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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

CAMERON INTERNATIONAL 

CORPORATION,

 Plaintiff,

v. 

NITRO FLUIDS L.L.C.,

 Defendant.

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CAUSE NO. 6:20-cv-00125-ADA

JURY TRIAL DEMANDED

ORDER TO TRANSFER CASE

Before the Court is Defendant Nitro’s motion to dismiss under Fed. R. Civ. P. 12(b)(3) and 

motion to transfer under 28 U.S.C. § 1404(a). ECF Nos. 16–17. After careful consideration of the 

parties’ briefing, governing law, and recent changes of circumstances, the Court is of the opinion 

that this case should be TRANSFERRED to the Southern District of Texas (“SDTX”).

Plaintiff Cameron first sued Nitro in July 2018 in the SDTX, Houston Division, Civil 

Action No. 4:18-cv-2533 (“Houston Case”), alleging infringement of U.S. Patent Nos. 9,068,450; 

9,518,430; 9,903,190; and 9,932,800. ECF No. 16, Ex. 13. An additional patent, U.S. Patent No.

10,094,195, was subsequently added to the House case in March 2019. 

On February 17, 2020 Cameron filed this lawsuit against Nitro alleging infringement of 

U.S. Patent Nos. 9,915,132 (“the ’132 Patent”) and 10,385,645 (“the ’645 Patent”), which are 

allegedly related to the patents asserted in the Houston Case. ECF No. 1. On April 24, 2020, Nitro 

filed a motion to dismiss under Fed. R. Civ. P. 12(b)(3) requesting this case be dismissed for 

improper venue under the first-to-file rule. ECF No. 16. On the same day, Nitro filed a motion to 

alternatively transfer this case under 28 U.S.C. § 1404(a) to the SDTX because the Houston Case

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is pending in that district. ECF No. 17.1

On June 16, 2020, this Court issued an order denying both of Nitro’s motions, finding 

that although there was a likelihood of substantial overlap between this case and the Houston 

Case under the first-to-file rule analysis, there were sufficiently compelling circumstances to

avoid the rule’s application. ECF No. 33. In October, 2020, ruling on a writ of mandamus 

petition, the Federal Circuit vacated this Court’s June 16, 2020 order and directed this Court to 

conduct further analysis on its rulings on Nitro’s motions.

Here, the Court finds that due to certain significant recent developments in the Houston 

Case, there is no longer sufficiently compelling circumstances to avoid the application of firstto-file rule. After this Court’s June 16, 2020 order, the SDTX court on October 9, 2020 granted

leave for Nitro to file its second amended answer and counterclaim seeking invalidity and noninfringement of the ’132 and ’645 Patents. Thus, the only two patents asserted in this case are 

now also directly implicated in the Houston Case. Therefore, consistent with this Court’s prior 

rulings (e.g., in DynaEnergetics Eur. GMBH v. Hunting Titan, Inc., No. 6:20-CV-00069-ADA, 

2020 WL 3259807(W.D. Tex. June 16, 2020)), and to avoid the likelihood of inconsistent and 

conflicting rulings and for the sake of judicial economy, this Court is of the opinions that this 

case should be transferred to SDTX so that it can be decided together with the Houston Case. 

1 Nitro does not reference the first-to-file rule within its motion to transfer. However, under Fifth Circuit precedent, a 

district court should consider transfer when analyzing a motion to dismiss under the first-to-file rule even when a 

motion to transfer is not present. Cadle Co. v. Whataburger of Alice, Inc., 174 F.3d 599, 606 (5th Cir. 1999). Fifth 

Circuit precedent also dictates that dismissing the case would be an abuse of discretion. See id. Therefore, the Court 

denies the motion to dismiss and will proceed with the first-to-file rule analysis with respect to Nitro’s motion to 

transfer. 

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It is therefore ORDERED that the Clerk of the Court TRANSFER this case to the 

Southern District of Texas.

SIGNED this 24th day of March, 2021.

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

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