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`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 IPR2019-00768
`Patent RE46,137
`
`
`MOTION TO TERMINATE AND/OR STAY EX PARTE
`REEXAMINATION NO. 90/014,418 UNDER 35 U.S.C. § 315(d)
`
`
`
`
`
`
`
`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`I.
`STATEMENT OF RELIEF REQUESTED
`
`Weatherford International, LLC (“Petitioner”) requests termination of Ex
`
`Parte Reexamination of U.S. Patent No. RE46,137, No. 90/014,418, or a stay
`
`pending resolution of this IPR under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a).
`
`The Board authorized this motion via email on February 13 and 18, 2020.
`
`II.
`
`STATEMENT OF RELEVANT FACTS
`
`Patent Owner Threatens Petitioner with ’960 Patent: Baker Hughes
`
`Oilfield Operations, LLC (“PO”) first threatened Petitioner with U.S. Patent
`
`8,555,960, the predecessor to RE46,137 at issue in this IPR, in July 2014. EX1013.
`
`In response, Petitioner told PO that the asserted claims of the ’960 Patent were
`
`invalid in view of Giroux, U.S. Patent 6,834,726. EX1014. The parties exchanged
`
`correspondence regarding invalidity of the ’960 claims, disputing whether the claims
`
`required an initially closed position and thereby could distinguish Giroux. EX1015;
`
`EX1016; EX1017. Petitioner also sent a claim chart to PO showing how certain
`
`claims of the ’960 Patent were invalid in view of Giroux. EX1017.
`
`PO Seeks Reissue of ’960 Patent Without Disclosing Giroux Issue: PO
`
`then hatched a plan to file a reissue application in light of invalidity based on Giroux.
`
`But instead of candidly telling the PTO that the reissue was precipitated by Giroux
`
`and Petitioner’s invalidity positions, PO asserted that the basis for reissue was the
`
`omission of a method claim. EX1018 at 172. PO added new method claims 34-44
`
`
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`1
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
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`in the reissue application. Id. at 195-97. Without explaining to the PTO why it was
`
`doing so, PO also added new apparatus claims 23-33 that recited an “initial closed
`
`position” limitation. Id. at 194-95. In fact, even the new method claims 34-44
`
`recited the “initial closed position” limitation. PO did not disclose to the PTO that
`
`this limitation was to distinguish Giroux. PO buried Giroux in an IDS as item 9
`
`along with 64 previously-considered references. Id. at 141-47. PO did not submit
`
`Petitioner’s correspondence or claim chart regarding Giroux, nor did PO ever
`
`indicate any concern about validity over Giroux. In a sister IPR, the Board recently
`
`determined that Giroux likely invalidates the ’137 Patent. IPR2019-00708, slip op.
`
`at 2 (P.T.A.B. Sept. 5, 2019) (Paper 8) (Institution Decision) (finding a reasonable
`
`likelihood that independent claims 1, 19, and 21 are unpatentable over Giroux).
`
`PO Obtains ’137 Patent by Misrepresenting Prior Art: During the reissue
`
`prosecution, the examiner rejected some claims based on U.S. Patent 5,819,853
`
`(“Patel ’853”). EX1018 at 99. PO distinguished Patel ’853 by asserting that it did
`
`not disclose a piston that is “selectively isolated from passage pressure as recited by
`
`independent claim 1.” Id. at 65. The examiner agreed, allowing claims 1-44. Id. at
`
`46. But PO’s assertion was at least misleading because Patel ’853 disclosed an
`
`example in which the piston was selectively isolated from passage (tubing) pressure,
`
`which was used to actuate the piston. EX1004 at 7:53-58, 8:5-31. Nevertheless, the
`
`reissue ’137 Patent issued on September 6, 2016, without the examiner recognizing
`
`
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`2
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
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`or resolving the validity issues concerning Giroux (which PO effectively buried) or
`
`recognizing Patel ’853’s disclosure. EX1018 at 10.
`
`Petitioner Shows PO That Its Reissued Claims Are Invalid Based on
`
`Patel: On May 1, 2017, PO again contacted Petitioner regarding PO’s assertion of
`
`the ’137 Patent against Petitioner. EX1038 at 3. After further correspondence based
`
`on Giroux, Petitioner asserted on March 9, 2018 that ’137 Patent claims 1-44 were
`
`also invalid over U.S. Patent Application Publication 2009/0078427 (“Patel ’427”)
`
`and provided a claim chart to prove it. EX1039. In a response letter dated May 18,
`
`2018, PO acknowledged Patel ’427 posed a validity problem for the ’137 Patent
`
`claims. PO asserted that claims 8, 16, and 31 reciting the “Urging Closed Feature”
`
`would not be invalid over Patel ’427 and thus “that any inter partes review of the
`
`claims of the ‘137 Patent would not result in a finding that all claims are
`
`unpatentable.” EX1040 at 2-4. In response, Petitioner observed that PO “appears
`
`to admit that the ’427 application anticipates any claim without [the urging]
`
`limitation” and requested that PO confirm that. EX1041 at 1.
`
`PO Files Suit on Its Invalid Reissue Claims: Notwithstanding Petitioner’s
`
`charts proving the invalidity of the ’137 Patent claims based on Giroux and Patel
`
`’427, on December 20, 2018, PO filed suit against Petitioner asserting willful
`
`infringement of claim 1 of the ’137 Patent. EX1042 ¶ 16. When confronted again
`
`with Patel ’427 in this IPR, PO conceded that claims 1-7, 12-15, 18-30, and 32-40
`
`
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`3
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
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`are anticipated by Patel ’427 and, thus, that its infringement assertion against
`
`Petitioner was baseless. PO Resp. (Paper 16) at 1-2 (Petitioner only contesting
`
`patentability of “Urging Claims” and not substantively contesting anticipation of the
`
`remaining claims). In fact, PO has now disclaimed 33 of its 44 reissue claims. Paper
`
`20 at 1. Although PO did not disclaim claim 1, its PO Response does not dispute it
`
`is anticipated by Patel ’427, thus conceding invalidity. PO Resp. at 1-2. PO appears
`
`to have only retained independent claims 1 and 34 to keep its reexamination alive.
`
`PO Files Reexam to Avoid IPR Estoppel: Following PO’s lawsuit,
`
`Petitioner filed IPR2019-00708 based on Giroux and filed this IPR on March 1,
`
`2019, asserting that Patel ’427 anticipates most of the ’137 Patent claims and renders
`
`obvious the rest in combination with other art. Pet. (Paper 2) at 5. The Board
`
`instituted this IPR (Paper 8), and PO filed a patent owner response on December 17,
`
`2019 (Paper 16). On the same day PO’s response was originally due (see Paper 13
`
`at 1), PO requested reexamination of the ’137 Patent. EX1043 at 1. PO’s request
`
`relied only on Patel ’427 and Weatherford’s arguments from this IPR. Id. at 19-36.
`
`PO’s reexam request also proposed 53 new claims, which are nearly identical
`
`to the original claims. Id. at 5-12. For example, claim 45 adds only very minor
`
`features beyond claim 1, such as “said port is covered by said sleeve” when closed,
`
`“said sleeve is farther from an end of said valve than is said port” when open, and “a
`
`rupture disc.” Compare EX1001 at 4:42-51 with EX1043 at 5. On January 29, 2020,
`
`
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`4
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
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`the PTO granted reexamination of most of the ’137 Patent’s claims, all of which PO
`
`subsequently disclaimed except for claims 1 and 34. EX1044 at 11; Paper 20 at 1.
`
`For claims 1 and 34, PO offered no response in this IPR regarding Petitioner’s
`
`assertion that they are anticipated by Patel ’427. Pet. (Paper 2) at 5; PO Resp. at 1-
`
`2. PO’s reexamination is an attempt to bypass the amendment procedure in IPR and
`
`to get the examiner to allow its proposed new claims before the estoppel attaches
`
`from a final written decision in this IPR. See 37 C.F.R. § 42.73(d)(3)(i).
`
`III. ARGUMENT
`
`A. The Board Should Terminate the Reexam for Gamesmanship
`The Board considers the “totality of the circumstances” when deciding
`
`whether to terminate a co-pending reexam. Ariosa Diagnostics, Inc. v. Illumina,
`
`Inc., IPR2014-01093, slip op. at 16 (P.T.A.B. May 24, 2016) (Paper 81). As outlined
`
`above, PO has engaged in a series of acts showing that it is using the PTO to
`
`perpetrate a baseless assertion of fraudulently-obtained patent rights against
`
`Petitioner, justifying termination of Reexamination No. 90/014,418.
`
`First, PO sought reissue on a pretense to avoid Giroux. Faced with invalidity
`
`over Giroux, PO sought reissue under the guise of seeking method claims when it
`
`was actually seeking to obtain claims that recited an “initial closed position” to
`
`distinguish Giroux. EX1018 at 172, 194-97. Although it provided Giroux to the
`
`
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`5
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
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`examiner, PO buried it in a pile of 64 previously-considered references and failed to
`
`disclose Petitioner’s correspondence and claim chart. Id. at 141-47.
`
`Second, PO misled the examiner into allowing the reissue claims over Patel
`
`’853. PO asserted that Patel ’853 did not disclose a piston actuated with tubing
`
`pressure (EX1018 at 99), when in fact it did disclose such a piston (EX1004 at 7:53-
`
`58, 8:5-31). The examiner accepted PO’s misleading assertion and allowed the
`
`claims. EX1018 at 46.
`
`Third, PO filed suit against Petitioner on the ’137 Patent claims it had already
`
`conceded were invalid. Faced with Patel ’427, PO’s pre-suit correspondence
`
`conceded that Patel ’427 would anticipate many claims and relied on three “urging”
`
`claims to distinguish Patel ’427. EX1040 at 2-4. Subsequently, PO filed a baseless
`
`lawsuit accusing Petitioner of willfully infringing claim 1. EX1042 ¶ 16. PO again
`
`confirmed claim 1 was anticipated by Patel ’427 in this IPR by not substantively
`
`disputing anticipation for claim 1 and other challenged claims. PO Resp. at 1-2.
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`Fourth, PO filed a reexam request to thwart a timely resolution of this dispute.
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`Just two days before this motion was due, PO disclaimed 33 of its 44 original claims
`
`(Paper 20 at 1) and had already proposed 53 new claims in reexam (EX1043 at 5-
`
`12). PO’s new claims provide only minor non-patentable variations over its invalid
`
`claims. E.g., compare EX1001 at 4:42-51 with EX1043 at 5. Thus, PO filed suit
`
`against Petitioner on claims it knew were invalid and, when Petitioner filed IPRs
`
`
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`6
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`
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`
`seeking judgment the claims were invalid, PO sought to evade the IPR by
`
`disclaiming most of its claims and seeking new claims in reexamination not
`
`materially different from its original claims.
`
`PO is attempting to use reexamination to prolong its 6-year assertion of invalid
`
`claims against Petitioner. “[C]onsidering the totality of the circumstances, [the
`
`Board should] exercise [its] discretion and terminate ex parte reexamination” No.
`
`90/014,418. Ariosa Diagnostics, IPR2014-01093, slip op. at 16 (ordering
`
`termination of reexaminations).
`
`B. Absent Termination, the Board Should Stay the Reexam Because
`It Is Duplicative of this IPR
`In the alternative, should the Board not terminate reexamination, the Board
`
`should stay it. See 37 C.F.R. § 42.122(a). The Board stays reexamination
`
`proceedings for good cause in view of eight factors, all of which favor a stay here:
`
`(1) whether the claims challenged in the IPR are the same as or depend
`directly or indirectly from the claims at issue in the reexamination;
`(2) whether the same grounds of unpatentability or the same prior art
`are at issue in both the IPR and the reexamination;
`(3) whether simultaneous conduct of the reexamination and IPR will
`duplicate efforts within the Office;
`(4) whether the reexamination … could result in … inconsistent
`results with the IPR;
`(5) whether amending the claim scope in one proceeding would affect
`claim scope in the other;
`
`
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`7
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
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`(6) the respective timelines and stages of each proceeding;
`(7) the statutory deadlines of the reexamination and IPR; and
`(8) whether a decision in the IPR would likely simplify issues
`presented in the reexamination or render it moot.
`
`Toshiba Memory Corp. v. Anza Tech., Inc., IPR2018-01598, slip op. at 2 (P.T.A.B.
`
`July 10, 2019) (Paper 35).
`
`
`
`The first three factors favor a stay. PO premised its entire reexamination
`
`request on Petitioner’s Petition and arguments for invalidity in this IPR. See EX1043
`
`at 19-36 (writing “according to Weatherford” and “per Weatherford” seventy-seven
`
`times); see also EX1044 at 3 (“the request relies largely on the findings of the
`
`PTAB” in IPR2019-00768). After PO’s disclaimer, the two original claims that
`
`remain in reexam, claims 1 and 34, are also at issue in this IPR. See Paper 2 at 5-6;
`
`EX1044 at 11. The primary reference in the reexamination, Patel ’427, is the same
`
`primary reference in this IPR. Compare EX1043 at 13, 16 with Paper 2 at 5.
`
`Because the same original claims, reference, and ground of unpatentability are at
`
`issue in both proceedings, the reexamination is duplicative of the IPR. M&P Golf,
`
`LLC v. Max Out Golf, LLC, IPR2016-00785, slip op. at 3-4 (P.T.A.B. Mar. 10, 2017)
`
`(Paper 32) (reexam of original and new claims over same art in IPR was duplicative).
`
`The reexam could lead to inconsistent results, favoring a stay. The Board and
`
`the examiner could disagree on whether claims 1 and 34 are invalid. The examiner
`
`could also improperly allow new claims that are not patentably distinct from invalid
`
`
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`8
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
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`claims as determined by the Board. This could lead to the improper result that the
`
`“Patent Owner potentially could obtain claims that may not be permitted otherwise.”
`
`Ossia, Inc. v. Energous Corp., PGR2016-00023, slip op. at 4 (P.T.A.B. Sept. 27,
`
`2016) (Paper 18) (staying reexam). PO’s argument that the Board should not stay
`
`the reexam until the examiner decides whether and why to reject a subset of claims
`
`has no merit. A stay is proper because there is a risk of inconsistency. Toshiba, slip
`
`op. at 2 (“whether the reexamination … could result in … inconsistent results with
`
`the IPR” (emphasis added)); see also M&P Golf, slip op. at 4.
`
`
`
`Although the amendment deadline has passed in IPR, amending claims in the
`
`reexamination will affect the IPR, favoring a stay. See CBS Interactive Inc. v.
`
`Helferich Patent Licensing, LLC, IPR2013-00033, slip op. at 2 (P.T.A.B. Nov. 6,
`
`2012) (Paper 15).
`
`The sixth and seventh factors favor a stay. The Board has instituted IPR; PO
`
`has filed a Patent Owner response; and the IPR will be completed within seven
`
`months. See 35 U.S.C. § 316(a)(11); Paper 9. By contrast, the examiner did not
`
`order reexamination until January 29, 2020; PO’s initial response is not due for
`
`nearly two months; and the examiner will not even begin examining the proposed
`
`new claims until after receiving PO’s response. See EX1044 at 2.
`
`Finally, a decision in the IPR will moot or simplify any remaining issues in
`
`reexam, favoring a stay. PO admits its original claims are invalid. Just two days
`
`
`
`9
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`
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
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`ago, PO disclaimed 33 of its 44 original claims, which will result in estoppel when
`
`the final written decision issues in this IPR. Paper 20 at 1; 37 C.F.R. § 42.73(d)(3)(i).
`
`The estoppel attached to claims that depend from claims 1 and 34, such as claims 2
`
`and 35, will preclude PO from even asserting that claims 1 and 34 are patentable.
`
`Also, PO’s proposed new claims recite only very minor differences over
`
`claims 1 and 34. For example, claim 45 recites only three differences over claim 1,
`
`including “said port is covered by said sleeve” when closed, “said sleeve is farther
`
`from an end of said valve than is said port” when open, and “a rupture disc.”
`
`Compare EX1001 at 4:42-51 with EX1043 at 5. These additions are not patentable
`
`distinctions. See In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013) (“A later patent
`
`claim is not patentably distinct from an earlier claim if that later claim is obvious
`
`over, or anticipated by, the earlier claim.” (internal quotation marks and citation
`
`omitted)). In any event, the Board need not decide whether the new claims are
`
`patentably distinct. Ossia, slip op. at 4. It is enough that the IPR will simplify the
`
`reexamination. See Toshiba, slip op. at 2. Thus, the eighth factor favors a stay.
`
`
`
`Because all eight factors favor a stay, if the Board declines to terminate the
`
`reexamination, there is good cause to stay it.
`
`IV. CONCLUSION
`
`The Board should terminate reexamination for PO’s gamesmanship.
`
`Otherwise the Board should stay reexamination proceedings.
`
`
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`10
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`
`Dated: February 21, 2020
`
`
`
`
`
`
`
`
`By: /s/ Douglas R. Wilson
`Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Petitioner
`Weatherford International, LLC
`
`
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`11
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), and with the
`
`agreement of counsel for Patent Owner, a true and correct copy of the foregoing
`
`MOTION
`
`TO
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`TERMINATE AND/OR
`
`STAY
`
`EX
`
`PARTE
`
`REEXAMINATION NO. 90/014,418 UNDER 35 U.S.C. § 315(d) is being served
`
`electronically on February 21, 2020 to the following lead and back-up counsel for
`
`Patent Owner to the following email addresses:
`
`
`Mark T. Garrett
`Mark.garrett@nortonrosefulbright.com
`
`Eagle H. Robinson
`Eagle.robinson@nortonrosefulbright.com
`
`Jeremy Albright
`Jeremy.albright@nortonrosefulbright.com
`
`Michael Pohl
`Michael.pohl@nortonrosefulbright.com
`
`
`
`
` By: /s/ Douglas R. Wilson
`
` Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Petitioner
`Weatherford International, LLC
`
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`12
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