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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 

NINE ENERGY SERVICE, INC.’S AMENDED OPPOSITION TO NCS MULTISTAGE 

INC.’S MOTION TO STRIKE NINE’S SUPPLEMENTAL EXPERT REPORT1

Nine Energy Service, Inc. (“Nine”) respectfully submits this Opposition to Plaintiff NCS 

Multistage Inc.’s (“NCS’s”) Motion to Strike Nine’s Supplemental Expert Report, (Dkt. 47) (the 

“Motion”) and requests that the Court deny the Motion. NCS cannot point to any rule of this Court 

or any principle of fairness that would deny Nine the right to respond to and rebut opinion and 

extrinsic evidence presented by NCS. Indeed, NCS expressly reserved for itself the right it now 

insists that Nine does not have. Ex. 1 (“Disclosure of Extrinsic Evidence”), at 1-2.2 At root, NCS 

does not like the substance of Nine’s rebuttal, and has therefore attempted to fabricate baseless 

procedural reasons to exclude it. NCS’s motion should be denied. 

I. Background 

On October 16, 2020, NCS served a Disclosure of Extrinsic Evidence that purported to 

provide notice to Nine of the opinions to be presented by NCS’s expert, Dr. Rodgers. Exs. 1, 3. 

On the term “internal diameter,” NCS indicated that “Dr. Rodgers will opine that NCS’s proposed 

claim construction is supported by” a list of eight references. Ex. 3, at 15-16. The summary 

1

 This opposition has been re-filed with a proposed order denying NCS’s Motion (Dkt. 47). 

2

 Nine also reserved the right to supplement its disclosures. Ex. 2, at 1-2. 

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provided no indication about what Dr. Rodgers would say about those references, or how they 

supported NCS’s non-construction of “internal diameter.” Id. The summary further provided that 

Dr. Rodgers would opine that there were “two common definitions widely used in the oil industry.” 

Id. at 16. On the term “sealing engagement,” the summary suggested that Dr. Rodgers would 

opine that “in order to maintain a seal, the position of the barrier, i.e. rupture disc, must be held 

fixed relative to the casing.” Id. at 11. 

On October 30, 2020, NCS filed its Opening Claim Construction Brief. Dkt. 41 (“NCS 

Br.”). Contrary to the summary served on October 16, NCS now argues that there is a plain and 

ordinary meaning of “internal diameter,” (the “Diameter Definition”) and only one industryspecific meaning of “internal diameter” (the “Sidewall Definition”).3

 NCS Br., at 4-5. Further, 

NCS’s expert now argues that all the references cited by Dr. Rodgers support the industry specific 

meaning, even though this meaning is not present in their proposed construction. NCS Br., Ex. A 

(“Rodgers Dec.”), at ¶42. On the term “sealing engagement,” Dr. Rodgers provided opinion 

contrary to NCS’s summary, explaining that an example of objects in “sealing engagement” is a 

“piston in a seal bore,” and that such a seal could be maintained on a component that moves within 

a “limited range of travel.” Id. at ¶¶37, 39. 

On November 11, 2020, NCS deposed Dr. Meehan and suggested – for the first time – that 

the presence of the phrase “casing string having an internal diameter that defines a fluid 

passageway” suggests that the term “internal diameter” should be interpreted according to its 

Sidewall Definition in the claims of U.S. Patent No. 10,465,445 (the “’445 Patent”). Ex. 4 

(Meehan Dep.), at 37:11-39:4. Dr. Meehan did not agree with this conclusion, and merely 

3

 The terms “Diameter Definition” and “Sidewall Definition” carry the same meaning as defined 

in Nine’s Responsive Claim Construction Brief Dkt. 46, at 2. 

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accurately testified that an internal diameter – by itself – does not fully define the geometry of a 

fluid passageway in a casing string. Id.

On November 20, 2020, Nine filed its Responsive Claim Construction Brief, and included 

a Supplemental Declaration of Dr. Nathan Meehan (Dkt. 46-1) (“Supplemental Report”), 

responding to points raised in NCS’s Opening Claim Construction Brief, Dr. Rodgers’ declaration 

in support of that brief, and to points raised by counsel for NCS at his deposition on November 11, 

2020. Dr. Meehan rebutted the positions of NCS regarding the term “internal diameter,” including 

responding to the positions actually taken by NCS in its Opening Claim Construction Brief. Dkt. 

46-1, at ¶¶11-20. Dr. Meehan further clarified that his testimony regarding definitions of fluid 

passageways did not suggest that the claims used the alleged Sidewall Definition of “internal 

diameter.” Id. at ¶19. 

Further, now that Dr. Meehan was aware that there was only a single alleged industryspecific definition of “internal diameter,” Dr. Meehan further conducted a survey of the oil and 

gas academic literature, ultimately reviewing 50 selected papers to determine whether “internal 

diameter” has been used under the alleged Sidewall Definition, as proposed by NCS. Id. at ¶¶16-

18. In all but one reference, Dr. Meehan discovered that the term “internal diameter” exclusively 

was used according to the Diameter Definition. Id. at ¶17. All of the documents reviewed by Dr. 

Meehan are publicly available, and were listed in his Supplemental Report. Id. at Exhibit B. Nine 

produced copies of these documents on November 30, 2020. 

Regarding the term “sealing engagement,” Dr. Meehan makes express that he agrees with 

NCS’s expert that sealing engagement can be maintained between two objects in relative motion, 

such as a piston in a bore. Id. at ¶41; accord Ex. 5 (Rodgers Dep.), at 84:22-85:2; Rodgers Dec., 

at ¶37. 

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II. Argument 

A. Nine Is Entitled To Respond to Expert Declarations and Extrinsic Evidence, 

Particularly In Response to Arguments Not Previously Disclosed. 

NCS attempts to read this Court’s Joint Scheduling Order (Dkt. 25) to preclude Nine from 

responding to argument, opinion, and expert testimony presented by NCS with further expert 

opinion or extrinsic evidence. But it should not be read as a blanket ban on supplementing such 

disclosures in response to arguments presented by other parties. Indeed, both parties expressly 

reserved for themselves the right to supplement. Ex. 1, at 1-2; Ex. 2, at 1-2. 

Parties in this Court have repeatedly presented supplemental expert testimony and extrinsic 

evidence for consideration by the Court without issue. See, e.g., Intellectual Ventures I LLC v. 

VMware, Inc., No. 1:19-cv-01075-ADA, Dkts. 60-1, 60-2 (W.D. Tex. Mar. 27, 2020) (two expert 

reports submitted with plaintiff’s responsive Markman brief); Intellectual Ventures I, No. 1:19-cv01075-ADA, Dkt. 64-2 (W.D. Tex. Apr. 10, 2020) (supplemental expert declaration submitted 

with defendant’s reply Markman brief) ; UNM Rainforest Innovations v. Globalfoundries Inc., No. 

6:20-cv-00243-ADA, Dkt. 40-1 (W.D. Tex. Sep. 25, 2020) (expert declaration submitted with 

plaintiff’s responsive Markman brief); Green Mountain Glass, LLC v. O-I Glass, Inc., No. 6:19-

cv-600-ADA, Dkt. 58-1 (W.D. Tex. Sep. 17, 2020) (supplemental expert declaration submitted 

with defendant’s reply Markman brief). Similarly, Nine’s supplementation of its initial disclosure 

of expert testimony and extrinsic evidence here is unobjectionable. 

Nonetheless, NCS attempts to show that Nine should not be permitted to supplement its 

disclosures by reference to local patent rules not applicable to this case. Section II.1 of NCS’s 

motion is a litany of rules that do not apply here, citing Federal Circuit opinions regarding NDCA’s 

local patent rules, and district court opinions interpreting SDTX’s local patent rules in view of 

EDTX’s nearly identical local patent rules. Motion, at 3-4. But this case is not in any of those 

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jurisdictions, and as the Court well knows, it has not adopted local patent rules at all. Instead, the 

procedure of this case is governed by the Court’s Order Governing Proceedings (Dkt. 20). If NCS 

would like to avail itself of a jurisdiction with local patent rules, Nine again reminds NCS that it 

is free to withdraw its opposition to Nine’s motion to transfer to SDTX. 

Further, it cannot be that the Court’s Joint Scheduling Order bars Nine from responding to 

new arguments and opinion of which Nine had no prior notice. In the absence of Dr. Meehan’s 

Supplemental Report, Nine would have had no opportunity to present opinion and extrinsic 

evidence to rebut the arguments made in NCS’s Markman briefing, particularly in view of new 

positions taken by NCS. Not until NCS’s Opening Claim Construction Brief was Nine on notice 

that NCS would be arguing (1) that “internal diameter” had only one alleged industry-specific 

meaning, (2) that Dr. Rodgers believed all references identified referred to the alleged Sidewall 

Definition, and (3) that the phrase “internal diameter that defines a fluid passageway” is relevant 

to the construction of “internal diameter.” Thus, denying Nine the right to supplement its expert 

report would be unfairly prejudicial to Nine. 

In contrast, NCS cannot argue any unfairness or prejudice as a result of Dr. Meehan’s 

Supplemental Report. NCS had ample opportunity to address those issues in the Markman 

briefing, including in its Reply In Support of Its Opening Claim Construction Brief (Dkt. 48) 

(“Reply Brief”) filed on December 11, 2020. Nine offered NCS the opportunity to depose Dr. 

Meehan on his Supplemental Report, but NCS declined to do so. See Motion, at 2 n.2. Further, 

NCS could have submitted its own supplemental expert report in support of its Reply Brief. But 

NCS refused to avail itself of any of these options. 

Instead, NCS has again chosen to waste the Court’s time by filing yet another motion to 

strike. Its confusing comment about why they refused a supplemental deposition of Dr. Meehan 

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is telling on this point. Motion, at 2 n.2. NCS claims that they should not have to bear the burden 

of a second deposition, yet instead chooses to impose the burden of this motion to strike on the 

Court. Id. Further, NCS wrongly claims that “[t]he schedule is intended to allow the parties to 

efficiently conduct expert discovery.” Id. But neither the Order Governing Proceedings (Dkt. 20) 

or the Joint Scheduling Order (Dkt. 25) provide for expert depositions at all. Instead, the parties 

agreed to them on their own initiative. If NCS would have preferred a different deposition 

schedule, it was free to propose one when the parties discussed the issue. 

Simply put, NCS’s motion is nothing more than a baseless attempt by NCS to exclude 

evidence and testimony that it knows is detrimental to its case. Indeed, as Judge Gilstrap has 

remarked, “[a] party whose expert’s opinions place a subject at issue cannot claim surprise or 

prejudice when an opposing expert responds to those opinions.” Fractus, S.A. v. AT&T Mobility 

LLC, No. 2:18-CV-00135-JRG, 2019 WL 5373021, at *2 (E.D. Tex. Mar. 19, 2019). Accordingly, 

NCS’s motion should be denied. 

B. Dr. Meehan Is Entitled To Respond to NCS’s Arguments Presented At His 

Deposition. 

Without citing any rule or authority, NCS argues that it was improper for Dr. Meehan to 

“correct the inconsistencies in his deposition testimony, or to bolster his First Declaration.” 

Motion, at 6. But NCS provides no basis for this statement, identifying no rule or authority that 

Dr. Meehan’s Supplemental Report supposedly violates. This is a sufficient reason alone to deny 

NCS’s motion. 

The problem here is not a violation of any rule. Instead, NCS simply does not like that Dr. 

Meehan was able to respond to issues raised in his deposition. For example, Dr. Meehan opined 

in his first declaration that “internal diameter” carries its Diameter Definition. At his deposition, 

he was asked whether an internal diameter alone defines a fluid passageway, and accurately 

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responded that, in geometric terms, it did not. Ex. 4, at 38:24-39:4. NCS would like to argue that 

this somehow means that Dr. Meehan confessed to the use of the Sidewall Definition in the claims 

of the ’445 Patent. This is false. Indeed, for this reason, Dr. Meehan clarified that he agreed with 

NCS’s expert that the fluid passageway through a casing string is adequately defined by an 

“internal diameter” according to the Diameter Definition. Dkt. 46-1, at ¶19; accord Ex. 5, at 62:5-

63:15. On the substance, this agreement of the parties’ experts is damaging to NCS’s attempt to 

manufacture an alternative Sidewall Definition of “internal diameter” or show its alleged use in 

the claims of the ’445 Patent. 

On the term “disengage from sealing engagement,” Dr. Meehan’s Supplemental Report 

merely confirmed his agreement with NCS’s expert that sealing engagement can be maintained 

even where parts move relative to one another. Dkt. 46-1, at ¶41; accord Ex. 5, at 84:22-85:2, 

Rodgers Dec., at ¶37. On the substance, this agreement of the parties’ experts is fatal to NCS’s 

proposed constructions of the term “disengage the rupture disc from sealing engagement,” and 

other terms that include that phrase. 

But rather than confront Dr. Meehan on the substance of any issues presented in his 

Supplemental Report, NCS chose to file this Motion instead. 

III. CONCLUSION 

NCS had ample opportunities to probe any alleged weaknesses with Dr. Meehan’s 

Supplemental Report. It could have (1) conducted a supplemental deposition of Dr. Meehan, (2) 

presented its own supplemental expert report of Dr. Rodgers with its Reply Brief, or (3) presented 

attorney argument in that Reply Brief rebutting Dr. Meehan’s Supplemental Report. But NCS 

availed itself of none of these. Instead, NCS insists on wasting the resources of Nine and this Court 

to review and respond to its baseless motion. For all the foregoing reasons, Nine respectfully 

requests that NCS’s Motion be denied. 

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Dated: December 14, 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 

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CERTIFICATE OF SERVICE 

I hereby certify that on the 14th day of December, 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 

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