`
`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 OPPOSITION TO PETITIONER’S MOTION TO
`STAY OR TERMINATE THE EX PARTE REEXAMINATION
`
`
`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`N/A
`
`Answer
`
`2007
`
`N/A
`
`2008
`
`N/A
`
`
`
`IPR2019-00768
`Patent RE46,137
`
`PATENT OWNER’S EXHIBIT LIST
`Shorthand
`Description
`Fleckenstein
`Declaration of William W. Fleckenstein,
`Ph.D, PE (CA#1666)
`
`Chambers1
`
`Declaration of Michael Chambers, filed in
`IPR2019-00708 as EX1005
`
`
`
`Not used
`
`ChambersDepo. Transcript of Michael Chamber’s November
`21, 2019 Deposition
`
`in U.S. Patent No.
`Disclaimer Filed
`RE46,137 on February 19, 2020
`
`Weatherford International, LLC’s Answer,
`Affirmative Defenses, and Counterclaims to
`Plaintiff’s Original Complaint (Dkt. 9 in
`Civil Action No. 4:18-cv-4797 (S.D. Tex.))
`
`January 30, 2020 – February 18, 2020 E-mail
`Correspondence Between Board and Parties
`Regarding Petitioner’s Renewed Request to
`File Motion
`to Terminate and/or Stay
`Reexam Under Section 315(d)
`
`Reexamination Operational Statistics from
`the U.S. Patent and Trademark Office
`(updated
`Dec.
`2017),
`https://www.uspto.gov/sites/default/files/do
`cuments/Website_Operational_Statistics.pdf
`
`i
`
`
`
`I.
`
`II.
`
`
`
`IPR2019-00768
`Patent RE46,137
`
`TABLE OF CONTENTS
`Petitioner Has Not Established a Basis for Terminating the
`Reexamination. ................................................................................................ 1
`Staying the Reexam Would Delay Examination of Patent Owner’s
`New Claims and Is Unjustified by the Slight Overlap with this IPR. ............. 3
`A.
`The Slight Overlap Does Not Support a Stay (Factors 1 and 2) ........... 4
`B.
`The Remote Risk of Inconsistent Results
`Is Borne by Patent Owner (Factor 4) .................................................... 6
`Speculation About Amendments Does Not Justify a Stay
`(Factor 5) ............................................................................................... 8
`Staying the Reexamination Is Premature (Factors 6 and 7) .................. 9
`Duplicative Work Is Partly Done and Mitigated
`(Factors 3 and 8) .................................................................................... 9
`Staying the Reexam Would Prejudice Patent Owner .......................... 10
`
`C.
`
`D.
`E.
`
`F.
`
`ii
`
`
`
`I.
`
`Petitioner Has Not Established a Basis
`Reexamination.
`Petitioner’s request to terminate the reexam for gamesmanship should be
`
`IPR2019-00768
`Patent RE46,137
`for Terminating
`the
`
`denied. Petitioner’s termination analysis is based on its allegation that the ’137
`
`Patent was “fraudulently-obtained.” Paper 21 at 5. But that is an issue before the
`
`district court. See Answer at 8-20 (describing allegations involving Giroux and Patel
`
`’853 underlying counterclaim of unenforceability for inequitable conduct), 20-21
`
`(describing allegations underlying counterclaim for unenforceability for unclean
`
`hands). Petitioner fails to cite any decision, rule, or statute giving the Board
`
`authority to address such an issue when deciding a motion to terminate under
`
`Section 315(d). See Paper 21 at 1-7; EX2007 at 3 (Petitioner citing Section 315(d)
`
`as the basis for requested relief). And the Board has declined to speculate on how a
`
`district court might decide an issue before it while evaluating gamesmanship
`
`allegations. Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2017-01917,
`
`Paper 86 at 15 (P.T.A.B. Feb. 13, 2019) (precedential).
`
`Moreover, the alleged gamesmanship concerns acts that occurred in or pertain
`
`to other proceedings (Paper 21 at 1-71), aside from filing the subject reexam, which
`
`
`1 Rule 22(c) specifies that a motion may include a “statement of material fact.”
`
`37 C.F.R. § 42.22(c) (emphasis added). Petitioner’s motion contains something
`
`called a “Statement of Relevant Facts.” Paper 21 at 1. In addition to this wording
`
`1
`
`
`
`IPR2019-00768
`Patent RE46,137
`the Board recognized the Office has expressly suggested (Paper 17, 1-2). See
`
`Aerospace Commc’ns Holdings Co. v. Armor All/Step Prods. Co., IPR2016-00441,
`
`Paper 12 at 5 (P.T.A.B. June 28, 2016) (“Furthermore, any alleged ‘gamesmanship’
`
`concerning service of process occurred in another proceeding.”); see also Proppant
`
`Express, Paper 86 at 10-11 (identifying as a “distinct deficienc[y]” that alleged
`
`prejudice occurred in another forum involving a claim not before the Board). Thus,
`
`those alleged acts do not support Petitioner’s termination position here.
`
`The Ariosa decision also does not help Petitioner. Under Ariosa, the Board
`
`has authority to base a reexam termination decision on the “totality of the
`
`circumstances.” Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093,
`
`Paper 81 at 16 (P.T.A.B. May 24, 2016); see also Emerson Elec. Co. v. SIPCO, LLC,
`
`IPR2017-00359, Paper 62 at 17 (P.T.A.B. Mar. 21, 2019). But Ariosa is otherwise
`
`
`difference, Petitioner’s statement is not set forth in the format described in Rule
`
`22(c) as “preferabl[e]” (i.e., one numbered sentence for each alleged fact), and
`
`Petitioner’s alleged “facts” include several characterizations of Patent Owner’s
`
`intent and/or mental statement that are unsupported by its citations (Paper 21 at 1-
`
`2). Petitioner’s statement therefore does not fall within the scope of Rule 22(c), nor
`
`does it appear Petitioner intended it to. Accordingly, Patent Owner is not obligated
`
`to provide a listing of admissions or denials under 37 C.F.R. § 42.23(a).
`
`2
`
`
`
`IPR2019-00768
`Patent RE46,137
`inapposite. It concerned the Board’s evaluation of whether to terminate a group of
`
`Petitioner-filed reexams based on the content and timing of the reexam requests in
`
`view of the Petitioner’s subject IPR proceeding and another IPR proceeding the
`
`Petitioner had filed. See Ariosa, Paper 81 at 2-6 and 9-16. There is no factual
`
`overlap between Ariosa and this case.
`
`Thus, even basing a termination decision on the totality of the circumstances
`
`that are appropriate to consider, it would be improper to terminate the reexam, which
`
`was filed at an appropriate time (before a final written decision) and with appropriate
`
`content (“prior to issuance of a final written decision, an SNQ may be established
`
`based on a question raised in a ground presented in an AIA petition”). Notice
`
`Regarding Options for Amendments by Patent Owner Through Reissue or
`
`Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg. 16654, 16655-
`
`56 (April 22, 2019).
`
`II.
`
`Staying the Reexam Would Delay Examination of Patent Owner’s New
`Claims and Is Unjustified by the Slight Overlap with this IPR.
`“The Board ordinarily will not stay a reexamination because, in the absence
`
`of good cause, reexaminations are conducted with special dispatch.” See, e.g., M&P
`
`Golf, LLC v. Max Out Golf, LLC, IPR2016-00784, Paper 33 at 3 (P.T.A.B. Mar. 10,
`
`2017). The Board considers a number of factors to determine if such good cause
`
`exists, some of which Petitioner lists in its Motion. Paper 21 at 7-8. As these factors
`
`and others show, staying the reexam would delay examination of Patent Owner’s 53
`
`3
`
`
`
`IPR2019-00768
`Patent RE46,137
`new claims to Patent Owner’s detriment in exchange for addressing remote risks of
`
`inconsistent results that can only prejudice Patent Owner. This is not good cause.
`
`A. The Slight Overlap Does Not Support a Stay (Factors 1 and 2)
`The reexam was ordered for claims 1-44 (EX1044 at 10), but claims 2-7, 12-
`
`15, 18-30, 32, 33, 35-40, 43, and 44 were disclaimed (EX2005), leaving the Urging
`
`Claims (8-11, 16, 17, 31, 41, and 42) and claims 1 and 34 as far as potential overlap.
`
`But as explained below, the Urging Claims will face challenges in the reexam
`
`distinct from those in the IPR, if they remain in the reexam at all. And overlap with
`
`respect to two claims is not enough to justify staying the reexam in view of the 53
`
`new claims the reexam will address.
`
`Starting with the Urging Claims, if the Office identified an SNQ for them, it
`
`is based exclusively on Patel ’427. EX1044 at 10. Patel ’427 would therefore be
`
`the only prior art that could currently2 be cited against them. See Belkin Int’l, Inc.
`
`v. Kappos, 696 F.3d 1379, 1383 (Fed. Cir. 2012) (with respect to as-issued claims,
`
`
`2 The Office is permitted to revise its SNQ(s). However, an as-yet unidentified SNQ
`
`with respect to the Urging Claims (see EX1044 at 7-10 (no Urging-Claims
`
`mapping)) is too speculative to support a stay. See Google Inc. v. Summit 6 LLC,
`
`IPR2015-00806, Paper 26 at 5 (P.T.A.B. Oct. 7, 2015) (giving little weight to
`
`“speculation” and “hypothetical[s]” in a stay analysis).
`
`4
`
`
`
`IPR2019-00768
`Patent RE46,137
`“the scope of reexamination … may not include other prior art than what constituted
`
`the basis of the Director’s determination of a [SNQ]”).3 But a Patel ’427-only
`
`challenge to the Urging Claims does not exist in this IPR (Petition at 5-6), meaning
`
`there will be no overlap.
`
`Beyond that, Patent Owner will point out in its Patent Owner’s Statement (see
`
`37 C.F.R. § 1.530) that the Office did not find an SNQ for the Urging Claims and
`
`request that they be withdrawn from the reexam. The Urging Claims are only in the
`
`reexam because they “depend from claims with a SNQ.” EX1044 at 10. The Urging
`
`Claims cannot, however, simply inherit the Office’s Patel ’427-only SNQ because
`
`Patel ’427 alone cannot render them unpatentable (see Petition at 5-6 (not asserting
`
`otherwise)). See Belkin, 696 F.3d at 1383 (non-SNQ art is outside of the scope of
`
`reexam). Without a supporting SNQ, the Urging Claims cannot be reexamined.
`
`35 U.S.C. § 304 (ex parte “reexamination [is] … for resolution of the question”).
`
`While claims 1 and 34 currently overlap, that alone is insufficient to support
`
`a stay in view of Patent Owner’s 53 new claims. See Arctic Cat, Inc. v. Polaris
`
`
`3 While Belkin addresses inter partes reexaminations, the cited holding is based on
`
`“inter partes reexamination … [being] for resolution of the question” (35 U.S.C.
`
`§ 313 (2011)), which is the same as ex parte “reexamination … [being] for
`
`resolution of the question” (35 U.S.C. § 304).
`
`5
`
`
`
`IPR2019-00768
`Patent RE46,137
`Indus., Inc., IPR2015-01781, Paper 78 at 4 (P.T.A.B. Sept. 25, 2018) (declining to
`
`stay a reexam with 5 overlapping claims (see Paper 60 at 6 from the same
`
`proceeding) in view of, inter alia, “added claims … [that the IPR] will not address”).
`
`B.
`
`The Remote Risk of Inconsistent Results Is Borne by Patent Owner
`(Factor 4)
`Petitioner speculates that “[t]he Board and the examiner could disagree on
`
`whether claims 1 and 34 are invalid[ and t]he examiner could also improperly allow
`
`new claims that are not patentably distinct from invalid claims as determined by the
`
`Board.” Paper 21 at 8-9. But as Petitioner seems to later understand, the IPR will
`
`likely conclude before the reexam.4 See id. at 9. Thus, Petitioner will likely have
`
`its “estoppel when the final written decision issues”5 (id. at 9-10) to protect itself
`
`from these issues without a stay.
`
`The Office is also aware of the IPR and is following the Board’s lead. EX1044
`
`at 7 (“the Board’s findings are relied upon here for the determination of a SNQ”).
`
`This reduces the risk of inconsistent results. Arctic Cat, Paper 78 at 4-5 (there is a
`
`“Reduced Chance of Inconsistencies” where “[t]he reexamination proceeding is well
`
`aware of, and has acted consistently with, the proceedings at hand”).
`
`
`4 EX2008 at 2/16 (average time from filing to certificate was 19-27 months in 2017).
`
`5 Assuming, as does Petitioner, that there are no appeals.
`
`6
`
`
`
`IPR2019-00768
`Patent RE46,137
`Even setting all of that aside, any inconsistent result with respect to claims 1
`
`and 34 would be to Patent Owner’s detriment. If either the reexam or the IPR find
`
`these claims unpatentable, a certificate cancelling them will be issued (35 U.S.C.
`
`§ 318(b) (IPR); 35 U.S.C. § 307(a) (reexamination)), regardless of what the other
`
`proceeding finds. Petitioner wins in either circumstance.
`
`Petitioner’s contention that “‘Patent Owner potentially could obtain claims
`
`that may not be permitted otherwise’” (Paper 21 at 9 (quoting Ossia, Inc. v. Energous
`
`Corp., PGR2016-00023, Paper 18 at 4 (P.T.A.B. Sept. 27, 2016)) is based on
`
`Petitioner’s incorrect attorney argument that the new claims are not patentably
`
`distinct over the as-issued claims (Paper 21 at 10). Thus, it is entitled to no weight.
`
`See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)
`
`(attorney argument is not evidence); see also 37 C.F.R. § 42.20(c) (Petitioner had
`
`the burden).
`
`And Patent Owner’s new claims pose nothing like the issues addressed in
`
`Petitioner’s relied-on Ossia decision. In that case, a post-grant review raised
`
`Section 112 challenges that were unaddressable in a co-pending reexam, and
`
`conclusion of the reexam would have terminated the post-grant review. Ossia, Paper
`
`18 at 3-4. Thus staying the reexam was necessary to prevent “Patent Owner …
`
`[from] obtain[ing] claims that may not be permitted otherwise” in view of those
`
`Section 112 challenges. Id. at 4. Here, allowing the reexam to proceed will not
`
`7
`
`
`
`IPR2019-00768
`Patent RE46,137
`preclude consideration (by the Office, the Board, or both) of any of Petitioner’s
`
`challenges. Rather, Patent Owner’s claims present the sort of “inconsistency” that
`
`the Board has rejected as such: “a stay of the reexamination proceeding would not
`
`promote consistency with regard to the added claims, because the proceedings at
`
`hand will not address those claims.” Arctic Cat, Paper 78 at 4 (emphasis added).
`
`C.
`
`Speculation About Amendments Does Not Justify a Stay (Factor 5)
`
`Petitioner contends that “amending claims in the reexamination will affect the
`
`IPR.” Paper 21 at 9. But Factor 5 instead considers whether such amendments
`
`would “affect claim scope in the [IPR].” Id. at 7. They would not, given that the
`
`reexamination is likely to conclude after the IPR (supra Section II.B), and such
`
`amendments are not final until it does. 37 C.F.R. § 1.530(k) (“Amendments not
`
`effective until certificate.”). Beyond that, Patent Owner has not proposed
`
`amendments to claims 1 and 34. See EX1043 at iv-xi. And Petitioner’s
`
`“[s]peculation regarding possible claim amendments does not support a stay of the
`
`[] reexamination.” Kaiser Aluminum v. Constellium Rolled Prods. Ravenswood,
`
`LLC, IPR2014-01002, Paper 24 at 3 (P.T.A.B. Feb. 19, 2015).
`
`
`
`
`
`8
`
`
`
`IPR2019-00768
`Patent RE46,137
`Staying the Reexamination Is Premature (Factors 6 and 7)
`D.
`Petitioner contends that because “the IPR will be completed within seven
`
`months,” but “the examiner will not even begin examining the proposed new claims
`
`[for a couple of months],” a stay is warranted. Paper 21 at 9. These premises,
`
`however, support the opposite conclusion. For one, because the reexam has not
`
`entered substantive prosecution, staying it would be premature. IBG LLC v. Trading
`
`Techs. Int’l, Inc., CBM2015-00179, Paper 52 at 4 (P.T.A.B. May 2, 2016) (“[A]s
`
`even pointed out by Petitioner, the Reexamination is relatively in the early stages …
`
`[and] can run in parallel with this proceeding without harm … .”). And because the
`
`IPR will conclude within seven months, it is likely to finish before the reexam
`
`without a stay, which undermines at least Petitioner’s inconsistent-results-based stay
`
`argument. Supra Section II.B. Finally, the IPR is not nearing its conclusion, and
`
`staying the reexam for seven months to wait for it would contravene the statutory
`
`directive that it be “conducted with special dispatch within the Office.” 35 U.S.C.
`
`§ 305.
`
`E. Duplicative Work Is Partly Done and Mitigated (Factors 3 and 8)
`The Board and the Office will both consider whether claims 1 and 34 are
`
`unpatentable over Patel ’427. But both have already mapped Patel ’427 to those
`
`claims. EX1044 at 7-8 (claim 1) and 9-10 (claim 34); Paper 8 at 7-10 (claim 1) and
`
`12-13 (claim 34). And, given that the Office is relying on the Board’s findings
`
`9
`
`
`
`IPR2019-00768
`Patent RE46,137
`(supra Section II.B), the amount of duplicative work going forward—and any
`
`associated need for simplification (Factor 8)—will be reduced.
`
`Staying the Reexam Would Prejudice Patent Owner
`F.
`“Staying the Reexamination would postpone a decision of the patentability of
`
`the new claims, all to the detriment of Patent Owner.” IBG, Paper 52 at 3; see also
`
`M&P, Paper 33 at 4 (same).
`
`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, copies of Patent Owner’s Opposition to Petitioner’s Motion to Stay or
`
`Terminate the Ex Parte Reexamination and EXS2005-2008 were 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)
`
`
`
`
`
`
`
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