find that amendments distinguishing prior art with a sloped attachment surface clearly demonstrated that "parallel to the internal diameter" required internal diameter to mean a lengthwise surface in that claim limitation. By vacating the infringement finding based on claim construction error, the court avoided reaching Nine's additional challenges regarding validity (including whether TCO's prior sale qualified as prior art under Section 102(b)(1)(B)), discovery sanctions concerning excluded TCO-Maersk documents, and damages apportionment issues, all of which will be available for consideration on remand.

The Federal Circuit reversed the District of Delaware's dismissal of TexasLDPC Inc.'s patent and copyright infringement action against Broadcom Inc., LSI Corporation, and Avago Technologies U.S. Inc. The district court had dismissed on two independent grounds: (1) that TexasLDPC's exclusive license agreement with Texas A&M University automatically terminated when TexasLDPC shifted its business focus solely to enforcement activity, thereby divesting the court of subject matter jurisdiction; and (2) alternatively, that even if the agreement remained in effect, TexasLDPC did not receive "all substantial rights" in the patents-in-suit and therefore could not sue without joining A&M as a co-plaintiff under 35 U.S.C. § 281 and Federal Rule of Civil Procedure 19. The Federal Circuit held that under Texas contract law, the license agreement unambiguously included enforcement activity within TexasLDPC's "business operations," such that the agreement had not terminated, and that the agreement conveyed all substantial rights to TexasLDPC, permitting it to sue in its own name without joining the patent owner.

The decision clarifies the application of the "all substantial rights" framework where a licensor reserves certain limited interests while granting comprehensive enforcement rights and financial participation to the licensee. The court determined that A&M's reservation of (i) rights to enforce a pre-existing non-exclusive license to Marvell, (ii) rights to practice the patents for research and educational purposes, and (iii) approval rights over assignment did not prevent the transfer of all substantial rights, particularly where the agreement granted TexasLDPC the exclusive right to enforce the patents, collect all damages, sublicense, and practice the patents commercially for their full term. The holding underscores that enforcement activity can constitute a legitimate business purpose sufficient to satisfy contractual continuation requirements, rejecting the characterization of patent enforcement as merely "ancillary" to development or commercialization activities. The decision provides guidance for structuring university-licensee agreements where enforcement is contemplated as a core activity rather than a subsidiary function.