Trials@uspto.gov
`571-272-7822
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`Paper # 42
`Entered: August 11, 2020
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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.
`____________
`
`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`____________
`
`Record of Oral Hearing
`Oral Hearing Held: June 9, 2020
`____________
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST and
`RYAN H. FLAX, Administrative Patent Judges.
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`571-272-7822
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`Paper # 42
`Entered: August 11, 2020
`
`
`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.
`____________
`
`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`____________
`
`Record of Oral Hearing
`Oral Hearing Held: June 9, 2020
`____________
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST and
`RYAN H. FLAX, Administrative Patent Judges.
`
`
`
`
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`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DOUGLAS R. WILSON, ESQUIRE
`Armond Wilson, LLP
`895 Dove Street, Suite 300
`Newport Beach, CA 92660
`
`
`JAMES BOONE BAXTER, ESQUIRE
`Heim, Payne & Chorush, LLP.
`1111 Bagby, Suite 2100
`Houston, TX 77002
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MARK T. GARRETT, ESQUIRE
`JEREMY ALBRIGHT, ESQUIRE
`Norton Rose Fulbright US, LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701
`
`
`
` The above-entitled matter came on for hearing on Tuesday, June 9, 2020,
`commencing at 10:00 a.m. EDT, by video/by telephone.
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`Patent RE 46,137 E
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`P R O C E E D I N G S
`- - - - -
` JUDGE WEATHERLY: Good morning. Is the court reporter ready?
` REPORTER: Yes, Your Honor, I'm ready --
`JUDGE WEATHERLY: He probably has to unmute himself. All
`right, good. Thank you. Before we begin, I would ask the parties, please
`stay on the line at the conclusion of the hearing so that the court reporter
`may ask for clarification of any terms needed. I don’t expect there’ll be very
`many, but just in case. So, after we finish up, please stay on the line.
`This is the hearing conducted by video conference for IPR 2019-
`00708 and IPR 2019-00768, relating to U.S. Patent RE 46,137.
`Petitioner is Weatherford International Inc., and Patent Owner is
`Baker Hughes Oilfield Operations, LLC. I am Judge Weatherly and I am
`joined by Judges Tornquist and Flax. Each of us has a copy of both parties’
`demonstrative exhibits.
`Because we’re conducting the hearing by video conference, please
`modify your speech pattern to assist the court reporter and improve the
`clarity of the record. More specifically, please speak clearly and deliberately
`and take extra care to avoid speaking over others.
`When referring to material appearing on a slide from your
`demonstrative exhibits, please refer to the slide number.
`Pursuant to our Hearing Order, each party has 60 minutes to present
`its argument and may reserve up to 15 minutes solely to rebut the opposing
`parties’ arguments. You may not use rebuttal to address an issue for the first
`time during the hearing.
`Petitioner will proceed first because it bears the burden of proving
`unpatentability. I will keep time here and try to provide updates on the
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`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`remaining time during the hearing. Please feel free to ask about your
`remaining time any time during the hearing.
`For the record, please introduce yourselves and anyone listening to the
`hearing who is associated with your client, beginning with counsel for the
`Petitioner.
`MR. WILSON: Your Honor, Douglas Wilson for Petitioner
`Weatherford.
`JUDGE WEATHERLY: Yes.
`MR. WILSON: With me, participating in this conference today are
`Bill Imwalle, David Morris, James Kurka, and Greg Koush, all of whom are
`in-house counsel for Petitioner Weatherford. And also, with me is Jim
`Baxter of Heim, Payne & Chorush, who is co-counsel.
`JUDGE WEATHERLY: Thank you. And Patent Owner?
`MR. GARRETT: Good morning, Your Honor. Mark Garrett for
`Patent Owner. With me in the same conference room is Jeremy Albright.
`I believe we may have Steven Spears, who is in-house litigation
`counsel for Baker Hughes, on the line, but I don’t know that for certain.
`JUDGE WEATHERLY: Okay. Anyone who hasn’t been mentioned,
`who want to weigh in and identify themselves before we begin? Not hearing
`any.
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`Petitioner, how much time would you like to reserve for rebuttal?
`MR. WILSON: Ten minutes.
`JUDGE WEATHERLY: Ten minutes, Okay. And you may begin
`anytime you're ready.
`MR. WILSON: Okay, I'm ready, Your Honor.
`JUDGE WEATHERLY: Great, the floor is yours.
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`Patent RE 46,137 E
`MR. WILSON: Thank you, Your Honor. I will begin with reference
`to my demonstratives. And first of all, there are two IPRs at issue today, as
`Your Honor mentioned. I will refer to them as the 708 and 768 IPRs.
`And so, turning to Slide 2 of my demonstratives, first of all, what we
`requested with the 708 Petition was three grounds. First of all, Anticipation
`based on Giroux, and you can see the list of claims there at the top of that
`slide.
`
`There were (audio skip) to be Anticipated by Giroux. Giroux is a U.S.
`Patent; there's no dispute that it's prior art.
`Then there were two Obviousness grounds. Obviousness over Giroux
`in view of the knowledge of a POSITA, and admitted prior art. And then
`Obviousness over Ground 2 plus Patel 853, which is another U.S. Patent.
`Both of those grounds attacked all 44 Claims in the 137 Patent.
`JUDGE WEATHERLY: Okay, before you continue, I'll just let you
`know -- I'll sort of let the cat out of the bag a little bit -- I am more interested
`in the 768 Petition.
`That doesn’t mean that I'm not interested or that we were not going to
`end up ruling on the 708; we certainly will. But there's a lot of overlap
`between the two and I notice that your slide deck is arranged with discussing
`the 768 Petition first.
`So, it appears to me that you’re probably going to focus first on that,
`and I just wanted to let you know that’s a good thing.
`I think the Panel is relatively familiar with things like, what are the
`challenges, what are the prior art references primarily that are being brought
`to bear. So, we don’t have use a lot of time for that.
`I'm giving you permissions, essentially, to sort of skip into the meat of
`the argument. I think that will be the way to use time most efficiently.
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`Patent RE 46,137 E
`MR. WILSON: That’s fair enough, Your Honor. I appreciate that.
`JUDGE WEATHERLY: Great.
`MR. WILSON: So, I will jump directly ahead then to Slide 6, which
`is, as Your Honor mentioned, I had planned to discuss the 768 first because I
`believe it is the shortest path for the Board to get to invalidity of the
`challenged claims.
`And looking at Slide 6, you can see that Patel 427 was asserted to be -
`- while, we asserted Anticipation based on Patel 427, the claims that are at
`issue there, 1 and 34, Baker Hughes Patent Owner raises sort of an argument
`but it's unwilling to take the position that those claims are not Anticipated,
`which I'll address very quickly.
`And then, with respect to Obviousness, there's really only one issue.
`All of the Dependent Claims here, other than 1 and 34, recite a single
`limitation that Baker Hughes relies on for patentability, that’s Urging.
`They raise three primary arguments related to Urging, no prior art
`discloses Urging, there's no motivation to add Urging to Patel 427, which is
`the base reference, and there's no motivation to use Giroux in a toe-sleeve
`application.
`As we’re going to see, their own expert, Dr. Fleckenstein, refutes all
`three of those.
`So, let's start with Slide 7, in Anticipation, based on Patel 427. And I
`should preface this -- since is skipped over the fact that Patent Owner, in
`response to our two Petitions, disclaimed the vast majority of claims in the
`137 Patent.
`They disclaimed numerous Dependent Claims of Claims 1 and 34,
`which is in fact, effectively, a concession that those claims are also invalid,
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`Patent RE 46,137 E
`but nevertheless, I'll run through the Anticipation argument here based on
`Patel 427, which I think is very straight forward.
`As the Board is probably very familiar, Figure 8 here, shown on Slide
`7, is from Patel 427. It shows the sleeve actually in both positions.
`In the top it's in the closed position; in the bottom half of the figure it's
`showing the sleeve in the open position, but a position where the port in the
`sleeve is aligned with the Port 140 in the tool.
`And how this tool works is very straight forward. You can see the
`rupture disk on the right, 15, is exposed to tubing pressure and once that
`pressure escalates high enough, that rupture disc ruptures and fluid flows
`through the channel, around through that little pathway on the tool, and
`contacts the pink piston there and shifts it to the right, to the open position.
`It's very straight forward. If we walk through each of the limitations
`of Claim 1, you'll see they're all here.
`Claim 1 requires a valve for subterranean use, which this clearly is. It
`requires a sleeve having a flow path there through, usually (phonetic)
`mounted into passage of said alving (phonetic) between a first position
`where said port is closed, and at second position where said port is, at least
`in part, open.
`And it's obvious the green is the sleeve. It has a closed position that’s
`at the top and an open position that’s at the bottom.
`Now, this is the only part of the claim that Baker Hughes raises any
`sort of argument of that. But right in -- and the part that I'm talking is the “at
`least in part open” clause.
`Right in the abstract of Patel 427 it states the sliding sleeve has a
`pressure control valve having open and closed positions. We can stop right
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`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`there. The bottom position is an open position; there shouldn’t be any
`argument about that.
`The abstract says the open position of the pressure control valve
`actuates the actuator mandrel to align the flow control device, and the
`injection pressure communication port to inject liquid from the tubing bore
`to the formation, and generate factors in the formation.
`It's open. It's “at least in part open”, for sure.
`The rest of Claim 1 is a piston associated with said sleeve, for moving
`said sleeve. That’s the pink.
`It said, “piston selectively isolated from passage pressure until a
`predetermined pressure is reached,” and that’s the rupture disc.
`Claim 34 is a method version of Claim 1. All of the limitations are
`there as well. And I'll very quickly cover the method aspects of Claim 34;
`they are different from Claim 1.
`It requires a method of temporarily isolated the inside of a valve from
`an open hole well, when this tool is running the hole before it is submitted
`it's an open hole well. And Port 140, you can see at the top, is closed.
`So, it's isolated. It has isolated the inside of the valve from the well,
`running a valve connected to casing, into an open hole well; that’s what
`happens. This valve is connected to casing, it's run down the well.
`Now, Claim 34 requires an initial closed position. That’s at the top;
`that’s the initial position.
`Claim 34 also requires exposing the sleeve to the predetermined
`passage pressure -- that happens when the rupture disc ruptures -- and
`moving the sleeve from the initial closed position to the open position, and
`that happens when you move to the bottom.
`So, Claims 1 and 34 Anticipated.
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`Patent Owner asserts that Mr. Chambers testified that the sleeve here
`may not be at least in part open as required by Claim 1 because it's covered
`by a screen and a check valve.
`First of all, he did not testify to that. In fact, he said, “at least in part
`open means open sufficient to allow communication across the ports.”
`there's no dispute that that’s what Patel 427 discloses. Baker Hughes, Patent
`Owner, does not take the position that that’s an unreasonable construction of
`the phrase.
`Claims 1 and 34 are Anticipated.
`Moving to Slide 8, that covers Ground 1. Let's talk about Grounds 2
`and 3, which are Obviousness. And as I mentioned before, Ground 2 and 3
`hinge entirely on the concept of Urging.
`So, let's first talk about whether any prior art disclosed Urging.
`Turning to Slide 9, there's no dispute in this case that Giroux -- and this is
`Figure 3 of Giroux shown here on Slide 9 -- there's no dispute that Giroux
`shows a bigger cross-sectional area at the bottom of the Piston 110 than at
`the top.
`There's no dispute that that bigger cross-sectional area at the bottom
`results in this piston being Urged. the only dispute is whether a person of
`ordinary skill in the art would recognize that when it looks at Giroux Figure
`3.
`
`Mr. chambers testified that a person of ordinary skill in the art --
`JUDGE WEATHERLY: I think that’s an interesting distinction that
`you're trying to draw. I'm frankly a little surprised for you to say that there
`is no dispute that those -- that it's effective cross area -- effective surface
`area, correct?
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`We don’t really know exactly what the surface area of that top surface
`is as compared to the bottom surface area, right?
`MR. WILSON: I'm not sure what you mean by effective surface area.
`If you mean sort of that’s normal to the sort of vertical pressure, then yes,
`that’s what --
`JUDGE WEATHERLY: Yes, that is what I mean. The slanted aspect
`of this top surface complicates a calculation about how big that surface area
`would be compared to the surface area at the bottom of your illustration.
`But my understanding from the record was that the effective surface
`area is the surface area in the directions indicated by the arrows, which are
`the ways that pressure exerts force over the surface area. Am I correct?
`MR. WILSON: You are absolutely correct, Your Honor, but I will
`point out -- so, I'm just going to jump ahead to Slide 10 real quick.
`JUDGE WEATHERLY: Sure.
`MR. WILSON: Because this is Patent Owner’s own slide where they
`actually show the difference in diameter.
`That difference in diameter that’s reflected there in Patent Owner’s
`figure reproduced on Slide 10, is what matters. It is what determines the
`effective cross-sectional area exposed to tubing pressure on the bottom
`versus on the top of that piston.
`If the diameter is bigger at the bottom, it doesn’t matter what the
`shape of the piston is. If the diameter is bigger on the bottom, it is Urged,
`period.
`You could have an S shape on the top surface on that piston. You
`could have any shape you want because all that matters is the diameter.
`The bigger the diameter, the more surface area is exposed at the
`bottom. I think that’s straight forward.
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`Patent RE 46,137 E
`JUDGE WEATHERLY: Well, I understand that. I think that it might
`be a little bit of a simplification and everyone on the line is famous for
`making simple things complicated, including myself. But that’s only true
`because the inside diameter of both of those surfaces is the same, right?
`MR. WILSON: The inside diameter of both of what surfaces?
`JUDGE WEATHERLY: The bottom surface and the top surface. In
`other words, this is a ring-shaped surface area at the bottom.
`MR. WILSON: If you mean it's a cylinder, then yes.
`JUDGE WEATHERLY: What I mean is, if you were to look at the
`surface, it would be shaped like a ring.
`MR. WILSON: Oh, for sure, yes, yes. If you looked at it from the
`bottom, looking up, yes, that’s correct.
`JUDGE WEATHERLY: And both of those ring-shaped surface areas
`have the same inside diameter. They have a different outside diameter, and
`that’s --
`MR. WILSON: That is correct.
`JUDGE WEATHERLY: Okay, so, I just want to make sure that I'm
`following your argument.
`MR. WILSON: Yes, you're correct, Your Honor. Because they have
`the same inside diameter, then the outside diameter makes the difference.
`JUDGE WEATHERLY: Okay.
`MR. WILSON: The outside diameter being larger at bottom than it is
`at the top makes the difference. And what makes that jump out to a person
`of ordinary skill in the art when they look at this figure, is that the contact
`surface at the bottom is on the outside diameter of the O-rings, and it's on the
`inside diameter of the O-rings at the top.
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`So, a person of ordinary skill in the art looking at this can immediately
`and clearly see that this inside contact point at the top is a narrower
`dimension, a smaller diameter than the contact point at the bottom.
`And this figure, by the way, is demonstrating that Patent Owner also
`agrees this tool is Urged. There's no dispute that it has a larger cross-
`sectional area at the bottom. And there's no dispute that that larger cross-
`sectional area results in Urging.
`JUDGE WEATHERLY: There's also no dispute that Giroux doesn’t
`discuss in text any of these concepts, correct?
`MR. WILSON: It doesn’t discuss the Urging aspect; the Urge
`towards its initial position aspect. That much is correct.
`JUDGE WEATHERLY: I don’t --
`MR. WILSON: It does discuss the -- sorry Your Honor.
`JUDGE WEATHERLY: I don’t think there's any place where Giroux
`actually talks about the dimensions that we've been discussing here either, is
`there?
`MR. WILSON: There's not, that’s correct.
`JUDGE WEATHERLY: All right. Go ahead.
`MR. WILSON: So, I think what we need to do in order to think about
`how a person of ordinary skill in the art would understand this figure, is to
`talk about a person of ordinary skill in the art, and that begins at Slide 11.
`A person of ordinary skill in the art, as Mr. Chambers testified, “is a
`high-pressure plumber, this is what they live with every day; cross-sectional
`area and pressure.”
`You can see from Dr. Fleckenstein’s Declaration, that’s Patent
`Owner’s expert, he agrees, “bringing their experience with pistons,
`pressures, and cross-sectional areas to bear.”
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`He talks about them using the pressure area force to create forces.
`And he even quotes Mr. Chambers deposition testimony there about persons
`of skill in the art of being high-pressure plumbers.
`Both experts agree a person of ordinary skill in the art lives with the
`cross-sectional area and pressure and using that to create forces day in and
`day out.
`Moving to Slide 12, Dr. Fleckenstein was asked a person of ordinary
`skill in the art in 2011, early 2011, understood that any difference in opposed
`surface area exposed to the same pressure would create a bias or net force,
`correct?
`“It would create a force,” he agrees.
`There's a difference in area shown there. That difference in area
`creates a force. No doubt about it.
`JUDGE FLAX: Counsel, this is Judge Flax.
`MR. WILSON: Yes, Your Honor.
`JUDGE FLAX: It's your argument that this Urging is an inherent
`characteristic of the prior art? Or, that the person of ordinary skill in the art
`reading this piece of prior art would understand that one could use an Urging
`in the device that’s shown?
`MR. WILSON: Our argument is both that there is an express
`disclosure; when a person of ordinary skill in the art looks at that figure, they
`see the difference in diameter, they immediately understand what that
`means.
`It means that the piston is Urged upward in Giroux Figure 3. In fact,
`it's in 9 figures in Giroux: 2 through 5, and 8 through 12. They understand
`when they look at that figure, that this is an Urged piston.
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`This is something a person of ordinary skill in the art is very familiar
`with. They deal with it day in and day out, as we’ve just seen the experts
`agree on. They understand that’s an Urged piston when they look at it.
`Turning to Slide 13, we see here Exhibit 1027. Now, Exhibit 1027 is
`a Baker Hughes Annular Operator Reversing Valve of which a person of
`ordinary skill in the art would have been familiar.
`These were published in 1998 in an off-shore technology cop
`(phonetic). This tool is the 137 Patent, except that as you can see in the
`middle, the rupture disc 18 is annular operated, instead of tubing pressure
`operated.
`It has a piston. It has a shear pin. It has a rupture disc. It is Urged.
`There's no dispute that this tool is Urged.
`You can see the difference in the O-ring diameters. There's an eighth
`of an inch difference between O-ring 3 an O-ring, creating a bias force --
`JUDGE WEATHERLY: I think I would prefer -- you know, it's
`interesting. you’ve said “there's no dispute” a few times. And I've read the
`papers, and I disagree with you that there's no dispute (laughter).
`By no dispute do you mean that the evidence that you’ve proffered is
`persuasive? Or do you mean that there's no evidence opposing your
`position?
`MR. WILSON: I mean there's no evidence opposing our position. If
`you look carefully at what Dr. Fleckenstein has admitted. He has admitted
`the points that I have said are undisputed.
`He's admitted that there's a difference that’s perceptible to the naked
`eye in that piston in Giroux. He's admitted that that difference results in an
`Urging force.
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`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`The only thing he is refuting; the only basis on which he contests that
`disclosure of Urging is that a person of ordinary skill in the art wouldn’t
`recognize it for a few reasons.
`JUDGE WEATHERLY: Okay.
`MR. WILSON: One, he says the piston is drawn too short, in Figure
`3. And number two, he says, because it's not discussed in the text, he
`discounts it.
`The point about the length of the piston is irrelevant to the diameter of
`the piston. The length has nothing to do with Urging. It doesn’t affect the
`Urging feature at all.
`As I said, and as I'll get to in a moment, when I showed in Figure 4
`where the links has been changed, he agrees it's still Urged.
`Point number two, we know that a drawing can be a disclosure. He is
`legally incorrect to say I'm discounting the disclosure on the drawing
`because it's not discussed in the text. So, continuing with the points here --
`JUDGE WEATHERLY: What's your position about -- I mean, there's
`also a dispute about whether these references, these A, B, C & D references,
`as I know them -- I think it's Exhibits 1027 through 1029, if I'm not
`mistaken.
`Patent Owner asserts that these are not actually prior art and they're
`unavailable for analysis in this case. What's your position about that?
`MR. WILSON: Sure, Your Honor. If you'll look at Slide 14 -- which
`is the very next slide -- all three of those references are prior art. They were
`handed out in an OTC conference.
`Now, what Patent Owner asserts is that Mr. Richards took back
`everything he said in Exhibit 1037, that is his Declaration on these Exhibits;
`at his deposition you will see that that is totally false.
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`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`JUDGE WEATHERLY: Okay. I know that’s an argument Patent
`Owner asserts in it's Sur-Reply with lots and lots of citations to Mr.
`Richards’ cross examination. Is there anything in particular in that cross
`examination that you would make sure that you draw -- is that’s what's here
`on this slide?
`MR. WILSON: That is exactly what's here on this slide.
`JUDGE WEATHERLY: All right, thank you.
`MR. WILSON: But let me preface it by saying what Patent Owner
`did was very carefully script a series of entrances of that deposition without
`ever asking the ultimate question of, “when I'm talking about these
`documents that you used in Baker Hughes, would you treat this CD the same
`way as those documents?”
`He was never asked that question. So, he was never asked to close the
`loop.
`So, they build a series of entrances without ever asking the question.
`So, at the end of the deposition I asked him those questions that Patent
`Owner refused to ask.
`JUDGE WEATHERLY: Okay.
`MR. WILSON: And you can see here on the top left of Slide 14, “Mr.
`Richards, you described earlier walking away from an OTC conference with
`four bags of materials handed out by vendors, correct?”
`“Yes.”
`“Did you regard any of the materials that you received at OTC as
`confidential?”
`“No.”
`He gathered material from tons of vendors at OTC. They handed out
`as advertising material as he testifies right after this in his deposition.
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`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`But the critical passage is on the right, “With regard to CD that you
`got from Baker Hughes at the 1998 OTC conference, did you have to sign an
`NDA with Baker Hughes to get that CD?”
`“No.”
`“Do you recall anyone at the Baker Hughes booth telling you that the
`CD was confidential or that you needed to treat it as confidential?”
`“No.”
`“Do you view that CD that you got from Baker Hughes at the 1998
`OTC conference as confidential information?”
`“No.”
`And let me pause right there; they assert that he treated that CD as
`confidential, that he viewed it as confidential. Here he is telling you point
`blank, I did not. I never viewed it as confidential.
`He was a person of ordinary skill in the art in the art. He walked up to
`a booth at OTC as he describes in his deposition. There's a stack of CDs on
`the table, he asked for one, they hand him one. No questions asked.
`Baker Hughes has not provided a single witness who says those are
`confidential. They have not provided a single document agreement,
`anything that would make them confidential. They're not.
`This is the prototypical example of a printed publication. They say,
`“Well, the person at the booth would have known that he worked for OSCA,
`and OSCA was a Baker Hughes customer.
`Look at the last question, “Did OSCA at all work with Baker Hughes
`in creating or manufacturing the tools that are described on the CD you got
`at the 1998 OTC Conference.”
`“No.”
`JUDGE FLAX: Counsel, this is Judge Flax.
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`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`MR. WILSON: Yes.
`JUDGE FLAX: Can you describe what the attendance is like at a
`conference, like this OTC conference? Or more importantly, is there any
`evidence in the record that does that kind of description?
`MR. WILSON: So, Exhibit 1037, I believe -- and I will pull it up real
`quickly here -- in Exhibit 1037 Mr. Richards actually explains what the
`attendance was at the conference.
`He say, and I will quote in Paragraph 4 of that Declaration, “at that
`time the OTC was a large conference with over 40,000 attendees who were
`typically working professionals in the oilfield industry, including engineers,
`salespeople, marketing operations, and other oil industry workers.
`So, 40,000 people at that time. Vendors came to this conference to
`hand out materials for advertising; that’s what they did. He walked away
`with four bags of materials, none of which were confidential.
`He's a person of ordinary skill in the art, he knew where to get the
`documents, he went and got them under no obligation of confidentiality.
`That is a publication; all three of those documents.
`Now, moving to Slide 15, this is where Dr. Fleckenstein -- you can
`see it’s highlighted there at the bottom -- he’s asked, “Well, if the dash green
`line is actually outside of the dash red line, as you’ve drawn it here, then it is
`correct.” That means, the lower exposed area is bigger than the upper
`exposed area.
`That’s the question he's being asked, and he says, “to the naked eye I
`think I've even labeled it there's a small difference that’s perceptible, you
`know, to the naked eye in looking at that.” He agrees there's a difference,
`it's perceptible to the naked eye.
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`Patent RE 46,137 E
`Of course, it is. That’s because the ceiling surface on the bottom is on
`the outside of the O-ring and on the top it's on the inside of the O-ring; it's
`distinctive, it's clearly indicated.
`Turning to Slide 16, Patent Owner asserts to the fact that the piston as
`drawn would not cover the port in the tool, as you can see there the blue bar
`that they’ve labeled there on Slide 16, means that a person of ordinary skill
`in the art would think that the drawing was unreliable or that the Urging
`could be there by mistake -- which, by the way, is legally irrelevant.
`But the link of the piston does not affect whether it's Urged. You can
`see the diameter difference still here.
`In fact, turning to Slide 17, when I asked Dr. Fleckenstein about this
`in Figure 4, when the piston has been shown to cover the port, I said, “It still
`looks like seals 108 at the bottom of the Piston 110 in Giroux are larger in
`diameter than the seals at the top left of Piston 110, correct?”
`“Yes,” he agrees. It's still shown as a biased or Urged tool.
`Now, as I mentioned previously, turning to Slide 18, there are nine
`figures in Giroux that show this. It's not just one, it's not just Figure 3, it's
`not just Figures 3 and 4.
`JUDGE WEATHERLY: Well, and certainly you concede that Giroux
`is -- I mean, Patent Owner spent a lot of time identifying inconsistencies,
`primarily in sort of the length of the sleeves across the set of Giroux’s
`figures, and certainly you concede that those inconsistencies are present.
`I understand, though, your argument to be that the important part of
`Giroux’s figures, from your perspective, is consistent across every figure
`and we should not rely upon inconsistencies on irrelevant issues to declare
`that a skilled artisan wouldn’t notice the differences in these two projected
`areas that result in Urging. Am I understanding your position correctly?
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`IPR 2019-00708 and IPR 2019-00768
`Patent RE 46,137 E
`MR. WILSON: That is part of our position, Your Honor. The other
`part of it is -- let me add to that -- when you look at Figure 3 --
`JUDGE WEATHERLY: You concede that there are inconsistencies
`in Giroux’s figures, correct?
`MR. WILSON: For sure I concede that the length of the piston
`changes from Figures 3 to 4.
`JUDGE WEATHERLY: Right.
`MR. WILSON: But the other point about that is if you look at Figures
`3 and 4, it’s very clear what's happening. Giroux is trying to compress the
`features down into a length that fits on the drawing.
`So, if you look at Figure 3, as you can see on Slide 16 -- actually,
`that’s not even Figure 3 -- if we go up to Slide 9, actually, is where real
`Figure 3 is -- you can see that he shortened the length of the piston to get it
`off of the port.
`In other words, if he made that piston it's actual length, he would have
`to draw the port down lower, and so it would needlessly extend the length of
`the drawing.
`That’s what he's doing. And then when you go to Figure 4, which you
`can see --
`
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