NCS Multistage Inc. v. Kobold Corporation

NCS Multistage Inc. v. Kobold Corporation

After purposive construction the Court found the asserted NCS patents (CA 2,693,676; CA 2,820,652; CA 2,738,907; CA 2,766,026; CA 2,820,704) invalid across multiple claims principally for anticipation and/or obviousness and related grounds (overbreadth and inutility where applicable); Kobold's CA 3,027,571 was declared valid in part and Claims 6,11,12 and 16 were infringed by NCS LP3 sleeves; remedies include permanent injunction, delivery up/destruction, entitlement to accounting of profits and a lump sum costs award to Defendants of CAD 2,368,418.38 (fees and disbursements) with damages to be quantified in a separate phase.

Citation
2023 FC 1486
Parties
Plaintiff / Defendant by Counterclaim: NCS Multistage Inc.; Defendant / Plaintiff by Counterclaim: Kobold Corporation; Kobold Completions Inc.; 2039974 Alberta Ltd.; Defendant / Plaintiff by Counterclaim: Promac Industries Ltd.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
7 November 2023
Procedural Posture
Patent Infringement and Counterclaim / Judgment on Liability and Costs Following 23 Day Trial (bifurcated Remedies/damages Phase to Follow)
Outcome
NCS claims dismissed; NCS patents (selected claims/entire patents as identified) declared invalid; Kobold 571 Patent valid in part and NCS liable for infringement of Claims 6,11,12,16 of CA 3,027,571; permanent injunction and delivery up ordered; quantification of remedies bifurcated; costs awarded to Defendants
Legal Topics
Claim Construction, Validity: Anticipation, Validity: Obviousness, Overbreadth and Inutility, Double Patenting/divisional Applications, Person of Skill in the Art (posita), Common General Knowledge (cgk), Costs
Source Language
English
Intellectual Property Patent Law Civil Litigation Remedies Claim Construction Validity: Anticipation Validity: Obviousness Overbreadth and Inutility +4 more

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Parties

NCS Multistage Inc.

Plaintiff / Defendant by Counterclaim

Kobold Corporation; Kobold Completions Inc.; 2039974 Alberta Ltd.

Defendant / Plaintiff by Counterclaim

Promac Industries Ltd.

Defendant / Plaintiff by Counterclaim

Procedural Posture

Patent Infringement and Counterclaim / Judgment on Liability and Costs Following 23 Day Trial (bifurcated Remedies/damages Phase to Follow)

Legal Issues

  1. 1 Proper POSITA and CGK definitions
  2. 2 Purposive claim construction and claim differentiation
  3. 3 Anticipation by single prior disclosure

Ratio Decidendi

After purposive construction the Court found the asserted NCS patents (CA 2,693,676; CA 2,820,652; CA 2,738,907; CA 2,766,026; CA 2,820,704) invalid across multiple claims principally for anticipation and/or obviousness and related grounds (overbreadth and inutility where applicable); Kobold's CA 3,027,571 was declared valid in part and Claims 6,11,12 and 16 were infringed by NCS LP3 sleeves; remedies include permanent injunction, delivery up/destruction, entitlement to accounting of profits and a lump sum costs award to Defendants of CAD 2,368,418.38 (fees and disbursements) with damages to be quantified in a separate phase.

Court Disposition

NCS claims dismissed; NCS patents (selected claims/entire patents as identified) declared invalid; Kobold 571 Patent valid in part and NCS liable for infringement of Claims 6,11,12,16 of CA 3,027,571; permanent injunction and delivery up ordered; quantification of remedies bifurcated; costs awarded to Defendants

Orders

  • Declared Claims 1-34 of CA 2,693,676 invalid
  • Declared Claims 1-26 of CA 2,820,652 invalid