Case 6:15-cv-00724-RWS-KNM Document 238 Filed 09/20/16 Page 1 of 3 PageID #: 9165
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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,
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`Plaintiff,
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`v.
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`BAKER HUGHES INCORPORATED,
`et al.,
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`Defendants.
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`
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`Civil Action No. 6:15-cv-724-RWS-KNM
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`Consolidated with
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`Civil Action No. 6:16-cv-286-RWS-KNM
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`JURY TRIAL DEMANDED
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`§
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`NOTICE OF BAKER HUGHES’ LETTER BRIEF SEEKING PERMISSION TO FILE
`MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS
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`In compliance with the Court’s Standard Motion Practice Order and Docket Control
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`Order, (Dkt. 209), Defendants Baker Hughes Inc. and Baker Hughes Oilfield Operations, Inc.,
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`(“Baker Hughes”) file this Notice of Letter Brief requesting permission to move for summary
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`judgment of indefiniteness of the term “solid body packer,” for the reasons set forth in the
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`attached Exhibit A.1
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`1 Baker Hughes understands that the Court may no longer require letter briefs before the filing of
`certain summary judgment motions. However, in an abundance of caution given the
`requirements of the Docket Control Order, Baker Hughes files this letter brief.
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`1 of 9
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`Exhibit 2036
`IPR2016-01517
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`Case 6:15-cv-00724-RWS-KNM Document 238 Filed 09/20/16 Page 2 of 3 PageID #: 9166
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`Dated: September 20, 2016.
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`
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`William L. LaFuze
`Texas State Bar No. 11792500
`wlafuze@mckoolsmith.com
`McKool Smith, P.C.
`600 Travis Street, Suite 7000
`Houston, Texas 77002
`Telephone: (713) 485-7300
`Facsimile: (713) 485-7344
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`ATTORNEYS FOR DEFENDANTS
`BAKER HUGHES INCORPORATED AND
`BAKER HUGHES OILFIELD
`OPERATIONS, INC.
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`2
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`2 of 9
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`Exhibit 2036
`IPR2016-01517
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`McKool Smith, P.C.
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`/s/ Steven J. Pollinger
`Sam Baxter
`Texas State Bar No. 01938000
`sbaxter@mckoolsmith.com
`McKool Smith, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
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`Steven J. Pollinger
`Texas State Bar No. 24011919
`spollinger@mckoolsmith.com
`Craig Tolliver
`Texas State Bar No. 24028049
`ctolliver@mckoolsmith.com
`Geoffrey L. Smith
`Texas State Bar No. 24041939
`gsmith@mckoolsmith.com
`Trent E. Campione
`Texas State Bar No. 24049730
`tcampione@mckoolsmith.com
`Eric C. Green
`Texas State Bar No. 24069824
`egreen@mckoolsmith.com
`McKool Smith, P.C.
`300 W. 6th Street, Suite 1700
`Austin, Texas 78701
`Telephone: (512) 692-8700
`Facsimile: (512) 692-8744
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`

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`Case 6:15-cv-00724-RWS-KNM Document 238 Filed 09/20/16 Page 3 of 3 PageID #: 9167
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the above and foregoing document has
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`been served on all counsel of record via the Court’s ECF system and email on September 20,
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`2016.
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`/s/ Craig Tolliver
`Craig Tolliver
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`3
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`3 of 9
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`Exhibit 2036
`IPR2016-01517
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`Case 6:15-cv-00724-RWS-KNM Document 238-1 Filed 09/20/16 Page 1 of 6 PageID #: 9168
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`EXHIBIT A
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`4 of 9
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`Exhibit 2036
`IPR2016-01517
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`Case 6:15-cv-00724-RWS-KNM Document 238-1 Filed 09/20/16 Page 2 of 6 PageID #: 9169
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`Steven J. Pollinger
`Direct Dial: (512) 692-8702
`spollinger@McKoolSmith.com
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`BY ECF
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`300 W. 6th Street
`Suite 1700
`Austin, TX 78701
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`September 20, 2016
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`
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`Telephone: (512) 692-8700
`Facsimile: (512) 692-8744
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`
`The Honorable Judge K. Nicole Mitchell
`United States District Court for the Eastern District of Texas
`William M. Steger Federal Building and United States Courthouse
`211 W Ferguson, Room 300
`Tyler, Texas 75702
`
`
`RE: Rapid Completions LLC v. Baker Hughes Incorporated, et. al; Civil Action No.
`6:15-cv-724-RWS-KNM
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`Dear Judge Mitchell:
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`Baker Hughes hereby requests leave to file a motion for summary judgment of indefiniteness of
`the phrase “solid body packer” found in all claims of U.S. Pat. Nos. 7,134,505, 7,543,634,
`7,861,774, and 9,303,501 (“Challenged Patents”) asserted by Rapid Completions (“Rapid”).2
`This is not an ordinary dispute as to claim scope, but rather a failure on the part of the patentee to
`fulfill its duty to inform the public of the meaning of the term “solid body packer,” which term
`was created out of whole-cloth by the patentee.
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`Even under the parties’ respective proposed constructions for this term, the parties cannot agree
`on a significant issue in the case; namely, whether “swellable” packers are literally encompassed
`by “solid body packer” under any construction. Rapid asserts that swellable packers are literally
`encompassed by the term “solid body packer” whether construed as proposed by Rapid or as
`proposed by Baker Hughes. In contrast, Baker Hughes submits that the term “solid body packer”
`does not literally encompass swellable packers under either party’s construction. This dispute
`between the parties and their experts reflects the term’s indefiniteness, as the claims with this
`term, when read in view of the intrinsic record, “fail to inform, with reasonable certainty, those
`skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134
`S. Ct. 2120, 2124 (2014).
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`This confusion stems from the patentee’s varied and inconsistent statements in the intrinsic
`record regarding the “solid body packer.” For example, the patentee, in its Provisional
`Application, expressly defined “solid body packer” to have an element that is “mechanically
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`2 Rapid obtained certain rights to the patents from original patentee Packers Plus Energy
`Services, Inc. so that Rapid could assert the patents in litigation.
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`1
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`5 of 9
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`Case 6:15-cv-00724-RWS-KNM Document 238-1 Filed 09/20/16 Page 3 of 6 PageID #: 9170
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`extruded.” Rapid now apparently rejects that express definition and points elsewhere in the
`intrinsic record to argue that a “solid body packer” has a “solid, extrudable packing element,”
`presumably because Rapid believes that such definition is more advantageous to Rapid in the
`present action. The end result is that Rapid seeks to profit from the patentee’s lack of specificity
`to now assert in this litigation that “solid body packer” encompasses a swellable packer under
`any claim construction even though: (i) a swellable packer swells up due to the absorption of
`down-hole fluids (similar to a sponge) rather than by mechanical extrusion (as required by the
`patentee’s own definition); (ii) the patentee never invented a swellable packer and never even
`used the words “swellable,” “swell,” or “swelling” in the claims or specification of the
`Challenged Patents; and (iii) Rapid argues that all constructions of “solid body packer” exclude
`“inflatable” packers which were known in the prior art and distinguished in the Challenged
`Patents, even as it argues that swellable packers are included in all constructions, thus reflecting
`Rapid’s shifting scope of the claims depending on what is more advantageous to Rapid.
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`Such opportunistic flexibility of patent scope is exactly what the definiteness requirement is
`designed to prohibit. It is not enough that “solid body packer” can be given a definition, because
`“[e]ven if a claim term’s definition can be reduced to words, the claim is still indefinite if a
`person of ordinary skill in the art cannot translate the definition into meaningfully precise claim
`scope.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (quoting
`Halliburton Energy Servs., Inc. v. M–I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (emphasis
`added)). By arguing that “solid body packer” covers a swellable packer—regardless of claim
`construction—Rapid highlights the patentee’s failure to inform with reasonable certainty those
`skilled in the art about the scope of the invention.
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`If the Court does not hold the term “solid body packer” invalid as indefinite, the indefiniteness
`problem with the claim term can be avoided only if the Court, in claim construction, squarely
`rejects Rapid’s assertion that “swellable” packers are literally encompassed within “solid body
`packer” however it is construed. Given the Court’s time deadlines3 for summary judgment
`motions regarding indefiniteness, Baker Hughes seeks permission to file a motion for summary
`judgment of indefiniteness with respect to “solid body packer.”
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`I.
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`The Term “Solid Body Packer” Does Not Connote Reasonably Certain Claim Scope,
`Failing the Nautilus Test and the Public Notice Function of Patent Claims
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`During prosecution of the Challenged Patents, the original owner Packers Plus explained that a
`“solid body packer” is “a particular type of packer.”4 Despite its admonishment that a solid body
`packer is different from other packers, the intrinsic record for the Challenged Patents presents at
`least four differing statements as to its scope.
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`3 Letter briefs for summary judgment motions regarding indefiniteness are due September 20,
`2016, while any motion for summary judgment of indefiniteness is due October 31, 2016. The
`Markman hearing is scheduled for November 17, 2016. Dkt. 209.
`4 See Prosecution History, 634 Patent (Preliminary Amendment dated December 29, 2006) at 9.
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`2
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`6 of 9
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`Exhibit 2036
`IPR2016-01517
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`Case 6:15-cv-00724-RWS-KNM Document 238-1 Filed 09/20/16 Page 4 of 6 PageID #: 9171
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`Source
`60/404,783 Provisional Application at 3
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`Challenged Patents’ Specification
`(e.g., 505 Patent at 4:4-5)
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`634 Patent Prosecution History
`(12-29-06 Preliminary Amendment at 9)
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`774 Patent Notice of Allowance at 2
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`Statement
`“A solid body packer is defined as a tool to
`create a seal between tubing and casing or the
`borehole wall using a packing element which is
`mechanically extruded, using either
`mechanically or hydraulically applied force.”
`“In an open hole, preferably, the packers
`include solid body packers including a solid,
`extrudable packing element.”
`“A solid body packer is a particular type of
`packer. . . . A solid body packer extrudes out to
`create a seal on both sides of the packer.”
`Referring to solid body packer as a
`“hydraulically actuated compressible packer.”
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`Baker Hughes proposes that the claim be construed, verbatim, as the original definition expressly
`provided by Packers Plus in the Provisional Application, where Packers Plus stated that “[a]
`solid body packer is defined” as shown in the chart above. But Rapid now disagrees with the
`patentee’s “defin[ition]” and states that a “solid body packer” needs no definition, or otherwise
`means a packer that includes a “solid, extrudable packing element.”5 See Interval Licensing, 766
`F.3d at 1371 (“[T]here is an indefiniteness problem if the claim language might mean several
`different things and no informed and confident choice is available among the contending
`definitions.”). Rapid’s attempt to back away from an express definition provided by Packers
`Plus is emblematic of the patentee’s failure to provide meaningfully precise claim scope.
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`Such a situation cannot reasonably provide a certain claim scope—far from it. If the patentee
`had informed the scope of “solid body packer” with reasonable certainty, the parties and their
`expert would not need to debate whether an entire class of packer, the swellable packer, is or is
`not within the scope of the claims. But here the patentee failed the Nautilus test because the
`“claims, read in light of the specification delineating the patent, and the prosecution history, fail
`to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
`Nautilus, Inc., 134 S. Ct. at 2124. The Supreme Court’s 2014 Nautilus decision unquestionably
`changed the indefiniteness standard. Dow Chem. Co. v. Nova Chems. Corp., 803 F.3d 620, 630
`(Fed. Cir. 2015) (“There can be no serious question that Nautilus changed the law of
`indefiniteness.”). In fact, Dow determined that the claim term in question there would have been
`acceptable under the pre-Nautilus “insolubly ambiguous” standard, but not under Nautilus. Id. at
`630-31, 635.
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`Here, it does not matter that a claim term may be given a definition, because “the claim is still
`indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully
`precise claim scope.” Interval Licensing, 766 F.3d at 1371 (quoting Halliburton, 514 F.3d at
`1251) (emphasis added)). That is precisely the case here, where the proposed claim
`constructions are indefinite to the point that Rapid disputes whether swellable packers are
`included within any proposed construction, and vice versa. This level of uncertainty precludes a
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`5 Dkt. 174-1 (Joint Claim Construction Statement).
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`7 of 9
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`Case 6:15-cv-00724-RWS-KNM Document 238-1 Filed 09/20/16 Page 5 of 6 PageID #: 9172
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`person of ordinary skill in the art from reasonably ascertaining the scope of the claims in advance
`of litigation, such that the Challenged Patents fail to meet the public-notice function emphasized
`by Nautilus. See Dow, 803 F.3d at 630. In other words, the claims here fail to “‘appris[e] the
`public of what is still open to them.’” Id. (quoting Nautilus, 134 S.Ct. at 2129-30).
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`II.
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`There Should Be No Question as to Whether Swellable Packers Are Within the
`Claim Scope
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`To be sure, Packers Plus did not invent a swellable packer. Indeed, the claims and specifications
`of the Challenged Patents never use the word “swell,” “swelling,” or “swellable.” Yet Rapid
`seeks to exploit the indefiniteness of “solid body packer” to encompass the swellable packers
`that it did not invent. This is particularly noteworthy given that Packers Plus noted in the
`specification of the Challenged Patents that a related type of packers known as “inflatable
`packers” were used in “previous method[s]” in the prior art.6 Those packers are inflated, unlike
`the “mechanical packers” described in the definition provided in the Provisional Application and
`shown in the Packers Plus RockSeal packers7 noted on the face8 of the Challenged Patents,
`which are mechanically and forcefully compressed to cause expansion. Rapid continues to assert
`that inflatable packers are not within the claim scope. This argument benefits Rapid, because
`Rapid seeks to avoid invalidity of the claims that would result from reading the claims on
`something identified as prior art.
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`Rapid then performs an about-face and seeks to cover swellable packers which are not
`mechanically extruded but instead swell due to the absorption of down-hole fluids, like a sponge.
`Rapid argues that inflatable packers are not within either party’s claim construction, yet
`swellable packers are included even though they function in the same manner. Thus, Rapid’s
`flip-flopping establishes that the proposed construction, reduced to words, cannot be translated
`“into meaningfully precise claim scope.” Interval Licensing, 766 F.3d at 1371. Given the
`context of the intrinsic record and the embodiments described, any term capable of a
`construction which excludes inflatable packers yet includes swellable packers is the proverbial
`nose of wax and is indefinite.
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`Rapid asserts that even Baker Hughes’ proposed construction encompasses swellable packers,
`purportedly because mechanical force is “applied by the metal components of the tool and/or the
`borehole wall that contact the element as it swells.”9 This assertion is absurd as it would
`recapture inflatable packers—which Rapid admits are outside the scope of the term “solid body
`packer”—and would result in every packer being a “solid body packer” because every packer
`contacts the wellbore wall resulting in exertion of force. Instead of providing clarification to the
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`6 See, e.g., 505 Patent at 1:35-52.
`7 See, e.g., http://packersplus.com/solution/stackfrac-hd-system (describing RockSeal packer as
`“mechanical” packer).
`8 See, e.g., 505 Patent, “Other Publications” (referring to a Packers Plus “rockseal” webpage—
`link no longer operational—for description of an open hole packer).
`9 Rapid Completions’ Supplemental Infringement Contentions, Ex. 1, at 31.
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`Case 6:15-cv-00724-RWS-KNM Document 238-1 Filed 09/20/16 Page 6 of 6 PageID #: 9173
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`definition of “solid body packer,” this argument again further demonstrates the problems caused
`by the patentee’s indefinite claiming, and the lack of precision of the claim term “solid body
`packer” even when construed.
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`The Federal Circuit does not condone this type of opportunistic behavior by a patentee. In
`Halliburton, the Federal Circuit refused to give ambiguous claim language a patentee’s proposed
`broad construction that would cause the claim to cover “all future improvements without regard
`to whether [the patentee] invented such improvements,” instead holding the claims indefinite.
`Id. at 1254 (emphasis added). Further, the Federal Circuit noted that the patentee’s proposed,
`broad construction “would undermine the notice function of the claims because it would allow
`[the patentee] to benefit from the ambiguity, rather than requiring [the patentee] to give proper
`notice of the scope of the claims to competitors.” 514 F.3d at 1254.
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`Here, Rapid should not be permitted to benefit from the ambiguity of the Challenged Patents in
`order to seek to cover swellable packers. For the foregoing reasons, Baker Hughes respectfully
`requests permission to file a motion for summary judgment of indefiniteness of “solid body
`packer” in the Challenged Patents. Alternatively, if the Court does not permit indefiniteness
`briefing on this issue, Baker Hughes respectfully requests that the Court clarify in claim
`construction that “solid body packer[s]” do not include swellable packers. Absent such a
`clarification, the claims will continue to suffer from an indefinite scope.
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`Respectfully Submitted,
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`/s/ Steven J. Pollinger
`Steven J. Pollinger
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`5
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`9 of 9
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`Exhibit 2036
`IPR2016-01517