Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: May 3, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAKER HUGHES INCORPORATED and BAKER HUGHES OILFIELD
`OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`Patent Owner.
`
`Case IPR2016-00596
`Patent 7,134,505 B2
`
`Before NEIL T. POWELL and CARL M. DeFRANCO,
`Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to File Replacement Petition and Exhibits and New Exhibit
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: May 3, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAKER HUGHES INCORPORATED and BAKER HUGHES OILFIELD
`OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`Patent Owner.
`
`Case IPR2016-00596
`Patent 7,134,505 B2
`
`Before NEIL T. POWELL and CARL M. DeFRANCO,
`Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to File Replacement Petition and Exhibits and New Exhibit
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-00596
`Patent 7,134,505 B2
`
`Background
`
`On February 12, 2016, Petitioner Baker Hughes Incorporated and
`
`Baker Hughes Oilfield Operations, Inc. (hereafter, “Baker”) filed a Petition
`
`requesting an inter partes review of claims 1–7, 11, and 14–27 of U.S.
`
`Patent No. 7,134,505 B2 (Ex. 1001, “the ’505 patent”). Paper 2 (“Pet.”).
`
`On April 6, 2016, pursuant to our authorization, Baker filed a Motion to File
`
`Replacement Petition and Exhibits and New Exhibit. Paper 7 (“Motion” or
`
`“Mot.”). On April 12, 2016, Rapid Completions LLC (hereafter, “Rapid”),
`
`representing itself as the exclusive licensee of the ’505 patent, filed an
`
`Opposition to the Motion. Paper 8 (“Opp.”).
`
`Baker seeks:
`
`leave to file: (1) a replacement version of originally-filed
`Exhibit 1004 (a prior art article) . . . ; (2) new Exhibit 1019
`. . . , which is a declaration attesting to the publication of
`replacement Exhibit 1004; (3) a replacement version of
`Exhibit 1007 . . . , which is a declaration by [Petitioner’s]
`technical expert that has been updated to correct page
`citations that will change with entry of replacement
`Exhibit 1004 and use a cleaner image from the
`replacement, and to correct two typographical errors; and
`(4) a replacement Petition . . . , which has been changed to
`list new Exhibit 1019 and reference same as showing the
`publication of replacement Exhibit 1004, and fix some
`typographical errors.
`
`Mot. 1. Baker explains that it seeks this relief because it
`
`learned after filing the February 12, 2016 Petition that the
`filed version of Exhibit 1004—which is a paper—may not
`have been the version included in the bound proceedings
`associated with the conference, which version [Baker]
`subsequently filed as the proposed replacement version of
`Exhibit 1004 (in combination with new Exhibit 1019) in
`other recent IPR petitions against the same Patent Owner
`. . . .
`
`2
`
`
`
`IPR2016-00596
`Patent 7,134,505 B2
`
`Id. at 2.
`
`Baker states that it will “accept whatever new filing date the Board
`
`determines should it grant this request” and “will not dispute” Rapid’s
`
`characterization of the changes as “substantive.” Id. Baker “object[s] to
`
`extending the preliminary response deadline (currently May 25, 2016) by the
`
`time between February 25, 2016 and the new filing date.” Id.
`
`Rapid asserts that Baker should withdraw the Petition and file a new
`
`petition and filing fee. Opp. 1. Rapid states that it proposed that Baker
`
`could make the changes it requests, “but reset the filing date, the preliminary
`
`response date, and corresponding institution date, accordingly.” Id.
`
`Thus, Baker’s requested relief differs from what Rapid had proposed
`
`in only one respect. Specifically, Baker requests that the due date for the
`
`Preliminary Response remain the same, and Rapid had proposed changing
`
`the due date for the Preliminary Response to a later date.
`
`Discussion
`
`Baker discusses differences between the documents it seeks to submit
`
`and those originally submitted (Mot. 4–5) and argues that the relief it seeks
`
`would cause no prejudice to Rapid (id. at 5). Baker asserts that “neither
`
`replacement Exhibit 1004 nor the proceedings copy in Exhibit 1019 are new
`
`to Patent Owner, whose CEO and the co-inventor of the ’505 Patent is a
`
`named co-author.” Id. Baker argues that there is no reason to change the
`
`due date for the Preliminary Response “because Patent Owner has been in
`
`possession of replacement Exhibit 1004 and new Exhibit 1019 since
`
`February 19, 2016, when they were filed as Exhibits 1004 and 1019,
`
`respectively, in IPR2016-00597 and as Exhibits 1003 and 1014,
`
`respectively, in IPR2016-00598.” Id. at 1. Baker notes that preliminary
`
`3
`
`
`
`IPR2016-00596
`Patent 7,134,505 B2
`
`responses are due in IPR2016-00597 and IPR2016-00598 on the same day
`
`(May 25, 2016) that the Preliminary Response is due in this case. Id. at 2.
`
`Baker argues that “[g]ranting the requested relief should eliminate any
`
`legitimate basis for challenging the prior art nature of original exhibit 1004.”
`
`Id. Baker adds that, if Rapid intends to challenge the prior art nature of
`
`Exhibit 1004, it will have to do so by May 25, 2016 in IPR2016-00597 and
`
`IPR2016-00598, anyway. Id.
`
`Rapid argues that Baker’s proposed changes are substantive, that no
`
`rule provides for the relief requested by Baker, and that Rapid will suffer
`
`prejudice. Opp. 2–5. Rapid argues that Baker understates the significance
`
`of allowing the submissions Baker seeks. Opp. 2–3. Rapid further argues
`
`that “[n]o rule permits a petitioner to make substantive modifications to the
`
`originally-filed Petition, and the instant motion does not fall under the rule
`
`that allows for correcting clerical errors.” Id. at 3–4. Rapid adds that
`
`“[a]lthough [Baker] mention[s] [37] C.F.R. § 42.5(b) in the title of their
`
`motion . . . this brief mention does not meet [Baker’s] burden” and that
`
`Baker “never discuss[es] why or how Rule 42.5(b) applies to their motion.”
`
`Id. at 4. Rapid argues that it “will be prejudiced if the Board permits the
`
`substantive modifications to the petition without a corresponding change to
`
`the preliminary response date.” Id. Rapid argues that Baker’s assertion of
`
`having filed similar evidence in other petitions has no bearing on this case
`
`because “[t]he ’505 patent contains different claims, and, therefore,
`
`[Rapid’s] analysis necessarily differs from the analysis in this case.” Id. at
`
`4–5. Rapid argues that granting the Motion will prejudice it because it “will
`
`not have the time provided in the rules to analyze and respond to the new
`
`evidence.” Id. at 5.
`
`4
`
`
`
`IPR2016-00596
`Patent 7,134,505 B2
`
`We are persuaded that granting the Motion, including leaving the due
`
`date for the Preliminary Response on May 25, 2016, would not prejudice
`
`Rapid. Rapid does not dispute Baker’s assertion that the evidence Baker
`
`seeks to enter was entered in IPR2016-00597 on February 19, 2016. See
`
`Mot. 1; Opp. 4–5.
`
`Furthermore, upon reviewing the challenged claims in this case and
`
`those in IPR2016-00597, we find unpersuasive Rapid’s argument that its
`
`analysis necessarily differs because of differences between the claims
`
`challenged in the cases. In this case, Exhibit 1004 is asserted in a challenge
`
`of claims 23 and 27 of the ’505 patent. See Pet. 4, 46–49. In IPR2016-
`
`00598, Exhibit 1004 is asserted in challenges of claim 25 of U.S. Patent No.
`
`7,543,634 B2 (“the ’634 patent”). See IPR2016-00597, Paper 1, 4, 46–48,
`
`53–58. Claims 23 and 27 of the ’505 patent recite the same language that
`
`claim 25 of the ’634 patent does. Specifically, each of these claims recites
`
`“wherein when in a desired position the apparatus is adjacent an open hole
`
`section of the wellbore and the packers are set to seal the annulus between
`
`the apparatus and the wellbore wall.” Ex. 1001, col. 16, ll. 31–34, col. 17,
`
`ll. 17–20; IPR2106-00597, Ex. 1001, col. 16, ll. 41–44. Given this, we are
`
`persuaded that any issues related to the evidence Baker seeks to submit in
`
`this case sufficiently resemble any issues related to the evidence already
`
`submitted in IPR2016-00597 that granting the Motion will not significantly
`
`prejudice Rapid.
`
`Additionally, we believe that other considerations weigh in favor of
`
`exercising our discretion under 37 C.F.R. § 42.5 and granting the Motion.
`
`Nothing on the record indicates that a time bar under 35 U.S.C. § 315(b) or
`
`anything else would prevent Baker from filing another petition with the
`
`5
`
`
`
`IPR2016-00596
`Patent 7,134,505 B2
`
`documents it seeks to file in the present case. Indeed, Rapid asserts that
`
`Baker should do just that. Opp. 1. That option would prove inefficient. A
`
`number of other pending, related IPR petitions involve Baker challenging
`
`related patents defended by Rapid, including IPR2016-00597, IPR2016-
`
`00598, IPR2016-00650, IPR2016-00656, and IPR2016-00657. For each of
`
`these other pending IPR petitions, the preliminary response is due either
`
`May 25, 2016 or June 3, 2016. Given this, with no significant reason to
`
`deny Baker’s Motion, granting the Motion will promote efficiency by
`
`keeping the schedule of this case moving with schedules of the other cases.
`
`
`
`ORDER
`
`It is ORDERED that Baker’s Motion for leave to submit the specified
`
`documents is granted;
`
`FURTHER ORDERED that a new petition filing date will be entered
`
`when Baker submits the specified documents;
`
`FURTHER ORDERED that once Baker submits the specified
`
`documents, the originally filed versions of Exhibits 1004 and 1007 will be
`
`expunged; and
`
`FURTHER ORDERED that the due date for the Preliminary
`
`Response remains May 25, 2016.
`
`
`
`6
`
`
`
`IPR2016-00596
`Patent 7,134,505 B2
`
`PETITIONER:
`
`Mark Garrett
`Mark.garrett@nortonrosefulbright.com
`
`Eagle Robinson
`Eagle.robinson@nortonrosefulbright.com
`
`
`
`PATENT OWNER:
`
`Michael B. Ray
`Mray-ptab@skgf.com
`
`Lori A. Gordon
`Lgordon-ptab@skgf.com
`
`Kyle Conklin
`Kconklin-ptab@skgf.com
`
`
`
`7
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