IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NCS MULTISTAGE INC.,

Plaintiff, 

v. 

NINE ENERGY SERVICE, INC.,

Defendant. 

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

JURY TRIAL DEMANDED 

DEFENDANT NINE ENERGY SERVICE, INC.’S OPPOSITION TO PLAINTIFF NCS’S 

MOTION TO STRIKE NINE’S PRELIMINARY INVALIDITY CONTENTIONS 

Nine Energy Service, Inc. (“Nine”) respectfully submits this Opposition to the Motion to 

Strike Nine’s Preliminary Invalidity Contentions (the “Motion”) (Dkt. 31) filed by Plaintiff NCS 

Multistage, Inc. (“NCS”) and requests that the Court deny the Motion. NCS has admitted that 

Nine’s Invalidity Contentions, including Nine’s Prior Art Chart (Dkt. 31, Ex. A), are fully 

compliant with the Court’s Order Governing Proceedings (“OGP”) (Dkt. 20). Nonetheless, NCS 

demands an additional “explanation in the contentions of which references are anticipating or 

obvious.” Motion, at 2. NCS attempts to argue that this alleged requirement comes from the 

“purpose” of the rules of other courts. Id. at 1. These arguments should be rejected. As 

demonstrated below, each of NCS’s additional arguments—that Nine has somehow deprived NCS 

of its ability to prepare for the Markman process and that the Prior Art Chart is in some way too 

long—are equally meritless. NCS’s dispute on the form of the invalidity contentions is 

fundamentally not with Nine but with this Court’s rules. For these reasons, and the reasons that 

follow, NCS’s Motion should be denied. 

First, NCS does not dispute that Nine’s Prior Art Chart satisfies the “literal words of this 

Court’s order,” (Motion at 2), and is thus fully compliant with the OGP. This concession alone is 

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sufficient reason to deny NCS’s Motion. NCS admitted as much during the required meet-andconfer. In the same call, Nine specifically asked NCS for a citation of any authority to support 

NCS’s threatened motion to strike. NCS provided none. NCS instead offered to provide Nine any 

authority it could find to support its position prior to filing any motion to strike. NCS again 

provided none, but instead, filed the present Motion. 

Second, NCS’s request to rewrite this Court’s rules should be rejected. Indeed, the Court 

carefully crafted the OGP with the input of the Court’s procedures committee, resulting in “a 

default that was the most fair and neutral to every kind of lawyer that is handling a patent case.” 

Ex. A, Richard Lloyd, Judge Albright explains why he has made WDTX a beacon for Patent Cases, 

IAM (Apr. 6, 2020), https://www.iam-media.com/litigation/judge-albright-his-path-becomingone-of-americas-busiest-patent-judges-and-his-top. The Court’s procedures were intended to 

ensure that counsel would “pretty much know within certain parameters exactly how the case 

would go.” Id. This predictability would be dramatically undercut if the procedures were 

nevertheless read, as NCS’s Motion suggests, to impose additional unstated requirements that flow 

from the claimed purposes of other Courts’ rules. The OGP states with surgical accuracy what is 

required of a defendant: 

Defendant shall 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, (2) an identification of any limitations the Defendant contends are 

indefinite or lack written description under section 112, and (3) an identification of 

any claims the Defendant contends are directed to ineligible subject matter under 

section 101. 

Dkt. 20, at 2 (emphasis added). Nowhere is there any requirement to provide an “explanation in 

the contentions of which references are anticipating or obvious,” (Motion, at 2), as NCS claims is 

required. 

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It is further apparent from the EDTX’s Local Patent Rules (“LPR”) that the OGP has 

specifically omitted any such requirement. See Ex. B, at 50 et seq. The language of the Court’s 

OGP borrows heavily from EDTX LPR 3-3(c) and (d), which requires “a chart identifying where 

specifically in each alleged item of prior art each element of each asserted claim is found . . .” and 

“[a]ny grounds of invalidity based on indefiniteness . . . or enablement or written description . . . 

of any of the asserted claims.” Id. at 57. However, the OGP contains nothing that resembles 

EDTX LPR 3-3 (b), which requires defendants to state “[w]hether each item of prior art anticipates 

each asserted claim or renders it obvious.” Id. In short, the Court’s intentional omission of any 

requirement parallel to EDTX LPR 3-3(b) is abundantly clear. 

Third, NCS’s suggestion that Nine provide an “explanation in the contentions of which 

references are anticipating or obvious” in addition to Nine’s Prior Art Chart is based solely on the 

claimed “purpose” of contention procedures of other courts not applicable here. Both Core 

Wireless and Personal Audio addressed disputes under EDTX LPR 3-3(b), which this Court has 

specifically not adopted (as discussed above). Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 

No. 2:14-cv-00911, 2016 WL 3655302, at *1 (E.D. Tex. Mar. 21, 2016); Pers. Audio, LLC v. Togi 

Entm’t, Inc., 2:13-cv-00013, 2014 WL 12617798, at *1 (E.D. Tex. Aug. 6, 2014). The sole WDTX 

case cited by NCS refers to a Scheduling Order issued by Judge Pitman which expressly required 

the parties to “identify[] all asserted bases for invalidity.” Ex. C, at 2; see Pisony v. Commando 

Constrs., Inc., No. 6:17-cv-00055, 2020 WL 4934463, at *2 (W.D. Tex. Aug. 24, 2020). This 

Court likewise has no requirement parallel to Judge Pitman’s scheduling order. For these reasons, 

the Court should disregard the cases cited by NCS. 

Fourth, NCS’s suggestion that Nine’s Prior Art Chart in some way impedes the upcoming 

Markman process should be rejected. Nine’s Prior Art Chart provides sufficient notice of Nine’s 

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Nine’s Opposition to NCS’s Motion to Strike Nine’s Invalidity Contentions 

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invalidity contentions for the purposes of the Markman process without imposing unnecessary 

burden on either party. Nine’s Prior Art Chart provides a detailed concordance of where Nine 

contends that the limitations of the asserted claims are disclosed in the prior art. To the extent that 

NCS believes that any claim term requires construction, Nine’s contentions provide ample notice 

to NCS of where Nine believes that term is taught in the art. To the extent that NCS wants Nine 

to identify specific grounds of invalidity in view of the prior art, NCS is free to serve interrogatories 

to Nine following the Markman hearing. Further, NCS has the benefit of previewing some of 

Nine’s detailed invalidity arguments in Nine’s Petition for IPR. Nine Energy Serv., Inc. v. NCS 

Multistage Inc., IPR2020-01615, Paper 1 (PTAB Sept. 11, 2020). 

Fifth, NCS cannot reasonably object to the length of Nine’s prior art chart, as they appear 

to do. See Motion at 2. The asserted claims include limitations that relate to oil and gas plugs, 

sealing mechanisms, applications of plugs for specific well construction tasks, and the fluids used 

in such tasks. Given the wide scope of analogous art, and the variety of different fields of 

analogous art, Nine draws references from each of these categories, among others. Nonetheless, 

the sole feature that NCS argued was absent from the prior art is the indefinite limitation that “the 

region of the tubular member where the rupture disc is attached . . . is parallel to the internal 

diameter of the casing string.” See Ex. D, at 11-12 (emphasis in original) (arguing this limitation 

distinguishes NCS’s claim from the prior art in the last response prior to a Notice of Allowance, 

dated Sept. 24, 2019). Because this limitation is indefinite, Nine further needed to include 

numerous references to cover all potential meanings of this indefinite limitation. 

Sixth, NCS’s Motion should be denied because NCS has failed to ask for any meaningful 

relief. Instead, the Proposed Order provided by NCS merely requests that Nine re-serve its 

admittedly compliant Invalidity Contentions a week following the Court’s order. That Proposed 

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Order provides for no additional disclosures by Nine. Given NCS’s admissions, Nine can comply 

with such an order merely by re-serving the same Invalidity Contentions it previously served on 

September 11. Such an exercise serves no purpose, and thus NCS’s motion should be denied. 

* * * 

For all these reasons, NCS’s Motion is baseless and should be denied. At root, NCS’s 

dispute is not with Nine or its Prior Art Chart, but with the Court’s OGP. NCS’s demands here 

are an attempted end-run around the OGP to apply instead EDTX’s LPRs. But NCS chose this 

Court, and is therefore bound by its procedures. To the extent that NCS wishes to be governed by 

another Court’s rules, NCS is free to withdraw its opposition to Nine’s Motion to Transfer Venue 

(Dkt. 24), and agree to a transfer to Houston. The SDTX has adopted LPRs that substantially 

mirror the EDTX’s LPRs. See Ex. E, 6-7 (SDTX Local Rule 3-3). But so long as this case remains 

in the WDTX, NCS cannot insist upon applying additional and unstated requirements on Nine. 

Plaintiff NCS chose this Court. It should therefore be bound by this Court’s procedures. NCS has 

admitted that Nine’s Invalidity Contentions are compliant with those procedures, providing ample 

reason to deny NCS’s Motion. For that reason, and the reasons stated above, NCS’s motion to 

strike Nine’s invalidity contentions should be denied. 

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Nine’s Opposition to NCS’s Motion to Strike Nine’s Invalidity Contentions 

NCS Multistage, Inc. v. Nine Energy Service, Inc. No. 6:20-cv-00277-ADA 6 

Dated: September 23, 2020 Respectfully submitted, 

VINSON & ELKINS LLP 

By: /s/ Hilary L. Preston

Hilary L. Preston 

Texas Bar No. 24062946 

hpreston@velaw.com 

VINSON & ELKINS L.L.P. 

2801 Via Fortuna, Suite 100 

Austin, TX 78746 

Telephone: +1.512.542.8400 

Fax: +1.512.542.8612 

Parker D. Hancock 

Texas Bar No. 24108256 

phancock@velaw.com 

Sean P. Belding 

Texas Bar No. 24109634 

sbelding@velaw.com 

VINSON & ELKINS L.L.P. 

1001 Fannin Street, Suite 2500 

Houston, TX 77002-6760 

Telephone: +1.713.758.2222 

Fax: +1.713.758.2346 

Attorneys for Defendant / Counter-Claim 

Plaintiff Nine Energy Service, Inc. 

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Nine’s Opposition to NCS’s Motion to Strike Nine’s Invalidity Contentions 

NCS Multistage, Inc. v. Nine Energy Service, Inc. No. 6:20-cv-00277-ADA 7 

CERTIFICATE OF SERVICE 

I hereby certify that on the 23rd day of September, 2020, a true and correct copy of the 

foregoing document was served on all counsel of record via the Court’s CM/ECF system per Local 

Rule CV-5(b)(1). 

/s/ Hilary L. Preston 

Hilary L. Preston 

US 7389291

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