IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NCS MULTISTAGE INC.,

Plaintiff, 

v. 

NINE ENERGY SERVICE, INC.,

Defendant. 

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

JURY TRIAL DEMANDED 

DEFENDANT NINE ENERGY SERVICE, INC.’S 

OPENING BRIEF ON CLAIM CONSTRUCTION 

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TABLE OF CONTENTS 

I. INTRODUCTION AND SUMMARY OF ARGUMENTS ............................................................ 1

II. BACKGROUND OF THE ASSERTED PATENT & PROSECUTION HISTORY ................... 1

A. Technology Background .................................................................................................. 2

B. Relevant Prosecution History .......................................................................................... 3

III. LEGAL STANDARD ......................................................................................................................... 3

A. Claim Construction .......................................................................................................... 3

B. Indefiniteness ................................................................................................................... 5

IV. AGREED CLAIM TERMS ................................................................................................................ 5

V. DISPUTED CLAIM TERMS ............................................................................................................ 5

A. “internal diameter” (Claims 1, 22, 28, and 50) ................................................................ 5

B. “tubular member” (Claims 1, 22, 28, and 50) .................................................................. 7

C. “sealing engagement” (Claims 1, 22, 28, 50, and 55) ..................................................... 8

D. “the rupture disc is. . . configured to rupture when exposed to a rupturing force 

greater than the rupture burst pressure” (Claims 1, 22, 29, and 56) ................................ 9

E. “rupturing force” (Claims 1, 22, 27, 29, 56, and 57) ..................................................... 10

F. “the region of the tubular member where the rupture disc is attached has a larger 

internal diameter that the internal diameter of the casing string and is parallel to 

the internal diameter of the casing string” (Claims 1, 22, 28, and 50) .......................... 11

1. “the region of the tubular member where the rupture disc is attached” (the 

“Attachment Region”) .......................................................................................... 12

2. “the region of the tubular member where the rupture disc is attached has a 

larger internal diameter than the internal diameter of the casing string” ............. 12

3. The phrase “the region of the tubular member where the rupture disc is 

attached . . . is parallel to the internal diameter of the casing string” is 

indefinite. .............................................................................................................. 12

4. If forced to construe “the region of the tubular member where the rupture 

disc is attached . . . is parallel to the internal diameter of the casing string,” 

a POSA would arrive at a construction that contradicts the specification. ........... 13

G. “specific gravity . . . of the well fluid” (Claims 24 and 52) ........................................... 17

H. “disengage the rupture disc from sealing engagement” (Claim 55) .............................. 18

I. “rupture disc is configured to disengage from sealing engagement when 

exposed to a pressure greater than a hydraulic pressure in the casing string” 

(Claims 28 and 50) ......................................................................................................... 18

VI. CONCLUSION ................................................................................................................................. 19

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TABLE OF AUTHORITIES 

Cases

Accent Packaging, Inc. v. Leggett & Platt, Inc., 

707 F.3d 1318 (Fed. Cir. 2013)............................................................................................. 4, 19 

Altiris, Inc v. Symantec Corp., 

318 F.3d 1363 (Fed. Cir. 2003)............................................................................................... 6, 8 

Amazin' Raisins Intern., Inc. v. Ocean Spray Cranberries, Inc., 

306 Fed. Appx. 553 (Fed. Cir. 2008) .......................................................................................... 7 

Funai Elec. Co. v. Daewoo Elecs. Corp., 

616 F.3d 1357 (Fed. Cir. 2010)................................................................................................... 6 

Hill-Rom Services, Inc. v. Stryker Corp., 

755 F.3d 1367 (Fed. Cir. 2014)................................................................................................... 4 

In re Varma, 

 816 F.3d 1352 (Fed. Cir. 2016)................................................................................................. 11 

Kaneka Corp. v. Xiamen Kingdomway Group Co., 

790 F.3d 1298 (Fed. Cir. 2015)........................................................................................... 4, 6, 9 

Lucent Techs. v. Gateway, Inc., 

525 F.3d 1200 (Fed. Cir. 2008)................................................................................................... 4 

Nautilus Inc. v. Biosig Instruments, Inc., 

572 U.S. 898 (2014) .................................................................................................... 5, 9, 11, 13 

NTP, Inc. v. Research in Motion, Ltd., 

418 F.3d 1282 (Fed. Cir. 2005)................................................................................................. 10 

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005)............................................................................................... 3, 4 

Phonometrics, Inc. v. Northern Telecom, Inc., 

 133 F.3d 1459 (Fed. Cir. 1998)................................................................................................. 11 

USB Bridge Soln’s, LLC v. Buffalo, Inc., 

No. 1:17-cv-001158-LY, 2020 WL 1906898 (Apr. 17, 2020) ................................................. 18 

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 

520 U.S. 17 (1997) ...................................................................................................................... 4 

Statutes

35 U.S.C. § 112 ...................................................................................................................... passim 

35 U.S.C. § 112(b) .......................................................................................................................... 5 

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EXHIBIT LIST 

Ex. Description 

1. Declaration of Dr. Nathan Meehan

2. U.S. Patent No. 10,465,445

3. Office Action, U.S. Patent App. No. 15/919,370 (Mar. 11, 2019)

4. Response to Notice of Non-Compliant Amendment, U.S. Patent App. No. 15/919,370 

(June 11, 2019)

5. Notice of Allowance, U.S. Patent App. No. 15/919,370 (Sept. 24, 2019)

6. RANDOM HOUSE: WEBSTER’S COLLEGE DICTIONARY (2d ed. 2005)

7. U.S. Patent No. 5,479,986 (“Gano”)

8. Dr. Nathan Meehan’s Curriculum Vitae

9. Rogers, H., et al., Buoyancy Assist Extends Casing Reach in Horizontal Wells, Society 

of Petroleum Engineers, SPE 50680, Published 1998 (“Rogers”)

10. U.S. Patent No. 7,789,162 (“Keller”)

11. U.S. Patent No. 9,198,209 (“Frazier”)

12. McMordie Jr., W.C., et al., Effect of Temperature and Pressure on the Density of 

Drilling Fluids, SPE 11114 (1982)

13. U.S. Patent No. 9,624,750 (“Entchev”)

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I. INTRODUCTION AND SUMMARY OF ARGUMENTS 

The asserted claims of U.S. Patent 10,465,445 (the ’445 Patent) are indefinite. In an 

attempt to distinguish prior art, NCS Multistage Inc. (“NCS”) crafted an insolubly ambiguous 

limitation – that “the region where the rupture disc is attached . . . is parallel to the internal diameter 

of the casing string.” This limitation requires two features—a region and a diameter—with no 

inherent direction to be parallel, rendering the term indecipherable and therefore indefinite. NCS 

appears to recognize this fatal defect, proposing a construction that effectively amends this 

limitation by substituting “inner wall” for “internal diameter.” But claim construction cannot be 

used to amend the claims. NCS’s proposed construction should therefore be rejected. 

The ’445 Patent contains another equally indefinite limitation that requires a rupture disc 

“configured to rupture when exposed to a rupturing force greater than the rupture burst pressure.” 

But forces and pressures are not comparable features, and the specification provides no conversion 

from one to the other. Again, NCS appears to recognize the issue, construing the term “rupturing 

force” to mean “hydraulic pressure” in some instances, but “impact forces” in others. But NCS 

cannot have it both ways – the claim term is simply indefinite. 

Beyond these terms that Nine Energy, Inc. (“Nine”) shows to be indefinite, Nine presents 

constructions that will aid the factfinder by explaining the ordinary meaning of various claim terms 

to a person of ordinary skill in the art at the time of the invention, in view of the specification. For 

the reasons that follow, Nine respectfully requests that the Court enter an order adopting 

constructions and holding terms indefinite as discussed below. 

II. BACKGROUND OF THE ASSERTED PATENT & PROSECUTION HISTORY 

The ’445 Patent describes a float tool for use in casing flotation, a well-known technology 

developed in the 1980’s to extend the lateral reach of horizontal wellbores. Ex. 1, ¶¶ 37-47, 51. 

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Casing flotation overcomes the friction between the wellbore and the casing that can cause the 

casing to become stuck in extended-reach horizontal wells. Ex. 1, ¶ 38. Extended-reach drilling 

with casing flotation is an economical and common approach for building extended reach 

horizontal wells, used throughout the world. Ex. 1, ¶ 39. 

A. Technology Background 

Casing flotation uses an air chamber near the lower end of the casing string, sealed with a 

plug, to reduce the friction between the casing and the formation. Ex. 1, ¶ 43. Plugs with rupture 

discs were eventually used in place of retrievable plugs to seal the chamber, thereby eliminating 

the costs associated with retrieval. Ex. 1, ¶ 46 

The ’445 Patent “relates to a method and apparatus for sealing well casings.” Ex. 2, at 

1:16-17. The ’445 Patent alleges that prior art plugs may not be capable of restoring full casing 

inside diameter (“ID”) after flotation. Ex. 2, at 1:47-55; Ex. 1, ¶ 54-55. The ’445 Patent thus 

describes a “float chamber” where “parts of the float chamber could be easily removed from the 

wellbore and/or that the removal could result in full casing ID.” Ex. 2, at 1:56-67; Ex. 1, ¶ 55. 

The ’445 Patent further describes that the rupture “disc may be engaged within the casing 

string by a securing mechanism,” such as a shear ring, which “provides for seating rupture disc in 

lower tubular member, and acts as a disengagable constraint.” Ex. 2, at 2:10-11, 8:44-62, FIGs. 

2-3; Ex. 1, ¶ 57. After the casing has been landed, the “rupture disc is then burst by pressuring the 

casing from the surface.” Ex. 2, at 6:24-26; Ex. 1., ¶ 58. The resulting impact destroys the rupture 

disc, and allows full casing ID to be restored. Ex. 2, at 11:27-41; Ex. 1, ¶ 58; see also Ex. 2 at 

11:46-48 (“the impact force on rupture disc 30, combined with the hydraulic pressure, accomplish 

the breaking of rupture disc.”). 

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B. Relevant Prosecution History 

The application that led to the ’445 Patent was not allowed until after it received three 

rejections from the Examiner. In the last of these, the Examiner rejected the claims as obvious 

over a journal article that described casing flotation, and U.S. Patent 5,479,986 to Gano (“Gano”). 

Ex. 3, at 3-10. In particular, the Examiner rejected the claims in view of an embodiment at Figure 

3 in Gano that illustrated a domed well plug. Id., at 4. 

To overcome Gano, applicant amended the claims to recite that “the region where the 

rupture disc is attached . . . is parallel to the internal diameter of the casing string.” Ex. 4, at 2, 5-

6, 9, 11-12. No other amendments were made. Thus, this is the sole limitation that distinguishes 

the claims of the ’445 Patent over the prior art. See id. Applicant argued that this amendment 

overcame Gano because “Gano’s plug and rupture disc are in sealing engagement with and 

attached to a region of a tubular member that is not parallel to the internal diameter of the casing 

string, but is instead sloped.” Id., at 12 (emphasis added). The Examiner allowed the claims with 

this limitation, without further comment on the reasons for allowance. Ex. 5. 

III. LEGAL STANDARD 

A. Claim Construction 

Claim terms generally are given their plain and ordinary meaning as understood by a person 

of ordinary skill in the art at the time of the invention in light of the specification and the 

prosecution history (a “POSA”). Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) 

(en banc). The ordinary and customary meaning is determined by a POSA as of the priority date 

of the patent, which NCS claims is February 2013.1 The construction of claim terms may take into 

1

 In this circumstance, a POSA is a person with a Bachelor’s degree, Master’s degree, and/or Ph.D. in Mechanical 

Engineering or Petroleum Engineering, or at least five years of experience working in horizontal well construction. 

Ex. 1, at ¶ 35. 

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account sources of intrinsic evidence, including the claims themselves, the specification, and 

prosecution history. Phillips, 415 F.3d at 1314. “The specification is the ‘single best guide to the 

meaning of a disputed term.’” Kaneka Corp. v. Xiamen Kingdomway Group Co., 790 F.3d 1298, 

1304 (Fed. Cir. 2015) (quoting Phillips, 415 F.3d at 1315). The prosecution history can also 

provide relevant evidence of “how the inventor understood the invention and whether the inventor 

limited the invention in the course of prosecution.” Phillips, 415 F.3d at 1317 (citations omitted). 

Embodiments in the specification can prove significant, Accent Packaging, Inc. v. Leggett 

& Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013), but the specification should not be used to 

read limitations into the claims, except in instances where the patentee has been his own 

lexicographer and redefined a claim term, or in instances of clear disavowals of claim scope. HillRom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371-74 (Fed. Cir. 2014). Similarly, 

limitations should not be read out of the claims, as all terms should be given effect and not rendered 

superfluous – even if it renders the claims inoperable or invalid. See Hill-Rom, 755 F.3d at 

1371-74; Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) (“Each 

element contained in a patent claim is deemed material to defining the scope of the patented 

invention”). Where claims are inoperable or invalid, they may not be redrafted in the Markman 

process “to make them operable or sustain their validity.” Lucent Techs. v. Gateway, Inc., 525 

F.3d 1200, 1215 (Fed. Cir. 2008). 

Beyond the intrinsic evidence, the Court also may consider extrinsic evidence during claim 

construction to help establish the meaning of claim terms to a POSA. Phillips, 415 F.3d at 1317-

19. Extrinsic evidence “consists of all evidence external to the patent and prosecution history, 

including expert and inventor testimony, dictionaries, and learned treatises.” Id. at 1317 (citations 

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and internal quotations omitted). Extrinsic evidence, however, is “less reliable” than intrinsic 

evidence and cannot be used to contradict intrinsic evidence. Id. at 1318-19. 

B. Indefiniteness 

Patent claims must particularly point out and distinctly claim the subject matter of the 

invention. 35 U.S.C. § 112(b). A claim is invalid for indefiniteness when the claim, “read in light 

of the specification delineating the patent, and the prosecution history, fails to inform, with 

reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus Inc. v. 

Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). “[A] patent must be precise enough to afford 

clear notice of what is claimed, thereby appris[ing] the public of what is still open to them, in a 

manner that avoids [a] zone of uncertainty which enterprise and experimentation may enter only 

at the risk of infringement claims.” Id. at 899 (internal citations and quotes omitted). 

IV. AGREED CLAIM TERMS 

The parties agree that the following terms should be construed as follows: 

Claim Term Agreed Construction 

“float shoe” (Claims 15 & 43) a sealing device disposed at the lower end of 

the casing string

“a pressure . . . greater than a hydraulic 

pressure in the casing string” (Claims 28, 50, 

55)

an applied pressure that is greater than the 

hydrostatic pressure in the casing string

“a portion of the sealed chamber is buoyant in 

the well fluid” (Claim 46) 

the density of a portion of the sealed chamber 

is lower than that of the surrounding wellbore 

fluid

V. DISPUTED CLAIM TERMS 

A. “internal diameter” (Claims 1, 22, 28, and 50) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

the diameter of a fluid channel measured 

perpendicularly from the inner wall of the 

fluid channel through the center of the casing 

string, to the opposite inner wall 

No construction 

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The term “internal diameter” is used throughout the claims, and the meaning of the term is 

a central dispute in this case, thus requiring the Court’s attention. Indeed, the sole limitation that 

distinguishes the alleged invention of the ’445 Patent from the prior art is that “the region where 

the rupture disc is attached . . . is parallel to the internal diameter of the casing string.” Ex. 4, at 

12 (emphasis added). This limitation is indefinite, as described in Section V.F, infra. Given the 

centrality of this term to the parties’ dispute, Nine respectfully submits that construction of 

“internal diameter” is necessary to provide the jury with guidance as to the meaning of the term. 

See Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1366 (Fed. Cir. 2010). 

Nine’s proposed construction clarifies and gives effect to the plain and ordinary meaning 

of the term “internal diameter” to a POSA in geometric terms. Ex. 1, ¶ 64. The term “internal 

diameter” is a phrase whose plain and ordinary meaning is the product of the ordinary meaning of 

its components. See Altiris, Inc v. Symantec Corp., 318 F.3d 1363, 1372 (Fed. Cir. 2003); Ex. 1, ¶ 

64. Here, the term “diameter” has a clear and unambiguous ordinary meaning – “a straight line 

passing through the center of a circle and meeting the circumference or surface at each end.” Ex. 

6, at 341 (“Diameter”); Ex. 1, ¶ 65. When used with the term “internal,” this definition specifies 

that the diameter describes an inner dimension of an object. Ex. 1, ¶ 65. Indeed, a POSA would 

recognize that the term “internal diameter” is often used to describe the diameter of fluid channels 

through various objects, such as pipes, float tools, or casing strings. Id.. 

Nine’s proposed construction is also consistent with the specification. See Kaneka, 790 

F.3d at 1304. The specification describes the internal diameter of the casing string in relation to 

the constricted opening of the lower tubular member depicted in Figure 2. Ex. 2, at 7:64-66 

(“These other members of the casing string may have an ID similar to the diameter of the 

constricted opening 27 of lower tubular member 18.”). Ex. 1, ¶ 66. Accordingly, the Court should 

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construe “internal diameter” to mean the diameter of a fluid channel measured perpendicularly 

from the inner wall of the fluid channel through the center of the casing string, to the opposite 

inner wall.” Ex. 1, ¶ 67. 

B. “tubular member” (Claims 1, 22, 28, and 50) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

An upper tubular member, and a lower 

tubular member coupled with the upper 

tubular member. 

No construction. 

Nine’s construction is proper because the term “tubular member” does not have a plain and 

ordinary meaning. However, the term is used consistently throughout the specification, thereby 

providing an implicit definition that is incorporated into the claim. See Amazin' Raisins Intern., 

Inc. v. Ocean Spray Cranberries, Inc., 306 Fed. Appx. 553 (Fed. Cir. 2008) (citation and internal 

quotations omitted) (“when a patentee uses a claim term throughout the entire patent specification, 

in a manner consistent with only a single meaning, he has defined that term by implication”). Nine 

submits that adopting this construction will assist the finder of fact in identifying the “tubular 

member” among various components of prior art or accused products. 

While a POSA would be familiar with the term “tubular,” this term is not frequently used 

with “member.” Ex. 1, ¶ 69. Indeed, the specification never uses the term “tubular member” 

without qualification. Ex. 1, ¶ 70. Instead, all 62 uses of the term in the specification refer either 

to the “upper” or “lower” tubular member. Id. Therefore, the specification appears to equate the 

assembly of the upper and lower tubular members with the claimed tubular member. Id.. Nine’s 

proposed construction incorporates verbatim the language of the specification, Ex. 2, at 2:49-54, 

which exactly parallels the claim structure: 

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’445 Patent (Ex. 2), Claims 1, 22, 28, and 

50 

’445 Patent (Ex. 2), at 2:49-54 

“a rupture disc assembly comprising (i) a 

tubular member having an upper end and a 

lower end, the upper and lower ends 

configured for connection in-line with the 

casing string 

“the rupture disc assembly comprises an 

upper tubular member, and a lower 

tubular member coupled with the upper 

tubular member. 

and (ii) a rupture disc having a rupture burst 

in sealing engagement with a region of the 

tubular member within the upper and lower 

ends.” 

The rupture disc is held in sealing 

engagement between the upper tubular 

member and the lower tubular member by 

a securing mechanism.” 

There are no other structures in the specification that could arguably equate to a “tubular member.” 

Ex. 1, ¶ 71. Accordingly, a POSA viewing the specification would conclude that Nine’s proposed 

construction was correct. 

C. “sealing engagement” (Claims 1, 22, 28, 50, and 55) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

attached or secured to create a fluid-tight seal a substantially fluid-tight seal 

Nine’s construction combines the specification’s version of a definition of the term 

“sealing” with the plain and ordinary meaning of the term “engagement.” In contrast, NCS’s reads 

out any requirement related to “engagement.” 

The term “sealing engagement” is not a term with a clear plain and ordinary meaning, but 

the terms “seal” and “engage” do have plain meanings that can be relied upon to find a 

construction. See Altiris, 318 F.3d at 1372. To “seal” is “to fasten or close tightly by or as if by a 

seal” or “to close hermetically.” Ex. 6, at 1105 (“Seal”); Ex. 1, ¶ 73. To “engage” is to “attach or 

secure.” Id., at 408 (“Engage”) ; Ex. 1, ¶ 73. Accordingly, to be in sealing engagement is to attach 

or secure to fasten, close tightly, or close hermetically. Ex. 1, ¶ 73. 

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The term “sealing engagement” is used in a similar context in the specification, further 

supporting Nine’s proposal. See Kaneka, 790 F.3d at 1304. The specification explains, in a 

preferred embodiment, that a rupture disc in sealing engagement “create[s] a fluid-tight seal” Ex. 

2, at 9:26-31; Ex. 1, ¶ 74. This matches the plain and ordinary meaning of “seal,” and provides a 

simpler definition of “sealing” in the context of the ’445 Patent – “creating a fluid-tight seal.” Ex. 

1, ¶ 74. Accordingly, for the benefit of the jury, Nine proposes simplifying the ordinary meaning 

of “sealing” to “creating a fluid tight seal” to arrive at “attached or secured to create a fluid-tight 

seal.” Ex. 1, ¶ 75. 

D. “the rupture disc is. . . configured to rupture when exposed to a rupturing 

force greater than the rupture burst pressure” (Claims 1, 22, 29, and 56) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

Term is indefinite under 35 U.S.C. § 112 

Proposed Alternative – the rupture disc will 

rupture when exposed to a rupturing pressure 

greater than the rupture burst pressure 

the rupture disc can rupture if exposed to 

hydraulic pressure that is higher than its 

rupture burst pressure 

Nine respectfully submits that this term is indefinite because this claim term requires a 

POSA to compare a rupturing force and a rupturing pressure, which are fundamentally not 

comparable. Thus, a POSA would be unable to determine with reasonable certainty what this 

claim term refers to. See Nautilus, 572 U.S. at 901. As would be recognized by a POSA, a force 

and a pressure are not comparable because they use different units. Ex. 1, ¶ 78-80. Accordingly, 

a POSA cannot reasonably ascertain whether a rupturing force is greater than a rupture burst 

pressure. Thus, this term is indefinite. See Nautilus, 572 U.S. at 901; Ex. 1, ¶ 81. 

This indefiniteness cannot be resolved by any reasonable construction. Ex. 1, ¶ 83. For 

example, a POSA may believe that the claim was intended to compare a rupturing pressure to a 

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rupture burst pressure, and substitute in “rupturing pressure” for “rupturing force.” Id. Indeed, 

this is the only possible substitution that would make some sense to a POSA. Id. Nine therefore 

presents this understanding as an alternative construction. With that understanding of the term, a 

rupturing pressure is easily compared to a rupture burst pressure. Id. This understanding further 

would be supported by the specification, which provides only a single example of a “rupturing 

force” – “hydraulic fluid under pressure.” Ex. 2, at 2:7-8; Ex. 1, ¶ 83. 

However, a POSA would also discover that in the next paragraph “[t]he hydraulic pressure 

required to cause disruption of the securing mechanism is less than the hydraulic pressure that 

would normally be required to break the rupture disc.” Ex. 2, at 2:19-21; Ex. 1, ¶ 83. This 

construction would thus contradict the specification, and is unlikely to be the proper construction 

of the term. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1297 (Fed. Cir. 2005) 

(rejecting a proposed construction that “contradicts the test and figures of the written description). 

Instead, a POSA would not be able to say with reasonable certainty what was meant, rendering the 

term indefinite. Ex. 1, ¶ 84. 

E. “rupturing force” (Claims 1, 22, 27, 29, 56, and 57) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

Term is indefinite under 35 U.S.C. § 112 

Proposed Alternative – rupturing pressure 

a hydraulic pressure or impact force sufficient 

to rupture the rupture disc 

As discussed in Section V.D above, Nine respectfully submits that “rupturing force” is 

indefinite because a POSA could not reasonably ascertain how to compare a “rupturing force” to 

a “rupturing pressure.” Nine respectfully submits that the term “rupturing force” should be 

construed to have the same meaning throughout the claims. Thus, to the extent it renders the term 

discussed in Section V.D indefinite, it renders all other claims in which it appears indefinite. 

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Further, the Court should reject NCS’s proposed construction of “rupturing force” because 

it contradicts its construction of the exact same term proposed in Section V.D above. Instead of 

simply proposing “hydraulic pressure,” NCS’s construction now incorporates an “impact force 

sufficient to rupture the disc.” This concept is absent from the claims and is not supported by the 

specification and then should be rejected. Instead, the term is used consistently throughout the 

claims, and should be construed to have a consistent meaning. In re Varma, 816 F.3d 1352, 1363 

(Fed. Cir. 2016) (“the same phrase in different claims of the same patent should have the same 

meaning.”); Phonometrics, Inc. v. Northern Telecom, Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998) 

(“A word or phrase used consistently throughout a claim should be interpreted consistently.”). 

F. “the region of the tubular member where the rupture disc is attached has a 

larger internal diameter that the internal diameter of the casing string and is parallel 

to the internal diameter of the casing string” (Claims 1, 22, 28, and 50) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

Term is indefinite under 35 U.S.C. § 112 

Proposed Alternative – a flat surface of the 

tubular member where the rupture disc is 

fastened, affixed, joined, or connected to the 

tubular member is circular and has a diameter 

larger than the internal diameter of the casing 

string, and defines a plane that is parallel to a 

plane defined by the set of internal diameters 

at a location in the casing string 

In the first portion of the tubular member, the 

rupture disc is directly secured to and in 

sealing engagement with a cylindrical surface 

that is wider than and parallel to the inner 

surface of the casing string 

This term is indefinite because it requires that two features which have no inherent 

direction must be “parallel.” As a result, a POSA could not reasonably understand what is meant 

by the claim term, or determine if any particular accused product infringes the claim, rendering the 

claim indefinite. See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. at 901; Ex. 1, ¶ 87. 

Case 6:20-cv-00277-ADA Document 42 Filed 10/30/20 Page 15 of 25
Nine’s Opening Brief on Claim Construction 

NCS Multistage, Inc. v. Nine Energy Service, Inc. No. 6:20-cv-00277-ADA 12 

1. “the region of the tubular member where the rupture disc is attached” (the 

“Attachment Region”) 

A POSA would understand that this portion of the construed term merely refers to a surface 

of the tubular member where the rupture disc is attached. Ex. 1, ¶ 90. Here, a “tubular member” 

refers to the assembly of the upper and lower tubular members. See Section V.B. Further, the 

term “attached” has a plain and ordinary meaning of “fastened, affixed, joined, or connected.” Ex. 

6, at 80 (“Attach”); Ex. 1, ¶ 90. Nothing more is needed to interpret this portion of the term. This 

portion of the claim term should thus be construed as “the region of the tubular member where the 

rupture disc is fastened, affixed, joined, or connected” (the “Attachment Region”). Ex. 1, ¶ 90. 

2. “the region of the tubular member where the rupture disc is attached has a 

larger internal diameter than the internal diameter of the casing string” 

A POSA would understand from this term that the Attachment Region must have an 

internal diameter that is larger than the internal diameter of the casing string. Ex. 1, ¶ 91. This 

implies that the Attachment Region must be circular in order to have a diameter. Id. But other 

than this inference, no further construction is needed. Id. Accordingly, Nine proposes that this 

portion of the claim term be construed as “the region of the tubular member where the rupture disc 

is fastened, affixed, joined, or connected is circular and has a larger internal diameter than the 

internal diameter of the casing string.” 

3. The phrase “the region of the tubular member where the rupture disc is 

attached . . . is parallel to the internal diameter of the casing string” is indefinite. 

A POSA would not be able to ascertain with reasonable certainty the meaning of this 

portion of the claim term in its context, and therefore the term is indefinite. A POSA would 

understand that the term “parallel” carries its plain and ordinary meaning, which is “extending in 

the same direction, equidistant at all points, and never converging or diverging.” Ex. 6, at 892 

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(“Parallel”); Ex. 1, ¶ 92. Implicit in this definition is that, for two features to be parallel, they 

must both have an inherent direction. Id.

An internal diameter of a casing string does not have an inherent direction, and therefore 

cannot be parallel to another feature. Ex. 1, ¶ 93. A POSA would understand that an internal 

diameter is a scalar property of an object with a circular fluid pathway, such as a pipe. See Section 

V.A. It is a number, not something with direction. Ex. 1, ¶ 93. Accordingly, a POSA would be 

unable to determine if another feature was parallel to an internal diameter. Id. Because the 

comparison is impossible, a POSA cannot have reasonable certainty as to the scope the claim. The 

term is thus indefinite. See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. at 901 

Similarly, the claim language fails to identify any particular direction implied by the 

Attachment Region. Ex. 1, ¶ 94. Accordingly, a POSA does not know how to determine if it is 

parallel to the internal diameter, which likewise has no inherent direction. For these reasons, this 

portion of the claim is indefinite. Id.

4. If forced to construe “the region of the tubular member where the rupture 

disc is attached . . . is parallel to the internal diameter of the casing string,” a 

POSA would arrive at a construction that contradicts the specification. 

If forced to provide a construction that made sense of this portion of the claim term, a 

POSA would have to reduce the terms “internal diameter of the casing string” and the Attachment 

Region to geometric concepts that have inherent direction, and thus could be parallel. Ex. 1, ¶ 95. 

One way to do this would be to presume that “parallel to the internal diameter of the casing string” 

refers to being parallel to a plane defined as a set of measured internal diameters at a location in 

the casing string. Id. An internal diameter is measured as the distance from one inside wall of a 

pipe, through the center, to the opposite internal wall at a location in the casing string. See Section 

Case 6:20-cv-00277-ADA Document 42 Filed 10/30/20 Page 17 of 25
54 

36 

38 

22 

3 

58 

Internal 

Diameter 

• 

Nine’s Opening Brief on Claim Construction 

NCS Multistage, Inc. v. Nine Energy Service, Inc. No. 6:20-cv-00277-ADA 14 

V.A. This measurement forms a line segment, an example of which is shown below on Figure 2 

of the ’445 Patent. Ex. 1, ¶ 95. 

While this figure shows the internal diameter in a 2-dimensional cross-section, a POSA would 

understand that this represents a potential plane when viewed in three dimensions. Ex. 1, ¶ 96. In 

geometric terms, so long as the casing string is straight, any two non-parallel measured internal 

diameters at any axial location will define a plane that is parallel to a plane at any other axial 

location. Id. As a result, a POSA could determine that the internal diameter referred to in the 

claim actually refers to “a plane defined by the set of measured internal diameters at a location in 

the casing string” (an “Internal Diameter Plane”). Id.

Given this understanding of the internal diameter, a POSA could then look to Figure 2 to 

see if any potential Attachment Regions are also parallel to this plane. Ex. 1, ¶ 97. There are three 

possibilities, where the rupture disc appears to at least be in contact with the rest of the float tool, 

as shown below: 

Case 6:20-cv-00277-ADA Document 42 Filed 10/30/20 Page 18 of 25
16 

12 #2 

54 

36 

30 

Rupture 

Disc 

38 

32 

34 

25727 

#3 

58 

24 22 24 

Internal 

diameter of 

region # 3 

34 

60 28 39 26 

Internal 

Diameter 

• 

58 

internal 

- diameter of the —

casing string 

56 14 

Nine’s Opening Brief on Claim Construction 

NCS Multistage, Inc. v. Nine Energy Service, Inc. No. 6:20-cv-00277-ADA 15 

A POSA would identify attachment region # 3 as such a region, because it is generally flat and 

planar, and is parallel to the Internal Diameter Plane. Ex. 1, ¶ 98. In contrast, regions # 1 and # 2 

are not planar at all, and thus could not be “parallel,” nor are they parallel to the Internal Diameter 

Plane on the cross-section above. Id. Assuming that attachment region # 3 is correct, a POSA 

would therefore assume that an Attachment Region must therefore be flat, and define a plane that 

is parallel to the Internal Diameter Plane. Id. Further, a POSA would understand that the rupture 

disc would sit on the shear ring in Figure 2, having a contact area that was roughly circular – and 

thus has its own internal diameter, which would be larger than the internal diameter of the casing 

string, as shown below, and as required by the claim: 

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Nine’s Opening Brief on Claim Construction 

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Ex. 1, ¶ 98. Nine’s proposed alternative construction captures this understanding of the claim 

language. Id.

This understanding of the term is consistent with the prosecution history. Ex. 1, ¶ 99. In 

the last response before allowance, the patentee added this limitation in an attempt to distinguish 

the claims from Figure 3 of Gano. Ex. 4, at 12. Figure 3 of Gano is reproduced below next to 

Figure 2 of the ’445 Patent. 

Gano (Ex. 7), at Fig. 3 

(excerpted & annotated) 

’445 Patent (Ex. 2), at Fig. 2 

(excerpted & annotated) 

The patentee argued that the claims were distinguishable from Gano because “Gano’s plug 70 and 

rupture disc 102 are in sealing engagement with and attached to a region of a tubular member that 

is not parallel to the internal diameter of the casing string, but is instead sloped.” Ex. 4, at 12. 

Here, the only sloped surface in Figure 3 of Gano is the surface adjacent to the circumferential 

edge of the rupture disc 102, highlighted in red above. Ex. 1, ¶ 100. Accordingly, a POSA would 

view this statement as confirming that the Attachment Region referred to in Figure 2 was the one 

where the circumferential edge of the rupture disc was resting on the shear ring 44, in region # 3. 

Id.

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Nine’s Opening Brief on Claim Construction 

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However, this alternative construction does not save the claim from indefiniteness. Ex. 1, 

¶ 102. None of possible attachment regions #1-3 satisfy the other requirements of the claim – that 

the rupture disc be “attached” to the “tubular member.” Id. In Figure 2, the rupture disc is depicted 

as being placed inside shear ring 44. Id. As a result, it only makes contact with the tubular member 

at shoulder 60. Id. Even that contact, however, is not an “attachment,” as required by the claims. 

Id. Similarly, in both regions # 2 and # 3, the rupture disc is not even in contact with the tubular 

member, much less attached to it. Id. Accordingly, none of the attachment regions depicted in 

Figure 2 satisfy all the elements of this claim term. Id. This term is therefore indefinite because 

it cannot be understood by a POSA with a degree of reasonable certainty. Id.

G. “specific gravity . . . of the well fluid” (Claims 24 and 52) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

Term is indefinite under 35 U.S.C. § 112 No Construction 

Nine respectfully submits that this claim term is indefinite because a POSA would 

understand that the specific gravity of well fluid varies as a function of both temperature and depth. 

Ex. 1, ¶ 106-07. Specific gravity is the ratio of the density of a substance to the density of a 

standard material at standard conditions, usually water for a liquid or a solid, and air for a gas (i.e. 

relative density). Id. The relative density of well fluid is not a constant value across the depth of 

a well, but varies as a function of both temperature and pressure. Id. As a result, there is no single 

relative density value for the well fluid. Id. Therefore, in light of the specification and the claims 

of the ’445 Patent, a POSA could not determine when the first specific gravity or the fluid in the 

sealed chamber of the flotation column was less than or lower than the specific gravity of the well 

fluid, because that density is not a constant value. Id. The term is therefore indefinite. 

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Nine’s Opening Brief on Claim Construction 

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H. “disengage the rupture disc from sealing engagement” (Claim 55) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

disengage the rupture disc from being 

attached or secured to create a fluid-tight seal 

Before rupturing, move the rupture disc 

relative to the region 

This term needs no additional construction beyond the construction of the term “sealing 

engagement” as discussed in Section V.C. This term merely indicates that the rupture disc is 

“disengaged” from sealing engagement, which has a plain and ordinary meaning that needs no 

further construction. 

I. “rupture disc is configured to disengage from sealing engagement when 

exposed to a pressure greater than a hydraulic pressure in the casing string” (Claims 

28 and 50) 

Defendant Nine’s Construction Plaintiff NCS’s Construction 

Term is indefinite under 35 U.S.C. § 112 the rupture disc, before rupturing, can move 

relative to the first portion when exposed to a 

pressure that is greater than a hydrostatic 

pressure in the casing string (i.e. a 

disengaging pressure) 

Nine submits that this term is indefinite because a POSA cannot reasonably determine how 

a rupture disc can be configured for the claimed purpose in view of the specification and drawings. 

In particular, this claim term requires a configuration of the “rupture disc,” and not of the rupture 

disc assembly or any other claimed element. Ex. 1, ¶113. A POSA is left entirely to guess at how 

such a configuration could be achieved. See, e.g. USB Bridge Soln’s, LLC v. Buffalo, Inc., No. 

1:17-cv-001158-LY, 2020 WL 1906898, at *7-8 (W.D. Tex. Apr. 17, 2020) (holding indefinite 

“digital circuit configured to convert” where specification does not describe such a configuration). 

A POSA would understand what is meant by “disengage from sealing engagement” and 

what is meant by “when exposed to a pressure greater than a hydraulic pressure in the casing 

string.” Ex. 1, ¶114. The term “disengage from sealing engagement” should be construed as 

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Nine’s Opening Brief on Claim Construction 

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“disengage from being attached or secured to create a fluid-tight seal.” See Section V.H. Further, 

the parties have agreed that the phrase “a pressure . . . greater than a hydraulic pressure in the 

casing string” refers to an applied pressure that is greater than the hydrostatic pressure in the casing 

string.” Id. Accordingly, the required configuration means that a component must be configured 

to no longer be attached or secured to create a fluid-tight seal when exposed to a pressure that is 

greater than the hydrostatic pressure in the casing string. Id.

While a POSA would understand these terms, the term becomes indefinite when a POSA 

is told that the rupture disc must have this configuration. Ex. 1, ¶ 115. Indeed, the specification 

lacks any description at all of such a configuration of the rupture disc. Id. Each and every 

embodiment requires that the rupture disc be located in a “securing mechanism.” Ex. 2, at 

Abstract, 2:10-11, 2:59-65, 6:28-31, 8:51-65, 9:32-42, 10:22-24; Ex. 1, ¶116. The only means by 

which a rupture disc could be configured to disengage from sealing engagement is by failing when 

a pressure is applied to the disc. Ex. 1, ¶ 116. However, the specification provides no indication 

that an embodiment without a securing mechanism is contemplated by the inventors. See Accent 

Packaging, 707 F.3d at 1326 (“a claim interpretation that excludes a preferred embodiment from 

the scope of the claims is rarely, if ever, correct.”). Ex. 1, ¶116 

VI. CONCLUSION 

For the foregoing reasons, Nine respectfully requests that the Court find certain of the 

foregoing terms indefinite and adopt Nine’s proposed constructions. 

Case 6:20-cv-00277-ADA Document 42 Filed 10/30/20 Page 23 of 25
Nine’s Opening Brief on Claim Construction 

NCS Multistage, Inc. v. Nine Energy Service, Inc. No. 6:20-cv-00277-ADA 20 

Dated: October 30, 2020 Respectfully submitted, 

VINSON & ELKINS LLP 

By: /s/ Hilary L. Preston

Hilary L. Preston 

Texas Bar No. 24062946 

hpreston@velaw.com 

VINSON & ELKINS L.L.P. 

2801 Via Fortuna, Suite 100 

Austin, TX 78746 

Telephone: +1.512.542.8400 

Fax: +1.512.542.8612 

Parker D. Hancock 

Texas Bar No. 24108256 

phancock@velaw.com 

Sean P. Belding 

Texas Bar No. 24109634 

sbelding@velaw.com 

VINSON & ELKINS L.L.P. 

1001 Fannin Street, Suite 2500 

Houston, TX 77002-6760 

Telephone: +1.713.758.2222 

Fax: +1.713.758.2346 

Attorneys for Defendant Nine Energy 

Service, Inc. 

Case 6:20-cv-00277-ADA Document 42 Filed 10/30/20 Page 24 of 25
Nine’s Opening Brief on Claim Construction 

NCS Multistage, Inc. v. Nine Energy Service, Inc. No. 6:20-cv-00277-ADA 21 

CERTIFICATE OF SERVICE 

I hereby certify that on the 30th day of October, 2020, a true and correct copy of the 

foregoing document was served on all counsel of record via the Court’s CM/ECF system per Local 

Rule CV-5(b)(1). 

/s/ Hilary L. Preston 

Hilary L. Preston 

US 7460476

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