UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 52
`
`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’ REPLY IN SUPPORT OF PETITIONERS’
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`Paper No. 52
`
`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’ REPLY IN SUPPORT OF PETITIONERS’
`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.
`
`Improper Expert Testimony ................................................................................ 1
`
`II. Unauthenticated Evidence .................................................................................. 2
`
`III.
`
`Irrelevant Evidence ............................................................................................. 4
`
`IV. Hearsay Evidence................................................................................................ 4
`
`ii
`
`
`
`IPR2016-01517
`Patent 7,134,505
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Nuvasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206, slip op. (PTAB 10/15/
`
`2013) (Paper 23). .......................................................................................................... 3
`
`Roth v. Amtrak, 1999 U.S. Dist. LEXIS 20173, (N.D. Ill. Dec. 30, 1999). ..................... 4
`
`Rules
`
`37 C.F.R. § 42.64 ............................................................................................................. 2
`
`Federal Rule of Evidence 401 .......................................................................................... 4
`
`Federal Rule of Evidence 702 .......................................................................................... 2
`
`Federal Rule of Evidence 703 .......................................................................................... 4
`
`Federal Rule of Evidence 705 .......................................................................................... 2
`
`Federal Rule of Evidence 807 .......................................................................................... 5
`
`Federal Rule of Evidence 901 .......................................................................................... 3
`
`Federal Rule of Evidence 902 .......................................................................................... 3
`
`PTAB Trial Practice Guide .............................................................................................. 2
`
`iii
`
`
`
`IPR2016-01517
`Patent 7,134,505
`Patent Owner’s (“PO”) Opposition to Petitioners’ Motion to Exclude (Paper 50)
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`("Opp.") ignores the evidence cited in the Motion to Exclude (Paper 44) ("Motion")
`
`and does not overcome its showing that the evidence should be excluded.
`
`Improper Expert Testimony
`I.
`PO’s expert, Mr. McGowen, relied on undisclosed Baker Hughes data for his
`
`opinions on commercial success. Motion at 4. Petitioners moved to exclude section
`
`14.4 of Ex. 2051 and section 11.2 of Ex. 2081. PO opposed, arguing that the
`
`objection is “untimely” because it was raised “well after” PO served exhibits 2051
`
`and 2081. Opp. (“Paper 50”) at 1. However, Weatherford first became aware that
`
`McGowen was relying upon undisclosed data at his deposition, and Petitioners’
`
`Objections (Paper 40) themselves make clear “the present Objections are timely as
`
`they are being served and filed within five business days of receipt of the official
`
`transcript of the Oral Deposition of Harold E. McGowen III . . . .” Paper 40 at 1
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`n.1. While PO asserts that Exs. 2051 and 2081 show that “McGowen prepared a
`
`separate revenue calculation for this proceeding—he estimated Baker Hughes’
`
`revenue based only on publicly available information,” Opp. at 2, McGowen told a
`
`different story at his deposition: “I just know that, that I saw that information, and
`
`that entered into my thinking when I was writing my report and drawing my
`
`conclusions.” Ex. 1038 at 163:4-7. When asked directly, “So in drawing your
`
`conclusions, you relied on – you’re referring to the Baker Hughes’ data?” Id. at
`
`1
`
`
`
`IPR2016-01517
`Patent 7,134,505
`163:8-9. McGowen responded, “Yes” and he admitted that Weatherford did not
`
`have access to that data. Id. at 163:13-20. Weatherford objected both at the
`
`deposition (Ex. 1038 at 163:22-164:3) and in Paper 40 submitted within five
`
`business days of receiving his official transcript. Weatherford’s objections are
`
`therefore timely.
`
`PO admits that its argument that Petitioners could have obtained the
`
`information under the district court Protective Order is wrong because “this
`
`provision is not directly applicable in an IPR.” Opp. at 5.
`
`PO next asserts that Petitioners’ arguments about lack of underlying data go
`
`only to the weight of the evidence, not its admissibility under the PTAB Trial
`
`Practice Guide. Opp. at 6. But PO does not address its violations of FRE 705
`
`(requiring disclosure of the basis for an expert opinion on cross examination) and
`
`its failure to provide the basis for its expert’s opinions under FRE 702.
`
`Finally, PO argues that the objections are moot because McGowen provided
`
`new Baker Hughes data to substantiate his opinion. McGowen’s testimony that his
`
`opinion relied upon undisclosed data refutes PO’s argument. Ex. 1038 at 163:8-13.
`
`Thus, McGowen’s opinions should be excluded.
`
`II. Unauthenticated Evidence
`PO asserts that it followed the “proper procedure” for authenticating Exs.
`
`2004-2012, 2014, and 2020 by ignoring 37 C.F.R. § 42.64(b)(2), which requires
`
`2
`
`
`
`IPR2016-01517
`Patent 7,134,505
`submission of supplemental evidence within ten business days of service of the
`
`objection. Opp. at 8. PO relies on Nuvasive, Inc. v. Warsaw Orthopedic, Inc.,
`
`IPR2013-00206, slip op. at 3 (PTAB 10/15/2013) (Paper 23). However, Nuvasive,
`
`a non-precedential opinion, plainly states that “a party need not serve supplemental
`
`evidence, but if it will rely on such supplemental evidence, it need serve the
`
`evidence within the required deadline.” Id. It provides no support for PO’s
`
`assertion that it is “proper procedure” to ignore the deadline. Nuvasive only
`
`permitted new evidence with the patent owner response that “it could not have
`
`relied on during the preliminary proceeding.” Id. PO has not asserted that its
`
`supplemental evidence could not have been provided in the preliminary proceeding
`
`or in response to Petitioners’ objections, which renders Nuvasive inapplicable.
`
`Thus, Exs. 2004-2012, 2014 and 2020 are inadmissible under FRE 901.
`
`PO also offers the deposition testimony of Mr. Daneshy as authentication of Ex.
`
`2014, Opp. at 8, but nothing in Daneshy’s testimony identifies Ex. 2014. PO
`
`further asserts that these exhibits are authentic under FRE 901(b)(4), Opp. at 8-9,
`
`but PO points to nothing in any of the exhibits that is a “distinctive characteristic”
`
`establishing that the exhibit is an “industry publication.” PO further relies on FRE
`
`902(6), id., which provides that printed material purporting to be a newspaper or
`
`periodical is self-authenticating. PO does not identify any exhibits that fit this
`
`exception, and Exs. 2010-2012, 2014, and 2020 plainly do not.
`
`3
`
`
`
`IPR2016-01517
`Patent 7,134,505
`Finally, PO wrongly asserts that these exhibits are “admissible” under FRE 703,
`
`which provides for admissibility of opinion testimony based on inadmissible
`
`evidence, not for admissibility of otherwise inadmissible evidence. See, e.g., Roth
`
`v. Amtrak, 1999 U.S. Dist. LEXIS 20173, at *3 (N.D. Ill. Dec. 30, 1999).
`
`Irrelevant Evidence
`III.
`PO asserts that Exs. 2004-2012, 2014, 2020, 2045-2047, 2054, 2061, and 2086-
`
`2089 are relevant to praise of the claimed technology even though they fail to
`
`mention it. PO makes no effort to respond to Petitioners’ detailed explanations of
`
`the deficiencies of this evidence. Motion at 7-10. Instead, PO improperly suggests
`
`that praise of “open hole multi-stage fracturing” in general (which was known in
`
`the prior art) is somehow praise of the claimed method. Opp. at 10. Because PO
`
`cannot establish that these exhibits praise the claimed method, they are irrelevant
`
`and should be excluded under FRE 401.
`
`IV. Hearsay Evidence
`PO does not dispute Ex. 2010 is hearsay but asserts that it falls under exceptions
`
`in FRE 803(17) and (18). PO fails to explain how Ex. 2010 satisfies these
`
`exceptions, neither of which is applicable. PO asserts that these exhibits could be
`
`relied upon not for the truth of the matter asserted, which would require PO to re-
`
`write its brief. Finally, PO asserts that Ex. 2010 is admissible under FRE 703,
`
`which again does not provide for the admissibility of otherwise inadmissible
`
`evidence.
`
`4
`
`
`
`IPR2016-01517
`Patent 7,134,505
`Regarding Exs. 2013, 2015, 2016-2019, 2045, 2047, 2052-2055, 2058-2059,
`
`2085, and 2097, PO offers no rebuttal to the extensive citations of its reliance upon
`
`these exhibits for the truth of the matters asserted. Motion at 10-15. Instead, it
`
`offers hypothetical reasons that it could have relied upon these exhibits that would
`
`not have been objectionable. Opp. at 12-15. However, PO cannot change its
`
`briefing now and assert new reasons that it might have relied upon these exhibits.
`
`PO asserts that Exs. 2016, 2085, and 2097 are admissible because “prior
`
`deposition and trial testimony is not considered hearsay in IPRs.” Opp. at 13-15.
`
`No authority cited by PO holds that prior deposition testimony of a third party’s
`
`expert is admissible in an IPR against an unrelated party or that prior trial
`
`testimony of a third party’s corporate representative is admissible against an
`
`unrelated party. In addition, Daneshy’s testimony on behalf of Baker Hughes is
`
`expert testimony, not fact testimony. Moreover, Petitioners cannot obtain the
`
`deposition of these witnesses because Petitioners lack subpoena power in IPR, and
`
`the witnesses are not under the control of PO. PO baselessly asserts that even
`
`though the witnesses are unavailable, their testimony should be admissible under
`
`FRE 804(b)(1). PO offers no explanation how Petitioners had the opportunity to
`
`develop these witnesses’ testimony, which was of course never the case. Finally,
`
`PO asserts that the testimony should be admissible under FRE 807, but PO offers
`
`no basis for application of the rule, which has many requirements.
`
`5
`
`
`
`Dated: October 19, 2017
`
`IPR2016-01517
`Patent 7,134,505
`Respectfully submitted,
`/Jason Shapiro/
`Jason Shapiro
`Reg. No. 35,354
`Counsel for Petitioners
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`I certify that the foregoing PETITIONERS’ REPLY IN SUPPORT OF
`
`PETITIONERS’ MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R.
`
`§ 42.64(c) and the present CERTIFICATE OF SERVICE were served October
`
`19, 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 19, 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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