UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`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
`______________
`
`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE EX. 1012’S
`2011-USE STATEMENT AS HEARSAY
`
`
`
`
`______________
`
`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
`______________
`
`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE EX. 1012’S
`2011-USE STATEMENT AS HEARSAY
`
`
`
`
`
`IPR2019-00708
`Patent RE46,137
`
`I.
`
`Petitioner’s New Theory Fails
`
`“[I]f the Board ignores [the] second quarter 2011 use of the RDV,” Patent
`
`Owner agrees it need not be excluded. Paper 31 (“Opp.”), 2. Patent Owner
`
`disagrees, however, that Ex. 1012 would nevertheless be evidence of simultaneous
`
`invention in view of its alleged October 30, 2012 presentation date. Id.
`
`For Ex. 1012 to evidence simultaneous invention, Petitioner needed to
`
`establish its valve was made “within a comparatively short space of time” around
`
`the ’137 Patent’s invention. Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618
`
`F.3d 1294, 1305-06 (Fed. Cir. 2010). Petitioner’s cases show there is no bright-line
`
`rule for that space of time; instead, it depends on, inter alia, the state of the art at the
`
`time of the invention, the invention’s contribution to that art, and the problems
`
`addressed by that contribution. See Felburn v. New York Cent. R. Co., 350 F.2d 416,
`
`426 (6th Cir. 1965) (“Felburn and Behrens, working independently, attacked the
`
`same problems at about the same time and arrived at the same solutions.”). The only
`
`evidence that might speak to such a space of time is Mr. Chambers’s conclusory
`
`assertion that Ex. 1012 “provides [an] example of a simultaneous invention” because
`
`its valve was allegedly used “in the second quarter of 2011.” Chambers1, ¶55.
`
`Petitioner now seeks to broaden that space of time to “[f]ifteen months” based
`
`on Ex. 1012’s alleged October 30, 2012 presentation date. Opp., 2. This untimely
`
`attorney argument should be ignored. But it is also foreclosed by Mr. Chambers’s
`
`-1-
`
`
`
`IPR2019-00708
`Patent RE46,137
`tacit refusal to rely on that presentation date in favor of its 2011-Use Statement: Ex.
`
`2012 “was presented at an SPE Conference … from October 30, 2012 to November
`
`1, 2012[;h]owever, it describes [second quarter, 2011] fracturing jobs run with [its
`
`valve].” Chambers1, ¶55 (emphasis added). Patent Owner made this contention in
`
`Paper 30 (at 2), and Petitioner did not contest it. See Opp., 3-4 (only addressing
`
`Patent Owner’s contentions regarding Exs. 1010 and 1011).
`
`Petitioner’s new, broader space of time also fails substantively. Without
`
`citing to any evidence, Petitioner contends that “[f]ifteen months (or less) is within
`
`the amount of time courts have allowed for inventions to be considered
`
`‘simultaneous.’” Opp., 2. That’s true, but based on facts Petitioner lacks here. In
`
`Geo, the court found that a 1996 first machine and a 1998 second machine, each of
`
`which was shown to possess all but a couple, obvious features of the 2001 invention,
`
`set a “comparatively short space of time” for simultaneous invention that
`
`encompassed a 2002 third machine having the missing features. Geo, 618 F.3d at
`
`1302-06 (absent the first and second machines, patentee’s “argument would have
`
`more force”). Similarly, in Felburn, the court referenced “the numerous earlier
`
`patents” mapped to the invention to decide that “Felburn and Behrens … attacked
`
`the same problems at about the same time.” Felburn, 350 F.2d at 425-426.
`
`Columbia did not address the space of time for simultaneous invention. Trustees of
`
`Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 929-30 (Fed. Cir. 2015).
`
`-2-
`
`
`
`IPR2019-00708
`Patent RE46,137
`But Petitioner mapped Giroux to the claims. Petition, 5-6; see also
`
`Chambers1, ¶¶54-55 (no mappings for any of Exs. 1010-1012). And per Mr.
`
`Chambers, Giroux is too old to establish a space of time for simultaneous invention.
`
`See Chambers1, ¶53 (“[b]ecause [Ex. 1009] was so much earlier”—twenty-two
`
`months (Ex. 1009, 1)—“I do not view it as simultaneous invention.”); Giroux at 1
`
`(at least 9 years before the ’137 Patent’s invention).
`
`Petitioner pivots again to “other unchallenged statements in Ex. 1012” that
`
`allegedly “shorten[] any gap between its invention and the ’137 Patent filing date.”
`
`Opp., 3. Neither Petitioner nor Mr. Chambers relied on these statements before, and
`
`Petitioner cannot now. See Chambers1, ¶55 (relying exclusively on the 2011-Use
`
`Statement); Petition, 65-66 (same). This new reliance also renders those statements
`
`hearsay that should—for the same reasons as the 2011-Use Statement—be excluded.
`
`It is not Patent Owner’s burden to show that Petitioner’s new 15-month space
`
`of time is too long (Opp., 3)—it was Petitioner’s burden to assert it and support it.
`
`Petitioner did not and cannot. Supra. Finally, Petitioner argues that it did not rely
`
`on a few-month space of time. Opp., 3. But Petitioner only engages with Patent
`
`Owner’s Exs. 1010 and 1011 evidence and arguments, contending that Petitioner
`
`and Mr. Chambers relied on both Ex. 1010’s date (9-10 months after the ’137
`
`Patent’s invention) and Ex. 1011’s date (3 months before) for their allegedly
`
`common valve. See Chambers1, ¶54 (only addressing Ex. 1011 in any detail and
`
`-3-
`
`
`
`IPR2019-00708
`Patent RE46,137
`stating that “I consider the ’483 Application and the resulting ’684 Patent to be an
`
`example of simultaneous invention.” (emphasis added)). But that makes no sense
`
`because that valve was only invented once—per Petitioner, by Ex. 1011’s date. Id.
`
`II.
`
`Petitioner’s Reliance on the Residual Exception Fails
`
`“The residual hearsay exception is to be used only rarely, in truly exceptional
`
`cases.” Pozen Inc. v. Par Pharm., Inc., 696 F.3d 1151, 1161 n.6 (Fed. Cir. 2012)
`
`(citation omitted). Petitioner has not shown this is such a case. For example,
`
`Petitioner “has made no showing that it could not have produced, through reasonable
`
`efforts, evidence that is more probative” of the alleged 2011 use of Ex. 1012’s valve
`
`as FRE 807 requires, such as “testimony from [one of Ex. 1012’s authors] in the
`
`form of a declaration in this proceeding.” Opp., 4; US Endodontics, LLC v. Gold
`
`Standard Instruments, LLC, PGR2015-00019, Paper 54 (“US Endodontics”), 40-42
`
`(P.T.A.B. Dec. 28, 2016). Petitioner’s conclusory statement that it could not have
`
`produced more probative evidence is insufficient to warrant application of FRE 807.
`
`US Endodontics, 40-42 (inapplicable when “there is no apparent reason why [a
`
`party] could not have offered testimony from [the out-of-court declarant] in the form
`
`of a declaration”); Xactware Sols., Inc. v. Pictometry Int’l Corp., IPR2016-00594,
`
`Paper 46, 15-16 (P.T.A.B. Aug. 24, 2017) (not applying when the party did “not
`
`specify … why it could not have obtained ‘more probative’ evidence”).
`
`
`
`
`
`-4-
`
`
`
`IPR2019-00708
`Patent RE46,137
`III. Mr. Chambers Cannot Introduce the 2011-Use Statement
`
`While “[a]n expert is permitted to disclose hearsay for the limited purpose of
`
`explaining the basis for his expert opinion,” he cannot do so “as general proof of the
`
`truth of the underlying matter.” United States v. Dukagjini, 326 F.3d 45, 58 (2d Cir.
`
`2002) (citation omitted). Unlike the experts in Petitioner’s cases (i4i and Nestle),
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`Mr. Chambers does not offer “genuine ‘scientific, technical, or other specialized
`
`knowledge [that] will help the trier of fact to understand … or to determine” when
`
`Ex. 1012’s valve was used, but instead “act[s] as [a] mere conduit[] for hearsay.”
`
`Chambers1, ¶55 (introducing the 2011-Use Statement with “[i]n fact” to establish
`
`the 2011 use); Williams v. Illinois, 567 U.S. 50, 80 (2012). His reliance on the 2011-
`
`Use Statement for his non-expert testimony thus does not warrant admission thereof,
`
`even if experts reasonably relied on other SPE paper facts as Petitioner contends.
`
`Dukagjini, 326 F.3d at 58 (a witness cannot “rely on hearsay for non-expert
`
`testimony simply because that witness was also qualified to rely on hearsay for other,
`
`expert testimony”); Henderson v. Black Elk Energy Offshore Operations, L.L.C.,
`
`783 Fed. Appx. 380, 381-82 (5th Cir. 2019) (“the [expert] report’s ‘factual
`
`recitation’” was properly excluded because the expert “lacked personal knowledge
`
`of the facts contained in his report.”).
`
`Dated: June 2, 2020
`
`/Mark T. Garrett/
` Mark T. Garrett (Reg. No. 44,699)
`
`
`
`-5-
`
`
`
`IPR2019-00708
`Patent RE46,137
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 2, 2020,
`
`a copy of Patent Owner’s Reply ISO Motion to Exclude Ex. 1012’s 2011-Use
`
`Statement as Hearsay was served on Lead and Backup Counsel for Petitioner via
`
`email (by consent) to:
`
`Lead Counsel: Douglas R. Wilson (Reg. No. 54,542)
`doug.wilson@armondwilson.com
`ipr@armondwilson.com
`
`Backup Counsel: Boone Baxter (Reg. No. 69,363)
`bbaxter@hpcllp.com
`
`Michelle Armond (Reg. No. 53,954)
`michelle.armond@armondwilson.com
`
`
`
`
`/Mark T. Garrett/
` Mark T. Garrett (Reg. No. 44,699)
`
`
`
`
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