Tempress Technologies v. Texas Oilwell Partners: Borehole Tool Suit Dismissed Without Prejudice
Tempress Technologies filed a patent infringement action in the Southern District of Texas against Texas Oilwell Partners over US7139219B2, covering hydraulic impulse generator technology for borehole drilling. After 441 days of litigation, both parties jointly stipulated to dismiss all claims and counterclaims without prejudice — leaving the door open for future proceedings.
Joint Stipulated Exit Leaves Borehole IP Dispute Unresolved
On April 11, 2023, Tempress Technologies, Inc. filed a patent infringement action against Texas Oilwell Partners, LLC in the U.S. District Court for the Southern District of Texas (Case No. 4:23-cv-01351), assigned to Judge Charles Eskridge. The suit centred on US7139219B2, a patent covering a hydraulic impulse generator and frequency sweep mechanism designed for borehole applications — technology central to downhole drilling efficiency in the oil and gas sector.
The case closed on June 25, 2024, via a Joint Stipulated Motion to Dismiss without Prejudice, which Judge Eskridge granted in full. All claims asserted by Tempress and all counterclaims asserted by Texas Oilwell Partners were dismissed without prejudice. A without-prejudice dismissal means neither party obtained a merits ruling: no infringement finding, no invalidity determination, and no injunction was entered. Critically, Tempress retains the right to refile the same claims in a future action.
The 441-day duration before a joint dismissal suggests the parties engaged in substantive pre-trial activity — potentially including claim construction briefing or settlement negotiations — before electing to exit jointly. The public record does not disclose whether a confidential settlement was reached, though joint stipulated dismissals of this nature are frequently, though not exclusively, associated with out-of-court resolutions. The underlying validity and enforceability of US7139219B2 remain untested by this court.
Filing to Dismissed without Prejudice in 441 days
441 days — longer than the median S.D. Texas patent case resolved before trial
Dismissed without prejudice: what the joint stipulation means for both parties
Without prejudice: no merits ruling, no permanent bar
A dismissal without prejudice under Federal Rule of Civil Procedure 41 extinguishes the current action but does not adjudicate the underlying claims. Tempress Technologies is not barred from refiling suit on US7139219B2 against Texas Oilwell Partners, subject to applicable statutes of limitation. No court finding on infringement, validity, or claim scope was issued — the legal slate is reset.
Rule 41 — no merits adjudicationTempress retains enforcement rights — patent survives unchallenged
Because the dismissal was without prejudice, Tempress Technologies preserves its ability to reassert US7139219B2 against Texas Oilwell Partners or other parties. No invalidity ruling was entered, meaning the patent’s legal presumption of validity under 35 U.S.C. § 282 remains fully intact. If a settlement was reached (undisclosed on the public record), Tempress may have also secured commercial terms or a licensing arrangement.
Patent validity untouchedTexas Oilwell faces no judgment — but risk is not extinguished
Texas Oilwell Partners avoided any infringement finding or injunction in this proceeding. However, because the dismissal was without prejudice, no estoppel attaches and Tempress could refile. Texas Oilwell also did not obtain a declaration of invalidity or non-infringement, meaning it cannot rely on this case as a shield against future enforcement of US7139219B2.
No estoppel — future exposure remainsUnresolved borehole IP creates ongoing risk for downhole tool makers
The absence of a merits ruling on US7139219B2 leaves the competitive landscape in the downhole hydraulic tool sector without judicial guidance on claim scope. Companies developing or commercialising hydraulic impulse generator or frequency sweep technology for borehole applications should treat this patent as an active enforcement risk. The joint dismissal does not signal that the patent is weak — it signals only that the parties chose to resolve or defer this particular dispute privately.
Ongoing FTO risk for downhole toolsFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Tempress Technologies, Inc. | Company | Oilfield technology company — holder of US7139219B2 (hydraulic impulse generator)Search in Eureka ↗ |
| Defendant | Texas Oilwell Partners, LLC | Company | Texas-based oilwell services company accused of infringing borehole tool patentSearch in Eureka ↗ |
| Plaintiff counsel | C. Erik Hawes | Attorney | Counsel for Tempress Technologies, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Elizabeth Mooar Chiaviello | Attorney | Counsel for Tempress Technologies, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Melissa Marie Story | Attorney | Counsel for Tempress Technologies, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Nicholas A. Restauri | Attorney | Counsel for Tempress Technologies, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Scott D. Sherwin | Attorney | Counsel for Tempress Technologies, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Morgan, Lewis & Bockius, LLP | Law Firm | Representing Tempress Technologies, Inc.Search in Eureka ↗ |
| Defendant counsel | Eric Paul Mirabel | Attorney | Counsel for Texas Oilwell Partners, LLCSearch in Eureka ↗ |
| Defendant law firm | Attorney at Law PLLC | Law Firm | Representing Texas Oilwell Partners, LLCSearch in Eureka ↗ |
| Presiding judge | Judge Charles Eskridge | Judge | Texas Southern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s order adopts the parties’ joint stipulation in full, granting dismissal of all claims and counterclaims without prejudice. The phrasing ‘all claims and counterclaims’ confirms the order sweeps both Tempress’s infringement assertions and any defensive counterclaims raised by Texas Oilwell Partners. No conditions, carve-outs, or cost awards appear in the order. Because no merits ruling was issued, the decision has no precedential bearing on the validity or scope of US7139219B2.
US7139219B2 — Hydraulic Impulse Generator for Borehole Applications
US7139219B2, filed under application number US10/777484, protects a hydraulic impulse generator and frequency sweep mechanism designed for borehole applications. The invention addresses a core challenge in downhole drilling: generating controlled hydraulic pulses and variable frequency sweeps within a wellbore to improve drilling efficiency and tool performance. The technology sits at the intersection of fluid dynamics and downhole tool engineering — a technically specialised domain within the broader oil and gas equipment sector.
For Tempress Technologies, US7139219B2 represents a defensible technical differentiator in a competitive downhole tool market. Companies developing hydraulic jarring, agitation, or impulse-based tools for wellbore applications face meaningful claim overlap risk with this patent. The absence of any court-issued claim construction in this litigation means the patent’s enforceable boundaries remain undefined by judicial precedent — a factor that heightens uncertainty for R&D teams designing adjacent downhole hardware.
Should your team run an FTO against US7139219B2?
Any organisation designing, manufacturing, or commercialising hydraulic impulse generators, downhole agitation tools, or frequency sweep mechanisms for borehole or wellbore applications should treat US7139219B2 as a live FTO concern. The patent emerged from active litigation and was never invalidated or narrowed by a court. Product teams working on drilling efficiency tools, jar assemblies, or pulse-based downhole systems in particular should assess claim exposure before market entry.
PatSnap Eureka’s FTO Search Agent can map the claim landscape of US7139219B2 against your specific product design, identify prior art that was not before the court in this case, and surface related Tempress Technologies patent filings that may extend the enforcement perimeter. Eureka’s citation and family analysis tools help R&D teams build a defensible design-around strategy before the next enforcement action is filed.
Run a freedom-to-operate analysis on US7139219B2 to assess your product’s exposure
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What this case signals for the downhole tool IP landscape
A joint stipulated exit after 441 days rarely signals weakness — it typically signals leverage and strategic positioning in the oilfield tech sector.
Without-prejudice exits preserve future enforcement optionality for patent holders
Tempress Technologies’ ability to refile means US7139219B2 remains a live enforcement tool. Competitors in hydraulic downhole tool design should not read this dismissal as a green light — the patent’s validity was never challenged before the court, and its presumption of validity is undiminished.
Joint stipulations after prolonged litigation suggest private resolution — not defeat
Cases that run 400+ days before a joint dismissal typically involve substantive claim construction activity or settlement negotiation. The public record is silent on terms, but the pattern is consistent with a confidential commercial resolution rather than a unilateral capitulation by either party.
Tempress v Texas — key questions answered
The case was dismissed without prejudice on June 25, 2024, pursuant to a Joint Stipulated Motion to Dismiss. Judge Charles Eskridge granted the motion in full, dismissing all claims and counterclaims. No merits ruling on infringement or validity was issued, and Tempress retains the right to refile.
Tempress Technologies asserted US7139219B2, titled ‘Hydraulic impulse generator and frequency sweep mechanism for borehole applications,’ filed under application number US10/777484. The patent covers downhole drilling tool technology used to generate hydraulic pulses and frequency sweeps within a wellbore.
A without-prejudice dismissal does not bar Tempress Technologies from refiling the same infringement claims against Texas Oilwell Partners or asserting the patent against other parties. No invalidity or non-infringement finding was made, so US7139219B2 retains its statutory presumption of validity under 35 U.S.C. § 282.
The public record does not disclose any settlement terms. The case was resolved via joint stipulated dismissal, which is consistent with — but does not confirm — a confidential out-of-court resolution. Joint stipulations after 441 days of litigation commonly, though not always, reflect a commercial agreement between the parties.
Tempress Technologies was represented by Morgan, Lewis & Bockius, LLP, with attorneys including C. Erik Hawes, Elizabeth Mooar Chiaviello, Melissa Marie Story, Nicholas A. Restauri, and Scott D. Sherwin. Texas Oilwell Partners was represented by Eric Paul Mirabel of Attorney at Law PLLC.
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