`
`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
`______________
`
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`SERVED WITH ITS MOTION TO TERMINATE OR STAY THE
`REEXAMINATION
`
`
`
`

`

`IPR2019-00768
`Patent RE46,137
`As set forth below, Patent Owner objects to evidence that Petitioner served
`
`with its Motion to Terminate and/or Stay Ex Parte Reexamination No. 90/014,418
`
`under 35 U.S.C. § 315(d) (Paper 21).
`
`Ex. # and
`Petitioner’s
`Description
`1004. U.S. Patent
`No.
`5,819,853
`(“Patel ’853”)
`
`Objections
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner relies on Ex. 1004 to allege that Patent Owner
`“misled the examiner” about what it teaches during
`prosecution of the ’137 Patent. Paper 21 at 6; see also id. at
`2. But Ex. 1004 is not at issue in this proceeding (at
`Petitioner’s choice) or the reexamination, and for at least
`that reason, neither it nor anything Patent Owner said about
`it makes any fact of consequence to terminating or staying
`the reexamination more or less probable than without the
`exhibit.
`
`And more broadly, Ex. 1004 is used in support of
`Petitioner’s allegation that “PO has … perpetuate[d] a
`baseless assertion of fraudulently-obtained patent rights”
`(Paper 21 at 5), which is an issue the district court, not the
`Board, will decide.
` Patent Owner—throughout these
`objections—understands Petitioner’s “baseless assertion” to
`refer to an assertion that is baseless for reasons relating to
`invalidity and/or enforceability.
`
`To the extent Ex. 1004 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
`Improper Character Evidence. FRE 404(a)(1), (b)(1). To
`the extent Petitioner uses Ex. 1004 in an attempt to establish
`that Patent Owner has an untruthful character and has
`therefore acted untruthfully on one or more occasions (see
`Paper 21 at 5 (“PO has engaged in a series of [fraudulent]
`acts”)), it is improper character evidence.
`
`1013. Letter from Irrelevant or Insufficiently Probative.
`
` FRE 401-403.
`
`1
`
`

`

`Matheny July 10,
`2014
`
`1014. Brown email
`Aug. 18, 2014
`
`IPR2019-00768
`Patent RE46,137
`Petitioner relies on this exhibit to allege that PO “first
`threatened Petitioner with [patent infringement] … in July
`2014.” Paper 21 at 1. But this does not make any fact of
`consequence to terminating or staying the reexamination
`more or less probable than without the exhibit.
`
`To the extent Ex. 1013 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner relies on Ex. 1014 as allegedly showing that
`“Petitioner told PO that the asserted claims of the ’960
`Patent were invalid in view of Giroux.” Paper 21 at 1. But
`this does not make any fact of consequence to terminating or
`staying the reexamination more or less probable than
`without the exhibit.
`
`And more broadly, Ex. 1014 is used in support of
`Petitioner’s allegation that “PO has … perpetuate[d] a
`baseless assertion of fraudulently-obtained patent rights”
`(Paper 21 at 5), which is an issue that the district court, not
`the Board, will decide.
`
`To the extent Ex. 1014 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
`Negotiations. FRE 408. Ex. 1014 contains statements made
`during negotiations
`related
`to Patent Owner’s and
`Petitioner’s claims (e.g., infringement and invalidity), and
`such statements are therefore inadmissible to prove the
`validity of any of
`those claims or
`to
`impeach by
`contradiction. But this is precisely how Petitioner uses Ex.
`1014. See Paper 21 at 1 (“PO then hatched a plan to file a
`reissue application in light of invalidity based on Giroux.”)
`and 3 (“Notwithstanding Petitioner’s charts proving the
`invalidity of the ’137 Patent …, PO filed suit against
`Petitioner”).
`
`Hearsay. FRE 801(c) and 802. Petitioner relies on Ex. 1014
`
`2
`
`

`

`1015. Matheny Ltr.
`Sept. 8, 2014
`
`IPR2019-00768
`Patent RE46,137
`to establish the truth of out-of-court statements therein, e.g.,
`that “claims … are invalid … in view of [Giroux].” Ex.
`1014 at 1; Paper 21 at 1 and 3. These statements are thus
`hearsay, and Petitioner has not offered evidence sufficient to
`demonstrate that they fall within any exception to the rule
`against hearsay.
`
`Improper Character Evidence. FRE 404(a)(1), (b)(1). To
`the extent Petitioner uses Ex. 1014 in an attempt to establish
`that Patent Owner has an untruthful character and has
`therefore acted untruthfully on one or more occasions (see
`Paper 21 at 5 (“PO has engaged in a series of [fraudulent]
`acts”)), it is improper character evidence.
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner relies on Ex. 1015 as showing that Petitioner and
`Patent Owner “exchanged correspondence
`regarding
`invalidity of the ’960 claims.” Paper 21 at 1. But this does
`not make any fact of consequence to terminating or staying
`the reexamination more or less probable than without the
`exhibit.
`
`And more broadly, Ex. 1015 is used in support of
`Petitioner’s allegation that “PO has … perpetuate[d] a
`baseless assertion of fraudulently-obtained patent rights”
`(Paper 21 at 5), which is an issue that the district court, not
`the Board, will decide.
`
`To the extent Ex. 1015 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
`Negotiations. FRE 408. Ex. 1015 contains statements made
`during negotiations
`related
`to Patent Owner’s and
`Petitioner’s claims (e.g., infringement and invalidity), and
`such statements are therefore inadmissible to prove the
`validity of any of
`those claims or
`to
`impeach by
`contradiction. But this is precisely how Petitioner uses Ex.
`1015. See Paper 21 at 1 (“PO then hatched a plan to file a
`reissue application in light of invalidity based on Giroux.”)
`and 3 (“Notwithstanding Petitioner’s charts proving the
`
`3
`
`

`

`1016. Brown email
`Sept. 17, 2014
`
`IPR2019-00768
`Patent RE46,137
`invalidity of the ’137 Patent …, PO filed suit against
`Petitioner”).
`
`Improper Character Evidence. FRE 404(a)(1), (b)(1). To
`the extent Petitioner uses Ex. 1015 in an attempt to establish
`that Patent Owner has an untruthful character and has
`therefore acted untruthfully on one or more occasions (see
`Paper 21 at 5 (“PO has engaged in a series of [fraudulent]
`acts”)), it is improper character evidence.
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner relies on Ex. 1016 as showing that Petitioner and
`Patent Owner “exchanged correspondence
`regarding
`invalidity of the ’960 claims.” Paper 21 at 1. But this does
`not make any fact of consequence to terminating or staying
`the reexamination more or less probable than without the
`exhibit.
`
`And more broadly, Ex. 1016 is used in support of
`Petitioner’s allegation that “PO has … perpetuate[d] a
`baseless assertion of fraudulently-obtained patent rights”
`(Paper 21 at 5), which is an issue that the district court, not
`the Board, will decide.
`
`To the extent Ex. 1016 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
`Negotiations. FRE 408. Ex. 1016 contains statements made
`during negotiations
`related
`to Patent Owner’s and
`Petitioner’s claims (e.g., infringement and invalidity), and
`such statements are therefore inadmissible to prove the
`validity of any of
`those claims or
`to
`impeach by
`contradiction. But this is precisely how Petitioner uses Ex.
`1016. See Paper 21 at 1 (“PO then hatched a plan to file a
`reissue application in light of invalidity based on Giroux.”)
`and 3 (“Notwithstanding Petitioner’s charts proving the
`invalidity of the ’137 Patent …, PO filed suit against
`Petitioner”).
`
`Hearsay. FRE 801(c) and 802. Petitioner relies on Ex. 1016
`
`4
`
`

`

`1017. Claim chart
`attached to Sept. 17,
`2014 email
`
`IPR2019-00768
`Patent RE46,137
`to establish the truth of out-of-court statements therein, e.g.,
`that “each of the claims … is clearly anticipated by and/or
`obvious in view of [Giroux].” Ex. 1016 at 1; Paper 21 at 1
`and 3. These statements are thus hearsay, and Petitioner has
`not offered evidence sufficient to demonstrate that they fall
`within any exception to the rule against hearsay.
`
`Improper Character Evidence. FRE 404(a)(1), (b)(1). To
`the extent Petitioner uses Ex. 1016 in an attempt to establish
`that Patent Owner has an untruthful character and has
`therefore acted untruthfully on one or more occasions (see
`Paper 21 at 5 (“PO has engaged in a series of [fraudulent]
`acts”)), it is improper character evidence.
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner relies on Ex. 1017 as showing that Petitioner and
`Patent Owner “exchanged correspondence
`regarding
`invalidity of the ’960 claims” and that “certain claims of the
`’960 Patent were invalid in view of Giroux.” Paper 21 at 1.
`But this does not make any fact of consequence to
`terminating or staying the reexamination more or less
`probable than without the exhibit.
`
`And more broadly, Ex. 1017 is used in support of
`Petitioner’s allegation that “PO has … perpetuate[d] a
`baseless assertion of fraudulently-obtained patent rights”
`(Paper 21 at 5), which is an issue that the district court, not
`the Board, will decide.
`
`To the extent Ex. 1017 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
`Negotiations. FRE 408. Ex. 1017 contains statements made
`during negotiations
`related
`to Patent Owner’s and
`Petitioner’s claims (e.g., infringement and invalidity), and
`such statements are therefore inadmissible to prove the
`validity of any of
`those claims or
`to
`impeach by
`contradiction. But this is precisely how Petitioner uses Ex.
`1017. See Paper 21 at 1 (“PO then hatched a plan to file a
`reissue application in light of invalidity based on Giroux.”)
`
`5
`
`

`

`IPR2019-00768
`Patent RE46,137
`and 3 “Notwithstanding Petitioner’s charts proving the
`invalidity of the ’137 Patent …, PO filed suit against
`Petitioner”).
`
`Hearsay. FRE 801(c) and 802. Petitioner relies on Ex. 1017
`to establish the truth of out-of-court statements therein, e.g.,
`that Ex. 1017’s chart “show[s] how certain claims of the
`’960 Patent were invalid in view of Giroux” Paper 21 at 1
`and 3. These statements are thus hearsay, and Petitioner has
`not offered evidence sufficient to demonstrate that they fall
`within any exception to the rule against hearsay.
`
`Improper Character Evidence. FRE 404(a)(1), (b)(1). To
`the extent Petitioner uses Ex. 1017 in an attempt to establish
`that Patent Owner has an untruthful character and has
`therefore acted untruthfully on one or more occasions (see
`Paper 21 at 5 (“PO has engaged in a series of [fraudulent]
`acts”)), it is improper character evidence.
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner cites Ex. 1038 to establish that “PO [] contacted
`Petitioner regarding PO’s assertion of the ’137 Patent
`against Petitioner.” Paper 21 at 3. But this does not make
`any fact of consequence to terminating or staying the
`reexamination more or less probable than without the
`exhibit.
`
`To the extent Ex. 1038 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner relies on Ex. 1039 as allegedly showing that
`Petitioner “prove[d]” to Patent Owner that “claims 1-44
`were also invalid over [Patel ’427].” Paper 21 at 3. But this
`does not make any fact of consequence to terminating or
`staying the reexamination more or less probable than
`without the exhibit.
`
`And more broadly, Ex. 1039 is used in support of
`Petitioner’s allegation that “PO has … perpetuate[d] a
`
`6
`
` Matheny
`1038.
`email, dated May 1,
`2017
`(with
`attachment)
`
`Imwalle
`
`1039.
`email, dated Mar. 9,
`2018
`(with
`attachment)
`(REDACTED)
`
`

`

`IPR2019-00768
`Patent RE46,137
`baseless assertion of fraudulently-obtained patent rights”
`(Paper 21 at 5), which is an issue that the district court, not
`the Board, will decide.
`
`To the extent Ex. 1039 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
`Negotiations. FRE 408. Ex. 1039 contains statements made
`during negotiations
`related
`to Patent Owner’s and
`Petitioner’s claims (e.g.,
`infringement,
`invalidity, and
`inequitable conduct), and such statements are therefore
`inadmissible to prove the validity of any of those claims or
`to impeach by contradiction. But this is precisely how
` See Paper 21 at 3
`Petitioner uses Ex. 1039.
`(“Notwithstanding Petitioner’s charts proving the invalidity
`of the ’137 Patent …, PO filed suit against Petitioner”).
`
`Hearsay. FRE 801(c) and 802. Petitioner relies on Ex. 1039
`to establish the truth of out-of-court statements therein, e.g.,
`that Ex. 1039’s chart “prov[es] the invalidity of the ’137
`Patent.” Paper 21 at 3. These statements are thus hearsay,
`and Petitioner has not offered evidence sufficient to
`demonstrate that they fall within any exception to the rule
`against hearsay.
`
`Improper Character Evidence. FRE 404(a)(1), (b)(1). To
`the extent Petitioner uses Ex. 1039 in an attempt to establish
`that Patent Owner has an untruthful character and has
`therefore acted untruthfully on one or more occasions (see
`Paper 21 at 5 (“PO has engaged in a series of [fraudulent]
`acts”)), it is improper character evidence.
`
`Incomplete. FRE 106. Petitioner did not introduce an
`unredacted version of Ex. 1039.
`
`1040. Letter from
`Matheny,
`dated
`May
`18,
`2018
`(REDACTED)
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner
`relies on Ex. 1040
`for Patent Owner’s
`settlement—negotiation statement “‘that any inter partes
`review of the claims of the ’137 Patent would not result in a
`finding that all claims are unpatentable’” (Paper 21 at 3),
`
`7
`
`

`

`IPR2019-00768
`Patent RE46,137
`which Petitioner misconstrues as “a conce[ssion] that Patel
`’427 would anticipate many claims.” Paper 21 at 6. But
`Patent Owner’s settlement offers—which cannot even be
`used to contradict Patent Owner (see FRE 408)—and
`Petitioner’s mischaracterization of the same do not make
`any fact of consequence to terminating or staying the
`reexamination more or less probable than without the
`exhibit.
`
`And more broadly, Ex. 1040 is used in support of
`Petitioner’s allegation that “PO has … perpetuate[d] a
`baseless assertion of fraudulently-obtained patent rights”
`(Paper 21 at 5), which is an issue that the district court, not
`the Board, will decide.
`
`To the extent Ex. 1040 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
`Negotiations. FRE 408. Ex. 1040 contains statements made
`during negotiations
`related
`to Patent Owner’s and
`Petitioner’s claims (e.g.,
`infringement,
`invalidity, and
`inequitable conduct), and such statements are therefore
`inadmissible to prove the validity of any of those claims or
`to impeach by contradiction. But this is precisely how
`Petitioner uses Ex. 1040. See Paper 21 at 6 (“PO’s pre-suit
`correspondence conceded that Patel ’427 would anticipate
`many claims …. Subsequently, PO filed a baseless lawsuit
`accusing Petitioner of willfully infringing claim 1.”).
`
`Improper Character Evidence. FRE 404(a)(1), (b)(1). To
`the extent Petitioner uses Ex. 1040 in an attempt to establish
`that Patent Owner has an untruthful character and has
`therefore acted untruthfully on one or more occasions (see
`Paper 21 at 5 (“PO has engaged in a series of [fraudulent]
`acts”)), it is improper character evidence.
`
`Incomplete. FRE 106. Petitioner did not introduce an
`unredacted version of Ex. 1040, and redacted portions of Ex.
`1040 contradict Petitioner’s characterization of Patent
`
`8
`
`

`

`1041. Letter from
`Kurka, dated July
`16, 2018
`
`IPR2019-00768
`Patent RE46,137
`
`Owner’s settlement position.
`
` FRE 401-403.
`Irrelevant or Insufficiently Probative.
`Petitioner cites Ex. 1041 for Petitioner’s own prior
`“observat[ion] that PO ‘appears to admit that [Patel ’427]
`anticipates any claim without [the urging] limitation.’”
`Paper 21 at 3. But Petitioner’s mischaracterization of Patent
`Owner’s settlement offers does not make any fact of
`consequence to terminating or staying the reexamination
`more or less probable than without the exhibit.
`
`And more broadly, Ex. 1041 is used in support of
`Petitioner’s allegation that “PO has … perpetuate[d] a
`baseless assertion of fraudulently-obtained patent rights”
`(Paper 21 at 5), which is an issue that the district court, not
`the Board, will decide.
`
`To the extent Ex. 1041 is relevant, any probative value it has
`is substantially outweighed by dangers of unfair prejudice,
`confusing the issues, and wasting time.
`
`Negotiations. FRE 408. Ex. 1041 contains statements made
`during negotiations
`related
`to Patent Owner’s and
`Petitioner’s claims (e.g.,
`infringement,
`invalidity, and
`inequitable conduct), and such statements are therefore
`inadmissible to prove the validity of any of those claims or
`to impeach by contradiction. But this is precisely how
`Petitioner uses Ex. 1041. See Paper 21 at 3 (“Petitioner
`observed that PO ‘appears to admit that [Patel ’427]
`anticipates [certain claims]’ ….. PO Files Suit on Its Invalid
`Reissue Claims.”).
`
`Hearsay. FRE 801(c) and 802. Petitioner relies on Ex. 1041
`to establish the truth of out-of-court statements therein, e.g.,
`that PO “appears to admit that the ’427 application
`anticipates [certain claims].” Paper 21 at 3; see also id.
`(showing Petitioner’s reliance on such statements as true:
`“PO Files Suit on Its Invalid Reissue Claims”). These
`statements are thus hearsay, and Petitioner has not offered
`evidence sufficient to demonstrate that they fall within any
`
`9
`
`

`

`IPR2019-00768
`Patent RE46,137
`
`exception to the rule against hearsay.
`
`Improper Character Evidence. FRE 404(a)(1), (b)(1). To
`the extent Petitioner uses Ex. 1041 in an attempt to establish
`that Patent Owner has an untruthful character and has
`therefore acted untruthfully on one or more occasions (see
`Paper 21 at 5 (“PO has engaged in a series of [fraudulent]
`acts”)), it is improper character evidence.
`
`
`
`Dated: February 28, 2020
`
`Respectfully submitted,
`/Mark T. Garrett/
` Mark T. Garrett (Reg. No. 44,699)
`
`10
`
`

`

`IPR2019-00768
`Patent RE46,137
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on February
`
`28, 2020, a copy of Patent Owner’s Objections to Petitioner’s Evidence Submitted
`
`with its Motion to Stay or Terminate the Reexamination was served on Lead and
`
`Backup Counsel for Petitioner via email (by consent) to:
`
`Lead Counsel: Douglas 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)
`
`
`
`
`
`
`
`