Paper 15
`
`
`
`Trials@uspto.gov
`571-272-7822
` Entered: July 1, 2014
`
`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GREENE’S ENERGY GROUP, LLC,
`Petitioner,
`
`v.
`
`OIL STATES ENERGY SERVICES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00216 (Patent 6,179,053 B1)
`Case IPR2014-00364 (Patent 6,289,993 B1)
`__________
`
`
`
`
`Before SCOTT E. KAMHOLZ, WILLIAM A. CAPP, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
` Entered: July 1, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GREENE’S ENERGY GROUP, LLC,
`Petitioner,
`
`v.
`
`OIL STATES ENERGY SERVICES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00216 (Patent 6,179,053 B1)
`Case IPR2014-00364 (Patent 6,289,993 B1)
`__________
`
`
`
`
`Before SCOTT E. KAMHOLZ, WILLIAM A. CAPP, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2014-00216 (Patent 6,179,053 B1)
`IPR2014-00364 (Patent 6,289,993 B1)
`
`
`The initial conference call for these cases was held on June 27, 2014.
`
`Patent Owner filed a list of proposed motions in each case; Petitioner filed a
`
`list of proposed motions only in IPR2014-00364. The following matters
`
`were discussed during the call.
`
`Scheduling Order
`
`Neither party expressed concerns about the schedule or proposed
`
`changes.
`
`Related Cases
`
`The parties indicated that the related litigation in the U.S. District
`
`Court for the Eastern District of Texas is in discovery and that no motion to
`
`stay is pending. We reminded the parties to advise the Board of any status
`
`changes in the litigation and to notify the Board of any new proceedings
`
`involving either patent.
`
` Patent Owner indicated that it was considering filing an application to
`
`reissue at least one of the patents involved in these inter partes reviews. We
`
`reminded Patent Owner that, because the Board exercises jurisdiction over
`
`the patents, see 37 C.F.R. § 42.3(a), Patent Owner must contact the Board
`
`before filing any reissue application concerning the ’053 or ’993 patents.
`
`Patent Owner’s Proposed Motions
`
`Patent Owner proposed filing a motion for additional discovery
`
`concerning deposition of Petitioner’s petition witness(es) and certain other
`
`employees of Petitioner. Patent Owner indicated that at least some of this
`
`discovery may relate to issues concerning secondary considerations of
`
`2
`
`
`
`
`
`
`
`IPR2014-00216 (Patent 6,179,053 B1)
`IPR2014-00364 (Patent 6,289,993 B1)
`
`
`obviousness. We reminded Patent Owner that deposition of petition
`
`witnesses on topics addressed in petition declarations constitute routine
`
`discovery, not additional discovery, and do not require further authorization.
`
`We also reminded Patent Owner that a motion for additional discovery
`
`relating to secondary considerations evidence based on Petitioner’s products
`
`or services requires a showing of nexus to establish Patent Owner’s
`
`entitlement to the relief requested. See Microsoft Corp. v. Proxyconn, Inc.,
`
`IPR2012-00026, Paper 32, 5; 37 C.F.R. § 42.20(c).
`
`Patent Owner did not indicate any present intention to seek additional
`
`discovery. We do not authorize a motion at this time.
`
`We encouraged the parties to reach agreement on this issue, as well as
`
`discovery in general. The parties may request a conference call with the
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`Board only if they cannot reach agreement.
`
`Patent Owner also indicated that it was considering filing a motion to
`
`amend in at least one of the cases. We reminded Patent Owner that, should
`
`it decide to file a motion to amend, it must confer with the Board before
`
`filing the motion. Guidance for motions to amend may be found on the
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`Board’s web site, www.uspto.gov/ptab. See also Respironics v. ZOLL
`
`Medical Corp., IPR2013-00322, Paper 13 (exemplary summary of motion to
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`amend conference). The conference should be requested at least one week
`
`before Due Date 1.
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`Petitioner’s Proposed Motions
`
`Petitioner proposed to file a motion to submit supplemental
`
`information to respond to certain arguments in Patent Owner’s Preliminary
`
`3
`
`
`
`
`
`
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`IPR2014-00216 (Patent 6,179,053 B1)
`IPR2014-00364 (Patent 6,289,993 B1)
`
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`Response and to show the publication date and authenticity of a reference.
`
`We declined to authorize this motion, because arguments from the
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`Preliminary Response will be given no further consideration unless they are
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`repeated in the Patent Owner Response, and because the parties first should
`
`attempt to resolve authentication-related evidentiary issues between
`
`themselves. Petitioner may respond to the repeated arguments as part of its
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`Reply. We cautioned Petitioner to confine its Reply arguments and evidence
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`to the proper scope of reply, i.e., that directly refute Patent Owner’s
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`Response arguments and evidence, do not raise new issues, and do not seek
`
`to improve Petitioner’s case-in-chief. 37 C.F.R. § 42.23(b). A reply that
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`exceeds the permissible scope will not be considered, and the Board will not
`
`distinguish proper portions from improper ones. Corning Inc. v. DSM IP
`
`Assets B.V., IPR2013-00047, Paper 84, 14-18; Ariosa Diagnostics v.
`
`Stanford, IPR2013-00308, Paper 20, 2; Amneal Pharm. v. Supernus Pharm.,
`
`IPR2013-00368, Paper 62, 3.
`
`Petitioner also reserved the right to seek authorization for other
`
`motions. We advised the Petitioner that this is unnecessary; Petitioner may
`
`seek authorization for motions as need arises.
`
`Protective Order
`
`We reminded the parties that a protective order does not exist in a
`
`case, until one is filed in the case and is approved by the Board. If a motion
`
`to seal is filed by either party, the proposed protective order should be
`
`presented as an exhibit to the motion. We encourage the parties to operate
`
`under the Board’s default protective order, should that become necessary.
`
`4
`
`
`
`
`
`
`
`IPR2014-00216 (Patent 6,179,053 B1)
`IPR2014-00364 (Patent 6,289,993 B1)
`
`
`See Default Protective Order, Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, App. B (Aug. 14, 2012). If the parties choose to propose a
`
`protective order deviating from the default protective order, they must
`
`submit the proposed protective order jointly. We would appreciate the
`
`inclusion of a marked-up comparison of the proposed and default protective
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`orders, so that we can readily understand the differences.
`
`We emphasized that redactions to documents filed in this proceeding
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`should be limited strictly to isolated passages consisting entirely of
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`confidential information, and that the thrust of the underlying argument or
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`evidence must be clearly discernible from the redacted versions. We also
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`reminded the parties that information subject to a protective order will
`
`become public if identified in a final written decision in this proceeding, and
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`that a motion to expunge the information will not necessarily prevail over
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`the public interest in maintaining a complete and understandable file history.
`
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`
`
`5
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`
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`IPR2014-00216 (Patent 6,179,053 B1)
`IPR2014-00364 (Patent 6,289,993 B1)
`
`
`
`
`PETITIONER:
`
`John Feldhaus
`jfeldhaus@foley.com
`
`Andrew R. Cheslock
`acheslock@foley.com
`
`PATENT OWNER:
`
`C. Erik Hawes
`ehawes@morganlewis.com
`
`Archis V. Ozarkar
`nozarkar@morganlewis.com
`
`
`6
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