`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`BAKER HUGHES INCORPORATED and
`BAKER HUGHES OILFIELD OPERATIONS LLC,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
`
`___________________
`
`Case IPR2016-00596
`Patent 7,134,505
`___________________
`
`
`
`EXCLUSIVE LICENSEE RAPID COMPLETIONS LLC’S
`RESPONSE TO PETITIONERS’ MOTION FOR LEAVE TO
`FILE UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The issue currently before the Board is whether Petitioners have
`
`demonstrated good cause to amend their mandatory notices after the 21-day
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`deadline, or whether allowing the amendment is in the interests of justice. 37 CFR
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`§ 42.5(c)(3). In evaluating whether good cause exists, the Board must consider:
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`(1) Petitioners’ excuse for the delay, (2) the importance of the proposed
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`amendment, and (3) the potential prejudice to the non-moving party.
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`In evaluating the reason for delay, a movant will typically offer some
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`explanation as to why it missed a deadline, even if it was merely inattention to the
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`deadline. Here, Petitioners offer no such explanation. Instead, they contend that
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`they made a conscious decision not to amend their mandatory notices within the
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`21-day period. Mot. at 2 (“a good faith determination was made by the
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`undersigned that General Electric was not an RPI”). And they also contend that,
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`after the deadline lapsed, nothing changed to make them believe that they made the
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`wrong decision. Mot. at 2 (“That determination has not changed”). These two
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`statements cannot both be correct. There must be some explanation as to why
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`Petitioners failed to meet the deadline, and now contend that GE should be named
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`as an RPI. Their failure to provide that explanation should tip this factor against
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`granting the motion.
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`With regard to the importance of the proposed amendment, the requirement
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`that a petitioner name all RPIs is important. The IPR process affords patent
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`
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`owners only limited discovery into this issue. Thus, for the system to work
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`properly, petitioners must be forthright about naming RPIs. While the penalty of
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`dismissal may be harsh in some cases, it is necessary to ensure proper compliance
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`with the rules.
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`The final factor, prejudice to the non-moving party is difficult to determine.
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`It is still not clear why Petitioners changed their mind regarding naming GE as an
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`RPI. At any rate, Petitioners’ failure to offer an excuse for their delay, and the
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`importance of ensuring compliance with the requirement that a petitioner name all
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`RPIs should weigh in favor of denying the present motion.
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`Petitioners reliance on Lumentum is inapposite. Lumentum does hold that
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`the Board retains jurisdiction to rule on a motion to amend mandatory notices after
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`the 21-day deadline. But that is beside the point. Certainly, if the Board
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`determines that good cause exists for Petitioners to add GE as an RPI, then they
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`have cured the defect in their petition such that the proceedings should continue.
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`However, if the Board determines that Petitioners lack good cause such that the
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`present motion should be denied, then the petitions are defective for failing to
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`name all RPIs. As a result, the Board should dismiss the petitions. See, e.g.,
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`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper
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`88 at 14-15 (PTAB Jan. 6, 2015) (dismissing petition where petitioner could not
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`cure its failure to name all RPIs because the one year filing bar had passed).
`
`
`
`Dated: October 30, 2017
`
`
` Respectfully submitted,
`
`Rapid Completions LLC
`
`
`By /Justin T. Nemunaitis/
`Hamad M. Hamad, Reg. No. 64,641
`Bradley W. Caldwell (pro hac vice)
`Justin T. Nemunaitis (pro hac vice)
`CALDWELL CASSADY CURRY, P.C.
`2101 Cedar Springs Road, Suite 1000
`Dallas, Texas 75201
`Telephone: 214.888.4848
`Facsimile: 214.888.4849
`hhamad@caldwellcc.com
`bcaldwell@caldwellcc.com
`jnemunaitis@caldwellcc.com
`rapid@caldwellcc.com
`
`Dr. Gregory Gonsalves, Reg. No. 43,639
`GONSALVES LAW FIRM
`2216 Beacon Lane
`Falls Church, Virginia 22043
`Telephone: 571.419.7252
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`
`
`
`
`CERTIFICATION OF SERVICE
`
`
` The undersigned hereby certifies that the foregoing document was
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`served electronically via e-mail in its entirety on the following counsel of record
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`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
`
`
`Date: October 30, 2017
`
`
`
`
`
`
`
`/Hamad M. Hamad/
`
`Hamad M. Hamad, Reg. No. 64,641
`
`
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`
`
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