Paper No. 26
`
`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 IPR2016-01496
`Patent 7,134,505
`______________
`
`
`
`PETITIONERS’ MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`
`
`
`
`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 IPR2016-01496
`Patent 7,134,505
`______________
`
`
`
`PETITIONERS’ MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`
`
`
`
`Case IPR2016-01496
`Patent 7,134,505
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.123(a), Petitioners move to submit Exs.
`
`1024-1029 as supplemental information to further establish the prior art nature of
`
`Lane-Wells (Ex. 1002), Van Dyke (Ex. 1008), Baker (Ex. 1009), Lagrone
`
`(Ex. 1017), Eberhard (Ex. 1018), Howard (Ex. 1022), and Hyne (Ex. 1023).
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On July 30, 2016, Petitioners filed IPR2016-01496 against claims 1-7,
`
`11, and 14-27 of U.S. Pat. No. 7,134, 505 (“the ’505 Patent”). The petition raised
`
`four grounds of unpatentability: (1) claims 1-7 and 14-27 are obvious over
`
`Lane-Wells (Ex. 1002) and Ellsworth (Ex. 1004); (2) claim 15 is obvious over
`
`Lane-Wells, Ellsworth, and Hartley (Ex. 1003); (3) claim 11 is obvious over
`
`Lane-Wells, Ellsworth, and Echols (Ex. 1005); and (4) claims 7 and 19 are obvious
`
`over Lane-Wells, Ellsworth, and the knowledge of person of ordinary skill in the
`
`art (POSITA). See Paper 1 at, e.g., 5 and 6. The petition asserts that Lane-Wells is
`
`prior art under 35 U.S.C. § 102(b). Id. at 5.
`
`2.
`
`The asserted combinations of Lane-Wells, Ellsworth and Echols in
`
`Ground 3 is supported by Petitioners’ contention concerning the knowledge that a
`
`POSITA would have had at the relevant time concerning aspects of Lagrone
`
`(Ex. 1017) and Eberhard (Ex. 1018). See Paper 1 at 6 (listing Ground 3), 59-62
`
`(explaining Ground 3, and discussing Lagrone and Eberhard at 61); see also
`
`
`
`1
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`Case IPR2016-01496
`Patent 7,134,505
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`Ex. 1007 (Dr. Daneshy) at ¶ 100 (discussing Lagrone and Eberhard), which was
`
`cited multiple times on pages 60-62 of Paper 1.
`
`3.
`
`Petitioners cite Van Dyke (Ex. 1008) and Baker (Ex. 1009) in petition
`
`sections V.A. (Field of Technology – Drilling an Oil Well) and V.B. (Field of
`
`Technology – Well Stimulation and Selective Fluid Treatment) as teaching aspects
`
`of what was known in the prior art about well stimulation techniques (citing Van
`
`Dyke and Baker at pages 7 and 8) and well production equipment (citing Van
`
`Dyke at pages 6 and 7 and Baker at page 7).
`
`4.
`
`Petitioners’ expert, Dr. Daneshy, cites Howard (Ex. 1022) and Hyne
`
`(Ex. 1023) in paragraph 33 of his declaration (Ex. 1007) under section V.B. (Field
`
`of Technology – Well Stimulation and Treatment) as teaching aspects of what a
`
`POSITA would have understood the term “acidizing” to mean. Petitioners cite
`
`paragraph 33 of Dr. Daneshy’s declaration in the petition at page 8 (discussing
`
`well stimulation) and pages 14 and 37 (discussing the understanding of a
`
`POSITA).
`
`5.
`
`The earliest-claimed priority date of the ’505 Patent is November 19,
`
`2001, making the 35 U.S.C. § 102(b) critical date November 19, 2000 (the
`
`“Critical Date”). See Ex. 1001.
`
`6.
`
`Rapid Completions challenged the publication of Lane-Wells, and
`
`therefore its status as prior art, in its Preliminary Response. See Paper 17 at 11-15.
`
`
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`2
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`Case IPR2016-01496
`Patent 7,134,505
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`7.
`
`On February 6, 2017, trial was instituted on all challenged claims
`
`based on all asserted grounds. See Paper 19 at 19. 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. 8.
`
`8.
`
`The Board indicated it was not persuaded by Rapid Completions’
`
`challenge that Lane-Wells is not a printed publication. Id. at 12.
`
`9.
`
`In its February 16, 2017 evidence objections (Paper 22), Rapid
`
`Completions again challenged the publication of Lane-Wells, 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. And
`
`Rapid Completions objects to this document as irrelevant under FRE
`
`401 and thus inadmissible under FRE 402, or as confusing or a waste
`
`of time under FRE 403 because this document is inadmissible under
`
`FRE 801, 802, and 901 as explained above.
`
`Paper 22 at 1 (emphasis added).
`
`10. Also in its February 16, 2017 evidence objections, Rapid Completions
`
`challenged the publication of Van Dyke, Baker, Lagrone, Eberhard, Howard, and
`
`Hyne—and therefore their status as prior art—using language similar to that
`
`quoted above for Lane-Wells. See Paper 22 at 2-4, 6, and 7 (citing FRE 602
`
`
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`3
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`Case IPR2016-01496
`Patent 7,134,505
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`instead of FRE 901, but otherwise relying on the same Federal Rules of Evidence).
`
`11. On March 2, 2017, Petitioners timely served on Rapid Completions
`
`supplemental evidence consisting of Exs. 1024-1029 described below, pursuant to
`
`37 C.F.R. § 42.64(b)(2).
`
`12. On March 5, 2017, Petitioners emailed counsel
`
`for Rapid
`
`Completions, asking if they would oppose Petitioners’ request to file this motion.
`
`13. On Monday, March 6, 2017, Petitioners timely emailed the Board,
`
`requesting permission to file this motion. See 37 C.F.R. §§ 1.7(a) and 42.1(a).
`
`Petitioners were granted permission the same day.
`
`14. Ex. 1024 is a February 13, 2017 affidavit of Velma J’Nette
`
`Davis-Nichols, the Specialized Product Sales Manager at the world headquarters of
`
`Gulf Publishing Company LLC (“GPC”) in Houston, Texas. The affidavit
`
`explains that GPC’s on-site library contains old copies of the Composite Catalog,
`
`including Volume 2 of the 21st edition published in 1955, in which a copy of Lane-
`
`Wells—identical to the Lane-Wells of Ex. 1002 (though the quality of the images
`
`in the figures and text differs between the copies)—appears. The affidavit explains
`
`that, in 2000, any member of the public who wanted to view old copies of the
`
`Composite Catalog, including the 21st edition, could make an appointment with
`
`GPC’s Houston office to visit the on-site library, review what was in it, and make
`
`copies for a small fee. The affidavit explains that companies could purchase
`
`
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`4
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`Case IPR2016-01496
`Patent 7,134,505
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`publication space in the Composite Catalog and includes a copy of an index card
`
`indicating that Lane-Wells purchased publication space in the 21st edition. The
`
`affidavit also explains that GPC sold copies of the Composite Catalog to members
`
`of the public and includes a copy of the related order form. The affidavit therefore
`
`establishes that Lane-Wells was published, searchable, and available to the public
`
`prior to the Critical Date.
`
`15. Ex. 1025 is a September 30, 2016 affidavit of Debbie Caples, the
`
`Senior Graphics Designer for the Petroleum Extension Service (“PETEX”) at the
`
`University of Texas at Austin in Austin, Texas. The affidavit explains how copies
`
`of PETEX books are printed and shipped to libraries, book stores, companies in the
`
`petroleum industry, and individuals, including copies Van Dyke (Ex. 1008) and
`
`Baker (Ex. 1009). The affidavit also explains that approximately 1,500 copies of
`
`the first printing of Van Dyke were shipped to libraries, book stores, companies in
`
`the petroleum industry, and individuals in 1997 and that approximately 5,000
`
`copies of the first printing of Baker were shipped to libraries, book stores,
`
`companies in the petroleum industry, and individuals in 1996. Ms. Caples explains
`
`that the only difference between the first printing of Van Dyke in 1997 and the
`
`fourth printing in 2007—the Van Dyke of Ex. 1008—and the first printing of
`
`Baker in 1996 and the third printing in 1998—the Baker of Ex. 1009— are
`
`“typographical and formatting corrections” and that the text and figures from the
`
`
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`5
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`Case IPR2016-01496
`Patent 7,134,505
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`relevant pages of Van Dyke and Baker are the same between the printings. The
`
`affidavit therefore establishes that Van Dyke and Baker were published and
`
`available to the public prior to the Critical Date.
`
`16. Ex. 1026 is a September 22, 2016 affidavit of Rodolfo Diaz, a notary
`
`commissioned by the State of Texas and a professional courier, concerning the July
`
`issue of the 1963 Journal of Petroleum Technology (“JPT”), in which a copy of
`
`Lagrone—identical to the Lagrone of Ex. 1017 (although one is in color and the
`
`other is not)—appears. The affidavit explains that Mr. Diaz visited the University
`
`of Houston M. D. Anderson Library (“the Library”) in Houston, Texas and
`
`scanned the covers of the January-December 1963 issues of JPT, as well as the
`
`relevant pages of Lagrone in the July 1963 issue. These scans are included as
`
`exhibits to the affidavit and Mr. Diaz explains that, although the date stamp on the
`
`July 1963 issue is smudged and not legible, the date stamps on the other issues are
`
`legible and state “University of Houston Received” followed by a 1963 date and
`
`“Libraries.” Mr. Diaz explains that the January-June 1963 issues of JPT and the
`
`July-December 1963 issues of JPT are bound together in a first and second set,
`
`respectively. The affidavit therefore establishes that Lagrone was published and
`
`available to the public prior to the Critical Date.
`
`17. Ex. 1027 is a September 19, 2016 declaration of Rebekah Stacha, an
`
`employee of the Society of Petroleum Engineers (“SPE”) since 2001, concerning
`
`
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`6
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`Case IPR2016-01496
`Patent 7,134,505
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`SPE Paper 29553—which is identical to the Eberhard of Ex. 1018—that was
`
`presented at the 1995 SPE Rocky Mountain Meeting in Denver, CO., U.S.A. on
`
`March 20-22, 1995. The affidavit explains the manner in which SPE makes
`
`conference papers and peer-reviewed journals available to the public. The
`
`affidavit explains that since 1998, SPE has made conference papers available for
`
`purchase to anyone on its website, and that conference papers could be searched
`
`by, for example, key word. The affidavit states that SPE has made SPE Paper
`
`29553 publicly available to anyone interested in purchasing a copy, including
`
`through this online process since 1998, after the March 1995 Rocky Mountain
`
`Meeting. The affidavit therefore establishes that Eberhard was published and
`
`available to the public prior to the Critical Date.
`
`18. Ex. 1028 is a March 1, 2017 affidavit of Troy Price, a courier for
`
`Package Express, L.P. in Houston, Texas, U.S.A., concerning the book Hydraulic
`
`Fracturing by Howard (the “Book”), which is identical to the Howard of Ex. 1022,
`
`except for some highlighting in the non-exhibit version. The affidavit explains that
`
`Mr. Price visited the University of Houston M. D. Anderson Library in Houston,
`
`Texas and scanned certain pages of the Book, including the page showing check-
`
`out date stamps. This page shows a plurality of date stamps before the Critical
`
`Date, including “Dec. 01, 1989.” The affidavit therefore establishes that Howard
`
`was published and available to the public prior to the Critical Date.
`
`
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`7
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`Case IPR2016-01496
`Patent 7,134,505
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`19. Ex. 1029 is a March 2, 2017 affidavit of Troy Price, a courier for
`
`Package Express, L.P. in Houston, Texas, U.S.A., concerning the book Dictionary
`
`of Petroleum Exploration, Drilling, & Production by Hyne (the “Book”), which is
`
`identical to the Hyne of Ex. 1023, except for some differences in ornamental
`
`design on the covers and some text on the copyright pages (both copyright pages
`
`include a copyright date of 1991). The affidavit explains that Mr. Price visited the
`
`University of Houston M. D. Anderson Library in Houston, Texas and scanned
`
`certain pages of the Book, including the page showing check-out date stamps. This
`
`page shows a date stamp of “3/22/93.” The affidavit therefore establishes that
`
`Hyne was published and available to the public prior to the Critical Date.
`
`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).
`
`
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`8
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`Case IPR2016-01496
`Patent 7,134,505
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`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 institution. As set forth in
`
`material facts (“MFs”) 7 and 13, Petitioners’ request was timely.
`
`B.
`
`Each Exhibit Is Relevant to a Disputed Trial Issue
`
`As set forth in MFs 6 and 9, Rapid Completions has challenged whether
`
`Lane-Wells was published and, thus, prior art. Lane-Wells is one of the references
`
`used in each of the asserted and instituted grounds 1-4. See MFs 1, 7. 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
`
`ground 3. See MF 2. As also set forth in MF 10, Rapid Completions has
`
`challenged whether Van Dyke, Baker, Howard, and Hyne were published and,
`
`thus, prior art. These references are discussed or referenced in the petition as
`
`reflecting certain aspects of the prior art (MFs 3 and 4), which the petition asserts
`
`evidences the level of ordinary skill in the art (Paper 1 at 14 and 37). Resolving
`
`the level of ordinary skill in the art is one of the four factual inquiries relevant to
`
`any obviousness analysis, including all asserted and instituted grounds(see
`
`MFs 1, 7).
`
`1. Ex. 1024
`
`As set forth in MF 14, Ex. 1024 addresses the public accessibility of Lane-
`
`
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`9
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`Case IPR2016-01496
`Patent 7,134,505
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`Wells prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1024 does not change the evidence on which the petition relies
`
`because, with the exception of text and figure quality (MF 14), the Lane-Wells that
`
`is part of Ex. 1024 is the same Lane-Wells filed as Ex. 1002 and asserted by
`
`Petitioners to be Section 102(b) prior art (MF 1). Instead, Ex. 1024 merely adds
`
`evidence confirming the publication and public accessibility of Lane-Wells prior to
`
`the Critical Date.
`
`2. Ex. 1025
`
`As set forth in MF 15, Ex. 1025 addresses the public accessibility of Van
`
`Dyke and Baker prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Petitioners inherently asserted that both Van Dyke and Baker qualify as prior art
`
`through their reference in the petition’s Field of Technology section (MF 3).
`
`Furthermore, Ex. 1025 does not change the evidence on which the petition relies.
`
`Ex. 1025’s Appendix B is the Van Dyke of Ex. 1008, and Ex. 1025’s Appendix A,
`
`which was published in 1997, is identical to Appendix B (save for the location at
`
`which some sentences break). Similarly, Ex. 1025’s Appendix D is the Baker of
`
`Ex. 1009, and Ex. 1025’s Appendix C, which was published in 1996, is identical to
`
`Appendix C. Instead, Ex. 1025 merely adds evidence confirming the publication
`
`and public accessibility of Van Dyke and Baker prior to the Critical Date.
`
`
`
`10
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`Case IPR2016-01496
`Patent 7,134,505
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`3. Ex. 1026
`
`As set forth in MF 16, 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 the petition relies
`
`because, other than coloring, the copy of Lagrone that is part of Ex. 1026 is the
`
`same as Ex. 1017 (MF 16), which Petitioners inherently asserted qualifies as prior
`
`art through Petitioners’ and Dr. Daneshy’s assertions that Lagrone reflected the
`
`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.
`
`4. Ex. 1027
`
`As set forth in MF 17, Ex. 1027 addresses the public accessibility of
`
`Eberhard prior to the Critical Date. Thus, it is relevant under Rule 123(a).
`
`Furthermore, Ex. 1027 does not change the evidence on which the petition relies
`
`because the copy of Eberhard that is part of Ex. 1027 is the same as Ex. 1018
`
`(MF 17), 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. 1027 merely adds evidence confirming the
`
`publication and public accessibility of Eberhard prior to the Critical Date.
`
`
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`11
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`Case IPR2016-01496
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`5. Ex. 1028
`
`As set forth in MF 18, Ex. 1028 addresses the public accessibility of Howard
`
`prior to the Critical Date. Thus, it is relevant under Rule 123(a). Furthermore,
`
`Ex. 1028 does not change the evidence on which the petition relies because, other
`
`than highlighting, the copy of Howard that is part of Ex. 1028 is the same as
`
`Ex. 1022 (MF 18), which Petitioners inherently asserted qualifies as prior art
`
`through Petitioners’ citation to Dr. Daneshy’s assertions that Howard reflected the
`
`knowledge and understanding of a POSITA (MF 4). Instead, Ex. 1028 merely
`
`adds evidence confirming the publication and public accessibility of Howard prior
`
`to the Critical Date.
`
`6. Ex. 1029
`
`As set forth in MF 19, Ex. 1029 addresses the public accessibility of Hyne
`
`prior to the Critical Date. Thus, it is relevant under Rule 123(a). Furthermore,
`
`Ex. 1029 does not change the evidence on which the petition relies because, other
`
`than differences in ornamental cover design and some additional text on the
`
`copyright page of Hyne of Ex. 1023, the copy of Hyne that is part of Ex. 1029 is
`
`the same as Ex. 1023 (MF 19), which Petitioners inherently asserted qualifies as
`
`prior art through Petitioners’ citation to Dr. Daneshy’s assertions that Hyne
`
`reflected the knowledge and understanding of a POSITA (MF 4). Instead,
`
`
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`12
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`Patent 7,134,505
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`Ex. 1029 merely adds evidence confirming the publication and public accessibility
`
`of Hyne prior to the Critical Date.
`
`C. There Will Be No Prejudice to Rapid Completions
`
`Rapid Completions received Exs. 1024-1029 on March 2, 2017 (MF 11),
`
`slightly more than two months prior to its Patent Owner Response deadline of May
`
`6, 2017. 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) (as reflected in
`
`Paper 27 at 3, the proposed supplemental information was first served as
`
`supplemental evidence slightly more than two months prior to deadline).
`
`IV. CONCLUSION
`
`Entry of Exs. 1024-1029 as supplemental information under Rule 123(a) is
`
`appropriate for the reasons above.
`
`Dated: March 15, 2017
`
`Respectfully submitted,
`
`/Mark T. Garrett/
`Mark T. Garrett
`
`
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`13
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 15,
`
`2017, a complete copy of PETITIONERS’ MOTION TO SUBMIT
`
`SUPPLEMENTAL INFORMATION was served on Patent Owner’s Exclusive
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`Licensee via email (by consent), as follows:
`
`hhamad@caldwellcc.com
`
`bcaldwell@caldwellcc.com
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`jnemunaitis@caldwellcc.com
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`gonsalves@gonsalveslawfirm.com
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`rapid@caldwellcc.com
`
`
`
`/Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
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