IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION

NCS MULTISTAGE INC.,

 Plaintiff,

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vs. §

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

NINE ENERGY SERVICE, INC.,

 

 Defendant.

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PLAINTIFF NCS’S OPPOSED MOTION TO STRIKE DEFENDANT NINE

ENERGY SERVICE INC.’S PRELIMINARY INVALIDITY CONTENTIONS

Plaintiff NCS Multistage Inc. (“NCS”) hereby moves to strike Defendant Nine Energy 

Inc.’s (“Nine”) Preliminary Invalidity Contentions for failing to provide NCS any notice of 

Nine’s invalidity theories.

Pursuant to the Court’s Order Governing Proceedings—Patent Cases, Nine was required

to serve Preliminary Invalidity Contentions “in the form of (1) a chart setting forth where in the 

prior art references each element of the asserted claim(s) are found...” Dkt. 20. The purpose of 

infringement and invalidity contentions are to provide notice of a party’s theories, requiring

“parties to crystallize their theories of the case early in the litigation so as to prevent the ‘shifting 

sands’ approach to claim construction.” Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., No. 

2:14-cv-911, 2016 U.S. Dist. LEXIS 191646, at *9 (E.D. Tex. March 21, 2016) (quoting 

Keranos, LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015); Pisony v. 

Commando Constrs., Inc., No. 6:17-cv-55, 2020 U.S. Dist. LEXIS 153007, at *4-5 (W.D. Tex. 

Aug. 24, 2020). 

On September 11, 2020, Nine served its Preliminary Invalidity Contentions in the form of

the chart attached hereto as Exhibit A, where it identified over 50 references and numerous 

Case 6:20-cv-00277-ADA Document 31 Filed 09/16/20 Page 1 of 3
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citations for each reference. There is not a single explanation in the contentions of which 

references are anticipating or obvious, and Nine did not identify a single combination of 

references. Instead, each claim limitation has dozens of prior art citations with thousands of 

possible combinations. NCS has no notice of Nine’s invalidity theories as this case moves into 

the claim construction schedule on September 25, 2020.

1

In a meet and confer, Nine’s counsel stated that Nine has complied with the Court’s 

Order and that this Court did not adopt the EDTX or SDTX local patent rules that require more 

detailed contentions. While Nine may be hiding behind the literal words of this Court’s order—

“a chart setting forth where in the prior art references each element of the asserted claim(s) are 

found”—NCS does not believe a chart with thousands of possible prior art combinations and no 

other information is what the Court intended in its Order, and it is certainly not within the spirit 

of the notice function of invalidity contentions. Nine’s counsel knows full well what invalidity 

contentions should include and their purpose, and that is obvious by its reference to the EDTX 

and SDTX local patent rules. It appears that Nine’s claim chart is no more than a prior art dump, 

designed to ratchet up NCS’s costs. Pers. Audio, LLC v. Togi Entm't, Inc., 2:13-cv-13, 2014 

U.S. Dist. LEXIS 194378, at *6-7 (E.D. Tex. Aug. 5, 2014) (striking invalidity contentions 

where defendant dumped numerous references in its invalidity contentions and only identified a 

few exemplary combinations from a universe of thousands of possible combinations). 

For the foregoing reasons, NCS respectfully asks the Court to strike Nine’s Preliminary 

Invalidity Contentions and order Nine to re-serve preliminary invalidity contentions.

1 The parties are to exchange terms for construction on September 25, 2020. Dkt. 25 at 2. 

Opening claim construction briefs are due on October 30, 2020. Id.

Case 6:20-cv-00277-ADA Document 31 Filed 09/16/20 Page 2 of 3
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Dated: September 16, 2020 Respectfully submitted,

BLANK ROME LLP

/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

Tel.: (713) 632-8682

Fax: (713) 228-6605

717 Texas Avenue, Suite 1400

Houston, TX 77002

Andrew K. Fletcher (admitted pro hac vice)

PA State ID. 75544

AFletcher@blankrome.com

Tel.: (412) 932-2736

501 Grant Street, Suite 850

Pittsburgh, PA 15219

ATTORNEYS FOR PLAINTIFF NCS 

MULTISTAGE INC.

CERTIFICATE OF SERVICE

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

copy of the foregoing on September 16, 2020 via the Court’s CM/ECF system. 

/s/ Domingo M. LLagostera

Doming M. LLagostera

Case 6:20-cv-00277-ADA Document 31 Filed 09/16/20 Page 3 of 3