Paper No. 27
`
`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 IPR2016-01506
`Patent 7,861,774
`______________
`
`
`
`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 IPR2016-01506
`Patent 7,861,774
`______________
`
`
`
`PETITIONERS’ MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`
`
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.123(a), Petitioners move to submit Exs. 1023,
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`1024, 1027, and 1028 as supplemental information to further establish the prior art
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`nature of Lane-Wells (Ex. 1002), Van Dyke (Ex. 1006), Baker (Ex. 1007), Howard
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`(Ex. 1018), and Hyne (Ex. 1019).
`
`II.
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`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On July 30, 2016, Petitioners
`
`filed
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`IPR2016-01506 against
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`claims 1-16 of U.S. Pat. No. 7,861,774 (“the ’774 Patent”). The petition raised
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`three grounds of unpatentability: (1) claims 1-16 are obvious over Lane-Wells
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`(Ex. 1002) and Ellsworth (Ex. 1003); (2) claim 15 is obvious over Lane-Wells,
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`Ellsworth, and Hartley (Ex. 1004); and (3) claims 4 and 6 are obvious over
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`Lane-Wells, Ellsworth, and the knowledge of person of ordinary skill in the art
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`(POSITA). See Paper 1 at, e.g., 5-6. The petition asserts that Lane-Wells is prior
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`art under 35 U.S.C. § 102(b). Id. at 5.
`
`2.
`
`Petitioners cite Van Dyke (Ex. 1006) and Baker (Ex. 1007) in petition
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`sections V.A. (Field of Technology – Drilling an Oil Well) and V.B. (Field of
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`Technology – Well Stimulation and Selective Fluid Treatment) as teaching aspects
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`of what was known in the prior art about well stimulation techniques (citing Van
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`Dyke and Baker at pages 7-8) and well production equipment (citing Van Dyke at
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`pages 6-7 and Baker at page 7).
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`1
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`Case IPR2016-01506
`Patent 7,861,774
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`3.
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`Petitioners’ expert, Dr. Daneshy, cites Howard (Ex. 1018) and Hyne
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`(Ex. 1019) in paragraph 33 of his declaration (Ex. 1005) under section V.B. (Field
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`of Technology – Well Stimulation and Treatment) as teaching aspects of what a
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`POSITA would have understood the term “acidizing” to mean. Petitioners cite
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`paragraph 33 of Dr. Daneshy’s declaration in the petition at page 8 (discussing
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`well stimulation) and pages 14 and 36-37 (discussing the understanding of a
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`POSITA).
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`4.
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`The earliest-claimed priority date of the ’774 Patent is November 19,
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`2001, making the 35 U.S.C. § 102(b) critical date November 19, 2000 (the
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`“Critical Date”). See Ex. 1001.
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`5.
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`Rapid Completions challenged the publication of Lane-Wells, and
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`therefore its status as prior art, in its Preliminary Response. See Paper 17 at 12-16.
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`6.
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`On February 9, 2017, trial was instituted on all challenged claims
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`based on all asserted grounds. See Paper 19 at 11.
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`7.
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`The Board indicated it was not persuaded by Rapid Completions’
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`challenge that Lane-Wells is not a printed publication. Id. at 8.
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`8.
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`In its February 16, 2017 evidence objections (Paper 22), Rapid
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`Completions again challenged the publication of Lane-Wells, and therefore its
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`status as prior art:
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`To the extent Petitioners rely on the contents of this document for the
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`Case IPR2016-01506
`Patent 7,861,774
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`truth of the matter asserted (for example, to establish public
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`accessibility as a printed publication), Rapid Completions objects to
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`such contents as inadmissible hearsay under FRE 801 and 802. And
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`Rapid Completions objects to this document as irrelevant under FRE
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`401 and thus inadmissible under FRE 402, or as confusing or a waste
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`of time under FRE 403 because this document is inadmissible under
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`FRE 801, 802, and 901 as explained above.
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`Paper 22 at 1 (emphasis added).
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`9.
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`Also in its February 16, 2017 evidence objections, Rapid Completions
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`challenged the publication of Van Dyke, Baker, Howard, and Hyne—and therefore
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`their status as prior art—using language similar to that quoted above for Lane-
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`Wells. See Paper 22 at 2, 3, 5, and 6 (citing FRE 602 instead of FRE 901, but
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`otherwise relying on the same Federal Rules of Evidence).
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`10. On March 2, 2017, Petitioners timely served on Rapid Completions
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`supplemental evidence comprising Exs. 1023, 1024, 1027, and 1028 described
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`below, pursuant to 37 C.F.R. § 42.64(b)(2).
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`11. On March 5, 2017, Petitioners emailed counsel
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`for Rapid
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`Completions, asking if they would oppose Petitioners’ request to file this motion.
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`12. On Monday, March 6, 2017, Petitioners timely emailed the Board,
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`requesting permission to file this motion. See 37 C.F.R. §§ 1.7(a) and 42.1(a).
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`Petitioners were granted permission the same day.
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`Case IPR2016-01506
`Patent 7,861,774
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`13. Ex. 1023 is a February 13, 2017 affidavit of Velma J’Nette
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`Davis-Nichols, the Specialized Product Sales Manager at the world headquarters of
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`Gulf Publishing Company LLC (“GPC”) in Houston, Texas. The affidavit
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`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
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`that, in 2000, any member of the public who wanted to view old copies of the
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`Composite Catalog, including the 21st edition, could make an appointment with
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`GPC’s Houston office to visit the on-site library, review what was in it, and make
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`copies for a small fee. The affidavit explains that companies could purchase
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`publication space in the Composite Catalog and includes a copy of an index card
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`indicating that Lane-Wells purchased publication space in the 21st edition. The
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`affidavit also explains that GPC sold copies of the Composite Catalog to members
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`of the public and includes a copy of the related order form. The affidavit therefore
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`establishes that Lane-Wells was published, searchable, and available to the public
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`prior to the Critical Date.
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`14. Ex. 1024 is a September 30, 2016 affidavit of Debbie Caples, the
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`Senior Graphics Designer for the Petroleum Extension Service (“PETEX”) at the
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`University of Texas at Austin in Austin, Texas. The affidavit explains how copies
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`4
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`Case IPR2016-01506
`Patent 7,861,774
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`of PETEX books are printed and shipped to libraries, book stores, companies in the
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`petroleum industry, and individuals, including copies Van Dyke (Ex. 1006) and
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`Baker (Ex. 1007). The affidavit also explains that approximately 1,500 copies of
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`the first printing of Van Dyke were shipped to libraries, book stores, companies in
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`the petroleum industry, and individuals in 1997 and that approximately 5,000
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`copies of the first printing of Baker were shipped to libraries, book stores,
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`companies in the petroleum industry, and individuals in 1996. Ms. Caples explains
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`that the only difference between the first printing of Van Dyke in 1997 and the
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`fourth printing in 2007—the Van Dyke of Ex. 1006—and the first printing of
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`Baker in 1996 and the third printing in 1998—the Baker of Ex. 1007— are
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`“typographical and formatting corrections” and that the text and figures from the
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`relevant pages of Van Dyke and Baker are the same between the printings. The
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`affidavit therefore establishes that Van Dyke and Baker were published and
`
`available to the public prior to the Critical Date.
`
`15. Ex. 1027 is a March 1, 2017 affidavit of Troy Price, a courier for
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`Package Express, L.P. in Houston, Texas, U.S.A., concerning the book Hydraulic
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`Fracturing by Howard (the “Book”), which is identical to the Howard of Ex. 1018,
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`except for some highlighting in the non-exhibit version. The affidavit explains that
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`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-
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`Patent 7,861,774
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`out date stamps. This page shows a plurality of date stamps before the Critical
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`Date, including “Dec. 01, 1989.” The affidavit therefore establishes that Howard
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`was published and available to the public prior to the Critical Date.
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`16. Ex. 1028 is a March 2, 2017 affidavit of Troy Price, a courier for
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`Package Express, L.P. in Houston, Texas, U.S.A., concerning the book Dictionary
`
`of Petroleum Exploration, Drilling, & Production by Hyne (the “Dictionary”),
`
`which is identical to the Hyne of Ex. 1019, 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 Dictionary, 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.
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`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
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`as supplemental information that have also been served as supplement evidence,
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`provided they are relevant to a claim for which trial has been instituted. See Valeo
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`Case IPR2016-01506
`Patent 7,861,774
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`North America, Inc. v. Magna Electronics, Inc., Case IPR2014-01204, slip op. at 5
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`(Paper 26) (P.T.A.B. Apr. 10, 2015); see also Wangs Alliance Corp. v. Koninklijke
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`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 institution. As set forth in
`
`material facts (“MFs”) 6 and 12, Petitioners’ request was timely.
`
`B.
`
`Each Exhibit Is Relevant to a Disputed Trial Issue
`
`As set forth in MFs 5 and 8, 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 1-3. See MFs 1, 6. As set forth
`
`in MF 9, 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 2
`
`and 3), which the petition asserts evidences the level of ordinary skill in the art
`
`(Paper 1 at 14, 36-37). 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, 6).
`
`1. Ex. 1023
`
`As set forth in MF 13, Ex. 1023 addresses the public accessibility of Lane-
`
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`7
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`Case IPR2016-01506
`Patent 7,861,774
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`Wells prior to the Critical Date. Thus, it is relevant under Rule 123(a).
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`Furthermore, Ex. 1023 does not change the evidence on which the petition relies
`
`because, with the exception of text and figure quality (MF 13), the Lane-Wells that
`
`is part of Ex. 1023 is the same Lane-Wells filed as Ex. 1002 and asserted by
`
`Petitioners to be Section 102(b) prior art (MF 1). Instead, Ex. 1023 merely adds
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`evidence confirming the publication and public accessibility of Lane-Wells prior to
`
`the Critical Date.
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`2. Ex. 1024
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`As set forth in MF 14, Ex. 1024 addresses the public accessibility of Van
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`Dyke and Baker prior to the Critical Date. Thus, it is relevant under Rule 123(a).
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`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 2).
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`Furthermore, Ex. 1024 does not change the evidence on which the petition relies.
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`Ex. 1024’s Appendix B is the Van Dyke of Ex. 1006, and Ex. 1024’s Appendix A,
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`which was published in 1997, is identical to Appendix B (save for the location at
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`which some sentences break). Similarly, Ex. 1024’s Appendix D is the Baker of
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`Ex. 1007, and Ex. 1024’s Appendix C, which was published in 1996, is identical to
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`Appendix C. Instead, Ex. 1024 merely adds evidence confirming the publication
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`and public accessibility of Van Dyke and Baker prior to the Critical Date.
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`3. Ex. 1027
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`As set forth in MF 15, Ex. 1027 addresses the public accessibility of Howard
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`prior to the Critical Date. Thus, it is relevant under Rule 123(a). Furthermore,
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`Ex. 1027 does not change the evidence on which the petition relies because, other
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`than highlighting, the copy of Howard that is part of Ex. 1027 is the same as
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`Ex. 1018 (MF 15), which Petitioners inherently asserted qualifies as prior art
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`through Petitioners’ citation to Dr. Daneshy’s assertions that Howard reflected the
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`knowledge and understanding of a POSITA (MF 3). Instead, Ex. 1027 merely
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`adds evidence confirming the publication and public accessibility of Howard prior
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`to the Critical Date.
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`4. Ex. 1028
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`As set forth in MF 16, Ex. 1028 addresses the public accessibility of Hyne
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`prior to the Critical Date. Thus, it is relevant under Rule 123(a). Furthermore,
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`Ex. 1028 does not change the evidence on which the petition relies because, other
`
`than differences in ornamental cover design and some additional text on the
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`copyright page of Hyne of Ex. 1019, the copy of Hyne that is part of Ex. 1028 is
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`the same as Ex. 1019 (MF 16), which Petitioners inherently asserted qualifies as
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`prior art through Petitioners’ citation to Dr. Daneshy’s assertions that Hyne
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`reflected the knowledge and understanding of a POSITA (MF 3). Instead,
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`9
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`Case IPR2016-01506
`Patent 7,861,774
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`Ex. 1028 merely adds evidence confirming the publication and public accessibility
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`of Hyne prior to the Critical Date.
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`C. There Will Be No Prejudice to Rapid Completions
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`Rapid Completions received Exs. 1023, 1024, 1027, and 1028 on March 2,
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`2017 (MF 10), slightly more than two months prior to its Patent Owner Response
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`deadline of May 9, 2017. See Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
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`Case IPR2013-00369, slip op. at 5 (Paper 37) (P.T.A.B. Feb. 5, 2014) (as reflected
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`in Paper 27 at 3, the proposed supplemental information was first served as
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`supplemental evidence slightly more than two months prior to deadline).
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`IV. CONCLUSION
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`Entry of Exs. 1023, 1024, 1027, and 1028 as supplemental information
`
`under Rule 123(a) is appropriate for the reasons above.
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`Dated: March 15, 2017
`
`Respectfully submitted,
`
`/Mark T. Garrett/
`Mark T. Garrett
`
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`10
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 15,
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`2017, a complete copy of PETITIONERS’ MOTION TO SUBMIT
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`SUPPLEMENTAL INFORMATION was served on Patent Owner’s Exclusive
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`Licensee via email (by consent), as follows:
`
`hhamad@caldwellcc.com
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`bcaldwell@caldwellcc.com
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`jnemunaitis@caldwellcc.com
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`gonsalves@gonsalveslawfirm.com
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`rapid@caldwellcc.com
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`
`
`/Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
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