IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION

NCS MULTISTAGE INC.,

 Plaintiff,

§

§

§

§

CIVIL ACTION NO. 6:20-cv-00277-ADA

vs. §

§

NINE ENERGY SERVICE, INC.,

 

 Defendant.

§

§

§

PLAINTIFF’S RESPONSE TO DEFENDANT NINE ENERGY SERVICE, INC.’S 

OPPOSED MOTION TO TRANSFER VENUE

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 1 of 20
i

TABLE OF CONTENTS

Page

INTRODUCTION........................................................................................................................1

LEGAL STANDARD ..................................................................................................................2

ARGUMENT................................................................................................................................3

A. The relative ease of access to sources of proof weighs against transfer................3

1. Access to witnesses weighs against transfer.............................................. 3

2. Access to documents weighs against transfer............................................6

B. The availability of compulsory process to secure witnesses weighs against 

transfer ...................................................................................................................8

C. The cost of attendance for willing witnesses weighs against transfer ...................9

1. The cost of attendance of party witnesses is neutral..................................9

2. The cost of attendance of non-party witnesses weighs against 

transfer .....................................................................................................10

D. All other practical problems that make trial of a case easy, expeditious, 

and inexpensive weighs heavily against transfer.................................................11

E. Administrative difficulties flowing from court congestion weighs against 

transfer .................................................................................................................13

F. Local interest weighs heavily against transfer.....................................................14

G. The parties agree that the remaining two factors are neutral...............................15

CONCLUSION ..........................................................................................................................15

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 2 of 20
ii

TABLE OF AUTHORITIES

Page(s)

Cases

Cameron Int’l Corp. v. Nitro Fluids L.L.C.,

6:20-cv-00125-ADA, 2020 U.S. Dist. LEXIS 10240 (W.D. Tex. June 16, 

2020) ..................................................................................................................................14, 15

DynaEnergetics Eur. GmbH v. Hunting Tital, Inc.,

6:20-cv-00069-ADA, 2020 U.S. Dist. LEXIS 105241 (W.D. Tex. June 16, 

2020) ........................................................................................................................................10

Fintiv, Inc. v. Apple Inc.,

6:18-cv000372-ADA, 2019 U.S. Dist. LEXIS 171102 (W.D. Tex. Sept. 10, 

2019) ......................................................................................................................................4, 7

Hammond Dev. Int’l, Inc. v. Google LLC,

1:20-cv-00342-ADA, 2020 U.S. Dist. LEXIS 110984 (W.D. Tex. June 24, 

2020) ..........................................................................................................................2, 3, 10, 11

In re Adobe, Inc.,

No. 2020-126, slip op. (Fed. Cir. Jul. 28, 2020)................................................................13, 14

In re Genentech, Inc.,

566 F.3d 1338 (Fed. Cir. 2009)............................................................................................9, 13

In re Vistaprint Ltd.,

628 F.3d 1342 (Fed. Cir. 2010)................................................................................................12

In re Volkswagen of Am., Inc.,

545 F.3d 304 (5th Cir. 2008) .....................................................................................................2

SynKloud Techs., LLC v. Dropbox, Inc.,

6:19-cv-00525-ADA, 2020 U.S. Dist. LEXIS 84958 (W.D. Tex. May 14, 

2020) ..............................................................................................................................8, 10, 12

Turner v. Cincinnati Ins. Co.,

No. 6:19-cv-00642-ADA, 2020 U.S. Dist. LEXIS (W.D. Tex. Jan. 14, 2020).........................8

Uniloc 2017 LLC v. Apple Inc.,

6-19-cv-00532-ADA, 2020 U.S. Dist. LEXIS 109037 (W.D. Tex. June 19, 

2020) ..............................................................................................................................3, 4, 5, 7

Voxer Inc. v. Facebook, Inc.,

6:20-cv-00011-ADA, 2020 U.S. Dist. LEXIS 109038 (June 22, 2020)..................9, 10, 11, 13

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 3 of 20
iii

Statutes

28 U.S.C. § 1404(a) .....................................................................................................................2, 9

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 4 of 20
INTRODUCTION

Nine Energy Service, Inc. (“Nine”) has a heavy burden to show that the SDTX is clearly

a more convenient forum than the WDTX. Nine cannot carry this burden because none of the 

convenience factors weigh in favor of transfer.

The WDTX is the right venue. This district has a substantial local interest in this case 

because of both parties’ substantial presence in this district and because substantial infringement 

is occurring in the WDTX, including by Nine’s customers. Furthermore, judicial economy 

favors keeping this case in Texas because it is set for trial in October 2021, and NCS Canada has 

filed five other suits in this Court that have proper venue and can be consolidated with this suit. 

This lawsuit is not a “a dispute between Houstonians” where “the vast majority of 

information is available in Houston,” including “nearly all party witnesses,” as Nine would have 

you believe. Plaintiff NCS Multistage Inc. (“NCS Canada”) is a Canadian company 

headquartered in Calgary with a related company in Houston (“NCS US”). Nine is a global 

company, with a substantial presence in the WDTX. Highly relevant party and non-party 

witnesses are located outside of the SDTX, including in the WDTX, EDTX, and Canada. Those 

witnesses include (i) Nine’s employees who Nine admits are selling the accused product out of 

Midland, (ii) Nine’s customers conducting infringing drilling operations in the Permian Basin or 

Eagle Shale Ford Play at Nine’s direction,

1 (iii) NCS Canada’s CEO and corporate witness who 

lives in the WDTX, (iv) five non-party inventors out of the six named inventors of the asserted 

patent that live in Canada, four of whom have signed declarations that Waco is convenient,

2 and 

1 The Permian Basin is a shale basin spanning west Texas and southeast New Mexico. The 

Eagle Ford Shale Play is shale formation extending from southwest to east Texas. See Ex. A. 2 There are six named inventors on the asserted ’445 Patent. Four of them in Canada have 

submitted a declaration stating that if they attend trial, it makes no difference to them to travel to 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 5 of 20
2

(v) the remaining non-party inventor, Travis Harris who lives in the EDTX.

3

 For all these 

witnesses, Waco is either more convenient or as convenient as Houston. While Nine identifies 

three potential witnesses in the SDTX, it does not explain why they would be witnesses at trial or

how these witnesses make Houston more convenient when considering on balance the key 

witnesses outside the SDTX.

There is no reason to transfer this case to Houston. Nine’s motion should be denied.

LEGAL STANDARD

A district court may transfer a civil action to another district or division where it might 

have been brought without the consent of both parties, only if the movant can meet its heavy 

burden to show that the transferee venue is clearly more convenient. Hammond Dev. Int’l, Inc. 

v. Google LLC, 1:20-cv-00342-ADA, 2020 U.S. Dist. LEXIS 110984, at *5, 16 (W.D. Tex. June 

24, 2020) (Albright, J.). If the movant cannot show that the transferee venue is clearly more 

convenient, the plaintiff’s choice of venue should be respected. See id., at *5; see also In re 

Volkswagen of Am., Inc., 545 F.3d 304, 314 (5th Cir. 2008) (“When viewed in the context of 

§ 1404(a), to show good cause means that a moving party, in order to support its claim for a 

transfer, must...clearly demonstrate that a transfer is ‘of the convenience of the parties and 

witnesses, in the interest of justice.’”) (quoting 28 U.S.C. § 1404(a)). Courts may consider 

undisputed facts outside the pleadings and must draw all reasonable inferences and resolve 

factual conflicts in favor of the non-moving party. Hammond, 2020 U.S. Dist. LEXIS, at *5.

Waco versus Houston. The fifth of these inventors in Canada stated it would make no difference 

to him to travel to Waco versus Houston, but NCS was not able to complete a declaration from 

him to this effect by the deadline for filing this brief. 

3 The sixth named inventor, Travis Harris, does not reside in Houston, as Nine alleges, he resides 

in Lindale, Texas, which is closer to Waco.

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 6 of 20
3

ARGUMENT

Discussed below are the factors Courts consider in determining whether a case should be 

transferred based on convenience. Those factors show this case should not be transferred. 

A. The relative ease of access to sources of proof weighs against transfer. 

In considering relative ease of access to sources of proof, this Court looks to accessibility 

to witnesses and accessibility of documents and physical evidence. See Hammond, 2020 U.S. 

Dist. LEXIS, at *6-8. 

1. Access to witnesses weighs against transfer. 

“When determining the weight and impact of the location of witnesses, this Court looks 

at the totality of the circumstances, including but not limited to, ‘the witness’s title and relevant 

experience, the likelihood that a witness may have relevant information, the number of 

witnesses, the location of those witnesses, whether the testimony of those witnesses goes to an 

element of a claim, the amount of public information available to the parties, etc.’” Uniloc 2017 

LLC v. Apple Inc., 6-19-cv-00532-ADA, 2020 U.S. Dist. LEXIS 109037, at *32 (W.D. Tex. June 

19, 2020) (Albright, J.). Here, many potential and key trial witnesses are outside the SDTX, 

including in the WDTX, EDTX, and Canada. Therefore, Waco is more convenient than or just as 

convenient as Houston for those witnesses.

Witnesses in WDTX. NCS Canada alleges that Nine infringes United States Patent No. 

10,465,445 (“the ’445 Patent”) apparatus claims by selling the accused BreakThruTM Device, and 

by inducing infringement of the ’445 Patent method claims by encouraging its customers to use 

the BreakThruTM Device. Dkt. 1 at ¶¶ 19-20. Nine admits that sales in Texas of the 

BreakThruTM Device alone account for nearly a quarter of all global BreakThruTM Device sales. 

Dkt. 24-1 at ¶ 17. Nine is a global company with at least seven offices in the WDTX, four of 

which are in Midland servicing the Permian Basin and likely Eagle Ford Shale Play. See Ex. B

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 7 of 20
4

(Nine’s SEC Filing) (annotated) at 11, 63. Nine admits that its “Midland office does facilitate 

sales and support of the BreakThruTM Device...” See Dkt. 24 at 6. It also touts that its field 

offices, like its Midland offices, serve as the “boots on the ground” primary point of contact 

between the company and its customers, including conducting downhole tool sales and services. 

Ex. B at 9. Nine’s substantial presence in the WDTX is not surprising as that is largely where 

Texas drilling happens. Nine, like many other downhole tool companies, has corporate offices in 

Houston. But Nine would have this Court ignore that it has operations in the WDTX because 

that’s where the oil and gas activity is. Oil and gas operations in Texas almost exclusively occur 

in the Permian Basin and Eagle Ford Shale Play. Thus, relevant defendant witnesses are in the 

WDTX. Waco, which is 320 miles from Midland, is a more convenient location for these 

witnesses than Houston, which is 478 miles away. See Ex. C (Decl. LLagostera) ¶ 4(a).

Moreover, Nine is inducing its customers to infringe the ’445 Patent in the WDTX out of 

its Midland offices. Wells are not drilled in Houston, they are drilled in the WDTX including in 

the Permian Basin and Eagle Shale Ford. In other words, substantial infringing uses of the 

BreakThruTM device are surely occurring by Nine’s customers in the WDTX. Testimony from 

those customers will be necessary to verify that all steps of the asserted method claims are being 

performed, unless Nine admits those customers are performing those steps. See Uniloc, 2020 

U.S. Dist. LEXIS, at *32 (noting this Court considers whether the testimony of a witness goes to 

an element of a claim); Fintiv, Inc. v. Apple Inc., 6:18-cv000372-ADA, 2019 U.S. Dist. LEXIS

171102, at *10 (W.D. Tex. Sept. 10, 2019) (Albright, J.) (acknowledging that defendant’s 

employees would have knowledge that would support plaintiff’s indirect infringement claim). 

Thus, relevant non-party witnesses are in the WDTX and Waco is more convenient for them.

Furthermore, NCS Canada anticipates having CEO Robert Nipper testify as a corporate 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 8 of 20
5

witness at trial. Ex. D (Decl. Nipper) at ¶ 3. Mr. Nipper resides in Burnet, Texas, which is in the 

WDTX and ~100 miles from the Waco Courthouse, versus ~200 miles from Houston, and he 

would prefer travel to Waco than to Houston. Id. at ¶ 4; Ex. C at ¶ 4(b).

Waco is a clearly a more convenient forum than Houston for all of these potential party 

and non-party witnesses located in the WDTX.

Witnesses in EDTX. Nine claims Houston is more convenient because Travis Harris, a

non-party and the sixth named inventor of the ’445 Patent, resides in Houston. Dkt. 24 at 8. But

Mr. Harris lives in Lindale, Texas, which is in the EDTX and closer to Waco than Houston by 

~74 miles. Ex. E; Ex. C at ¶ 4(c).

Witnesses in Canada. The inventions disclosed in the ’445 Patent were conceived of 

and reduced to practice in Canada. Four named inventors are Canadian non-party witnesses and 

all reside in or around Calgary.4 Id. These four have submitted a declaration in support of this 

response showing that Waco is convenient.

5

Witnesses identified by Nine. The only party witnesses that Nine identifies by name 

who actually live in the SDTX are Don McLean, Nine’s regional sales manager for the 

BreakThruTM device, and Stephanie Sloma, Nine’s controller for the BreakThruTM device. Dkt. 

24-1 at ¶ 21. Nine has not identified any relevant testimony these persons could provide and has 

not stated whether they are likely to testify at trial. See Uniloc, 2020 U.S. Dist. LEXIS, at *32 

(noting this Court considers whether a witness has relevant information and is likely to testify at 

4 Ex. F (Decl. Devlin) at ¶ 4; Ex. G (Decl. Getzlaf) at ¶ 4; Ex. H (Decl. Ravensbergen) at ¶ 4; Ex. 

I (Decl. Stromquist) at ¶ 4. 5 Ex. F at ¶ 6; Ex. G at ¶ 6; Ex. H at ¶ 6; Ex. I at ¶ 6. The fifth named inventor in Canada stated 

that it would make no difference to him to travel to Waco versus Houston, but NCS was not able 

to complete a declaration from him to this effect by the deadline for this brief. 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 9 of 20
6

trial). The only non-party witnesses that Nine identifies by name who purportedly live in the 

SDTX are Travis Harris, an inventor of the ’445 Patent, and OFS International, LLC a thirdparty manufacturer of some BreakThruTM devices. Dkt. 24 at 6-7. But again, Mr. Harris does 

not live in the SDTX, he lives in Lindale. See Ex. E. And as for OFS, Nine has not identified 

any relevant testimony OFS can provide at trial, nor why OFS would be called to testify at trial. 

In any case, Nine has failed to meet the heavy burden of showing these party and non-party 

entities they have identified make Houston clearly more convenient than Waco considering all of 

the other key witnesses that live outside the SDTX and for whom Waco is more or just as 

convenient.

In sum, NCS Canada has specifically identified four non-party witnesses and one party 

witness for NCS Canada for whom the WDTX is at least as convenient or more convenient than 

the SDTX. Additionally, there are Nine witnesses and many other third-party witnesses located 

in the WDTX. Nine has only identified two party witnesses in Houston and two non-party 

witnesses for whom SDTX is allegedly more convenient. Nine has not identified relevant 

testimony of the party witnesses. For the two non-party witnesses, one lives closer to Waco, and 

the need for the other is questionable. Therefore, this factor weighs against transfer.

2. Access to documents weighs against transfer. 

Nine argues that this factor weighs in favor of transfer for two reasons: (1) Nine 

“expects” that NCS Canada’s documents reside in Houston; and (2) Nine’s documents reside in 

or are accessible from Houston. Neither argument has merit. 

NCS Canada’s relevant documents are largely in Canada: Nine’s expectation that 

NCS Canada’s documents are all in Houston is wrong. Dkt. 24 at 5. NCS Canada is 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 10 of 20
7

headquartered in Calgary.

6

 The inventions disclosed in the ’445 Patent were conceived of and 

reduced to practice by NCS Canada in Canada primarily by Canadian inventors. See supra at 5. 

NCS Canada’s AirLock® System, which is a commercial embodiment of the ’445 Patent, was 

designed in Canada and originally built in Canada. Ex. J at ¶ 10. NCS Canada is responsible for 

engineering and research and development activities for its parent company. Ex. K at 32. Thus,

highly relevant technical documents and physical evidence are primarily located in Canada. Ex. 

J at ¶ 11. In fact, this Court’s Order Governing Patent Proceedings required NCS Canada to 

produce all conception and reduction to practice documents, and that search and collection 

occurred in Canada using Canadian personnel and searching primarily files in Canada. Id. at ¶

12. Relevant documents from this collection came from servers in Canada. Id. at ¶ 12.

Nine admits that key documents are in the WDTX: Nine has not argued that the 

majority of its documents are physically located in Houston. Rather, Nine states that because 

“nearly all evidence is accessible from Houston, factor 1 strongly weighs in favor of transfer.” 

Dkt. 24 at 5 (emphasis added). But as this Court has held, the relevant inquiry under Fifth 

Circuit precedent is the physical location of the documents, not where documents are accessible 

from. Fintiv, 2019 U.S. Dist. LEXIS, at *12 (noting that though documents may be equally 

accessible from both districts, “under current Fifth Circuit precedent, the physical location of 

electronic documents does affect the outcome of this factor.”); Uniloc, 2020 U.S. Dist. LEXIS, at 

*29 (W.D. Tex. June 19, 2020) (lamenting that though documents are accessible with the click of 

a mouse, “until the Fifth Circuit addresses the reality previously discussed, trial courts must 

6 NCS Canada is headquartered in Calgary and is affiliated with NCS Multistage, LLC (“NCS 

US”) in Houston, Texas, which is responsible for US operations. Ex. J (Decl. Mueller) at ¶ 6-7; 

Ex. K (NCS Multistage Holdings, Inc. SEC Filing) at Exhibit 21.1. NCS Canada and NCS US 

share the same ultimate parent, NCS Multistage Holdings Inc. Id. NCS Canada and NCS US 

share corporate executives and are collectively referred to herein as “NCS.” Decl. Mueller at ¶ 7.

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 11 of 20
8

continue to apply this factor consistent with current precedent.”). Nine has relevant documents 

located in the WDTX. 

Nine admits that the Midland office facilitates sales and support of the infringing device

and has relevant documents. Dkt. 24 at 6. By Nine’s admission, its sales documents, operation 

documents, technical documents, field notes, and non-electronically stored information should be 

at its Midland facilities. Nine’s argument that this “should not affect the convenience analysis, 

as the distance from the Midland office to the Waco courthouse is over 250 miles” makes no 

sense. Id. The distance from Midland to the Houston courthouse is 478 miles, so Waco is the 

convenient mid-point forum between WDTX and Houston. Ex. C at ¶ 4(a). 

Because Waco is the most convenient forum for both access to witnesses and documents, 

the first factor weighs against transfer. 

B. The availability of compulsory process to secure witnesses weighs against transfer. 

“The next factor the Court considers is the availability of compulsory process to secure 

the attendance of witnesses, particularly non-party witnesses whose attendance may need to be 

secured by a court order.” SynKloud Techs., LLC v. Dropbox, Inc., 6:19-cv-00525-ADA, 2020 

U.S. Dist. LEXIS 84958, at *10 (W.D. Tex. May 14, 2020) (Albright, J.). This factor carries far

less weight when the movant has not alleged or shown that any witnesses are unwilling to

testify. Turner v. Cincinnati Ins. Co., No. 6:19-cv-00642-ADA, 2020 U.S. Dist. LEXIS, at *8

(W.D. Tex. Jan. 14, 2020) (Albright, J.).

Nine has not identified any non-party witness in the SDTX that would actually be a trial 

witness and is unwilling to testify in Waco, and so this factor weighs against transfer. See id. 

(“In fact, the compulsory process factor weighs against transfer when neither side claims a 

witness would be unwilling to testify... When no party has alleged or shown any witness's 

unwillingness, a court should not attach much weight to the compulsory process factor.”). 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 12 of 20
9

The only non-party witnesses Nine has identified are Travis Harris and OFS 

International. Dkt. 24 at 6-7. But Travis Harris resides in the EDTX, so he is not within the 

absolute subpoena power of the SDTX. And Nine does not express any intention to call OFS 

International at trial, but rather states “to the extent NCS seeks information about the 

manufacture of the BreakThruTM Device, that information could be sought through non-party 

OFS International, LLC.” Id. at 7 (emphasis added). If NCS Canada requires information about 

manufacturing, it would seek this information from Nine, not from OFS International. There is 

no reason to believe that Nine does not have the manufacturing information that might be sought. 

As a third-party manufacturer, OFS is an unlikely trial witness. 

C. The cost of attendance for willing witnesses weighs against transfer. 

The single most important factor in the transfer analysis is the cost of attendance of 

willing witnesses. In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). “When the 

distance between an existing venue for trial of a matter and a proposed venue under § 1404(a) is 

more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to 

the additional distance to be traveled.” Id. at 1343. 

1. The cost of attendance of party witnesses is neutral. 

Nine first argues that “most of the relevant witnesses from both parties work and reside in 

Houston.”7 Dkt. 24 at 7. But that is not true. NCS Canada foresees one party witness for the 

Plaintiff, its CEO Robert Nipper. Ex. D. at ¶ 3. Mr. Nipper lives in the WDTX roughly 100 

miles from this Courthouse. Id. at ¶ 4; Ex. C at ¶ 4(b). Further, Nine’s employees in Midland 

7 This Court has treated argument based on the convenience of the non-movant with skepticism. 

Voxer Inc. v. Facebook, Inc., 6:20-cv-00011-ADA, 2020 U.S. Dist. LEXIS 109038, at *15 (June 

22, 2020) (Albright, J.) (“Typically, this Court has some skepticism when the party who is 

arguing that a case should be transferred relies on the lack of convenience for the relevant 

witnesses that will be called by the party who filed the suit in this venue.”).

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 13 of 20
10

that Nine admits sell the accused BreakThruTM device and support customers who are conducting 

infringing uses of the accused device are in the WDTX and much closer to Waco. Nine has only 

identified by name one party witness in Houston—Don McLean. Dkt. 24-1 at ¶ 21. The other 

party witnesses identified by Nine reside outside of Houston, including Stephanie Sloma in 

Corpus Christi, and Nick Pottomeyer in Ohio. Id. When party witnesses are located within both 

districts and outside both districts, this does not weigh for or against transfer. See Voxer, 2020 

U.S. Dist. LEXIS, at *15-16 (“...[T]he cost of attendance of party witnesses does not weigh for 

or against transfer because there appear to be several potential witnesses in both NDCA and 

WDTX, as well as outside either District.”); SynKloud, 2020 U.S. Dist. LEXIS, at *5 (holding 

the same). Further, while Nine states that its party witnesses outside of Houston regularly travel 

to Houston for business, regularity of travel does not eliminate cost of travel for these witnesses. 

Dkt. 24 at 6-7; see DynaEnergetics Eur. GmbH v. Hunting Tital, Inc., 6:20-cv-00069-ADA, 2020 

U.S. Dist. LEXIS 105241, at *23 (W.D. Tex. June 16, 2020) (Albright, J.) (“...but the Court 

does not equate the regularity of travel to the WDTX with the ease of access to the sources of 

proof.”). 

Because the cost of attendance of party witnesses is given little weight and there are party 

witnesses in both districts and outside both districts, the cost of attendance of party witnesses is

neutral. See Hammond, 2020 U.S. Dist. LEXIS, at *12 (“...the cost of attendance of party 

witnesses does not weigh for or against transfer because there appear to be several potential 

witnesses in both districts. In any case, courts give the convenience of party witnesses little 

weight.”). 

2. The cost of attendance of non-party witnesses weighs against transfer.

Nine argues that the WDTX is more costly for non-parties Mr. Harris and OFS, who 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 14 of 20
11

would have to travel to Waco from Houston. Dkt. 24 at 8. But Mr. Harris lives closer to Waco 

than Houston. Ex. E; Ex. C at ¶ 4(c). And OFS, a third-party manufacturer of the accused 

device, is an unlikely trial witness. Other than saying OFS is a manufacturer, Nine has not 

identified any testimony that would be needed from OFS. See Voxer, 2020 U.S. Dist. LEXIS at 

*16 (denying transfer where, inter alia defendant did “not specify how the [third-party] would 

have relevant information that [defendant] does not have access to.”); Hammond, 2020 U.S. Dist. 

LEXIS, at *12-13 (noting that this factor does not weigh for or against transfer as to witnesses 

who are unlikely to testify). 

Further, Nine ignores numerous other potential and key non-party witnesses, including its 

customers who are engaging in infringing uses of the accused BreakThruTM device in the 

WDTX. For these witnesses, Waco is the closer forum. Ex. C at ¶ 4(a). Nine also ignores the 

first five named inventors of the ’445 Patent who all live in Canada. Four of these Canadian 

non-party witnesses have declared Waco is not an inconvenience, and in any case the cost 

difference between a flight to Houston versus Waco is not significant. See supra at 5; Voxer, 

2020 U.S. Dist. LEXIS, at *16 (“Likewise, the cost of attendance of Voxer is also neutral 

because regardless of the District, the witnesses will have to travel over 1,000 miles.”).

Because the cost of attendance of party witnesses is neutral and the cost of attendance of 

non-party witnesses weighs against transfer, this factor weighs against transfer. 

D. All other practical problems that make trial of a case easy, expeditious, and inexpensive

weighs heavily against transfer. 

Between July 9, 2020 and August 13, 2020, NCS Canada filed five additional suits in this 

Court asserting the ’445 Patent against eight companies.8

 Venue is proper in this district for 

8 See Civil Action Nos. 6-20-cv-00622-ADA, 6-20-cv-00699-ADA, 6-20-cv-00700, 6-20-cv00700-ADA, 6-20-cv-00701-ADA, and 6-20-cv-00735-ADA. 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 15 of 20
12

these cases. Defendant TCO AS is a Norwegian company9 and not subject to the patent venue 

statute. Defendant Arsenal is a Texas corporation with an office in Midland, TX.10 Defendant 

Permian Petrolink is headquartered in Midland, TX.11 Defendant Summit Casing has offices in 

Midland, TX and San Antonio, TX.12 Defendants Packers Plus and Packers Plus US have 

offices in Midland, TX.13 Upon information and belief, Defendant Allamon has an office in 

Midland, TX. Like Nine, these companies are selling infringing tools in the WDTX, and 

inducing customers to infringe in the Permian Basin and Eagle Ford Shale Play. These suits are 

in the pleading stage and can be consolidated with this suit against Nine for efficiency.

SynKloud, 2020 U.S. Dist. LEXIS, at *17 (“A parallel action in this District involving the same 

patent weighs heavily in the transfer analysis. Though this factor is not dispositive, judicial 

economy favors having the infringement of the same patent considered by one judge.”) (internal 

citations omitted)); In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010) (noting that “the 

fact that there is co-pending litigation before the trial court involving the same patent and 

underlying technology, provides substantial justification for maintaining the suit in [the 

transferor forum].”).

Nine argues that this case should be transferred because Defendants in the related 

litigations will likely move to transfer their cases to the SDTX. Dkt. 24 at 9-10. Nine’s 

argument must be ignored because it is based on compound speculation. First, Nine is 

speculating that the other eight defendants will all move to transfer their cases. Second, Nine 

must also speculate they would all be successful in their motions. That is highly unlikely 

9 See http://www.tcogroup.com/contact/category10.html. 

10 See https://www.arsenalco.com/locations/. 

11 See https://permianpetrolink.com/.

12 See https://summitcasing.com/locations/.

13 See https://packersplus.com/contact/.

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 16 of 20
13

because those defendants have a substantial presence in the WDTX and are engaging in 

infringement in the WDTX. 

Further, Nine argues this factor is neutral because the case is in preliminary stages and no 

scheduling order has been entered. Dkt. 24 at 9. But the parties agreed to a scheduling order 

with a Markman date of January 14, 2021 and a trial date of October 18, 2021, and the Court 

entered this scheduling order on August 1, 2020. Dkt. 25 at 2-3. This scheduling order 

compressed the Court’s already expedited patenting scheduling order by over 10 weeks. Id. at 3. 

The order does not permit discovery until after Markman, which will significantly reduce costs 

for both parties and the Court. Id. at 2. 

Because of the pendency of five related cases in this district and the expeditious 

scheduling order agreed to by the parties and entered by the Court, this factor weighs heavily 

against transfer. 

E. Administrative difficulties flowing from court congestion weighs against transfer. 

The relevant inquiry under this factor is “[t]he speed with which a case can come to trial 

and be resolved[.]” In re Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009). Here, the

parties agreed to a trial date of October 18, 2021 in a scheduling order submitted to the Court, 

which the Court entered. Under the Court’s scheduling order, this case will be resolved within 

18 months, which is a full five months faster than the SDTX’s average resolution time of 23 

months cited by Nine. Thus, this factor weighs against transfer. Voxer, 2020 U.S. Dist. LEXIS, 

at *19 (“As such, because the time to trial will be shorter in this District, the Court finds that this 

factor weighs against transfer.”). 

Nine cites to In re Adobe, which cautioned courts against analyzing this factor based on a 

court’s perceived ability to more quickly schedule trial. Dkt. 24 at 10; In re Adobe, Inc., No. 

2020-126, slip op. at 7-8 (Fed. Cir. Jul. 28, 2020). But there is nothing theoretical about this 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 17 of 20
14

Court’s ability to more quickly schedule trial, as it has already been scheduled for October 18, 

2021. And In re Adobe held that this “factor concerns whether there is an appreciable difference 

in docket congestion between the two forums.” In re Adobe, No. 2020-126, at 7-8. By Nine’s 

own math, which indicates that the difference in average resolution time between the SDTX and 

WDTX cases is less than two months, there is no appreciable difference in docket congestion 

between the WDTX and SDTX. Dkt. 24 at 10. 

F. Local interest weighs heavily against transfer. 

Nine cites to Mimedx to argue that the relevant community in this factor “is the division, 

not the wider district as a whole.” Dkt. 24 at 8. But this Court rejected this identical argument in 

Cameron, noting that Mimedx “specifically dealt with an intra-district transfer rather than an 

inter-district transfer” and holding “the transferor and transferee districts are relevant for the 

consideration of this factor.” See Cameron Int’l Corp. v. Nitro Fluids L.L.C., 6:20-cv-00125-

ADA, 2020 U.S. Dist. LEXIS 10240, *29-30 (W.D. Tex. June 16, 2020) (Albright, J.). 

The WDTX has a heavy interest in this case because, as explained above, Nine has a 

substantial physical presence in the WDTX and that is where a substantial portion of 

infringement is occurring, including Nine’s infringing sales of the accused BreakThruTM device, 

and Nine’s inducement of its customers to infringe in the Permian Basin and Eagle Ford Shale 

Play. Nine has at least seven facilities in the WDTX and employs 102 individuals in its four 

Midland facilities alone, and Nine does not disclose how many additional individuals it employs 

in the remaining three facilities in the WDTX. In contrast, Nine has only two offices and 80 

employees in the SDTX. Dkt. 24-1 at ¶¶ 8, 13; Ex. B at 63. And though Nine states that 47% of 

its customers have corporate headquarters in Houston, these customers likely have numerous 

employees in the WDTX where drilling occurs who are infringing the ’445 Patent in the WDTX. 

Dkt. 24 at 9. Similarly, NCS has a substantial presence in the WDTX, including many customers 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 18 of 20
15

who conduct drilling operations in the Permian Basin and Eagle Ford Shale Play and an office in 

Odessa which employs 13 individuals who permanently or periodically work out of this office. 

These include employees who sell and service the AirLock® System, which is covered by the 

’445 Patent. Ex. J at ¶¶ 8-9. And, NCS’s CEO resides in the WDTX. Ex. D at ¶¶ 3-4.

Finally, Nine argues that Houston has an interest in this case because NCS Canada is 

headquartered in Houston, Travis Harris lives in Houston, and non-party OFS is in Houston. 

Dkt. 24 at 9. But NCS Canada is headquartered in Canada, Travis Harris resides in Lindale, 

which is in EDTX, and non-party OFS is an unlikely trial witness. Ex. J at ¶ 6; Ex. E; see 

Moskowitz Famil Llc v. Globus Med., 6:19-cv-00672, 2020 U.S. Dist. LEXIS, at *8, 18 (W.D. 

Tex. July 2, 2020) (Albright, J.) (dismissing the significance of a third-party supplier of the 

infringing product where defendant could not identify relevant testimony of the third-party).

Based on both parties’ significant presence in the WDTX, this factor weighs heavily 

against transfer. See Cameron, 2020 U.S. Dist. LEXIS, at *30 (finding this factor weighed 

against transfer where infringement was occurring in the WDTX, even though both parties were 

headquartered in Houston and the patents were invented in Houston, because “the Court cannot 

overlook the substantial presence and activity of both [parties] in the WDTX.”). 

G. The parties agree that the remaining two factors are neutral.

The parties agree that factors 7 and 8 neutral. Dkt. 24 at 10. 

CONCLUSION

Because the first six convenience factors weigh against transfer and the parties agree the 

last two factors are neutral, Nine has not carried its heavy burden of showing Houston is clearly

more convenient. NCS Canada’s choice of venue should be respected and Nine’s motion be 

denied. 

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 19 of 20
Date: August 21, 2020 Respectfully submitted,

BLANK ROME LLP

/s/ Domingo M. LLagostera

Domingo M. LLagostera

(Attorney-in-charge)

State Bar No. 24070157

DLLagostera@BlankRome.com

Telephone: (713) 632-8682

Facsimile: (713) 228-6605

Russell T. Wong 

State Bar No. 21884235

RWong@BlankRome.com

Telephone: (713) 632-8634

Facsimile: (713) 228-6605

Munira Jesani (pro hac vice)

State Bar No. 24101967

MJesani@BlankRome.com

Telephone: (713) 632-8628

Facsimile: (713) 228-6605

717 Texas Avenue, Suite 1400

Houston, TX 77002

Tel.: (713) 632-8682

Andrew K. Fletcher (pro hac vice)

PA State ID. 75544

AFletcher@BlankRome.com

501 Grant Street, Suite 850

Pittsburgh, PA 15219

AFletcher@BlankRome.com

Telephone: (412) 932-2736 

Attorneys for Plaintiff / Counter-Defendant 

NCS Multistage Inc.

CERTIFICATE OF SERVICE

The undersigned certifies that all counsel of record were electronically served with a 

copy of the foregoing on August 21, 2020 via the Court’s CM/ECF system. 

/s/ Domingo M. LLagostera

Domingo M. LLagostera

Case 6:20-cv-00277-ADA Document 28 Filed 08/21/20 Page 20 of 20