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 IPR2016-01506
`Patent 7,861,774
`______________
`
`
`
`MOTION FOR JOINDER WITH CASE IPR2016-00598
`
`
`
`27547994.1
`
`
`
`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 IPR2016-01506
`Patent 7,861,774
`______________
`
`
`
`MOTION FOR JOINDER WITH CASE IPR2016-00598
`
`
`
`27547994.1
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`
`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 “1506 Proceeding”) with instituted IPR2016-00598 (the
`
`“598 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 1506 Proceeding—which
`
`Petitioners discovered several months after filing the 598 Proceeding—is different
`
`than the primary reference (Thomson) of the 598 Proceeding, but the secondary
`
`references in both proceedings (Ellsworth and Hartley) are the same.
`
`Petitioners have requested permission to file a motion to change the Due
`
`Dates in the 598 Proceeding to approximate the Due Dates of the 1506 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 1506 Proceeding. Furthermore, Patent Owner has not sought
`
`to depose Petitioners’ expert in the 598 Proceeding, 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.
`
`27547994.1
`
`1
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On February 19, 2016, Petitioners filed IPR2016-00598 against claims
`
`1-16 of U.S. Pat. No. 7,861,774 (“the ’774 Patent”). The petition raised two
`
`grounds of unpatentability: (1) claims 1-16 are obvious over Thomson (SPE Paper
`
`37482, published in 1997) and Ellsworth (a paper co-authored by one of the
`
`inventors (Themig) and published in the proceedings of a 1999 conference in
`
`Calgary); and (2) claim 15 is obvious over Thomson, Ellsworth, and Hartley (U.S.
`
`Patent No. 5,449,039).
`
`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.
`
`5.
`
`On July 30, 2016, prior to the one-year litigation bar of 35 U.S.C.
`
`§ 315(b), the 1506 Proceeding was filed. Its petition includes two grounds of
`
`unpatentability: (1) claims 1-16 are obvious over Lane-Wells and Ellsworth; and
`
`(2) claim 15 is obvious over Lane-Wells, Ellsworth, and Hartley.
`
`6.
`
`On August 22, 216, the Board instituted the 598 Proceeding on all
`
`challenged claims and all grounds. See IPR2016-00598 at Paper 8.
`
`27547994.1
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`2
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`
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`Case IPR2016-01506
`Patent 7,861,774
`On September 7, 2016, Petitioners (as Defendants) renewed a motion
`
`7.
`
`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 ’774 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 (IPR2016-01509). See id. at Dkt. No. 229.
`
`9.
`
`On September 16, 2016, Rapid Completions LLC and Petitioners
`
`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 a corresponding proposed order. See id. at Dkt. Nos. 233 and 233-
`
`1. As of the date of this Motion, the Court has not yet granted the stipulated stay.
`
`10. On September 20, 2016, Petitioners requested the Board’s permission
`
`to seek to change the Due Dates in the 598 Proceeding to approximate the Due
`
`27547994.1
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`3
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`
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`Case IPR2016-01506
`Patent 7,861,774
`Dates of the 1506 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 22, 2016, the institution date of the
`
`598 Proceeding (see 37 C.F.R. § 42.122(b)), 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, slip op. at 8-9 (Paper 22) (P.T.A.B. June 2,
`
`27547994.1
`
`4
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`2016); Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, slip op.
`
`at 6-17 (Paper 28) (P.T.A.B. Feb. 12, 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
`
`’774 Patent), and the same challenged claims (1-16). Further, the 1506 Proceeding
`
`does not present any different claim construction issues than the 598 Proceeding.
`
`Compare Case IPR2016-01506, Paper 1 at 20-22 with Case IPR2016-00598, Paper
`
`1 at 24-26. 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 ’774 Patent through the conclusion of the 1506 Proceeding. See supra at
`
`Section II., material fact (MF) 9. Any change to the 598 Proceeding’s schedule
`
`that may be required to accommodate joinder should therefore have minimal, if
`
`any, prejudicial effect. Moreover, should the 1506 Proceeding be instituted and no
`
`joinder granted, it would not be subject to termination under Section 315(e)(1)
`
`upon final written decision in the 598 Proceeding because the 1506 Proceeding’s
`
`grounds could not reasonably have been raised in the 598 Proceeding. For
`
`example, none of multiple, diligent searches conducted by skilled, professional
`
`27547994.1
`
`5
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`searchers prior to filing the 598 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 598 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-
`
`00598, Paper 1 at 1-2. In the 1506 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 IPR2016-01506, Paper 1 at 1-2.
`
`The main secondary reference—Ellsworth—is the same in both proceedings,
`
`though the specific teachings of Ellsworth on which Petitioners rely in the
`
`proceedings does vary for some claims. For example, in the 598 Proceeding,
`
`Petitioners rely on Ellsworth’s teaching of open hole completions as rendering the
`
`use of Thomson’s assembly in an open hole obvious, thus invalidating independent
`
`claim 1. See Case IPR2016-00598, Paper 1 at, e.g., 25-28. In the 598 Proceeding,
`
`Petitioners also rely on Ellsworth to render obvious the use of solid body packers
`
`without slips (in place of Thomson’s solid body packers), thus invaliditing
`
`27547994.1
`
`6
`
`
`
`Case IPR2016-01506
`Patent 7,861,774
`independent claim 6. See Case IPR2016-00598, Paper 1 at, e.g., 39-41. In the
`
`1506 Proceeding, Lane-Wells already teaches the use of its assembly in an open
`
`hole, and—similar to claim 6 in the 598 Proceeding—Petitioners rely on Ellsworth
`
`to render obvious the use of solid body packers in the Lane-Wells assembly, thus
`
`invalidating the same claim. See Case IPR2016-01506, Paper 1 at, e.g., 31-35.
`
`But there are no inconsistencies between the uses of Ellsworth in both
`
`proceedings. Furthermore, the other secondary reference in both proceedings—
`
`Hartley—is used the same way in both proceedings.
`
`B.
`
`Identification of New Grounds of Unpatentability Asserted in the
`1506 Proceeding
`
`The grounds of unpatentability in the 1506 Proceeding are described above
`
`in MF 5 in Section II, and the difference between them and the unpatentability
`
`grounds in the 598 Proceedings is clear through a comparison of MF 5 to MF 1.
`
`See also supra at Section III.A.
`
`Impact on Trial Schedule of 598 Proceeding
`
`C.
`The schedule for the trial of the 598 Proceeding is set forth in Paper 9 of
`
`Case IPR2016-00598. 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 1506 Proceeding may be if instituted. While this would extend the trial
`
`schedule of the 598 Proceeding beyond one year, such a change is explicitly
`
`authorized in Section 316(a)(11). Furthermore, prejudice to Patent Owner is
`
`27547994.1
`
`7
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`
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`Case IPR2016-01506
`Patent 7,861,774
`minimized through Patent Owner’s own agreement to a stay through the
`
`conclusion of the 1506 Proceeding. See supra at MF 9.
`
`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 598
`
`Proceeding. Dr. Daneshy is Petitioners’ expert in both proceedings. Should Patent
`
`Owner request his deposition in the 598 Proceeding, consolidation 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.
`
`
`
`
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`27547994.1
`
`8
`
`
`
`IV. CONCLUSION
`Joinder is appropriate for the reasons above.
`
`Case IPR2016-01506
`Patent 7,861,774
`
`Dated: September 22, 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
`
`27547994.1
`
`9
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
`
`22, 2016, a complete copy of MOTION FOR JOINDER WITH CASE IPR2016-
`
`00598 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)
`
`27547994.1
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