`
`
`
`
`Paper No 69
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAKER HUGHES, A GE COMPANY, LLC
`and
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.
`Patent Owner
`
`______________
`
`Case IPR2016-01506
`Patent 7,861,774
`______________
`
`
`PETITIONERS’ MOTION FOR LEAVE TO FILE UPDATED
`MANDATORY NOTICES
`
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`On September 25, 2017, the Board authorized Petitioners to file a motion for
`
`leave to file, outside the 21-day period specified in Rule 42.8(a)(3), updated
`
`mandatory notices listing General Electric Company (“General Electric”) as a real
`
`party-in-interest, pursuant to Petitioners’ emailed request to the Board of August
`
`25, 2017. Petitioners request that the Board authorize the filing under one or more
`
`of Rules 42.5(b), (c)(1), and (c)(3) because it will promote efficiency, there will be
`
`no resulting prejudice to Rapid Completions LLC (“Rapid Completions,” acting
`
`entity in this proceeding) or Patent Owner, and the Board will have sufficient time
`
`to address any potential conflicts.
`
`II.
`
`FULL STATEMENT OF THE REASONS FOR THE RELIEF
`REQUESTED
`A. Background
`On July 3, 2017, Baker Hughes Incorporated was converted into Baker
`
`Hughes, a GE Company, LLC (“BHGE, LLC”). See Paper 60 filed in IPR2015-
`
`00598. On July 24, 2017, Petitioners filed updated mandatory notices, reporting
`
`this conversion and adding Baker Hughes, a GE Company (“BHGE”)—a publicly
`
`traded company that became a partial owner of BHGE, LLC following the
`
`conversion—as a real party-in-interest (RPI) under Rule 42.8(b)(3). See id.
`
`Following the conversion, General Electric (a publicly traded company)
`
`became a partial owner of both BHGE, LLC and BHGE. However, when those
`
`
`
`1
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`updated mandatory notices were filed, a good faith determination was made by the
`
`undersigned that General Electric was not an RPI.
`
`That determination has not changed, but Petitioners now seek to file updated
`
`mandatory notices adding General Electric as an RPI to eliminate any RPI issue
`
`from this proceeding, and not as a concession that General Electric is, in fact, an
`
`RPI.
`
`As reflected in Petitioners’ August 25, 2017 email to the Board, Rapid
`
`Completions has indicated it believes the petition in this proceeding should be
`
`dismissed based on Petitioners’ “failure” to make this request within 21 days after
`
`July 3, 2017.
`
`B. No Prejudice to Rapid Completions
`The requested change does not alter any of the grounds on which trial was
`
`instituted. It also expressly subjects General Electric to the estoppel provisions of
`
`Section 315 of Title 35, benefitting Rapid Completions (and Patent Owner). See
`
`Aerospace Communications Holdings Co. v. Armor All/Step Products Co., Case
`
`IPR2016-00441, slip op. at 6 (P.T.A.B. June 28, 2016) (Paper 12).
`
`C. This Issue Is Not Jurisdictional
`Rapid Completions’ indication that the petition should be dismissed based
`
`on Petitioners’ request being more than 21 days after July 3, 2017 is not consistent
`
`with the Board’s precedential decision of Lumentum Holdings, Inc. v. Capella
`
`
`
`2
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`Photonics, Inc., Case IPR2015-00739, slip op. at 4-6 (P.T.A.B. Mar. 4, 2016)
`
`(Paper 38) (precedential). There, the Petition was filed on February 14, 2015, and
`
`identified the petitioner as the sole RPI. Id. at 2. Prior to institution, the petitioner
`
`was renamed and additional entities became RPIs related to a reorganization. Id.
`
`However, the Petitioner did not seek to amend its mandatory notices until a few
`
`weeks after the August 25, 2015 institution decision, and outside of the 21-day
`
`period specified in Rule 42.8(a)(3). Id. at 2-3.
`
`The Board authorized the Patent Owner to file a motion to terminate the
`
`proceeding, in which the Patent Owner argued that the Petitioner failed to meet the
`
`requirement of Section 312(a)(2), thereby depriving the Board of jurisdiction to
`
`institute trial. Id. at 3-4. The Board denied the motion to terminate, ruling that a
`
`lapse in a petitioner’s compliance with the requirements of Section 312(a) “does
`
`not deprive the Board of jurisdiction over the proceeding, or preclude the Board
`
`from permitting such lapse to be rectified.” Id. at 5.
`
`Here, and assuming (for the sake of argument) that Section 312 applies to
`
`the Board’s consideration of the petition after institution, at least the same
`
`reasoning supports the Board’s consideration of Petitioners’ request.
`
`D. The Board Has Time to Address Any Potential Conflicts
`As explained in the Trial Practice Guide, one of the “core functions” of the
`
`requirement to identify RPIs is “to assist members of the Board in identifying
`
`
`
`3
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`potential conflicts.” 77 Fed. Reg. 48756, 48759 (Aug. 12, 2012). Given that
`
`August 25, 2017 is at least two months prior to the oral hearing date for this
`
`proceeding, Petitioners respectfully submit the Board has sufficient time to make
`
`this assessment. See Valeo North America, Inc. v. Magna Electronics, Inc., Case
`
`IPR2014-00220, slip op. at 4 (P.T.A.B. Jan. 8, 2015) (Paper 45) (granting
`
`Petitioner’s late updated mandatory notices request that occurred two months to
`
`two months and one day prior to oral hearings).
`
`III. CONCLUSION
`Petitioners’ respectfully request that the Board exercise its authority under
`
`Rule 42.5 and grant Petitioners’ request to file updated mandatory notices, adding
`
`General Electric as a real party-in-interest, outside the 21-day time period specified
`
`in Rule 42.8(a)(3). Granting this request will promote efficiency by precluding
`
`any need for the Board or parties to expend effort and expense litigating whether
`
`General Electric is an RPI. Denying this request—which does not seek to change
`
`the substance of the case, and which leaves the Board with adequate time to
`
`address any potential conflicts—would produce a result contrary to the interests of
`
`justice. See Lumentum Holdings, slip op. at 5.
`
`Dated: September 29, 2017
`
`Respectfully submitted,
`
`/Mark T. Garrett/
`Mark T. Garrett
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
`
`29, 2017, a complete copy of MOTION FOR LEAVE TO FILE UPDATED
`
`MANDATORY NOTICES was served on Patent Owner’s Exclusive Licensee via
`
`email (by consent), as follows:
`
`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)
`
`28748066.1
`
`
`
`
`
`
`
`
`
`