IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

NCS MULTISTAGE INC.,

 Plaintiff,

§

§

§

§

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

vs. §

§

NINE ENERGY SERVICE, INC.,

 

 Defendant.

§

§

§

NCS MULTISTAGE INC.’S OPPOSED MOTION TO STRIKE NINE

ENERGY SERVICE INC.’S NOTICE OF SUPPLEMENTAL AUTHORITY (DKT. 32)

Plaintiff NCS Multistage Inc. (“NCS”) moves to strike Defendant Nine Energy Service, 

Inc.’s (“Nine”) Notice of Supplemental Authority in Support of Nine’s Motion to Transfer 

Venue (“Notice”) (Dkt. 32), because it is not a notice, it is an improperly filed supplemental

brief to its Motion to Transfer Venue. 

 On July 31, 2020, Nine file its Motion to Transfer Venue (Dkt. 24), asking this Court 

to transfer the case to the SDTX. NCS filed an opposition to that motion (Dkt. 28), and the 

briefing period closed when Nine filed its reply on September 4, 2020 (Dkt. 30). On September 

18, Nine filed its Notice. In the Notice, Nine cites a recent non-precedential Federal Circuit 

decision In re HP, and offers three pages of legal arguments as to why that case purportedly tips 

the convenience factors in its favor. See generally Dkt. 32. Facially, Nine’s Notice is not a 

notice. Rather, Nine’s so-called Notice is supplemental briefing filed after the close of briefing 

and without leave of Court, and it curtails NCS’s right to fairly defend against Nine’s effort to 

Case 6:20-cv-00277-ADA Document 33 Filed 09/22/20 Page 1 of 5
2

transfer this case. As such, the Court should strike the Notice from the record. 1 

If Nine wants to supplement its briefing, it mustseek leave of Court to do so. And NCS 

will oppose that request for at least two reasons. 

First, In re HP does not create new binding authority. It is a non-precedential opinion 

that cites old Fifth Circuit and Federal Circuit law to determine whether the district court abused 

its discretion in denying a transfer motion. See generally Dkt. 32. Nine waived the arguments in 

its Notice because it could have cited this old law and made the arguments during the briefing 

period. That the Federal Circuit issued a recent opinion citing old transfer law does not give 

Nine a hook to open back up the briefing schedule. 

Second, Nine mischaracterizes In re HP. Nine’s primary argument in the Notice is that 

In re HP holds that the Court cannot consider the convenience of foreign witnesses in a transfer 

decision. (Id. at 1-2). That is not what that case says, makes no sense, and would be an 

extraordinary overhaul of forum non-conveniens law. In In re HP, the Federal Circuit quoted the 

district court’s statement that “[t]he comparison between the transferor and transferee forums is 

not altered by the presence of other witnesses and documents in places outside both forums,” and 

found the district court erred by not considering that several witnesses lived in the transferee 

forum while none lived in the transferor forum. In re HP Inc., No. 2020-140, slip op. at 5 (Fed. 

Cir. Sept. 15, 2020). That quote does not say or even suggest the Court cannot consider the 

convenience of foreign witnesses. The Federal Circuit merely found that the district court erred 

in tilting the balance against transfer based on the foreign witnesses when so many relevant 

witnesses lived in California (the transferee forum) and none lived in Texas (transferor forum). 

1 Counsel for NCS informed Nine’s counsel it would move to strike the Notice for making 

improper and untimely legal arguments unless Nine withdrew it. Nine did not agree and opposes 

this motion to strike.

Case 6:20-cv-00277-ADA Document 33 Filed 09/22/20 Page 2 of 5
3

Id. 

The Fifth Circuit, and the Federal Circuit applying Fifth Circuit law, certainly weigh the 

convenience of foreign witnesses in the transfer analysis, especially when key witnesses are 

scattered globally. See In re D-Link Corp., 183 Fed. Appx. 967, 968-69 (Fed. Cir. 2006) 

(affirming EDTX finding that Texas was more convenient than New York for witnesses residing 

in California, Taiwan, and Israel); In re Telular, 319 F. App.’x 909, 910-12 (Fed. Cir. 2009) 

(affirming EDTX finding that Texas was more convenient that Illinois because witnesses and 

documents were located in Atlanta). Similarly, in this case, the Court should consider the 

convenience of the four inventors that live in Canada, who are key witnesses and have filed 

declarations supporting NCS’s position that the WDTX is the more convenient forum. (Dkts. 

28-6, 28-7, 28-8, and 28-9).

Nine’s secondary arguments also rely on old law and are all mischaracterizations of In re 

HP. Nine says this Court should not consider witnesses under factor 1 because In re HP

purportedly holds that witnesses are not a “source or proof”. (Dkt. 32 at 1-2). In re HP does not 

say that. In that case the Federal Circuit did not consider witnesses under factor 1 because the 

district court did not consider them. In re HP, slip op. at 6. This Court routinely considers the 

convenience of witnesses under factor 1. See, e.g. Uniloc 2017 LLC v. Apple Inc., 6-19-cv-532-

ADA, 2020 U.S. Dist. LEXIS 109037, at *32 (W.D. Tex. June 19, 2020); Cameron Int’l Corp. v. 

Nitro Fluids, L.L.C., 2020 U.S. Dist. LEXIS 05240, at *17 (W.D. Tex. June 16, 2020); Fintiv, 

Inc. v. Apple Inc., 6:18-cv-372-ADA, 2019 U.S. Dist. LEXIS 171102, at *9-10 (W.D. Tex. Sept. 

1, 2019); SynKloud Techs., LLC v. Dropbox, Inc., 6:19-cv-525-ADA, 2020 U.S. Dist. LEXIS 

84958, at *9-10 (W.D. Tex. May 14, 2020). Nine also says that In re HP holds transfer is 

favored when only the transferee forum can compel third party witnesses. (Dkt. 32 at 2). Again, 

Case 6:20-cv-00277-ADA Document 33 Filed 09/22/20 Page 3 of 5
4

In re HP does not hold this. The Federal Circuit found the district court erred because it “should 

have weighed” that third party witnesses were in the 100-mile radius of the transferee forum. In 

re HP, slip op. at 7. Nine says it has customers in Houston. But Houston is just the location of 

these customers’ corporate offices. Nine’s Houston customers have employees in the WDTX

who are in the field conducting the infringing methods and are potential key third party witnesses 

located closer to Waco. (Dkt. 28 at 4). Finally, Nine says In re HP holds that this Court cannot 

consider the pending related litigations, because they were not filed at the time this suit was filed 

against Nine. (Dkt. 32 at 3). Yet again, that is not what In re HP holds. The Federal Circuit 

found that the EDTX’s expertise on the technology over gained time did not tip the convenience 

factors because transfer motions are decided based on the situation existing at the time the suit is

filed. In re HP, slip op. at 7. NCS is not arguing this Court has gained more knowledge than 

SDTX. NCS argues that pending related lawsuits on the same patent in this Court warrants 

keeping all of the cases together in Waco. (Dkt. 32 at 11-12). 

For all the foregoing reasons, Nine’s Notice should be stricken from the record. 

Case 6:20-cv-00277-ADA Document 33 Filed 09/22/20 Page 4 of 5
5

CERTIFICATE OF SERVICE

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

copy of the foregoing on September 22, 2020 via the Court’s ECF system. 

/s/ Domingo M. LLagostera

Doming M. LLagostera

Dated: September 22, 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 (admitted pro hac vice)

State Bar No. 24101967

MJesani@BlankRome.com

717 Texas Avenue, Suite 1400

Houston, TX 77002

Tel: (713) 632.8628

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.

Case 6:20-cv-00277-ADA Document 33 Filed 09/22/20 Page 5 of 5