IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

NCS MULTISTAGE INC.,

 Plaintiff,

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§

§

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

vs. §

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NINE ENERGY SERVICE, INC.,

 

 Defendant.

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NCS MULTISTAGE INC.’S REPLY IN SUPPORT OF OPPOSED MOTION TO 

STRIKE SUPPLEMENTAL DECLARATION OF DR. NATHAN MEEHAN (DKT. 46-1)

Case 6:20-cv-00277-ADA Document 53 Filed 12/21/20 Page 1 of 7
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A. Nine had specific notice of Dr. Rodgers’s opinions on “internal diameter”. 

Nine does not deny that this Court unambiguously ordered each party to disclose and 

produce the extrinsic evidence it would rely on for claim construction, including a summary of 

expert witness opinions, by October 16. Dkt. 25, p. 2. Nine does not deny that it submitted a 

supplemental declaration citing to 50 new references on November 20. Nine does not deny that 

it did not produce the 50 new references until November 30. Nine’s defense for why it’s expert 

should nevertheless be permitted to disclose and opine on 50 new references is that NCS 

purportedly presented “new arguments and opinions of which Nine had no prior notice.” Dkt. 

51, p. 5. This is smoke to cover Nine’s attempt to clean up Dr. Meehan’s deposition admissions 

through a second and untimely declaration. As explained below, Nine never made any new 

arguments: 

1. NCS has consistently argued “internal diameter” has two industry meanings. 

Nine says NCS changed its position in its summary disclosure that “internal diameter” 

has two industry meanings by arguing on page 4 of its Opening Brief that “internal diameter” has 

“only one industry-specific meaning.” Dkt. 51, p. 2 (emphasis in original). Actually, it was just 

the opposite. Page 4 of NCS’s Opening Brief, which Nine cites, states: “The term ‘internal 

diameter,’ when used in the petroleum drilling industry to describe piping, like casing string, can 

have two meanings...” Dkt. 41, pp. 4-5 (emphasis added). That “internal diameter” has two 

industry meanings has been NCS’s position in every Markman brief. Dkt. 41, pp. 4-5; Dkt. 45, 

pp. 1-2; Dkt. 48, pp. 1-3. Turning to NCS’s summary of extrinsic evidence, it says Dr. Rodgers 

will opine that “internal diameter” has two industry meanings. The below chart shows the 

opinion he provided in his declaration supporting NCS’s Opening Brief said just that:

Case 6:20-cv-00277-ADA Document 53 Filed 12/21/20 Page 2 of 7
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NCS’s Summary Disclosure Dr. Rodgers’ Declaration

“Dr. Rodgers will also opine...that a POSITA 

would be familiar with two common 

definitions widely used in the oil industry: 1) 

the measure of the diameter of the circular 

cross section of the inside of a tubular or pipe, 

or 2) the interior surface of a tubular. The first 

definition is used in the context of a 

quantifiable size or dimension. The second 

definition is used with reference to the 

internal surface such as in describing features, 

contacts, or sealing engagement.” Dkt. 51-3, 

p. 8.

“The term ‘internal diameter’ or ID is 

commonly used in the oilfield industry. Its 

meaning can vary based on the context in 

which it is used. One meaning [of internal 

diameter] is the interior cylindrical surface of 

the casing.” Dkt. 41-1, ¶ 41. 

“ID or internal diameter can also refer to a 

length measurement of the diameter of a 

circular cross-section cut perpendicular to the 

axis of the inside of a component of the 

casing....One of skill in the art can readily 

determine how ‘ID’ or ‘internal diameter’ is 

being used based in the context of the usage.” 

Id., ¶ 43. 

Consistent with Dr. Rodgers’ opinion, NCS has never argued “internal diameter” has one 

industry meaning. 

2. Nine knew what Dr. Rodgers would say about the references he disclosed on “internal

diameter.”

Nine argues that NCS’s disclosure of extrinsic evidence did not tell Nine what Dr. 

Rodgers would say about the references he cited or how they supported NCS’s positions on 

“internal diameter.” Dkt. 51, p. 2. NCS’s disclosure fully complied with the Court’s OGP. The 

Court’s OGP did not require NCS summarize references in the extrinsic evidence disclosure. It 

required NCS identify and produce each of its supporting extrinsic references, which NCS did 

and which Nine does not dispute. In its disclosure, NCS listed several references supporting Dr. 

Rodgers’s opinion that “internal diameter” has two industry meanings. Dkt. 51-3, pp. 15-16. 

These references say what they say. If Nine read them, it would know they use “internal 

diameter” to refer to the Sidewall Definition, consistent with NCS’s summary of Dr. Rodgers’s 

opinions. There is no question that on October 16 Nine was on notice of Dr. Rodgers’s opinion 

that “internal diameter” has two meanings in the oil and gas industry, and that he had references 

Case 6:20-cv-00277-ADA Document 53 Filed 12/21/20 Page 3 of 7
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that supported that position. 

3. Nine cannot plausibly argue it lacked notice about NCS’s reliance on the claim 

language for claim construction. 

Nine argues that it had no notice that NCS would argue the claim term “internal diameter 

that defines a fluid passageway” is relevant to the construction of “internal diameter.” Dkt. 51, 

p. 2. Nine’s position borders on frivolous. Does Nine actually have to be told NCS would rely 

on the claim language for claim construction? NCS was not obligated to summarize its 

arguments based on the intrinsic record. It was obligated to disclose extrinsic evidence and 

summarize its expert’s opinions, which NCS did. This term is in all claims. Of course NCS 

would be relying on it for claim construction, because the claim language itself is the most 

relevant evidence of claim meaning. Nine knew about this claim language. There is no question 

that Dr. Meehan testified this language does not refer to a measured diameter, which contradicts 

Nine’s claim construction position, and Nine is now trying to clean that up with an improper 

supplemental declaration. 

4. Nine’s attack of Dr. Rodgers’ opinion on “sealing engagement” is not relevant to 

whether Dr. Meehan’s opinions were untimely.

Nine says that NCS’s summary of Dr. Rodgers’ opinion on “sealing engagement” is 

inconsistent with his later-served declaration. It is not inconsistent. In any case, this is a red 

herring as NCS’s motion to strike does not relate to Dr. Meehan’s opinion on the scope of the 

term “sealing engagement.”

B. Nine asks the Court to ignore Federal Circuit precedent and local patent rule language 

that is nearly identical to this Court’s OGP. 

Nine admits that “the procedure of this case is governed by the Court’s Order Governing 

Proceedings,” (Dkt. 51, p. 5 (emphasis in original)) yet still asks this Court to ignore case law 

interpreting local patent rules that are nearly identical to this Court’s OGP: 

Case 6:20-cv-00277-ADA Document 53 Filed 12/21/20 Page 4 of 7
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SDTX Rule EDTX Rule OGP

At the same time the parties 

exchange their respective 

“Preliminary Claim 

Constructions,” they must

also exchange a preliminary

identification of extrinsic

evidence they contend

supports their respective

claim constructions, such as 

dictionary definitions,

citations to learned treatises 

and prior art, and testimony 

of fact and expert witnesses. 

The parties must identify 

each item of extrinsic 

evidence by production 

number or produce a copy 

of any such item not 

previously produced. With 

respect to each fact or expert 

witness a party intends to 

rely on for claim 

construction, the party must 

also provide a brief 

description of the substance 

of that witness’s proposed 

testimony.

Dkt. 47-1, pp. 10-11.

At the same time the parties 

exchange their respective 

"Preliminary Claim 

Constructions," they shall each 

also provide a preliminary 

identification of extrinsic 

evidence, including without 

limitation, dictionary 

definitions, citations to learned 

treatises and prior art, and 

testimony of percipient and 

expert witnesses they contend 

support their respective claim 

constructions or indefiniteness 

positions. The parties shall 

identify each such item of 

extrinsic evidence by 

production number or produce 

a copy of any such item not 

previously produced. With 

respect to any such witness, 

percipient or expert, the parties 

shall also provide the identity 

and a brief description of the 

substance of that witness’ 

proposed testimony.

See Exhibit A. 

The parties shall disclose any 

extrinsic evidence, including 

the identity of

any expert witness they may 

rely upon with respect to 

claim construction or 

indefiniteness. With respect to 

any expert identified, the 

parties shall also provide a 

summary of the witness’s 

expected testimony including 

the opinions to be expressed 

and a general description of 

the basis and reasons 

therefore. A failure to 

summarize the potential 

expert testimony in a good 

faith, informative fashion may 

result in the exclusion of the 

proffered testimony. With 

respect to items of extrinsic 

evidence, the parties shall 

identify each such item by 

production number or produce 

a copy of any such item if not 

previously produced.

Dkt. 20, p. 7; Dkt. 25, p. 2. 

Nine’s only explanation is that “this case is not in any of those jurisdictions, and as the Court 

well knows, it has not adopted local patent rules at all.” Nine knows that district court opinions 

on identical issues are helpful to the Court. That this Court does not have a formal document 

titled “Local Patent Rules,” but rather issued an “Order Governing Proceedings,” is a distinction 

without merit where the substance of the three courts’ rules are identical.

Using the same logic, Nine also wants this Court to ignore Federal Circuit precedent 

which holds that the purpose of patent rules, like this Court’s OGP, is to “require the parties to 

crystallize their theories of the case early in the litigation so as to prevent a shifting sands 

Case 6:20-cv-00277-ADA Document 53 Filed 12/21/20 Page 5 of 7
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approach to claim construction.” Dkt. 51, p. 4; O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 

467 F.3d 1355, 1364 (Fed. Cir. 2006) (quoting Atmel Corp. v. Info. Storage Devices, Inc., No. C 

95-1987 FMS, 1998 U.S. Dist. LEXIS 17564, at *7 (N.D. Cal. 1988). Shifting sands is exactly 

what is happening here—Nine’s expert made admissions during his deposition that contradict 

Nine’s indefiniteness arguments, and Nine is trying to cure those through Dr. Meehan’s untimely 

rebuttal declaration and submissions of dozens of new references. 

C. Nine’s citations to WDTX cases are inapposite. 

Nine cites to four WDTX cases for the proposition that “[p]arties in this Court have 

repeatedly presented supplemental expert testimony and extrinsic evidence for consideration by 

the Court without issue.” Dkt. 51, p. 4. That the parties in those cases filed supplemental 

declarations is not relevant to whether Nine’s supplemental declaration is improper for failing to 

timely disclose extrinsic evidence, including 50 new references. 

D. NCS has suffered prejudice as a result of Nine’s untimely disclosure.

Nine’s supplemental declaration cited 50 new references, and Nine did not serve them 

until November 30. Nine argues that NCS should have conducted a second deposition of Dr. 

Meehan on his supplemental declaration and these several new references. Dkt. 51, pp. 6-7. 

NCS should not have to bear the burden and cost of examining dozens of late references and a 

second deposition because Nine failed to timely disclose its extrinsic evidence. A second 

deposition would undoubtedly be an effort by Nine to further walk-back the admissions Dr. 

Meehan made in his first deposition that contradict Nine’s claim construction positions. 

Nine also argues that NCS should have presented its own supplemental report. However, 

whether NCS should or should not have supplemented its expert report is not relevant to whether 

Nine violated the rules by failing to timely disclose extrinsic evidence.

Case 6:20-cv-00277-ADA Document 53 Filed 12/21/20 Page 6 of 7
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CERTIFICATE OF SERVICE

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

copy of the foregoing on December 21, 2020 via the Court’s ECF system. 

/s/ Munira Jesani

Munira Jesani

Dated: December 21, 2020 Respectfully submitted,

/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 

State Bar No. 24101967

MJesani@BlankRome.com

717 Texas Avenue, Suite 1400

Houston, TX 77002

Tel.: (713) 632-8628

Fax: (713) 228-6605

Andrew K. Fletcher (admitted pro hac vice)

PA State ID. 75544

AFletcher@BlankRome.com

501 Grant Street, Suite 850

Pittsburgh, PA 15219

Tel: (412) 932.2736 

ATTORNEYS FOR PLAINTIFF NCS 

MULTISTAGE INC.

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