Dec 29 2017

HOUSTON—The latest chapter of the two-year IP struggle between two energy industry companies took place on Dec. 21, with Womble Bond Dickinson client DynaEnergetics US, Inc., and co-defendants Anderson Perforating Services, LLC (“API”), and Tong Petrotech, Inc. (“Tong”) winning partial attorneys’ fees and expenses. A federal judge granted DynaEnergetics’ request for attorneys’ fees and expenses related to a trademark dispute. The Court agreed with the defendants that the accompanying patent case was “weak,” but concluded that it “was not so weak that it warrants a finding of exceptionality.” However, the Court found that the plaintiff GeoDynamics’ trademark case “stands out from others as to the substantive weakness of GeoDynamics’s litigating position” and awarded fees to DynaEnergetics.

“The federal courts have a high standard for awarding attorneys’ fees and expenses, so to be able to win on this motion demonstrates that our clients and the legal team presented a compelling case,” said Womble Bond Dickinson trial lawyer Barry Herman. The outcome is particularly notable in the Eastern District of Texas, a notoriously difficult venue for IP defendants.

This is the latest of several victories for the co-defendants in this dispute. In March, DynaEnergetics, API, and Tong won a complete victory in a long-running patent dispute with rival GEODynamics. The plaintiff had alleged infringement of a method patent for use of DynaEnergetics’ DPEX® shaped charges in oil and gas well perforations. The four-day trial took place in the U.S. District Court for the Eastern District of Texas, and the jury returned a unanimous verdict finding no infringement and invalidity of each asserted claim.

Less than a month later, DynaEnergetics, API, and Tong successfully canceled a trademark registration held by GEODynamics. Judge Roy Payne found the plaintiff’s alleged mark “reactive” to be generic, even though it had achieved incontestable status. The ruling means GEODynamics cannot claim the word “reactive” as a trademark in marketing its products or continue its attempts to enforce its rights against others and served as the basis for the Court’s award of fees.

Herman, Preston Heard, Christine Dupriest, Michael Nullet, and Will Hubbard represented DynaEnergetics, API, and Tong in both the patent trial and the trademark proceedings, and Sarah Keefe was a key member of the trademark team. Lisa Moyles of Moyles IP, LLC made significant contributions to the defense effort during the past two years, and Findlay Craft PC’s Eric Findlay and Walter Lackey Jr. were also valued members of the trial team.

DynaEnergetics is a business of publicly traded DMC Global Inc. (NASDAQ: BOOM).

Barry Herman is an intellectual property litigation partner working in Baltimore. He represents both domestic and foreign clients in a wide range of intellectual property matters, with an emphasis on patent litigation in district courts, the International Trade Commission, and the USPTO.

Preston Heard is an experienced intellectual property litigation attorney who has represented clients in U.S. District Court in numerous states, as well as before the International Trade Commission, and before the PTAB in post-grant proceedings. Preston’s practice is focused primarily on patent litigation and covers a broad range of technologies, including the mechanical, computer, and chemical arts.

Christine Dupriest is an experienced litigator who focuses her practice on intellectual property and patent-related disputes for clients in a wide range of industries, including manufacturers and distributors of software, chemical, medical device and packaging products.

Michael Nullet is a registered patent attorney and focuses his practice on intellectual property and patent-related disputes. Before pursuing a legal career, Nullet worked for an IT startup that coordinated a multimillion-dollar autism research initiative across a dozen universities.

Sarah Keefe has more than 20 years experience in developing, clearing, registering and protecting trademarks and service marks. A significant portion of Sarah’s practice involves the handling of intellectual property disputes.

Will Hubbard advises clients on patent issues involving diverse technologies and represents clients in trademark and antitrust litigation. He also serves as an Associate Professor of Law at the University of Baltimore Law School.