Case 6:15-cv-00724-RWS-KNM Document 235 Filed 09/20/16 Page 1 of 3 PageID #: 9143
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
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`RAPID COMPLETIONS LLC,
`Plaintiff,
`
`v.
`
`BAKER HUGHES INCORPORATED,
`BAKER HUGHES OILFIELD OPERATIONS,
`INC., WEATHERFORD INTERNATIONAL,
`LLC, WEATHERFORD/LAMB, INC.,
`WEATHERFORD US, LP, WEATHERFORD
`ARTIFICIAL LIFT SYSTEMS, LLC, PEAK
`COMPLETION TECHNOLOGIES, INC.,
`PEGASI ENERGY RESOURCES
`CORPORATION, PEGASI OPERATING,
`INC., AND TR RODESSA, INC.,
`
`
`Defendants,
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`RAPID COMPLETIONS LLC,
`Counterclaim Defendants.
`
`
`
`
`
`
`Case No. 6:15-cv-724-RWS-KNM
`
`WEATHERFORD’S FIRST NOTICE OF LETTER BRIEF SEEKING PERMISSION TO
`FILE MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS
`Pursuant to the Court’s Third Amended Docket Control Order (Dkt. 209), Defendants
`
`Weatherford International, LLC; Weatherford/Lamb, Inc.; Weatherford US, LP; and
`
`Weatherford Artificial Lift Systems, LLC (collectively, “Weatherford”) file this Notice of Letter
`
`Brief requesting permission to move for summary judgment of indefiniteness of the term “secure
`
`the tubing string in place in the wellbore” for the reasons set forth in the attached Exhibit A.
`
`Exhibit 2035
`IPR2016-01517
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`1 
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`1 of 15
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`Case 6:15-cv-00724-RWS-KNM Document 235 Filed 09/20/16 Page 2 of 3 PageID #: 9144
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`Respectfully submitted,
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`_/Douglas R. Wilson/___
`Leslie V. Payne
`State Bar No. 0784736
`Email: lpayne@hpcllp.com
`Christopher M. First
`State Bar No. 24095112
`Email: cfirst@hpcllp.com
`HEIM PAYNE & CHORUSH, LLP
`600 Travis St., Suite 6710
`Houston, Texas 77002
`Telephone: (713) 221-2000
`Facsimile: (713) 221-2021
`
`Douglas R. Wilson
`State Bar No. 24037719
`Email: dwilson@hpcllp.com
`HEIM, PAYNE & CHORUSH, LLP
`9442 Capital of Texas Hwy.
`Plaza I, Suite 500-146
`Austin, Texas 78759
`Telephone: (512) 343-3622
`Facsimile: (512) 345-2924
`
`ATTORNEYS FOR DEFENDANTS
`WEATHERFORD INTERNATIONAL,
`LLC, WEATHERFORD/LAMB, INC.,
`WEATHERFORD US, LP,
`
`WEATHERFORD ARTIFICIAL LIFT
`SYSTEMS, LLC
`
`2 of 15
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`Exhibit 2035
`IPR2016-01517
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`DATED: 9/20/2016
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`Case 6:15-cv-00724-RWS-KNM Document 235 Filed 09/20/16 Page 3 of 3 PageID #: 9145
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that the all counsel of record who are deemed to have consented to
`
`
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`electronic service are being served this 20th day of September, 2016, with a copy of this
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`document via the Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of
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`record will be served by electronic mail, facsimile transmission and/or first class mail on this
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`same date.
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`_/Douglas R. Wilson/_
`Douglas R. Wilson
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`3 of 15
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`Exhibit 2035
`IPR2016-01517
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`

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`Case 6:15-cv-00724-RWS-KNM Document 235-1 Filed 09/20/16 Page 1 of 5 PageID #: 9146
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`Exhibit A
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`4 of 15
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`Exhibit 2035
`IPR2016-01517
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`

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`Case 6:15-cv-00724-RWS-KNM Document 235-1 Filed 09/20/16 Page 2 of 5 PageID #: 9147
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`[ ~) heimpayne+chorushLLP
`
`Intellec:tu<JI Propnty Litigation
`www.heimpaynechorush.com
`
`LESLIE V. PAYNE
`PARTNER
`
`EMAIL: LPAYNE@HPCLLP.COM
`DIRECT: 713.221.2003
`
`September 20, 2016
`
`The Honorable K. Nicole Mitchell
`United States Magistrate Judge
`William M. Steger Federal Building and United States Courthouse
`211 West Ferguson Street
`Tyler, Texas 75702
`
`Re:
`
`Rapid Completions LLC v. Baker Hughes Inc., et al., Case 6: 15-cv-00724-RWS(cid:173)
`KNM, Case 6:16-cv-00286-RWS-KNM
`
`Dear Judge Mitchell:
`
`Pursuant to the Court's Third Amended Docket Control Order entered in this action (Dkt.
`209), Defendants Weatherford International, LLC; Weatherford/Lamb, Inc.; Weatherford US,
`LP; and Weatherford Artificial Lift Systems, LLC (collectively, "Defendants") respectfully
`request permission to file a motion for summary judgment that claims 1, 3-7, 9-10, 12, and 16 of
`U.S. Patent No. 7,861,774 ('774 Patent) and claims 1-9 of U.S. Patent No. 9,303,501 ('501
`Patent) are indefinite. Granting Defendants' proposed summary judgment motion would dispose
`of all infringement and validity claims for the '774 and '501 Patents in this case, substantially
`narrowing the case for trial.
`
`I. Whether Packers Will Secure a Tubing String Hinges on a Number of Factors in a
`Specific Installation
`
`Claim 1, the only independent claim of the '774 Patent, recites in relevant part a method
`for fracturing a hydrocarbon-containing formation accessible through a wellbore, comprising
`running a tubing string into the wellbore, the tubing string comprising first, second, and third
`solid body packers alternating with first and second ports opened through the tubing string wall.
`Claim 1 further requires sliding sleeves covering each of the first and second ports. Most
`importantly, for purposes of the present motion, claim 1 recites running the tubing string into the
`wellbore with the first, second, and third solid body packers each in an unset position, setting the
`first, second, and third solid body packers by expanding them radially outward, and that "the
`first, second and third solid body packers when expanded, secure the tubi1tg string bz place in
`the wellbore." Claim 1 of the '501 Patent is substantially the same for purposes of this motion.
`An annotated version of Figure 1a from the '774 Patent is reproduced below showing the packers
`alternating between ported intervals containing ports covered by sliding sleeves.
`
`Heim Payne & yhorush, L.L.P.
`Heritage Plaza 1111 Bagby, Sufte 2100 Houston, Texas 77002
`[tel) 713.221.2000
`[fax] 713.221.2021
`
`5 of 15
`
`Exhibit 2035
`IPR2016-01517
`
`

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`Case 6:15-cv-00724-RWS-KNM Document 235-1 Filed 09/20/16 Page 3 of 5 PageID #: 9148
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`c::::::> Surface
`of Wall
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`Defendants' expert, Mike Chambers, who has extensive experience in this technology
`area will testify that whether or not a packer secures a tubing string in place in the wellbore
`depends on a number of factors including the force applied to the tubing string as well as the
`interaction between the packer and the wellbore wall. Mr. Chambers will testify that a tubing
`string used for fracturing in an open hole wellbore (as required by all claims ofthe '774 and '501
`Patents) can be subjected to different pressures upstream and downstream of a given packer that
`could exert a force on the tubing string causing it to move. Additionally, the many thousands of
`feet of tubing running into a horizontal well like that shown above in Figure 1 a can change
`temperature quickly during a fracturing operation causing the tubing to contract with substantial
`force and pull the set packers through the wellbore.
`
`Defendants' expert will also testify that the amount of frictional force that a set packer
`generates when contacting the wellbore wall that might be available to resist movement of the
`tubing string will depend upon many factors in a specific application. For example, the amount
`of frictional force generated by a set packer will depend on the setting pressure used when a
`hydraulic packer is set, the type of sealing element used, the type of sealing element material
`used, the type of fluid in the wellbore and its properties, the presence of any drill cuttings or
`debris in the wellbore, and many, many other factors. Because of the variability of all of these
`factors in any given application, it is impossible for one of ordinary skill in the art to generalize
`about how much "securing" is enough or to articulate any specific objective criterion that will
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`2
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`6 of 15
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`Exhibit 2035
`IPR2016-01517
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`

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`Case 6:15-cv-00724-RWS-KNM Document 235-1 Filed 09/20/16 Page 4 of 5 PageID #: 9149
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`ensure that a given set of packers secures a tubing string in place in a wellbore in a specific
`application.
`
`The risk that these variations in each application could require something other than solid
`body packers alone to secure the tubing string in place is expressly acknowledged in a
`provisional application to which both the '774 and '501 Patents claim priority: "The tubing string
`may be connected to a packer in the casing to provide additional stability to the system. Also, an
`open hole slip system may be required to stabilize the packers during pressure pumping
`operations." U.S. Pat. App. Serial No. 60/404,783 at 3. Thus, the provisional application
`expressly observes that the claimed solid body packers may not be sufficient to secure the tubing
`string in place and that additional tools, such as casing packers or slips, may be required. Neither
`the provisional application nor the '501 and '774 specifications ever indicate that the claimed
`solid body packers by themselves might "secure the tubing string in place in the wellbore." Nor
`do they indicate how one of ordinary skill in the art would know if these additional tools are
`needed in a given application.
`
`II. Under Plaintiff's Proposed Construction, the '774 and '501 Claims Are Indefinite
`
`There is no written description support for the "secure the tubing string in place in the
`wellbore" limitation in the specification of the '774 or '501 Patents or any of their parents.
`Accordingly, at least all the claims of the '774 Patent are invalid because they were added by
`amendment and were not supported by the specification as filed and thus, constituted new matter
`when added. That written description defense will be the subject of a different motion. For
`purposes of the present motion, the lack of written description for the "secure the tubing string"
`limitation means that the specification and file history do not provide any guidance as to the
`scope of the limitation at issue.
`
`Plaintiffs proposed construction of "secure the tubing string in place in the well bore" is
`"secure the string of tubulars in place in the wellbore." Dkt. 174-2 at 4. But that offers only a
`construction of "tubing string" as "string of tubulars." It does not address to what extent the
`tubing string must be secured. Defendants' proposed construction is "the solid body packers
`when expanded firmly fix the tubing string in place in the wellbore so that it cannot be moved."
`Dkt. 174-3 at 7. But Plaintiff disputes that proposed construction.
`In its infringement
`contentions, Plaintiff merely states, "The contact between the expanded solid body packers and
`the wellbore wall secures the tubing string in place in the wellbore and creates annular wellbore
`segments that provide access to the formation." To the extent that Plaintiff contends that "secure
`the tubing string in place in the wellbore" means anything less than "firmly fix[ing] the tubing
`string in place in the wellbore so that it cannot be moved," the limitation is indefinite because it
`is impossible for one of ordinary skill in the art to ascertain with reasonable certainty just how
`secure the tubing string needs to be to meet the claim limitation. Plaintiff seeks to transform the
`claim language into a term of degree-i.e., some securing is necessary but not securing such that
`the tubing string cannot move. But if Plaintiff is correct, there is no objective criterion for
`measuring how much securing is enough, and the corresponding claims are indefinite.
`
`As the Supreme Court observed in Nautilus, Inc. v. Biosig Instruments, Inc., "[W]e read
`§ 112, ~2 to require that a patent's claims, viewed in light of the specification and prosecution
`history, inform those skilled in the art about the scope of the invention with reasonable
`
`3
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`7 of 15
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`Exhibit 2035
`IPR2016-01517
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`

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`Case 6:15-cv-00724-RWS-KNM Document 235-1 Filed 09/20/16 Page 5 of 5 PageID #: 9150
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`In subsequent cases, the Federal Circuit further
`certainty." 134 S. Ct. 2120, 2129 (2014).
`clarified the standard for definiteness involving terms of degree:
`
`The key claim language at issue in this appeal includes a term of degree
`("unobtrusive manner"). We do not understand the Supreme Court to have
`implied in Nautilus, and we do not hold today, that terms of degree are inherently
`indefinite ....
`
`Although absolute or mathematical precision is not required, it is not
`enough, as some of the language in our prior cases may have suggested, to
`identify "some standard for measuring the scope of the phrase." The Supreme
`Court explained that a patent does not satisfy the definiteness requirement of
`§ 112 merely because "a court can ascribe some meaning to a patent's claims."
`Nautilus, 134 S. Ct. at 2130. The claims, when read in light of the specification
`and the prosecution history, must provide objective boundaries for those of
`skill in the art.
`
`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir. 2014) (citations omitted)
`(bold added); see also Liberty Ammunition, Inc. v. United States, 2016 U.S. App. LEXIS 15762,
`at * 13 (Fed. Cir. Aug. 26, 2016) ("Terms of degree are problematic if their baseline is unclear to
`those of ordinary skill in the art.").
`
`As explained above, the "secure the tubing string in place in the wellbore" limitation does
`not exist in the specification of the '774 Patent and was only introduced in a claim amendment.
`Thus, there is no intrinsic evidence that can provide any objective boundary to the "secure"
`limitation. Also, there is no way for an ordinarily skilled artisan to know how much securing is
`enough in a given application because many factors affect whether a tubing string is secure in a
`horizontal, open hole, multistage fracturing operation. The intrinsic evidence acknowledges that
`solid body packers may not be sufficient but offers no teaching as to when additional tools
`should be used to secure the tubing string. Without some objective boundary, the claims of the
`'774 and '501 Patent are necessarily indefinite because there is no way for a person of ordinary
`skill in the art to objectively determine whether or not a particular installation is secure enough to
`meet the claim limitation under Plaintiffs interpretation.
`
`For these reasons, Defendants seek permission to file a summary judgment motion
`asserting that the limitation "secure the tubing string in place in the wellbore" is indefinite under
`Plaintiffs interpretation and that all claims in the '774 and '501 Patents containing that
`limitation are also indefinite.
`
`CC: All counsel of record
`
`Sincerely,
`Is/ Leslie V. Payne
`
`4
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`8 of 15
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`Exhibit 2035
`IPR2016-01517
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`

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`Case 6:15-cv-00724-RWS-KNM Document 236 Filed 09/20/16 Page 1 of 3 PageID #: 9151
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`§
`§
`§
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`RAPID COMPLETIONS LLC,
`Plaintiff,
`
`v.
`
`BAKER HUGHES INCORPORATED,
`BAKER HUGHES OILFIELD OPERATIONS,
`INC., WEATHERFORD INTERNATIONAL,
`LLC, WEATHERFORD/LAMB, INC.,
`WEATHERFORD US, LP, WEATHERFORD
`ARTIFICIAL LIFT SYSTEMS, LLC, PEAK
`COMPLETION TECHNOLOGIES, INC.,
`PEGASI ENERGY RESOURCES
`CORPORATION, PEGASI OPERATING,
`INC., AND TR RODESSA, INC.,
`
`
`Defendants,
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`RAPID COMPLETIONS LLC,
`Counterclaim Defendants.
`
`
`
`
`
`
`Case No. 6:15-cv-724-RWS-KNM
`
`WEATHERFORD’S SECOND NOTICE OF LETTER BRIEF SEEKING PERMISSION
`TO FILE MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS
`Pursuant to the Court’s Third Amended Docket Control Order (Dkt. 209), Defendants
`
`Weatherford International, LLC; Weatherford/Lamb, Inc.; Weatherford US, LP; and
`
`Weatherford Artificial Lift Systems, LLC (collectively, “Weatherford”) file this Notice of Letter
`
`Brief requesting permission to move for summary judgment of indefiniteness of the term “in a
`
`desired position” for the reasons set forth in the attached Exhibit A.
`
`Exhibit 2035
`IPR2016-01517
`
`
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`1 
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`9 of 15
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`Case 6:15-cv-00724-RWS-KNM Document 236 Filed 09/20/16 Page 2 of 3 PageID #: 9152
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`Respectfully submitted,
`
`_/Douglas R. Wilson/___
`Leslie V. Payne
`State Bar No. 0784736
`Email: lpayne@hpcllp.com
`Christopher M. First
`State Bar No. 24095112
`Email: cfirst@hpcllp.com
`HEIM PAYNE & CHORUSH, LLP
`600 Travis St., Suite 6710
`Houston, Texas 77002
`Telephone: (713) 221-2000
`Facsimile: (713) 221-2021
`
`Douglas R. Wilson
`State Bar No. 24037719
`Email: dwilson@hpcllp.com
`HEIM, PAYNE & CHORUSH, LLP
`9442 Capital of Texas Hwy.
`Plaza I, Suite 500-146
`Austin, Texas 78759
`Telephone: (512) 343-3622
`Facsimile: (512) 345-2924
`
`ATTORNEYS FOR DEFENDANTS
`WEATHERFORD INTERNATIONAL,
`LLC, WEATHERFORD/LAMB, INC.,
`WEATHERFORD US, LP,
`
`WEATHERFORD ARTIFICIAL LIFT
`SYSTEMS, LLC
`
`10 of 15
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`Exhibit 2035
`IPR2016-01517
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`DATED: 9/20/2016
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`Case 6:15-cv-00724-RWS-KNM Document 236 Filed 09/20/16 Page 3 of 3 PageID #: 9153
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the all counsel of record who are deemed to have consented to
`
`
`
`electronic service are being served this 20th day of September, 2016, with a copy of this
`
`document via the Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of
`
`record will be served by electronic mail, facsimile transmission and/or first class mail on this
`
`same date.
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`_/Douglas R. Wilson/_
`Douglas R. Wilson
`
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`  
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`11 of 15
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`Exhibit 2035
`IPR2016-01517
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`

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`Case 6:15-cv-00724-RWS-KNM Document 236-1 Filed 09/20/16 Page 1 of 4 PageID #: 9154
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`Exhibit A
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`12 of 15
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`Exhibit 2035
`IPR2016-01517
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`

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`Case 6:15-cv-00724-RWS-KNM Document 236-1 Filed 09/20/16 Page 2 of 4 PageID #: 9155
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`[ ~] heimpayne+chorushu.P
`
`Intellec:tnal Property Litigation
`www.heimpaynechorush.com
`
`LESLIE V. PAYNE
`PARTNER
`
`EMAIL: LPA YNE@HPCLLP .COM
`DIRECT: 713.221.2003
`
`September 20, 2016
`
`The Honorable K. Nicole Mitchell
`United States Magistrate Judge
`William M. Steger Federal Building and United States Courthouse
`211 West Ferguson Street
`Tyler, Texas 75702
`
`Re:
`
`Rapid Completions LLC v. Baker Hughes Inc., et al., Case 6: 15-cv-00724-RWS(cid:173)
`KNM, Case 6: 16-cv-00286-R WS-KNM
`
`Dear Judge Mitchell:
`
`Pursuant to the Court's Third Amended Docket Control Order entered in this action (Dkt.
`209), Defendants Weatherford International, LLC; Weatherford/Lamb, Inc.; Weatherford US,
`LP; and Weatherford Artificial Lift Systems, LLC (collectively, "Defendants") respectfully
`request permission to file a motion for summary judgment that claims 23 and 27 of U.S. Patent
`No. 7,134,505 ('505 Patent) and claim 25 of U.S. Patent No. 7,543,634 ('634 Patent) are
`indefinite. Granting Defendants' proposed summary judgment motion would dispose of all
`infringement and validity claims for the '505 and '634 Patents in this case, substantially
`narrowing the case for trial.
`
`I.
`
`"In a Desired Position" Is a Subjective Limitation
`
`Independent claims 19 and 24 of the '505 Patent both recite a method for fluid treatment
`of a borehole by providing an apparatus for wellbore treatment including a tubing string
`comprising alternating packers and sliding sleeves. Each of the claims additionally requires a
`series of steps, including "running the tubing string into a wellbore in a desired position for
`treating the wellbore," setting the packers, and moving a sliding sleeve. Independent claim 20 of
`the '634 Patent is materially identical for purposes of this motion. Dependent claims 23 and 27
`of the '505 Patent and dependent claim 25 ofthe '634 Patent each further recite, "wherein when
`in a desired position the apparatus is adjacent an open hole section of the wellbore."
`
`The ordinary meaning of "desire" is "strongly wish for or want (something)." The New
`Oxford American Dictionary 463 (2001). Thus, a "desired position" is a subjective criterion.
`Although the specification of the '505 and '634 Patents uses the term "desire[ d)" repeatedly, it
`provides no guidance as to when a person of ordinary skill in the art should "desire" any
`particular position in a wellbore. Moreover, the file histories of the '505 and '634 Patents do not
`address when a particular position should be "desired" either. Thus, the only way to evaluate
`whether a particular position is "desired" and thus meets the claim limitation is to ask the party
`
`Heim, Payne & Chorush, L.L.P.
`Heritage Plaza 1111 Bagby, Suite 2100 Houston, Texas 77002
`[tel] 713.221.2000
`[fax] 713.221.2021
`
`13 of 15
`
`Exhibit 2035
`IPR2016-01517
`
`

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`Case 6:15-cv-00724-RWS-KNM Document 236-1 Filed 09/20/16 Page 3 of 4 PageID #: 9156
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`installing a tubing string in a particular well whether in fact the tubing string is being placed in
`that party's "desired position." As will be explained by Defendants' expert, Mike Chambers,
`that party is ordinarily the well operator.
`
`As will be further explained by Mr. Chambers, the operator would look at a number of
`factors in determining whether a particular position is desired, including, but not limited to, the
`size of the job, the number of stages desired or possible with the given technology, the amount of
`money the operator has to spend on the particular well, the location of the particular lateral in
`relation to the target zone of the formation, and how close the particular well is to other wells.
`Mr. Chambers will further explain that each operator will weigh these factors differently and
`may come to different conclusions given the same set of factors. Mr. Chambers will opine that
`there is no objectively determinable best or optimum position for locating a tubing string in a
`well bore. As a result, the desired position of a tubing string in a well bore is purely subjective.
`
`II. Claims 23 and 27 of the '505 Patent and Claim 25 of the '634 Patent Are Indefinite
`
`Because the "in a desired position" limitation of each of claims 23 and 27 of the '505
`Patent and claim 25 of the '634 Patent is subjective, it is indefinite. Nothing in the specification
`or file history provides any objective criterion by which a person of ordinary skill in the art
`might determine whether the tubing string is in a desired position in the wellbore other than the
`subjective thoughts of the party controlling the well.
`
`As the Supreme Court observed in Nautilus, Inc. v. Biosig Instruments, Inc., "[W]e read
`§ 112, ~2 to require that a patent's claims, viewed in light of the specification and prosecution
`history, inform those skilled in the art about the scope of the invention with reasonable
`certainty." 134 S. Ct. 2120, 2129 (2014).
`In subsequent cases, the Federal Circuit further
`clarified the standard for definiteness involving terms of degree:
`
`The key claim language at issue in this appeal includes a term of degree
`("unobtrusive manner"). We do not understand the Supreme Court to have
`implied in Nautilus, and we do not hold today, that terms of degree are inherently
`indefinite ....
`
`Although absolute or mathematical precision is not required, it is not
`enough, as some of the language in our prior cases may have suggested, to
`identify "some standard for measuring the scope of the phrase." The Supreme
`Court explained that a patent does not satisfy the definiteness requirement of
`§ 112 merely because "a court can ascribe some meaning to a patent's claims."
`Nautilus, 134 S. Ct. at 2130. The claims, when read in light of the specification
`and the prosecution history, must provide objective boundaries for those of
`skill in the art.
`
`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir. 2014) (citations omitted)
`(bold added); see also Liberty Ammunition, Inc. v. United States, 2016 U.S. App. LEXIS 15762,
`at *13 (Fed. Cir. Aug. 26, 2016) ("Terms of degree are problematic if their baseline is unclear to
`those of ordinary skill in the art.").
`
`2
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`14 of 15
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`Exhibit 2035
`IPR2016-01517
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`

`
`Case 6:15-cv-00724-RWS-KNM Document 236-1 Filed 09/20/16 Page 4 of 4 PageID #: 9157
`
`The Federal Circuit in Interval Licensing further explained the situation in the case of
`subjective claim limitations:
`
`The patents' "unobtrusive manner" phrase is highly subjective and, on its
`face, provides little guidance to one of skill in the art ....
`
`Where, as here, we are faced with a "purely subjective" claim phrase, we
`must look to the written description for guidance. We find, however, that
`sufficient guidance is lacking in the written description of the asserted patents.
`
`766 F.3d at 1371 (citations omitted).
`
`As explained above, there is no additional guidance in the specification or file history as
`to when a particular position in the wellbore is "desired" and certainly no objective criterion that
`a person of ordinary skill in the art could use to determine whether a particular position is
`"desired." Thus, claims 23 and 27 of the '505 Patent and claim 25 of the '634 Patent are
`indefinite.
`
`For these reasons, Weatherford respectfully seeks permission to file a summary judgment
`motion asserting that the limitation "in a desired position" is indefinite and that claims 23 and 27
`in the '505 Patent and claim 25 in the '634 Patent are also indefinite.
`
`CC: All counsel ofrecord
`
`Sincerely,
`Is/ Leslie V. Payne
`
`3
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`15 of 15
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`Exhibit 2035
`IPR2016-01517