`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
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`v.
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`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`______________
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`Case IPR2019-00768
`Patent RE46,137
`______________
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`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE EX. 1012’S
`2011-USE STATEMENT AS HEARSAY
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`
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`IPR2019-00768
`Patent RE46,137
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`I.
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`Petitioner’s New Theory Fails
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`“[I]f the Board ignores [the] second quarter 2011 use of the RDV,” Patent
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`Owner agrees it need not be excluded. Paper 36 (“Opp.”), 2. Patent Owner
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`disagrees, however, that Ex. 1012 would nevertheless be evidence of simultaneous
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`invention in view of its alleged October 30, 2012 presentation date. Id.
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`For Ex. 1012 to evidence simultaneous invention, Petitioner needed to
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`establish its valve was made “within a comparatively short space of time” around
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`the ’137 Patent’s invention. Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618
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`F.3d 1294, 1305-06 (Fed. Cir. 2010). Petitioner’s cases show there is no bright-line
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`rule for that space of time; instead, it depends on, inter alia, the state of the art at the
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`time of the invention, the invention’s contribution to that art, and the problems
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`addressed by that contribution. See Felburn v. New York Cent. R. Co., 350 F.2d 416,
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`426 (6th Cir. 1965) (“Felburn and Behrens, working independently, attacked the
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`same problems at about the same time and arrived at the same solutions.”). The only
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`evidence that might speak to such a space of time is Mr. Chambers’s conclusory
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`assertion that Ex. 1012 “provides [an] example of a simultaneous invention” because
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`its valve was allegedly used “in the second quarter of 2011.” EX1022, ¶54.
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`Petitioner now seeks to broaden that space of time to “[f]ifteen months” based
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`on Ex. 1012’s alleged October 30, 2012 presentation date. Opp., 2. This untimely
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`attorney argument should be ignored. But it is also foreclosed by Mr. Chambers’s
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`-1-
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`IPR2019-00768
`Patent RE46,137
`tacit refusal to rely on that presentation date in favor of its 2011-Use Statement: Ex.
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`2012 “was presented at an SPE Conference … from October 30, 2012 to November
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`1, 2012[;h]owever, it describes [second quarter, 2011] fracturing jobs run with [its
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`valve].” EX1022, ¶54 (emphasis added). Patent Owner made this contention in
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`Paper 35 (at 2), and Petitioner did not contest it. See Opp., 3-4 (only addressing
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`Patent Owner’s contentions regarding Exs. 1010 and 1011).
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`Petitioner’s new, broader space of time also fails substantively. Without
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`citing to any evidence, Petitioner contends that “[f]ifteen months (or less) is within
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`the amount of time courts have allowed for inventions to be considered
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`‘simultaneous.’” Opp., 2. That’s true, but based on facts Petitioner lacks here. In
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`Geo, the court found that a 1996 first machine and a 1998 second machine, each of
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`which was shown to possess all but a couple, obvious features of the 2001 invention,
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`set a “comparatively short space of time” for simultaneous invention that
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`encompassed a 2002 third machine having the missing features. Geo, 618 F.3d at
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`1302-06 (absent the first and second machines, patentee’s “argument would have
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`more force”). Similarly, in Felburn, the court referenced “the numerous earlier
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`patents” mapped to the invention to decide that “Felburn and Behrens … attacked
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`the same problems at about the same time.” Felburn, 350 F.2d at 425-426.
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`Columbia did not address the space of time for simultaneous invention. Trustees of
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`Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 929-30 (Fed. Cir. 2015).
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`-2-
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`IPR2019-00768
`Patent RE46,137
`But Petitioner mapped Patel ’427 to the claims. Petition, 5-6; see also
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`EX1022, ¶¶53-54 (no mappings for any of Exs. 1010-1012). And per Mr. Chambers,
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`Patel ’427 is too old to establish a space of time for simultaneous invention. See
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`EX1022, ¶52 (“[b]ecause [Ex. 1009] was so much earlier”—twenty-two months (Ex.
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`1009, 1)—“I do not view it as simultaneous invention.”); Patel ’427 at 1 (around 4
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`years before the ’137 Patent’s invention).
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`Petitioner pivots again to “other unchallenged statements in Ex. 1012” that
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`allegedly “shorten[] any gap between its invention and the ’137 Patent filing date.”
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`Opp., 3. Neither Petitioner nor Mr. Chambers relied on these statements before, and
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`Petitioner cannot now. See EX1022, ¶54 (relying exclusively on the 2011-Use
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`Statement); Petition, 65-66 (same). This new reliance also renders those statements
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`hearsay that should—for the same reasons as the 2011-Use Statement—be excluded.
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`It is not Patent Owner’s burden to show that Petitioner’s new 15-month space
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`of time is too long (Opp., 3)—it was Petitioner’s burden to assert it and support it.
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`Petitioner did not and cannot. Supra. Finally, Petitioner argues that it did not rely
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`on a few-month space of time. Opp., 3. But Petitioner only engages with Patent
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`Owner’s Exs. 1010 and 1011 evidence and arguments, contending that Petitioner
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`and Mr. Chambers relied on both Ex. 1010’s date (9-10 months after the ’137
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`Patent’s invention) and Ex. 1011’s date (3 months before) for their allegedly
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`common valve. See EX1022, ¶53 (only addressing Ex. 1011 in any detail and stating
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`-3-
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`IPR2019-00768
`Patent RE46,137
`that “I consider the ’483 Application and the resulting ’684 Patent to be an example
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`of simultaneous invention.” (emphasis added)). But that makes no sense because
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`that valve was only invented once—per Petitioner, by Ex. 1011’s date. Id.
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`II.
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`Petitioner’s Reliance on the Residual Exception Fails
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`“The residual hearsay exception is to be used only rarely, in truly exceptional
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`cases.” Pozen Inc. v. Par Pharm., Inc., 696 F.3d 1151, 1161 n.6 (Fed. Cir. 2012)
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`(citation omitted). Petitioner has not shown this is such a case. For example,
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`Petitioner “has made no showing that it could not have produced, through reasonable
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`efforts, evidence that is more probative” of the alleged 2011 use of Ex. 1012’s valve
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`as FRE 807 requires, such as “testimony from [one of Ex. 1012’s authors] in the
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`form of a declaration in this proceeding.” Opp., 4; US Endodontics, LLC v. Gold
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`Standard Instruments, LLC, PGR2015-00019, Paper 54 (“US Endodontics”), 40-42
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`(P.T.A.B. Dec. 28, 2016). Petitioner’s conclusory statement that it could not have
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`produced more probative evidence is insufficient to warrant application of FRE 807.
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`US Endodontics, 40-42 (inapplicable when “there is no apparent reason why [a
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`party] could not have offered testimony from [the out-of-court declarant] in the form
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`of a declaration”); Xactware Sols., Inc. v. Pictometry Int’l Corp., IPR2016-00594,
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`Paper 46, 15-16 (P.T.A.B. Aug. 24, 2017) (not applying when the party did “not
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`specify … why it could not have obtained ‘more probative’ evidence”).
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`-4-
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`IPR2019-00768
`Patent RE46,137
`III. Mr. Chambers Cannot Introduce the 2011-Use Statement
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`While “[a]n expert is permitted to disclose hearsay for the limited purpose of
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`explaining the basis for his expert opinion,” he cannot do so “as general proof of the
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`truth of the underlying matter.” United States v. Dukagjini, 326 F.3d 45, 58 (2d Cir.
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`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
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`knowledge [that] will help the trier of fact to understand … or to determine” when
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`Ex. 1012’s valve was used, but instead “act[s] as [a] mere conduit[] for hearsay.”
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`EX1022, ¶54 (introducing the 2011-Use Statement with “[i]n fact” to establish the
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`2011 use); Williams v. Illinois, 567 U.S. 50, 80 (2012). His reliance on the 2011-
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`Use Statement for his non-expert testimony thus does not warrant admission thereof,
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`even if experts reasonably relied on other SPE paper facts as Petitioner contends.
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`Dukagjini, 326 F.3d at 58 (a witness cannot “rely on hearsay for non-expert
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`testimony simply because that witness was also qualified to rely on hearsay for other,
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`expert testimony”); Henderson v. Black Elk Energy Offshore Operations, L.L.C.,
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`783 Fed. Appx. 380, 381-82 (5th Cir. 2019) (“the [expert] report’s ‘factual
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`recitation’” was properly excluded because the expert “lacked personal knowledge
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`of the facts contained in his report.”).
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`Dated: June 2, 2020
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`/Mark T. Garrett/
` Mark T. Garrett (Reg. No. 44,699)
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`-5-
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`IPR2019-00768
`Patent RE46,137
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 2, 2020,
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`a copy of Patent Owner’s Reply ISO Motion to Exclude Ex. 1012’s 2011-Use
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`Statement as Hearsay was served on Lead and Backup Counsel for Petitioner via
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`email (by consent) to:
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`Lead Counsel: Douglas R. Wilson (Reg. No. 54,542)
`doug.wilson@armondwilson.com
`ipr@armondwilson.com
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`Backup Counsel: Boone Baxter (Reg. No. 69,363)
`bbaxter@hpcllp.com
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`Michelle Armond (Reg. No. 53,954)
`michelle.armond@armondwilson.com
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`
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`/Mark T. Garrett/
` Mark T. Garrett (Reg. No. 44,699)
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