WBD (US) 49726808v1

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

KERR MACHINE CO.,

Plaintiff,

v.

VULCAN INDUSTRIAL HOLDINGS, 

LLC, VULCAN ENERGY SERVICES, 

LLC, and CIZION, LLC d/b/a VULCAN 

INDUSTRIAL MANUFACTURING,

LLC

Defendants.

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CIVIL ACTION NO. 6:20-CV-200-ADA

JURY TRIAL DEMANDED

DEFENDANTS’ OPPOSED MOTION TO STAY LITIGATION

PENDING THE OUTCOME OF THE PENDING

POST-GRANT REVIEW PROCEEDING

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Case 6:20-cv-00200-ADA Document 28 Filed 07/31/20 Page 1 of 14
-iTABLE OF CONTENTS

A STAY IS UNIQUELY APPROPRIATE IN THIS CASE...........................................................3

I. Certification Pursuant To W.D. Tex. Local R. CV-7(i).......................................................3

II. All Of The ’070 Patent’s Claims Are Likely To Be Cancelled By The PTAB ...................3

III. Congress Specifically Created PGRs To Permit Early Patent Challenges

Before Protracted Litigation Ensues....................................................................................6

IV. All Of The Traditional Factors Strongly Favor A Stay Here...............................................8

A. A stay will not unduly prejudice or tactically disadvantage Kerr............................8

1. Vulcan filed its PGR petition almost immediately after 

Kerr filed this lawsuit...................................................................................8

2. Vulcan filed this motion soon after Vulcan filed its PGR petition..............9

3. Staying this case now will avoid duplicating the most burdensome 

stages of the litigation..................................................................................9

4. Kerr has many competitors in the fluid end industry...................................9

B. This case is still in its very early stages.................................................................10

C. A stay will greatly simplify the issues in this lawsuit............................................10

Case 6:20-cv-00200-ADA Document 28 Filed 07/31/20 Page 2 of 14
-iiTABLE OF AUTHORITIES

Cases

RetailMeNot Inc. v. Honey Sci. LLC, C.A. No. 18-937-CFC-MPT,

2020 WL 373341 (D. Del. Jan. 23, 2020)................................................................................. 8, 10

SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) ........................................................................... 10

SZ DJI Tech. Co. v. Yuneec Int'l Co., No. CV 16-0595-BRO (KKX),

2016 WL 9114148 (C.D. Cal. Dec. 1, 2016)................................................................................ 10

Tinnus Enters. LLC v. Telebrands Corp., No. 6:15-cv-551-RC-JDL, 

2017 WL 379471 (E.D. Tex. Jan. 24, 2017)............................................................................. 8, 10

Statutes

35 U.S.C. § 311(b).......................................................................................................................... 7

35 U.S.C. § 314............................................................................................................................... 7

35 U.S.C. § 315(b).......................................................................................................................... 7

35 U.S.C. § 315(e)(1)...................................................................................................................... 7

35 U.S.C. § 324(a) .......................................................................................................................... 7

35 U.S.C. § 324(c) .......................................................................................................................... 9

35 U.S.C. § 325(e)(2)...................................................................................................................... 7

35 U.S.C. § 326(a)(11).................................................................................................................... 9

Other Authorities

157 Cong. Rec. S1323-S1326..................................................................................................... 6, 8

Rules

W.D. Tex. Local R. CV-7(i)........................................................................................................... 3

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The unique circumstances here are likely a case of first impression for the Court.

First, the sole asserted ’070 patent issued on March 17, 2020, and Kerr filed this lawsuit 

two (2) days later. Defendants quickly determined that most of the claims of the ’070 patent are 

unambiguously anticipated by each of three separate prior art references that had not been 

considered by the USPTO, and all of the patent’s claims are very likely to be cancelled in their 

entirety by the PTAB. For example, Claim 1 of the ’070 patent reads identically on Blume ’097:

Asserted ’070 Patent Prior Art – Blume ’097 Patent

1. A method of manufacturing the fluid end assembly, comprising:

providing a housing having a first conduit extending therethrough, and a second conduit extending 

therethrough that intersects the first conduit;

forming an endless groove in the housing such that the groove surrounds the second conduit;

positioning a seal within the groove;

installing a tubular sleeve within the second conduit such that at least a portion of the sleeve engages 

with the seal;

installing a plurality of packing seals within the sleeve; and

installing a reciprocating plunger at least partially within the sleeve and the plurality of packing seals.

Case 6:20-cv-00200-ADA Document 28 Filed 07/31/20 Page 4 of 14
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Ex. 1 (PGR Petition) at 10, 39-41, & 52-59. 

Second, the pending PTAB proceeding is a relatively uncommon Post-Grant Review 

(“PGR”), which is uniquely different from the far more routine Inter Partes Review (IPR)

proceedings. Because PGRs are only permitted shortly after a patent issues, Congress intended 

for these just-issued patents to be reevaluated by the PTAB before “expensive litigation.”: 

Ex. 2 (157 Cong. Rec. S1309, S1323-S1326) at S1309 & S1326 (emphases added). In addition, 

the estoppel effects for PGRs are significantly broader than they are for IPRs. Thus, the policy in 

favor of staying parallel litigation is considerably stronger for PGRs than for IPRs. 

Third, all of the relevant factors support a stay in this case. The only accused product in 

the case – the ICON EVO product – is no longer being manufactured or sold. Kerr will not be 

Case 6:20-cv-00200-ADA Document 28 Filed 07/31/20 Page 5 of 14
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prejudiced or suffer any tactical disadvantage if this case is stayed in view of the PGR proceeding. 

This litigation is still at a very early stage: the parties have not completed any discovery or claim 

construction, and the Court has not yet expended significant resources becoming familiar with the 

asserted patent at issue. Further, the Western District of Texas is not a proper venue for two of the 

Vulcan Defendants – Holdings and Manufacturing – each of which has filed a motion to dismiss. 

And a stay will greatly simplify the issues and avoid duplication of effort here because the PGR

challenges all of the asserted ’070 patent’s claims.

A STAY IS UNIQUELY APPROPRIATE IN THIS CASE

I. Certification Pursuant To W.D. Tex. Local R. CV-7(i)

Counsel for the parties have conferred in a good-faith attempt to resolve this matter by 

agreement. Counsel for the parties were unable to resolve this matter because Kerr does not agree 

with Vulcan’s proposed stay of this case.

II. All Of The ’070 Patent’s Claims Are Likely To Be Cancelled By The PTAB

On May 26, 2020, about two (2) months after Kerr filed this lawsuit, Vulcan Manufacturing

filed a highly detailed PGR Petition with the PTAB, seeking cancellation of the entirety of Kerr’s 

’070 patent at issue in this lawsuit. Ex. 1. The PGR petition brings to the PTAB’s attention three 

entirely different sets of highly material prior art, none of which was considered by the patent 

examiner during prosecution of the ’070 patent. Each set of previously unreviewed prior art

references discloses all of the claims of the ’070 patent – and Kerr concealed at least one highly 

material reference in its possession from the patent examiner during the ’070 patent’s prosecution.

1

The USPTO’s statistics reveal that the PTAB institutes review of the majority of the 

1 Vulcan’s separate lawsuit against Kerr in the Southern District of Texas arises in part from Kerr’s 

inequitable conduct in prosecuting the ’070 patent.

Case 6:20-cv-00200-ADA Document 28 Filed 07/31/20 Page 6 of 14
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petitions that it receives (about 60% of the 2,223 IPR and PGR petitions filed between January 1, 

2019 and June 30, 2020). While that statistic, standing alone, may not routinely justify a preinstitution stay, here the merits of the PGR petition are incredibly strong. As illustrated on page 1 

above, the prior art Blume ’097 patent readily anticipates most of the claims of the ’070 patent, 

including both of the patent’s independent claims(Claims 1 and 6) and 13 of the patent’s dependent 

claims. See Ex. 1 at 7 & 52-68. The few remaining dependent claims are merely minor design 

choices and would have been readily obvious to a person of ordinary skill in the art (“POSITA”). 

See id. at 68-99.

Moreover, two additional prior art references each, standing alone, readily anticipate most 

of the ’070 patent’s claims:

Asserted ’070 Patent Prior Art – Whaley

endless groove/seal

tubular sleeve

plurality of packing seals

reciprocating plunger

endless groove/seal

tubular sleeve

plurality of packing seals

reciprocating plunger

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Asserted ’070 Patent Prior Art – Blume ’012 Patent

endless groove/seal

tubular sleeve

plurality of packing seals

reciprocating plunger

endless groove/seal

tubular sleeve

plurality of packing seals

reciprocating plunger

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Ex. 1 at 100-118 & 148-165. And as with the Blume ’097 reference, the few remaining dependent 

claims are merely minor design choices that would have been readily obvious to a POSITA. Id.

at 118-148 & 165-183.

As illustrated above, all three sets of prior art references disclose that (i) the endless grooves 

and seals can be located within the housing, and (ii) the reciprocating plunger and plurality of 

packing seals can be disposed within a tubular sleeve, the only two bases relied upon by the 

USPTO to allow the ’070 patent to issue. See id. at 17. This is not a run-of-the-mill patent 

infringement case in which the merits of the defendant’s patent validity challenge are nuanced and 

obscure, and in which the Court needs to consider complicated and conflicting expert testimony 

about what would have been obvious to a POSITA at the time of the claimed invention. Given the 

strength of Vulcan Manufacturing’s validity challenge, it is very likely that the PTAB will institute 

the PGR proceeding, and thereafter cancel all of the ’070 patent’s claims in their entirety. This 

fact alone strongly favors a stay of this litigation while the PTAB conducts the PGR proceeding.

III. Congress Specifically Created PGRs To Permit Early Patent Challenges Before

Protracted Litigation Ensues

Congress intended for newly-issued patents to be promptly reevaluated by the PTAB to

“allow invalid patents that were mistakenly issued by the PTO to be fixed early in their life, before 

they disrupt an entire industry or result in expensive litigation.” Ex. 2 at S1326 (emphases added); 

see Ex. 3 (153 Cong. Rec. E773-E774) at E774 (“In an effort to address the questionable quality 

of patents issued by the USPTO, the bill establishes a check on the quality of a patent immediately 

after it is granted . . . . The post-grant procedure is designed to allow parties to challenge a granted 

patent through a[n] expeditious and less costly alternative to litigation.”) (emphases added). 

Unlike an IPR, a PGR petition can only be filed within the first nine (9) months after a patent 

issues. Here, the USPTO issued Kerr’s ’070 patent on March 17, 2020; Kerr filed this lawsuit two 

Case 6:20-cv-00200-ADA Document 28 Filed 07/31/20 Page 9 of 14
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days later on March 19, 2020; and Vulcan Manufacturing filed its PGR petition on May 26, 2020, 

about two months thereafter and before any pleading (other than the Complaint) had been filed in 

this lawsuit. The fundamental policy undergirding Congress’ creation of the PGR process strongly 

supports staying this case. Indeed, the entire purpose of the PGR procedure would be wholly 

frustrated if this lawsuit were not stayed.

Congress built in two measures to protect patent holders from potential abuse of the PGR

process. First, the statute imposes a higher barrier to entry: the PTAB may only institute postgrant review when the petitioner “demonstrate[s] that it is more likely than not that at least 1 of 

the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (emphasis added). 

Second, after the PTAB institutes review and issues its final written decision, a petitioner is 

estopped from asserting in a civil action any ground “that the petitioner raised or reasonably could 

have raised during that post-grant review.” 35 U.S.C. § 325(e)(2). These potential consequences 

deter prospective petitioners from filing weak or marginal petitions for post-grant review.

By contrast, an IPR petition may be filed at any time – or within one year of being served 

with a complaint for patent infringement – but only on the grounds that the patent is not novel or 

is obvious in view of prior art. 35 U.S.C. §§ 311(b), 315(b). The threshold for instituting inter 

partes review is also lower: the petitioner must demonstrate only that “there is a reasonable 

likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in 

the petition.” 35 U.S.C. § 314 (emphasis added). If the PTAB reviews and cancels the claims in 

the IPR petition, the petitioners also are subject to narrower estoppel from asserting in a civil action 

any ground “that the petitioner raised or reasonably could have raised during that inter partes 

review.” 35 U.S.C. § 315(e)(1). 

These significant differences reflect Congress’ intent to give the PTAB wide latitude to 

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cancel invalid patents that are challenged within 9 months of issuance through the post-grant 

review process. By limiting PGR proceedings to a 9-month window, Congress balanced the policy 

aims of ensuring that the USPTO issues only valid patents with the need to assure patent holders 

they will soon have some repose for their patents. The short time frame available to file PGR 

petitions evidences Congress’ desire that post-grant review should occur before patent disputes 

“result in expensive litigation.” 157 Cong. Rec. S1326.

IV. All Of The Traditional Factors Strongly Favor A Stay Here

In evaluating whether to stay litigation in view of a pending PTAB petition, district courts

typically consider “(1) whether the stay will unduly prejudice the nonmoving party or present a 

clear tactical disadvantage to the nonmoving party, (2) whether the proceedings before the court 

have reached an advanced stage, including whether discovery is complete and a trial date has been 

set, and (3) whether the stay will simplify issues in question in the litigation.” Tinnus Enters. LLC 

v. Telebrands Corp., No. 6:15-cv-551-RC-JDL, 2017 WL 379471, at *2 (E.D. Tex. Jan. 24, 2017)

(internal citations omitted). All three factors weigh heavily in favor of staying this case.

A. A stay will not unduly prejudice or tactically disadvantage Kerr

Courts examine four sub-factors in analyzing whether a plaintiff would suffer undue 

prejudice if its case were stayed pending a petition before the PTAB: “(1) the timing of the request 

for review; (2) the timing of the request for a stay; (3) the status of the review proceedings; and 

(4) the relationship of the parties.” RetailMeNot Inc. v. Honey Sci. LLC, C.A. No. 18-937-CFCMPT, 2020 WL 373341, at *3 (D. Del. Jan. 23, 2020). All four sub-factors show that Kerr would 

not suffer any undue prejudice or tactical disadvantage.

1. Vulcan filed its PGR petition almost immediately after Kerr filed this 

lawsuit

The USPTO issued the ’070 patent on March 17, 2020; Kerr filed this lawsuit on March 

Case 6:20-cv-00200-ADA Document 28 Filed 07/31/20 Page 11 of 14
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19, 2020, served Vulcan Holdings on April 7, 2020, and Vulcan Manufacturing filed its PGR 

petition on May 26, 2020, less than two months later. Vulcan Manufacturing’s alacrity in filing 

its PGR petition demonstrates that it was not dilatory in pursuing PTAB review of the ’070 patent.

2. This motion for stay is promptly filed.

Defendants filed this motion less than two months after Vulcan Manufacturing filed its 

PGR petition and while this case is still in its preliminary stages. The timing of Defendants’ 

request for a stay also demonstrates that they do not have any dilatory or other improper motive.

3. Staying this case now will avoid duplicating the most burdensome 

stages of the litigation

On June 11, 2020, the Board accorded Vulcan’s PGR petition a May 26, 2020 filing date. 

Thus, Kerr may file its preliminary response by September 11, 2020, and the PTAB will issue its 

institution decision by December 11, 2020. 35 U.S.C. § 324(c). Upon institution, the PTAB would 

then issue its final written decision by December 11, 2021. 35 U.S.C. § 326(a)(11). 

Proceeding with this litigation will result in significant duplication of effort and expense 

of resources. Under the current joint scheduling order, Defendants will serve their invalidity 

contentions on August 13, 2020, with the parties beginning to exchange terms and claims for 

construction on August 27, 2020 – just two weeks before Kerr’s preliminary response to the PGR 

petition is due. The Markman hearing is currently scheduled for December 3, 2020. However, 

the PTAB will decide whether to institute review very shortly after the Markman hearing, by which 

time the Court and the parties will have spent significant resources and time. Rather than proceed 

with the PGR and this case in parallel tracks with similar deadlines, staying this case now will 

promote judicial economy and simplify claim construction. 

4. Kerr has many competitors in the fluid end industry

Vulcan Manufacturing no longer makes or sells the accused ICON EVO product. 

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Therefore, Kerr will not suffer any alleged erosion of market share or further purported damages 

during the pendency of the PGR proceeding. Any purported harm Kerr may have suffered has 

already occurred and can be remedied through money damages, if any.

B. This case is still in its very early stages

This case is in its infancy – there has been no expert or fact discovery, including 

depositions, and the parties have not exchanged terms for construction or submitted their claim 

construction briefs. As discussed above, granting a stay at this preliminary juncture will conserve 

the resources of the Court and the parties by avoiding the most burdensome stages of the litigation. 

See SZ DJI Tech. Co. v. Yuneec Int’l Co., No. CV 16-0595-BRO (KKX), 2016 WL 9114148, at *2 

(C.D. Cal. Dec. 1, 2016). 

C. A stay will greatly simplify the issues in this lawsuit

Post-grant review can simplify or even dispose of this case completely because “[w]hen a 

claim is cancelled [by the PTAB], the patentee loses any cause of action based on that claim, and 

any pending litigation in which the claims are asserted becomes moot.” Tinnus Enters., 2017 WL 

379471, at *2. The prospect for simplification is enhanced where, as here, the PGR petition is 

compelling and “all of the litigated claims are undergoing administrative review” since this case 

will be entirely moot if the PTAB cancels the ‘070 patent as requested. Id. (emphasis in original).

Once the PTAB institutes review, it must “address every claim the petitioner has 

challenged.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354–55 (2018). This means that “any 

conclusion that the PTAB reaches will have a likely effect on litigation by limiting the arguments 

[petitioner] can make regarding validity” due to the broad estoppel provisions applicable to

unsuccessful petitions for post-grant review. RetailMeNot, Inc., 2020 WL 373341, at *5. PTAB 

review of the ’070 would massively simplify this case because, in all likelihood, all of the patent 

claims will likely be cancelled, and therefore this case will be entirely mooted.

Case 6:20-cv-00200-ADA Document 28 Filed 07/31/20 Page 13 of 14
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Respectfully Submitted,

REYNOLDS FRIZZELL LLP

By: /s/ Jean Frizzell

Jean C. Frizzell

State Bar No. 07484650

Federal ID: 14529

Jeremy L. Doyle

State Bar No. 24012553

Federal ID: 24559

Adi Sirkes

State Bar No. 24117059

Federal ID: 3513896

1100 Louisiana Street, Suite 3500

Houston, TX 77002

Phone: (713) 485-7200

Fax: (713) 485-7250

jfrizzell@reynoldsfrizzell.com

doyle@reynoldsfrizzell.com

asirkes@reynoldsfrizzell.com

ATTORNEYS FOR DEFENDANTS

VULCAN INDUSTRIAL HOLDINGS, LLC, 

VULCAN ENERGY SERVICES, LLC, AND 

CIZION, LLC d/b/a VULCAN INDUSTRIAL 

MANUFACTURING, LLC

CERTIFICATE OF SERVICE

I hereby certify that on July 31, 2020, a true and correct copy of the foregoing document 

was served electronically on all known counsel of record via CM/ECF.

/s/ Jean Frizzell

Jean Frizzell

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