Free Exhibit List - District Court of Colorado - Colorado

Case 1:03-cv-02579-RPM

Document 181

Filed 04/28/2008

Page 1 of 10

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 03-CV-02579-RPM NATIONAL OILWELL VARCO, L.P. Plaintiff, vs. PASON SYSTEMS USA CORP., Defendant. ______________________________________________________________________________ DEFENDANT'S RESPONSE TO OBJECTIONS TO TRIAL EXHIBITS

Defendant, Pason Systems USA Corp., through its counsel, responds to the objections to the Plaintiff's exhibits as follows: Pason expressly reserves the right to supplement its objections as well as these responses to Plaintiff's objections to meet Varco's intended use of its own exhibits and/or its objections to Pason's use of its exhibits. Exhibit A-1 Objection FRE 105, 402, 403, 802 Response On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it

8273.0203 #360595 v2

Case 1:03-cv-02579-RPM

Document 181

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may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). As to the hearsay objection, this document, produced by Varco, is admitted to be a business record, and in any event may be offered to establish notice. On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual

A-2

FRE 105, 402, 403

A-2

FRE 105, 402, 403

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A-4

FRE 105, 402, 403

A-18 A-19 A-20 A-22 B-2 B-4

FRE 802 FRE 802 FRE 802 FRE 802 FRE 402, 403, 802 FRE 402, 403, 802

issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). Admissible for purposes of impeachment and to refresh a witness' recollection. Admissible for purposes of impeachment and to refresh a witness' recollection. Admissible for purposes of impeachment and to refresh a witness' recollection. Admissible for purposes of impeachment and to refresh a witness' recollection. Withdrawn. Admissible to show course of conduct, pattern and practice, habit, routine, and may be relevant to damages issues. Admissible to show course of conduct, pattern and practice, habit, routine, and may be relevant to damages issues.

B-5

FRE 402, 403, 802

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B-6

FRE 402, 403, 802

B-7

FRE 402, 403, 802

B-8

FRE 402, 403, 802

B-9

FRE 802

B-10

FRE 802

B-11

FRE 802

B-12

FRE 802

B-16

FRCP 26 & 37, FRE 402, 403

B-17

FRCP 26 & 37, FRE 402, 403

B-18

FRCP 26 & 37, FRE 402, 403

Admissible to show course of conduct, pattern and practice, habit, routine, and may be relevant to damages issues. Admissible to show course of conduct, pattern and practice, habit, routine, and may be relevant to damages issues. Admissible to show course of conduct, pattern and practice, habit, routine, and may be relevant to damages issues. Admissible for the limited purpose of introducing relevant pieces of prior art to prove patent invalidity and defend against allegations of infringement. Admissible for the limited purpose of introducing relevant pieces of prior art to prove patent invalidity and defend against allegations of infringement. Admissible for the limited purpose of introducing relevant pieces of prior art to prove patent invalidity and defend against allegations of infringement. Admissible for the limited purpose of introducing relevant pieces of prior art to prove patent invalidity and defend against allegations of infringement. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his

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B-19

FRCP 26 & 37, FRE 402, 403

B-21

FRCP 26 & 37, FRE 402, 403

B-22

FRCP 26 & 37, FRE 402, 403

B-23

FRCP 26 & 37, FRE 402, 403

B-25

FRCP 26 & 37, FRE 402, 403

B-26 C-1

FRE 802 FRE 802

subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Admissible for purposes of impeachment and to refresh a witness' recollection. Admissible for purposes of impeachment and to refresh a witness' recollection.

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C-2 C-3 C-4 C-5

FRE 802 FRE 802 FRE 402, 403 FRE 105, 402, 403

Admissible for purposes of impeachment and to refresh a witness' recollection. Admissible for purposes of impeachment and to refresh a witness' recollection. Withdrawn. On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert

C-6

FRE 105, 402, 403

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C-7

FRE 105, 402, 403

C-8

FRE 105, 402, 403

C-9

FRE 105, 402, 403

v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and

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Case 1:03-cv-02579-RPM

Document 181

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C-10

FRE 105, 402, 403

C-12 C-13

FRE 402, 403 FRCP 26 & 37, FRE 402, 403

infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). On issues relating to invalidity based upon prior art, prosecution estoppel, claim construction and infringement, particularly as it relates to the inventor's characterization of the invention or characterization or distinction of prior inventions, this document is relevant and admissible. To the extent it is also relevant to Pason's inequitable conduct defense, which the court has stated will be heard separately, Pason has reserved the right to brief this issue further. The underlying questions of materiality and intent are both questions of fact. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). A District Court may submit these underlying factual issues of materiality and intent to the jury, or it may even "instruct [] the jury to find and weigh the facts of materiality and intent and decide the ultimate question of inequitable conduct." Hebert v. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). The Bennett patent was disclosed by Varco (WS 738-741). Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his

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Case 1:03-cv-02579-RPM

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C-14

FRCP 26 & 37, FRE 402, 403

C-15

FRCP 26 & 37, FRE 402, 403

subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. Contrary to the allegations contained in Varco's Objections, this piece of prior art was considered by Ford Brett in drafting his initial expert report, which was incorporated by reference in his subsequent reports, and was produced to Varco in 2004 and/or was made available to Varco for copying on June 1, 2004 at Ford Brett's deposition. C-15 was an oversight, and should have been the complete Bowden Patent, which is hereby substituted.

DATED this 28th day of April, 2008. Respectfully submitted,

/s/ Timothy G. Atkinson Timothy G. Atkinson Mark E. Haynes Kelley A. Bergelt Mark E. Lacis Ireland, Stapleton, Pryor & Pascoe, P.C. 1675 Broadway, Suite 2600 Denver, CO 80202 Telephone: (303) 623-2700 Fax: (303) 623-2062 E-mail: [email protected] Attorneys for Defendant Pason Systems USA Corp.

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CERTIFICATE OF SERVICE I hereby certify that on this 28th day of April, 2008, I caused the foregoing to be electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following: [email protected] [email protected] [email protected] [email protected] [email protected] [email protected] [email protected] [email protected]

/s/ Timothy G. Atkinson Timothy G. Atkinson Mark E. Haynes Kelley A. Bergelt Mark E. Lacis Ireland, Stapleton, Pryor & Pascoe, P.C. 1675 Broadway, Suite 2600 Denver, CO 80202 Telephone: (303) 623-2700 Fax: (303) 623-2062 E-mail: [email protected] Attorneys for Defendant Pason Systems USA Corp.

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