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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
` WEATHERFORD INTERNATIONAL, LLC, WEATHERFORD/LAMB, INC.,
`WEATHERFORD US, LP, and WEATHERFORD ARTIFICIAL LIFT
`SYSTEMS, LLC,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
`
`
`
`Case IPR2016-01517
`Patent 7,134,505
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`EXCLUSIVE LICENSEE’S NOTICE OF APPEAL
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`Pursuant to 35 U.S.C. §§ 141 and 142 and 37 C.F.R. §§ 90.2(a), 90.3 and
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`104.2, Exclusive Licensee, Rapid Completions LLC, (“Rapid Completions”)
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`hereby provides notice of its appeal to the United States Court of Appeals for the
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`Federal Circuit for review of the Final Written Decision of the United States Patent
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`and Trademark Office (“USPTO”) Patent Trial and Appeals Board (“PTAB”) in
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`Inter Partes Review 2016-01517, concerning U.S. Patent 7,134,505 (“the ’505
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`patent”), entered on February 22, 2018, attached hereto as Appendix A.
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`ISSUES TO BE ADDRESSED ON APPEAL
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`A. Whether the PTAB erred in concluding that claims 23 and 27 would have
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`been obvious under 35 U.S.C. § 103 over Thomson, Ellsworth, and
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`Yost?
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`B. Whether the PTAB erred in giving insufficient weight to Patent Owner’s
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`secondary considerations of non-obviousness?
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`C. Whether the PTAB erred in concluding that Patent Owner did not
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`demonstrate commercial success?
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`D. Whether the PTAB erred in concluding that Patent Owner did not
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`demonstrate a long-felt but unsolved need?
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`E. Whether the PTAB erred in concluding that Patent Owner did not show
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`that the claimed invention was contrary to accepted wisdom and
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`produced unexpected results?
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` 2
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`F. Whether the PTAB erred in concluding that a person of ordinary skill in
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`the art would have been motivated to combine the teachings of the prior
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`art and would have achieved the claimed inveniton with a reasonable
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`expectation of success?
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`G. Whether the Board erred in its determination as to the real parties in
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`interest with respect to this proceeding?
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`Rapid Completions reserves the right to challenge any finding or
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`determination supporting or related to the issues listed above, and to challenge any
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`other issues decided adversely to Rapid Completions in the Final Written Decision
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`and/or any orders, decisions or rulings underlying the Final Written Decision.
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`Simultaneous with submission of this Notice of Appeal to the Director of the
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`United States Patent and Trademark Office, this Notice of Appeal is being filed
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`with the Patent Trial and Appeal Board. In addition, this Notice of Appeal, along
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`with the required docketing fees, is being filed with the United States Court of
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`Appeals for the Federal Circuit.
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`Dated: April 20, 2018
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`Respectfully submitted,
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`
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`/Gregory J. Gonsalves/
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
` 3
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that in addition to being filed electronically
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`through the Patent Trial and Appeal Board’s E2E system the foregoing NOTICE
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`OF APPEAL was served on the Director of the United States Patent and
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`Trademark Office, at the following address (in accordance with 37 C.F.R. §§
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`90.2(a), 104.2):
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`Director of the United States Patent and Trademark Office
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`c/o Office of the General Counsel
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`United States Patent and Trademark Office
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`P.O. Box 1450 Alexandria, Virginia 22313-1450
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`CERTIFICATE OF FILING
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`The undersigned certifies that on April 20, 2018, a true and correct copy of
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`the foregoing NOTICE OF APPEAL was filed electronically with the Clerk’s
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`Office of the United States Court of Appeals for the Federal Circuit at the
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`following address:
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`Clerk of Court
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`United States Court of Appeals for the Federal Circuit
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`717 Madison Place NW
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`Washington, DC 20005
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` 4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing NOTICE OF
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`APPEAL was served on April 20, 2018, by filing this document though the
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`PTAB’s E2E system as well as by delivering a copy via electronic mail to the
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`attorneys of record for the Petitioners as follows:
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`
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`Lead Counsel
`
`Jason Shapiro
`Reg. No. 35,354
`EDELL, SHAPIRO & FINNAN, LLC
`9801Washingtonian Blvd.
`Suite750
`Gaithersburg,MD 20878
`js@usiplaw.com
`301-424-3640
`
`Backup Counsel
`
`Patrick Finnan
`Reg. No. 39,189
`EDELL, SHAPIRO & FINNAN, LLC
`9801Washingtonian Blvd.
`Suite750
`Gaithersburg,MD 20878
`pjf@usiplaw.com
`301-424-3640
`
`
`Dated: April 20, 2018
`
`
`
`
`
`/Gregory J. Gonsalves/
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
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` 5
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`Appendix A
`Appendix A
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` 6
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`
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`Trials@uspto.gov
`571-272-7822
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`PUBLIC VERSION – REDACTED
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`Paper 65
`Entered: April 3, 2018
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WEATHERFORD INTERNATIONAL, LLC,
`WEATHERFORD /LAMB, INC., WEATHERFORD US, LP, and
`WEATHERFORD ARTIFICIAL LIFT SYSTEMS, LLC,
`Petitioner,
`
`v.
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`PACKERS PLUS ENERGY SERVICES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01517
`Patent 7,134,505 B2
`____________
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
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`POWELL, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`Inter Partes Review
`37 C.F.R. § 42.108
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`I. INTRODUCTION
`Packers Plus Energy Services Inc. (“Packers Plus”) is the owner of the
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`’505 patent. Weatherford International, LLC, Weatherford/Lamb, Inc.,
`Weatherford US, LP, and Weatherford Artificial Lift Systems, LLC
`(“Petitioner”) filed a Petition (Paper 1, “Pet.”) challenging claims 23 and 27
`of the ’505 patent. Rapid Completions LLC, the exclusive licensee of the
`’505 patent, filed a Preliminary Response (Paper 18, “Prelim. Resp.”). In
`view of those submissions, we instituted an inter partes review of claims 23
`and 27 of the ’505 patent. Paper 23 (“Institution Decision” or “Dec. on
`Inst.”). Subsequent filings include a Patent Owner Response (Papers 32,
`331, “PO Resp.”), a Petitioner Reply (Paper 39, “Pet. Reply”), and a Patent
`Owner Surreply (Paper 55, “PO Surreply”).
`We have jurisdiction over this proceeding under 35 U.S.C. § 6(b).
`After considering the evidence and arguments of the parties, we determine
`that Petitioner has proven by a preponderance of the evidence that claims 23
`and 27 of the ’505 patent are unpatentable. See 35 U.S.C. § 316(e). We
`issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).
`II. BACKGROUND
`
`A.
`
`The ’505 Patent
`The ’505 patent discloses an apparatus and method for fluid treatment
`of a wellbore. Ex. 1001, 1:16–19. The ’505 patent discloses that many prior
`systems required inserting a tubing string into a bore hole “with the ports or
`perforations already open.” Id. at 2:10–12. The ’505 patent states that this
`
`
`1 Paper 32 is a private, unredacted version of the Patent Owner Response,
`and Paper 33 is a public, redacted version of the Patent Owner Response.
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`“can hinder the running operation and limit usefulness of the tubing string.”
`Id. at 2:15–17. The ’505 patent addresses this problem, disclosing that its
`“method and apparatus provide for the running in of a fluid treatment string,
`the fluid treatment string having ports substantially closed against the
`passage of fluid therethrough, but which are openable when desired to
`permit fluid flow into the wellbore.” Id. at 2:26–31. Regarding applications
`for its system, the ’505 patent discloses that “[t]he apparatus and methods of
`the present invention can be used in various borehole conditions including
`open holes, cased holes, vertical holes, horizontal holes, straight holes or
`deviated holes.” Id. at 2:31–34.
`The ’505 patent shows details of a wellbore fluid treatment assembly
`in Figure 1b. Id. at 6:8–9. Figure 1b is reproduced below.
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`Figure 1b shows a wellbore fluid treatment assembly, including tubing
`string 14 disposed inside wellbore 12 of formation 10. Id. at 6:8–12.
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`Packers 20d, 20e, and 20f mount at different positions along the axis
`of tubing string 14. See id. at 6:17–19; Fig. 1b. The packers used are solid-
`body type packers having at least one extrudable packing element. Id. at
`6:33–34. At ported intervals 16c, 16d, and 16e, ports 17 open through
`tubing string 14. Id. at 6:12–16. Ported interval 16c sits above packer 20d,
`ported interval 16d sits between packers 20d and 20e, and ported interval
`16e sits between packers 20e and 20f. See id. at 6:17–19; Fig. 1b.
`Sliding sleeves 26c, 26d, and 26e are positioned inside tubing
`string 14 to regulate opening of ports 17. Id. at 6:41–42. Sliding sleeves
`26c, 26d, and 26e mount over ports 17 of ported intervals 16c, 16d, and 16e,
`respectively, to close the ports 17. See id. at 6:42–44. Each of sliding
`sleeves 26c, 26d, and 26e can be moved to a position away from the
`associated ports 17 to open them. Id. at 6:46–53. In one embodiment, a ball
`or plug may actuate a sliding sleeve from the closed state to an open state.
`Ball 24e can travel through tubing string 14 and seat in sleeve 22e. Id. at
`6:65–7:18. For example, ball 24e can travel through tubing string 14 and
`seat in sliding sleeve 26e. Id. at 6:65–7:11. Subsequently, pressure applied
`inside tubing string 14 can move ball 24e and sliding sleeve 26e to open
`ports 17 of ported interval 16e, as shown in Figure 1b. Id. at 7:2–15. This
`allows fluid flow between the inside and the outside of tubing string 14
`through ports 17. Id. at 7:15–18. Other balls can be used to move the other
`sliding sleeves in sequence, so as to allow sequential treatment of different
`zones within wellbore 12. Id. at 7:66–8:35. To facilitate sequential
`treatment, the ’505 patent discloses that
`Each of the plurality of sliding sleeves has a different diameter
`seat and therefore each accept different sized balls. In
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`particular, the lower-most sliding sleeve 22e has the smallest
`diameter D1 seat and accepts the smallest sized ball 24e and
`each sleeve that is progressively closer to surface has a larger
`seat.
`Id. at 7:19–24.
`Related Matters
`B.
`
`The ’505 patent is involved in a concurrent district court action, Rapid
`Completions LLC v. Baker Hughes Incorporated, No. 6:15-cv-00724 (E.D.
`Tex.), which was filed July 31, 2015. Paper 4. Additionally, the ’505 patent
`is challenged in IPR2016-00596, where we instituted trial in August, 2016.
`The ’505 patent is also challenged in IPR2016-01496, in which trial was
`instituted in February, 2017.
`Illustrative Claims
`C.
`Claim 23 depends from independent claim 19. Claim 27 depends
`from independent claim 24. Claims 19 and 23 are reproduced below as
`illustrative.
`19. A method for fluid treatment of a borehole, the method
`comprising:
`providing an apparatus for wellbore treatment including
`a tubing string having a long axis,
`a first port opened through the wall of the tubing string,
`a second port opened through the wall of the tubing string, the
`second port offset from the first port along the long axis of the
`tubing sting,
`a first packer operable to seal about the tubing string and
`mounted on the tubing string to act in a position offset from the
`first port along the long axis of the tubing string,
`a second packer operable to seal about the tubing string and
`mounted on the tubing string to act in a position between the
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`first port and the second port along the long axis of the tubing
`string;
`a third packer operable to seal about the tubing string and
`mounted on the tubing string to act in a position offset from the
`second port along the long axis of the tubing string and on a
`side of the second port opposite the second packer,
`at least one of the first, second and third packer being a solid
`body packer each including multiple packing elements;
`a first sleeve positioned relative to the first port, the first sleeve
`being moveable relative to the first port between a closed port
`position and a position permitting fluid flow trough the first
`port from the tubing string inner bore
`a second sleeve being moveable relative to the second port
`between a closed port position and a position permitting fluid
`flow through the second port from the tubing string inner bore;
`and
`a sleeve shifting means for moving the second sleeve from the
`closed port position to the position permitting fluid flow, the
`means for moving the second sleeve selected to create a seal in
`the tubing string against fluid flow past the second sleeve
`through the tubing string inner bore and;
`running the tubing string into a wellbore in a desired position for
`treating the wellbore;
`setting the packers by hydraulically driving a piston to compress at
`least one of the multiple packing elements of at least one of the first,
`second and third packers;
`conveying the means for moving the second sleeve to move the
`second sleeve and increasing fluid pressure to force wellbore
`treatment fluid out through the second port.
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`Ex. 1001, 15:46—16:16 (line breaks added).
`
`23.
`
`The method of claim 19 wherein when in a desired
`
`position the apparatus is adjacent an open hole section of the
`wellbore and the packers are set to seal the annulus between the
`apparatus and the wellbore wall.
`
`Id. at 16:31—34.
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`D.
`
`The Pending Ground
`
`Claims 23 and 27 of the ’505 patent are challenged as allegedly
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`unpatentable under 35 U.S.C. § 103 based on the following pending ground
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`(Dec. on Inst. 5—6, 30):
`
`Challen.ed Claims § 103
`
`Thomson,2 Ellsworth,3 and
`Yost4
`
`23 and 27
`
`As further support, Petitioner proffers Declarations of Vikram Rao,
`
`Ph-D. (Exs. 1007, 1035). Patent Owner proffers Declarations of Harold E.
`
`McGowen HI, PE. (Exs. 2051, 2081, 2084).
`
`2 D.W. Thomson et al., Design and Installation ofa Cost-Eflective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE (Society for Petroleum Engineering) 37482
`(1997) (Ex. 1003).
`3 B. Ellsworth et al., Production Control ofHorizontal Wells in a Carbonate
`ReefStructure, 1999 Canadian Institute of Mining, Metallurgy, and
`Petroleum Horizontal Well Conference (1999) (Ex. 1004).
`4 AB. Yost et al., Production and Stimulation Analysis ofMultiple
`Hydraulic Fracturing ofa 2, 000-ft Horizontal Well, SPE 19090, Society of
`Petroleum Engineers, Gas and Technology Symposium, Dallas TX, (June 7—
`9, 1989) (Ex. 1002).
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`III. MOTIONS TO EXCLUDE
`The parties have each filed a motion to exclude certain evidence,
`along with subsequent papers disputing the merits of those motions.
`Papers 44, 46, 48, 50, 52, and 53.
`A. Petitioner’s Motion to Exclude Exhibits 2004–2020, 2045–2047,
`2051–2055, 2058–2059, 2061, 2081, 2083, 2085–2089, 2091, and
`2097
`1. Exhibits 2051 and 2081
`Petitioner moves initially to exclude portions of Exhibits 2051 and
`2081, which are declarations by Patent Owner’s declarant, Mr. McGowen,
`under FRE 702, 705, and the PTAB’s Trial Practice Guide at § II(A)(4) and
`also under 37 C.F.R. § 42.65(a). Pet. Mot. 3–7. Petitioner argues
`specifically that portions of Mr. McGowen’s declarations relating to
`commercial success and estimates of revenue due to competitors’ allegedly
`infringing products, are “expert testimony for which it refuses to disclose the
`underlying facts or data.” Id. at 4.
`It is not clear that Mr. McGowen’s estimates of Baker Hughes’s
`revenue from its IsoFrac and FracPoint well completion systems, are
`inadmissible under FRE 702 and 705. FRE 705 states that “an expert may
`state an opinion — and give the reasons for it — without first testifying to
`the underlying facts or data.” Further, 37 C.F.R. § 42.65(a) states that
`“[e]xpert testimony that does not disclose the underlying facts or data on
`which the opinion is based is entitled to little or no weight.” Thus,
`Petitioner’s arguments with respect to Exhibits 2051 and 2081 go more to
`weight of the declarant’s testimony rather than admissibility. We do not,
`therefore exclude Exhibits 2051 and 2081. We appreciate that Mr.
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`McGowen’s initial estimates are based on information not available to
`Petitioner in this proceeding. See Pet. Mot. 4, see also Ex. 2051 42, n. 65
`(“In arriving at this revenue estimate, I identified, analyzed, and summarized
`Baker Hughes confidential data containing information on the cost and/or
`profit derived from the sale of equipment that was run into a well.”).
`However, Mr. McGowen’s subsequent reliance on only publically available
`Baker Hughes’s marketing sources and a cash estimate of “revenue per frac
`stage” is reasonably within Mr. McGowen’s experience and expertise in the
`field. See Ex. 2081, 23–24, 6 see also Ex. 2051, 1–3. Because the actual
`revenue value is admittedly a “rough estimate,” we accord little if any
`weight to the asserted financial figure itself. Id. We do credit, to some
`extent, Mr. McGowen’s inference that Baker Hughes has derived certain
`business revenue from its FracPoint system. See Ex. 2051, 41–42, see also
`Ex. 2081, 22–24.
`2. Exhibits 2004–2012, 2014, 2020, 2045–2047,
`2054, 2061, and 2086–2089
`Petitioner next moves to exclude Exhibits 2004–2012, 2014, and 2020
`asserting that Patent Owner failed to properly authenticate these exhibits
`under FRE 901. Pet. Mot. 7. Specifically, Petitioner argues that Exhibits
`2083 and 2091, declarations attesting to the authenticity of certain other of
`the documents represented in these exhibits, were filed with Patent Owner’s
`Response, and not filed within 10 days of Petitioner’s objections, and are
`thus untimely under 37 C.F.R. § 42.64(b)(2). Id.
`
`5 We cite to the original pagination of Exhibit 2051, not to the pagination at
`the very bottom of each page.
`6 We cite to the original pagination of Exhibit 2081, not to the pagination at
`the very bottom of each page.
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`We are not persuaded that Exhibits 2083 and 2091 are untimely. The
`Board has previously determined that prior to filing a patent owner response
`it is not always necessary for a patent owner to serve supplemental evidence
`within the 10 business days afforded by 37 C.F.R. § 42.64(b)(2). See
`Nuvasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206, Paper 23 at 3
`(PTAB Oct. 15, 2013) (In Nuvasive, the Board explained that “the potential
`prejudice to Patent Owner (e.g., submitting its new testimonial evidence
`several weeks prior to the due date for patent owner response) outweighs
`any potential prejudice to Petitioner.”). Petitioner has not, in this
`proceeding, argued that it has suffered any prejudice or asserted that the
`declarations do not authenticate the noted exhibits, only that Exhibits 2083
`and 2091 were not filed in accordance with 37 C.F.R. § 42.64(b)(2). We
`decline to exclude these exhibits on this basis alone.
`To the extent Exhibits 2004–2012, 2014, and 2020, are not
`sufficiently authenticated by a declarant, we determine that these documents
`are also industry publications, periodicals and text books containing
`publication numbers, printing dates and publisher indicia, all of which are
`understood at least under FRE 902 (6) as characteristics of self-
`authenticating documents.
`Petitioner argues also that Exhibits 2004–2012, 2014, 2020, 2045–
`2047, 2054, 2061, and 2086–2089 are not relevant under FRE 401. Pet.
`Mot. 7–10. Specifically, Petitioner contends that these documents, offered
`to show industry praise, have not been sufficiently shown as relating to
`StackFRAC tools and system covered by the claims of the ’505 patent. Id.
`at 8. (Petitioner alleges that “[n]ot one of these exhibits mentions the long
`
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`list of steps recited in claims 23 and 27 of the ’505 Patent, which require a
`series of steps performed in an open hole using three solid body packers and
`two ball drop sliding sleeves.”). Petitioner’s arguments are not persuasive
`because these exhibits are replete with references to Packers Plus’s
`StackFRAC system. See for example Exs. 2004, 2005, 2009. Exhibit 2009
`is an article from the June 2015 issue of New Technology Magazine and
`states that
`[t]he open-hole ball-drop system is typically associated with
`Calgary-based Packers Plus Energy Services Inc., though a
`number of competitors also run similar systems. A packer is set
`in the external casing, uncemented. In the case of the Packers
`Plus StackFRAC system, balls made of thermal-plastic material
`such as Teflon are dropped into the well to shift a sleeve, isolate
`the previous frac and open the next frac port up-hole.
`Ex. 2009, 1. And, although this is not an element-by-element comparison of
`StackFRAC with the claims recited in the ’505 patent, this article fairly
`explains that StackFRAC is a multi-stage open hole horizontal well
`completion system using solid body (as opposed to swellable) packers, and a
`continuous frac ball drop process using moveable sleeve and port opening
`tools. Id. Further, as discussed in greater detail below with respect to nexus
`and secondary considerations, we credit Mr. McGowen’s testimony and
`claim charts at Exhibit A of his declaration showing persuasive evidence
`corroborating the assertion that StackFRAC is most likely the commercial
`embodiment used in the claimed method recited in the ’505 patent. See
`Ex. 2051, Ex. A.
`Additionally, and to address Petitioner’s contention that Exhibit 2014
`is not relevant because it is dated 2007, many years after the filing of the
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`’505 patent, we note that Patent Owner relies upon this exhibit in the context
`of open hole multi-stage (“OHMS”) being contrary to accepted wisdom, and
`mainly to show that even as of 2007, a person of ordinary skill in the art
`would still have understood casing and cementing a well bore as
`conventional and necessary. See PO Resp. 22. We are therefore not
`apprised of a persuasive reason or facts upon which to exclude as irrelevant
`any of Exhibits 2004–2012, 2014, 2020, 2045–2047, 2054, 2061, and 2086–
`2089.
`
`3. Exhibits 2010, 2013, 2015, 2016–2019, 2045, 2047, 2052–
`2055, 2058–2059, 2085, and 2097
`Petitioner moves to exclude Exhibits 2010, 2013, 2015, 2016-2019,
`2045, 2047, 2052–2055, 2058–2059, 2085, and 2097 because they “are out
`of court statements offered for the truth of the matter asserted that do not fall
`within any hearsay exception and thus should be excluded under FRE 802.”
`Pet. Mot. 10.
`With respect to Exhibits 2010, 2085, and 2097 our Decision does not
`rely upon these exhibits and therefore Petitioner’s Motion is moot as to these
`exhibits.
`Exhibit 2013, similar to Exhibits 2015, 2017, 2045, 2047, and 2055, is
`an industry publication, in this case a technical paper published by the
`Society for Petroleum Engineers, SPE 164009. See Ex. 2013 (SPE 164009
`is titled “Open Hole Multi-Stage Completion System in Unconventional
`Plays: Efficiency, Effectiveness and Economics.”). This paper is relied upon
`by Patent Owner to support its contention that the patented technology
`operates contrary to the conventional wisdom. See PO Resp. 23. The
`statement in SPE 164009 relied upon by Patent Owner to support this
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`contention states that “[s]ome of the features of the OHMS approach are
`often depicted as disadvantages, such as the inferred inability to control the
`initiation point of the fractures”). Ex. 2013, 5. This statement is not,
`however, being offered for the truth of the matter asserted in the statement
`itself, i.e., whether or not the inability to precisely control fracture points in
`OHMS completions “are often depicted as disadvantageous.” Id. Whether
`or not the statement is true, it is offered mainly for the sake that it was
`espoused and printed in an industry publication, and represents a state of
`mind, i.e. that in 2001 a person of ordinary skill in the art would have
`understood that accepted wisdom was to use cemented casing Plug and Perf
`completion methods, as opposed to OHMS. It is not hearsay for Patent
`Owner to infer from this statement that a person of skill in the art would
`have been skeptical of using OHMS completion techniques due to its
`inability to control fracture point initiation. PO Resp. 23. For the same and
`similar reasons, we are not persuaded that Exhibits 2015, 2017, 2045, 2047,
`and 2055 are inadmissible as hearsay.
`Exhibits 2016 and 2085 are transcripts of videotaped depositions of
`Ali Daneshy, a witness for Baker Hughes in other IPR proceedings also
`involving Packers Plus. Mr. Daneshy’s testimony, under oath in the other
`IPR proceedings is submitted here essentially as a declaration, and his
`testimony in those proceedings relates also to the ’505 patent. See Ex. 2016,
`8:21–25. Petitioner had the opportunity also in this proceeding to depose
`Mr. Daneshy and did not. Mr. Daneshy’s sworn deposition testimony in
`these exhibits are his own recollections, not that of another, and because
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`Petitioner had the opportunity to cross-examine Mr. Daneshy in this
`proceeding, his prior testimony is not inadmissible.
`Exhibits 2018–2019 and 2052–2053, 2058–2059 are various technical
`documents, advertisements, and slideshows relied upon by Patent Owner to
`show copying by Baker Hughes. Pet. Mot. 13. For example Exhibit 2052 is
`alleged to be a Packers Plus’s internal document, which is provided for
`comparison with Exhibit 2053, a Baker Hughes document. These
`documents Patent Owner contends, are the same technical drawing, with
`Exhibit 2053 allegedly having an altered product label, crediting the Packers
`Plus’s technical drawing to Baker Hughes Iso-Frac system. PO Resp. 31–
`34. Again, to the extent there are statements in these documents, the
`documents are not hearsay as the documents are used for purposes of
`comparison, to allege copying, not for the truth of the matter, statements or
`otherwise, depicted in the documents themselves. This same analysis
`applies to the video comparison provided by Patent Owner in Exhibits 2058–
`2059, as well as the marketing and slide show documents in Exhibits 2018
`and 2019. See PO Resp. 35–36. This is not hearsay under FRE 802.
`For these reasons, we deny Petitioner’s Motion to Exclude.
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`B. Patent Owner’s Motion to Exclude Exhibits 1008 and 1011–1014
`Patent Owner’s Reply to Its Motion to Exclude states “to the extent the
`Board overrules [Petitioner’s] hearsay and authentication objections . . . ,
`[Patent Owner] withdraws the present motion.” Paper 53, 1. Thus, given
`that we deny Petitioner’s Motion to Exclude, Patent Owner’s Motion to
`Exclude is withdrawn.
`
`IV. ANALYSIS
`Claim Construction
`A.
`Petitioner proposes constructions for certain claim terms. Pet. 26–27.
`Patent Owner addresses the meaning of the claim language “solid body
`packer.” PO Resp. 3–5. For purposes of this decision, we need not construe
`explicitly any claim language to determine that Petitioner has demonstrated
`obviousness of claim 25 by a preponderance of the evidence. See 35 U.S.C.
`§ 314(a); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`B. Alleged Obviousness of Claims 23 and 27 over Thomson,
`Ellsworth, and Yost
`Petitioner asserts that Thomson anticipates claims 19 and 24, from
`which claims 23 and 27 depend, respectively. Pet. 27–53. With respect to
`the recitations in claims 19 and 24 regarding packers, Petitioner asserts that
`Ellsworth also teaches these recitations. Id. at 36–39. Petitioner further
`asserts that if Thomson did not teach solid body packers, “it would have
`been obvious to substitute the solid body packers of Ellsworth for the
`retrievable packers of Thomson in order to use the Thomson system in open
`hole wells to avoid the need to case and cement the horizontal section of the
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`wellbore.” Id. at 55. Regarding claims 23 and 27, Petitioner asserts that “it
`would have been obvious . . . to use Thomson’s system in multistage
`fracturing or any other fluid treatment in an open hole well.” Id. at 27–28.
`Patent Owner argues that claims 23 and 27 would not have been
`obvious for a number of reasons related to the factors identified in Graham
`v. John Deere Co., 383 U.S. 1, 148 (1966). Those factors include (1) the
`scope and content of the prior art, (2) differences between the prior art and
`the claims, (3) the level of ordinary skill in the art, and (4) secondary
`considerations, i.e., objective indicia of non-obviousness. We turn now to
`detailed discussions of these factors, followed by our conclusions regarding
`whether claims 23 and 27 would have been obvious.
`1. Scope and Content of the Prior Art
`a. Thomson
`Thomson discloses a “completion design that allows multiple acid
`fracs to be performed in horizontal subsea chalk-formation wells with a
`single trip into the wellbore.” Ex. 1003, 1. “The key element” of
`Thomson’s system “is a multi-stage acid frac tool (MSAF) that is similar to
`a sliding sleeve circulating device and is run in the closed position.” Id.
`Thomson’s Figure 5, below, depicts the MSAF tool in cross-section.
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`Thomson’s Figure 5, reproduced above, depicts in the upper illustration
`labeled “Closed Position,” the MSAF tool having a sliding sleeve covering
`fluid ports in the closed position, and in the lower illustration, labeled “Open
`Position,” the sliding sleeve having been motivated by a ball into an open
`position uncovering the fluid ports. Id. at 2, 12.
`
`Thomson discloses that hydraulic-set retrievable packers may be
`positioned on each side of an MSAF tool. Id. at 1. Thomson shows an
`MSAF tool disposed between two packers in Figure 3, which is reproduced
`below.
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`Thomson’s Figure 3 shows “a schematic of a typical Joanne completion.”
`Id. at 2. Figure 3 shows one MSAF tool disposed between two packers. Id.
`at 2, Fig. 3. Thomson discloses that more MSAF tools can be used, stating
`that “[u]p to 9 MSAF tools can be run in the completion with isolation of
`each zone being achieved by hydraulic-set retrievable packers that are
`positioned on each side of an MSAF tool.” Id. at 1. To illustrate an example
`of Thomson’s disclosure of using multiple MSAF tools, each isolated in a
`zone by adjacent hydraulic-set retrievable packers, Petitioner provides the
`following modified, annotated version of Thomson’s Figure 3. Pet. 9.
`
`
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`Petitioner’s modified, annotated version of Figure 3 shows three MSAF
`t
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