Paper No. 16
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BAKER HUGHES INCORPORATED
`and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.
`Patent Owner
`
`______________
`
`
`Case IPR2016-00596
`Patent 7,134,505
`______________
`
`
`
`MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`36392154.1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BAKER HUGHES INCORPORATED
`and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.
`Patent Owner
`
`______________
`
`
`Case IPR2016-00596
`Patent 7,134,505
`______________
`
`
`
`MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`36392154.1
`
`
`
`Case IPR2016-00596
`Patent 7,134,505
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.123(a), Petitioners move to submit the following
`
`seven exhibits as supplement information that have already been served as
`
`supplement evidence: Exhibits 1020-1022, each of which is an affidavit or
`
`declaration addressing the public accessibility and therefore prior art status of
`
`Thomson (Ex. 1002); Exhibit 1023, which is a declaration addressing the public
`
`accessibility and therefore the prior art status of Ellsworth (Ex. 1004); Exhibits
`
`1024 and 1025, each of which is an affidavit or declaration addressing the public
`
`accessibility and therefore the prior art status of Eberhard (Ex. 1018); and Exhibit
`
`1026, which is an affidavit addressing the public accessibility and therefore the
`
`prior art status of Lagrone (Ex. 1017).
`
`Rapid Completions (exclusive licensee of Patent Owner, and acting party in
`
`this proceeding) challenged the publication—and therefore the prior art status—of
`
`Thomson in its Preliminary Response (and as reflected in the Institution Decision)
`
`and of Ellsworth, Eberhard, and Lagrone in its evidence objections. All instituted
`
`grounds depend on the prior art nature of Thomson, and instituted grounds three
`
`and seven also depend on the prior art nature of Ellsworth. In instituted grounds
`
`four and eight, Petitioners rely on Eberhard and Lagrone as reflecting the
`
`knowledge of a person of ordinary skill in the art (a “POSITA”), which supports
`
`Petitioners’ contention that it would have been obvious to combine the cited
`
`36392154.1
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`1
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`
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`Case IPR2016-00596
`Patent 7,134,505
`teachings of Echols (Ex. 1005) with those of Thomson. Petitioners received
`
`authorization to file this motion after timely requesting Board authorization by
`
`email on September 23, 2016.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On February 12, 2016, Petitioners filed IPR2016-00596 against claims
`
`1-7, 11, and 14-27 of U.S. Pat. No. 7,134,505 (“the ’505 Patent”). The petition
`
`raised eight grounds of unpatentability: (1) claims 1-7, 11, 14-22, and 24-26 are
`
`anticipated by Thomson (Ex. 1002, a 1997 SPE Paper); (2) claim 15 is obvious
`
`over Thomson and Hartley (Ex. 1003, U.S. Patent No. 5,449,039); (3) claims 23
`
`and 27 are obvious over Thomson and Ellsworth (Ex. 1004, a paper co-authored by
`
`one of the inventors (Themig) and published in the proceedings of a 1999
`
`conference in Calgary); (4) claim 11 is obvious over Thomson and Echols (Ex.
`
`1005, U.S. Patent No. 5,375,662); (5) claims 1-7, 11, 14-22, and 24-26 are obvious
`
`over Thomson and Brown (Ex. 1006, U.S. Patent No. 4,018,272); (6) claim 15 is
`
`obvious over Thomson, Hartley, and Brown; (7) claims 23 and 27 are obvious over
`
`Thomson, Ellsworth, and Brown; and (8) claim 11 is obvious over Thomson,
`
`Echols, and Brown. See Paper 10 (replacement petition) at, e.g., 3-4. The petition
`
`asserts that Thomson and Ellsworth are prior art under Section 102(b). Id.
`
`2.
`
`The asserted combination of Echols with Thomson in grounds four
`
`and eight (concerning dependent claim 11) is supported by Petitioners’ contention
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`36392154.1
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`2
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`
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`Case IPR2016-00596
`Patent 7,134,505
`concerning the knowledge that a POSITA would have had at the relevant time
`
`concerning aspects of Eberhard and Lagrone. See Paper 10 at 4 (listing Grounds 4
`
`and 8), 49-53 (explaining ground four, and discussing Eberhard (Ex. 1018) and
`
`Lagrone (Ex. 1017) at 51-52), and 53-59 (discussing grounds five – eight and the
`
`claim elements that would be met by Brown, if not by Thomson; claim 11 was not
`
`among them); see also Replacement Ex. 1007 (Dr. Daneshy) at ¶ 80 (discussing
`
`Eberhard and Lagrone), which was cited on page 52 of Paper 10.
`
`3.
`
`Ex. 1019, filed with the authorized replacement petition, is a February
`
`19, 2016 declaration by Dr. Hawkes, who attended a 1999 conference on
`
`horizontal well technology at which Ellsworth was presented and distributed to
`
`registered attendees. See Ex. 1019 at ¶¶ 1, 2, 4. Dr. Hawkes presented a paper he
`
`co-authored at that conference. Id. at ¶ 2. While at the conference, he received a
`
`copy of the conference proceedings. Id. at ¶ 4. He compared his personal copy of
`
`the conference proceedings (which was not included in the declaration) with a
`
`copy that was included with the declaration, and confirmed that the two appeared
`
`to be the same and that the copy included with his declaration appeared to be a true
`
`and correct copy. Id. at ¶ 3.
`
`4.
`
`Ellsworth (Ex. 1004) appears at pages 102-110 of Ex. 1019.
`
`36392154.1
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`3
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`Case IPR2016-00596
`Patent 7,134,505
`The earliest-claimed priority date of the ’505 Patent is November 19,
`
`5.
`
`2001, making the Section 102(b) critical date November 18, 2000 (the “Critical
`
`Date”). See Ex. 1001.
`
`6.
`
`Rapid Completions challenged the publication of Thomson, and
`
`therefore its status as prior art, in its Preliminary Response. See Paper 12 at 18-23.
`
`7.
`
`On August 24, 2016, trial was instituted on all challenged claims
`
`based on all asserted grounds. See Paper 13 at 17-18. The Board directed the
`
`parties to 37 C.F.R. § 42.64, regarding objections to evidence, and to 37 C.F.R.
`
`§ 42.123, regarding the submission of supplemental information. See id. at 12,
`
`fn. 6.
`
`8.
`
`Thomson
`
`includes
`
`the
`
`indicators of pre-critical date public
`
`dissemination listed by the Board on pages 11 and 12 of the Institution Decision
`
`(Paper 13).
`
`9.
`
`In its September 8, 2016 evidence objections (Paper 15), Rapid
`
`Completions again challenged the publication of Thomson, and therefore its status
`
`as prior art:
`
`To the extent Petitioners rely on the contents of this document for the
`truth of the matter asserted (for example, to establish public
`accessibility as a printed publication), Rapid Completions objects to
`such contents as inadmissible hearsay under FRE 801 and 802 that
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`36392154.1
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`4
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`Case IPR2016-00596
`Patent 7,134,505
`does not fall under any exceptions, including those of FRE 803, 804,
`805, or 807.
`
`Paper 15 at 1-2 (emphasis added).
`
`10.
`
` Also
`
`in
`
`its September 8, 2016 evidence objections, Rapid
`
`Completions challenged the publication of Ellsworth, Lagrone, and Eberhard—and
`
`therefore their status as prior art—using the same language quoted above for
`
`Thomson. See Paper 15 at 2-4.
`
`11. On September 22, 2016, Petitioners
`
`timely served on Rapid
`
`Completions supplemental evidence consisting of Exs. 1020-1026 described
`
`below, pursuant to 37 C.F.R. § 42.64(b)(2).
`
`12. On September 23, 2016, Petitioners emailed counsel for Rapid
`
`Completions, and asked whether they would oppose Petitioners’ forthcoming
`
`request to file this motion.
`
`13. Also on September 23, 2016, and within one month from institution,
`
`Petitioners emailed the Board, requesting permission to file this motion.
`
`Petitioners were granted permission on September 26, 2016.
`
`14. Ex. 1020 is a July 28, 2016 affidavit of Nancy Chaffin Hunter, the
`
`Coordinator of Acquisitions and Metadata Services at Colorado State University
`
`Libraries (“CSU Libraries”) in Fort Collins, Colorado, concerning a volume of the
`
`proceedings from a Society of Petroleum Engineers (“SPE”)-sponsored conference
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`36392154.1
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`5
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`
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`Case IPR2016-00596
`Patent 7,134,505
`in Bahrain (the “Book”) in which a copy of Thomson—identical to the Thomson of
`
`Ex. 1002 (though the quality of the images in the figures differs between the
`
`copies)—appears. The declaration explains that CSU Libraries maintains records
`
`of the dates on which books are received and catalogued using its software. The
`
`declaration also includes a copy of the portions of the Book showing Thomson, a
`
`copy of a publicly-accessible CSU Libraries webpage showing the bibliographic
`
`record for the Book, and copies of screenshots Ms. Hunter generated using the
`
`CSU Libraries’ software that show the bibliographic entry and the item record for
`
`the Book. Ms. Hunter explains how these copies show that the Book (and
`
`therefore Thomson) was catalogued and made available to the public prior to the
`
`Critical Date.
`
`15. Ex. 1021 is a September 16, 2016 declaration of Rebekah Stacha, a
`
`Senior Manager for Technical Publications at the SPE in Richardson, Texas. The
`
`declaration explains how the SPE makes publicly available the papers presented at
`
`the various conferences it sponsors, including the conference listed on the face of
`
`Thomson. The declaration includes a copy of Thomson identical to the Thomson
`
`of Ex. 1002, and explains that such copy is what a member of the public would
`
`have received if they ordered Thomson through the online sources described in the
`
`declaration. The declaration therefore establishes that Thomson was searchable
`
`and publicly-available to the public prior to the Critical Date.
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`36392154.1
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`6
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`
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`Case IPR2016-00596
`Patent 7,134,505
`16. Ex. 1022 is another September 16, 2016 declaration of Rebekah
`
`Stacha that, like Ex. 1021, explains how the SPE makes publicly available the
`
`papers presented at the various conferences it sponsors, including the 1998 SPE
`
`conference listed on the face of M.S. van Domelen, Enhanced Profitability with
`
`Non-Conventional IOR Technology, SPE 49523 (1998) (“van Domelen”), a paper
`
`attached to the declaration that references Thomson (Ex. 1002) in one of its
`
`footnotes. The declaration explains that the attached copy of van Domelen is what
`
`a member of the public would have received if they ordered van Domelen through
`
`the online sources described in the declaration. The declaration therefore
`
`indirectly establishes that Thomson was publicly-available to the public prior to the
`
`Critical Date.
`
`17. Ex. 1023 is a second declaration from Dr. Hawkes in which he
`
`includes his own personal copy of the proceedings he recalls receiving at the 1999
`
`conference he attended. The version of Ellsworth in that personal copy is the same
`
`as the Ex. 1004 version of Ellsworth. The substance of Ex. 1023 is otherwise the
`
`same as that of Ex. 1019.
`
`18. Ex. 1024 is another September 16, 2016 declaration of Rebekah
`
`Stacha that, like Exs. 1021 and 1022, explains how the SPE makes publicly
`
`available the papers presented at the various conferences it sponsors, including the
`
`1995 SPE meeting listed on the face of Eberhard. The declaration includes a copy
`
`36392154.1
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`7
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`Case IPR2016-00596
`Patent 7,134,505
`of Eberhard identical to the Eberhard of Ex. 1018, and explains that such copy is
`
`what a member of the public would have received if they ordered Eberhard through
`
`the online sources described in the declaration. The declaration therefore
`
`establishes that Eberhard was searchable and publicly-available prior to the Critical
`
`Date.
`
`19. Ex. 1025 is another affidavit of Nancy Chaffin Hunter, signed
`
`September 19, 2016, concerning the proceedings from the meeting on the face of
`
`Eberhard. The affidavit explains that CSU Libraries maintains records of the dates
`
`on which books are received and catalogued using its software. The affidavit
`
`includes a copy of pages from those proceedings that show the same Eberhard of
`
`Ex. 1018, a copy of a publicly-accessible CSU Libraries webpage showing the
`
`bibliographic record for the proceedings, and copies of screenshots Ms. Hunter
`
`generated using the CSU Libraries’ software that show the bibliographic entry and
`
`the item record for the proceedings. Ms. Hunter explains how these copies show
`
`that the proceedings (and therefore Eberhard) was catalogued and made available
`
`to the public prior to the Critical Date.
`
`20. Ex. 1026 is a September 22, 2016 affidavit of Rodolfo Diaz, a Texas
`
`notary and professional courier who obtained a copy of certain pages of the 1963
`
`Journal of Petroleum Engineering (“JPT”) from the University of Houston M.D.
`
`Anderson Library (the “Library”), including the pages from the July 1963 issue of
`
`36392154.1
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`8
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`
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`Case IPR2016-00596
`Patent 7,134,505
`the JPT corresponding to same Lagrone filed as Exhibit 1017. The Library’s date
`
`stamp on the July 1963 issue of the JPT is not legible, so the affidavit includes
`
`copies of date-stamped cover pages of the January through June 1963 and August
`
`through December 1963 issues of the JPT. The affidavit explains the Library’s call
`
`number for the 1963 JPT and how the January through December 1963 issues are
`
`bound in two sets.
`
`III. ARGUMENT
`Entry of the proposed supplemental information is appropriate because the
`
`exhibits are both timely and relevant to a claim for which trial has been instituted.
`
`37 C.F.R. § 42.123(a).
`
`There is no regulatory prohibition against entering exhibits as supplemental
`
`information that have also been served as supplement evidence, provided they are
`
`relevant to a claim for which trial has been instituted. See Valeo North America,
`
`Inc. v. Magna Electronics, Inc., Case IPR2014-01204, slip op. at 5 (Paper 26)
`
`(P.T.A.B. Apr. 10, 2015); see also Wangs Alliance Corp. v. Koninklijke Philips
`
`N.V., Case IPR2015-01290, slip op. at 4-6 (Paper 19) (P.T.A.B. Jan. 26, 2016)
`
`(addressing Ex. 1008, which was served as supplemental evidence).
`
`A. The Request Was Timely
`Rule 123(a)(1) requires a request for authorization to file a motion to submit
`
`supplemental evidence to be made within one month of the date trial was
`
`36392154.1
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`9
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`
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`Case IPR2016-00596
`Patent 7,134,505
`instituted. As set forth in material facts (“MFs”) 7 and 13, Petitioners’ request was
`
`timely.
`
`Each Exhibit Is Relevant to a Disputed Trial Issue
`
`B.
`As set forth in MFs 6 and 9, Rapid Completions has challenged whether
`
`Thomson was published and, thus, prior art. Thomson is the primary reference in
`
`all challenged grounds, all of which have been instituted. See MFs 1, 7. As set
`
`forth in MF 10, Rapid Completions has challenged whether Ellsworth was
`
`published and, thus, prior art. Ellsworth is a secondary reference in grounds three
`
`and seven, which have been instituted. See MFs 1, 7. Also as set forth in MF 10,
`
`Rapid Completions has challenged whether Eberhard and Lagrone were published
`
`and, thus, prior art. These references are used to reflect the knowledge of a
`
`POSITA, and as a motivation to combine, in the combination set forth in grounds
`
`four and eight. See MF 2.
`
`1. Ex. 1020
`As set forth in MF 14, Ex. 1020 addresses the public accessibility of
`
`Thomson prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1020 does not change the evidence on which Petitioners
`
`relied in the petition because, with the exception of figure quality (MF 14), the
`
`Thomson that is part of Ex. 1020 is the same Thomson filed as Ex. 1002 and
`
`asserted by Petitioners to be Section 102(b) prior art (MF 1). Instead, Ex. 1020
`
`36392154.1
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`10
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`
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`Case IPR2016-00596
`Patent 7,134,505
`merely adds evidence confirming the publication and public accessibility of
`
`Thomson prior to the Critical Date.
`
`2. Ex. 1021
`As set forth in MF 15, Ex. 1021 addresses the public accessibility of
`
`Thomson prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1021 does not change the evidence on which Petitioners
`
`relied in the petition because the copy of Thomson that is part of Ex. 1021 is the
`
`same Thomson filed as Ex. 1002 (MF 15) and asserted by Petitioners to be Section
`
`102(b) prior art (MF 1). Instead, Ex. 1021 merely adds evidence confirming the
`
`publication and public accessibility of Thomson prior to the Critical Date.
`
`3. Ex. 1022
`As set forth in MF 16, Ex. 1022 addresses the public accessibility in 1998 of
`
`a SPE Paper—van Domelen—that references Thomson. Thus, it indirectly shows
`
`that Thomson was publicly available prior to the Critical Date and is therefore
`
`relevant under Rule 123(a).
`
`Furthermore, Ex. 1022 does not change the evidence on which Petitioners
`
`relied in the petition because it references Thomson (MF 16), which was asserted
`
`by Petitioners to be Section 102(b) prior art (MF 1). Instead, Ex. 1022 merely adds
`
`evidence confirming the public accessibility of Thomson prior to the Critical Date.
`
`36392154.1
`
`11
`
`
`
`4. Ex. 1023
`As set forth in MF 17, Ex. 1023—like originally-filed Ex. 1019—addresses
`
`the public accessibility of Ellsworth prior to the Critical Date. Thus, it is relevant
`
`Case IPR2016-00596
`Patent 7,134,505
`
`under Rule 123(a).
`
`The substantive difference between Ex. 1023 and Ex. 1019 is that Ex. 1023
`
`includes a copy of Dr. Hawkes’ own version of the referenced 1999 proceedings
`
`(MF 17), thus countering any argument by Patent Owner that Dr. Hawkes did not
`
`establish a foundation from which to show that Ellsworth was published.
`
`Ex. 1023 does not change the evidence on which Petitioners relied in the
`
`petition because the Ellsworth in Dr. Hawkes’ personal proceedings copy is the
`
`same Ellsworth filed as Ex. 1004 (MF 17) and asserted by Petitioners to be Section
`
`102(b) prior art (MF 1). Instead, Ex. 1023 merely adds evidence confirming the
`
`publication and public accessibility of Ellsworth prior to the Critical Date.
`
`5. Ex. 1024
`As set forth in MF 18, Ex. 1024 addresses the public accessibility of
`
`Eberhard prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1024 does not change the evidence on which Petitioners
`
`relied in the petition because the copy of Eberhard that is part of Ex. 1024 is the
`
`same Eberhard filed as Ex. 1018 (MF 18), which Petitioners inherently asserted
`
`qualifies as prior art through Petitioners’ and Dr. Daneshy’s assertions that
`
`36392154.1
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`12
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`Case IPR2016-00596
`Patent 7,134,505
`Eberhard reflected the knowledge of a POSITA (MF 2). Instead, Ex. 1024 merely
`
`adds evidence confirming the publication and public accessibility of Eberhard prior
`
`to the Critical Date.
`
`6. Ex. 1025
`As set forth in MF 19, Ex. 1025 addresses the public accessibility of
`
`Eberhard prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1025 does not change the evidence on which Petitioners
`
`relied in the petition because the Eberhard that is part of Ex. 1025 is the same
`
`Eberhard filed as Ex. 1018, which Petitioners inherently asserted qualifies as prior
`
`art through Petitioners’ and Dr. Daneshy’s assertions that Eberhard reflected the
`
`knowledge of a POSITA (MF 2). Instead, Ex. 1025 merely adds evidence
`
`confirming the publication and public accessibility of Eberhard prior to the Critical
`
`Date.
`
`7. Ex. 1026
`As set forth in MF 20, Ex. 1026 addresses the public accessibility of
`
`Lagrone prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1026 does not change the evidence on which Petitioners
`
`relied in the petition because the Lagrone that is part of Ex. 1026 is the same
`
`Lagrone filed as Ex. 1017, which Petitioners inherently asserted qualifies as prior
`
`art through Petitioners’ and Dr. Daneshy’s assertions that Lagrone reflected the
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`36392154.1
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`13
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`Case IPR2016-00596
`Patent 7,134,505
`knowledge of a POSITA (MF 2). Instead, Ex. 1026 merely adds evidence
`
`confirming the publication and public accessibility of Lagrone prior to the Critical
`
`Date.
`
`C. There Will Be No Prejudice to Rapid Completions
`Rapid Completions received Exs. 1020-1026 on September 22, 2016 (MF
`
`11), more than two months prior to its Patent Owner Response deadline of
`
`December 2, 2016. This is sufficient time to address the supplemental information.
`
`See Palo Alto Networks, Inc. v. Juniper Networks, Inc., Case IPR2013-00369, slip
`
`op. at 5 (Paper 37) (P.T.A.B. Feb. 5, 2014) (finding less than two months of time
`
`sufficient). Further, when counsel for the parties met and conferred on Petitioners’
`
`request to file this motion, Petitioners’ counsel made clear that Petitioners are
`
`willing to accommodate scheduling changes—as may be reasonably needed—to
`
`permit Rapid Completions to address this supplemental information.
`
`IV. CONCLUSION
`Entry of Exs. 1020-1026 as supplemental information under Rule 123(a) is
`
`appropriate for the reasons above.
`
`Dated: September 30, 2016
`
`Respectfully submitted,
`
`/Mark T. Garrett/
`Mark T. Garrett
`
`Lead Counsel for Petitioners
`
`36392154.1
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`14
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`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on
`
`September 30, 2016,
`
`a
`
`complete
`
`copy of MOTION TO SUBMIT
`
`SUPPLEMENTAL INFORMATION was served on Patent Owner’s Exclusive
`
`Licensee via email (by consent), as follows:
`
`mray-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`kconklin-PTAB@skgf.com
`ptab@skgf.com
`
`
`
`/Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
`
`
`
`36392154.1
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