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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`BAKER HUGHES INCORPORATED
`and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioners
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`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.
`Patent Owner
`
`______________
`
`
`Case IPR2016-01496
`Patent 7,134,505
`______________
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`
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`MOTION FOR JOINDER WITH CASE IPR2016-00596
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`
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`27557001.1
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`
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`Case IPR2016-01496
`Patent 7,134,505
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners move
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`for joinder of this IPR (the “1496 Proceeding”) with instituted IPR2016-00596 (the
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`“596 Proceeding”), which involves the same patent, the same challenged claims,
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`the same proposed claim constructions, the same parties, and the same expert for
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`Petitioners. The primary reference (Lane-Wells) in the 1496 Proceeding—which
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`Petitioners discovered several months after filing the 596 Proceeding—is different
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`than the primary reference (Thomson) of the 596 Proceeding, but the secondary
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`references in the 1496 Proceeding (Hartley, Echols, and Ellsworth) are the same.
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`Petitioners have requested permission to file a motion to change the Due
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`Dates in the 596 Proceeding to approximate the Due Dates of the 1496 Proceeding
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`if it is instituted. But, if allowed, this scheduling change should only minimally
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`prejudice Patent Owner (if at all) because in the underlying litigation involving the
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`challenged patent, the parties have stipulated to a stay that would extend through
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`the conclusion of the 1496 Proceeding. Furthermore, no deposition of Petitioners’
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`expert in the 596 Proceeding has been scheduled, so consolidation would allow for
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`only one deposition of him. Petitioners are also agreeable to any deposition time-
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`limit, word-count, and page-limit increases that Patent Owner believes are
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`necessary, provided Petitioners receive comparable increases.
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`Case IPR2016-01496
`Patent 7,134,505
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On February 12, 2016, Petitioners filed IPR2016-00596 against claims
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`1-7, 11, and 14-27 of U.S. Pat. No. 7,134,505 (“the ’505 Patent”). The petition
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`raised eight grounds of unpatentability: (1) claims 1-7, 11, 14-22, and 24-26 are
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`anticipated by Thomson (SPE Paper 37482, published in 1997); (2) claim 15 is
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`obvious over Thomson and Hartley (U.S. Patent No. 5,449,039); (3) claims 23 and
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`27 are obvious over Thomson and Ellsworth (a paper co-authored by one of the
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`inventors (Themig) and published in the proceedings of a 1999 conference in
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`Calgary); (4) claim 11 is obvious over Thomson and Echols (U.S. Patent No.
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`5,375,662); (5) claims 1-7, 11, 14-22, and 24-26 are obvious over Thomson and
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`Brown (U.S. Patent No. 4,018,272); (6) claim 15 is obvious over Thomson,
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`Hartley, and Brown; (7) claims 23 and 27 are obvious over Thomson, Ellsworth,
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`and Brown; and (8) claim 11 is obvious over Thomson, Echols, and Brown.
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`2.
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`3.
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`Petitioners became aware of Lane-Wells on or around June 20, 2016.
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`Lane-Wells was published in 1955 as part of an annual publication
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`known as the Composite Catalog, and was not text-searchable. See Ex. 1002.
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`4.
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`Petitioners are not aware of a corresponding patent directed to the tool
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`(the “Tubing Port Valve”) in Lane-Wells on which Petitioners rely in this
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`proceeding.
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`Case IPR2016-01496
`Patent 7,134,505
`On July 30, 2016, prior to the one-year litigation bar of 35 U.S.C.
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`5.
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`§ 315(b), the 1496 Proceeding was filed. Its petition includes four grounds of
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`unpatentability: (1) claims 1-7 and 14-27 are obvious over Lane-Wells and
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`Ellsworth; (2) claim 15 is obvious over Lane-Wells, Ellsworth, and Hartley;
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`(3) claim 11 is obvious over Lane-Wells, Ellsworth, and Echols; and (4) claims 7
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`and 19 are obvious over Lane-Wells, Ellsworth, and the knowledge of a person of
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`ordinary skill in the art (“POSITA”), as reflected, for example, in Brown and
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`Thomson.
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`6.
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`On August 24, 216, the Board instituted the 596 Proceeding on all
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`challenged claims and all grounds. See IPR2016-00596 at Paper 13.
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`7.
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`On September 7, 2016, Petitioners (as Defendants) renewed a motion
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`to stay Civil Action No. 6:15-cv-724 (“the Litigation”), in which Rapid
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`Completions LLC, Patent Owner’s exclusive licensee and the acting party in these
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`proceedings, sued Petitioners for allegedly infringing the ’505 Patent. See Rapid
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`Completions LLC v. Baker Hughes Incorporated, et al., Civil Action No. 6:15-cv-
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`724-RWS-KNM at Dkt. No. 228.
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`8.
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`On September 9, 2016, Rapid Completions LLC filed a response,
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`opposing the stay, at least in part because Petitioners would not agree to estoppel
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`under 35 U.S.C. § 315(e)(2) based on the July 29, 2016 IPR filed by co-Defendant
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`Weatherford International, LLC (IPR2016-01517). See id. at Dkt. No. 229.
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`Patent 7,134,505
`On September 16, 2016, Rapid Completions LLC and Petitioners
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`9.
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`reached an agreement in which Rapid Completions LLC would agree to an
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`immediate stay “through all final written decisions in IPR trials instituted on
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`presently-filed [as of September 16] IPR petitions on the 505, 634, 774, 009, and
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`451 patents-in-suit,” and Petitioners would agree to be estopped under Section
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`315(e)(2) based on the Weatherford IPR. The parties filed a notice of this
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`stipulation and corresponding proposed order. See id. at Dkt. Nos. 233 and 233-1.
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`10. Since that filing, an issue arose about whether Petitioners should be
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`estopped based on the Weatherford IPR, as reflected in a joint notice the parties
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`filed on September 23, 2016. See id. at Dkt. Nos. 242 and 242-1; see also id. at
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`Dkt. Nos. 240 and 240-1, and 241 and 241-1. In the September 23, 2016 joint
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`notice, the parties indicate that they “believe that this issue is better addressed
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`when and if the stay is ultimately lifted should the issue then remain.” See id. at
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`Dkt. Nos. 242 and 242-1. Despite this issue, the parties remain in agreement that
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`the Litigation should be stayed through all final written decisions in both
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`proceedings. See id.
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`11. As of the date of this Motion, the Court has not yet granted the
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`September 23, 2016 stipulated stay.
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`12. On September 20, 2016, Petitioners requested the Board’s permission
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`to seek to change the Due Dates in the 596 Proceeding to approximate the Due
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`Dates of the 1496 Proceeding if it is instituted. The Board has indicated by email
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`that this request remains under consideration.
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`III. ARGUMENT
`The Board has discretion to decide whether to grant joinder. 35 U.S.C.
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`§ 315(c); 37 C.F.R. § 42.122(b). As indicated in the legislative history, the Board
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`determines whether to grant joinder on a case-by-case basis, taking into account
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`the particular facts of each case. See 157 Cong. Rec. S1376 (daily ed. Mar. 8,
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`2011) (statement of Sen. Kyl) (when determining whether and when to allow
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`joinder, the Office may consider factors including the breadth or unusualness of the
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`claim scope, claim construction issues, and consent of the patent owner). Relevant
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`to that determination, the patent trial regulations, including those for joinder, must
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`be construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding. 37 C.F.R. § 42.1(b).
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`A. Reasons Joinder Is Appropriate
`Joinder is appropriate here for several reasons. This motion is timely
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`because it is made within one month of August 24, 2016, the institution date of the
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`596 Proceeding (see 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a) and
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`42.1(a)), and it is not made to avoid the one-year litigation bar under Section
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`315(b). Same-party joinder (or issue joinder) has been recognized as appropriate
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`under Section 315(c). See Kofax, Inc. v. Uniloc USA, Inc., Case IPR2015-01207,
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`Case IPR2016-01496
`Patent 7,134,505
`slip op. at 8-9 (Paper 22) (P.T.A.B. June 2, 2016); Target Corp. v. Destination
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`Maternity Corp., Case IPR2014-00508, slip op. at 6-17 (Paper 28) (P.T.A.B. Feb.
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`12, 2015); Oxford Nanopore Techs. v. Univ. of Washington, Case IPR2015-00057,
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`slip op. at 22-24 (Paper 28) (P.T.A.B. April 27, 2015). However, should the Board
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`disagree, it may also consolidate the two proceedings under Section 315(d),
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`especially here, where both proceedings were filed prior to the one-year litigation
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`bar. See Target Corp., slip op. at 14-15 (Paper 28); 37 C.F.R. § 42.122(a).
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`Importantly, both proceedings involve the same parties, the same patent (the
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`’505 Patent), and the same challenged claims (1-7, 11, and 14-27). Further, the
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`1496 Proceeding does not present any different claim construction issues than the
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`596 Proceeding. Compare Case IPR2016-01496, Paper 1 at 25-30 with Case
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`IPR2016-00596, Paper 10 (authorized replacement petition) at 21-27. Thus,
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`joinder will conserve the parties’ and Board’s resources that might otherwise be
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`spent on duplicated efforts for the same or similar tasks.
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`Further, the parties have jointly agreed to staying the underlying litigation of
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`the ’505 Patent through the conclusion of the 1496 Proceeding. See supra at
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`Section II., material facts (MF) 9 and 10. Any change to the 596 Proceeding’s
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`schedule that may be required to accommodate joinder should therefore have
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`minimal, if any, prejudicial effect. Moreover, should the 1496 Proceeding be
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`instituted and no joinder granted, it would not be subject to termination under
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`Case IPR2016-01496
`Patent 7,134,505
`Section 315(e)(1) upon final written decision in the 596 Proceeding because the
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`1496 Proceeding’s grounds could not reasonably have been raised in the 596
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`Proceeding. For example, none of multiple, diligent searches conducted by skilled,
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`professional searchers prior to filing the 596 Proceeding discovered Lane-Wells,
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`nor should they have, given that Lane-Wells was not in a text-searchable form, and
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`does not appear to have been depicted in any patent.
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`The grounds in the two proceedings are similar in many respects. While the
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`primary references are different, the secondary references are the same.
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`In the 596 Proceeding, the primary reference is Thomson, a 1997 reference
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`that shows an assembly with ball-actuated sliding sleeves and multi-element, solid
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`body packers that was used for acidizing in a cased hole. See Case IPR2016-
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`00596, Paper 10 at 1-2. In the 1496 Proceeding, the primary reference is Lane-
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`Wells, an excerpt from a 1955 catalog insert that discusses the use of multiple ball-
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`actuated sliding sleeves (Tubing Port Valves) and packers to acidize in an open
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`hole. See Case IPR2016-01496, Paper 1 at 1-2.
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`The secondary references common to both proceedings are Hartley,
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`Ellsworth, and Echols. Hartley is used for the same purpose in both proceedings:
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`as teaching the plug of dependent claim 15, to the extent not already disclosed.
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`Compare Case IPR2016-00596, Paper 10 at 45-46 with Case 2016-01496, Paper 1
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`at 58-59. Echols is also used for the same purpose in both proceedings: as
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`teaching the first sleeve of dependent claim 11. Compare Case IPR2016-00596,
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`Paper 10 at 49-53 with Case 2016-01496, Paper 1 at 59-62. Ellsworth is used in
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`the 596 Proceeding for its teaching of open hole completions to show why the use
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`of Thomson’s assembly in an open hole is obvious, thus invalidating dependent
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`claims 23 and 27. See Case IPR2016-00596, Paper 10 at, e.g., 46-49. In the 1496
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`Proceeding, Lane-Wells already teaches the use of its assembly in an open hole,
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`and Petitioners rely on Ellsworth to render obvious the use of solid body packers in
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`the Lane-Wells assembly, thus meeting those limitations of the same claims (and
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`all other challenged claims). See Case IPR2016-01496, Paper 1 at, e.g., 35-39.
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`But there are no inconsistencies between the uses of Ellsworth in both proceedings.
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`In addition, the 1496 Proceeding uses the solid body packers in both
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`Thomson and Brown as reflecting the solid body packer knowledge of a POSITA
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`with respect to the compression ring and piston limitations of claims 7 and 19 (see
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`Case IPR2016-01496, Paper 1 at 63-67), which is consistent with how they are
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`used in the 596 Proceeding to teach those same solid body packer limitations (see
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`Case IPR2016-00596, Paper 10 at, e.g., 33, 39, 42-43 (for Thomson) and 53-59
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`(for Brown)).
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`B.
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`Identification of New Grounds of Unpatentability Asserted in the
`1496 Proceeding
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`The grounds of unpatentability in the 1496 Proceeding are described above
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`in MF 5 in Section II, and the difference between them and the unpatentability
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`grounds in the 596 Proceedings is clear through a comparison of MF 5 to MF 1.
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`See also supra at Section III.A.
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`Impact on Trial Schedule of 596 Proceeding
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`C.
`The schedule for the trial of the 596 Proceeding is set forth in Paper 14 of
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`Case IPR2016-00596. Petitioners have requested permission to seek to change the
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`Due Dates in that schedule by 5 ½ months, to approximate what the Due Dates of
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`the 1496 Proceeding may be if instituted. While this would extend the trial
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`schedule of the 596 Proceeding beyond one year, such a change is explicitly
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`authorized in Section 316(a)(11). Furthermore, prejudice to Patent Owner is
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`minimized through Patent Owner’s own agreement to a stay through the
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`conclusion of the 1496 Proceeding. See supra at MF 9, 10.
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`D. Briefing and Discovery
`Petitioners will agree to whatever word-count or page-limit increases Patent
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`Owner desires for its relevant briefing (i.e., its response to the petition, motion to
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`amend the patent, reply to Petitioners’ opposition to any motion to amend, motion
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`to exclude evidence and any supporting reply), provided Petitioners are given
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`commensurate word-count and/or page-limit increases for its relevant briefing.
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`Patent Owner has not yet sought any discovery from Petitioners in the 596
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`Proceeding, other than to indicate today a desire to take Dr. Daneshy’s deposition.
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`Dr. Daneshy is Petitioners’ expert in both proceedings. As a result, consolidation
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`Patent 7,134,505
`could allow for a single deposition of Dr. Daneshy instead of two. Petitioners
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`would agree to reasonable changes to the direct and redirect examination time
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`limits for Dr. Daneshy’s deposition, to allow Patent Owner to cover the grounds in
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`both proceedings, provided Patent Owner grants Petitioners similar reasonable
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`increases in cross-examination time for Patent Owner’s expert(s). Should Patent
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`Owner similarly use a single expert for both proceedings, Petitioners would agree
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`to a single deposition, with commensurate time-limit changes.
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`IV. CONCLUSION
`Joinder is appropriate for the reasons above.
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`Dated: September 26, 2016
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`Respectfully submitted,
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`/Mark T. Garrett/
`Mark T. Garrett, Lead Counsel
`Reg. No. 44,699
`Tel: 512.536.3031; Fax: 512.536.4598
`mark.garrett@nortonrosefulbright.com
`
`Norton Rose Fulbright US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
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`Counsel for Petitioners
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
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`26, 2016, a complete copy of MOTION FOR JOINDER WITH CASE IPR2016-
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`00596 was served on Patent Owner’s Exclusive Licensee via email (by consent), as
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`follows:
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`mray-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`kconklin-PTAB@skgf.com
`ptab@skgf.com
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`
`
`/Mark T. Garrett/
`Mark T. Garrett(Reg. No. 44,699)
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`27557001.1