National Oilwell Varco LP v. Black Diamond Oilfield Rentals LLC

1
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
NATIONAL OILWELL VARCO, L.P., 	)
a Delaware limited partnership, 	)
)
Plaintiff, 	)
)
v. 	) 	Case No. CIV-24-1258-D
)
BLACK DIAMOND OILFIELD 	)
RENTALS, LLC, et al., 	)
)
Defendants. 	)
ORDER
Before the Court is Defendant Black Diamond Oilfield Rentals, LLC’s Motion to
Dismiss Third Amended Complaint [Doc. No. 91]. Plaintiff National Oilwell Varco, L.P.
(NOV) filed a response [Doc. No. 106], and Black Diamond replied [Doc. No. 117]. The
matter is fully briefed and at issue.
BACKGROUND
NOV manufactures oil and gas drill pipe and drill pipe connections under its
eXtreme Torque (“XT”) trademark. Grant Prideco designed XT drill pipe and connections
with a “double shoulder” to eliminate a gap common in single-shoulder connections.
Following a merger, NOV acquired Grant Prideco’s XT patent and trademark. NOV’s
patent for the XT drill pipe and drill pipe connections expired in 2017.
Following the expiration of the XT patent, Black Diamond began offering its own
double-shoulder connections, named EVRDRL. Black Diamond referred to its EVRDRL
connections as “XT-type,” allegedly because the oil and gas industry had come to associate
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 1 of 11

2
“XT” with a type of drill pipe, and not specifically with NOV’s XT connections. Black
Diamond alleges that it procured independent studies and certifications that found
EVRDRL 	connections 	to 	be 	interchangeable 	and/or 	compatible 	with 	NOV’s 	XT
connections. NOV disputes any claim of interchangeability between its XT connections
and Black Diamond’s EVRDRL connections. NOV further disputes that XT has become a
generic term; rather, NOV asserts that XT is well known in the oil and gas industry to refer
exclusively to NOV’s drill pipe and drill pipe connections.
In January of 2023, both NOV and Black Diamond were named as defendants in
Snider v. Cactus Drilling Co., LLC, et al., Case No. CJ-2023-7 (District Court of Grady
County, Oklahoma) (Snider Litigation). The Snider Litigation alleged that Tanner Snider
lost his life on a drilling rig “when a drill pipe connection failed downhole during trip out
operations.” [Petition, at ¶ 1, Snider Litigation, CJ-2023-7 (Grady County District Court)].1
The petition references “more than 600 joints of NOV 4” XT-39 14 ppf drill pipe,” which
was allegedly manufactured by NOV and provided by Black Diamond. Id. at ¶¶ 2, 16. On
February 27, 2024, the Snider Litigation plaintiffs dismissed without prejudice their claims
against NOV, and the Snider Litigation ultimately resolved by settlement in October of
2024.2
On December 3, 2024, NOV filed this action. The operative complaint is the Third
1 The Court takes judicial notice of the Snider Litigation, which is publicly accessible via
http://www.oscn.net.
2 Snider Litigation OSCN Docket Sheet,
https://www.oscn.net/dockets/GetCaseInformation.aspx?db=grady&number=CJ-2023-7,
accessed March 2, 2026.
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 2 of 11

3
Amended Complaint [Doc. Nos. 80, 84], which includes as defendants Black Diamond,
Basin Holdings, LLC, Basin Energy, LLC, and Precision Engineering Solutions, LLC.3
NOV asserts the following claims against Black Diamond: trademark infringement
(15 U.S.C. § 1114); federal unfair competition and false designation of origin (15 U.S.C.
§ 1125(a)); federal false advertising (15 U.S.C. § 1125(a)); common-law trademark
infringement; violations of the Oklahoma Deceptive Trade Practices Act (OKLA. S TAT .
tit. 78, §§ 51 et seq.); unjust enrichment; civil conspiracy; violations of the Defend Trade
Secrets Act (18 U.S.C. § 1836 et seq.); violations of the Oklahoma Uniform Trade Secrets
Act (O KLA. S TAT . tit. 78, § 85 et seq.); misappropriation of confidential and proprietary
business information; and unfair competition.
Before the Court is Black Diamond’s Motion to Dismiss [Doc. No. 91], in which
Black Diamond asserts that each of NOV’s claims against it are barred by the pertinent
statute of limitations or under the doctrine of laches.
LEGAL STANDARD
A complaint may be dismissed upon a motion for “failure to state a claim upon
which relief can be granted.” FED. R. C IV. P. 12(b)(6). Pursuant to FED. R. C IV. P. 8(a)(2),
a complaint must contain “a short and plain statement… showing that the pleader is entitled
to relief.” The standard “does not require ‘detailed factual allegations,’ but it demands more
than an unadorned, the-defendant-unlawfully-harmed-me accusation.” Ashcroft v. Iqbal,
556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)).
3 Defendants Wickander and Associates, Inc. and Jackie E. “Jack” Smith have been dismissed
from this action. [Doc. Nos. 145, 146].
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 3 of 11

4
Dismissal is proper “if, viewing the well-pleaded factual allegations in the complaint as
true and in the light most favorable to the non-moving party, the complaint does not contain
‘enough facts to state a claim to relief that is plausible on its face.’” MacArthur v. San Juan
Cnty., 497 F.3d 1057, 1064 (10th Cir. 2007) (quoting Twombly, 550 U.S. at 570). “A claim
has facial plausibility when the plaintiff pleads factual content that allows the court to draw
the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556
U.S. at 678 (citing Twombly, 550 U.S. at 556).
“Typically, facts must be developed to support dismissing a case based on the statute
of limitations.” Herrera v. City of Espanola, 32 F.4th 980, 991 (10th Cir. 2022). To that
end, a statute of limitations defense may be resolved on a Rule 12(b) motion “when the
dates given in the complaint make clear that the right sued upon has been extinguished.”
Herrera, 32 F.4th at 991 (citation omitted). “Indeed, it is only proper to dismiss a complaint
based on an affirmative defense when the complaint itself admits all the elements of the
affirmative defense.” Bistline v. Parker, 918 F.3d 849, 876 (10th Cir. 2019).4
DISCUSSION
I. 	Lanham Act Claims (Claims I, II, III)
Black 	Diamond 	contends 	that 	NOV’s 	Lanham 	Act 	claims 	for 	trademark
infringement, federal unfair competition and false designation of origin, and false
advertising are untimely. Because the Lanham Act does not provide a statute of limitations,
4 Although Black Diamond repeatedly refers to documents outside the operative complaint, to
include the Court’s Order addressing the separate issue of NOV’s delay in seeking emergency
relief, the Court’s present analysis is limited to the allegations of the Third Amended Complaint.
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 4 of 11

5
Black Diamond asserts that the Court should apply a strict two-year limitations period,
borrowing Oklahoma’s statute of limitations for “an action for injury to the rights of
another, not arising on contract.” See O KLA. S TAT . tit. 12, § 95(A)(3). NOV contends that
Oklahoma’s three-year statute of limitations for “an action upon a liability created by
statute other than a forfeiture or penalty” should be applied, but only in the context of a
broader laches analysis. See O KLA. S TAT . tit. 12, § 95(A)(2).
The Lanham Act does not contain a statute of limitations. However, it “expressly
provides for defensive use of ‘equitable principles, including laches.’” Petrella v. Metro-
Goldwyn-Mayer, Inc., 572 U.S. 663, 678 n.15 (2014) (quoting 15 U.S.C. § 1115(b)(9)).
The Tenth Circuit has not squarely addressed the statute of limitations for Lanham Act
claims. In United States v. Foote, the Tenth Circuit noted that “[a]lthough some courts have
read the Lanham Act to incorporate analogous state statutes of limitations, these limitations
periods arise only by implication and are not ‘expressly provided by law.’” 413 F.3d 1240,
1248 (10th Cir. 2005). In Yeager v. Fort Knox Sec. Products, the Tenth Circuit referred to
courts that “have looked to analogous state limitation provisions and invoked presumptions
in favor of (or against) laches defenses to claims brought outside (or inside) the analogous
limitations period.” 602 F. App’x 423, 431 (10th Cir. 2015) (unpublished).5
Upon review of Foote and Yeager, the Court declines to strictly apply an Oklahoma
statute of limitations to NOV’s Lanham Act claims. Instead, the Court will look to the most
analogous Oklahoma statute of limitations only insofar as it aids the Court’s laches
5 Unpublished opinions are cited pursuant to FED. R. APP . P. 32.1(a) and 10th Cir. R. 32.1(A).
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 5 of 11

6
analysis. “The question of whether a claim is barred by laches must be determined by the
facts and circumstances in each case, and according to right and justice. Laches in legal
significance is not merely delay, but delay that works as a disadvantage to another.” Hitch
Enterprises, Inc. v. Cimarex Energy Co., 859 F. Supp. 2d 1249, 1269 (W.D. Okla. 2012)
(quoting Stallings v. White, 153 P.2d 813, 817 (Okla. 1944)).
Viewing the record in NOV’s favor and accepting the allegations of the Third
Amended Complaint as true, the Court finds that NOV’s Lanham Act claims are not subject
to dismissal via laches at this stage of proceedings. See Hitch Enterprises, Inc., 859 F.
Supp. 2d at 1269 (“[T]he Court finds that such equitable determinations, which entail more
than a finding that the factual allegations of the first amendment are well-pleaded, are more
appropriately resolved at a later stage in the lawsuit.”).
As to NOV’s knowledge of Black Diamond’s alleged conduct, the Third Amended
Complaint claims that NOV “ha[d] learned through recent discovery in this case that Jack
Smith provided NOV’s confidential and proprietary trade secrets to Black Diamond.”
[Doc. No. 84, at ¶ 62]. NOV’s Third Amended Complaint also quotes a series of e-mails
between Brian Christen and Christopher Biggerstaff, which were produced in May of 2025,
which NOV alleges is the “first (and earliest) time NOV could have discovered the
misappropriation of its trade secrets.” Id. at 25 n.10. The Third Amended Complaint further
avers that “on July 2, 2025, Black Diamond disclosed to NOV for the first time that … the
company possessed the XT® Thread Detail Drawings.” Id. at ¶ 65. The complaint further
provides that, in July of 2020, “NOV formally warned Black Diamond about infringing on
NOV’s trademarks on Black Diamond’s website,” but that “[w]ebsite infringement was far
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 6 of 11

7
different than the other infringement described herein, which implicated spec sheets,
delivery ticket assemblies, customer communications, as well as drill pipe bids and quotes
provided by Black Diamond to customers.” Id. at ¶ 83.
In response to Black Diamond’s motion, NOV alleges that it first learned that Black
Diamond was passing off EVRDRL connections as XT connections in July 2024, and it
was only after the Snider Litigation that NOV began to discover that Black Diamond was
marketing or selling EVRDRL connections as “XT Type.” [Doc. No. 106, at 19]. Without
further factual development as to when NOV’s Lanham Act claims accrued, whether any
delay by NOV was reasonable under the circumstances, and whether Black Diamond was
prejudiced by any unreasonable delay, the Court finds that NOV’s Lanham Act claims are
not subject to dismissal under the doctrine of laches at this stage of proceedings.
II. 	Common-Law Trademark Infringement (Claim IV)
Black Diamond contends that NOV’s common-law trademark infringement claim
is untimely because it was brought after two years from when “NOV knew or should have
known of its trademark claims.” [Doc. No. 91, at 8].
First, the Court agrees with Black Diamond that the Court should apply a two-year
statute of limitations to NOV’s common-law trademark infringement claim since it is “an
action for injury to the rights of another, not arising on contract.” See O KLA. S TAT . tit. 12,
§ 95(A)(3). Although NOV contends that its common-law trademark claim should be
governed by the three-year statute of limitations for “an action upon a liability created by
statute,” NOV’s common-law trademark claim is not created by statute. And NOV cites to
no legal authority in support of its position that the three-year limitations period applies
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 7 of 11

8
merely because the trademark claim is similar to one brought under the Oklahoma
Defensive Trade Practices Act, for which the three-year period clearly applies.
However, even applying a two-year statute of limitations, the Court finds that
NOV’s common-law trademark infringement claim is not subject to dismissal. Based on
the allegations of the Third Amended Complaint as set forth in Section I, above, factual
development is needed as to when NOV’s common-law trademark claim accrued.
Although Black Diamond references NOV’s warnings to Black Diamond in July of 2020,
the Third Amended Complaint repeatedly asserts that those earlier warnings were merely
related to website infringement, and not the trademark infringement alleged in this
litigation. Viewing the Third Amended Complaint’s allegations in NOV’s favor, as the
Court must, NOV’s common-law trademark infringement claim survives dismissal. 6
III. 	Misappropriation Claims (Claims IX, X, and XI)
NOV also brought claims against Black Diamond for allegedly violating the Defend
Trade Secrets Act, 18 U.S.C. § 1836 et seq. (DTSA), violating the Oklahoma Uniform
Trade Secrets Act, O KLA. S TAT . tit. 78, § 85 et seq. (OUTSA), and misappropriating
confidential and proprietary business information. These claims are based on NOV’s
allegations that Black Diamond misappropriated NOV’s trade secrets and otherwise
confidential business information with respect to NOV’s XT® drawings and other
technical information. The DTSA and OUTSA claims are governed by a three-year statute
6 For the same reasons, NOV’s trademark-related claim under the Oklahoma Deceptive Trade
Practices Act (Claim No. V), which is governed by a three-year statute of limitations pursuant to
OKLA. STAT . tit. 12, § 95(A)(2), will not be dismissed.
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 8 of 11

9
of limitations, and each claim accrues on “the date on which the misappropriation with
respect to which the action would relate is discovered or by the exercise of reasonable
diligence should have been discovered.” See 18 U.S.C. § 1836(d); see also OKLA. S TAT .
tit. 78, § 91. And, for the same reasons set forth in Section II, above, the Court applies a
two-year statute of limitations to NOV’s common-law misappropriation claim as an “action
for injury to the rights of another, not arising on contract.” See O KLA. S TAT . tit. 12,
§ 95(A)(3).
Black Diamond asserts that NOV’s misappropriation claims are untimely “because
they accrued upon NOV’s knowledge of Black Diamond’s claims of interchangeability
beginning in 2018 and no later than September of 2021.” [Doc. No. 91, at 18]. In response,
NOV contends that “[o]nly through discovery produced on or after May of 2025 did NOV
first learn that: (1) [Black Diamond] and the Engineering Defendants used the torque-
tension equations and other confidential information in designing EVRDRL; (2) [Black
Diamond] acquired the torque-tension equations and other confidential information from
another former employee in 2017; and (3) [Black Diamond] stole – and still possesses –
the XT® Thread Detail Drawings.” [Doc. No. 106, at 28] (citing Doc. No. 84, at ¶¶ 60-65).
As with NOV’s trademark claims, the Court is not convinced that NOV’s apparent
knowledge of Black Diamond’s claims of interchangeability should have also informed
NOV that Black Diamond had misappropriated its trade secrets or other confidential
information. As alleged in NOV’s Third Amended Complaint, NOV did not discover that
Jack 	Smith 	had 	allegedly 	provided 	Black 	Diamond 	with 	NOV’s 	confidential 	and
proprietary trade secrets until Black Diamond produced a series of emails in May of 2025.
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 9 of 11

10
[Doc. No. 84, at ¶ 62]. NOV also cites to various e-mails in support of its misappropriation
claims, all of which were produced in May of 2025. Id. at 25 n.10. Black Diamond’s
allegation 	that 	NOV 	should 	have 	known—based 	on 	Black 	Diamond’s 	claims 	of
interchangeability—that Black Diamond had misappropriated their trade secrets and
confidential information does not warrant dismissal at this stage of proceedings.
IV. 	Unjust Enrichment (Claim VI) and Unfair Competition (Claim XII)
NOV’s unjust enrichment and unfair competition claims are premised on the
conduct 	underlying 	NOV’s 	trademark 	and 	misappropriation 	claims 	against 	Black
Diamond. The Court applies a two-year statute of limitations to both claims. See O KLA.
S TAT . tit. 12, § 95(A)(3) (two-year statute of limitations for “an action for injury to the
rights of another, not arising on contract”). And, for the same reasons the Court declines to
dismiss NOV’s trademark and misappropriation claims as untimely, the Court also declines
to dismiss NOV’s unjust enrichment and unfair competition claims based on the same
conduct.
V. 	Civil Conspiracy (Claim VIII)
In its motion to dismiss, Black Diamond asserts that NOV’s civil conspiracy claim
should be dismissed only because “NOV’s other claims against Black Diamond should be
dismissed,” and a civil conspiracy claim requires an underlying tort. [Doc. No. 91, at 22].
Here, because NOV’s tort claims survive dismissal, Black Diamond’s motion will also be
denied as to the civil conspiracy claim.
CONCLUSION
For these reasons, Black Diamond Oilfield Rentals, LLC’s Motion to Dismiss Third
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 10 of 11

11
Amended Complaint [Doc. No. 91] is DENIED.
IT IS SO ORDERED this 5 th day of March, 2026.
TIMOTHY D. DeGIUSTI
Chief United States District Judge
Case 5:24-cv-01258-D Document 161 Filed 03/05/26 Page 11 of 11