UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`BAKER HUGHES INCORPORATED and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
`
`___________________
`
`Case IPR2016-00596
`Patent 7,134,505
`___________________
`
`
`
`
`
`EXCLUSIVE LICENSEE RAPID COMPLETIONS LLC’S
`OPPOSITION TO PETITIONERS’ MOTION SEEKING AUTHORIZA-
`TION TO FILE REPLACEMENT PETITION
` AND EXHIBITS AND NEW EXHIBIT
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`BAKER HUGHES INCORPORATED and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
`
`___________________
`
`Case IPR2016-00596
`Patent 7,134,505
`___________________
`
`
`
`
`
`EXCLUSIVE LICENSEE RAPID COMPLETIONS LLC’S
`OPPOSITION TO PETITIONERS’ MOTION SEEKING AUTHORIZA-
`TION TO FILE REPLACEMENT PETITION
` AND EXHIBITS AND NEW EXHIBIT
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2016-00596
`Patent 7,134,505
`
`I.
`II.
`
`TABLE OF CONTENTS
`Introduction. ..................................................................................................... 1
`Argument. ........................................................................................................ 2
`A.
`Petitioners’ proposed modifications are substantive, as agreed by
`Petitioners. ............................................................................................. 2
`No rule provides for Petitioners to obtain the requested relief. ............ 3
`B.
`Rapid Completions will be prejudiced. ................................................. 4
`C.
`III. Conclusion. ...................................................................................................... 5
`
`
`
`
`
`
`- i -
`
`
`
`
`I.
`
`Introduction.
`
`Case IPR2016-00596
`Patent 7,134,505
`
`The single issue before the Board is whether Petitioners can amend their
`
`originally-filed Petition to substantively change the evidence they previously cited
`
`to support their alleged prima facie case of unpatentability related to U.S. Patent
`
`No. 7,134, 505 (“the ’505 patent”). No statute and no rule provides for the extraor-
`
`dinary relief requested by Petitioners, and Petitioners cite no such rule and provide
`
`no explanation of where the Board would derive the authority to permit the sub-
`
`stantive amendment of a petition after filing. Accordingly, Petitioners should with-
`
`draw their present petition and file a new petition with the associated filing fee.
`
`And this course is the manifestly fairer course because the Patent Owner (and, in
`
`this case, Patent Owner’s exclusive licensee, Rapid Completions), will have the
`
`full period provided in the rules to assess Petitioners’ new evidence and can then
`
`file its preliminary response three months following the notice of filing date of the
`
`new petition, as provided by rule 37 C.F.R. § 42.107.
`
`Trying to avoid involving the Board, Rapid Completions proposed a reason-
`
`able resolution to Petitioners’ conundrum: Petitioners could make the requested
`
`change to their underlying supporting evidence, but reset the filing date, the pre-
`
`liminary response date, and corresponding institution date, accordingly. This mat-
`
`ter would proceed as if Petitioners had filed a new Petition. Petitioners refused
`
`Rapid Completions’ reasonable proposal. Petitioners, thus, want to avoid the finan-
`
`
`
`- 1 -
`
`
`
`
`cial and timing consequences of their error, yet deprive Rapid Completions of its
`
`Case IPR2016-00596
`Patent 7,134,505
`
`ability to fully develop a response to the newly submitted evidence and protect
`
`their valuable property rights.
`
`II. Argument.
`Petitioners’ proposed modifications are substantive, as agreed by
`A.
`Petitioners.
`
` On February 12, 2015, Petitioners filed their petition challenging the claims
`
`of the ’505 patent. To support the proposed grounds of unpatentability, Petitioners
`
`provided a copy of a document entitled “Production Control of Horizontal Wells in
`
`a Carbonate Reef Structure,” marked as Exhibit 1004. Petitioners provided no ad-
`
`ditional evidence related to the publication date or public availability of Exhibit
`
`1004. Petitioners now seek to replace the originally-filed Exhibit 1004 and to add
`
`an entirely new declaration (Exhibit 1019) that, for the first time, addresses the
`
`public availability of Exhibit 1004.
`
`Petitioners’ proposed changes are substantive—a fact that Petitioners appear
`
`now to not dispute (Motion, p. 1). Petitioners however attempt to obfuscate the
`
`substantial adverse consequences on Rapid Completions if the Board grants the in-
`
`stant motion. First, Petitioners state that the “only changes to the written content
`
`from original Exhibit 1004 are the paper presentation language on the first page,
`
`and five wording changes on the last two pages.” (Motion, p. 4.) Petitioners mis-
`
`
`
`- 2 -
`
`
`
`
`state the substantive practical effects of their motion on Exhibit 1004, because the
`
`Case IPR2016-00596
`Patent 7,134,505
`
`modification to the “paper presentation language on the first page” will now pro-
`
`vide an argument that Exhibit 1004 was publicly available where there was no evi-
`
`dence before. Moreover, the “five wording changes” are not simple typographical
`
`corrections, but relate to discussions regarding the functionality of a plug and gas
`
`and water intake. (See Motion, Exhibit K, pp. 1, 8.) Second, Petitioners misrepre-
`
`sent that Exhibit 1019 is merely “a declaration attesting to the publication of re-
`
`placement Exhibit 1004.” (See Motion, p. 1.) Petitioners fail to advise the Board
`
`that Exhibit 1019 includes an attachment that contains 13 additional substantive
`
`papers. And, because Exhibit 1004 allegedly comes from a conference proceeding,
`
`newly presented Exhibit 1019 becomes critical for establishing publication and
`
`public availability of Exhibit 1004—a fundamental component of Petitioners’ re-
`
`quirement to show a prima facie case of unpatentability. Petitioners’ failure to pro-
`
`vide Exhibit 1019 with its original petition was a serious, and likely fatal, defect in
`
`their original petition—a fact effectively conceded by Petitioners in this motion.
`
`B. No rule provides for Petitioners to obtain the requested relief.
`Petitioners, as movant, bear the burden of establishing that they are entitled
`
`to the relief requested. 37 C.F.R. § 42.104(b)(4). Petitioners fail to meet this bur-
`
`den. No rule permits a petitioner to make substantive modifications to the original-
`
`ly-filed Petition, and the instant motion does not fall under the rule that allows for
`
`
`
`- 3 -
`
`
`
`
`correcting clerical errors. Petitioners never explain where or how the Board has the
`
`Case IPR2016-00596
`Patent 7,134,505
`
`authority to make the modification requested.
`
`Although Petitioners mention 32 C.F.R. § 42.5(b) in the title of their motion
`
`–––“Motion Seeking Authorization to File Replacement Petition and Exhibits and
`
`New Exhibit Pursuant to 37 C.F.R. § 42.5(b)”––this brief mention does not meet
`
`Petitioners’ burden. Petitioners never discuss why or how Rule 42.5(b) applies to
`
`their motion. Instead, Petitioners set out in the background the substantive flaws
`
`with their initial evidence and their self-serving argument that Rapid Completions
`
`will not be prejudiced if the Board grants the motion and does not modify the pre-
`
`liminary response date. Petitioners’ cursory argument does not justify the extraor-
`
`dinary relief requested. Moreover, Petitioners are incorrect—Rapid Completions
`
`will be prejudiced, as we address in the next section.
`
`C. Rapid Completions will be prejudiced.
`Rapid Completions will be prejudiced if the Board permits the substantive
`
`modifications to the petition without a corresponding change to the preliminary re-
`
`sponse date. The new evidence Petitioners seek to introduce goes to a core element
`
`of Petitioners’ requirement to show a prima facie case—the public availability of a
`
`prior art reference. Petitioners’ proposed substantive changes to the text of Exhibit
`
`1004 substantively affect Rapid Completions’ analysis of the petition’s proposed
`
`grounds of unpatentability. Petitioners contend that they filed similar evidence in
`
`
`
`- 4 -
`
`
`
`
`other petitions, but whether they did has no relevance to this matter. The ’505 pa-
`
`Case IPR2016-00596
`Patent 7,134,505
`
`tent contains different claims, and, therefore, Rapid Completions’ analysis neces-
`
`sarily differs from the analysis in this case. Rapid Completions will be prejudiced
`
`because it will not have the time provided in the rules to analyze and respond to the
`
`new evidence. In contrast, providing the full three months to respond to the petition
`
`would not prejudice Petitioners. Indeed, Petitioners did not identify a single reason
`
`why they would be prejudiced by moving the preliminary response due date. (Mo-
`
`tion, p. 5.)
`
`III. Conclusion.
`Petitioners made the strategic decision to file the present petition without the
`
`proper evidence to support their prima facie case. Petitioners seek to cure their
`
`strategic mistake by requesting permission to change their originally-filed Petition
`
`to allow substantive changes, but oppose providing Rapid Completions the proper
`
`time to analyze and respond. The Board should deny Petitioners’ request. The
`
`Board should not deprive Rapid Completions of its rule-guaranteed full, fair, and
`
`just opportunity to defend its valuable property resource, particularly when the sole
`
`reason of Petitioners’ motion rests on Petitioners’ own errors.
`
`
`
`
`
`- 5 -
`
`
`
`
`
`
`
`Case IPR2016-00596
`Patent 7,134,505
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
` /Michael B. Ray/
`
`Michael B. Ray
`Registration No. 33,997
`Attorney for Exclusive Licensee
`
`
`
`Date: April 12, 2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`- 6 -
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing EXCLUSIVE LICEN-
`
`Case IPR2016-00596
`Patent 7,134,505
`
`
`
`
`
`SEE RAPID COMPLETIONS LLC’S OPPOSITION TO PETITIONERS’ MO-
`
`TION SEEKING AUTHORIZATION TO FILE REPLACEMENT PETITION
`
`AND EXHIBITS AND NEW EXHIBIT was served electronically via e-mail on
`
`April 12, 2016, in its entirety on the following counsel of record for Petitioner:
`
`Mark T. Garrett (Lead Counsel)
`Eagle H. Robinson (Back-up Counsel)
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
` /Michael B. Ray/
`
`Michael B. Ray
`Registration No. 33,997
`Attorney for Exclusive Licensee
`
`
`
`Date: April 12, 2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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