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
`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
`
`

`
`Case IPR2016-01517
`Patent 7,134,505
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`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`
`
`
`
`I.
`
`II.
`
`Factual Background ............................................................................... 2
`
`The Board Must Deny This Petition for Failure to Name All Real
`Parties in Interest as Required by 35 U.S.C. § 312(a)(2) ................................ 1
`
`A.
`
`B.
`
`C.
`
`Principles of Law ................................................................................... 5
`
`Analysis ................................................................................................. 9
`
`
`III. The Board Should Deny This Petition as Seeking a Redundant
`and Unfair Second Bite at the Apple Under 35 U.S.C. § 314(a)
`and § 325(d) ...................................................................................................13
`
`A.
`
`B.
`
`Principles of Law .................................................................................14
`
`Analysis ...............................................................................................17
`
`
`IV. Claim Interpretation .......................................................................................20
`
`V.
`
`The Petition Fails to Show a Reasonable Likelihood that the
`Petitioner Will Prevail With Respect to the Challenged Claims ...................20
`
`A. Objective Evidence Confirms the Patentability of the Claimed
`Technology. .........................................................................................21
`
`1.
`
`The Patented Technology Has Received Praise and
`Enjoyed Commercial Success ...................................................22
`
`
`2.
`
`The Claimed Invention Operates Contrary to the
`Prevailing Wisdom at the Time of the Invention ......................27
`
`Petitioners Fail to Show a Reasonable Likelihood that the
`Petitioner Will Prevail With Respect to the Challenged Claims ........32
`
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`B.
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`Case IPR2016-01517
`Patent 7,134,505
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`
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`1.
`
`
`2.
`
`The Panel Should Not Institute Review Based on Its
`Prior Consideration of this Ground ...........................................32
`
`The Packers Plus Materials Cited In the Petition Further
`Confirm the Patentability of the Claims ...................................35
`
`
`C.
`
`Petitioners Fail to Show a Reasonable Likelihood of Success
`With Regard to the Yost + Thomson + Ellsworth Ground .................36
`
`
`VI. Conclusion .....................................................................................................39
`
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`Case IPR2016-01517
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`
`Table of Authorities
`
`
`Cases
`
`Arendi S.A.R.L. v. Apple Inc.
`
`832 F.3d 1355 (Fed. Cir. 2016) .....................................................................33
`
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.
`
`IPR2013-453, Paper 88 (PTAB Jan. 6, 2015) ...........................................9, 12
`
`Black & Decker, Inc. v. Positec USA
`
`646 Fed. Appx. 1019, 2016 WL 2898012 (Fed. Cir. May 18,
`2016) ..............................................................................................................33
`
`
`Crocs, Inc. v. Int’l Trade Comm’n
`
`598 F.3d 1294 (Fed. Cir. 2010) .....................................................................21
`
`First Data Corp. v. Cardsoft
`
`IPR2014-00715, Paper 9 (PTAB Oct. 7, 2014) .................................... 7, 8, 10
`
`Gen. Elec. Co. v. Transdata, Inc.
`
`IPR2014-1559, Paper 23 (PTAB Apr. 15, 2015) ......................................7, 10
`
`Gonzalez v. Banco Central Corp.
`
`27 F.3d 751 (1st Cir. 1994) .............................................................................. 6
`
`In re Hedges
`
`783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986) ...........................................28
`
`In re Magnum Oil Tools Int’l, Ltd.
`
`No. 2015-1300, 2016 WL 3974202 (Fed. Cir. July 25, 2016) ......................20
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.
`
`IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ........................................14
`
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.
`
`IPR2014-00309, Paper 83 (PTAB March 23, 2014) .....................................22
`
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`Case IPR2016-01517
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`McGinley v. Franklin Sports, Inc.
`
`262 F.3d 1339 (Fed. Cir. 2001) .....................................................................21
`
`Nvidia Corp. v. Samsung Elecs. Co.
`
`IPR2016-00134, Paper 9 (PTAB May 4, 2016) ..................................... 16, 18
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.
`
`587 F.3d 1324 (Fed. Cir. 2009) .....................................................................34
`
`PersonalWeb Techs., LLC v. Level 3 Comm’ns, LLC
`
`IPR2014-00702, Paper 13 (PTAB July 24, 2014) .........................................15
`
`Prism Pharma Co. v. Choongwae Pharma Corp.
`
`IPR2014-00315, Paper 14 (PTAB July 8, 2014) ...........................................15
`
`RPX Corp. v. VirnetX Inc.
`
`IPR2014-171, Paper 49 (PTAB June 5, 2014) ................................................ 9
`
`Samsung Elecs. Co. Ltd. v. Rembrandt Wireless Techs., LP
`
`IPR2015-00118, Paper No. 14 (PTAB Jan. 28, 2015) ........................... 14, 15
`
`Standard Oil Co. v. American Cyanamid Co.
`
`774 F.2d 448 (Fed.Cir.1985) .........................................................................39
`
`Star Scientific, Inc., v. R.J. Reynolds Tobacco Co.
`
`655 F.3d 1364 (Fed. Cir. 2011) .....................................................................21
`
`Taylor v. Sturgell
`
`553 U.S. 880 (2008)......................................................................................... 6
`
`Toyota Motor Corp. v. American Vehicular Sciences LLC
`
`IPR2015-00262, Paper 10 (PTAB Jan. 29, 2015) .........................................16
`
`Toyota Motor Corp. v. Cellport Systems, Inc.
`
`IPR2015-01423, Paper 7 (PTAB Oct. 28, 2015) ...........................................15
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.
`
`721 F.2d 1540 (Fed. Cir. 1983) .....................................................................28
`
`
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`Zheijiang Yankon Grp. v. Cordelia Lighting, Inc.
`
`IPR2015-1420, Paper 9 (PTAB Nov. 25, 2015) ................................... 2, 9, 10
`
`Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp.
`
`IPR2013-609, Paper 15 (PTAB Mar. 20, 2014) ..........................................7, 8
`
`
`Statutes
`
`35 U.S.C. § 312(a)(2) ................................................................................................. 1
`
`35 U.S.C. § 314(a) ............................................................................................ 13, 21
`
`35 U.S.C. § 325(d) ................................................................................ 13, 14, 15, 21
`
`
`Other Authorities
`
`77 FR 48756 (Aug. 14, 2012) ......................................................................... 6, 7, 10
`
`
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`
`Exhibit
`2003
`
`2004
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`2017
`2018
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`Case IPR2016-01517
`Patent 7,134,505
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`Exhibit List
`Description
`R. Seale et al., Effective Stimulation of Horizontal Wells—A
`New Completion Method, SPE 106357, Society of
`Petroleum Engineers (2006)
`Exploration and Development, Alberta Oil Magazine
`Leading the Way: Multistage fracking pioneer Packers Plus
`plays major role in cracking the tight oil code, Canadian
`OilPatch Technology Guidebook (2012)
`Financial Post, “Entrepreneur of the Year: National
`Winner”
`Innovation—Groundbreaking Innovation in Calgary,
`Calgary Herald (Feb. 12, 1014)
`J. Chury, Packers Plus Technology Becoming the Industry
`Standard, The Oil Patch Report (Dec. 2010/Jan. 2011)
`P. Roche, Open-Hole or Cased and Cemented, New
`Technology Magazine (Nov. 2011)
`R. Ghiselin, Qittitut Consulting, Sleeves vs. Shots—The
`Debate Rages (Aug. 2011)
`Van Dyke, Kate, “Fundamentals of Petroleum,” Fourth Ed.
`(1997)
`“Proven Performance: Read how Packers Plus systems and
`solutions have delivered results around the world,” Packers
`Plus Energy Services Inc., accessed May 24, 2016,
`http://packersplus.com/proven-performance/?type=case-
`study&system=stackfrac-hd-system&pag=3%20#p3
`A. Casero, Open Hole Multi-Stage Completion System in
`Unconventional Plays: Efficiency, Effectiveness and
`Economics, SPE 164009 (2013)
`Encyclopedia of Hydrocarbons, Chapter 3.1: Upstream
`technologies
`D. Lohoefer, Comparative Study of Cemented versus
`Uncemented Multi-Stage Fractured Wells in the Barnett
`Shale, SPE 135386, Society of Petroleum Engineers (2010)
`Ali Daneshy Deposoition Transcript (11/9/2016)
`Packers Plus advertising brochure (2010)
`Baker Hughes, “FracPoint Completion System Isolated
`Openhole Horizontal Well in Lower Huron Shale” (2011)
`
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`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`2035
`
`2036
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`Case IPR2016-01517
`Patent 7,134,505
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`Baker Hughes, Énhancing Well Performance Through
`Innovative Completion Technologies,” presentation, (Sept.
`10-12, 2012)
`Canadian Society for Unconventional Resources, Press
`Release, “Unconventional Industry Awards Innovative
`Thinking” (Oct. 3, 2012)
`Complaint, Rapid Completions LLC v. Baker Hughes, et al.,
`filed July 31, 2015
`Defendants’ Invalidity Contentions cover document, served
`January 19, 2016
`Thomson invalidity contention chart, U.S. Patent 7,861,774
`Rapid Completions LLC’s Infringement Contentions
`transmittal email, dated November 23, 2015
`Bates-stamped D. W. Thomson, “Design and Installation of
`a Cost Effective Completion System for Horizontal Chalk
`Wells Where Mulitiple Zones Require Acid Stimulation”,
`(1997)
`Bates-stamped A.B. Yost, “Production and Stimulation
`Analysis of Multiple Hydraulic Fracturing of a 2,000-ft
`Horizontal Well” (1989)
`Defendants’ initial invalidity contention metadata, dated
`January 19, 2016
`List of attorneys docket sheet from Case No. 6:15-cv-00724;
`Rapid Completions v. Baker Hughes et al.
`Deposition of Leah Burrati, dated May 18, 2016
`Defendants’ Second Amended Invalidity Contentions,
`served August 11, 2016
`Defendants’ amended invalidity contention metadata, dated
`August 11, 2016
`U.S. Patent 7,861,774 - Yost invalidity chart, served August
`11, 2016
`U.S. Patent 7,861,774 - Lane-Wells invalidity chart, served
`August 11, 2016
`Email from Green to Nemunaitis, dated July 11, 2016
`Weatherford letter brief regarding Motion for Summary
`Judgment of Indefiniteness, dated September 20, 2016
`Baker Hughes letter brief regarding Motion for Summary
`Judgment of Indefiniteness, dated September 20, 2016
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`2037
`2038
`
`2039
`
`2040
`2041
`
`2042
`
`2043
`
`Email from Nemunaitis to Payne, dated September 19, 2016
`Weatherford’s Expedited Motion to Stay Pending Inter
`Partes Review Proceedings, filed September 13, 2016
`Weatherford presentation titled, “Openhole Completion
`Systems
`Halliburton v. Packers Plus, Fourth Amended Petition
`Baker Hughes’ and Peak Completions’ Subpoena to
`Halliburton
`Rapid Completions v. Baker Hughes, et al. Order dismissing
`Pegasi
`Declaration of M. Delaney
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`Case IPR2016-01517
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`I.
`
`Introduction.1
`
`This is the Third Petition that Respondent is currently defending against for
`
`this patent. These three petitions represent a concerted effort on behalf of
`
`Petitioners Weatherford and Baker Hughes to obtain multiple bites at the invalidity
`
`apple. Consistent with prevailing law, the Board should deny this petition for
`
`failure to name Baker Hughes as a real party in interest, and as an improper serial
`
`petition.
`
`Substantively, this Petition is similar to the one that the Board already
`
`instituted for this patent. It suffers from many of the same deficiencies that will be
`
`addressed in Respondent’s upcoming response in that instituted proceeding. For
`
`both substantive and procedural reasons, neither the Board nor Respondent should
`
`be burdened with this additional Petition.
`
`II. The Board Must Deny This Petition for Failure to Name All Real
`Parties in Interest as Required by 35 U.S.C. § 312(a)(2).
`
`A petition for inter partes review may be considered only if, inter alia, “the
`
`petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). Petitioners
`
`
`1 Petitioners have filed Petitions asserting similar grounds against three patents—the
`’774 patent, the ’505 patent, and the ’634 patent. Petitioners only seek review of
`claims that require, among other things, pumping fluid into open hole portions of the
`well. Thus, all three preliminary responses filed today are substantively similar,
`except that the ’774 preliminary responses contains some additional material.
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`have failed to meet that requirement. At a minimum, unnamed party Baker
`
`Hughes had an opportunity to influence the theories asserted in this Petition. It has
`
`also effectively split the cost of IPR filings with Petitioners by dividing up the
`
`petitions that have been filed against this patent. Accordingly, the Panel should
`
`deny this Petition for failure to name Baker Hughes as a real party in interest. See
`
`Zheijiang Yankon Grp. v. Cordelia Lighting, Inc., IPR2015-1420, Paper 9 at 19
`
`(PTAB Nov. 25, 2015) (explaining that a petition must be denied if correction of
`
`the petition would require assignment of a filing date past the one-year bar date).
`
`A.
`
`Factual Background
`
`Respondent Rapid Completions2 filed the litigation underlying this petition
`
`against Petitioner Weatherford and Baker Hughes on July 31, 2015.3 Ex. 2021.
`
`On November 23, 2015, Rapid Completions served its initial document production,
`
`which included the Thomson and Yost references asserted in this Petition. Exs.
`
`2022-2024. Two months later, Weatherford and Baker Hughes served joint
`
`invalidity contentions. Ex. 2022. Those contentions asserted the Thomson and
`
`
`2 Packers Plus is the owner of the patent at issue in this Petition. Rapid
`Completions is the exclusive licensee with all substantial rights to enforce the patent.
`3 That case also involved two other Defendants: Pegasi Energy Resources and
`Peak Completions. Rapid Completions’ claims against Pegasi have been dismissed
`pursuant to a confidential settlement agreement. Ex. 2042.
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`Ellsworth references at issue in this Petition, but not the Yost reference at issue in
`
`this Petition. The metadata in those contentions indicates that the relevant
`
`invalidity charts were authored by Baker Hughes’ outside counsel.4
`
`As the case progressed, Baker Hughes and Weatherford conducted discovery
`
`related to their invalidity theories. In particular, Baker Hughes served a subpoena
`
`on Halliburton related the MSAF tools described in Thomson and the Wizard tools
`
`described in Ellsworth, and letters rogatory on patent agent Roseann Caldwell.
`
`Exs. 2029, 2041. Weatherford, expressly authorized Baker Hughes’s outside
`
`counsel to act on their behalf in obtaining at least some of that discovery. Ex.
`
`2029, Depo. of L. Burrati at 8:21-9:3.
`
`In February 2016, Baker Hughes filed its first round of IPR petitions against
`
`the patents-in-suit. IPR2016-00596, IPR2016-00597, IPR2016-00598. All of
`
`those Petitions asserted unpatentability based on Thomson and Ellsworth, but not
`
`Yost. Although Weatherford could have joined or moved to join these Petitions, it
`
`never did. It would later explain that it did not want to be bound by the statutory
`
`estoppel that would attach to those petitions. Ex. 2038 at 1-2.
`
`
`4 Compare Ex. 2027 (identifying author) with Ex. 2028 (identifying attorneys
`appearing in the case).
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`In May 2016, Respondent filed its preliminary responses to Baker Hughes’
`
`Petitions. Respondent argued that the asserted Thomson + Ellsworth theories
`
`failed to demonstrate that a person of ordinary skill in the art would have modified
`
`the asserted references to attempt multi-stage fracturing through open hole annular
`
`segments. IPR2016-00598, Paper 7 at 29. (“In sum, neither Thomson nor
`
`Ellsworth provide any indication that pumping fracturing fluid into an open hole
`
`and uncased annular segment was a viable alternative to pumping fracturing fluid
`
`through perforations.”). Those responses apparently raised doubts as to whether
`
`Baker Hughes’ Petitions would succeed for at least some claims. Within weeks of
`
`the preliminary response filings, Baker Hughes claims that it searched for and
`
`located additional prior art. IPR2016-01506, Paper 6 at 2 (claiming that it located
`
`Lane-Wells in June 2016).
`
`On July 11, 2016, Baker Hughes, writing on behalf of itself and
`
`Weatherford, informed Respondent that it intended to amend its invalidity
`
`contentions to assert additional references including Yost and the allegedly new
`
`Lane-Wells reference. It claimed that these amendments were necessary, in part,
`
`because they “relate[d] to positions taken by Rapid Completions in its recent IPR
`
`filings.” Ex. 2034. Once again, these supplemental contentions were authored by
`
`Baker Hughes’ outside counsel McKool Smith as evidenced by the metadata:
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`Exs. 2031.
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`On July 29, 2016, Baker Hughes filed its follow-on petitions based on Lane
`
`Wells, and the next day Weatherford filed the present Petition. In both of these
`
`sets of Petitions, Baker Hughes and Weatherford assert Lane-Wells and Yost as
`
`overcoming the deficiency identified in Respondent’s preliminary responses. Pet.
`
`at 7-8 (asserting that “Yost describes multi-stage fracturing of horizontal open hole
`
`wells”). In sum, Baker Hughes’ and Weatherford’s have combined their efforts to
`
`seek multiple bites at the invalidity apple. They have done so by using
`
`Respondent’s preliminary response as a roadmap for follow-on petitions and by
`
`sharing the costs of filing those petitions.
`
`B.
`
`Principles of Law
`
`The Patent Trial Practice Guide provides explains why a Petitioner is
`
`required to name all real parties in interest in a petition:
`
`The core functions of the ‘‘real party-in-interest’’ and ‘‘privies’’
`requirement to assist members of the Board in identifying potential
`conflicts, and to assure proper application of the statutory estoppel
`provisions. The latter, in turn, seeks to protect patent owners from
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`harassment via successive petitions by the same or related parties, to
`prevent parties from having a ‘‘second bite at the apple,’’ and to protect
`the integrity of both the USPTO and Federal Courts by assuring that all
`issues are promptly raised and vetted.
`
`
`77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). “[A]t a general level, the ‘real
`
`party-in-interest’ is the party that desires review of the patent. Thus, the ‘real
`
`party-in-interest’ may be the petitioner itself, and/or it may be the party or parties
`
`at whose behest the petition has been filed.” Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756, 48,759 (2012).
`
`When considering whether an unnamed party is a real party in interest, the
`
`Board considers whether there is a special relationship between the petitioner and
`
`the unnamed party (e.g., parent/subsidiary, indemnitor/indemnitee, joint defense
`
`members). The existence of such a relationship, on its own, is not sufficient to
`
`establish an unnamed party as a real party in interest. There must be some
`
`additional indication that the unnamed party exercised or could have exercised
`
`control over the named party’s participation in a proceeding. Id. (citing Taylor, 553
`
`U.S. at 895).
`
`Control by a party means “the availability of a significant degree of effective
`
`control in the prosecution or defense of the case[].” Gonzalez v. Banco Central
`
`Corp., 27 F.3d 751, 758 (1st Cir. 1994). “Absolute control, however, is not
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`necessary. Instead, a nonparty will be found to have control if it ‘has the actual
`
`measure of control or opportunity to control that might reasonably be expected
`
`between two formal coparties.’” Gen. Elec. Co. v. Transdata, Inc., IPR2014-1559,
`
`Paper 23 at 9 (PTAB Apr. 15, 2015) (quoting 77 Fed. Reg. at 48,759). “Moreover,
`
`actual control is not required; the opportunity to exert the appropriate level of
`
`control is sufficient.” Id. That remains true even if a party abandons its
`
`opportunity to exert control before a petition is actually filed. First Data Corp. v.
`
`Cardsoft, IPR2014-00715, Paper 9 at 9 (PTAB Oct. 7, 2014) (explaining that “a
`
`party who controlled or had the opportunity to control what went into the Petition,
`
`is a real party-in-interest despite turning over the reins to another party after all of
`
`the work has been done”).
`
`A non-party’s participation may be overt or covert, and evidence of that
`
`participation may be direct or circumstantial, but the evidence as a whole must
`
`show that the non-party possessed effective control from a practical standpoint.
`
`Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp., IPR2013-609, Paper 15 at 6
`
`(PTAB Mar. 20, 2014). The inquiry is not based on isolated facts, but rather must
`
`consider the totality of the circumstances. Id. The Board has found an unnamed
`
`party to be a real party in interest under the following circumstances:
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` Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp., IPR2013-609, Paper 15
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`(PTAB Mar. 20, 2014): the petitioner was a wholly owned subsidiary of
`
`an unnamed party. Although the petitioner alleged that it alone was
`
`paying for and controlling the IPR, the Board noted that the unnamed
`
`party was able to approve the petitioner’s budget and plans. Although
`
`the patent owner did not present direct evidence that the unnamed party
`
`actually exercised control over the IPR petition, the Board found it
`
`“telling” that the petitioner never denied that the unnamed party provided
`
`input into the preparation of the IPRs. Id. at 11-12.
`
` First Data Corp. v. Cardsoft, LLC, IPR2014-715, Paper 9 (PTAB Oct.
`
`17, 2014): the petitioner was indemnified by an unnamed party. Pursuant
`
`to the indemnification agreement, the unnamed party paid all of the
`
`expenses for the IPRs and had an opportunity to provide input into the
`
`petition. Although the petitioner alleged that it alone selected the
`
`references for the petition, the Board found that this unsupported
`
`allegation could not overcome the circumstantial evidence that the
`
`unnamed party at least had the opportunity to exercise control over the
`
`filing of the petition. Id. at 8.
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` Zheijiang Yankon Grp. V. Cordelia Lighting, Inc., IPR2015-1420, Paper
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`9 (PTAB Nov. 25, 2015): The petitioner was a corporate parent involved
`
`in litigation with the patent owner, but an unnamed subsidiary had
`
`negotiated with the patent owner. The Board found that the subsidiary
`
`was a real party in interest after it invited the petitioner to present
`
`additional evidence on this issue, but it failed to do so. Id. at 17-18.
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` RPX Corp. v. VirnetX Inc., IPR2014-171, Paper 49 (PTAB June 5, 2014):
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`An unnamed party suggested that the petitioner file IPRs and it
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`compensated the petitioner for “generic services” that included filing
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`IPRs. The Board found that the unnamed party was a real party in
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`interest that implicitly authorized the petitioner to file the IPRs on its
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`behalf. Id. at 7-8.
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`The burden of persuasion always falls on the petitioner to demonstrate that
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`all real parties in interest have been properly named in a petition. Atlanta Gas
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`Light Co. v. Bennett Regulator Guards, Inc., IPR2013-453, Paper 88 at 8 (PTAB
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`Jan. 6, 2015).
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`C. Analysis
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`The first step in determining whether an unnamed party is a real party in
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`interest is to determine whether it has a special relationship with the Petitioner.
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`That requirement is met here. Baker Hughes is a joint defense partner with the
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`Petitioner and the two have specifically mounted a joint invalidity defense against
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`the patent at issue. See generally Office Patent Trial Practice Guide, 77 Fed. Reg.
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`at 48,760 (noting that membership in a joint defense group merits deeper
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`consideration of the facts as a whole).
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` The next step is to consider whether Baker Hughes had “the actual measure
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`of control or opportunity to control that might reasonably be expected between two
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`formal coparties.’” Gen. Elec. Co. v. Transdata, Inc., IPR2014-1559, Paper 23 at 9.
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`The Board must consider the evidence as a whole when making this determination,
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`including whether Baker Hughes an opportunity to exert control before the petition
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`was filed.
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`Here, Baker Hughes at least had an opportunity to exert control over the
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`contents of this Petition. Baker Hughes drafted the specific invalidity theories at
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`issue in this Petition when it drafted the parties’ invalidity contentions. While
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`Weatherford may have also played some role in drafting those theories, that does
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`not negate Baker Hughes’ involvement. Zheijiang Yankon Grp., IPR2015-1420
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`Paper 9 at 15 (explaining that the key inquiry is not whether there is evidence that
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`an unnamed party actually exercises control, but whether it had “the opportunity to
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`exercise control”); First Data Corp., IPR2014-715, Paper 9 at 9 (finding an
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`unnamed party to be a real party in interest because it at least “had the opportunity
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`to control what went into the Petition”).
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`Moreover, it is likely that Baker Hughes had more than just an opportunity
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`to influence this Petition. As noted above, Baker Hughes drafted an invalidity
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`chart for the Thomson + Ellsworth theory at issue in this Petition and it filed an
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`IPR asserting that same theory months before Weatherford filed this Petition.
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`After Baker Hughes reviewed Respondent’s preliminary response in that IPR, it
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`then drafted two new invalidity charts (a Yost chart and a Lane-Wells chart)
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`designed to address the arguments raised in the preliminary response. Baker
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`Hughes and Weatherford then split the costs of filing IPRs based on those new
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`theories by each filing an IPR containing one of the new theories.
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`This is not the first time that they have divided up work for procedural
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`advantage. For example, in litigation, the parties jointly asserted various
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`indefiniteness arguments. Ex. 2022. However, when it came time to file letter
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`briefs asserting specific theories, Petitioners and Baker Hughes divided up the
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`theories, i.e., Petitioners sought summary judgment based on theories A and B and
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`Baker Hughes sought summary judgment based on theories C and D. Exs. 2035,
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`2036. By employing this strategy, the parties split the cost of summary judgment
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`briefing and they minimized the number of summary judgment pages each would
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`need to use for briefing.5 Similarly, here, Petitioners and Baker Hughes have split
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`the cost of filing petitions based on Yost and Lane-Wells.
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`But perhaps the most telling fact is that Petitioners do not even attempt to
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`confront these facts in the Petition. For a typical petition where a single petitioner
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`files a single petition without any potential influence from others, the petitioner can
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`satisfy its burden of identifying all real parties-in-interest merely by declaring that
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`it has complied with that requirement. This case is not so simple, and Petitioners
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`could have acknowledged that in their Petition. After all, the Board has recognized
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`that a petitioner is “far more likely to be in possession of, or to have access to,
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`evidence relevant to the issue than is a patent owner.” Atlanta Gas Light Co.,
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`IPR2013-453, Paper 88 at 8.
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`Even after filing the Petition, Petitioners could have confronted these facts.
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`Before filing this Preliminary Response, Respondent contacted Petitioner regarding
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`the discovery of basic facts related to this issue. Specifically, Respondent asked
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`Petitioner to admit or deny:
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`Before Weatherford filed its IPRs against the patents-in-suit,
`1.
`Weatherford discussed with Baker Hughes that it might file its own
`IPRs against one or more of the patents-in-suit.
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`5 The Eastern District of Texas sets a cumulative page limit on summary
`judgment briefing.
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`Before Weatherford filed its IPRs against the patents-in-suit,
`2.
`Weatherford and Baker Hughes discussed which references would be
`included in Weatherford's IPRs.
`3.
`Before Weatherford filed its IPRs against the patents-in-suit,
`Baker Hughes suggested to Weatherford that it should include one or
`more of the invalidity theories contained Weatherford's IPRs.
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`4. With regard to at least one IPR filed by Baker Hughes against a
`patent-in-suit, Weatherford and Baker Hughes discussed which
`references would be included in that IPR.
`5. With regard to at least one IPR filed by Baker Hughes against a
`patent-in-suit, Weatherford suggested to Baker Hughes that it should
`include one or more of the invalidity theories contained in that IPR.
`6. Weatherford did not decide to file its own IPRs against the
`patents-in-suit until after it discussed that idea with Baker Hughes.
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`Ex. 2037. Petitioner refused to respond to any of these requests. Because
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`Petitioner bears the burden of establishing that it has named all real parties in
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`interest, its refusal to provide this information should be fatal to the Petition.
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`III. The Board Should Deny This Petition as Seeking a Redundant and
`Unfair Second Bite at the Apple Under 35 U.S.C. § 314(a) and § 325(d).
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`Even if the Board concludes that there is insufficient evidence to deem
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`Baker Hughes a real party in interest, the Board must still consider whether
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`institution is in the interests of justice. Because Petitioners are attempting to seek
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`multiple bites at the invalidity apple with Baker Hughes, the Board should deny
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`this Petition.
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`A.
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`Principles of Law
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`“Congress did not mandate that an inter partes review must be instituted
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`under certain conditions. Rather, by stating that the Director—and by extension,
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`the Board—may not institute review unless certain conditions are met, Congress
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`made institution discretionary.” Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge Ltd., Case IPR2013-00324, Paper 19 at 4 (PTAB Nov. 21, 2013); see
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`also 35 U.S.C. § 314(a). In particular, 35 U.S.C. § 325(d) states that “[i]n
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`determining whether to institute or order a proceeding under this chapter, chapter
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`30, or chapter 31, the Director may take into account whether, and reject the
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`petition or request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.”
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`Relying on these provisions, the Board has routinely denied follow-on
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`petitions as