CANATEX COMPLETIONS
`SOLUTIONS, INC.
`
`
`
`Plaintiff,
`
`
`
`
`
`v.
`
`CIVIL ACTION NO. 4:22-CV-3306
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`PLAINTIFF CANATEX COMPLETIONS SOLUTIONS, INC.’S
`PRELIMINARY INFRINGEMENT CONTENTIONS
`
`WELLMATICS, LLC, GR ENERGY
`SERVICES, LLC, GR ENERGY
`SERVICES MANAGEMENT, LP, GR
`ENERGY SERVICES OPERATING
`GP, LLC, AND GR WIRLINE, L.P.
`
` Defendants.
`
`
`
`
`
`Pursuant to the Court’s Patent Scheduling Order (Dkt. 64) and Local Patent Rules 3-1
`
`and 3-2, Plaintiff Canatex Completions Solutions, Inc. (“Canatex”) provides the following
`
`disclosure of asserted claims, preliminary infringement contentions, and document production
`
`accompanying disclosure.
`
`As discovery and Canatex’s investigation of the facts in this case are ongoing, and as claim
`
`construction is not yet complete, Canatex reserves the right to amend or supplement the
`
`information provided herein.
`
`A. Disclosure of Asserted Claims & Preliminary Infringement Contentions (L.P.R. 3-1)
`
`
`1) each claim of each patent-in-suit that is allegedly infringed by an opposing
`party;
`
`
`
`Based on the information currently available to it, Canatex alleges that Defendants infringe
`
`the following claims of the U.S. Patent No. 10,794, 122 (the “’122 Patent”): 1, 4, 5, 6, 7, 8, 9, 10,
`
`11, 12, 13, 15, 16, 17, 18, and 19.
`
`1
`
`
`Petitioner GR Energy Services - Ex. 1017, p. 1
`
`

`

`2) for each asserted claim, a specific and separate identification of each
`accused apparatus, product, device, process, method, act, or other
`instrumentality(“Accused Instrumentality”) of each opposing party,
`including where possible:
`
`
`1) each product, device, and apparatus identified by name or model
`number, and
`2) each method or process identified by name, any product, device,
`or apparatus that, when used, allegedly results in the practice of
`the claimed method or process;
`
`
`Canatex alleges that Wellmatics’ making, offering for sale, selling, and using of the PHIRE
`
`Escape release tool infringes each of the asserted claims.
`
`Canatex alleges that any use of the PHIRE Escape release tool, including by GRW,
`
`infringes each of the asserted claims.
`
`3) a chart identifying specifically where each element of each asserted claim is
`found within each Accused Instrumentality, including for each element that
`is allegedly governed by 35 U.S.C. § 112(f), the identity of the structures,
`acts, or materials in the Accused Instrumentality that performs the claimed
`function;
`
`A chart based on the current information available to Canatex is attached as Exhibit A.
`
`
`
`Please note that this chart may include information that Defendants have designated as
`
`“Confidential” or “Confidential-Outside Attorneys’ Eyes Only” pursuant to the protective order
`
`currently entered in this action. It does not contain any of Plaintiff’s confidential materials.
`
`4) for each Accused Instrumentality and each element of each asserted claim,
`identification of whether the element is claimed to be literally present or
`present under the doctrine of equivalents. For any claim under the doctrine
`of equivalents, the Infringement Contentions must identify the structure or
`step in the Accused Instrumentality that is asserted to be equivalent;
`
`Canatex contends that all asserted claim elements are literally present. To the extent
`
`
`
`Defendants assert any claim element is not literally present, Canatex reserves the right supplement
`
`its contentions in response to such assertions..
`
`2
`
`
`Petitioner GR Energy Services - Ex. 1017, p. 2
`
`

`

`5) for each claim that is alleged to have been indirectly infringed, an
`identification of any direct infringement and a description of the acts of the
`alleged indirect infringer that contribute to or are inducing that direct
`infringement. Insofar as alleged direct infringement is based on joint acts
`of multiple parties, the role of each party in the direct infringement must
`be described.
`
`To the extent Wellmatics contends it does not directly infringe, they would nonetheless
`
`
`
`
`indirectly infringe. Any use or full assembly of the PHIRE Escape constitutes direct
`
`infringement. GRW both fully assembles and uses the PHIRE Escape and thus directly infringes,
`
`as would any other company that uses the PHIRE Escape in the field. Wellmatics induces
`
`infringement by providing instructions to customers on how to both assemble and use the PHIRE
`
`Escape, who then assemble and use the PHIRE Escape in violation of the Asserted Claims.
`
`Similarly, Wellmatics contributorily infringes by providing the PHIRE Escape (either assembled
`
`or disassembled, with or without the ignitor) to customers. The components of the PHIRE Escape
`
`provided by Wellmatics have no substantial non-infringing uses. For example, the PHIRE
`
`Escape components must be assembled by a customer for use, including by placing an ignitor or
`
`other combustible within the PHIRE Escape.
`
`6) for any patent that claims priority to an earlier application, the priority
`date to which each asserted claim allegedly is entitled;
`
`All asserted claims are entitled to a priority date of August 30, 2016.
`
`7) for each patent-in-suit, the party’s contention as to the applicability of pre-
`or post-AIA law regarding 35 U.S.C. § 102 and the basis for that
`contention; and
`
`Canatex contends that post-AIA law applies to the patent-in-suit.
`
`
`
`
`
`3
`
`
`Petitioner GR Energy Services - Ex. 1017, p. 3
`
`

`

`8) if a party claiming patent infringement wishes to preserve the right to rely,
`for any purpose, on the assertion that its own apparatus, product, device,
`process, method, act, or other instrumentality practices the claimed
`invention, the party must identify, separately for each asserted claim, each
`such apparatus, product, device, process, method, act, or other
`instrumentality that incorporates or reflects that particular claim.
`
`Canatex’s BRT 1.0 and 2.0 release tool practices at least claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11,
`
`
`
`12, 13, 15, 16, 17, 18, 19.
`
`
`
`B. Document Production Accompanying Disclosure (L.P.R. 3-2)
`
`Pursuant to Local Patent Rule 3-2, the required categories of documents are produced with
`
`the disclosure of asserted claims and preliminary infringement contentions. Pursuant to L.P.R. 3-
`
`2(b), the Bates numbers corresponding to each category are provided below:
`
`1) documents (e.g., contracts, purchase orders, invoices, advertisements,
`marketing materials, offer letters, beta site testing agreements, and third-
`party or joint development agreements) sufficient to show each discussion
`with, disclosure to, or other manner of providing to a third-party, or sale of
`or offer to sell, or any public use of, the claimed invention before the
`application date for the patent-in-suit;
`
`
`Documents sufficient to show disclosures, sales, offers, or public use before the priority
`
`date of the asserted claims are produced with beginning bates numbers CANATEX001276-1290,
`
`CANATEX0024-2699 and CANATEX003984.
`
`2) for any patent-in-suit that may be subject to pre-AIA law, documents
`evidencing the conception, reduction to practice, design, and development
`of each claimed invention, which were created on or before the application
`date for the patent-in-suit or the priority date identified under P.R. 3-1(e),
`whichever is earlier;
`
`
`This requirement does not apply because the asserted patent is not subject to pre-AIA law.
`
`4
`
`
`Petitioner GR Energy Services - Ex. 1017, p. 4
`
`

`

`3) a copy of the file history for each patent-in-suit;
`
`
`The file history for the patent-in-suit is produced with beginning bates number
`
`CANATEX004733.
`
`4) license agreements for the patents-in-suit; and
`
`
`License agreements related to the patent-in-suit are produced with beginning bates numbers
`
`CANATEX004052 and CANATEX003994.
`
`5) documents evidencing the chain of title of the patents-in-suit.
`
`
`Documents evidencing the chain of title of the asserted patent are produced with beginning
`
`bates numbers CANATEX004175, CANATEX004182, CANATEX004032, CANATEX004188,
`
`CANATEX004190,
`
`
`
`5
`
`
`Petitioner GR Energy Services - Ex. 1017, p. 5
`
`

`

`Dated: February 24, 2023
`
`
`
`
`
`Respectfully submitted,
`
`/s/ J. David Cabello
`J. David Cabello
`Attorney-in-Charge
`Texas Bar No. 03574500
`Stephen D. Zinda
`Texas Bar No. 24084147
`James H. Hall
`Texas Bar No. 24041040
`Munira A. Jesani
`Texas Bar No. 24101967
`Cabello Hall Zinda, PLLC
`801 Travis Street, Suite 1610
`Houston, TX 77002
`Telephone: (832) 631-9990
`Facsimile: (832) 631-9991
`David@CHZFirm.com
`Stephen@CHZFirm.com
`James@CHZFirm.com
`MJesani@CHZFirm.com
`
`ATTORNEYS FOR PLAINTIFF
`CANATEX COMPLETIONS
`SOLUTIONS, INC.
`
`6
`
`
`Petitioner GR Energy Services - Ex. 1017, p. 6
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that counsel of record in the above-identified action have
`
`been served via e-mail with a copy of this document on February 24, 2023.
`
`
`
`
`
`Aimee Perilloux Fagan
` afagan@sidley.com
`
` Phillip M. Aurentz
` paurentz@sidley.com
`
` Amanda Crawford-Steger
` asteger@sidley.com
`
`
`Andrew Langford
`alangford@sidley.com
`
`
`
`
`
`
`
`SIDLEY AUSTIN LLP
`2021 McKinney Avenue, Suite 2000
`Dallas, Texas 75201
`
`Counsel for Defendants Wellmatics, LLC,
`GR Energy Services, LLC, GR Energy Services Management, LP,
`GR Energy Services Operating GP, LLC, and GR Wireline, L.P.
`
`
`
`
`
`
`
`
`
`
`
`/s/ Munira Jesani
`Munira Jesani
`
`
`
`
`
`7
`
`
`Petitioner GR Energy Services - Ex. 1017, p. 7
`
`