UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 48
`
`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
`
`Inter Partes Review No. IPR2016-01517
`Patent 7,134,505
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`Paper No. 48
`
`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
`
`Inter Partes Review No. IPR2016-01517
`Patent 7,134,505
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`IPR2016-01517
`Patent 7,134,505
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ...................................................................................... iii
`
`I.
`
`II.
`
`The Exhibits Have Been Authenticated .............................................................. 1
`
`The Exhibits Are Not Hearsay ............................................................................ 2
`
`ii
`
`
`
`IPR2016-01517
`Patent 7,134,505
`
`TABLE OF AUTHORITIES
`
`Cases
`
`A.N. Deringer, Inc. v. United States, 287 F.Supp. 1016 (Cust.Ct.1968) ......................... 7
`
`Akro Corp. v. Luker, 45 F.3d 1541 (Fed. Cir. 1995) ....................................................... 7
`
`Northern Nat. Gas Co. v. Approximately 9117 Acres, 2013 U.S. Dist. LEXIS 180922
`
`(D. Kan. Dec. 27, 2013) ............................................................................................... 3
`
`Pfizer Inc. v. Teva Pharms. USA, Inc., 2006 U.S. Dist. LEXIS 77970 (D.N.J. Oct. 26,
`
`2006) ......................................................................................................................... 3, 6
`
`Taylor-Reed Corp. v. Mennen Food Products, Inc., 324 F.2d 108 (7th Cir. 1963) ......... 8
`
`Rules
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`37 C.F.R. § 42.20 ........................................................................................................ 2, 3
`
`Federal Rule of Evidence 801 .................................................................................passim
`
`Federal Rule of Evidence 901 ...................................................................................... 1, 2
`
`iii
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`
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`IPR2016-01517
`Patent 7,134,505
`
`Patent Owner’s (“PO”) Motion to Exclude (Paper 46) lacks a basis in facts or
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`law and should be denied. PO moves to exclude Petitioners’ Exhibits 1008 and 1011-
`
`1014 as allegedly lacking authentication and as allegedly being hearsay. Neither
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`argument has any merit.
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`I. The Exhibits Have Been Authenticated
`
`As PO’s Motion acknowledges, each of Exhibits 1008 and 1011-1014 is
`
`supported by a declaration of Carrie Anderson. Ex. 1027 at 1. In that declaration,
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`Ms. Anderson explains that she is a paralegal for the law firm of Heim, Payne &
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`Chorush, LLP and that Heim, Payne & Chorush, LLP represented Halliburton
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`Energy Services, Inc. in the litigation styled, Halliburton Energy Services, Inc., et
`
`al. v. Packers Plus Energy Services, Inc., et al., No. CV-44,964, in the 238th Judicial
`
`District Court in Midland County, Texas (“Halliburton Litigation”). Id. She
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`explains that her declaration is “based on personal knowledge.” Id. And as she
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`explains, each of Exhibits 1008 and 1011-1014 were provided by PO during that
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`litigation. Id. FRE 901 requires nothing more. FRE 901(b)(1) (stating that evidence
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`that satisfies authenticity including testimony of a witness with knowledge that an
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`item is what it is claimed to be). Thus, Ms. Anderson’s declaration establishes a
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`basis for her personal knowledge regarding the documents and establishes that they
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`are what they purport to be.
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`1
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`
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`IPR2016-01517
`Patent 7,134,505
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`Moreover, PO does not assert that any of these exhibits are not authentic. PO
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`offers no challenge to any of Ms. Anderson’s testimony or any reason to question
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`any of the facts asserted in her declaration. PO also does not explain why these facts,
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`if true, are insufficient to establish authenticity. PO’s sole allegation is that Ms.
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`Anderson’s declaration is insufficient, but PO provides no factual or legal arguments
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`in support of that bare allegation. PO has failed to carry its burden as movant to
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`establish that it is entitled to exclusion of these exhibits under 37 C.F.R. § 42.20(c).
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`PO’s motion to exclude on the basis of lack of authentication under FRE 901 should
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`be denied.
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`II. The Exhibits Are Not Hearsay
`
`PO next challenges each of Exhibits 1008 and 1011-1014 as hearsay not
`
`falling within any exception to the hearsay rules. PO makes no effort to address the
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`fact that each of these statements were made or adopted by PO in the Halliburton
`
`Litigation as attested by Ms. Anderson. Each of these exhibits is not hearsay because
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`under FRE 801(d)(2), it is the opposing party’s own statement. Northern Nat. Gas
`
`Co. v. Approximately 9117 Acres, 2013 U.S. Dist. LEXIS 180922, at *28 (D. Kan.
`
`Dec. 27, 2013) (refusing to exclude a party’s expert reports and testimony from a
`
`prior case because “Northern’s prior use of these expert opinions” satisfies the
`
`standard that a party “‘manifested that it . . . believed [those statements] to be true’”
`
`2
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`
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`IPR2016-01517
`Patent 7,134,505
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`under FRE 801(d)(2)); Pfizer Inc. v. Teva Pharms. USA, Inc., 2006 U.S. Dist. LEXIS
`
`77970, at *12-15 (D.N.J. Oct. 26, 2006) (“Pfizer cannot use the expert affidavits to
`
`support its European patent application and then deny that it accepts the truth of the
`
`information contained herein.”). PO’s failure to even attempt to address the fact that
`
`each of these exhibits is its own statement and thus is not hearsay should be fatal to
`
`its motion since PO bears the burden of establishing its right to relief under 37 C.F.R.
`
`§ 42.20(c).
`
`First, Exhibits 1008 and 1011-1014 are statements made by PO in a
`
`representative capacity under FRE 801(d)(2)(A), and are thus not hearsay. Exhibit
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`1008 is the deposition transcript of Mr. Themig, a named inventor of the patents at
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`issue in these IPRs. Ex. 1027 at 1; 1001 at 1. He testified in Exhibit 1008 as a
`
`representative of PO (i.e., Packers Plus Energy Services, Inc.). Ex. 1008 at 443:17-
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`19 (identifying Ex. 62 as a deposition notice of Packers Plus Energy Services, Inc.),
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`444:13-20 (Mr. Themig agreeing that he is testifying as a representative of Packers
`
`Plus Energy Services, Inc.). In fact, Petitioner previously provided PO with a copy
`
`of the deposition notice in response to which Mr. Themig's deposition was taken that
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`clarifies that Mr. Themig was designated by real party in interest Packers Plus
`
`Energy Services, Inc. to address the "technology identified in the ['505 patent]."1
`
`1 The deposition was for real party in interest Packers Plus Energy Services,
`
`3
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`
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`IPR2016-01517
`Patent 7,134,505
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`The notice was served on PO as exhibit 1032 on March 22, 2017 along with
`
`Petitioner's timely Reply to Patent Owner's Evidentiary Objections (filed herewith
`
`as Ex. 1047), in which Petitioner explained why Mr. Themig's testimony was not
`
`hearsay pursuant to FRE 801(d)(2).
`
`Similarly, each of Exhibits 1011-1014 are expert reports submitted by PO
`
`during the Halliburton Litigation, which shows that PO allowed these experts to
`
`testify as its representatives. Ex. 1027 at 1 (testifying that each of Exhibits 1011-
`
`1014 were submitted by PO during the Halliburton Litigation); 1011 at 1, ¶ 2 (“I
`
`have been retained by Packers Plus Energy Services in connection with the above
`
`referenced lawsuit.”); Ex. 1012 at 4 (“I have been retained by the defendants
`
`[including Packers Plus Energy Services, Inc.] in the above-referenced lawsuit to
`
`serve as an expert witness.”); Ex. 1013 at 3 (“This supplemental report is being
`
`submitted in addition to my original report dated April 27, 2007 [Exhibit 1012] and
`
`my Affidavit dated May 19, 2008.”); Ex. 1014 at 3 (“This report is meant to
`
`supplement my original report dated April 27, 2007.”). Thus, PO authorized each
`
`Inc. to designate "one or more individuals to testify on its behalf" on issues that
`
`included "the technology identified in U.S. Patent Nos. 6,907,936 and 7,108,067."
`
`Ex. 1032 at 2, 5. The '505 patent claims priority to and shares its disclosure with
`
`U.S. Patent No. 6,907,936.
`
`4
`
`
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`IPR2016-01517
`Patent 7,134,505
`
`of Messrs. Trahan and Britton to testify as its representative, and as such, their
`
`statements are not hearsay under FRE 801(d)(2)(A), a fact that PO was made aware
`
`of in Petitioner's Reply to Patent Owner's Evidentiary Objections.
`
`Second, PO also manifested that it adopted or believed the statements in
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`Exhibits 1008 and 1011-1014 to be true, rendering them not hearsay under FRE
`
`801(d)(2)(B). As the evidence recited above shows, PO authorized each of Messrs.
`
`Themig, Trahan, and Britton to testify on its behalf in the Halliburton Litigation.
`
`Thus, PO manifested a belief in the statements those persons made during the
`
`Halliburton Litigation. Pfizer Inc., 2006 U.S. Dist. LEXIS 77970, at *12-15
`
`(holding that Pfizer’s submission of expert affidavits in a prior patent prosecution
`
`was a manifestation that it accepted the truth of the information in the affidavits and
`
`satisfied FRE 801(d)(2)(B)).
`
`Third, PO also authorized each of Messrs. Themig, Trahan, and Britton to
`
`make a statement on the subjects on which they testified as the evidence identified
`
`above shows based on PO identifying them as representative witnesses and experts
`
`to testify on its behalf in the Halliburton Litigation. Thus, these statements are not
`
`hearsay under FRE 801(d)(2)(C).
`
`Finally, the statements are not hearsay because they were each made by the
`
`party’s agent or employee on a matter within the scope of that relationship and while
`
`it existed rendering them not hearsay under FRE 801(d)(2)(D). Each of Messrs.
`5
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`
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`IPR2016-01517
`Patent 7,134,505
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`Themig, Trahan, and Britton were PO’s agent or employee acting within the scope
`
`of the relationship while testifying on its behalf.
`
`To the extent PO is arguing that Messrs. Themig, Trahan, and Britton were
`
`agents of Packers Plus Energy Services and not Rapid Completions,2 Petitioner notes
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`that PO designated Packers Plus Energy Services as a real party in interest to the
`
`present proceeding. Paper 3 at 1. It is an "established principle that admissions by
`
`the beneficial party or real party in interest (i.e., the consignee) are admissible in
`
`evidence against the nominal plaintiff representing his interests." A.N. Deringer,
`
`Inc. v. United States, 287 F.Supp. 1016, 1023 n. 6 (Cust.Ct.1968). Furthermore, PO
`
`is by its own admission "the exclusive licensee of all substantial interests in the ’505
`
`patent." Paper 3 at 1. As such, Packers Plus' admissions are still admissible against
`
`its Exclusive Licensee pursuant to FRE 801(d)(2). See. e.g., Akro Corp. v. Luker,
`
`45 F.3d 1541, 1546-47 (Fed. Cir. 1995) (citing FRE 801(d)(2) as a reason to admit
`
`statements of licensor against exclusive licensee of the patent at issue); see also, e.g.,
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`2 Petitioner notes that this argument has not been set forth with any clarity by
`
`PO, and therefore, PO fails to meet its burden with regard to any argument based
`
`upon this reasoning. See, e.g., 37 C.F.R. § 42.20(c). Petitioner nevertheless
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`addresses this argument should PO attempt to remedy its deficient argument in its
`
`reply.
`
`6
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`
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`IPR2016-01517
`Patent 7,134,505
`
`Taylor-Reed Corp. v. Mennen Food Products, Inc., 324 F.2d 108, 112 (7th Cir. 1963)
`
`(Admissions made by assignee of patent on behalf of and as agent for the inventor
`
`were binding upon plaintiff as a subsequent assignee).
`
`For the foregoing reasons, PO’s motion to exclude Exhibits 1008 and 1011-
`
`1014 should be denied.
`
`Dated: October 12, 2017
`
`Respectfully submitted,
`/Jason Shapiro/
`Jason Shapiro
`Reg. No. 35,354
`Counsel for Petitioners
`
`7
`
`
`
`CERTIFICATE OF SERVICE
`I certify that the foregoing PETITIONERS’ OPPOSITION TO PATENT
`
`OWNER’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c),
`
`the ACCOMPANYING EXHIBIT and the present CERTIFICATE OF SERVICE
`
`were served October 12, 2017 via electronic mail, as previously consented to by Patent
`
`Owner, upon the following counsel of record:
`
`HAMAD M. HAMAD (LEAD COUNSEL)
`BRADLEY W. CALDWELL (BACK-UP COUNSEL)
`JUSTIN NEMUNAITIS (BACK-UP COUNSEL)
`CALDWELL CASSADY CURRY P.C.
`
`hhamad@caldwellcc.com
`bcaldwell@caldwellcc.com
`jnemunaitis@caldwellcc.com
`rapid@caldwellcc.com
`
`DR. GREGORY J. GONSALVES (BACK-UP COUNSEL)
`GONSALVES LAW FIRM
`
`gonsalves@gonsalveslawfirm.com
`
`Dated: October 12, 2017
`EDELL, SHAPIRO & FINNAN, LLC
`9801 Washingtonian Blvd., Suite 750
`Gaithersburg, MD 20878
`Customer No. 27896
`
`Respectfully submitted:
`/Mark J. DeBoy/
`Mark J. DeBoy, Reg. No. 66,983
`Telephone: 301.424.3640
`
`
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