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
`___________________
`
`
`
`EXCLUSIVE LICENSEE RAPID COMPLETIONS LLC’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`
`I.
`
`II.
`
`Case IPR2016-01506
`Patent 7,861,774
`
`TABLE OF CONTENTS
`
`Introduction. ..................................................................................................... 1
`
`The Board Should Deny Institution under 35 U.S.C. § 314(a)
`and § 325(d) ..................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`Petitioners Fail to Demonstrate that Lane-Wells Was
`Unavailable at the Time They Filed Their First Petition ...................... 4
`
`Petitioners Used Rapid Completions’ Preliminary Response
`as a Roadmap to Support Improper Serial Petitions ............................. 6
`
`Petitioners Fail to Show That This Follow-On Petition
`Advances Arguments That Are Not Substantially the Same
`as the First Round of Petitions .............................................................. 8
`
`III. Claim Interpretation ......................................................................................... 9
`
`IV. The Petition Fails to Show a Reasonable Likelihood that the Petitioner
`Will Prevail With Respect to the Challenged Claims ..................................12
`
`A.
`
`The Petition Fails to Establish Lane-Wells as Prior Art. ....................12
`
`B. Objective Evidence Confirms the Patentability of the Claimed
`Technology. .........................................................................................17
`
`1.
`
`2.
`
`The Patented Technology Has Received Praise and
`Enjoyed Commercial Success. ..................................................18
`
`The Claimed Invention Operates Contrary to the
`Prevailing Wisdom at the Time of the Invention. .....................24
`
`C.
`
`The Petition Fails to Show That Either Lane-Wells or Ellsworth
`Disclose Pumping Fracturing Fluid Into an Open Hole and
`Uncased, Non-Vertical Annular Segment ...........................................29
`
`1.
`
`2.
`
`3.
`
`Petitioners Fail to Identify This Limitation in Lane-Wells ......29
`
`Petitioners Fail to Identify This Limitation in Ellsworth .........31
`
`The Board May Not Look to Other Sources to Find this
`Limitation in the Prior Art ........................................................34
`
`
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`
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`D.
`
`Petitioners Have Failed to Show that a POSITA Would Combine
`Lane-Wells and Ellsworth as Described in the Petition. .....................35
`
`V.
`
`Conclusion .....................................................................................................38
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`Case IPR2016-01506
`Patent 7,861,774
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`
`
`Cases
`
`
`TABLE OF AUTHORITIES
`
`
`Application of Bayer
`
`568 F.2d 1357 (C.C.P.A. 1978) .....................................................................14
`
`Arendi S.A.R.L. v. Apple Inc.
`
`832 F.3d 1355 (Fed. Cir. 2016) .....................................................................34
`
`Black & Decker, Inc. v. Positec USA, Inc.
`
`No. 2015-1646, 2016 WL 2898012 (Fed. Cir. May 18, 2016) .....................35
`
`Blue Calypso, LLC v. Groupon, Inc.
`
`815 F.3d 1331 (Fed. Cir. 2016) .............................................................. 14, 15
`
`Brown & Williamson Tobacco Corp. v. Philip Morris Inc.
`
`229 F.3d 1120 (Fed. Cir. 2000) .....................................................................24
`
`Bruckelmyer v. Ground Heaters, Inc.
`
`445 F.3d 1374 (Fed. Cir. 2006) .....................................................................14
`
`Butamax Advanced Biofuels v. Gevo, Inc.
`
`IPR2014-00250; Paper No. 8 (May 22, 2014) ................................................ 6
`
`Carella v. Starlight Archery & Pro Line Co.
`804 F.2d 135, 139 (Fed. Cir. 1986), amended on reh'g sub nom.
`
`Carella v. Starlight Archery
`No. 86-728, 1986 WL 1154370 (Fed. Cir. Dec. 16, 1986) .................... 14, 16
`
`
`
`Crocs, Inc. v. Int’l Trade Comm’n
`
`598 F.3d 1294 (Fed.Cir.2010) .......................................................................17
`
`Dynamic Drinkware, LLC v. Nat'l Graphics, Inc.
`
`800 F.3d 1375 (Fed. Cir. 2015) .....................................................................35
`
`In re Hall
`
`781 F. 2d 897 (Fed. Cir. 1986) ......................................................................13
`
`
`
`
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`Case IPR2016-01506
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`
`In re Hedges
`
`783 F.2d 1038, 228 USPQ 685 (Fed.Cir.1986) .............................................24
`
`In re Klopfenstein
`
`380 F.3d 1345 (Fed. Cir. 2004) .....................................................................14
`
`In re Magnum Oil Tools Int’l, Ltd.
`
`No. 2015-1300, 2016 WL 3974202 (Fed. Cir. July 25, 2016) .............. passim
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.
`
`IPR2013-00324, Paper 19 (Nov. 21, 2013) ..................................................... 2
`
`InTouch Techs., Inc. v. VGO Commc'ns, Inc.
`
`751 F.3d 1327 (Fed. Cir. 2014) .............................................................. 17, 38
`
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.
`
`IPR2014-00309, Paper 83 (PTAB March 23, 2014) .....................................17
`
`KSR Int’l Co. v. Teleflex, Inc.
`
`550 U.S. 398 (2007)................................................................................ 35, 36
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n
`
`545 F.3d 1340 (Fed. Cir. 2008) .....................................................................13
`
`McGinley v. Franklin Sports, Inc.
`
`262 F.3d 1339 (Fed. Cir. 2001) .....................................................................17
`
`Medichem, S.A. v. Rolabo, S.L.
`
`437 F.3d 1157 (Fed. Cir. 2006) .............................................................. 29, 30
`
`Microsoft Corp. v. Proxyconn, Inc.
`
`IPR2013-00109, Paper 15 (PTAB Feb. 25, 2014) .......................................... 4
`
`Nvidia Corp. v. Samsung Elecs. Co.
`
`IPR2016-00134, Paper 9 (PTAB May 4, 2016) ..................................... 3, 5, 9
`
`PAR Pharm., Inc. v. TWI Pharm., Inc.
`
`773 F.3d 1186 (Fed. Cir. 2014) .....................................................................29
`
`
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`Case IPR2016-01506
`Patent 7,861,774
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`Perfect Web Techs., Inc. v. InfoUSA, Inc.
`
`587 F.3d 1324 (Fed. Cir. 2009) .....................................................................34
`
`PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC
`
`815 F.3d 734 (Fed. Cir. 2016) .......................................................................23
`
`Samsung Elecs. Co. Ltd. v. Rembrandt Wireless Techs.
`
`LP, IPR2015-00118, Paper No. 14 (Jan. 28, 2015) .....................................2, 7
`
`SRI Int’l, Inc. v. Internet Sec. Sys., Inc.
`
`511 F.3d 1186 (Fed. Cir. 2008) ........................................................ 13, 14, 15
`
`Star Scientific, Inc., v. R.J. Reynolds Tobacco Co.
`
`655 F.3d 1364 (Fed. Cir. 2011) .....................................................................17
`
`Toyota Motor Corp. v. Cellport Systems, Inc.
`
`IPR2015-01423, Paper No. 7 (Oct. 28, 2015) ....................................... passim
`
`US Endodontics, LLC, v. Gold Standard Instruments, LLC
`
`IPR2015-01476, Paper No. 13 (Oct. 26, 2015) ...........................................6, 9
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.
`
`721 F.2d 1540 (Fed.Cir. 1983) ......................................................................24
`
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations, LLC
`
`IPR2014-01080, Paper 17 (PTAB Oct. 31, 2014) ........................................... 3
`
`Statutes
`
`35 U.S.C. § 314(a) ................................................................................ 1, 2, 8, 12, 38
`
`35 U.S.C. § 325(d). .......................................................................................... passim
`
`Other Authorities
`
`H.R. Rep. No. 112-98, pt.1, at 48 (2011) ................................................................... 7
`
`MPEP § 2128 ...........................................................................................................13
`
`
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`Case IPR2016-01506
`Patent 7,861,774
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`Exhibit List
`Description
`Email correspondence between J. Nemunaitis and M. Garret
`R. Seale et al., Effective Stimulation of Horizontal Wells—A
`New Completion Method, SPE 106357, Society of Petroleum
`Engineers (2006)
`Exploration and Development, Alberta Oil Magazine
`Leading the Way: Multistage fracking pioneer Packers Plus
`plays major role in cracking the tight oil code, Canadian
`OilPatch Technology Guidebook (2012)
`Financial Post, “Entrepreneur of the Year: National Winner”
`Innovation—Groundbreaking Innovation in Calgary, Calgary
`Herald (Feb. 12, 1014)
`J. Chury, Packers Plus Technology Becoming the Industry
`Standard, The Oil Patch Report (Dec. 2010/Jan. 2011)
`P. Roche, Open-Hole or Cased and Cemented, New
`Technology Magazine (Nov. 2011)
`R. Ghiselin, Qittitut Consulting, Sleeves vs. Shots—The
`Debate Rages (Aug. 2011)
`Van Dyke, Kate, “Fundamentals of Petroleum,” Fourth Ed.
`(1997)
`“Proven Performance: Read how Packers Plus systems and
`solutions have delivered results around the world,” Packers
`Plus Energy Services Inc., accessed May 24, 2016,
`http://packersplus.com/proven-performance/?type=case-
`study&system=stackfrac-hd-system&pag=3%20#p3
`A. Casero, Open Hole Multi-Stage Completion System in
`Unconventional Plays: Efficiency, Effectiveness and
`Economics, SPE 164009 (2013)
`Encyclopedia of Hydrocarbons, Chapter 3.1: Upstream
`technologies
`D. Lohoefer, Comparative Study of Cemented versus
`Uncemented Multi-Stage Fractured Wells in the Barnett
`Shale, SPE 135386, Society of Petroleum Engineers (2010)
`A. Daneshy Depo. Tr. (11/9/2016)
`Packers Plus advertising brochure (2010)
`Baker Hughes, “FracPoint Completion System Isolated
`Openhole Horizontal Well in Lower Huron Shale” (2011)
`
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`Exhibit
`2003
`2004
`
`2005
`2006
`
`2007
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`2018
`2019
`
`
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`Case IPR2016-01506
`Patent 7,861,774
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`2020
`
`2021
`
`Baker Hughes, Énhancing Well Performance Through
`Innovative Completion Technologies,” presentation, (Sept.
`10-12, 2012)
`Canadian Society for Unconventional Resources, Press
`Release, “Unconventional Industry Awards Innovative
`Thinking” (Oct. 3, 2012)
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`Case IPR2016-01506
`Patent 7,861,774
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`
`I.
`
`Introduction.1
`
`This is the second Petition that Petitioners have filed against this patent, and
`
`it is one of three Petitions Respondent is currently defending against for this patent.
`
`Petitioners offer no justification as to why this follow-on petition is necessary, or
`
`why it was not filed earlier. It is precisely the type of “second bite at the apple”
`
`that the Board has routinely denied.
`
`Substantively, this Petition is similar to the one that the Board already
`
`instituted for this patent. It suffers from many of the same deficiencies that will be
`
`addressed in Respondent’s upcoming response in that instituted proceeding. For
`
`both substantive and procedural reasons, neither the Board nor Respondent should
`
`be burdened with this additional Petition.
`
`II. The Board Should Deny Institution under 35 U.S.C. § 314(a) and §
`325(d).
`
`“Congress did not mandate that an inter partes review must be instituted
`
`under certain conditions. Rather, by stating that the Director—and by extension,
`
`the Board—may not institute review unless certain conditions are met, Congress
`
`
`1 Petitioners have filed Petitions asserting similar grounds against three patents. For
`ease of reading, Respondent provides the following explanation of the similarities
`and differences between its various Preliminary Responses being filed today.
`Respondent’s Preliminary Response with regard to the ’774 patent (IPR2016-01506)
`addresses a number of issues unique to that patent. Respondent’s Preliminary
`Responses with regard to the ’505 and ’634 Patents (IPR2016-1496 and IPR2016-
`1505) are substantively identical and they contain a subset of the information
`contained in Respondent’s Response with regard to the ’774 patent.
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`Case IPR2016-01506
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`made institution discretionary.” Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge Ltd., Case IPR2013-00324, Paper 19 at 4 (Nov. 21, 2013); see also 35
`
`U.S.C. § 314(a). In particular, 35 U.S.C. § 325(d) states that “[i]n determining
`
`whether to institute or order a proceeding under this chapter, chapter 30, or chapter
`
`31, the Director may take into account whether, and reject the petition or request
`
`because, the same or substantially the same prior art or arguments previously were
`
`presented to the Office.”
`
`Relying on these provisions, the Board has routinely denied petitioners’
`
`follow-on petitions as interfering with the Board’s mandate to “secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” See, e.g., Samsung
`
`Elecs. Co. Ltd. v. Rembrandt Wireless Techs., LP, IPR2015-00118, Paper No. 14 at
`
`6 (Jan. 28, 2015). The Board has noted on several occasions that “[s]uch a second
`
`bite at the apple wastes the Board’s limited resources and imposes undue burden
`
`on the Patent Owner.” See, e.g., Toyota Motor Corp. v. Cellport Systems, Inc.,
`
`IPR2015-01423, Paper No. 7 at 7-8 (Oct. 28, 2015); see also, e.g., Samsung Elecs.,
`
`IPR2015-00118, Paper No. 14 at 6.
`
`Consistent with the above policy and precedent, the Board has denied
`
`follow-on petitions in cases where, for example, (1) the Petitioner failed to
`
`demonstrate that the newly cited references were unavailable at the time of filing
`
`of the initial petition, (2) the follow on petition utilizes a previous Board decision
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`or a Patent Owner’s preliminary response as a roadmap to remedy deficiencies in
`
`the earlier petition, or (3) the follow-on petition presents substantially the same
`
`arguments or prior art as the initial petition. See, e.g., Toyota Motor Corp.,
`
`IPR2015-01423, Paper No. 7 at 7-8 (noting that Petitioner presented no argument
`
`or evidence that the newly cited references were unknown or unavailable to
`
`Petitioner at the time of filing of the first petition); Zimmer Holdings, Inc. v.
`
`Bonutti Skeletal Innovations, LLC, IPR2014-01080, Paper 17 at 5 (PTAB Oct. 31,
`
`2014) (refusing to institute a follow-on petition because Petitioners are typically
`
`not entitled to “a second chance”); Nvidia Corp. v. Samsung Elecs. Co., IPR2016-
`
`00134, Paper 9 at 13 (PTAB May 4, 2016) (denying institution because Petitioner
`
`“did not articulate any meaningful difference” between an earlier petition and a
`
`follow-on petition).
`
`Because the Board frequently denies follow-on petitions, it has consistently
`
`warned petitioners that they must provide an adequate explanation as to why a new
`
`petition is necessary in the petition itself. See, e.g., Toyota Motor Corp. v.
`
`American Vehicular Sciences LLC, IPR2015-00262, Paper 10 at 3 (PTAB Jan. 29,
`
`2015) (denying Petition where Petitioner failed to explain why it did not include
`
`the grounds of a follow-on petition in an earlier filed petition). This requirement is
`
`important because the burden of justifying a follow-on petition falls on the
`
`petitioner. Id. If a Petitioner does not even attempt to meet that burden in its
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`Petition, neither the Board nor the patent owner has a fair opportunity to evaluate
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`Case IPR2016-01506
`Patent 7,861,774
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`the petitioner’s position.
`
`Here, the Petition is silent as to why a follow-on Petition is necessary. It
`
`cites no evidence that Petitioners were unaware of or unable to obtain Lane-Wells
`
`when they filed their first round of Petitions. Nor does it identify a change in
`
`circumstance that would otherwise justify a follow-on Petition. Cf. Microsoft
`
`Corp. v. Proxyconn, Inc., Case IPR2013-00109, Paper 15 at 3, 5 (PTAB Feb. 25,
`
`2014) (granting joinder when additional claims had been asserted against petitioner
`
`in district court litigation). For this reason alone, the Board should deny
`
`institution. Moreover, Petitioners could not meet their burden even if they tried.
`
`A.
`Petitioners Fail to Demonstrate that Lane-Wells Was Unavailable
`at the Time They Filed Their First Petition.
`
`The Petition is silent as to when Petitioners contend Lane-Wells was first
`
`available to them. Nonetheless, Petitioners have acknowledged this issue
`
`elsewhere. In their motion for joinder they argued that they did not discover Lane-
`
`Wells until June 20, 2016, a few weeks after Rapid Completions filed its
`
`preliminary responses to Petitioners’ first round of petitions. IPR2016-01506,
`
`Paper 6 at 2. However, as Rapid Completions noted in its response to that motion,
`
`Petitioners have not actually offered any evidence to support that claim. IPR2016-
`
`01506, Paper 13 at 11-12. Even if it were true, they have offered no evidence that
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`they conducted diligent searches or contacted knowledgeable employees to discuss
`
`sources of relevant prior art. There is currently no evidence before the Board from
`
`which the Board could infer that Lane-Wells was actually unavailable to
`
`Petitioners at the time they filed their first round of Petitions. Simply put,
`
`unsubstantiated attorney argument on this issue cannot meet a Petitioner’s burden
`
`of justifying a follow-on petition. Nvidia, IPR2016-00134, Paper 9 at 10 (finding
`
`that unsubstantiated attorney argument that reference was unavailable when filing
`
`an earlier petition was incorrect and denying institution).
`
`Petitioners have not just failed to meet their burden on this issue; they have
`
`affirmatively refused to provide the type of information that the Board could use to
`
`evaluate the issue. On September 28, 2016, Rapid Completions specifically
`
`requested the evidentiary basis for Petitioners’ assertions in their motion for
`
`joinder that they did not locate Lane-Wells before they filed their first round of
`
`Petitions. It also requested an explanation as to how Petitioners ultimately located
`
`Lane-Wells. Ex. 2003. After all, if Lane-Wells was so difficult to locate before
`
`Petitioners filed their first round of petitions, how did they locate it so quickly after
`
`they reviewed Rapid Completions’ Preliminary Responses to those petitions?
`
`Petitioners have refused to provide this information. Ex. 2003. Because
`
`Petitioners bear the burden of justifying this follow-on petition, their refusal to
`
`provide this information is fatal to their request for inter partes review.
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`
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`B.
`Petitioners Used Rapid Completions’ Preliminary Response as a
`Roadmap to Support Improper Serial Petitions.
`
`The Board’s case law discourages serial attacks on patents. Toyota Motor
`
`Corp., Paper No. 7 at 7-8 (explaining that “the opportunity to read Patent Owner’s
`
`Preliminary Response in [the previous IPR proceeding], prior to filing the Petition
`
`here, is unjust”); see also US Endodontics, LLC, v. Gold Standard Instruments,
`
`LLC, IPR2015-01476, Paper No. 13 at 9-10 (Oct. 26, 2015) (denying institution
`
`and observing that “[t]o the extent that the grounds [in the follow-on petition] are
`
`offered in some capacity to respond to arguments made by [patent owner] in its
`
`Preliminary Response in the [first IPR proceeding], . . . generally a petitioner is not
`
`permitted to respond to arguments presented by a patent owner in a preliminary
`
`response until after a trial has been instituted”).
`
`The Board’s rationale for the above decisions is straightforward. “Allowing
`
`similar, serial challenges to the same patent, by the same petitioner, risks
`
`harassment of patent owners and frustration of Congress’s intent in enacting the
`
`Leahy-Smith America Invents Act.” Butamax Advanced Biofuels, Paper No. 8 at
`
`12–13. Indeed, as noted in the AIA’s legislative history, AIA proceedings “are not
`
`to be used as tools for harassment or a means to prevent market entry through
`
`repeated litigation and administrative attacks on the validity of a patent. Doing so
`
`would frustrate the purpose of the section as providing quick and cost effective
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`alternatives to litigation.” See H.R. Rep. No. 112-98, pt.1, at 48 (2011). “[I]t is
`
`more efficient for the parties and the Board to address a matter once rather than
`
`twice.” Samsung Elec. Co. v. Rembrandt Wireless Techs., LP, IPR2015-00114,
`
`Paper No. 14 at 6 (Jan. 28, 2015).
`
`The Board should deny this follow-on petition for the same reasons
`
`expressed in the authority above. Petitioners filed this second petition several
`
`months after Rapid Completions filed its preliminary responses in the first round of
`
`petitions. Petitioners used that preliminary response as a roadmap for this Petition.
`
`For example, Rapid Completions had previously criticized Petitioners for failing to
`
`prove up the asserted references as prior art. In this Petition, Petitioners submitted
`
`additional affidavits. As another example, Rapid Completions criticized
`
`petitioners for failing to identify a “rational underpinning” for using solid body
`
`packers as described in the patented invention. Petitioners now devote several
`
`sections to this issue. Pet. at §§ VIII.A.2-3. Finally, Rapid Completions explained
`
`that none of the references cited in Petitioners first round petitions disclosed
`
`fracturing through open-hole segments. Petitioners now (wrongly) contend that
`
`Lane-Wells teaches this specific feature. Pet. at VIII.A.1. While the present
`
`Petition still fails to overcome these deficiencies, Petitioners must have been
`
`influenced by Respondent’s preliminary responses. Indeed, the Petition actually
`
`acknowledges the arguments made in those preliminary responses. See, e.g., Pet.
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`Case IPR2016-01506
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`at 2 (“Patent Owner may assert several purported distinctions over the prior art—
`
`such as the ‘solid body’ nature of its packers, or the use of its system in an open
`
`(uncased) hole—but all fail.”). Thus, this Petition should be denied under § 314(a)
`
`as an improper attempt at gamesmanship.
`
`C.
`Petitioners Fail to Show That This Follow-On Petition Advances
`Arguments That Are Not Substantially the Same as the First Round of
`Petitions.
`
`Petitioners fail to explain why their Lane-Wells + Ellsworth theories are
`
`“substantively and meaningfully different” from their Thomson + Ellsworth
`
`theories. With respect to both theories, Petitioners propose combining the ball-
`
`activated sleeves of Thomson or Lane-Wells with the open hole packers of
`
`Ellsworth. And, with respect to both theories they fail to show that it would have
`
`been obvious to pump fracturing fluid through ball-activated sleeves in multiple
`
`open hole segments. Petitioners’ failure to dispute these similarities, on its own, is
`
`grounds for denial under § 325(d). See Toyota Motor Corp, Paper No. 7 at 7-8.
`
`In fact, Petitioners do not even dispute that § 325(d) is applicable. In their
`
`motion for joinder, Petitioners specifically argued that § 325(d) is applicable to
`
`this Petition. IPR2016-01506, Paper 6 at 2. While they requested that the Board
`
`use § 325(d) to join the earlier filed Petitions with the follow-on Petitions, they
`
`failed to cite even a single Board decision that applied § 325(d) in such a way. The
`
`overwhelming weight of authority indicates that proper application of § 325(d)
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`Case IPR2016-01506
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`requires denial of the follow-on Petition not joinder. See, e.g., Nvidia Corp. v.
`
`Samsung Elecs. Co., IPR2016-00134, Paper 9 at 13 (PTAB May 4, 2016); Toyota
`
`Motor Corp. v. Cellport Sys., Inc., Case IPR2015-01423, Paper 7 at 8 (PTAB Oct.
`
`28, 2015); US Endodontics, LLC v. Gold Standard Instruments, LLC, IPR2015-
`
`01476, Paper 13 at 9-10 (PTAB Oct. 26, 2015). The Board should follow that
`
`authority here.
`
`Overall, Petitioners do not even attempt to meet their burden of justifying
`
`this follow-on Petition. The Board need not—and should not—attempt to do
`
`Petitioners’ work for them by searching for some justification that was never
`
`proposed in the Petition. See In re Magnum Oil Tools Int’l, Ltd., No. 2015-1300,
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`2016 WL 3974202, at *10 (Fed. Cir. July 25, 2016) (finding “no support for the
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`PTO’s position that the Board is free to adopt arguments on behalf of petitioners
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`that could have been, but were not, raised by the petitioner during an IPR” because
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`“the Board must base its decision on arguments that were advanced by a party, and
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`to which the opposing party was given a chance to respond.”). Thus, the Board
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`should deny this Petition.
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`III. Claim Interpretation
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`Petitioners propose formal constructions for various terms. Respondent
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`disagrees with these proposals, at least in part, and it intends to dispute them in the
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`district court litigation.2
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` Nonetheless, there is no need for the Board to address
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`these disputes now, because Petitioners cannot even meet their burden under their
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`own proposed claim constructions. However, Respondent does believe that the
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`Board should consider interpreting a different limitation: “the second annular
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`wellbore segment.”
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`The broadest reasonable interpretation for this term requires that the second
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`annular wellbore segment be in an open hole, non-vertical section of the wellbore.
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`Thus, when claim 1 requires “pumping fracturing fluid through the second port and
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`into the second annular wellbore segment to fracture the hydrocarbon containing
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`formation” this limitation requires pumping the fracturing fluid into an open hole,
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`non-vertical segment.
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`This interpretation is supported by the language of claim 1 which requires
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`creating a second annular wellbore segment that “provid[es] access to the
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`hydrocarbon-containing formation along the wellbore wall in the open hole and
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`uncased, non-vertical section of the wellbore.” This limitation provides the
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`antecedent basis for the subsequent fracturing limitation that refers to “the second
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`annular wellbore segment.” Thus, claim 1 requires fracturing through an open
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`hole, non-vertical segment. Petitioners’ expert agrees that claim 1 requires
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`2 If trial is instituted, Respondent may also respond to the Board’s claim
`construction determinations in its response.
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`pumping the fracturing fluid into an open hole, non-vertical segment. Ex. 2017, A.
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`Daneshy Depo. Tr. at 51:3-14.
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`Respondent requests that the Board adopt this interpretation because its
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`institution decision in IPR2016-00598 found that this limitation was taught by a
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`portion of Ellsworth that refers to pumping fluid into a cased and vertical section
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`of a wellbore. Specifically, the decision states:
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`According to Packers Plus, Ellsworth is directed to a “conventional”
`completion system, not “hydraulic fracturing” through “open hole
`annular segments.” Prelim. Resp. 33–34. We are not persuaded. As we
`see it, Ellsworth teaches a completion system in which an “open hole
`horizontal wellbore” is “segmented into three sections, with the ability
`to produce any or all of these sections.” Ex. 1003, 2–3. And, according
`to Ellsworth, “solid body packers” were used “to establish open hole
`isolation.” Id. at 3. Once the “open hole packers” were set, another tool
`was used “to circulate inhibited fluid into the annulus. Id.; see also id.
`at 4–5 (Figs. 5, 7).”
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`Decision at 9-10. Thus, the Panel appears to have found a teaching of fracturing
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`through open hole annular segments based on Ellsworth’s disclosure of circulating
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`inhibited fluid into the annulus. This argument was never asserted by Petitioners,
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`and, in fact, this portion of Ellsworth refers to circulating a corrosion inhibiting
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`fluid in the vertical, cased hole portion of the wellbore to protect the casing from
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`corrosion. See infra IV.D.2. Under the proper interpretation of the term “the
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`second annular wellbore segment,” which requires fracturing through an open hole,
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`non-vertical segment, Ellsworth does not meet this limitation.
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`IV. The Petition Fails to Show a Reasonable Likelihood that the Petitioner
`Will Prevail With Respect to the Challenged Claims.
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`In its preliminary response in the instituted proceeding, Respondent
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`identified various deficiencies in the Petition. Many of those same arguments
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`apply to the present Petition as well. Respondent is currently working to collect
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`additional evidence and prepare a more detailed explanation of those arguments for
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`its Patent Owner Response in the instituted proceeding. It has only just recently
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`deposed Petitioners’ expert in the instituted proceeding and it is in the process of
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`negotiating various discovery issues in those proceedings. Thus, Respondent will
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`not preview here all of the arguments and evidence it intends to present in the
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`instituted proceeding.3 With that said, the Petition is deficient for at least the
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`following reasons.
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`A. The Petition Fails to Establish Lane-Wells as Prior Art.
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`In its preliminary responses to Petitioners’ first round Petitions, Rapid
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`Completions argued that Petitioners had failed to establish Thomson as prior art.
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`The Board agreed that the specific evidence contained in the Petition may be
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`deficient as hearsay or lacking authentication. Nonetheless, it found that Thomson
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`bore a publication date from a reputable source and it instituted review because it
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`3 The fact that Respondent is faced with this tactical dilemma is yet another reason
`why the Board should decline to institute review under 35 U.S.C. § 314(a) or §
`325(d).
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`concluded that Petitioners could likely overcome any evidentiary objections. For
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`this follow-on Petition, Petitioners have once again failed to present evidence
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`establishing a reference (Lane-Wells) as prior art. However, this new failure is far
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`more significant.
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`“Public accessibility” is the touchstone inquiry for determining whether a
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`reference constitutes a printed publication. In re Hall, 781 F. 2d 897, 898–99 (Fed.
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`Cir. 1986). The determination depends “upon a satisfactory showing that such
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`document has been disseminated or otherwise made available to the extent that
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`persons interested and ordinarily skilled in the subject matter or art, exercising
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`reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade
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`Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet
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`Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).
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`The Federal Circuit jurisprudence has focused on two types of proof of
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`public accessibility. See generally MPEP § 2128. One line of cases focuses on
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`whether a publication is accessible because it is available from a public resource
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`such as a library, university, or Internet site. See, e.g., In re Hall, 781 F.2d 897,
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`228 USPQ 453 (Fed. Cir. 1986) (finding a student thesis to be prior art based on a
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`Librarian’s affidavit establishing University practices for indexing, cataloging and
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`shelving doctoral theses). The key inquiry in this line of cases is whether the
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`reference is indexed in such a way that “an ordinarily skilled artisan, exercising
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`reasonable diligence, will be able to locate a particular reference. . . .” Blue
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`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1349 (Fed. Cir. 2016); Compare
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`Application of Bayer, 568 F.2d 1357, 13