`571-272-7822
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper 83
`Entered: September 26, 2018
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`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 IPR2016-005961 (Patent 7,134,505 B2)
`Case IPR2016-005972 (Patent 7,543,634 B2)3
`
`
`NEIL T. POWELL, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
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`1 IPR2016-001496 has been joined with IPR2016-00596.
`2 IPR2016-001505 has been joined with IPR2016-00597.
`3 This Order applies to both cases. The parties are not authorized to use this
`style heading for any subsequent papers.
`
`
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`
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`Case IPR2016-00596 (Patent 7,134,505 B2)
`Case IPR2016-00597 (Patent 7,543,634 B2)
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`In each of these cases, Petitioner filed a Motion to Submit
`Supplemental Information seeking to submit certain exhibits as
`supplemental information “to further establish the prior art nature of Lane-
`Wells (Ex. 1002), Van Dyke (Ex. 1008), Baker (Ex. 1009), Lagrone (Ex.
`1017), Eberhard (Ex. 1018), Howard (Ex. 1022), and Hyne (Ex. 1023).”
`IPR2016-01496 Paper 264 (“the Motion” or “Mot.”). 5 Patent Owner filed a
`Response to Petitioners’ Motion to Submit Supplemental Information.
`IPR2016-01496 Paper 27 (“Response” or “Resp.”).
`Petitioner argues that each of the exhibits it seeks entered as
`supplemental information has been submitted in a timely manner and is
`relevant to a claim for which trial has been instituted. Mot. 8–12. Asserting
`that Patent Owner received the exhibits more than two months prior to the
`due date for its Patent Owner Response, Petitioner argues that entry of the
`exhibits will not prejudice Patent Owner. Id. at 13.
`Patent Owner objects to entry of only one of the exhibits proffered by
`Petitioner—the Davis-Nichols Declaration (Ex. 11246), which relates to the
`public accessibility of Lane-Wells (IPR2016-01496, Ex. 1002). Resp. 1–5.
`Noting that its Preliminary Response (IPR2016-01496 Paper 17) attacked
`Petitioner’s other evidence of public accessibility of Lane-Wells, Patent
`Owner argues that we should not allow Petitioner to submit new evidence
`that would require Patent Owner to launch a new attack on Petitioner’s
`
`
`4 This paper was filed in IPR2016-01496 before it was joined with IPR2016-
`00596 and terminated.
`5 Because the issues are the same for both of the cases, we discuss and cite
`only the papers for IPR2016-00596 (which were filed in IPR2016-01496).
`6 The Motion and Response refer to this declaration as Exhibit 1024, but the
`declaration appears in the record as Exhibit 1124.
`2
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`Case IPR2016-00596 (Patent 7,134,505 B2)
`Case IPR2016-00597 (Patent 7,543,634 B2)
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`public accessibility assertion. Id. at 1–3. Patent Owner asserts that
`Petitioner’s “attempted reliance on this new evidence demonstrates that the
`Petition itself is fatally flawed.” Id. at 3.
`We find Petitioner’s arguments more persuasive than Patent Owner’s.
`We agree with Petitioner that the Motion complies with the requirements of
`37 C.F.R. § 42.123(a). Additionally, consistent with Petitioner’s arguments,
`we do not find significant prejudice to Patent Owner from the entry of the
`Davis-Nichols Declaration. Contrary to Patent Owner’s argument, the
`Petition is not fatally flawed. As we explained when we instituted trial,
`Petitioner submitted evidence of public accessibility sufficient to
`demonstrate a reasonable likelihood of prevailing. IPR2016-01496 Paper
`19, 10–13. Neither Patent Owner’s initial attack nor its attempt to reiterate
`that initial attack persuade us otherwise. Having submitted evidence of
`public accessibility sufficient to demonstrate a reasonable likelihood of
`prevailing, Petitioner’s response to Patent Owner’s attack with additional
`evidence bolstering its public accessibility contention is foreseeable,
`reasonable, and not unduly prejudicial to Patent Owner.
`Order
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information is granted.
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`3
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`Case IPR2016-00596 (Patent 7,134,505 B2)
`Case IPR2016-00597 (Patent 7,543,634 B2)
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`PETITIONER:
`
`Mark Garrett
`Eagle Robinson
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`PATENT OWNER:
`
`Hamad Hamad
`CALDWELL CASSADY CURRY
`hhamad@caldwellcc.com
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
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`
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`4
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`