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