Paper 80
`Trials@uspto.gov
`Entered: September 26, 2018
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`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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)
`Case IPR2016-005983 (Patent 7,861,774 B2)4
`____________
`
`Before SCOTT A. DANIELS, NEIL T. POWELL and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
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`
`DECISION
`PETITIONER’S MOTION FOR LEAVE TO FILE UPDATED
`MANDATORY NOTICES
`35 U.S.C. § 312(a)(2) and 37 C.F.R. §§ 42.8, 71
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`1 IPR2016-001496 has been joined with IPR2016-00596.
`2 IPR2016-001505 has been joined with IPR2016-00597.
`3 IPR2016-001506 has been joined with IPR2016-00598.
`4 This Order applies to all three cases. The parties are not authorized
`to use this style heading for any subsequent papers.
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`Case IPR2016-00596 (Patent 7,134,505 B2)
`Case IPR2016-00597 (Patent 7,543,634 B2)
`Case IPR2016-00598 (Patent 7,861,774 B2)
`In each of these cases, pursuant to our authorization, Petitioner filed a
`Motion for Leave to File Updated Mandatory Notices. See IPR2016-00596
`Paper 71 (“Motion” or “Mot.”). 5 In the Motion, Petitioner seeks
`authorization to file updated mandatory notices outside the 21-day period set
`forth in 37 C.F.R. § 42.8(a)(3). Mot. 1. Petitioner requests that we use our
`authority under at least one of 37 C.F.R. §§ 42.5(b), (c)(1), and (c)(3). In
`opposition to Petitioner’s Motion, Patent Owner filed a Response to
`Petitioners’ Motion for Leave to File Updated Mandatory Notices.
`IPR2016-00596 Paper 77 (“Resp.”).
`Petitioner explains that “[o]n July 3, 2017, Baker Hughes
`Incorporated was converted into Baker Hughes, a GE Company, LLC
`(‘BHGE, LLC’).” Mot. 1. As such, Petitioner filed updated mandatory
`notices reporting the conversion and adding Baker Hughes, a GE Company
`(“BHGE”) as a real party-in-interest. Id.; IPR2016-00596 Paper 62.
`Petitioner elaborates that “[f]ollowing the conversion, General Electric (a
`publicly traded company) became a partial owner of both BHGE, LLC and
`BHGE.” Mot. 1. Petitioner asserts that when it updated its mandatory
`notices, “a good faith determination was made by the undersigned that
`General Electric was not [a real party-in-interest].” Id. at 1–2. Stating
`“[t]hat determination has not changed,” Petitioner seeks nonetheless “to
`eliminate any [real party-in-interest] issue from this proceeding” by filing
`updated mandatory notices listing General Electric as a real party-in-interest.
`Id. at 2. Noting that the real party-in-interest issue is not jurisdictional,
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`5 Because the issues presented in each case are the same, we discuss and cite
`only the papers filed in IPR2016-00596. Our Decision, nonetheless, applies
`to all three cases.
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`2
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`Case IPR2016-00596 (Patent 7,134,505 B2)
`Case IPR2016-00597 (Patent 7,543,634 B2)
`Case IPR2016-00598 (Patent 7,861,774 B2)
`Petitioner asserts that allowing it to update its mandatory notices to list
`General Electric as a real party-in-interest would not prejudice Patent Owner
`and would leave the Board adequate time to address potential conflicts of
`interest. Id. at 2–4.
`Patent Owner responds that we should deny Petitioner’s motion and
`dismiss the Petitions. Resp. 2. Patent Owner argues that Petitioner did not
`explain why it did not file updated mandatory notices within the 21-day
`deadline of 37 C.F.R. § 42.8(a)(3). Id. at 1. Patent Owner argues that
`Petitioner’s contention that General Electric should now be listed as a real
`party-in-interest does not reconcile with Petitioner’s assertions that it does
`not believe General Electric constitutes a real party-in-interest. Id. Patent
`Owner further argues that naming real parties-in-interest is an important
`matter. Id. at 1–2. Patent Owner argues that whether it would suffer
`prejudice “is difficult to determine” because “[i]t is still not clear why
`Petitioners changed their mind regarding naming [General Electric] as [a
`real party-in-interest].” Id. at 2.
`We find Petitioner’s arguments more persuasive than Patent Owner’s.
`Contrary to Patent Owner’s argument (Resp. 1), the Motion indicates the
`reason for Petitioner’s delay in listing General Electric as a real party-in-
`interest. Specifically, the delay occurred while Petitioner considered the
`nature of General Electric’s relationship to these cases. See Mot. 2.
`Additionally, it does not appear that Petitioner’s brief delay while
`ruminating creates any prejudice to Patent Owner. As Petitioner notes,
`adding General Electric as a real party-in-interest benefits Patent Owner by
`subjecting General Electric to the estoppel provisions of 35 U.S.C. § 315,
`without affecting any of the grounds pending in the trial. Mot. 2.
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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)
`Case IPR2016-00598 (Patent 7,861,774 B2)
`Furthermore, contrary to Patent Owner’s suggestion (Resp. 2), we have no
`reason to doubt that a party may believe an entity does not constitute a real
`party-in-interest, but still seek to list that entity as a real party-in-interest out
`of an abundance of caution (Mot. 2). Regardless of Patent Owner’s concern
`about why Petitioner changed its mind to list General Electric as a real party-
`in-interest, it appears Petitioner did so in a forthright manner, and the end
`result would be a benefit to Patent Owner.
`As Patent Owner asserts, the requirement in § 312(a)(2) for the
`Petition to identify all real parties in interest is important. Resp. 1–2. This
`requirement serves the following “core functions”:
`to assist members of the Board in identifying potential conflicts,
`and to assure proper application of the statutory estoppel
`provisions. The latter, in turn, seeks to protect patent owners
`from harassment via successive petitions by the same or related
`parties, to prevent parties from having a “second bite at the
`apple,” and to protect the integrity of both the USPTO and
`Federal Courts by assuring that all issues are promptly raised and
`vetted.
`Trial Practice Guide at 48759. In our view, absent any indication of an
`attempt to circumvent estoppel rules, a petitioner’s bad faith, gamesmanship,
`or prejudice to a patent owner caused by the delay, permitting a petitioner to
`amend challenged RPI disclosures while maintaining the original filing date
`promotes the core functions described in the Trial Practice Guide, while also
`promoting “the just, speedy, and inexpensive resolution of our proceedings.”
`37 C.F.R. § 42.1; see Elekta, Inc. v. Varian Medical Systems, Inc. Case
`IPR2015-01401, slip op. 9 (PTAB Dec. 31, 2015) (Paper 19).
`Here, we do not find that Patent Owner will experience prejudice, or
`that Petitioner attempted to circumvent estoppel rules, acted in bad faith, or
`engaged in gamesmanship. After a few weeks to consider the matter,
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`4
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`Case IPR2016-00596 (Patent 7,134,505 B2)
`Case IPR2016-00597 (Patent 7,543,634 B2)
`Case IPR2016-00598 (Patent 7,861,774 B2)
`Petitioner volunteered to list General Electric as a real party-in-interest. By
`itself, this does not convince us that Petitioner behaved inappropriately.
`On the whole, we find it in the interest of justice to excuse Petitioner’s
`delay in updating its mandatory notices. Doing so avoids significant
`prejudice to Petitioner (i.e., dismissal of its Petitions), without apparent
`prejudice to Patent Owner. Therefore, under 37 C.F.R. § 42.5(c)(3),
`Petitioner’s late filing of its updated mandatory notices is excused.
`Based on the foregoing, it is hereby
`ORDERED that Petitioner’s Motion for Leave to File Updated
`Mandatory Notices is granted;
`FURTHER ORDERED that the filing dates of Petitioner’s Petitions
`shall remain unchanged.
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`5
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`Case IPR2016-00596 (Patent 7,134,505 B2)
`Case IPR2016-00597 (Patent 7,543,634 B2)
`Case IPR2016-00598 (Patent 7,861,774 B2)
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`PETITIONER:
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`Mark Garrett
`Eagle Robinson
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
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`PATENT OWNER:
`
`Hamad Hamad
`CALDWELL CASSADY CURRY
`hhamad@caldwellcc.com
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
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`6
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