`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`WEATHERFORD INTERNATIONAL, LLC;
`WEATHERFORD/LAMB, INC.;
`WEATHERFORD US, LP; and WEATHERFORD
`ARTIFICIAL LIFT SYSTEMS, LLC
`Petitioners
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`v.
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`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
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`___________________
`
`
`Case IPR2016-01509
`Patent 7,861,774
`___________________
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`EXCLUSIVE LICENSEE RAPID COMPLETIONS LLC’S
`SUR-REPLY IN SUPPORT OF ITS PRELIMINARY RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`In its preliminary response,1 Respondent challenged the substance of the
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`Petition and it identified three additional reasons for denial of the Petition: (1)
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`Petitioners failed to identify all real parties in interest; (2) the Petition failed to
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`show that this Petition is “meaningfully different” from the other Petitions that
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`have been filed against the claims at issue; and (3) the Petition represents an
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`improper “second bite at the apple.” All of these assertions are based on statutory
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`safeguards designed to ensure the overall fairness of the inter partes review
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`procedure. Petitioners’ new evidence submitted in reply only confirms that this is
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`precisely the type of Petition that should be denied as an unfair attempt to game the
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`system.
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`To be clear, Respondent has never asserted that Baker Hughes and
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`Weatherford entered into a secret contract that required Weatherford to act as a
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`hollow proxy for Baker Hughes or that Baker Hughes secretly paid the filing fee
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`1 The Board authorized the filing of this sur-reply during its January 4, 2017
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`telephonic hearing. It limited the scope of this sur-reply to responding to the
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`common interest agreement and request for admission responses cited in
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`Weatherford’s reply brief. The Board also indicated that it would not issue a
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`written order to this effect and that Respondent should memorialize its ruling in
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`this sur-reply.
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`1
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`for this Petition. None of the Board decisions cited by either party hold that such a
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`showing is necessary to prove that an unnamed party is a real party in interest.
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`Instead, the key inquiry is whether Baker Hughes had the opportunity to exercise
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`the level of control that would be expected of a formal co-party to this proceeding.
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`Indeed. The new evidence submitted by Weatherford fails to rebut the fact that
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`Baker Hughes had just such an opportunity, and that the two parties effectively
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`split the costs of their filings by dividing the asserted grounds between their two
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`sets of follow-on Petitions.
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`Weatherford does not deny, and none of its new evidence refutes, that: (i)
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`Baker Hughes at least had an opportunity to influence and develop the specific
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`theories asserted in this Petition; (ii) that Baker Hughes sought discovery on
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`Petitioner’s behalf related to the theories at issue in this Petition; or (iii) that Baker
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`Hughes and Petitioner developed the Yost theory at issue in this Petition in
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`response to arguments made by Respondent in its preliminary response to Baker
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`Hughes’ initial petitions. Accordingly, the Board should find that Baker Hughes
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`had an opportunity to influence the content of this Petition such that it should be
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`considered a real party in interest.
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`Petitioners attempt to avoid this result by identifying self-serving language
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`contained in a highly redacted “Joint Defense, Common Interest and
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`Confidentiality Agreement.” But regardless of this written agreement, it is
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`2
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`undeniable that Baker Hughes and Petitioner have a common interest in seeking
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`invalidity of the claims at issue in this Petition. Whether they characterize their
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`efforts and communications2 in furtherance of that common interest as litigation-
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`related or inter partes review-related has no impact on the substantive issue of
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`whether Baker Hughes had an opportunity to influence the theories asserted in this
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`Petition. It did, and so the Petition should be denied.
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`2 The Request for Admission responses submitted in Weatherford’s reply do not
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`support a finding that Baker Hughes is not a real party in interest. Had
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`Weatherford admitted those requests, i.e. it discussed the relevant issues in the
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`context of Inter partes reviews, the Board would have had little choice but to find
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`Baker Hughes to be a real party in interest. The fact that Petitioners denied those
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`requests merely indicates that the parties characterized their substantive
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`discussions as litigation-related rather than inter partes review related. Moreover,
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`it is still unclear why Weatherford refused to respond to those requests earlier.
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`While the litigation was stayed before Weatherford could be compelled to provide
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`responses, Weatherford also refused Respondent’s request to expedite the deadline
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`for its response or to otherwise provide Respondent with informal responses. Ex.
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`2037.
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`3
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`If the redacted Common Interest Agreement is relevant at all, it only shows
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`that this Petition is an attempt to obtain an unfair second bite at the apple. This
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`agreement was signed months before Petitioners and Baker Hughes served their
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`initial invalidity contentions. Ex. 2022. At that time, Petitioners and Baker
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`Hughes could have agreed that, because all Defendants were jointly participating
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`in asserting a common invalidity defense in the litigation, they would also jointly
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`file a single inter partes review. Instead, they chose to include the provision now
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`before the Board, which is aimed at thwarting the application of § 315(e) estoppel
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`and allowing them to file serial petitions.3 This indicates that Petitioners’ and
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`Baker Hughes’ decision to file separate IPR Petitions was not based on some
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`legitimate desire for independent control over petitions (e.g. because Petitioners
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`3 It is unlikely that this provision is actually effective for that purpose. For
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`example, the mere fact that parties agree to not be in privity with respect to a
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`particular proceeding does not dictate whether they are actually in privity. Privity
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`exists between parties regardless of the context in which that privity first arises.
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`See Gen. Elec. Co. v. Transdata, Inc., IPR2014-01559, Paper 23 at 13-14 (PTAB
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`April 15, 2015) (explaining that the fact that two parties are in privity with respect
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`to a lawsuit is enough to establish privity with respect to the statutory bar in 35
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`U.S.C. § 315(b)).
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`4
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`and Baker Hughes disagreed as to the best prior art references or the best invalidity
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`strategy). Rather, it was a common interest strategy designed to maximize their
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`collective opportunities to challenge the claims at issue. That is no justification for
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`this serial Petition. Accordingly, Respondent respectfully requests that the Petition
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`be denied.
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`Dated: January 13, 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, Re. No.
`43,639
`GONSALVES LAW FIRM
`2216 Beacon Lane
`Falls Church, Virginia 22043
`Telephone: 571.419.7252
`gonsalves@gonsalveslawfirm.com
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`It is hereby certified that on this 13th day of January, 2017, a copy of the
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`foregoing document was served via electronic mail, as previously consented to by
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`Petitioner upon the following counsel of record:
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`Jason Shapiro (Lead Counsel)
`Patrick Finnan (Back-up Counsel)
`EDELL,SHAPIRO & FINNAN, LLC
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`js@usiplaw.com
`pjf@usiplaw.com
`epatent@usiplaw.com
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`Date: January 13, 2017
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` /Hamad M. Hamad/
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`Hamad M. Hamad, Reg. No. 64,641
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