UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WEATHERFORD INTERNATIONAL, LLC
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`Petitioner,
`v.
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`BAKER HUGHES OILFIELD OPERATIONS, LLC
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`Patent Owner.
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`Case IPR2019-00708
`Patent RE46,137
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION TO EXCLUDE EX. 1012’S 2011-USE STATEMENT
`AS HEARSAY
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEATHERFORD INTERNATIONAL, LLC
`
`Petitioner,
`v.
`
`BAKER HUGHES OILFIELD OPERATIONS, LLC
`
`Patent Owner.
`
`Case IPR2019-00708
`Patent RE46,137
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION TO EXCLUDE EX. 1012’S 2011-USE STATEMENT
`AS HEARSAY
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`Introduction
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`I.
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`Patent Owner’s motion (“Mot.”) requests the Board to exclude from Ex. 1012
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`its statement that “[t]he operator found that by employing the RDV that they could
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`reduce the cost of their wells by eliminating the CT conveyed first-stage perforating
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`gun run and began incorporating the valve in the second quarter of 2011” (the “2011-
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`Use Statement”). The motion should be denied.
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`Ex. 1012 is the Society for Petroleum Engineers (“SPE”) Paper SPE 162658,
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`“Streamlined Completions Process: An Eagle Ford Shale Case History,” published
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`October 2012. EX1012, 1. Petitioner and its expert Mr. Michael Chambers rely on
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`Ex. 1012 (along with Exs. 1010 and 1011) to show simultaneous invention with the
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`challenged ’137 Patent, which has a priority date of July 29, 2011. Paper 2 at 65-
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`66; EX1005, ¶¶54-55. Ex. 1012 describes a tool “referred to as an initiator rupture
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`disc valve (RDV) [that] provides a way to efficiently start the hydraulic fracturing
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`process for the toe stage.” EX1012, 3. After explaining the RDV’s operation, Mr.
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`Chambers states that “[t]his tool is very similar to the ’137 Patent disclosure” and
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`concludes that the RDV is evidence that the ’137 Patent “was merely the exercise of
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`ordinary skill in the art, not of invention.” EX1005, ¶¶55-56.
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`Patent Owner files its motion under the belief that Ex. 1012 cannot be
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`evidence of simultaneous invention without the 2011-Use Statement, which Patent
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`Owner argues is hearsay. Patent Owner is wrong on both counts.
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`1
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`II. The Board Need Not Determine Whether the 2011-Use Statement is
`Hearsay to Deny Patent Owner’s Motion
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`Patent Owner ultimately seeks to exclude the RDV as evidence of
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`simultaneous invention by requesting the Board to exclude the 2011-Use Statement
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`in Ex. 1012 as hearsay. Mot. at 1. The Board need not resolve the question of
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`whether the 2011-Use Statement is hearsay, however, because Ex. 1012’s October
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`2012 disclosure of the RDV is sufficient to show simultaneous invention whether
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`the 2011-Use Statement is excluded or not. See Haig-Streit AG v. Eidolon Optical,
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`LLC, IPR2018-01311, at 47 (P.T.A.B. Dec. 19, 2019) (Paper 46) (denying a motion
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`to exclude allegedly hearsay evidence as moot because the statements were not relied
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`upon in the final decision). That is, even if the Board ignores that second quarter
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`2011 use of the RDV, the RDV was still publicly disclosed no later than the October
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`2012 publication date of Ex. 1012.
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`Fifteen months (or less) is within the amount of time courts have allowed for
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`inventions to be considered “simultaneous.” See Geo. M. Martin Co. v. All. Mach.
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`Sys. Int'l LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010) (period of 6-18 months based
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`on the claimed invention date as early as 2001 compared to the reference’s invention
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`date of June 2002); Felburn v. New York Cent. R. Co., 350 F.2d 416, 424-26 (6th
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`Cir. 1965) (period of 12-18 months based on a reducing to practice the claimed
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`invention as early as the summer of 1954 compared to the reference that was “printed
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`2
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`in June 1955 and was mailed out during the latter part of 1955”); Trustees of
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`Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 929 (Fed. Cir. 2015) (14 months
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`based on October 2000 priority of the claimed invention compared to the two
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`references that were conceived in December 2001).
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`Further, there are other unchallenged statements in Ex. 1012 that establish the
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`RDV was invented some time prior to October 2012, shortening any gap between its
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`invention and the ’137 Patent filing date. For example, Ex. 1012 states that the RDV
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`has been used “in over 300 horizontal well applications” and provides data from
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`three example wells. EX1012, 4-5. These unchallenged statements necessarily
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`show that the RDV was used prior to Ex. 1012’s October 2012 publication date.
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`Finally, Patent Owner’s argument that the at most 15 months between the Ex.
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`1012 publication date and the priority date of the ’137 Patent is too long to qualify
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`as a simultaneous invention fails. Patent Owner cites no authority for a rule that 15
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`months is too long because it is simply not the law as noted above. Patent Owner
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`asserts that Petitioner set the “required ‘comparatively short space of time’” at “a
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`few months” (Mot. at 1), but Patent Owner cites nothing from Petitioner for that
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`proposition because Petitioner never asserted it. Patent Owner also asserts that the
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`comparatively short space of time “cannot be as long as 9-10 months” because
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`Petitioner and Mr. Chambers relied on a May 2011 priority date for Ex. 1010, despite
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`its May 2012 filing date. Mot. at 1. But after noting the two different dates for Ex.
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`3
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`1010 and Ex. 1011, Mr. Chambers expressly states, “I consider the ’483
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`[Provisional] Application and the resulting ’684 Patent to be an example of
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`simultaneous invention.” EX1005, ¶54 (emphasis added). Thus, Mr. Chambers
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`relied on both. Even if he had not, the fact that Petitioner chose the earlier of two
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`dates to which Ex. 1010 was entitled to priority does not admit that the latter date
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`would not also have met the required standard.
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`III. The 2011-Use Statement Falls Under the Residual Use Exception
`to Hearsay
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`To the extent it is necessary to consider the 2011-Use Statement, that
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`statement is admissible under the Residual Exception of Fed. R. Evid. 807. First,
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`the statement is supported by sufficient guarantees of trustworthiness considering
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`the totality of circumstances under which it was made. Fed. R. Evid. 807(a)(1). Ex.
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`1012 is a paper authored by four SPE members that was selected for publication and
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`presentation at 2012 SPE Conference. It provides a case history explaining that the
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`RDV was used in “over 300 horizontal well applications,” and providing data from
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`three of the wells. EX1012, 4-5. The widespread prior use (which is unchallenged)
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`stated in a well-known industry publication provides sufficient guarantees of
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`trustworthiness supporting the 2011-Use Statement. Second, to the extent the 2011-
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`Use Statement is necessary to show the RDV is a simultaneous invention, the 2011-
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`Use Statement is more probative on that issue than any other evidence that could be
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`4
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`obtained through reasonable efforts. Fed. R. Evid. 807(a)(2). Finally, Patent Owner
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`had reasonable notice of Petitioner’s intended offering of the 2011-Use Statement—
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`Ex. 1012 was included in the Petition and discussed in Mr. Chambers’ declaration.
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`IV. Even If the 2011-Use Statement Is Hearsay, Mr. Chambers May
`Rely on It
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`Regardless of whether the 2011-Use Statement is Hearsay, Mr. Chambers
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`may rely on it to form his ultimate opinion that the RDV shows simultaneous
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`invention. Under Rule 703 of the Federal Rules of Evidence, an expert witness may
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`rely on otherwise inadmissible “facts or data” in formulating opinions if “experts in
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`the particular field would reasonably rely on those kinds of facts or data in forming
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`an opinion on the subject.” Fed. R. Evid. 703; see also i4i Ltd. P’ship v. Microsoft
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`Corp., 598 F.3d 831, 856 (Fed. Cir. 2010), aff’d, 564 U.S. 91 (2011) (holding the
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`challenged document “was properly admitted over Microsoft’s hearsay objection
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`under Federal Rule of Evidence 703”); Nestle Healthcare Nutrition, Inc. v. Steuben
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`Foods, Inc., IPR2015-00249, at 13 (P.T.A.B. June 2, 2016) (Paper 76) (concluding
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`that expert could rely on otherwise inadmissible hearsay evidence and that the caveat
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`in FRE 703 limiting disclosure of that evidence to juries does not apply under 37
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`C.F.R. § 42.62(b)).
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`SPE publications are regularly relied upon by experts to form opinions; for
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`example, Mr. Chambers has attended and presented at numerous SPE conferences
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`5
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`throughout his career. See EX1005, ¶9, 112-13 (Appendix A). Patent Owner’s own
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`expert, Dr. Fleckenstein, touts being named as a “Distinguished Lecturer in 2018 by
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`the Society of Petroleum Engineers (SPE)” and receiving the “SPE Regional
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`Completions Optimization and Technology Award
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`in 2019” among his
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`qualifications to testify in this case. EX2001, ¶12. In fact, Dr. Fleckenstein relies
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`extensively on statements in SPE 100572 and 125365 in his own analysis, asserting
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`that such disclosure evidence that a POSITA would have found the facts therein
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`“reasonable,” conceding that such reliance is reasonable. EX2001, ¶¶54-71. After
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`reviewing Ex. 1012, Mr. Chambers concludes that the RDV valve is “very similar
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`to the ’137 Patent disclosure” and relies on the statements in Ex. 1012, including the
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`2011-Use Statement among others, to conclude the RDV invention was “developed
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`very nearly in time to the filing date of the ’137 Patent.” EX1005, ¶54.
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`V. Conclusion
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`For the foregoing reasons, Patent Owner’s motion should be denied.
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`Respectfully submitted,
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`ARMOND WILSON LLP
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`Dated: May 27, 2020
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`
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`
`
`By: /Douglas R. Wilson/
`Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Petitioner
`Weatherford International, LLC
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`6
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), and with the
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`agreement of counsel for Patent Owner, a true and correct copy of the foregoing
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION TO
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`EXCLUDE EX. 1012’S 2011-USE STATEMENT AS HEARSAY is being
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`served electronically on May 27, 2020 to the following lead and back-up counsel
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`for Patent Owner to the following email addresses:
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`Mark T. Garrett
`Mark.garrett@nortonrosefulbright.com
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`Eagle H. Robinson
`Eagle.robinson@nortonrosefulbright.com
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`Jeremy Albright
`Jeremy.albright@nortonrosefulbright.com
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`Michael Pohl
`Michael.pohl@nortonrosefulbright.com
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`
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`Dated: May 27, 2020
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`By: /Douglas R. Wilson/
`Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Petitioner
`Weatherford International, LLC
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`7
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