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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.
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`PACKERS PLUS ENERGY SERVICES, INC.
`Patent Owner
`
`______________
`
`
`Case IPR2016-01506
`Patent 7,861,774
`______________
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`
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`MOTION FOR JOINDER WITH CASE IPR2016-00598
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`27547994.1
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`Case IPR2016-01506
`Patent 7,861,774
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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 “1506 Proceeding”) with instituted IPR2016-00598 (the
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`“598 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 1506 Proceeding—which
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`Petitioners discovered several months after filing the 598 Proceeding—is different
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`than the primary reference (Thomson) of the 598 Proceeding, but the secondary
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`references in both proceedings (Ellsworth and Hartley) 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 598 Proceeding to approximate the Due Dates of the 1506 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 1506 Proceeding. Furthermore, Patent Owner has not sought
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`to depose Petitioners’ expert in the 598 Proceeding, so consolidation would allow
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`for only one deposition of him. Petitioners are also agreeable to any deposition
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`time-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 IPR2016-01506
`Patent 7,861,774
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On February 19, 2016, Petitioners filed IPR2016-00598 against claims
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`1-16 of U.S. Pat. No. 7,861,774 (“the ’774 Patent”). The petition raised two
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`grounds of unpatentability: (1) claims 1-16 are obvious over Thomson (SPE Paper
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`37482, published in 1997) 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); and (2) claim 15 is obvious over Thomson, Ellsworth, and Hartley (U.S.
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`Patent No. 5,449,039).
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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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`5.
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`On July 30, 2016, prior to the one-year litigation bar of 35 U.S.C.
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`§ 315(b), the 1506 Proceeding was filed. Its petition includes two grounds of
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`unpatentability: (1) claims 1-16 are obvious over Lane-Wells and Ellsworth; and
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`(2) claim 15 is obvious over Lane-Wells, Ellsworth, and Hartley.
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`6.
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`On August 22, 216, the Board instituted the 598 Proceeding on all
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`challenged claims and all grounds. See IPR2016-00598 at Paper 8.
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`Patent 7,861,774
`On September 7, 2016, Petitioners (as Defendants) renewed a motion
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`7.
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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 ’774 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 (IPR2016-01509). See id. at Dkt. No. 229.
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`9.
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`On September 16, 2016, Rapid Completions LLC and Petitioners
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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 a corresponding proposed order. See id. at Dkt. Nos. 233 and 233-
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`1. As of the date of this Motion, the Court has not yet granted the stipulated stay.
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`10. On September 20, 2016, Petitioners requested the Board’s permission
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`to seek to change the Due Dates in the 598 Proceeding to approximate the Due
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`Dates of the 1506 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 22, 2016, the institution date of the
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`598 Proceeding (see 37 C.F.R. § 42.122(b)), and it is not made to avoid the one-
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`year litigation bar under Section 315(b). Same-party joinder (or issue joinder) has
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`been recognized as appropriate under Section 315(c). See Kofax, Inc. v. Uniloc
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`USA, Inc., Case IPR2015-01207, slip op. at 8-9 (Paper 22) (P.T.A.B. June 2,
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`2016); Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, slip op.
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`at 6-17 (Paper 28) (P.T.A.B. Feb. 12, 2015). However, should the Board disagree,
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`it may also consolidate the two proceedings under Section 315(d), especially here,
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`where both proceedings were filed prior to the one-year litigation bar. See Target
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`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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`’774 Patent), and the same challenged claims (1-16). Further, the 1506 Proceeding
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`does not present any different claim construction issues than the 598 Proceeding.
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`Compare Case IPR2016-01506, Paper 1 at 20-22 with Case IPR2016-00598, Paper
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`1 at 24-26. Thus, joinder will conserve the parties’ and Board’s resources that
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`might otherwise be 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 ’774 Patent through the conclusion of the 1506 Proceeding. See supra at
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`Section II., material fact (MF) 9. Any change to the 598 Proceeding’s schedule
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`that may be required to accommodate joinder should therefore have minimal, if
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`any, prejudicial effect. Moreover, should the 1506 Proceeding be instituted and no
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`joinder granted, it would not be subject to termination under Section 315(e)(1)
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`upon final written decision in the 598 Proceeding because the 1506 Proceeding’s
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`grounds could not reasonably have been raised in the 598 Proceeding. For
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`example, none of multiple, diligent searches conducted by skilled, professional
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`Patent 7,861,774
`searchers prior to filing the 598 Proceeding discovered Lane-Wells, nor should
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`they have, given that Lane-Wells was not in a text-searchable form, and does not
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`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 598 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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`00598, Paper 1 at 1-2. In the 1506 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 IPR2016-01506, Paper 1 at 1-2.
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`The main secondary reference—Ellsworth—is the same in both proceedings,
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`though the specific teachings of Ellsworth on which Petitioners rely in the
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`proceedings does vary for some claims. For example, in the 598 Proceeding,
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`Petitioners rely on Ellsworth’s teaching of open hole completions as rendering the
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`use of Thomson’s assembly in an open hole obvious, thus invalidating independent
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`claim 1. See Case IPR2016-00598, Paper 1 at, e.g., 25-28. In the 598 Proceeding,
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`Petitioners also rely on Ellsworth to render obvious the use of solid body packers
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`without slips (in place of Thomson’s solid body packers), thus invaliditing
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`Case IPR2016-01506
`Patent 7,861,774
`independent claim 6. See Case IPR2016-00598, Paper 1 at, e.g., 39-41. In the
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`1506 Proceeding, Lane-Wells already teaches the use of its assembly in an open
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`hole, and—similar to claim 6 in the 598 Proceeding—Petitioners rely on Ellsworth
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`to render obvious the use of solid body packers in the Lane-Wells assembly, thus
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`invalidating the same claim. See Case IPR2016-01506, Paper 1 at, e.g., 31-35.
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`But there are no inconsistencies between the uses of Ellsworth in both
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`proceedings. Furthermore, the other secondary reference in both proceedings—
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`Hartley—is used the same way in both proceedings.
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`B.
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`Identification of New Grounds of Unpatentability Asserted in the
`1506 Proceeding
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`The grounds of unpatentability in the 1506 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 598 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 598 Proceeding
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`C.
`The schedule for the trial of the 598 Proceeding is set forth in Paper 9 of
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`Case IPR2016-00598. 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 1506 Proceeding may be if instituted. While this would extend the trial
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`schedule of the 598 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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`Patent 7,861,774
`minimized through Patent Owner’s own agreement to a stay through the
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`conclusion of the 1506 Proceeding. See supra at MF 9.
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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 598
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`Proceeding. Dr. Daneshy is Petitioners’ expert in both proceedings. Should Patent
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`Owner request his deposition in the 598 Proceeding, consolidation could allow for
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`a single deposition of Dr. Daneshy instead of two. Petitioners would agree to
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`reasonable changes to the direct and redirect examination time limits for Dr.
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`Daneshy’s deposition, to allow Patent Owner to cover the grounds in both
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`proceedings, provided Patent Owner grants Petitioners similar reasonable increases
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`in cross-examination time for Patent Owner’s expert(s). Should Patent Owner
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`similarly use a single expert for both proceedings, Petitioners would agree to a
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`single deposition, with commensurate time-limit changes.
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`IV. CONCLUSION
`Joinder is appropriate for the reasons above.
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`Case IPR2016-01506
`Patent 7,861,774
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`Dated: September 22, 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
`
`Counsel for Petitioners
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`27547994.1
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`9
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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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`22, 2016, a complete copy of MOTION FOR JOINDER WITH CASE IPR2016-
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`00598 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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`27547994.1