`______________
`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 MOTION TO EXCLUDE EX. 1012’S
`2011-USE STATEMENT AS HEARSAY
`
`
`
`IPR2019-00768
`Patent RE46,137
`
`I.
`
`Introduction
`
`Patent Owner objected to Ex. 1012’s statement that an “operator … began
`
`incorporating [Ex. 1012’s] valve in the second quarter of 2011” (“2011-Use
`
`Statement”) (Ex. 1012 at 4) as hearsay. Paper 10 at 1. Petitioner offered no
`
`supplemental evidence to cure that objection.
`
`Petitioner relies on the 2011-Use Statement to argue that Ex. 1012 is evidence
`
`of simultaneous invention (Petition at 65-66), but that statement is hearsay to which
`
`no exception applies. The Board should therefore exclude it.
`
`II. Ex. 1012 Cannot Be Evidence of Simultaneous Invention Without Its
`2011-Use Statement
`Petitioner sets the required “comparatively short space of time” within which
`
`the alleged simultaneous inventions were made at a few months. Geo M. Martin Co.
`
`v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010) (cited in
`
`Petition at 65). That space of time cannot be as long as twenty-two months:
`
`“[b]ecause [Ex. 1009] was so much earlier”—twenty-two months (Ex. 1009 at 1)—
`
`“I do not view it as simultaneous invention.” Chambers at ¶ 52 (cited in Petition at
`
`65-66). It also cannot be as long as 9-10 months in view of Petitioner’s and Mr.
`
`Chambers’s reliance on Ex. 1011 to establish a May 2011 priority date for Ex. 1010
`
`despite its May 2012 filing date. Petition at 65-66; Chambers at ¶ 53 (“Thus, the
`
`provisional application was filed nearly three months before the earliest filing date
`
`for the ’137 Patent” and discussing only Ex. 1011 in any detail (emphasis added))
`
`-1-
`
`
`
`IPR2019-00768
`Patent RE46,137
`(cited in Petition at 65-66). Petitioner and Mr. Chambers eschewed reliance on Ex.
`
`1012’s alleged October-November 2012 publication date—fifteen months after the
`
`’137 Patent’s invention—in favor of its 2011-Use Statement, which allegedly places
`
`Ex. 2012’s valve within a few months of the ’137 Patent’s invention. Petition at 65-
`
`66; Chambers at ¶ 54 (Ex. 1012 “was presented … from October 30, 2012 to
`
`November 1, 2012[; h]owever, it describes [second quarter, 2011] fracturing jobs
`
`run with [its] hydraulically actuated sleeve” (emphasis added)) (cited in Petition at
`
`55-56).
`
`Absent the 2011-Use Statement, Ex. 1012 does not fit Petitioner’s
`
`simultaneous invention case.
`
`III. The 2011-Use Statement Is Hearsay
`The 2011-Use Statement is hearsay because it was made out of court, and
`
`Petitioner offers it to prove that what it asserts is true. FRE 802; Petition at 65-66
`
`(characterizing Ex. 1012 as “a substantially similar sleeve used in the second quarter
`
`of 2011” (emphasis added)); Chambers at ¶ 54 (introducing the 2011-Use Statement
`
`-2-
`
`
`
`IPR2019-00768
`Patent RE46,137
`with “[i]n fact” and concluding based on the same that “[t]his operator thus began
`
`using the RDV in wells in the second quarter of 2011.”) (cited in Petition at 65-66)).
`
`IV. Conclusion
`
`The 2011-Use Statement is both relied on by Petitioner and is hearsay to
`
`which no exception applies. The Board should therefore exclude it.
`
`Dated: May 20, 2020
`
`Respectfully submitted,
`
`/Mark T. Garrett/
` Mark T. Garrett (Reg. No. 44,699)
`
`
`
`-3-
`
`
`
`IPR2019-00768
`Patent RE46,137
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on May 20,
`
`2020, a copy of Patent Owner’s 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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