Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 1 of 23
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`GALVESTON DIVISION
`
`G&H DIVERSIFIED MANUFACTURING,
`LP
`
`Plaintiff and Counterclaim-Defendant,
`
`and
`
`YELLOW JACKET OIL TOOLS, LLC
`Counterclaim-Defendant
`
`Civil Action No: 3:20-CV-376
`
`v.
`
`DYNAENERGETICS EUROPE GMBH, and
`DYNAENERGETICS US, INC.,
`Defendants and Counterclaim-
`Plaintiffs.
`
`DYNAENERGETICS EUROPE GMBH AND DYNAENERGETICS US, INC.’S
`ANSWER TO COMPLAINT AND COUNTERCLAIM
`
`Defendants DynaEnergetics US, Inc. (“DynaEnergetics US”) and DynaEnergetics
`
`Europe GmbH
`
`(“DynaEnergetics Europe”)
`
`(collectively “DynaEnergetics” or
`
`“Defendants”), by and through counsel, hereby respond to the numbered paragraphs of
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`G&H Diversified Manufacturing, LP’s (“G&H” or “Plaintiff”) Complaint for Declaratory
`
`Judgment.
`
`I.
`
`THE PARTIES
`
`1.
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`DynaEnergetics lacks knowledge or information sufficient to form a
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`belief about the truth of the allegations of Paragraph 1, and therefore denies the same.
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`2.
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`DynaEnergetics admits the allegations in Paragraph 2.
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`GHD
`1023
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`Page 1 of 23 (PGR2021-00078)
`G&H DIVERSIFIED MANUFACTURING, LP v. DYNAENERGETICS EUROPE GMBH
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`GALVESTON DIVISION
`
`G&H DIVERSIFIED MANUFACTURING,
`LP
`
`Plaintiff and Counterclaim-Defendant,
`
`and
`
`YELLOW JACKET OIL TOOLS, LLC
`Counterclaim-Defendant
`
`Civil Action No: 3:20-CV-376
`
`v.
`
`DYNAENERGETICS EUROPE GMBH, and
`DYNAENERGETICS US, INC.,
`Defendants and Counterclaim-
`Plaintiffs.
`
`DYNAENERGETICS EUROPE GMBH AND DYNAENERGETICS US, INC.’S
`ANSWER TO COMPLAINT AND COUNTERCLAIM
`
`Defendants DynaEnergetics US, Inc. (“DynaEnergetics US”) and DynaEnergetics
`
`Europe GmbH
`
`(“DynaEnergetics Europe”)
`
`(collectively “DynaEnergetics” or
`
`“Defendants”), by and through counsel, hereby respond to the numbered paragraphs of
`
`G&H Diversified Manufacturing, LP’s (“G&H” or “Plaintiff”) Complaint for Declaratory
`
`Judgment.
`
`I.
`
`THE PARTIES
`
`1.
`
`DynaEnergetics lacks knowledge or information sufficient to form a
`
`belief about the truth of the allegations of Paragraph 1, and therefore denies the same.
`
`2.
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`DynaEnergetics admits the allegations in Paragraph 2.
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`GHD
`1023
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`Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 2 of 23
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`3.
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`DynaEnergetics admits the allegations in Paragraph 3.
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`II.
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`JURISDICTION AND VENUE
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`4.
`
`DynaEnergetics admits that G&H’s Complaint purports to state a claim
`
`for declaratory judgment that it does not infringe U.S. Patent No. 10,844,697 (“the
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`’697 Patent”) but denies that G&H’s claim has any merit. DynaEnergetics Europe
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`admits that it is the owner of the ’697 Patent. DynaEnergetics denies the remaining
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`allegations of Paragraph 4.
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`5.
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`DynaEnergetics denies the allegations in Paragraph 5. Plaintiff’s
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`jurisdictional allegations were premised on a false representation that DynaEnergetics
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`sent a letter on September 11, 2020 to G&H, therefore there was no subject matter
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`jurisdiction at the time Plaintiff filed suit. However, Plaintiff has now represented that
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`it bears responsibility for the manufacture and/or sale of the infringing products, and
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`therefore DynaEnergetics does not contest subject matter jurisdiction but contends that
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`this action should not proceed or should be transferred in light of the first-filed Western
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`District of Texas action.1 See D.I. 16.
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`6.
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`DynaEnergetics US’s headquarters is located within this District.
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`DynaEnergetics US admits that the Court has personal jurisdiction but contends that
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`this action should not proceed or should be transferred in light of the first-filed Western
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`District of Texas action. See D.I. 16. Except as expressly admitted, DynaEnergetics
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`denies the remaining allegations of Paragraph 6.
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`1 See DynaEnergetics Europe GmbH v. Yellow Jacket Oil Tools, LLC, Case No. 6:20-cv-01110-ADA (WDTX), Dkt.
`Nos. 1, 17 (Complaint and First Amended Complaint).
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`7.
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`DynaEnergetics Europe admits that the Court has personal jurisdiction
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`and that it is a plaintiff in other cases in this District, including Case Nos. 4:17-cv-
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`3784 and 4:20-cv-2123, but contends that this action should not proceed or should be
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`transferred in light of the first-filed Western District of Texas action. See D.I. 16.
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`Except as expressly admitted, DynaEnergetics denies the remaining allegations of
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`Paragraph 7.
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`8.
`
`DynaEnergetics US admits that venue is proper in this judicial district but
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`contends that this action should not proceed or should be transferred in light of the
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`first-filed Western District of Texas action. See D.I. 16. Except as expressly admitted,
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`DynaEnergetics denies the remaining allegations of Paragraph 8.
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`9.
`
`DynaEnergetics Europe admits that venue is proper in this judicial district
`
`but contends that this action should not proceed or should be transferred in light of the
`
`first-filed Western District of Texas action. See D.I. 16. Except as expressly admitted,
`
`DynaEnergetics denies the remaining allegations of Paragraph 9.
`
`III. BACKGROUND FACTS
`10. DynaEnergetics denies the allegations of Paragraph 10. DynaEnergetics
`
`did not send any letter addressed to G&H. DynaEnergetics sent a letter addressed to
`
`Mr. Jimmy Kash as the president of Yellow Jacket Oil Tools (“Yellow Jacket”) on
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`September 11, 2020 that alleged that Yellow Jacket’s Pre-Wired Perforating Gun
`
`would be encompassed by then-pending U.S. Patent Application No. 16/585,790 and
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`that the corresponding patent was expected to issue imminently. In that letter,
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`DynaEnergetics requested that Yellow Jacket confirm in writing that Yellow Jacket
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`would cease importing, making, using, marketing, promoting, selling, or offering for
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`sale Yellow Jacket’s Pre-Wired Perforating Gun product in the United States. The
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`letter addressed to Yellow Jacket did state that it served “as notice of the existence of
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`DynaEnergetics’ patent rights for the purpose of determining enhanced treble
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`damages, punitive damages, and/or attorney’s fees” and stated that DynaEnergetics
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`“fully intends to protect its patented technology by all available legal remedies should
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`your company continue to fail to respect DynaEnergetics’ intellectual property rights.”
`
`11. DynaEnergetics admits the allegations in Paragraph 11.
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`12. DynaEnergetics denies the allegations in Paragraph 12.
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`13. DynaEnergetics admits that G&H’s Complaint purports to state a claim
`
`for declaratory relief but denies that G&H’s claim has any merit. Except as expressly
`
`admitted, DynaEnergetics denies the remaining allegations of Paragraph 13.
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`COUNT I: DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`OF U.S. PATENT NO. 10,844,697
`
`14. DynaEnergetics restates and incorporates each of its responses in the
`
`preceding paragraphs as if fully stated herein.
`
`15. DynaEnergetics Europe admits that it is the owner of the ’697 Patent
`
`titled “Perforation Gun Components and System.” DynaEnergetics admits that Exhibit
`
`1 attached to the Complaint (D.I. 4-2) purports to be a copy of the ’697 Patent. Except
`
`as expressly admitted, DynaEnergetics denies
`
`the remaining allegations of
`
`Paragraph 15.
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`16. DynaEnergetics US admits that it is the exclusive licensee of the ’697
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`Patent.
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`17. DynaEnergetics denies the allegations in Paragraph 17.
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`18. DynaEnergetics denies the allegations in Paragraph 18.
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`19. DynaEnergetics denies the allegations in Paragraph 19.
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`COUNT II: DECLARATORY JUDGMENT THAT PRE-ISSUANCE
`DAMAGES ARE NOT AVAILABLE FOR U.S. PATENT NO. 10,844,697
`
`20. DynaEnergetics restates and incorporates each of its responses in the
`
`preceding paragraphs as if fully stated herein.
`
`21. DynaEnergetics admits that the ’697 Patent issued on November 24, 2020
`
`and that DynaEnergetics is entitled to pre-issuance damages for patent infringement
`
`under 35 U.S.C. § 154(d). Except as expressly admitted, DynaEnergetics denies the
`
`remaining allegations of Paragraph 21.
`
`22. DynaEnergetics denies the allegations in Paragraph 22.
`
`23. DynaEnergetics denies the allegations in Paragraph 23.
`
`24. DynaEnergetics denies the allegations in Paragraph 24.
`
`DynaEnergetics denies that G&H is entitled to any of the requested relief.
`
`COUNTERCLAIM
`
`Defendants
`
`and Counterclaim-Plaintiffs DynaEnergetics US,
`
`Inc.
`
`(“DynaEnergetics US”) and DynaEnergetics Europe GmbH (“DynaEnergetics
`
`Europe”) (collectively “DynaEnergetics” or “Counterclaim-Plaintiffs”), by and
`
`through counsel, assert the following counterclaim for patent infringement against
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`Plaintiff and Counterclaim-Defendant G&H Diversified Manufacturing, LP’s
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`(“G&H”) and Counterclaim-Defendant Yellow Jacket Oil Tools, LLC (“Yellow
`
`Jacket”) (collectively, “Counterclaim-Defendants”).2
`
`THE PARTIES
`
`1.
`
`Defendant and Counterclaim-Plaintiff DynaEnergetics Europe is a
`
`corporation organized under the laws of Germany, with its headquarters at
`
`Kaiserstrasse 3, 53840 Troisdorf, Germany.
`
`2.
`
`Defendant and Counterclaim-Plaintiff DynaEnergetics US
`
`is a
`
`corporation organized under the laws of the State of Colorado, with its headquarters at
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`2050 W. Sam Houston Parkway S., Suite 1750, Houston, TX 77042-3659.
`
`DynaEnergetics US has a regular and established place of business in the Western
`
`District of Texas as 3580 HCR 1145 Loop North, Blum, TX 76627.
`
`3.
`
`Upon information and belief, Plaintiff and Counterclaim-Defendant
`
`G&H is a Texas limited partnership with its principal place of business at 11927
`
`Tanner Rd, Houston, TX 77041-6703. On its website, G&H also lists 11660
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`Brittmoore Park Dr., Houston, Texas 77041-6917 as an address for its headquarters.
`
`4.
`
`Upon information and belief, Counterclaim-Defendant Yellow Jacket is
`
`a Texas limited liability company with a registered address of 11660 Brittmore Park
`
`Dr., Houston, Texas 77041-6917. On its website, also lists 11670 Brittmore Park Dr.,
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`2 This counterclaim for infringement is compulsory under Fed. R. Civ. P. 13(a). See Polymer Indus. Prods. Co. v.
`Bridgestone/Firestone, Inc., 347 F.3d 935, 938 (Fed. Cir. 2003). By bringing this compulsory counterclaim,
`DynaEnergetics does not waive its challenge to the most convenient and appropriate venue for this action, which
`DynaEnergetics contends is the Western District of Texas. See D.I 16.
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`Houston, Texas 77041-6917 as an address for its headquarters. Counterclaim-
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`Defendant Yellow Jacket may be served with process at 11927 Tanner Road, Houston,
`
`TX, 77041, to its registered agent or as otherwise authorized under applicable law.
`
`5.
`
`Upon information and belief, Counterclaim-Defendants have regular and
`
`established places of business throughout Texas and in this District, including at 11660
`
`Brittmoore Park Dr., Houston, Texas 77041-6917 (G&H) and 11670 Brittmoore Park
`
`Dr., Houston, Texas 77041 (Yellow Jacket). Counterclaim-Defendants list these
`
`offices on their websites. However, Counterclaim-Defendants also have regular and
`
`established places of business throughout the Western District of Texas, including at
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`4608 S County Road 1310, Odessa, TX 79765.
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`JURISDICTION AND VENUE
`
`6.
`
`This is an action for patent infringement under the Patent Laws of the
`
`United States, 35 U.S.C. § 1 et seq., including 35 U.S.C. § 271.
`
`7.
`
`For purposes of this Counterclaim, DynaEnergetics states that this Court
`
`has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this
`
`action arises under the patent laws of the United States, including 35 U.S.C. § 1 et seq.
`
`However, DynaEnergetics contends that this declaratory judgment action should not
`
`proceed or should be transferred in light of the first-filed Western District of Texas
`
`action. See D.I. 16.
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`8.
`
`For purposes of this Counterclaim, DynaEnergetics states that this Court
`
`has personal jurisdiction over Counterclaim-Defendants in this District because
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`Counterclaim-Defendants have principal places of business located within this District
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`and because Counterclaim-Defendants actively and regularly conduct business within
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`the State of Texas and within this District. Counterclaim-Defendants have represented
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`that Yellow Jacket is owned and controlled by G&H. Further, upon information and
`
`belief, infringement is occurring within the State of Texas and this District through
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`Counterclaim-Defendants’ manufacture and distribution of the “YJOT Pre-Wired
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`Perforating Gun” at their Texas manufacturing and distribution facilities, and within
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`the State of Texas and this District through Counterclaim-Defendants’ sales of or
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`offers to sell the YJOT Pre-Wired Perforating Gun. However, DynaEnergetics
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`contends that this declaratory judgment action should not proceed or should be
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`transferred in light of the first-filed Western District of Texas action. See D.I. 16.
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`9.
`
`Defendants also have regular and established places of business located
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`within the Western District of Texas and Defendants actively and regularly conduct
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`business within the Western District of Texas. Further, upon information and belief,
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`infringement is occurring within the Western District of Texas through Defendants’
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`manufacture and distribution of the “YJOT Pre-Wired Perforating Gun” at their Texas
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`manufacturing and distribution facilities, and within the Western District of Texas
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`through Defendants’ sales of or offers to sell the YJOT Pre-Wired Perforating Gun.
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`Specifically, upon information and belief, Defendants have manufactured, distributed,
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`sold, and/or offered to sell the YJOT Pre-Wired Perforating Gun to customers for use
`
`throughout the Permian Basin in Texas, which is primarily located within the Western
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`District of Texas, including in Andrews, Crane, Ector, Jeff Davis, Loving, Martin,
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`Midland, Pecos, Reeves, Upton, Ward, and Winkler counties. Upon information and
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`belief, Defendant employs at least one employee, including a Regional Service
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`Manager, at its Odessa, TX facility, and a Sales Representative who travels to and/or
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`sells products within the Permian Basin in furtherance of its regular and established
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`business within the Western District of Texas.
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`10.
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`For purposes of this Counterclaim, DynaEnergetics states that venue as
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`to Counterclaim-Defendants is thus proper in this District under 28 U.S.C. §§ 1391(b)
`
`and (c) and 1400(b). However, DynaEnergetics contends that this declaratory
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`judgment action should not proceed or should be transferred in light of the first-filed
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`Western District of Texas action. See D.I. 16.
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`FACTS
`
`DynaEnergetics’ Technology
`
`A.
`11. DynaEnergetics is a leader in the field of well completion, perforating,
`
`well abandonment, and seismic technologies. DynaEnergetics has a long history of
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`technological innovation, including innovation in the manufacture of detonators,
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`detonating cords, and perforating hardware.
`
`12.
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`In connection with its research and development efforts, DynaEnergetics
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`has developed groundbreaking inventions for a wireless detonator assembly, a pre-
`
`wired perforating gun assembly, and methods of assembling the pre-wired perforating
`
`gun assembly. These inventions are currently protected by multiple United States
`
`patents, including U.S. Patent No. 10,844,697 (the “’697 Patent”).
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`13. The ’697 Patent, entitled “PERFORATION GUN COMPONENTS AND
`
`SYSTEM,” was duly and legally issued on November 24, 2020 to DynaEnergetics
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`Europe GmbH. A true and accurate copy of the ’697 Patent is attached hereto and
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`incorporated herein by reference as Exhibit A.
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`14. DynaEnergetics makes, distributes, offers to sell, and sells perforating
`
`gun systems that practice the ’697 Patent. DynaEnergetics Europe exclusively licenses
`
`DynaEnergetics US to make, distribute, offer to sell, and sell perforating gun systems
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`that practice the ’697 Patent in the United States. DynaEnergetics has marked the
`
`covered products in accordance with 35 U.S.C. § 287.
`
`15. Claim 1 of the ’697 Patent recites:
`
`1. An electrical connection assembly for establishing an electrical
`connection in a tool string, the electrical connection assembly
`comprising:
`a tandem seal adapter having a first end, a second end and a bore
`that extends from the first end to the second end and entirely through the
`tandem seal adapter;
`a perforation gun system comprising a first outer gun carrier, a
`shaped charge, and a first detonator, wherein the shaped charge and the
`first detonator are positioned within the first outer gun carrier, wherein
`the first outer gun carrier is connected to the first end of the tandem seal
`adapter; and
`a pressure bulkhead having an outer surface, a first end and a
`second end, the outer surface of the pressure bulkhead is sealing received
`in the bore of the tandem seal adapter, the pressure bulkhead also having
`a pin connector assembly extending through the pressure bulkhead from
`a first pin connector end to a second pin connector end, and configured
`to relay an electrical signal from the first end of the pressure bulkhead to
`the second end of the pressure bulkhead, wherein the first pin connector
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`end extends beyond the first end of the pressure bulkhead and the second
`pin connector end extends beyond the second end of the pressure
`bulkhead, wherein
`the first detonator is in electrical communication with the pin
`connector assembly, wherein the tandem seal adapter and the pressure
`bulkhead are configured to provide a seal between the detonator and an
`environment on the second end of the tandem seal adapter.
`B. G&H and Yellow Jacket
`16. Counterclaim-Defendants are competitors of DynaEnergetics, including
`
`in the field of perforating systems. Counterclaim-Defendants have, upon information
`
`and belief, either alone or in concert, manufactured, distributed, sold, or offered to sell
`
`the YJOT Pre-Wired Perforating Gun in the United States, including within the State
`
`of Texas and within this District.
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`17. Upon information and belief, Yellow Jacket is wholly owned by G&H.
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`Ex. B (Decl. of John Kaiser, Case No. 6:20-cv-01110-ADA (WDTX), Dkt. 16-1 ¶ 4).
`
`Yellow Jacket was formed in 2015 under the name Yellow Jacket Equipment LLC,
`
`which was later amended in 2019 to Yellow Jacket Oil Tools, LLC. Id. ¶¶ 5-6. G&H
`
`is Yellow Jacket’s managing and sole member. G&H and Yellow Jacket share a CEO,
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`President, Vice President of Sales, CFO, Director of Supply Chain, Director of
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`Business Systems, and HR Manager. Compare Ex. C with Ex. D. Upon information
`
`and belief, Yellow Jacket additionally functions as an alter ego of G&H.
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`18. Yellow Jacket, either on its own or as an alter ego of G&H, describes and
`
`provides photos of the YJOT Pre-Wired Perforating Gun on its website at
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`www.yjoiltools.com/Perforating-Guns/Pre-Wired-Perforating-Gun. A copy of Yellow
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`Jacket’s website advertising the YJOT Pre-Wired Perforating Gun and the
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`corresponding photos (as accessed on March 8, 2021) is attached hereto and
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`incorporated herein by reference as Exhibit E.
`
`19. Yellow Jacket’s website also provides a downloadable PDF containing
`
`specifications for the YJOT Pre-Wired Perforating Gun. A copy of Yellow Jacket’s
`
`downloadable PDF specifications for the YJOT Pre-Wired Perforating Gun (as
`
`downloaded on March 8, 2021) is attached hereto and incorporated herein by reference
`
`as Exhibit F.
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`20. The YJOT Pre-Wired Perforating Gun infringes one or more claims of
`
`the ’697 Patent, including at least each and every element of Claim 1 either literally or
`
`equivalently.
`
`21. The YJOT Pre-Wired Perforating Gun either literally or equivalently
`
`contains an electrical connection assembly for establishing an electrical connection in
`
`a tool string. An example of this is shown in the below photo from Exhibit F, and from
`
`the below still image of a video displaying the YJOT Pre-Wired Perforating Gun,
`
`previously available at https://www.youtube.com/watch?v=Hm4vE46ZgK03 (last
`
`accessed November 24, 2020) (annotations added).
`
`3 On at least November 24, 2020, the YouTube video displaying the YJOT Pre-Wired Perforating Gun was active.
`However, Counterclaim-Defendants appear to have removed the video since that time and this link is no longer active.
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`22. The electrical connection assembly in the YJOT Pre-Wired Perforating
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`Gun either literally or equivalently comprises a tandem seal adapter having a first end,
`
`a second end and a bore that extends from the first end to the second end and entirely
`
`through the tandem seal adapter. The tandem seal adapter, as shown in the still image
`
`above, connects the top end and bottom end of successive gun assemblies.
`
`23. The electrical connection assembly in the YJOT Pre-Wired Perforating
`
`Gun either literally or equivalently comprises a perforation gun system comprising a
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`first outer gun carrier, a shaped charge, and a first detonator, wherein the shaped charge
`
`and the first detonator are positioned within the first outer gun carrier, wherein the first
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`outer gun carrier is connected to the first end of the tandem seal adapter. An example
`
`of this is shown in the below photo from Exhibit E, which shows the YJOT Pre-Wired
`
`Perforating Gun outer gun carrier, an assembly including a carrier for housing a shaped
`
`charge and a first detonator (not shown). The opening to receive the detonator, which
`
`is on the side not shown in the first image below, is shown in the below still image
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`from the video of the YJOT Pre-Wired Perforating Gun previously available at
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`https://www.youtube.com/watch?v=Hm4vE46ZgK0 (last accessed November 24,
`
`2020) (annotations added). The YJOT Pre-Wired Perforating Gun assembly is
`
`positioned within the outer gun carrier, wherein the outer gun carrier is connected to
`
`the first end of the tandem seal adapter (not shown in the figures below).
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`Page 14 of 23 (PGR2021-00078)
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`Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 15 of 23
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`
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`24. The electrical connection assembly in the YJOT Pre-Wired Perforating
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`Gun either literally or equivalently comprises a pressure bulkhead having an outer
`
`surface, a first end and a second end, the outer surface of the pressure bulkhead is
`
`sealing received in the bore of the tandem seal adapter, the pressure bulkhead also
`
`having a pin connector assembly extending through the pressure bulkhead from a first
`
`pin connector end to a second pin connector end, and configured to relay an electrical
`
`signal from the first end of the pressure bulkhead to the second end of the pressure
`
`bulkhead, wherein the first pin connector end extends beyond the first end of the
`
`pressure bulkhead and the second pin connector end extends beyond the second end of
`
`the pressure bulkhead. As noted in the below description and photo from Exhibit F,
`
`the YJOT Pre-Wired Perforating Gun has pre-installed wires connecting to “a plunging
`
`gun contact that mates directly to the conventional pressure or pass-thru switch in the
`
`sub above.” That description of the YJOT Pre-Wired Perforating Gun indicates that it
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`Page 15 of 23 (PGR2021-00078)
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`
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`Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 16 of 23
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`comprises a pressure bulkhead received in the bore of the tandem seal adapter and
`
`having a pin connector assembly extending through the pressure bulkhead from a first
`
`pin connector end to a second pin connector end that is configured to relay an electrical
`
`signal from the first end of the pressure bulkhead to the second end of the pressure
`
`bulkhead, wherein the first pin connector end extends beyond the first end of the
`
`pressure bulkhead and the second pin connector end extends beyond the second end of
`
`the pressure bulkhead. This configuration is also shown in the below still images from
`
`the video of the YJOT Pre-Wired Perforating Gun previously available at
`
`https://www.youtube.com/watch?v=Hm4vE46ZgK0 (last accessed November 24,
`
`2020) (annotations added).
`
`
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`Page 16 of 23 (PGR2021-00078)
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`Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 17 of 23
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`
`
`25. The electrical connection assembly in the YJOT Pre-Wired Perforating
`
`Gun either literally or equivalently comprises the first detonator being in electrical
`
`communication with the pin connector assembly, wherein the tandem seal adapter and
`
`the pressure bulkhead are configured to provide a seal between the detonator and an
`
`environment on the second end of the tandem seal adapter.
`
`26. Counterclaim-Defendant Yellow Jacket has known of the ’697 Patent and
`
`its own infringing activities since at least as early as December 4, 2020, the filing date
`
`of the Western District of Texas action. Further, on September 11, 2020,
`
`DynaEnergetics put Counterclaim-Defendant Yellow Jacket on notice of U.S. Patent
`
`Application 16/585,790 (the “’790 Application”) that led to the ’697 Patent. A copy
`
`of the letter sent to Counterclaim-Defendant Yellow Jacket on September 11, 2020 is
`
`attached hereto and incorporated herein by reference as Exhibit G. The claims in the
`
`Page 17 of 23 (PGR2021-00078)
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`Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 18 of 23
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`published ’790 Application are identical to the claims that actually issued in the ’697
`
`Patent. Counterclaim-Defendant Yellow Jacket has been on notice of the claims that
`
`issued in the ’697 Patent since at least as early as September 11, 2020. Additionally,
`
`Counterclaim-Defendant G&H has represented that it interpreted the September 11,
`
`2020 letter to Yellow Jacket as a threat of infringement against G&H, despite the letter
`
`not being sent to G&H, and thus Counterclaim-Defendant G&H has been on notice of
`
`the claims that issued in the ’697 Patent since at least as early as September 11, 2020.
`
`Moreover, according to Counterclaim-Defendants, Yellow Jacket operates as an alter
`
`ego of G&H and thus both Counterclaim-Defendants were on notice of the claims that
`
`issued in the ’697 Patent since at least as early as September 11, 2020. Counterclaim-
`
`Defendants did not respond to the September 11, 2020 letter nor have they ceased their
`
`infringing activity.
`
`27. Because Counterclaim-Defendants are using infringing technology to
`
`compete directly with DynaEnergetics,
`
`it
`
`is causing
`
`irreparable harm
`
`to
`
`DynaEnergetics, thereby forcing DynaEnergetics to bring this lawsuit to protect its
`
`intellectual property.
`
`COUNT I – INFRINGEMENT OF THE ’697 PATENT
`
`28. DynaEnergetics repeats and incorporates by reference the allegations
`
`contained in the foregoing paragraphs, as if stated fully herein.
`
`29. DynaEnergetics is the owner of the ’697 Patent, with all substantive
`
`rights in and to that patent, including the sole and exclusive right to prosecute this
`
`Page 18 of 23 (PGR2021-00078)
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`Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 19 of 23
`
`action and enforce the ’697 Patent against infringers, and to collect damages for all
`
`relevant times.
`
`30. Counterclaim-Defendants have, either alone or in concert, directly
`
`infringed and continue to infringe the ’697 Patent, either literally or through the
`
`doctrine of equivalents, by making, using, importing, supplying, distributing, selling
`
`and/or offering for sale the YJOT Pre-Wired Perforating Gun within the United States,
`
`in violation of 35 U.S.C. § 271(a).
`
`31. Upon information and belief, Counterclaim-Defendants have made and
`
`are continuing to make unlawful gains and profits from its infringement of the ’697
`
`Patent.
`
`32. At least as early as the filing of this complaint, Counterclaim-Defendants
`
`have been on notice of and have had knowledge of the ’697 Patent and of
`
`DynaEnergetics’ allegations of infringement. Counterclaim-Defendants’ infringement
`
`of the ’697 Patent has been willful and deliberate at least since this date.
`
`33. DynaEnergetics has been damaged and
`
`irreparably harmed by
`
`Counterclaim-Defendants’ infringement of the ’697 Patent for which DynaEnergetics
`
`is entitled to relief under 35 U.S.C. § 284 and 35 U.S.C. § 154(d). DynaEnergetics
`
`will continue to suffer damages and irreparable harm unless Counterclaim-Defendants’
`
`are enjoined preliminarily and permanently by this Court from continuing its
`
`infringement.
`
`
`
`
`
`Page 19 of 23 (PGR2021-00078)
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`Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 20 of 23
`
`ATTORNEYS’ FEES
`
`Pursuant to 35 U.S.C. § 285, DynaEnergetics is entitled to and hereby
`
`
`
`34.
`
`demands its reasonable attorneys’ fees in this case.
`
`JURY DEMAND
`
`Pursuant to Rule 38 of the Federal Rules of Civil Procedure,
`
`
`
`35.
`
`DynaEnergetics respectfully requests a trial by jury of any issues so triable.
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, DynaEnergetics respectfully asks that the Court issue citation for
`
`Counterclaim-Defendants to appear and answer and seeks the following additional relief:
`
`A.
`
`that Counterclaim-Defendants be declared to have directly infringed one or
`
`more of the claims of the ’697 Patent under 35 U.S.C. § 271(a);
`
`B.
`
`that that Court issue a preliminary and permanent injunction pursuant to 35
`
`U.S.C. § 283 against the continuing infringement of the claims of the ’697 Patent by
`
`Counterclaim-Defendants, its officers, agents, employees, attorneys, representatives, and
`
`all others acting in concert therewith;
`
`C.
`
`that the Court order an accounting for all monies received by or on behalf of
`
`Counterclaim-Defendants and all damages sustained by DynaEnergetics as a result of
`
`Counterclaim-Defendants’ aforementioned infringements, that such monies and damages
`
`be awarded to DynaEnergetics, and that interest and costs be assessed against
`
`Counterclaim-Defendants pursuant to 35 U.S.C. § 284 and 35 U.S.C. § 154(d);
`
`D.
`
`that the Court declare that Counterclaim-Defendants’ infringement was and
`
`is willful from the time it became aware of the infringing nature of their product and award
`
`Page 20 of 23 (PGR2021-00078)
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`Case 3:20-cv-00376 Document 28 Filed on 03/08/21 in TXSD Page 21 of 23
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`treble damages for the period of such willful infringement of the ’697 Patent, pursuant to
`
`35 U.S.C. § 284;
`
`E.
`
`that the Court declare this an exceptional case and order that Counterclaim-
`
`Defendants pay to DynaEnergetics its reasonable attorneys’ fees and costs, pursuant to 35
`
`U.S.C. § 285; and
`
`F.
`
`that the Court award such further and other relief to DynaEnergetics as the
`
`Court deems just, together with its costs and disbursements in this action.
`
`
`
`
`
`Respectfully submitted,
`
`WOMBLE BOND DICKINSON (US) LLP
`
`By: /s/ Barry J. Herman
`
`Barry J. Herman (pro hac vice)
`Admitted to the Maryland State Bar
`100 Light St, 26th Floor
`Baltimore, MD 21202
`Telephone: (410) 545-5830
`Email: Barry.Herman@wbd-us.com
`
`Attorney-in-Charge for Plaintiffs
`DynaEnergetics GmbH & Co., KG and
`DynaEnergetics US, Inc.
`
`
`
`
`
`
`
`
`Dated: March 8, 2021
`
`
`
`
`
`
`
`
`
`
`
`OF COUNSEL:
`
`WOMBLE BOND DICKINSON (US) LLP
`Preston H. Heard (pro hac)
`Georgia Bar No. 476319
`271 17th Street, NW, Suite 2400
`Atlanta, GA 30363
`Telephone: (404
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