DynaEnergetics GmbH & Co. KG et al v. Hunting Titan, Ltd. et al

Filing 105

MEMORANDUM OPINION AND ORDER - For the reasons stated in § II, Plaintiff's 57 Opposed Motion for Reconsideration of Order Consolidating 4:20-2123 and 4:17-3784 is GRANTED, and that portion of Order, Docket Entry No. 55, that consolidated Civil Action No. H-20-2123 with Civil Action No. H-17-3784 is VACATED. Civil Action No. 20-2123 and Civil Action No. H-17-3784 will now proceed under their individual case numbers. This court will retain jurisdiction over both cases. For the reasons stated in § III, Plaintiffs' 67 SEALED MOTION for Preliminary Injunction is DENIED. Plaintiffs' counsel will submit by July 22, 2021, a proposed patent case scheduling order with dates that are based on the date of this Me morandum Opinion and Order. The proposed scheduling order should include a date requiring mediation within thirty (30) days of the court's Markman ruling. For the reasons stated in § IV, Defendant's 81 SEALED EMERGENCY MOTION FOR CONTEMPT AND TO ENFORCE STAY is DENIED. ( Notice of Compliance due by 7/22/2021 - Proposed Scheduling Order due) *** 97 MOTION for Leave to File Sur-reply is moot pursuant to the ruling on Deft's 81 Sealed Emergency Motion for Contempt and to Enforce Stay ***(Signed by Judge Sim Lake) Parties notified.(sanderson, 4)

United States District Court
Southern District of Texas

ENTERED
July 16, 2021

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
DYNAENERGETICS EUROPE GMBH,
and DYNAENERGETI CS US, . INC. ,

Plaintiffs,

§
§
§
§
§

§

V.

HUNTING TITAN, INC., and
HUNTING ENERGY SERVICES, INC.,
Defendants/Counterclaim
Plaintiffs

§
§
§
§
§
§

Nathan Ochsner, Clerk

CIVIL ACTION NO. H-17-3784

MEMORANDUM OPINION AND ORDER

A number of motions are pending before the court, including:
Plaint

f's Motion for Reconsideration of Order Consolidating Civil

Action No. H-20-2123 and Civil Action No. H-17-3784 ("Plaintiffs'
Motion for Reconsideration11 )

(Docket Entry No. 56) ; Plaintiffs'

Motion for Preliminary Injunction and Incorporated Memorandum in
Support ( \\ Plaintiffs' Motion for Preliminary Injunction") (Docket
Entry No. 67), and Defendant's Emergency Motion for Contempt and to
Enforce Stay ("Motion to Enforce Stay") (Docket Entry No. 81). For
the reasons explained below, Plaintiffs' Motion for Reconsideration
will be granted, Plaintiffs' Motion for Preliminary Injunction will
be denied, and Defendants' Emergency Motion for Contempt and to
Enforce Stay will be denied.

1

I. Factual and Procedural Background

Plaintiffs, DynaEnergetics Europe GmbH, and DynaEnergetics US,
Inc.

(collectively,

Defendants, Hunting
(collectively,

"Plaintiffs"

or

"DynaEnergetics"),

and

tan, Inc., and Hunting Energy Services, Inc.

"Defendants"

or

"Hunting"),

compete

the

manufacture and sale of perforating systems used in the oil and gas
industry.

Plaintiffs

lege that Defendants' H-1™ Perforating

System infringes patents related to the

DynaStage System.

On December 14, 2017, Plaintiffs filed this action ("the 2017
Case 11 ) against Defendants alleging that "the H-1™ Perforating Gun
System infringes one or more claims of [U.S. Patent No. 9,581,422
("'422 Patent")] including at least Claims 1 and 5."1

Shortly

thereafter Defendants filed a petition with the Patent Trials and
Appeals Board ("PTAB") seeking Inter Partes Review ("IPR 11 ) of the
'422 Patent. 2

On August 27, 2018, the court stayed this action

"pending the final outcome of IPR 2018-00600 regarding validity of
[the '422 Patent] before the United States Patent and Trademark
Office ('USPTO')."3
Complaint and Demand for Jury Trial, Docket Entry No. 1, p. 4
See also U.S. Patent No. 9,581,422, Exhibit A, Docket Entry
No. 1-1, and Claim Chart, Exhibit B, Docket Entry No. 1 2. Page
numbers for docket entries refer to the pagination inserted at the
top of the page by the court's electronic filing system.
1

114.

Petition for Inter Partes Review of U.S. Patent
No. 9,581,422, Exhibit A to Defendants' Motion to Stay Pending
Inter Partes Review, Docket Entry No. 15 1.
Order of Stay Pending Inter Partes Review, Docket Entry
No. 33.
3

2

On May 2, 2019, Plaintiffs filed a second action, Civil Action
No. 4:19-cv-1611 ("the 2019 Case"), claiming that Defendants' "H-2
Perforating System ™ infringes one or more claims of the '422
Patent, including at least Claims 1 and 5." 4
Defendants

filed

Defendants'

Unopposed

On June 14, 2019,

Motion

to

Consolidate, and Stay Pending Inter Partes Review. 5

Transfer,
On July 2,

2019, this court granted Defendants' motion, ordered the 2019 Case
consolidated with the 2017 Case, and stated that "the status of
this case remains STAYED pending the final outcome of IPR 201800600 regarding the validity of [the '422 Patent] before the United
States Patent and Trademark Office." 6
On August 20, 2019, the PTAB entered a Final Written Decision
in IPR 2018-00600 holding all the original and amended claims of
the '422 Patent unpatentable. 7

Plaintiffs challenged the PTAB's

final written decision by requesting rehearing and review of their
motion to amend claims of the '422 Patent by the Precedential
Opinion Panel

("POP"),

and on July 6,

2020,

the POP issued a

Decision granting Plaintiffs' request for rehearing and motion to
amend claims of the '422 Patent, and upholding the patentability of
Complaint and Demand for Jury Trial, Docket Entry No. 1 in
Civil Action No. 4:16-1611, p. 4 � 13.
4

5

Docket Entry No. 34.

6

Order, Docket Entry No. 37, p. 2.

Exhibit A to Defendant's Opposition to Plaintiff's Opposed
Motion to Lift Stay, Docket Entry No. 50-1.
7

3

the amended claims. 8

Defendants have appealed the POP's decision

to the Federal Circuit, and Plaintiffs have cross-appealed the
PTAB' s decision holding all of the '422 Patent's original and
amended claims unpatentable. 9
In late 2019 two additional patents related to the DynaStage
System

were

issued:

Patent"), and U.S.

U.S.

Patent

Nos.

Patent 10,472,938

10,429,161

("the

("the '938 Patent").

'161
On

January 30, 2020, Plaintiffs filed a third action in the Waco
Division of the Western District of Texas, Civil Action No. 6:20cv-00069

("the

2020

Case"),

alleging

that

Defendants'

H-1™

Perforating Gun System infringes one or more claims of the '161 and
'938 Patents. 10 On March 23, 2020, Plaintiffs filed a First Amended
Complaint {Docket Entry No. 20), and on April 28, 2020, Plaintiffs
filed a Second Amended Complaint (Docket Entry No. 32) in the 2020
On June 16, 2020, the 2020 Case was transferred to this

Case.

See Decision, Hunting Titan, Inc. v. DynaEnergetics Europe
GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020), Exhibit A to
Plaintiffs' Opposed Motion to Lift Stay, Docket Entry No. 45-1.
See also Exhibit 64 to Plaintiffs' Motion for Preliminary
Injunction, Docket Entry No. 72-29 (same).
8

See Plaintiffs' Motion for Preliminary Injunction, Docket
Entry No. 67, p. 7 n. 2 ("The decision is on appeal to the Federal
Circuit. DynaEnergetics won a confirmation of the patentability of
certain amended claims by the [POP], and Hunting has appealed that
loss. DynaEnergetics has cross-appealed a decision with respect to
the original claims that were found unpatentable by the [PTAB].").
9

10 Complaint and Demand for Jury Trial, Docket Entry No. 1, p. 4
15-16 filed in both Civil Action No. 6:20-cv-00069 in the
11
Western District of Texas, and Civil Action 4:20-cv-2123 in the
Southern District of Texas.

4

court, given Civil Action No. 4:20-cv-2123, and assigned to Judge
Hanks based on a finding by Judge Albright that "the Waco Case
substantially overlaps with the Houston Case. 1111

On September 4,

2020, the court consolidated the 2020 Case with the 2017 Case, and
denied Plaintiffs' motion to lift the stay. 12
On September 22, 2020, Plaintiffs filed the pending Motion for
Reconsideration asking the court to "reconsider its [September 4,
2020,] Order and deny Defendants' motion to consolidate the 2020
Case with the 2017 Case," and, alternatively, to "clarify its Order
to provide that the 2020 Case is not stayed as a result of the
consolidation and [that] proceedings for the 2020 Case Patents may
move

forward. "13

Defendants

oppose

Plaintiffs'

Motion

for

Reconsideration by arguing, inter alia, that pendency of petitions
for post-grant review ("PGR") of the '161 and '938 Patents that
they filed

challenging the validity of those patents on June 30,.

2020, and August 12, 2020, respectively, warranted a stay in the
2020 Case.14
Order Granting Defendant Hunting Titan's Motion to
Trans
Venue for Potential Consolidation Under 28 U.S.C.
§ 1404(a) and Fed. R. Civ. P. 42(a), Docket Entry No. 41 filed in
Civil Action 4:20-cv-2123, p. 22.
12

Order, Docket Entry No. 55.

13

Plaintiffs' Motion for Reconsideration, Docket Entry No. 56,

p. 4.

Defendants'
Opposition
to
Plaintiffs'
Motion
for
Reconsideration of Order Consolidating Civil Action No. H-20-2123
and Civil Action No. H-17-3784 (DKT. 55) ("Defendants' Opposition
to Plaintiffs' Motion for Reconsideration"), Docket Entry No. 57,
(continued...)
14

5

On January 19, 2021, and February 12, 2021, the PTAB declined
to institute PGR of the '161 and '938 Patents, respectively. 15
On March 15, 2021, Plaintiffs filed the pending Motion for
Preliminary Injunction asking the court to "confirm [that] the stay
of proceedings with respect to the '422 Patent does not extend to
the '161 and '938 Patents, or [to] lift such stay with respect to
the '161 and '938 Patents," and to "issue a preliminary injunction
enjoining and restraining [Defendants], from continued sale of its
H-1 perforating system or similar products alleged to infringe the
'161 and '938 Patents pending final resolution of this action." 16
On March 18, 2021,

Defendants filed the pending Emergency

Motion for Contempt and to Enforce Stay asking the court
(1) to enforce the stay and confirm that Defendants need
not respond to Plaintiffs' voluminous new arguments and
expert statements in an admittedly stayed case; (2) to
hold Plaintiffs in contempt of the Stay Order; and (3) to
deny Plaintiffs' Motion at this preliminary stage. 17
On April 15, 2021, the court entered an Order for Additional
Information (Docket Entry No. 99) denying reconsideration of the
continued)
pp. 1 and 17 (citing PGR2020-00072 filed on June 30, 2020, and
PGR2020 00080, filed on August 12, 2020, Exhibits H and I to
Plaintiffs' Motion for Reconsideration, Docket Entry Nos. 56-8 and
56-9, respectively).
14 (
•••

Decision Denying Institution of Post Grant Review for the
'161 Patent, and Decision Denying Institution of Post-Grant Review
for the '938 Patent, Exhibits 65 and 66 to the Declaration of Ana
Friedman in Support of DynaEnergetics' Motion for Preliminary
Injunction, Docket Entry Nos. 72-30 and 72-31, respectively.
15

Plaintiffs' Motion for Preliminary Injunction, Docket Entry
No. 67, p. 35.
16

Defendants' Emergency Motion for Contempt and to Enforce
Stay, Docket Entry No. 81, p. 7.
17

6

stay of the 2017 Case, carrying the motion for reconsideration of
the stay of the 2020 Case, and ordering the parties to provide
additional information to assist the court in ruling on the pending
motions.

On May 14, 2021, the parties filed responses to the

court's Order for Additional Information. 18
II. Plaintiffs' Motion for Reconsideration
Plaintiffs ask the court to "reconsider its Order and deny
Defendants' motion to consolidate the 2020 Case with the 2017
Case, " 19 and, alternatively, to "clarify its Order to provide that
the 2020 Case is not stayed as a result of the consolidation and
proceedings for the 2020 Case may move forward. 1120

[that]

response

to

the

court's

Order

for

Additional

In

Information,

Plaintiffs argue that the 2020 Case should not be consolidated or
stayed,

and

that

an

implemented. 21 Both part

expedited

trial

schedule

should

be

s have submitted proposals for expedited

schedules. 22

Plaintiffs' Submission in Response to the Court's April 15,
202[1] Order
Additional Information ("Plaint fs' Response"),
Docket Entry No. 101; Defendants' Response to Order for Additional
Information ("Defendants' Response"), Docket Entry No. 102.
18

p. 4.

Plaintiffs' Motion for Reconsideration, Docket Entry No. 56,

19

Plaintiffs' Response, Docket Entry No. 101, p. 2.

21
22

See [Joint] Proposed Scheduling Order, Docket Entry No. 100.
7

Defendants

oppose

Plaintiff's

Motion

for Reconsideration

arguing that there has been no change in the law or the facts, and
that consolidation and stay are appropriate. 23
A.

Standard of Review

"[T]he Federal Rules of Civil Procedure do not recognize a
general motion for reconsideration."

St. Paul Mercury Insurance

Company v. Fair Grounds Corp., 123 F.3d 336, 339 (5th Cir. 1997).
The court's September 4, 2020, Order was interlocutory, not final.
Courts reconsider interlocutory orders under Rule 54 (b) which
provides that "any order or other decision, however designated,
that adjudicates fewer than all the claims or the rights and
liabilities of fewer than all the parties . . . may be revised at
any time before the entry of [a final judgment]."

"Rule 54(b)'s

approach to the interlocutory presentation of new arguments as the
case evolves can be . . . flexible, reflecting the 'inherent power
of the rendering

district court to afford such relief from

interlocutory judgments as justice requires.'"
Texas,

L.P.,

864 F.3d 326,

Austin v. Kroger

337 (5th Cir. 2017) (per curiam)

(internal citations omitted). "[T]he power to reconsider or modify
interlocutory rulings
district court.'"

'is committed to the discretion of the

Id. (citations omitted).

Defendants'
Opposition
to
Plaintiffs 1
Motion
for
See also Defendants
Reconsideration, Docket Entry No. 57.
Response, Docket Entry No. 102, pp. 3-17.
23

1

8

B.

Analysis

Plaintiffs argue that
[c]onsolidation is improper . . . [because] the 2020 Case
and the 2017 Case involve different patents with
different specifications, prosecution histories, and
claim scope and thus there is no risk of inconsistent
judgments if the matters are tried separately. As stated
in the earlier briefing, the '422 Patent is part of a
different patent family than the 2020 Case Patents and
claims a patentably distinct invention.
Contrary to
statements made by Defendants in its motion to
consolidate, the core issues of patent validity and claim
construction, and thus infringement and damages are
24
different in the 2017 Case than in the 2020 Case.
Plaintiffs also argue that
[t)he fact that the patents share some common language is
not surprising given that they are both generally
directed to perforation gun systems.
It does not,
however, follow that validity or construction of claim
terms in one patent will be dispositive on issues of
claim construction in another patent. . . Similarly, the
Federal Circuit appeal of the '422 Patent IPR proceeding
will not be dispositive of any issues related to the 2020
Case Patents. 25
Defendants initially argued that consolidation is appropriate
because there is substantial overlap and consolidation would not
delay the 2020 Case. 26 Asserting that "[t] he relevant question [for
Plaintiffs' Motion for Reconsideration, Docket Entry No. 56,
p. 10.
See also Plaintiffs' Reply in Support of Its Motion for
Reconsideration of Order Consolidating Civil Action No. H-20-2123
and Civil Action No. H-17-3784 (DKT. 55) ("Plaintiff's Reply in
Support of Motion for Reconsideration"), Docket Entry No. 59, p. 5
("Defendants .
. fail to establish that the 2017 Case and the
2020 Case share common questions of law or fact such that
consolidation is proper where the cases involve different parties
and patents from different families with different inventors.").
24

25

Plaintiffs' Motion for Reconsideration, Docket Entry No. 56,

26

Defendants'

p. 11.

to

Opposition
9

Plaintiff's

for
Motion
(continued...)

consolidation] is

whether there is 'substantial overlap,' " 27

Defendants argued that they have "explained in great detail the
substantial overlap of issues in these cases, 1128 and that "Judge
Albright's Order transferring the 2020 Waco Case to the Southern
District also discussed the substantial overlap between the cases.
1129

Defendants argued that

[a]s discussed in those documents, these cases:
1) include the same parties; 2) accuse the same products
of infringement; 3) assert closely related patents that
have three common inventors, are directed to the same
system, have overlapping claim scope, have at least one
identical figure, have many identical claim terms, and
have the same specification {due to incorporation by
reference). 30
Asserting that similar factual and legal issues are in both cases,31
Defendants now argue that consolidation reduces the burden on the
parties, the witnesses, and the court. 32

continued)
Reconsideration, Docket Entry No. 57, pp. 12-15.
26 { •••

at 12.
Id. {citing Defendants' Opposed Motion to Transfer Venue and
Consolidate, Docket Entry No. 39, pp. 8-10, and 14, and Defendants 1
Reply on Opposed Motion to Transfer Venue and Consolidate, Docket
Entry No. 41, pp. 2 5).
28

at 12 13 {citing Exhibit B, Order Granting Defendants'
Motion to Transfer Venue, Docket Entry No. 41, filed in the Civil
Action No. H-20-2123, Docket Entry No. 57-2, pp. 10-13).
30

31
32

Id. at 13.
Defendants' Response, Docket Entry No. 102, p. 6.
Id. at 6-7.
10

1.

Appropriateness of Consolidation
(a)

Applicable Law

Federal Rule of Civil Procedure 42 (a) permits a court to
consolidate cases that "involve a common question of law or fact."
Consolidation does not merge the cases into a single action or
change the rights of the parties.

Consolidation is a procedural

device used to promote judicial efficiency and economy by avoiding
unnecessary costs or delay, and "actions maintain their separate
Frazier v. Garrison I.S.D., 980

identity even if consolidated."
F.2d 1514,
Railway Co.,

1532

(5th Cir. 1993)

53 S. Ct. 721,

(citing Johnson v. Manhattan

727-28

consolidate actions under Rule 42 (a)

(1933)).

The decision to

"is entirely within the

discretion of the district court as it seeks to promote the
administration of justice."
(5th Cir. 1973).

Gentry v. Smith, 487 F.2d 571, 581

Courts consider several factors in weighing

whether to consolidate cases, including (1) whether the actions are
pending in the same court; (2) whether the actions involve a common
party;

(3) whether there are common questions of law or fact;

(4) whether consolidation poses risk of prejudice or confusion and,
if so, whether that risk is outweighed by the risk of inconsistent
adjudications of common factual or legal questions if the cases are
tried separately;

and

(5) whether consolidation will conserve

judicial resources by reducing the time and cost of trying the
cases separately.

See Frazier, 980 F.2d at 1532.

See also St.

Bernard General Hospital, Inc. v. Hospital Service Association of
11

New Orleans, Inc., 712 F.2d 978, 989 (5th Cir. 1983), cert. denied,
104 S. Ct. 2342 (1984)

("Consolidation is improper if it would

prejudice the rights of the parties."). Defendants, as the parties
seeking consolidation, bear the burden of showing that the 2017 and
2020 Cases should be consolidated.
(b)

See Frazier, 980 F.2d at 1531.

Application of the Law to the Parties' Arguments

The 2017 and 2020 Cases are both pending in the same court,
both involve all but one of the same parties, 33 and both allege that
the same device, i.e., that Defendants' H-1 ™ Perforating System,
infringes patents related to Plaintiffs' DynaStage System.
2017 Case also involves the H-2™ Perforating System.
whether

there

are

common

issues

of

law

or

The

At issue is

fact,

whether

consolidation poses risk of prejudice or confusion and if so,
whether that risk outweighs risk of inconsistent adjudication of
common issues of law or fact,

and whether consolidation will

advance the interest of judicial economy.

For the reasons stated

below, the court will vacate the consolidation order, and allow the
2020 Case to proceed towards trial.

Hunting Titan Energy Services, Inc., which is a defendant in
the 2017 Case, is not currently named in the 2020 Case.
See
Defendants' Response, Docket Entry No. 102, p. 7.
33

12

{1}

Consolidation is Not
Issues of Law or Fact

Asserting that the claims of the

1

Warranted

by

Common

161 Patent are generally

directed to the stackable components of a modular perforation
system, 34 and that the claims of the '938 Patent are directed to the
electrical feed through connections between perforation guns as
well as to a modular detonator, 35 while the claims of the '422
Patent are generally directed to a wireless "push-in n Plug and Go™
style detonator, 36 Plaintiffs argue that "the core issues of claim
construction, patent validity, and infringement are different in
the [ two cases] . " 37
Acknowledging that "different patents are at issue in the 2017
Case and the 2020 Case, " 38 Defendants argue that

"all of the

patents-in-suit share common claim language that Defendants expect
the parties will ask this court to construe and then apply both to
validity challenges based on similar prior art or infringement
considerations for the same accused device." 39 Asserting that "the

34

Plaintiffs' Response, Docket Entry No. 101, p. 5.
at 5-6.

36

at 6.
at 7.

38

Defendants 1 Response, Docket Entry No. 102, p. 7.
at 7-8.
13

significance of this factor weighs in favor of consolidation, 1140
Defendants argue that
the same parties will have to not only undertake the same
discovery that has not begun in either Case, but depose
and be present for trial the same fact, expert, and third
party witnesses relating to allegations of the same
allegedly infringing products.
the cases are not
consolidated, not only will the same fact witnesses
including the inventors need to be deposed twice, but
expected that the same experts will be enlisted for
both the 2017 Case and the 2020 Case
most likely the
experts whose opinions are part of the IPR record on
appeal regarding the '422 patent at issue in the 2017
Case.
If the consolidation does not occur, the
number of expert reports generated and defended will be
doubled and the number of technical tutorials will be
doubled as they relate to the same accused devices. 41
Defendants' arguments are not persuasive because the two cases
involve different patents, different claims, and different aspects
of the accused H-1 device, and because Defendants have

led to

identify any claim elements of the '422 Patent at issue the 2017
Case that are the same as claim elements of the '161 and '938
Patents at issue in the 2020 Case.

Defendants identify a number of

similarities between the '422 Patent and the '938 Patent, 42 but fail
to show that the similarities they identify will impact the legal
or factual issues to be decided in the 2017 and 2020 Cases.
example,

Defendants argue that Fig.

at 8.
at 10-13.
14

6

of the

'422

For

Patent is

identical to Fig. 18 of the '161 Patent,43 but they fail to explain
how or why this figure relates to any of the legal or factual
questions at issue in either the 2017 or the 2020 Case.

Defendants

argue that "[a] 11 of the patents-in-suit incorporate in their
entirety Canadian patent applications, "44 but fail to show that the
patents in-suit incorporate the same Canadian patent applications. 45
Although the ultimate questions at issue in both cases are claim
construction, patent validity, and patent infringement, Defendants
have not convincingly shown that either the facts or the law needed
to dee

these issues are substantially similar in both cases.
(2)

Consolidation Poses Risks of
Prejudice to Plaintiffs

Confusion

and

Plaintiffs argue that consolidation poses risks of confusion
and prejudice to them because the '422 Patent at issue in the 2017
patent family, addresses

ferent

inventive subject matter, and claims infringement of

fferent

Case

from a

different

aspects of Hunting Titan's H-1™ Perforating System than

43

'161

at 10.

Order for Additional Information, Docket Entry No. 99,
p. 18 n. 46 ("[T]he court's examination of the cited references
reveals that while the '422 Patent at issue in the 2017 Case,
incorporates by reference Canadian Patent 2,824,838, the '161 and
'938 Patents at issue in the 2020 Case, claim priority to Canadian
Patent, 2,821,506, i.e., a different Canadian patent than the one
incorporated by reference into the '422 Patent at issue in the 2017
Case.") .
15

and '938 Patents at issue in the 2020 Case. 46
"[p]atent

cases

are

already

complicated

for

Asserting that
a

lay

jury, " 47

Plaintiffs argue that consolidation poses a risk of confusion
because "in whatever form the claims emerge from the '422 IPR
Appeal, they will no longer be subject to a printed publication
based validity challenge," 48 while the '161 and '938 Patents will
be subject to such a challenge. 49
Without disputing that the patents at issue in the two cases
belong to different patent families, address different inventive
subject matter, and claim infringement of different aspects of the
allegedly infringing device, Defendants argue that "[t]here is
. less risk of prejudice or confusion by trying this as one case,
one time. " 50

Defendants contend that they

could be subjected to a finding of infringement in the
2020 Case while those same claim elements are confirmed
to be unpatentable by the Federal Circuit in the pending
appeal of the '422 patent from the 2017 Case shortly
thereafter. This would not only cause confusion in the
marketplace, but possibly subject Defendants to an
injunction and expose all the parties in these cases to
another appeal to the Federal Circuit to address the
inconsistency. 51

46

Plaintiffs' Response, Docket Entry No. 101, p.

47

at 4.

48

Id. at 3.

49

Id. at 4 and

18.

50

18.

Defendants' Response, Docket Entry No. 102, p. 8.
16

Asserting that "fact, expert, and third party witnesses identified
by the Parties in the 2017 Case will likely be needed by the
parties in the 2020 Case, " 52 Defendants also argue that "[tJ here is
less risk of prejudice or confusion by subjecting these witnesses
[to] one set of depositions and trial testimony. " 53

Defendants'

arguments are not persuasive because Defendants fail to identify
any claim elements that are, in fact, the same in the patents at
issue in the two cases.
reasons

why

separate

Nor have Defendants articulated any

trials

would

pose

a

risk

of

confusing

witnesses or causing inconsistent adjudications of common issues of
law or fact.
Asserting that "Hunting Titan's participation in the pre­
loaded gun market - which would not be possible but for its
infringement of the '161 and '938 Patents

has taken market share

and eroded the prices DynaEnergetics is able to charge for its
DynaStage system, " 54 Plaintiffs argue that
consolidating the proceedings with respect to these three
patents has already significantly prejudiced [them] as it
has resulted in no progress towards adjudication of
[Defendants'] infringement of the '161 and '938 Patents
despite that the Complaint was filed more than [18]
months ago . 55

at 10.

52

s3rd.
54

Plaintiffs' Response, Docket Entry No. 101, p. 3.
17

Plaintiffs

argue

that

they

have

been

irreparably

harmed

by

Defendants' ongoing infringement during the existing delay, and
will be even further harmed going forward. 56

Defendants do not

dispute that delay in adjudicating the claims at issue in the 2020
Case prejudices the Plaintiffs, and have neither argued nor shown
that the prejudice to Plaintiffs caused by delay in adjudicating
the 2020 Case is outweighed by risk of inconsistent adjudications
of common factual or legal questions, or by increasing the time or
costs of litigation if the cases are tried separately.

Moreover,

Defendants have not argued that vacating the consolidation order
will prejudice them in any way.
(3)

Trying the Cases Separately Poses No Risk of
Inconsistent Adjudication of Common Questions

Asserting that there is not likely to be a significant risk of
inconsistent adjudication of common law or fact issues in the two
cases, Plaintiffs argue that there is no overlap between the eleven
claim terms of the '422 Patent, which Defendants have identified
for construction, and any of the claim terms of the '161 and '938

Id.
See also Plaintiffs' Reply in Support of Motion for
Reconsideration, Docket Entry No. 59, p. 5 ("Absent consolidation
and a stay, the 2020 Case is ready to proceed through discovery and
to trial while the 2017 Case is not, and may not be ready to
proceed to trial for another 12-18 months while the Federal Circuit
resolves the parties' respective appeals. Preventing [Plaintiffs]
from moving forward on [their] claims for the 2020 Case Patents,
which are not under administrative review and are ripe for
adjudication, would result in substantial prejudice.").
56

18

Patents for which Defendants sought construction in the related
administrative proceedings. 57 Defendants argue that they "could be
subjected to a finding

infringement in the 2020 Case whi

those

same claim elements are confirmed to be unpatentable by the Federal
Circuit in the pending appeal of the '422 patent from the 2017 Case
shortly thereafter. " 58 But because the two cases do not involve the
same patents or claims of infringement, and because Defendants have
failed to identify any claim elements that may be subject to
inconsistent adjudication in the two cases, Defendants have failed
to persuade the court that trying the cases separately poses any
risk of inconsistent adjudication of the primary issues of claim
construction, invalidity, and infringement.
(4)

Consolidation Will Not Significantly Reduce
the Time and Cost of Trying the Cases

Plaintiffs argue that while there will likely be some overlap
in discovery, consolidating the 2017 and the 2020 Cases will not
significantly reduce the time, expense, or burden of discovery and
trial, because
[r] egardless of the outcome of the '422 Patent IPR
proceedings, the '161 and '938 Patents will be litigated
before this Court.
Thus, the part
inevitably will
Plaintiffs' Response, Docket Entry No. 101, p. 8 (citing
Exhibit A, Declaration of Ana Friedman, � 4 and Appendix A-1,
Docket Entry No. 101-1, and Disputed Patent Claim Terms of the '422
Patent, Docket Entry No. 31 1).
57

58

Defendants' Response, Docket Entry No. 102, p. 9.
19

(1) conduct discovery regarding the technical aspects,
sales, marketing and financials relating to Hunting
Titan's H-1 Perforating System; (2) conduct Markman
proceedings with respect to any disputed claim terms in
the '161 and '938 Patents; (3) prepare expert reports
regarding Hunting Titan's infringement of the 1 161 and
'938 Patents as well as address any potential validity
challenges Hunting Titan raises; and (4) prepare expert
reports addressing the appropriate damages for Hunting
[M]any of these categories
Titan's infringement.
will have no or only minimal overlap with the '422 Patent
given the significant substantive differences between the
inventions claimed in the '161 and '938 Patents as
[W] hile a couple of
compared to the '422 Patent.
these categories may overlap with proceedings necessary
to decide infringement of the 1 422 Patent, these portions
can simply be reused, resulting in minimal additional
discovery being required to adjudicate any eventual
proceedings on the '422 Patent. . 59
Defendants argue that
[i]f the cases are not consolidated, not only will the
same fact witnesses including the inventors need to be
deposed twice, but it is expected that the same experts
will be enlisted for both the 2017 Case and the 2020 Case
- most likely the experts whose opinions are part of the
IPR record on appeal regarding the '422 patent at issue
in the 201 7 Case.
If the consolidation does not
occur, the number of expert reports generated and
defended will be doubled and the number of technical
tutorials will be doubled as they related to the same
accused devices. Dividing the 2017 Case from the 2020
case generates "two bites at the apple" for every fact,
point of law, motion, briefing, and technical tutorial in
support or challenge of the issues in the cases.
Accordingly, the judicial economy of trying the case once
instead of twice is beneficial especially in light of any
guidance received from the Federal Circuit regarding the
overlapping claims on appeal. 60

59

Plaintiffs' Response, Docket Entry No. 101, p. 4.

60

Defendants' Response, Docket Entry No. 102, p. 8.
20

While consolidation offers the ability to reduce the time,
expense, and burden on

parties and the court, the potential

reductions at issue in this case do not outweigh the prejudice that
consolidation will impose on both the Plaintiffs and the court in
the form of delay.

Defendants initially argued that the risk of

prejudice consolidation posed to Plaintiffs was not a high risk
because "[p]etitions for [PGR] of the patents-in-suit in the 2020
Case

were

and

filed

instituted. "61

[were]

likely

to

have

[PGRs]

But since Defendants' petitions for PGR of both the

'161 and the '938 Patents have been denied by the USPTO, 62 the two
cases are no longer in the same procedural posture. The 2020 Case
is now ready to proceed to discovery and trial while, for the
reasons stated in

§

II.B.2 {b) {1) of the Order for Additional

Information, Docket Entry No. 99 at pages 21-27, the 2017 Case
remains stayed pending conclusion of the cross-appeals of the '422
Patent's IPR proceedings now pending before the Federal Circuit.
Moreover, Plaintiffs argue, and the court agrees, that overlaps in
discovery between the two cases "can simply be reused, resulting in
minimal additional discovery being required to adjudicate any
eventual proceedings on the '422 Patent." 63

Defendants'
Opposition
to
Plaintiff's
Reconsideration, Docket Entry No. 57, p. 15.
61

Motion

for

Plaintiff's Motion for Preliminary Injunction, Docket
Entry No. 67, p. 8 (stating that "the PTAB [has] declin[ed] both
post grant review [] challenges of the '161 and '938 Patents").
63

Plaintiffs' Response, Docket Entry No. 101, p. 4.
21

(c)

Conclusions

Because Defendants have failed to persuade the court that the
2017 and 2020 Cases involve substantially s.imilar questions of law
or fact, and because the court has concluded that consolidation
poses risks of prejudice to the Plaintiffs that are not outweighed
either by the risk of inconsistent adjudications of common issues
of law or fact or by interests of judicial efficiency and economy,
the court is not persuaded that the 2017 Case and the 2020 Case·
should remain consolidated.

A�cordingly, Plaintiff's Motion for

Reconsideration of the court's order of consolidation will be
granted, and that order will be vacated.
2.

Appropriateness of Stay

Plaintiffs argue that "the 2020 Case can and should proceed
towards trial while the 2017 Case remains stayed pending the
Federal Circuit appeal, " 64 and that '' [s] taying the 2020 Case pending
an appeal which will not resolve issues of fact relevant to the
2020 Case Patents would unfairly delay proceedings in
Case. " 65

[that]

Defendants argue that

Plaintiffs' Motion for Reconsideration, Docket Entry No. 56,
p. 12. See also id. at 8-9 (arguing that consolidation is improper
because "absent clarification from the Court, the practical effect
of the Court's Order consolidating the 2020 Case with the 2017 Case
is to impose the stay in place in the 2017 Case on the 2020 Case
Patents")
64

65

Plaintiffs' Motion for Reconsideration, Docket Entry No. 56,
(continued...)
22

[s] taying the 2020 Case to allow certainty from the
appeal of the '422 patent in the 2017 Case allows both
the claim construction and the patentability challenges
to be processed once and consistently. It removes the
risk and concern that the parties, the litigants, the
expert witnesses, and ultimately the Court are pressed
into inconsistent positions once the stay is 1 ted on
the 2017 Case by whatever actions are taken in the 2020
Case before that time should the 2020 Case be allowed to
proceed at this time.66
(a)

Applicable Law

"[T]he power to stay proceedings is incidental to the power
inherent in every court to control the disposition of the causes on
its docket with economy of time and effort for itself, for counsel,
and for litigants."
166 (1936).

Landis v. North American Co., 57 S. Ct. 163,

See also Murata Machinery USA v. Daifuku Co., Ltd.,

830 F.3d 1357, 1361 (Fed. Cir. 2016) (same).
District courts typically analyze stays under a three­
factor test: (i) whether a stay would unduly prejudice or
present a clear tactical disadvantage to the non-moving
party;
) whether a stay will simplify the issues in
question and trial of the case; and (iii) whether
discovery is complete and whether a trial date has been
set.
Murata,

830 F.3d at 1361. "A court may lift a stay if the

circumstances supporting the stay have changed such that the stay
no longer appropriate."

Id.

( •••continued)
p. 12. See also Plaintiffs' Response, Docket Entry No. 101, p. 3
("[T]he 2020 Case is ready to move forward and the 2017 Case has
been determined by this Court not to be.
. A stay will not
simplify any issues with respect to the 2020 Case Patents.").
65

66

Defendants' Response, Docket Entry No. 102, pp. 15-16.
23

(b)

Application of the Law to the Parties' Arguments
Stay of the 2017 Case Remains Appropriate

(1)

For the reasons stated in § II.B.2(b) (1)

of the Order for

Additional Information, Docket Entry No. 99 at pages 21-27, the
court has already concluded that the 2017 and 2019 Cases should
remain stayed pending conclusion of the parties' cross-appeals to
the Federal Circuit.

Stay of the 2020 Case Is Not Appropriate

(2)

Asserting

that

"the

Court's

[September

4,

2020,]

Order

effectively grants relief that Defendants did not even request - a
stay of the 2020 Case," 67 Plaintiffs argue that a stay of the claims
asserted for direct infringement of the '161 and '938 Patents is
inappropriate because "neither party requested a stay in the 2020
Case

and

the

patents-at-issue

administrative review." 68

are

not

currently

under

Asserting that "the 202 O Case can and

should proceed towards trial while the 2017 Case remains stayed
pending

the

Federal

Circuit

appeal," 69

Plaintiffs

argue

that

"[s]taying the 2020 Case pending an appeal which will not resolve
issues of fact relevant to the 2020 Case Patents would unfairly
delay proceedings in the 2020 Case." 70
67

p.

Plaintiffs' Motion for Reconsideration, Docket Entry No. 56,

68

Id. at

69

Id. at 12.

70

Id.

3.

4.

See also Plaintiffs' Reply in Support of Its Motion for
(continued...)
24

Defendants initially argued in response to the Plaintiffs'
Motion for Reconsideration that a stay of the 2020 Case was
appropriate because the parties agreed to a stay, because their
petitions for PGRs of the '161 and '938 Patents were likely to be
instituted and at least some of the claims were likely to be found
unpatentable, and because no meaningful prejudice could come from
continuing the stay of the consolidated case for a few months
pending a decision on institution of the PGRs.71

See Intellectual

Ventures II LLC v. BITCO General Insurance Corp., 2016 WL 4394485,
*2 (E.D. Tex. May 12,

2016) (recognizing that

stay of patent

litigation "is particularly justified when the outcome of a PTO
proceeding is likely to assist the court in determining patent
validity

or

eliminate

the

need to

try

infringement

issues")

(internal quotations and citation omitted))
(i)

No Agreement Exists to Stay the 2020 Case

For the reasons stated in§ II.B.2(b) (2) (i) of the Order for
Additional Information, Docket Entry No. 99 at pages 29-30, the
parties never agreed to stay the 2020 Case.

continued)
Reconsideration, Docket Entry No. 59, p. 5, and Plaintiffs'
Response, Docket Entry No. 101, pp. 3-4, and 17 (arguing that stay
of the 2020 Case has and will prejudice DynaEnergetics).
70 (
•••

Plaintiffs'
to
Opposition
71Defendants'
Reconsideration, Docket Entry No. 57, p. 17.
25

Motion

for

(ii) Circumstances Changed When the PTAB
Declined PGR of the '161 and '938 Patents
Defendants originally argued that stay of the 2020 Case was
appropriate because PGR would likely be instituted for both the
'161 and '938 Patents, and because there would be no prejudice from
continuing the stay of the consolidated case pending a decision on
institution of the PGRs. 72

When Defendants filed their response to

Plaintiffs' Motion for Reconsideration, the PTAB had not acted on
the Defendants' petitions for PGR of the '161 and '938 Patents.
But circumstances changed in January and February of this year when
the PTAB declined to institute PGR of the '161 and '938 Patents. 73
Thus, unlike the 2017 Case which the court has already determined
should remain stayed, the 2020 Case is ready to move forward.
(iii) A Stay Will Prejudice Plaintiffs Without
Reducing the Burdens of Trial
Plaintiffs argue that the cross-appeals of the '422 Patent IPR
proceeding to the Federal Circuit will not be dispositive of any
issues related to the 2020 Case Patents, 74 and that
72 Defendants'
Opposition
to
Plaintiffs'
Reconsideration, Docket Entry No. 57, p. 17.

Motion

for

Plaintiffs' Motion for Preliminary Injunction, Docket
Entry No. 67, p. 8 (stating that "the PTAB [has] declin[ed] both
post-grant review [] challenges of the '161 and '938 Patents").
See also Decision Denying Institution of Post-Grant Review for the
'161 Patent, and Decision Denying Institution of Post-Grant Review
for the '938 Patent, Exhibits 65 and 66 to the Declaration of Ana
Friedman in Support of DynaEnergetics' Motion for Preliminary
Injunction, Docket Entry Nos. 72-30 and 72-31, respectively.
74

p. 11.

Plaintiffs' Motion for Reconsideration, Docket Entry No. 56,
26

[a] continued stay would not only deny [them their] day
in Court to enforce their] duly issued '161 and '938
Patents for an extended period for reasons unrelated to
the validity of those patents, it would also increase the
of evidentiary prejudice to [Plaintiffs] from lost
or forgotten documentary and testimonial evidence. 75
Defendants argue that staying the claims asserted against the
'161 and '938 Patents in the 2020 Case is appropriate because at
the end of the appeal process,

"this Court will deal with a

streamlined case by either having one fewer patents in-suit or
amended

patent

claims

that

remaining patents-in-suit." 76

substantially

overlap

the

other

Defendants also argue that "keeping

the agreed-upon stay in place while the '422 Patent's validity is
finally determined will avoid undue duplication and undue waste of
judicial resources." 77

But for the reasons stated in

§

II.B.1,

above, the court has concluded that the common issues of law and
fact between the claims based on the '422 Patent and the '161 and
'938 Patents are not similar enough to warrant consolidation, that
consolidation
Plaintiffs,

poses

of

confusion

and

prejudice

to

the

and that the risk of confusion and prejudice that

consolidation poses to the Plaintiffs is not outweighed by the
risks either of inconsistent adjudication of common questions of
law or fact or of increased time and costs posed by separate
trials.

Accordingly, stay of the 2020 Case is not appropriate.

Plaintiffs' Response to Defendants' Emergency Motion for
Contempt and to Enforce Stay, Docket Entry No. 86, p. 15.
75

Defendants' Reply to Plaintiffs' Response to Defendants'
Emergency Motion for Contempt and to Enforce Stay, Docket Entry
No. 91, p. 6.
76

27

III. Plaintiffs' Motion for Preliminary Injunction

Plaintiffs

seek

a

preliminary

injunction

enjoining

and

restraining Defendants from continuing to sell its H-1 ™ Perforating
Gun system alleged to infringe the '161 and '938 Patents pending
final resolution of this action.
§

As explained at the end of

II.B.2(b) (2) (iii) of the Order for Additional Information, Docket

Entry No. 99 at pages 39-40, the court has found from experience
that litigation of preliminary injunctions often causes undue
duplication and waste of time and resources.
that

parties

that

its

normal

procedure

The court informed
is

to

consolidate

preliminary injunction proceedings under Rule 65(a) with the trial
on the merits,

and required the parties to submit a proposed,

accelerated discovery schedule for the 2020 Case for the court's
use should the court decide to discontinue the stay, and for Judge
Hank's use should the court decide to dissolve the consolidation.
The

parties

have

responded

by

submitting

slightly

proposed scheduling orders, Docket Entry No. 100.

different

The parties have

also indicated a preference for this court to retain both cases
even if the consolidation is dissolved. 78
Both parties have submitted proposed expedited scheduling
orders pursuant to the court's Order for Additional Information,
Docket Entry No. 99 at page 39.

The court prefers the Plaintiffs'

proposed schedule because it provides a more accelerated schedule.
78 See Plaintiffs' Response,
Docket Entry No. 101, p. 19, and
Defendants' Response, Docket Entry No. 102, p. 10.

28

Plaintiffs' counsel will be ordered to submit by July 22, 2021, a
proposed patent case scheduling order with dates that are based on
the date of this Memorandum Opinion and Order.

The proposed

scheduling order should include a date requiring mediation within
thirty (30) days of the court's Markman ruling.

IV.

Defendants' Emergency Motion for Contempt and to Enforce Stay

Defendants' Emergency Motion for Contempt and to Enforce Stay
asks the court
(1) to enforce the stay and confirm that Defendants need
not respond to Plaintiffs' voluminous new arguments and
expert statements in an admittedly stayed case; (2) to
hold Plaintiffs in contempt of the Stay Order; and (3) to
deny Plaintiffs' Motion at this preliminary stage. 79
For the reasons stated in§ II, above, the court has concluded that
Plaintiffs are entitled to 'relief from the order that effectively
stayed the 2020 Case by consolidating it with the 2017 Case.

The

court's decision to grant Plaintiffs' request for substantive
relief by vacating the order of consolidation and allowing the 2020
Case to proceed towards trial means that there is no basis either
for holding Plaintiffs in contempt, or for enforcing the stay of
the 2020 Case.

Accordingly,

Defendants' Emergency Motion for

Contempt and to Enforce Stay will be denied.

Defendants' Emergency Motion for Contempt and to Enforce
Stay, Docket Entry No. 81, p. 7.
79

29

V. Conclusions and Order

For the reasons stated in§ II, above, Plaintiff's Motion for
Reconsideration of Order Consolidating Civil Action No. H-20-2123
and Civil Action No. H-17-3784, Docket Entry No. 56, is GRANTED,
and that portion of Order, Docket Entry No. 55, that consolidated
Civil Action No.
VACATED.

H-20-2123 with Civil Action No.

H-17-3784 is

Civil Action No. 20-2123 and Civil Action No. H-17-3784

will now proceed under their individual case numbers.

This court

will retain jurisdiction over both cases.
For the reasons stated in§ III, above, Plaintiffs' Motion for
Preliminary

Injunction,

Docket

Entry

No.

67 ,

is

DENIED.

Plaintiffs' counsel will submit by July 22, 2021, a proposed patent
case scheduling order with dates that are based on the date of this
Memorandum Opinion and Order.

The proposed scheduling order should

include a date requiring mediation within thirty (30) days of the
court's Markman ruling.
For the reasons stated in § IV, above, Defendant's Emergency
Motion for Contempt and to Enforce Stay, Docket Entry No. 81, is
DENIED.
SIGNED at Houston, Texas, this

ay of July, 2021.

SIM LAKE
SENIOR UNITED STATES DISTRICT JUDGE

30