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, 

 Defendant. 

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

JURY TRIAL DEMANDED 

 

PLAINTIFF’S RESPONSE TO DEFENDANTS’ RENEWED MOTION TO STAY 

LITIGATION 

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TABLE OF CONTENTS 

INTRODUCTION .......................................................................................................................... 1 

I. The Traditional Factors Favor Denying The Stay .................................................. 1 

A. A stay will unduly prejudice and tactically disadvantage Kerr .................. 2 

B. The case is no longer in its early stages ...................................................... 3 

C. A stay only simplifies the issues if Vulcan prevails ................................... 4 

II. Only One Of The Court’s Previously Identified Reasons Has Changed ................ 6 

CONCLUSION ............................................................................................................................... 7 

 

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TABLE OF AUTHORITIES 

Page(s) 

Cases 

Aylus Networks, Inc. v. Apple, Inc., 

No. C-13-4700 EMC, 2014 WL 5809053 (N.D. Cal. Nov. 6, 2014).........................................1 

Freescale Semiconductor, Inc. v. Amtran Tech. Co., Ltd., 

A-12-CV-644-LY, 2014 WL 12570609 (W.D. Tex. Feb. 10, 2014) .........................................4 

Jumpsport, Inc. v. Acad., Ltd., 

6:17-CV-00414-RWS, 2018 WL 10124887 (E.D. Tex. July 13, 2018) ....................................4 

Soverain Software LLC v. Amazon.com, Inc., 

356 F. Supp. 2d 660 (E.D. Tex. 2005) .......................................................................................2 

Viskase Corp. v. Am. Nat. Can Co., 

261 F.3d 1316 (Fed. Cir. 2001)..................................................................................................1 

Wyeth v. Abbott Labs., 

CIV.A. 09-4850 JAP, 2011 WL 380902 (D.N.J. Feb. 1, 2011) .................................................4 

Statutes 

35 U.S.C. § 326(a)(11) .....................................................................................................................2 

Other Authorities 

U.S. Const. Amend VII ................................................................................................................6, 7 

Fed. R. Civ. P. 30(b)(6).....................................................................................................................2 

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INTRODUCTION 

On July 31, 2020, Defendants Vulcan Industrial Holdings, LLC, Vulcan Energy Services, 

LLC, and Cizion, LLC d/b/a Vulcan Industrial Manufacturing (collectively referred to as 

“Vulcan”), filed a Motion to Stay Litigation. The Court promptly denied the Motion on August 2, 

2020, listing five reasons for its decision. On December 16, 2020, Vulcan filed the present 

Renewed Motion to Stay. 

Very little has changed regarding Kerr’s need to vindicate its rights and its entitlement to 

a jury trial. Vulcan points to the PTAB’s recent institution decision as dispositive, but the “court 

is not required to stay judicial resolution in view of the reexaminations.” See Viskase Corp. v. Am. 

Nat. Can Co., 261 F.3d 1316, 1328 (Fed. Cir. 2001). Moreover, by its express terms, the PGR 

decision makes clear Vulcan is unlikely to prevail on all claims, thus the PGR proceedings will 

not moot the need for a trial in this case. Additionally, four of the five reasons the Court relied 

upon in denying Vulcan’s last stay motion have not changed. Those reasons continue to outweigh 

any benefits of staying this case in favor of the PGR and depriving Kerr of its day in court. The 

Court should deny the Renewed Motion to Stay. 

I. The Traditional Factors Favor Denying The Stay 

Vulcan asserts the PTAB’s decision to institute a post-grant review requires this case to be 

stayed. But the “[C]ourt is under no obligation to delay its own proceedings where parallel 

litigation is pending before the PTAB.” Aylus Networks, Inc. v. Apple, Inc., No. C-13-4700 EMC, 

2014 WL 5809053, at *1 (N.D. Cal. Nov. 6, 2014) (citation omitted). The Court has done an 

excellent job of moving this case to trial and the traditional stay factors confirm the case should 

remain on that path. 

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The courts of the Fifth Circuit generally consider several factors in deciding whether to 

grant a stay: “(1) whether a stay will unduly prejudice or present a clear tactical disadvantage to 

the nonmoving party, (2) whether a stay will simplify the issues in question and trial of the case, 

and (3) whether discovery is complete and whether a trial date has been set.” Soverain Software 

LLC v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D. Tex. 2005). Just as they did the last time 

Vulcan asked this Court for a stay, the traditional stay factors support denying Vulcan’s motion. 

A. A stay will unduly prejudice and tactically disadvantage Kerr 

Staying the case would be highly prejudicial for Kerr and would present a clear tactical 

disadvantage for Kerr. 

This is a suit between competitors and Kerr seeks an injunction. Vulcan claims through a 

self-serving affidavit that Vulcan has only sold five infringing products and has already 

discontinued it and is no longer for sale. Lawrie Declaration at 2. But there is good reason to doubt 

the veracity of the declaration. First, during a deposition of Vulcan under FRCP 30(b)(6), 

And in response 

to Vulcan’s jurisdictional Interrogatory No. 1, Vulcan indicated it had an additional four fullyassembled accused fluid ends sitting in a Midland, Texas warehouse ready for sale. Exh. 2. On 

December 11, Kerr served discovery on the precise number of unassembled accused products that 

Vulcan currently has in its possession and expects to find significantly more than four total fluid 

ends. Without a permanent injunction, Vulcan will be free to bring its remaining stock back to 

market whenever it chooses. 

Moreover, the deadline for the PTAB to present its final decision is December 3, 2021.1

Vulcan is asking the Court to stay the case for 11.5 months, until that decision is reached. During 

1

 The PGR was instituted on December 3, 2020. The deadline for the final written decision is one year later, 

December 3, 2021. 35 U.S.C. § 326(a)(11). Vulcan suggests that the oral argument date of September 1, 2021 opens 

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the period when the case would be stayed, Vulcan would be under no obligation to further litigation 

by producing documents, providing witnesses, providing expert reports, or any other commonly 

used tactics of litigation. Staying the case simply because a PGR petition has been instituted would 

stop discovery and purposelessly delay the Court’s resolution for no benefit to anyone other than 

Vulcan and its desire to slow the resolution of this case to Kerr’s detriment. Any delay in this case 

only exacerbates the harm Kerr has suffered and prolongs the uncertainty in Kerr’s competitive 

relationship with Vulcan. 

In contrast to the obvious prejudice to Kerr, Vulcan only presents the Court with illusory 

time and expense savings. Such savings can only be realized if Vulcan prevails on every one of the 

24 claims at issue in the PGR proceedings. Should Kerr prevail on at least one claim, Vulcan’s 

stay will have unnecessarily delayed trial and prejudiced Kerr.

Another factor that Vulcan ignores is that ongoing discovery is a mechanism that can move 

the parties closer to a settlement, should the parties so desire. Settlement would provide a way for 

both parties to save time and expenses by ending the litigation and determining any future licensing 

activities that could occur between the parties. Delaying the litigation by nearly a year does not 

serve to encourage a settlement and allows Vulcan to boost its own reputation through its continued 

use of Kerr’s patented technology. Indeed, before Vulcan’s motion, the parties were actively 

engaged in settlement discussions. 

B. The case is no longer in its early stages 

Vulcan asserts that the case is still “in its early stages.” Motion at 5. Simple math shows 

that is not the case. The case was filed on March 19, 2020, which is 279 days before today’s date. 

a window for an earlier ruling, but provides no such support for an assertion. That assertion ignores the fact that the 

oral argument date actually lengthens the time for which a decision will be made. The September 1, 2021 date provides 

a later date at which arguments will be presented than would otherwise be present. Without an oral argument, it is 

likely that a decision would be promulgated sooner. 

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The jury trial is scheduled to begin on September 27, 2021, which is 278 days after today’s date. 

Thus, the timeline of the case is over halfway complete. The claim construction portion of the case 

is complete. Kerr has already served extensive written discovery and Vulcan’s responses are due 

in a few weeks. Overall, fact discovery will be complete in only four months. 

Courts regularly measure the early stages of a case by whether the parties have started 

discovery and whether the court has issued a claim construction order. Cf. Freescale 

Semiconductor, Inc. v. Amtran Tech. Co., Ltd., A-12-CV-644-LY, 2014 WL 12570609, at *3 

(W.D. Tex. Feb. 10, 2014) (“This case is in its early stages; a claim-construction order has not be 

rendered, discovery has not begun, and a scheduling order has not been rendered.”); Jumpsport, 

Inc. v. Acad., Ltd., 6:17-CV-00414-RWS, 2018 WL 10124887, at *2 (E.D. Tex. July 13, 2018) 

(denying a stay because it “would delay this case and Plaintiff's enforcement of its rights” after the 

case was “already proceeding well into discovery and claim construction briefing had been filed”); 

See also Wyeth v. Abbott Labs., CIV.A. 09-4850 JAP, 2011 WL 380902 at *4 (D.N.J. Feb. 1, 2011) 

(holding case not in early stages because “discovery is underway and claim construction 

proceedings will take place in the coming months”). This case is well beyond the early stages. 

C. A stay only simplifies the issues if Vulcan prevails 

Vulcan asserts that the case will be simplified because all of the claims are undergoing 

administrative review. Vulcan fails to acknowledge that, should Kerr prevail on even a single 

claim, the present district court case will still proceed. In such a case, the delay only serves to 

unfairly prejudice Kerr by delaying resolution of the case by a year. 

In addition, Vulcan exaggerates the PTAB’s statements in the institution of the PGR and 

overlooks the fact that the PTAB indicated it is unlikely to dispose of all claims. The PTAB only 

stated that Vulcan is “likely to prevail” on a minority of the asserted grounds. Motion Exhibit 1 

(concluding, out of 9 grounds of invalidity, 4 grounds were deficient and 2 grounds were unclear). 

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Importantly, even assuming Vulcan ultimately prevails on the three grounds preliminarily 

identified by the PTAB, claims 5, 15, 16, 18, and 19 would remain undisturbed. Thus even on 

Vulcan’s best day in front of the PTAB, Vulcan will not moot the need for a trial in this case. 

Furthermore, Kerr did not make detailed arguments with respect to many of the claims, as 

Kerr primarily addressed only the independent claims in its Preliminary Response. Once Kerr fully 

responds on all the claims, Kerr expects to prevail on most, if not all of those grounds as well. 

Vulcan also fails to point out that the PTAB’s analysis hinges on what Kerr contends is an 

obvious error, one that this Court’s claim construction order avoided. The PTAB jettisoned both 

parties’ proposed constructions for the term tubular sleeve in favor of its own construction. Both 

parties, and this Court, recognized that a tubular sleeve must be at least substantially cylindrical. 

The ‘070 itself distinguishes between cylindrical and conical sleeves. See Exh. 3 [’070 Patent] at 

4:35-40 (describing inserts 106a' and 106b' as “segments of an open hollow cylinder instead of the 

inserts 106a, 106b in FIG. 1 that are segments of an open hollow cone. In other words, the conical 

surfaces in FIG. 1 are replaced here with cylindrical surfaces.”). Even the Blume reference relied 

upon by the panel in its prior art analysis distinguishes between cylindrical and conical sleeves and 

expressly opts for conical sleeves. See U.S. Patent 7,186,097 (“other embodiments of tapered 

cartridge packing and gland nut assemblies of the present invention also provide for easy removal 

of a plunger as above. For example, tapered cartridge packing and gland nut assembly 60′ (shown 

in partial cross-section in FIG. 12B) is similar to assembly 60 but differs in that the substantially 

coaxial right cylindrical outer surface 80 has been replaced by a proximal extension of conically 

tapered substantially coaxial outer surface 63, the extended conically tapered surface being labeled 

63′”). However, the panel came up with its own contradictory construction for “tubular sleeve” in 

the ’070 that totally erases the cylindrical nature of the invention. See Motion Exhibit 1 at 42 

Case 6:20-cv-00200-ADA Document 58 Filed 12/23/20 Page 8 of 11
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(defining tubular sleeve to mean “open or hollow enclosure”). Kerr intends to challenge what it 

believes is a flawed construction in the PGR proceedings. 

Thus Vulcan is incorrect to claim that the PGR proceedings likely moots the need for a 

trial in this case. Indeed, this Court will need to address claims 5, 15, 16, 18, and 19, which were 

not implicated by any of the grounds on which the PTAB preliminarily determined Vulcan is likely 

to succeed. Motion Exhibit 1. 

II. Only One Of The Court’s Previously Identified Reasons Has Changed 

Vulcan fails to distinguish this Court’s reasoning for denying Vulcan’s last stay motion, 

which the Federal Circuit affirmed: 

 (1) The PTAB has not instituted the PGR. 

(2) Even if the PGR institutes, the Court anticipates that the trial date will occur before the 

PGR’s final written decision. 

(3) Allowing this case to proceed to completion will provide a more complete resolution 

of the issues including infringement, all potential grounds of invalidity, and damages. 

(4) The Court believes in the Seventh Amendment. 

(5) Plaintiff opposes the stay. 

The only factor that has changed since the Court’s August 2 ruling is the first factor. The 

remaining factors still support denying Vulcan’s motion. 

Regarding the second factor, Vulcan states that there is no guarantee that the trial date will 

occur before the PGR’s final written decision. The statutory deadline for the PGR’s final written 

decision is December 3, 2021, 67 days after the scheduled start of the jury trial in the present case. 

The present case could be delayed as long as two months and still reach a final judgment before 

the PTAB releases its final written decision. And even that timeline assumes no changes to the 

PGR schedule, which seems unlikely. 

The Court was obviously well aware of the stage of the litigation and whether a trial date 

has been set when it stated, “[e]ven if the PTAB institutes, the Court anticipates that the trial date 

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will occur before the PGR’s final written decision.” August 2 Order. In terms of timing, nothing 

has materially changed since the Court made that observation in August. Vulcan attempts to cast 

this aside by calling it “speculative” and conjuring the specter of Covid-19, which was also in full 

force at the time of the Court’s August 2 Order. Moreover, the Court is in the best position to 

determine what constitutes a realistic trial date, which it set after the pandemic began. 

Regarding the third factor, it is clear that a jury trial provides a more complete resolution 

of the case. A PGR cannot determine issues such as infringement, other grounds of invalidity not 

before the PTAB, damages, and other issues present in the case, such as counterclaims.2

 In contrast, 

the PGR can simplify issues only if Vulcan prevails on the merits on all of the pending claims. As 

pointed out above, the PTAB has already stated that Vulcan is unlikely to prevail on numerous 

grounds it asserted. See, e.g., Motion Exhibit 1 at 61 (“We have considered Patent Owner’s 

argument and determine that it is sufficient at this stage of the proceeding to demonstrate a 

deficiency in Petitioner’s position. On the current record and based on our preliminary construction 

of the term “therethrough,” we determine that Petitioner has not established that Blume ’012’s 

second conduit extends from one side or surface of the housing to the opposing side or surface of 

the housing.”).

Regarding the fourth reason, staying the case during the PGR would be an affront to Kerr’s 

Seventh Amendment right to a jury trial. U.S. Const. Amend VII. 

Regarding the fifth reason, Plaintiff remains opposed to the stay. 

CONCLUSION 

This Court should deny Vulcan’s Motion to Stay Litigation. 

2

 Vulcan asserted eight counter claims in its answer. ECF 25. At least six of the claims are unrelated to the validity 

of the ’070 patent. 

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Dated: December 23, 2020 By: /s/ Brian D. Melton 

Brian D. Melton (Texas 24010620) 

Rocco Magni (Texas 24092745) 

Daniel A. Wilson (Texas 24070859) 

Thomas V. DelRosario (Texas 24110645) 

(pro hac vice) 

SUSMAN GODFREY LLP 

1000 Louisiana Street, Suite 5100 

Houston, Texas 77002 

Tel: (713) 651-9366 

Fax: (713) 654-6666 

bmelton@susmangodfrey.com 

dwilson@susmangodfrey.com 

rmagni@susmangodfrey.com 

tdelrosario@susmangodfrey.com 

COUNSEL FOR KERR MACHINE CO. 

CERTIFICATE OF SERVICE 

I certify that all counsel of record deemed to have consented to electronic service are being 

served with a copy of this document via the Court’s CM/ECF system. 

/s/ Brian D. Melton 

Brian D. Melton 

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