IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

NCS MULTISTAGE INC.,

 Plaintiff,

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

vs. §

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NINE ENERGY SERVICE, INC.,

 

 Defendant.

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NCS MULTISTAGE INC.’S OPPOSED MOTION TO STRIKE

SUPPLEMENTAL DECLARATION OF DR. NATHAN MEEHAN (DKT. 46-1)

Plaintiff NCS Multistage Inc. (“NCS”) moves to strike the Supplemental Declaration of 

Dr. Nathan Meehan (Dkt. 46-1) (the “Supplemental Declaration”) for two reasons. First, the 

Supplemental Declaration contains an untimely disclosure of new expert opinion and extrinsic 

evidence that violates this Court’s patent rules. Second, the Supplemental Declaration is an 

attempt to make additional arguments that should have been made in Dr. Meehan’s first 

declaration (Dkt. 42-1) (“First Declaration”) because the relevant issues were known to Dr. 

Meehan when he submitted the First Declaration. Dr. Meehan’s deposition showed his First 

Declaration contained deficiencies, so the Supplemental Declaration is an effort to address those 

deficiencies. Therefore, the Supplemental Declaration should be stricken. 

I. Background

The Court’s schedule unambiguously ordered each party to disclose and produce the

extrinsic evidence it would rely on for claim construction, including a summary of expert witness 

opinions, by October 16, 2020. Id. The Court advised the parties that “[a] failure to summarize 

the potential expert testimony in a good faith, informative fashion may result in the exclusion of 

Case 6:20-cv-00277-ADA Document 47 Filed 12/07/20 Page 1 of 8
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the proffered testimony.”

On October 16, 2020, both parties produced a summary of expert testimony and items of 

extrinsic evidence they would rely on for claim construction. 

On October 30, 2020, both parties filed their opening claim construction briefs, each of 

which was supported by the parties’ respective expert’s declaration. After the opening briefs and 

supporting expert declarations were filed, the parties conducted expert depositions. NCS’s 

counsel deposed Dr. Meehan on his expert opinions and declaration on November 10, 2020. 

On November 20, 2020, over a month after the Court’s disclosure deadline and ten days 

after Dr. Meehan’s deposition, Nine filed the Supplemental Declaration in support of its 

responsive claim construction brief. Dkt. 46-1. The Supplemental Declaration includes fifty 

new items of extrinsic evidence cited in support of Dr. Meehan’s opinion on the term “internal 

diameter” that Nine did not identify or disclose on October 16, 2020.1 See Dkt. 46-1 at ¶¶ 16-19; 

Id. at pp. 21-24. In a meet and confer, Nine’s counsel did not deny that these fifty references 

were not identified or produced on October 16, but rather argued that the references are properly

included in the Supplemental Declaration as rebuttal evidence.

The remainder of the Supplemental Declaration is couched as a rebuttal, but really is an 

attempt to bolster Dr. Meehan’s opinions to counter admissions he made in his deposition 

testimony.2 

1 In fact, Nine did not produce the extrinsic references to NCS until November 30, 2020.

2In a meet and confer, Nine’s counsel offered Dr. Meehan for a one-hour deposition on his 

supplemental declaration. But NCS should not have to incur the time and expense of a second 

deposition when Nine has violated this Court’s order. The schedule is intended to allow the 

parties to efficiently conduct expert discovery.

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II. Argument

1. Dr. Meehan’s new opinions on “internal diameter” should be stricken. 

The Federal Circuit recognizes that local patent rules are “designed specifically to 

‘require the parties to crystallize their theories of the case early in the litigation’ so as to ‘prevent 

the ‘shifting sands’ approach to claim construction.’” O2 Micro Int’l, Ltd. v. Monolithic Power 

Sys., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (quoting Atmel Corp. v. Info. Storage Devices, Inc., 

No. C 95-1987 FMS, 1998 U.S. Dist. LEXIS 17564, at *7 (N.D. Cal. 1988). Based on this 

rationale, other courts in this Circuit have stricken extrinsic evidence under similar 

circumstances as here. For example, the Southern District of Texas has a nearly identical 

requirement regarding disclosure of extrinsic evidence in its Local Patent Rules:

At the same time the parties exchange their respective “Preliminary Claim

Constructions,” they must also exchange a preliminary identification of extrinsic

evidence they contend supports their respective claim constructions, such as dictionary 

definitions, citations to learned treatises and prior art, and testimony of fact and expert 

witnesses. The parties must identify each item of extrinsic evidence by production number 

or produce a copy of any such item not previously produced.

See Exhibit A, Southern District of Texas P.R. 4-2(b) (emphasis added). In Goodman v. Smart 

Modular Technologies, Inc., the plaintiff disclosed one item of extrinsic evidence two months 

after the deadline in P.R. 4-2(b). 2015 WL 12777374, at *2-3 (S.D. Tex. June 4, 2015). In 

striking the evidence, and all references to it, the court noted that “[b]oth the letter and spirit of 

the Patent Rules require early and complete disclosure of extrinsic evidence relevant to claim 

construction” and that “[t]he spirit of the Patent Rules do not permit a party to wait until after its 

P.R. 4-2 and 4.3 disclosures to look for new information to support its claim construction 

position.” Id. at *3 (emphasis added). Similarly, in Fairchild Industries, Inc. v. Wireless 

Seismic, Inc., the plaintiff moved to strike several paragraphs in an expert declaration that related 

to claim construction issues because neither the expert nor the expert’s testimony were disclosed 

Case 6:20-cv-00277-ADA Document 47 Filed 12/07/20 Page 3 of 8
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in accordance with the patent rules. No. 4:14-cv-2972, 2015 U.S. Dist. LEXIS 28870, *4-5 (S.D. 

Tex. March 10, 2015). Citing the same requirement of the local patent rules, the court struck the 

testimony from the record. Id. (“Further, Eastern District P.R. 4-3 states that, no later than 60 

days after service of the Invalidity Contentions, the parties must file a Joint Claim Construction 

and Prehearing Statement that contains ‘an identification of extrinsic evidence known to the 

party on which it intends to rely . . . [such as] fact and expert witnesses.’ (E.D. Tex. P.R. 4-3.) 

The Southern District of Texas has nearly identical provisions in its patent rules. (P.R. 4-2, 4-

3.)”).

Because the Supplemental Declaration includes new opinion on the term “internal 

diameter” that relies on 50 previously undisclosed references, this part of the opinion should be 

stricken. The issues regarding the term “internal diameter” were known when Dr. Meehan 

submitted his first declaration. The summary of NCS’s expert, John Rodgers, specifically 

described the issue. Exhibit B at 15-16. Dr. Meehan should not now be allowed to supplement 

his declaration because his original one was lacking.

2. The remainder of the Supplemental Declaration should be stricken as improper. 

During his deposition, Dr. Meehan made material statements that were inconsistent with

his First Declaration. The Supplemental Declaration, largely couched as a rebuttal to Dr. 

Rodgers’s testimony, is an attempt to address those inconsistentstatements. For example:

First Declaration Deposition Testimony Supplemental Declaration

Dr. Meehan argues that 

“internal diameter” refers 

to the measured diameter 

of the inner walls of a 

channel: 

“Thus, it is my opinion that 

a POSA would understand 

The relevant claims recite a 

“casing stream having an 

internal diameter that 

defines a fluid passageway.” 

Dr. Meehan admits that the 

“internal diameter” cannot 

itself define a fluid 

passageway:

Dr. Meehan argues that 

nothing about the claim 

language suggests internal 

diameter refers to anything 

more than the measured 

diameter of the pipe. 

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First Declaration Deposition Testimony Supplemental Declaration

‘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.”

Dkt. 42-1, ¶ 65.

Q. Do you see in there, you 

highlighted or you bolded and 

underlined: “The casing string 

having an internal diameter.” 

Do you see that?

A. Yes. 

Q. And then it goes to say:

“The casing stream having an 

internal diameter that defines a 

fluid passageway.” What does 

that mean to you? 

...

Q. An internal diameter 

which is a scaler property 

doesn't in and of itself define a 

passageway, does it?

A. The internal diameter is 

one characteristic of a fluid 

passageway. So, no, it does 

not by itself define the entire 

fluid passageway.(emphasis 

added)

Dkt. 45-2 at 37:15-21, 38:24-

39:4.

“While it may be possible that 

a POSA at some time has 

carelessly referred to a 

‘sidewall’ of a pipe as its 

inside diameter or internal 

diameter (the ‘Sidewall 

Definition’), that is not an 

accepted or well-known 

industry definition in the 

petroleum industry, or any 

other industry of which I am 

aware. 

...

In my opinion, nothing about 

the phrase ‘the casing string 

having an internal diameter 

that defines a fluid 

passageway,’ as used in the 

preamble of the independent 

claims of the ’445 Patent, 

suggests that the term 

‘internal diameter’ is being 

used under the Sidewall 

Definition of ‘internal 

diameter.’” Instead, it is wellknown that the size of a fluid 

passageway through a length 

of casing

is measured in terms of 

internal diameter, such as 

illustrated in the. When used 

in such a context, the term 

“internal diameter” 

indisputably refers to the 

diameter of the pipe or the 

Diameter Definition, and not 

to a sidewall.

Dkt. 46-1 at ¶¶ 12, 19.

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First Declaration Deposition Testimony Supplemental Declaration

Dr. Meehan argues that 

“disengagement” requires 

breaking of a fluid-tight

seal:

“The ordinary meaning of 

‘disengage’ is to release 

from attachment or 

connection. Thus, based on 

a POSA’s understanding of 

the term “sealing 

engagement,” it is my 

opinion that a POSA

would have understood this 

term to mean the release of 

the rupture disc from being 

attached or connected to 

create a fluid-tight seal.”

Dkt. 42-1 ¶ 110.

Dr. Meehan admits that 

(1) the rupture disc 

disengages when it moves; 

and (2) the disc ruptures at 

some point after 

disengagement:

Q. (By Mr. Wong) In Claim 

28 when it says disengaged 

from sealing [sic] engagement, 

is it your understanding that 

when it disengages, the – when 

the disk disengages, it fails?

A. When it disengages, it 

accelerates downwards and 

then fails. The 

disengagement itself 

instantaneously doesn't cause 

a failure, but it leads to it as 

described in the specification.

Dkt. 45-2 at 70:23-71:5 

(emphasis added). 

Dr. Meehan argues that 

(1) when the rupture disc 

moves before rupturing, it is 

not disengaged; and (2) the 

disc is not disengaged until 

it ruptures:

Merely moving the rupture 

disc before it ruptures is 

insufficient to “disengage the 

rupture disc from sealing 

engagement.” The claim is 

clear that the disc must 

disengage (“to release from 

attachment or connection,” 

see Ex. 5, at 353)from sealing 

engagement. The seal can be 

maintained even when the 

rupture disc moves. 

Dkt. 46-1 at ¶ 41 (emphasis in 

original).

See Exhibit C.3 Additionally, Dr. Meehan makes various arguments in the Supplemental 

Declaration that simply reinforce his First Declaration arguments with no other basis for 

supplementation. See, e.g., Dkt. 46-1 at ¶ 31. 

It is improper for Dr. Meehan to supplement his opinions to correct the inconsistencies in 

his deposition testimony, or to bolster his First Declaration. The Supplemental Declaration does 

not address any positions that were not already know at the time of the First Declaration. Nine 

had a summary of Dr. Rodgers’s opinions and NCS’s extrinsic evidence on October 16, 2020. 

Both parties knew the other’s claim construction positions and substance of expert opinions by 

3 Exhibit C contains the full testimony from the above table, for context. 

Case 6:20-cv-00277-ADA Document 47 Filed 12/07/20 Page 6 of 8
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that date, because that is what the rules required. Dr. Meehan should not now be allowed to 

supplement his opinions because his First Declaration was deficient or because he gave 

testimony inconsistent with that First Declaration. 

For all the foregoing reasons, Dr. Meehan’s Supplemental Declaration should be stricken

from the record. 

Dated: December 7, 2020 Respectfully submitted,

/s/ Domingo M. LLagostera

Domingo M. LLagostera

(Attorney-in-charge)

State Bar No. 24070157

Tel.: (713) 632-8682

Fax: (713) 228-6605

DLLagostera@BlankRome.com

Russell T. Wong

State Bar No. 21884235

RWong@BlankRome.com

Tel.: (713) 632-8634

Fax: (713) 228-6605

Munira Jesani (admitted pro hac vice)

State Bar No. 24101967

MJesani@BlankRome.com

717 Texas Avenue, Suite 1400

Houston, TX 77002

Tel: (713) 632.8628

Andrew K. Fletcher (admitted pro hac vice)

PA State ID. 75544

AFletcher@BlankRome.com

501 Grant Street, Suite 850

Pittsburgh, PA 15219

Tel: (412) 932.2736 

ATTORNEYS FOR PLAINTIFF NCS 

MULTISTAGE INC.

Case 6:20-cv-00277-ADA Document 47 Filed 12/07/20 Page 7 of 8
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CERTIFICATE OF CONFERENCE

The undersigned certifies that counsel for NCS and counsel for Nine held a telephonic 

meet and confer on this motion on December 3, 2020. Counsel for Nine indicated Nine opposes 

this motion. 

/s/ Munira Jesani

Munira Jesani

CERTIFICATE OF SERVICE

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

copy of the foregoing on December 7, 2020 via the Court’s ECF system. 

/s/ Domingo M. LLagostera

Domingo M. LLagostera

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