UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`WEATHERFORD INTERNATIONAL, LLC;
`WEATHERFORD/LAMB, INC.;
`WEATHERFORD US, LP; and WEATHERFORD
`ARTIFICIAL LIFT SYSTEMS, LLC
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
`
`___________________
`
`Case IPR2016-01517
`Patent 7,134,505
`___________________
`
`
`
`EXCLUSIVE LICENSEE RAPID COMPLETIONS LLC’S
`SUR-REPLY IN SUPPORT OF ITS PRELIMINARY RESPONSE
`
`
`
`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 PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`WEATHERFORD INTERNATIONAL, LLC;
`WEATHERFORD/LAMB, INC.;
`WEATHERFORD US, LP; and WEATHERFORD
`ARTIFICIAL LIFT SYSTEMS, LLC
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
`
`___________________
`
`Case IPR2016-01517
`Patent 7,134,505
`___________________
`
`
`
`EXCLUSIVE LICENSEE RAPID COMPLETIONS LLC’S
`SUR-REPLY IN SUPPORT OF ITS PRELIMINARY RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`In its preliminary response,1 Respondent challenged the substance of the
`
`Petition and it identified three additional reasons for denial of the Petition: (1)
`
`Petitioners failed to identify all real parties in interest; (2) the Petition failed to
`
`show that this Petition is “meaningfully different” from the other Petitions that
`
`have been filed against the claims at issue; and (3) the Petition represents an
`
`improper “second bite at the apple.” All of these assertions are based on statutory
`
`safeguards designed to ensure the overall fairness of the inter partes review
`
`procedure. Petitioners’ new evidence submitted in reply only confirms that this is
`
`precisely the type of Petition that should be denied as an unfair attempt to game the
`
`system.
`
`To be clear, Respondent has never asserted that Baker Hughes and
`
`Weatherford entered into a secret contract that required Weatherford to act as a
`
`hollow proxy for Baker Hughes or that Baker Hughes secretly paid the filing fee
`
`
`1 The Board authorized the filing of this sur-reply during its January 4, 2017
`
`telephonic hearing. It limited the scope of this sur-reply to responding to the
`
`common interest agreement and request for admission responses cited in
`
`Weatherford’s reply brief. The Board also indicated that it would not issue a
`
`written order to this effect and that Respondent should memorialize its ruling in
`
`this sur-reply.
`
`1
`
`
`
`for this Petition. None of the Board decisions cited by either party hold that such a
`
`showing is necessary to prove that an unnamed party is a real party in interest.
`
`Instead, the key inquiry is whether Baker Hughes had the opportunity to exercise
`
`the level of control that would be expected of a formal co-party to this proceeding.
`
`Indeed. The new evidence submitted by Weatherford fails to rebut the fact that
`
`Baker Hughes had just such an opportunity, and that the two parties effectively
`
`split the costs of their filings by dividing the asserted grounds between their two
`
`sets of follow-on Petitions.
`
`Weatherford does not deny, and none of its new evidence refutes, that: (i)
`
`Baker Hughes at least had an opportunity to influence and develop the specific
`
`theories asserted in this Petition; (ii) that Baker Hughes sought discovery on
`
`Petitioner’s behalf related to the theories at issue in this Petition; or (iii) that Baker
`
`Hughes and Petitioner developed the Yost theory at issue in this Petition in
`
`response to arguments made by Respondent in its preliminary response to Baker
`
`Hughes’ initial petitions. Accordingly, the Board should find that Baker Hughes
`
`had an opportunity to influence the content of this Petition such that it should be
`
`considered a real party in interest.
`
`Petitioners attempt to avoid this result by identifying self-serving language
`
`contained in a highly redacted “Joint Defense, Common Interest and
`
`Confidentiality Agreement.” But regardless of this written agreement, it is
`
`2
`
`
`
`undeniable that Baker Hughes and Petitioner have a common interest in seeking
`
`invalidity of the claims at issue in this Petition. Whether they characterize their
`
`efforts and communications2 in furtherance of that common interest as litigation-
`
`related or inter partes review-related has no impact on the substantive issue of
`
`whether Baker Hughes had an opportunity to influence the theories asserted in this
`
`Petition. It did, and so the Petition should be denied.
`
`
`2 The Request for Admission responses submitted in Weatherford’s reply do not
`
`support a finding that Baker Hughes is not a real party in interest. Had
`
`Weatherford admitted those requests, i.e. it discussed the relevant issues in the
`
`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
`
`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.
`
`While the litigation was stayed before Weatherford could be compelled to provide
`
`responses, Weatherford also refused Respondent’s request to expedite the deadline
`
`for its response or to otherwise provide Respondent with informal responses. Ex.
`
`2037.
`
`3
`
`
`
`If the redacted Common Interest Agreement is relevant at all, it only shows
`
`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
`
`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
`
`in asserting a common invalidity defense in the litigation, they would also jointly
`
`file a single inter partes review. Instead, they chose to include the provision now
`
`before the Board, which is aimed at thwarting the application of § 315(e) estoppel
`
`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
`
`legitimate desire for independent control over petitions (e.g. because Petitioners
`
`
`3 It is unlikely that this provision is actually effective for that purpose. For
`
`example, the mere fact that parties agree to not be in privity with respect to a
`
`particular proceeding does not dictate whether they are actually in privity. Privity
`
`exists between parties regardless of the context in which that privity first arises.
`
`See Gen. Elec. Co. v. Transdata, Inc., IPR2014-01559, Paper 23 at 13-14 (PTAB
`
`April 15, 2015) (explaining that the fact that two parties are in privity with respect
`
`to a lawsuit is enough to establish privity with respect to the statutory bar in 35
`
`U.S.C. § 315(b)).
`
`4
`
`
`
`and Baker Hughes disagreed as to the best prior art references or the best invalidity
`
`strategy). Rather, it was a common interest strategy designed to maximize their
`
`collective opportunities to challenge the claims at issue. That is no justification for
`
`this serial Petition. Accordingly, Respondent respectfully requests that the Petition
`
`be denied.
`
`Dated: January 13, 2017
`
`
`
`Respectfully submitted,
`
`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
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
`
`It is hereby certified that on this 13th day of January, 2017, a copy of the
`
`foregoing document was served via electronic mail, as previously consented to by
`
`Petitioner upon the following counsel of record:
`
`Jason Shapiro (Lead Counsel)
`Patrick Finnan (Back-up Counsel)
`EDELL,SHAPIRO & FINNAN, LLC
`
`js@usiplaw.com
`pjf@usiplaw.com
`epatent@usiplaw.com
`
`Date: January 13, 2017
`
`
`
`
`
` /Hamad M. Hamad/
`
`Hamad M. Hamad, Reg. No. 64,641
`
`
`
`
`
`
`
`6
`
`
`
`
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