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`Paper No 71
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAKER HUGHES, A GE COMPANY, LLC
`and
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.
`Patent Owner
`
`______________
`
`Case IPR2016-00596
`Patent 7,134,505
`______________
`
`
`PETITIONERS’ MOTION FOR LEAVE TO FILE UPDATED
`MANDATORY NOTICES
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`
`
`
`Case IPR2016-00596
`Patent 7,134,505
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`On September 25, 2017, the Board authorized Petitioners to file a motion for
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`leave to file, outside the 21-day period specified in Rule 42.8(a)(3), updated
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`mandatory notices listing General Electric Company (“General Electric”) as a real
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`party-in-interest, pursuant to Petitioners’ emailed request to the Board of August
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`25, 2017. Petitioners request that the Board authorize the filing under one or more
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`of Rules 42.5(b), (c)(1), and (c)(3) because it will promote efficiency, there will be
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`no resulting prejudice to Rapid Completions LLC (“Rapid Completions,” acting
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`entity in this proceeding) or Patent Owner, and the Board will have sufficient time
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`to address any potential conflicts.
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`II.
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`FULL STATEMENT OF THE REASONS FOR THE RELIEF
`REQUESTED
`A. Background
`On July 3, 2017, Baker Hughes Incorporated was converted into Baker
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`Hughes, a GE Company, LLC (“BHGE, LLC”). See Paper 62. On July 24, 2017,
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`Petitioners filed updated mandatory notices, reporting this conversion and adding
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`Baker Hughes, a GE Company (“BHGE”)—a publicly traded company that
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`became a partial owner of BHGE, LLC following the conversion—as a real party-
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`in-interest (RPI) under Rule 42.8(b)(3). See id.
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`Following the conversion, General Electric (a publicly traded company)
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`became a partial owner of both BHGE, LLC and BHGE. However, when those
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`1
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`Case IPR2016-00596
`Patent 7,134,505
`updated mandatory notices were filed, a good faith determination was made by the
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`undersigned that General Electric was not an RPI.
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`That determination has not changed, but Petitioners now seek to file updated
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`mandatory notices adding General Electric as an RPI to eliminate any RPI issue
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`from this proceeding, and not as a concession that General Electric is, in fact, an
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`RPI.
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`As reflected in Petitioners’ August 25, 2017 email to the Board, Rapid
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`Completions has indicated it believes the petition in this proceeding should be
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`dismissed based on Petitioners’ “failure” to make this request within 21 days after
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`July 3, 2017.
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`B. No Prejudice to Rapid Completions
`The requested change does not alter any of the grounds on which trial was
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`instituted. It also expressly subjects General Electric to the estoppel provisions of
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`Section 315 of Title 35, benefitting Rapid Completions (and Patent Owner). See
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`Aerospace Communications Holdings Co. v. Armor All/Step Products Co., Case
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`IPR2016-00441, slip op. at 6 (P.T.A.B. June 28, 2016) (Paper 12).
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`C. This Issue Is Not Jurisdictional
`Rapid Completions’ indication that the petition should be dismissed based
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`on Petitioners’ request being more than 21 days after July 3, 2017 is not consistent
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`with the Board’s precedential decision of Lumentum Holdings, Inc. v. Capella
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`
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`2
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`
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`Case IPR2016-00596
`Patent 7,134,505
`Photonics, Inc., Case IPR2015-00739, slip op. at 4-6 (P.T.A.B. Mar. 4, 2016)
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`(Paper 38) (precedential). There, the Petition was filed on February 14, 2015, and
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`identified the petitioner as the sole RPI. Id. at 2. Prior to institution, the petitioner
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`was renamed and additional entities became RPIs related to a reorganization. Id.
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`However, the Petitioner did not seek to amend its mandatory notices until a few
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`weeks after the August 25, 2015 institution decision, and outside of the 21-day
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`period specified in Rule 42.8(a)(3). Id. at 2-3.
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`The Board authorized the Patent Owner to file a motion to terminate the
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`proceeding, in which the Patent Owner argued that the Petitioner failed to meet the
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`requirement of Section 312(a)(2), thereby depriving the Board of jurisdiction to
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`institute trial. Id. at 3-4. The Board denied the motion to terminate, ruling that a
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`lapse in a petitioner’s compliance with the requirements of Section 312(a) “does
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`not deprive the Board of jurisdiction over the proceeding, or preclude the Board
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`from permitting such lapse to be rectified.” Id. at 5.
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`Here, and assuming (for the sake of argument) that Section 312 applies to
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`the Board’s consideration of the petition after institution, at least the same
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`reasoning supports the Board’s consideration of Petitioners’ request.
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`D. The Board Has Time to Address Any Potential Conflicts
`As explained in the Trial Practice Guide, one of the “core functions” of the
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`requirement to identify RPIs is “to assist members of the Board in identifying
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`3
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`Case IPR2016-00596
`Patent 7,134,505
`potential conflicts.” 77 Fed. Reg. 48756, 48759 (Aug. 12, 2012). Given that
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`August 25, 2017 is at least two months prior to the oral hearing date for this
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`proceeding, Petitioners respectfully submit the Board has sufficient time to make
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`this assessment. See Valeo North America, Inc. v. Magna Electronics, Inc., Case
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`IPR2014-00220, slip op. at 4 (P.T.A.B. Jan. 8, 2015) (Paper 45) (granting
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`Petitioner’s late updated mandatory notices request that occurred two months to
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`two months and one day prior to oral hearings).
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`III. CONCLUSION
`Petitioners’ respectfully request that the Board exercise its authority under
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`Rule 42.5 and grant Petitioners’ request to file updated mandatory notices, adding
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`General Electric as a real party-in-interest, outside the 21-day time period specified
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`in Rule 42.8(a)(3). Granting this request will promote efficiency by precluding
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`any need for the Board or parties to expend effort and expense litigating whether
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`General Electric is an RPI. Denying this request—which does not seek to change
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`the substance of the case, and which leaves the Board with adequate time to
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`address any potential conflicts—would produce a result contrary to the interests of
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`justice. See Lumentum Holdings, slip op. at 5.
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`Dated: September 29, 2017
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`Respectfully submitted,
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`/Mark T. Garrett/
`Mark T. Garrett
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`4
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
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`29, 2017, a complete copy of MOTION FOR LEAVE TO FILE UPDATED
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`MANDATORY NOTICES was served on Patent Owner’s Exclusive Licensee via
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`email (by consent), as follows:
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`hhamad@caldwellcc.com
`bcaldwell@caldwellcc.com
`jnemunaitis@caldwellcc.com
`gonsalves@gonsalveslawfirm.com
`rapid@caldwellcc.com
`
`
`/Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
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`36867358.1
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