Free Objections - District Court of Colorado - Colorado

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 1 of 13

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 03-cv-02579-RPM NATIONAL OILWELL VARCO, L.P., Plaintiff, v. PASON SYSTEMS USA CORP., Defendant.

PLAINTIFF'S OBJECTIONS TO DEFENDANT'S EXHIBITS
Plaintiff, National Oilwell Varco, L.P. ("Varco"), objects to the following proposed trial exhibits listed by Defendant Pason Systems USA Corp. ("Pason"), in Exhibit 2 to the parties' Amended Final Pretrial Order (Docket No. 174), or by supplement thereto, as follows: I. Varco's objections to Pason's proposed trial exhibits: Exhibit A-1 Description Letter to Bobby Bowden from Marcus L. Bates regarding Preliminary Patent Search Report for `Automatic Driller' dated 09/02/1992 US Patent No. 5,474,142 Wrapper/File History Reexamination Wrapper/File History commenced 01/23/04 List of Patents on Wildcat Specialty letterhead Expert Report of David A. Hall dated 07/20/2006 Supplemental Report of David A. Hall dated Objection FRE 105, 402, 403, 802 Granted Denied

A-2 A-3

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

A-4 A-18 A-19

FRE 105, 402, 403 FRE 802 FRE 802

1

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 2 of 13

A-20 A-22

B-9 B-10

B-11

B-12

B-16

B-17 B-18 B-19

11/08/2006 Expert Report of David A. Hall dated 07/20/2006 Supplemental Report of David A. Hall dated 11/08/2006 Expert Report of J. Brett Ford dated 05/21/2004 Supplemental Expert Report of J. Brett Ford dated 07/19/06 Supplemental Expert Report of J. Brett Ford dated 09/04/06 Supplemental Expert Report of J. Brett Ford dated 10/30/06 High Speed Drilling Research Advances by Tommy Warren and Barney Canson SPE 1378 ­ SemiAutomatic Drilling Rig SPE 1842 ­ Automation in Drilling SPE 1843 ­ Drilling ­ Three Decades Back, One Ahead SPE 3231 ­ An Analysis of Automatic Closed Loop Control of Rotary Drive Engines SPE 17232 ­ The Application of Robotics to the Drilling Process SPE 19919 ­ Practical Application of Real Time of Expert System for Automatic Well Control SPE 21906 ­ Slimhole Continuous Coring and Drilling Tertiary Sediments

FRE 802 FRE 802

FRE 802 FRE 802

FRE 802

FRE 802

FRCP 26 & 37, FRE 402, 403

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

B-21

B-22

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

B-23

B-25

FRCP 26 & 37, FRE 402, 403

2

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 3 of 13

B-26 C-1

C-2

C-3 C-4

C-5

C-6

C-7 C-8

C-9

C10 C-12 C-13 C-14

Expert Report of Gregg Perkin dated 07/25/2006 Supplemental Expert Report of Gregg Perkin dated 09/05/2006 Supplemental Expert Report of Gregg Perkin dated 03/21/2008 Expert Report of Alton Payne dated 09/05/2006 Decision of European Patent Office, English translation, EP 401512, dated 07/25/2001 Opposition to EP 694114 by Bentec GmbH Drilling and Oil Field Systems and Kiani and Springorum, Attorneys dated 07/01/2003 Letter to European Patent Office from Cruikshank & Fairweather regarding Opposition to European Patent No. 694114 for Wildcat Services Inc. dated 12/18/2003 EP 0694114 B1 Wrapper/File History Interlocutory Decision in Opposition proceedings for Wildcat Services dated 9/12/2005 Letter from Marks & Clerk regarding EP 0694114 dated 10/28/2004 Letter from Bentec dated 11/10/2004 U.S. Patent No. 3,407,886 ­ Bennett U.S. Patent No. 3,461,978 ­ Whittle U.S. Patent No. 4,187,546 ­ Heffernan, et al.

FRE 802 FRE 802

FRE 802

FRE 802 FRE 402, 403

FRE 105, 402, 403

FRE 105, 402, 403

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

FRE 105, 402, 403

FRE 105, 402, 403 FRE 402, 403 FRCP 26 & 37, FRE 402, 403 FRCP 26 & 37, FRE 402, 403

3

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 4 of 13

C-15

U.S. Patent No. 5,474,142 ­ Bowden (PAS 26-34)

FRCP 26 & 37, FRE 402, 403

For ease of reference, Varco has divided Pason's proposed exhibits into groups based upon the specific basis of Varco's objections as follows: A. Varco Objects to the following exhibits under Rules 26 & 37, F.R.C.P., as untimely

Varco objects to the following Pason proposed trial exhibits, to the extent the documents were produced for the first time in this litigation on or about March 10, 2008, over seventeen (17) months after the deadline for discovery (October 1, 2006) established by this Court's scheduling order (Doc. No. 85). Further, in the Court's Amended Courtroom Minutes (Docket No. 173), the Court ordered that "Exhibits that have not been previously disclosed are not permitted." Pason's proposed exhibits include alleged new prior art that was not previously disclosed nor cited or relied upon by Pason or its expert witnesses during the discovery period. Pason should be precluded from introducing or relying upon such documents at the trial of this case by virtue of its failure to produce the below listed documents during the period established by this Court's scheduling order and/or by timely supplementation of its discovery responses in this case. (Rules 26 & 37, Fed. R. Civ. P.). Exhibit B-17 B-18 B-19 Description SPE 1378 ­ SemiAutomatic Drilling Rig SPE 1842 ­ Automation in Drilling SPE 1843 ­ Drilling ­ Three Decades Back, One Ahead SPE 3231 ­ An Analysis of Automatic Closed Loop Control of Rotary Drive Objection Rules 26 & 37, untimely Rules 26 & 37, untimely Rules 26 & 37, untimely Rules 26 & 37, untimely Granted Denied

B-21

4

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 5 of 13

B-22

B-23

B-25

C-13 C-14

Engines SPE 17232 ­ The Application of Robotics to the Drilling Process SPE 19919 ­ Practical Application of Real Time of Expert System for Automatic Well Control SPE 21906 ­ Slimhole Continuous Coring and Drilling Tertiary Sediments U.S. Patent No. 3,461,978 ­ Whittle U.S. Patent No. 4,187,546 ­ Heffernan et al.

Rules 26 & 37, untimely Rules 26 & 37, untimely

Rules 26 & 37, untimely Rules 26 & 37, untimely Rules 26 & 37, untimely

Varco further objects to Pason's proposed exhibit "B-16", to the extent the document was produced for the first time in this litigation on November 16, 2006, during the deposition of Pason's expert witness, over 6 weeks after the discovery deadline established by the Court's Supplemental Scheduling Order, Docket No. 85. Pason should be precluded from introducing or relying upon such documents at the trial of this case by virtue of its failure to produce the same documents during the discovery period established by this Court's scheduling order and/or by timely supplementation of its discovery responses in this case. (Rules 26 & 37, Fed. R. Civ. P.).

Exhibit B-16

Description High Speed Drilling Research Advances by Tommy Warren and Barney Canson

Objection Rule 37, untimely

Granted

Denied

B.

Varco Objects to the following exhibits under Rule 105, F.R.E.

Varco objects to Pason's proposed Exhibits which include the `142 Patent's inventor's

5

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 6 of 13

correspondence with a patent agent and a patent attorney prior to the filing of the `142 Patent, the prosecution file history of the `142 Patent and its reexamination file history, and the European file history of patents related to the `142 Patent to their limited admissibility pursuant to FRE 105 to the extent Pason intends to introduce evidence of inequitable conduct before the jury. In the parties Amended Joint Pretrial Order, Pason has stated that it will call "Messrs. Prejean and Bowden ... in connection with the patent process for the '142 Patent, and its reexamination." See Docket No. 174, Page 11. The parties have agreed and this Court has ordered that the equitable issue of Pason's inequitable conduct affirmative defense will not be presented to the jury. See Court's Amended Courtroom Minutes (Docket No. 173) ("Court states it will determine issues regarding preliminary injunction and inequitable conduct after a separate hearing, if necessary."), see also, Amended Pretrial Order (Docket No. 174). Additionally, Exhibit A1 is a prior art search report prepared by a patent agent for Mr. Bowden before the filing of the `142 Patent. Any inference that Messrs. Prejean and Bowden had a duty of candor to the United States Patent and Trademark Office or that Messrs. Prejean or Bowden were aware of prior art but failed to disclose it to the PTO would unduly prejudice Varco. Therefore, Varco objects to the limited admissibility of the following exhibits:

Exhibit A-1

Description Letter to Bobby Bowden from Marcus L. Bates regarding Preliminary Patent Search Report for `Automatic Driller' dated 09/02/1992

Objection FRE 105

Granted

Denied

A-2

US Patent No. 5,474,142 Wrapper/File History

FRE 105

6

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 7 of 13

A-3

A-4 C-5

C-6

C-7 C-8

C-9

C10

Reexamination Wrapper/File History commenced 01/23/04 List of Patents on Wildcat Specialty letterhead Opposition to EP 694114 by Bentec GmbH Drilling and Oil Field Systems and Kiani and Springorum, Attorneys dated 07/01/2003 Letter to European Patent Office from Cruikshank & Fairweather regarding Opposition to European Patent No. 694114 for Wildcat Services Inc. dated 12/18/2003 EP 0694114 B1 Wrapper/File History Interlocutory Decision in Opposition proceedings for Wildcat Services dated 9/12/2005 Letter from Marks & Clerk regarding EP 0694114 dated 10/28/2004 Letter from Bentec dated 11/10/2004

FRE 105

FRE 105 FRE 105

FRE 105

FRE 105 FRE 105

FRE 105

FRE 105

C.

Varco Objects to the following exhibits under Rules 401, 402, & 403, F.R.E.

Varco objects to the following exhibits as irrelevant and improperly calculated to prejudice, confuse and/or mislead the jury in its consideration of the evidence or prejudice Varco in the jury's consideration of the evidence. For ease of reference, Varco has broken down the related categories of evidence below: 1. Evidence of Inequitable Conduct: Exhibits A1-A4 & C5-C10

Varco objects to Pason's proposed Exhibits A-1 through A-4 and Exhibits C-5 through

7

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 8 of 13

C-10, which include the `142 Patent's inventor's correspondence with a patent agent and a patent attorney prior to the filing of the `142 Patent, the prosecution file history of the `142 Patent and its reexamination file history, and the European file history of patents related to the `142 Patent pursuant to FRE 401, 402 and/or 403 to the extent Pason intends to utilize these exhibits to introduce evidence of inequitable conduct before the jury. In the parties Amended Joint Pretrial Order, Pason has stated that it will call "Messrs. Prejean and Bowden ... in connection with the patent process for the '142 Patent, and its reexamination." See Docket No. 174, Page 11. The parties have agreed and this Court has ordered that the equitable issue of Pason's inequitable conduct affirmative defense will not be presented to the jury. See Court's Amended Courtroom Minutes (Docket No. 173) ("Court states it will determine issues regarding preliminary injunction and inequitable conduct after a separate hearing, if necessary."). Additionally, Exhibit A1 is a prior art search report prepared by a patent agent for Mr. Bowden before the filing of the `142 Patent. Exhibit A4 is correspondence between Mr. Bowden and his attorney describing certain prior art references as well as the invention of the `142 Patent. Any inference elicited by Pason related to these Exhibits that Messrs. Prejean and Bowden had a duty of candor to the United States Patent and Trademark Office or that Messrs. Prejean or Bowden were aware of prior art but failed to disclose it to the PTO is irrelevant, likely to cause confusion, and would unduly prejudice Varco. Therefore, Varco objects to the admissibility of the following exhibits: Exhibit A-1 Description Letter to Bobby Bowden from Marcus L. Bates regarding Preliminary Patent Search Report for `Automatic Driller' dated 09/02/1992 US Patent No. 5,474,142 Wrapper/File History Objection FRE 402, 403 Granted Denied

A-2

FRE 402, 403

8

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 9 of 13

A-3

A-4 C-5

C-6

C-7 C-8

C-9

C10

Reexamination Wrapper/File History commenced 1/23/2004 List of Patents on Wildcat Specialty letterhead Opposition to EP 694114 by Bentec GmbH Drilling and Oil Field Systems and Kiani and Springorum, Attorneys dated 07/01/2003 Letter to European Patent Office from Cruikshank & Fairweather regarding Opposition to European Patent No. 694114 for Wildcat Services Inc. dated 12/18/2003 EP 0694114 B1 Wrapper/File History Interlocutory Decision in Opposition proceedings for Wildcat Services dated 9/12/2005 Letter from Marks & Clerk regarding EP 0694114 dated 10/28/2004 Letter from Bentec dated 11/10/2004

FRE 402, 403

FRE 402, 403 FRE 402, 403

FRE 402, 403

FRE 402, 403 FRE 402, 403

FRE 402, 403

FRE 402, 403

2.

Prior Art Not Relied Upon by Pason or Pason's Expert: Exhibits B16 ­ B19; B-21 ­ B-23; B-15; C-12 ­ C-14

Pason's proposed exhibits include alleged new prior art that was not previously disclosed, otherwise known by Varco nor cited or relied upon by Pason's expert witness during the discovery period. Pason's expert witness, Mr. J. Ford Brett, has provided 4 separate opinions which relying upon 11 separate prior art references. Pason should be precluded from introducing or relying new prior art references neither disclosed nor relied upon by Pason's expert witness in this case. Pason should be precluded from now relying upon such documents at the trial of this

9

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 10 of 13

case by virtue of its failure to produce the same documents for Varco's discovery during the period allowed for that purpose by this Court's scheduling order and/or by timely supplementation of its discovery responses in this case. Pason's use of new prior art that is not relied upon by its expert witness is irrelevant to the claims in this case, would likely to cause confusion, and would unduly prejudice Varco. FRE 402, 403. Therefore, Varco objects to the admissibility of the following exhibits: Exhibit B-16 Description High Speed Drilling Research Advances by Tommy Warren and Barney Canson SPE 1378 ­ SemiAutomatic Drilling Rig SPE 1842 ­ Automation in Drilling SPE 1843 ­ Drilling ­ Three Decades Back, One Ahead SPE 3231 ­ An Analysis of Automatic Closed Loop Control of Rotary Drive Engines SPE 17232 ­ The Application of Robotics to the Drilling Process SPE 19919 ­ Practical Application of Real Time of Expert System for Automatic Well Control SPE 21906 ­ Slimhole Continuous Coring and Drilling Tertiary Sediments 3. Objection FRE 402, 403 Granted Denied

B-17 B-18 B-19

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

B-21

FRE 402, 403

B-22

FRE 402, 403

B-23

FRE 402, 403

B-25

FRE 402, 403

EPO Appeal Decision in Unrelated Case: Exhibit C-4

Varco objects to Pason's proposed Exhibit C-4 identified as "Decision of European Patent Office, English translation, EP 401512, dated 07/25/2001." Exhibit C-4 is a European 10

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 11 of 13

Patent Office (EPO) decision in the appeal of EPO Opposition of a European Patent involving HMF Krampe & Co. GMBH, et al. and Unilever PLC/Unilever NL. This appellate decision is not related to any party in this case, no related patent in this case nor automatic drilling in any way whatsoever. Varco inadvertently produced this appellate decision during the production of the EPO Opposition proceeding involving European patents related to the `142 Patent. Thus, Exhibit C-4 is irrelevant to the claims in this case, would likely to cause confusion, and would unduly prejudice Varco. FRE 402, 403. Exhibit C-4 Description Decision of European Patent Office, English Translation, EP 401512, dated 07/25/2001 Objection FRE 402, 403 Granted Denied

D.

Varco Objects to the following exhibits under Rule 802, F.R.E.

Varco objects to the following Pason's proposed exhibits as inadmissible hearsay. (Fed. R. Evid. 802). These exhibits are expert reports and/or expert report drafts and are inadmissible as evidence pursuant to Rule 802, FRE. Exhibit A-20 A-22 Description Expert Report of David A. Hall dated 07/20/2006 Supplemental Report of David A. Hall dated 11/08/2006 Expert Report of J. Brett Ford dated 05/21/2004 Supplemental Expert Report of J. Brett Ford dated 07/19/06 Supplemental Expert Report of J. Brett Ford dated 09/04/06 Supplemental Expert Report Objection FRE 802 FRE 802 Granted Denied

B-9 B-10

FRE 802 FRE 802

B-11

FRE 802

B-12

FRE 802

11

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 12 of 13

B-26 C-1

C-2

C-3

of J. Brett Ford dated 10/30/06 Expert Report of Gregg Perkin dated 07/25/2006 Supplemental Expert Report of Gregg Perkin dated 09/05/2006 Supplemental Expert Report of Gregg Perkin dated 03/21/2008 Expert Report of Alton Payne dated 09/05/2006

FRE 802 FRE 802

FRE 802

FRE 802

Dated: March 24, 2008

Respectfully submitted, __/s/ Robert M. Bowick__________ Robert M. Bowick Matthews, Lawson, & Bowick PLLC 2000 Bering Suite 700 Houston, Texas 77057 (713) 355-4200 (telephone) (713) 355-9689 (facsimile) John W. Raley , III Cooper & Scully, P.C. 700 Louisiana Street, Suite 3850 Houston, TX 77002 (713) 236-6801 (telephone) (713) 236-6880 (facsimile) Jane Michaels Holland & Hart, LLP 555 Seventeenth Street, Suite 3200 Denver, Colorado 80201-8749 (303) 295-8000 (telephone) (303) 295-8261 (facsimile)

12

Case 1:03-cv-02579-RPM

Document 176

Filed 03/24/2008

Page 13 of 13

C ERTIFICATE O F S ERVICE I hereby certify that on March 24, 2008, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following:

Timothy Atkinson Mark Haynes Kelley Bergelt Mark E. Lacis Ireland Stapleton Prior & Pascoe, P.C. 1675 Broadway, Suite 2600 Denver, Colorado 80202 (303) 623-2700 (telephone) (303) 623-2062 (facsimile) ___/s/ Robert M. Bowick______ Robert M. Bowick

13