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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`
`BAKER HUGHES INCORPORATED and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
`
`___________________
`
`Case IPR2016-01506
`Patent 7,861,774
`___________________
`
`
`
`EXCLUSIVE LICENSEE RAPID COMPLETIONS LLC’S
`RESPONSE TO PETITIONERS’ MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`Before the Board is Petitioners’ Motion to Submit Supplemental Information
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`with respect to proposed exhibits 1023-1028. Respondent opposes the motion only
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`with respect to Exhibit 1023.
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`Under 37 C.F.R. § 42.123, a party may file a motion to submit supplemental
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`Information, but such a motion is not granted as a matter of course. Rather, the
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`movant bears the burden of demonstrating that it is entitled to the requested relief.
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`For example, a movant may fail to meet its burden if it fails to show that the
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`proposed supplemental evidence was unavailable at the time the Petition was filed.
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`Similarly, a movant fails to meet its burden if the supplemental information
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`introduces new theories or arguments not present in the original Petition. See
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`Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, Paper 24 at 5
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`(PTAB August 5, 2013). After all, a Petitioner is required to submit all affidavits
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`or declarations supporting a petition with the petition itself. 35 U.S.C. §
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`312(a)(3)(B).
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`One of the key issues in this proceeding is whether the asserted Lane-Wells
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`reference qualifies as prior art. The Petition is silent as to why Petitioners contend
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`that Lane-Wells qualifies as prior art. However, Petitioners did submit the
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`declaration of Margaret Kieckhefer, which asserted that the reference is stored in
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`the Library of Congress. The Panel credited this fact when it instituted review.
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`IPR2016-01506, Institution Decision at 8. Respondent has since explained that the
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`
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`mere fact that a document is stored in the Library of Congress is insufficient to
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`qualify the document as prior art. Mot. Reconsider at 9-11.
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`In response to Respondent’s criticisms of their prior art theory, Petitioners
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`now offer the declaration of Velma J’Nette Davis-Nichols (Ex. 1023) as
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`supplemental evidence allegedly establishing Lane-Wells as prior art. Ms. Davis-
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`Nichols is not an employee of the Library of Congress and she offers no testimony
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`related to the practices of the Library of Congress. Indeed, Petitioners appear to
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`have abandoned any prior art theory based on Lane-Wells’ location in the Library
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`of Congress as they have not offered any supplemental evidence as to how Lane-
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`Wells is accessible or searchable within the Library of Congress. If Exhibit 1023
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`is relevant at all, it would only be to support some as yet undisclosed new theory as
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`to why Lane-Wells is prior art based on the actions of Gulf Publishing Company
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`LLC, not the Library of Congress.
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`Petitioners offer no excuse as to why exhibit 1023 could not have been
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`submitted with the Petition. The present motion is not an opportunity for
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`Petitioners to change theories or make arguments that the wish they had made
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`when they filed their petition. If Petitioners were allowed to submit this evidence
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`now, the result would be prejudicial to Respondent. Respondent is currently
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`working to prepare its Patent Owner Response based on the theories espoused in
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`the Petition. Allowing this new evidence now would require Respondent to
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`
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`theorize as to what new arguments Petitioners may make in their reply as to why
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`this evidence establishes Lane-Wells as prior art,1 and then to investigate and take
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`discovery regarding the sales and library practices of an entirely new entity—Gulf
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`Publishing Company LLC. That result is unfair to Respondent and contrary to the
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`goals of inter partes review.
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`Petitioners’ attempted reliance on this new evidence demonstrates that the
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`Petition itself is fatally flawed. Petitioners must live with that flaw; now is not the
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`1 This is no small task. Petitioners assert that Ex. 1023 proves that Lane-
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`Wells was “published, searchable, and available to the public.” However, Exhibit
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`1023 provides no evidence as to how Lane-Wells was “searchable.” Indeed, this
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`declaration suffers from the same defects as the Kieckhefer declaration. Similarly,
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`although Ms. Davis-Nichols testifies that Gulf Publishing allowed individuals to
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`request access to copies of composite catalogs, it is unclear if Petitioners assert that
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`this vague assertion establishes Lane-Wells as publicly available. In short, Exhibit
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`1023, on its face, does not establish Lane-Wells as prior art under any well known
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`precedent. It is unclear what case law and factual inferences Petitioners are relying
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`on to support their conclusion that this exhibit establishes Lane-Wells as prior art.
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`
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`
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`time for a do-over. Accordingly, Respondent respectfully requests that the present
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`motion be denied with respect to exhibit 1023.
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`Dated: March 17, 2017
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`
`
`
` Respectfully submitted,
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`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
`
`
`
`
`
`
`
`
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`CERTIFICATION OF SERVICE
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`
`
` 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:
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`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: March 17, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Hamad M. Hamad/
`
`Hamad M. Hamad, Reg. No. 64,641
`
`
`
`
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