Paper No. 11
`
`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 IPR2016-00598
`Patent 7,861,774
`______________
`
`
`
`MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`27574696.1
`
`
`
`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 IPR2016-00598
`Patent 7,861,774
`______________
`
`
`
`MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`27574696.1
`
`
`
`Case IPR2016-00598
`Patent 7,861,774
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.123(a), Petitioners move to submit the following
`
`four exhibits as supplement information that have already been served as
`
`supplement evidence: Exhibits 1015-1017, each of which is an affidavit or
`
`declaration addressing the public accessibility and therefore prior art status of
`
`Thomson (Ex. 1002), and Exhibit 1018, which is a declaration addressing the
`
`public accessibility and therefore the prior art status of Ellsworth (Ex. 1003).
`
`Rapid Completions (exclusive licensee of Patent Owner, and acting party in
`
`this proceeding) has challenged the publication—and therefore the prior art
`
`status—of Thomson in its Preliminary Response (and as reflected in the Institution
`
`Decision) and of both Thomson and Ellsworth in its evidence objections. The
`
`challenged grounds on which trial has been instituted depend on the prior art nature
`
`of both Thomson and Ellsworth. Petitioners received authorization to file this
`
`motion after timely requesting Board authorization by email on September 22,
`
`2016.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On February 19, 2016, Petitioners filed IPR2016-00598 against claims
`
`1-16 of U.S. Pat. No. 7,861,774 (“the ’774 Patent” – Ex. 1001). The petition raised
`
`two grounds of unpatentability: (1) claims 1-16 are obvious over Thomson (Ex.
`
`1002, a 1997 SPE paper) and Ellsworth (Ex. 1003, a paper co-authored by one of
`
`27574696.1
`
`1
`
`
`
`Case IPR2016-00598
`Patent 7,861,774
`the inventors (Themig) and published in the proceedings of a 1999 conference in
`
`Calgary); and (2) claim 15 is obvious over Thomson, Ellsworth, and Hartley (U.S.
`
`Patent No. 5,449,039). Paper 1 at, e.g., 4. The petition asserts that both Thomson
`
`and Ellsworth are prior art under Section 102(b). Id.
`
`2.
`
`Ex. 1014, filed with the 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.
`
`1014 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.
`
`3.
`
`4.
`
`Ellsworth (Ex. 1003) appears at pages 102-110 of Ex. 1014.
`
`The earliest-claimed priority date of the ’774 Patent is November 19,
`
`2001, making the Section 102(b) critical date November 18, 2000 (the “Critical
`
`Date”). See Ex. 1001.
`
`5.
`
`Rapid Completions challenged the publication of Thomson, and
`
`therefore its status as prior art, in its Preliminary Response. See Paper 7 at 20-25.
`
`27574696.1
`
`2
`
`
`
`Case IPR2016-00598
`Patent 7,861,774
`On August 22, 2016, trial was instituted on all challenged claims
`
`6.
`
`based on all asserted grounds. See Paper 8 at 11. 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 9, fn. 4.
`
`7.
`
`Thomson
`
`includes
`
`the
`
`indicators of pre-critical date public
`
`dissemination listed by the Board on page 9 of the Institution Decision (Paper 8).
`
`8.
`
`In its September 6, 2016 evidence objections (Paper 10), 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
`does not fall under any exceptions, including those of FRE 803, 804,
`805, or 807.
`
`Paper 10 at 1-2 (emphasis added).
`
`9.
`
` Also
`
`in
`
`its September 6, 2016 evidence objections, Rapid
`
`Completions challenged the publication of Ellsworth, and therefore its status as
`
`prior art, using the same language quoted above for Thomson. See Paper 10 at 2.
`
`27574696.1
`
`3
`
`
`
`10. On September 20, 2016, Petitioners
`
`Case IPR2016-00598
`Patent 7,861,774
`timely served on Rapid
`
`Completions supplemental evidence consisting of Exs. 1015, 1016, and 1017
`
`described below, pursuant to 37 C.F.R. § 42.64(b)(2).
`
`11. On September 22, 2016, Petitioners emailed Ex. 1018 (described
`
`below) to counsel for Rapid Completions, and asked whether they would oppose
`
`Petitioners’ forthcoming request to file this motion.
`
`12. Also on September 22, 2016, and one month from institution,
`
`Petitioners emailed the Board, requesting permission to file this motion.
`
`Petitioners were granted permission on September 26, 2016.
`
`13. Ex. 1015 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
`
`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 affidavit explains that CSU Libraries maintains records of
`
`the dates on which books are received and catalogued using its software. The
`
`affidavit 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
`
`27574696.1
`
`4
`
`
`
`Case IPR2016-00598
`Patent 7,861,774
`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.
`
`14. Ex. 1016 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 prior to the Critical Date.
`
`15. Ex. 1017 is another September 16, 2016 declaration of Rebekah
`
`Stacha that, like Ex. 1016, 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
`
`27574696.1
`
`5
`
`
`
`Case IPR2016-00598
`Patent 7,861,774
`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 prior to the Critical
`
`Date.
`
`16. Ex. 1018 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. 1003 version of Ellsworth. The substance of Ex. 1018 is otherwise the
`
`same as that of Ex. 1014.
`
`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).
`
`27574696.1
`
`6
`
`
`
`Case IPR2016-00598
`Patent 7,861,774
`
`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
`
`instituted. As set forth in material facts (“MFs”) 6 and 12, Petitioners’ request was
`
`timely.
`
`Each Exhibit Is Relevant to a Disputed Trial Issue
`
`B.
`As set forth in MFs 5 and 8, Rapid Completions has challenged whether
`
`Thomson was published and, thus, prior art. As set forth in MF 9, Rapid
`
`Completions has challenged whether Ellsworth was published and, thus, prior art.
`
`Thomson is the primary reference and Ellsworth is a secondary reference in all
`
`challenged grounds, all of which have been instituted. See MFs 1, 6.
`
`1. Ex. 1015
`As set forth in MF 13, Ex. 1015 addresses the public accessibility of
`
`Thomson prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1015 does not change the evidence on which Petitioners
`
`relied in the petition because, with the exception of figure quality (MF 13), the
`
`Thomson that is part of Ex. 1015 is the same Thomson filed as Ex. 1002 and
`
`asserted by Petitioners to be Section 102(b) prior art (MF 1). Instead, Ex. 1015
`
`merely adds evidence confirming the publication and public accessibility of
`
`Thomson prior to the Critical Date.
`
`27574696.1
`
`7
`
`
`
`Case IPR2016-00598
`Patent 7,861,774
`
`2. Ex. 1016
`As set forth in MF 14, Ex. 1016 addresses the public accessibility of
`
`Thomson prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1016 does not change the evidence on which Petitioners
`
`relied in the petition because the copy of Thomson that is part of Ex. 1016 is the
`
`same Thomson filed as Ex. 1002 (MF 14) and asserted by Petitioners to be Section
`
`102(b) prior art (MF 1). Instead, Ex. 1016 merely adds evidence confirming the
`
`publication and public accessibility of Thomson prior to the Critical Date.
`
`3. Ex. 1017
`As set forth in MF 15, Ex. 1017 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. 1017 does not change the evidence on which Petitioners
`
`relied in the petition because it references Thomson (MF 15), which was asserted
`
`by Petitioners to be Section 102(b) prior art (MF 1). Instead, Ex. 1016 merely adds
`
`evidence confirming the public accessibility of Thomson prior to the Critical Date.
`
`4. Ex. 1018
`As set forth in MF 16, Ex. 1018—like originally-filed Ex. 1014—addresses
`
`the public accessibility of Ellsworth prior to the Critical Date. Thus, it is relevant
`
`under Rule 123(a).
`27574696.1
`
`8
`
`
`
`Case IPR2016-00598
`Patent 7,861,774
`The substantive difference between Ex. 1018 and Ex. 1014 is that Ex. 1018
`
`includes a copy of Dr. Hawkes’ own version of the referenced 1999 proceedings
`
`(MF 16), thus countering any argument by Patent Owner that Dr. Hawkes did not
`
`establish a foundation from which to show that Ellsworth was published.
`
`Ex. 1018 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. 1003 (MF 16) and asserted by Petitioners to be Section
`
`102(b) prior art (MF 1). Instead, Ex. 1018 merely adds evidence confirming the
`
`publication and public accessibility of Ellsworth prior to the Critical Date.
`
`C. There Will Be No Prejudice to Rapid Completions
`Rapid Completions received Exs. 1015-1017 on September 20, 2016 (MF
`
`10) and Ex. 1018 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.
`
`27574696.1
`
`9
`
`
`
`IV. CONCLUSION
`Entry of Exs. 1015-1018 as supplemental information under Rule 123(a) is
`
`Case IPR2016-00598
`Patent 7,861,774
`
`appropriate for the reasons above.
`
`Dated: September 29, 2016
`
`Respectfully submitted,
`
`/Mark T. Garrett/
`Mark T. Garrett, Lead Counsel
`Reg. No. 44,699
`Tel: 512.536.3031; Fax: 512.536.4598
`mark.garrett@nortonrosefulbright.com
`
`Norton Rose Fulbright US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`
`Counsel for Petitioners
`
`27574696.1
`
`10
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
`
`29, 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)
`
`
`
`27574696.1
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
