`571-272-7822
`
`
`
`
`Paper 30
`Entered: May 4, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BAKER HUGHES INCORPORATED and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`Patent Owner.
`
`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)1
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motions for Joinder
`37 C.F.R. § 42.1
`
`
`
`
`
`
`
`
`
`
`1 This Decision applies to motions in all three cases. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`
`Introduction
`Petitioner has requested joinder of the instant Petitions with three
`earlier inter partes review proceedings, currently scheduled to be heard later
`this month. In August of 2016, we instituted inter partes review of U.S.
`Patent 7,134,505 B2 (“the ’505 patent”), U.S. Patent 7,543,634 B2 (“the
`’634 patent”), and U.S. Patent 7,861,774 B2 (“the ’774 patent) in IPR2016-
`00596, IPR2016-00597, and IPR2016-00598, respectively (collectively, the
`“first cases”). The first cases involve the same Petitioner and Patent Owner
`as here.
`In July of 2016, Petitioner filed Petitions raising additional challenges
`to claims of the ’505 patent, the ’634 patent, and the ’774 patent in the
`present cases—IPR2016-01496, IPR2016-01505, and IPR2016-01506,
`respectively (collectively, the “second cases”). IPR2016-01496, Paper 1;
`IPR2016-01505, Paper 1; IPR2016-01506, Paper 1. Petitioner also filed
`Joinder Motions requesting joinder of IPR2016-01496 with IPR2016-00596,
`joinder of IPR2016-01505 with IPR2016-00597, and joinder of IPR2016-
`01506 with IPR2016-00598. IPR2016-01496, Paper 6; IPR2016-01505,
`Paper 6; IPR2016-01506, Paper 6. Patent Owner filed Responses to
`Petitioner’s Joinder Motions.2 IPR2016-01496, Paper 13; IPR2016-01505,
`Paper 13; IPR2016-01506, Paper 13. In February of 2017, we instituted
`inter partes review in each of the second cases. IPR2016-01496, Paper 19;
`IPR2016-01505, Paper 19; IPR2016-01506, Paper 19. We now decide the
`Joinder Motions.
`
`
`2 Each reference to “Patent Owner” includes the exclusive licensee of the
`’505, ’634, and ’774 patents—Rapid Completions LLC.
`2
`
`
`
`
`
`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`
`The substantive issues raised in the Joinder Motions are the same for
`each of IPR2016-01496, IPR2016-01505, and IPR2016-01506.
`Accordingly, we discuss and cite as representative of all three of these cases
`the Joinder Motion and Response from IPR2016-01496. IPR2016-01496,
`Paper 6 (hereafter, “Motion” or “Mot.”); IPR2016-01496, Paper 13
`(hereafter, “Response” or “Resp.”).
`Authority
`The America Invents Act (“AIA”) created new administrative trial
`proceedings, including inter partes review, as an efficient, streamlined, and
`cost-effective alternative to district court litigation. The AIA permits the
`joinder of like proceedings. According to 35 U.S.C. § 315(c), the Board,
`acting on behalf of the Director, has the discretion to join an inter partes
`review with another inter partes review. More specifically, section 315(c)
`provides (emphasis added):
`JOINDER. – If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`In the case of joinder, the Board has the discretion to adjust the time
`period for issuing a final determination in an inter partes review. 35 U.S.C.
`§ 316(a)(11); 37 C.F.R. § 42.100(c).
`Joinder may be authorized when warranted, and the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board
`will determine whether to grant joinder on a case-by-case basis, taking into
`
`
`
`3
`
`
`
`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`account the particular facts of each case, the substantive and procedural
`issues, and other considerations. 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” and claim construction issues). When
`exercising its discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b).
`Additionally, under our interpretation of § 315(c), same-party joinder
`is permitted. Section 315(c) states that “any person who properly files a
`petition under section 311” may be joined at the Director’s discretion. Filing
`a petition under § 311 is, therefore, a predicate to joinder.
`Section 311(a) specifies who can file a petition for inter partes
`review. Under that section, “a person who is not the owner of a patent may
`file with the Office a petition to institute an inter partes review of the
`patent.” Thus, when the “any person” of § 315(c) is read in light of
`§ 311(a), the only person excluded by the language is the owner of the patent
`at issue. More specifically, § 311(a) does not exclude a person who is
`already a petitioner in an instituted review proceeding that is the subject of
`the joinder analysis. The choice of Congress to exclude only patent owners
`is telling. See, e.g., Figueroa v. Sec’y of Health & Human Servs., 715 F.3d
`1314, 1322 (Fed. Cir. 2013) (“[T]he term left out must have been meant to
`be excluded.” (quoting Chevron U.S.A. Inc. v. Echazabal, 536 U.S. 73, 81
`(2002))); Espenschied v. MSPB, 804 F.2d 1233, 1237 (Fed. Cir. 1986)
`
`
`
`4
`
`
`
`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`(“Where Congress explicitly enumerates certain exceptions to a general
`prohibition, additional exceptions are not to be implied in the absence of
`evidence of a contrary legislative intent.” (quoting Andrus v. Glover Constr.
`Co., 446 U.S. 608, 616–617 (1980))).
`Moreover, the word “any” in § 315(c) may be defined as “one or more
`without specification or identification.”3 If the legislature had meant to
`exclude joining the same petitioner to an instituted inter partes review, it
`would not have used the word “any” in the statute, such that “any person”
`who properly files a petition may be joined. Congress could have specified
`“any non-party” instead of “any person.” An interpretation that requires us
`to read “any person” as excluding a same petitioner, in essence, reads the
`word “any” out of the statute. Such an interpretation also ignores the
`statutory language of § 311(a), which indicates that anyone other than the
`patent owner may file a petition and thereby become eligible for joinder.
`Other sections of the AIA, referenced in section 315(c), further
`support our interpretation. Section 315(c) specifies that joinder may be
`granted only after a person “properly files a petition under section 311,”
`such that the Director, “after receiving a preliminary response under section
`313 or the expiration of the time for filing such a response, determines [that
`the petition] warrants the institution of an inter partes review under section
`314.” Section 314 does not discuss the real parties in interest, related
`matters, lead and backup counsel, and service information, but instead
`
`
`3 Random House, Inc., Any, DICTIONARY.COM UNABRIDGED,
`http://dictionary.reference.com/browse/any (last visited April 20, 2017).
`5
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`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`presents the standard for instituting inter partes review on the merits of
`grounds presented in a petition. Specifically, subsection (a) of § 314 states:
`THRESHOLD. — The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`Section 315(c), by specifically referencing § 314, clearly contemplates
`that the merits of the petition be considered in determining whether joinder
`is granted. Review of § 311, also referenced by § 315(c), further supports
`this view. Section 311(b) states that “[a] petitioner . . . may request to cancel
`as unpatentable 1 or more claims of a patent only on a ground that could be
`raised under section 102 or 103.” As is evident from those sections of the
`AIA, the primary purpose of the petition is to frame the issues for inter
`partes review. By requiring a properly filed petition as a predicate to
`joinder, Congress made it clear that § 315(c) necessarily contemplates
`joinder of issues, including issues set out in different petitions raised by a
`same petitioner, as well as joinder of parties.
`To the extent there is ambiguity in the statute, the legislative history
`of section 315(c) supports our view that allowing joinder of issues, and not
`just the joinder of parties, was intended. We acknowledge that the Final
`Committee Report states, with respect to §§ 315(c) and 325(c), that “[t]he
`Director may allow other petitioners to join an inter partes or post-grant
`review.” See H.R. Rep. No. 112-98, pt.1, at 76 (2011). Although that
`statement may expressly refer to “other petitioners,” it does not preclude
`joinder of a same petitioner. During the Senate’s March 2011 debates on the
`6
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`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`AIA, Senator Kyl explained that the USPTO expected to allow liberal
`joinder of reviews, including those having new arguments:
`The Office anticipates that joinder will be allowed as of right—
`if an inter partes review is instituted on the basis of a petition,
`for example, a party that files an identical petition will be joined
`to that proceeding, and thus allowed to file its own briefs and
`make its own arguments. If a party seeking joinder also presents
`additional challenges to validity that satisfy the threshold for
`instituting a proceeding, the Office will either join that party
`and its new arguments to the existing proceeding, or institute a
`second proceeding for the patent.
`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
`(emphasis added). By specifically referring to “new arguments,” Senator
`Kyl’s remarks contemplate not only the joinder of parties, but specifically
`contemplate the joinder of additional issues to the pending proceeding. See
`also 154 Cong. Rec. S9988 (daily ed. Sept. 27, 2008) (statement of Sen.
`Kyl) (“[A]dditional petitions can be joined only if, among other things, they
`are properly filed.”); id. (“[A] procedurally proper successive petition for . . .
`review may be joined to a pending proceeding at the discretion of the
`Director, even if the 329(b)(2) deadline has not been met, so long as the
`Director determines that the petition satisfies the threshold set in section
`327(c).”). Thus, the legislative history of the AIA supports a conclusion that
`Congress intended to allow joinder not only of additional parties, but also
`joinder of additional issues, which may be raised by a petitioner that is
`already a party to the proceeding.
`Noting that §§ 315(c) and 325(c) give the USPTO discretion over
`whether to allow joinder, Senator Kyl observed that “[t]his safety valve will
`allow the Office to avoid being overwhelmed if there happens to be a deluge
`7
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`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`of joinder petitions in a particular case.” 157 Cong. Rec. S1376 (daily ed.
`Mar. 8, 2011) (statement of Sen. Kyl). The Board will determine whether to
`grant joinder on a case-by-case basis, taking into account the particular facts
`of each case, substantive and procedural issues, and other considerations.
`See id. (stating that when determining whether and when to allow joinder,
`the Office may consider factors including “the breadth or unusualness of the
`claim scope” and claim construction issues). Those remarks highlight the
`discretion given to the USPTO by Congress in joinder matters. We, thus,
`conclude that there is nothing in the language of the statute governing
`joinder, 35 U.S.C. § 315(c), nor anything in its legislative history, that limits
`joinder to the joinder of parties only. In fact, joinder of issues was
`specifically envisioned by Congress.
`Consideration of the purpose of the AIA also supports our
`construction. See, e.g., Ransom v. FIA Card Servs., N.A., 562 U.S. 61, 71
`(2011) (considering statutory purpose in determining the construction of a
`term in the Bankruptcy Abuse Prevention and Consumer Protection Act). It
`is significant that a primary purpose of the AIA was to “limit unnecessary
`and counterproductive litigation costs.” 157 Cong. Rec. S1349 (daily ed.
`Mar. 8, 2011) (statement of Sen. Leahy). We look also to our rule governing
`joinder in inter partes review, 37 C.F.R. § 42.122(b), which states:
`Request for joinder. Joinder may be requested by a patent
`owner or petitioner. Any request for joinder must be filed, as a
`motion under § 42.22, no later than one month after the
`institution date of any inter partes review for which joinder is
`requested. The time period set forth in § 42.101(b) shall not
`apply when the petition is accompanied by a request for joinder.
`The policy basis for construing our rules for these proceedings, which were
`8
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`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`prescribed as mandated by 35 U.S.C. § 316, is expressed in 37 C.F.R.
`§ 42.1(b): The rules “shall be construed so as to ensure the just, speedy, and
`inexpensive resolution of every proceeding.” See also Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,758 (Aug. 14, 2012) (stating the
`same). The discretion to join the same party promotes these ends by
`allowing the Board to address together issues that might otherwise have to
`be addressed separately elsewhere, such as in related district court actions or
`separate Board proceedings.
`
`Analysis
`Petitioner argues that joining the second cases to the first cases is
`appropriate because the cases all involve the same parties, the same patents,
`and the same challenged claims. Mot. 6. Petitioner also contends that the
`second cases do not involve any different claim construction issues than the
`first cases. Id. Petitioner further asserts that the grounds in the first cases
`and the second cases “are similar in many respects,” specifically, “[w]hile
`the primary references are different, the secondary references are the same.”
`Id. at 7. Finally, Petitioner notes that the parties have agreed to stay the
`related district court action through the conclusion of the second cases,
`arguing that “[a]ny change to the [first cases’ schedules] that may be
`required to accommodate joinder should therefore have minimal, if any,
`prejudicial effect.” Id. at 6.
`In order to accommodate joinder, Petitioner seeks to have the trial
`schedules of the first cases extended beyond one year from institution. Id. at
`9. Petitioner notes that 35 U.S.C. § 316(a)(11) explicitly authorizes such a
`course. Id. Petitioner contends that “prejudice to Patent Owner is
`
`
`
`9
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`
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`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`minimized through Patent Owner’s agreement to a stay” until the conclusion
`of the second cases. Id. Petitioner further indicates it will agree to increased
`briefing and certain additional discovery, if joinder is granted. Id. at 9–10.
`Patent Owner responded initially by opposing Petitioner’s Joinder
`Motions. See, e.g., Resp. 6–13. Subsequent to its response, however, Patent
`Owner filed a Notice stating that “Rapid Completions withdraws its
`opposition to Baker Hughes’ joinder motions, provided that joinder would
`result in a single trial for all currently pending IPRs related to the ’505, ’634,
`and ’774 patents.” IPR2016-01496, Paper 25, 1; IPR2016-01505, Paper 25,
`1; IPR2016-01506, Paper 26, 1.
`Under the circumstance of these cases, we are persuaded that joinder
`of the second cases to the first cases is warranted. Because the first and
`second cases involve the same patents, we are persuaded that significant
`substantive and procedural efficiencies would result from joining the cases.
`For example, substantively, Petitioner’s assertion that the second cases do
`not involve any different claim construction issues appears correct.
`Procedurally, we determine that it would be efficient to have oral argument
`relating to the ’505, ’634, and ’774 patents on the same day in both the first
`cases and the second cases. Accordingly, we grant Petitioner’s Joinder
`Motions. A revised scheduling order for the joined cases is being issued
`concurrently. Although this Decision may not necessarily result in a single
`trial that includes all three of the ’505, ’634, and ’774 patents, all pending
`inter partes reviews for these patents will have the same schedule going
`forward, thereby providing efficiencies similar to those of having a single
`trial for all three patents.
`
`
`
`10
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`
`
`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`
`Order
`In consideration of the foregoing, it is hereby:
`ORDERED that IPR2016-01496 is joined with IPR2016-00596;
`FURTHER ORDERED that IPR2016-01505 is joined with IPR2016-
`00597;
`FURTHER ORDERED that IPR2016-01506 is joined with IPR2016-
`00598;
`FURTHER ORDERED that IPR2016-01496 is terminated under
`37 C.F.R. § 42.72 and all further filings should be made in Case IPR2016-
`00596;
`FURTHER ORDERED that IPR2016-01505 is terminated under
`37 C.F.R. § 42.72 and all further filings should be made in Case IPR2016-
`00597;
`FURTHER ORDERED that IPR2016-01506 is terminated under
`37 C.F.R. § 42.72 and all further filings should be made in Case IPR2016-
`00598; and
`FURTHER ORDERED that a copy of this Decision is to be entered in
`the files of Cases IPR2016-00596, IPR2016-00597, and IPR2016-00598.
`
`
`
`11
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`
`
`Case IPR2016-01496 (Patent 7,134,505 B2)
`Case IPR2016-01505 (Patent 7,543,634 B2)
`Case IPR2016-01506 (Patent 7,861,774 B2)
`
`PETITIONERS:
`
`Mark Garrett
`Eagle Robinson
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`PATENT OWNER:
`
`Hamad Hamad
`CALDWELL CASSADY CURRY, P.C.
`hhamad@caldwellcc.com
`
`Gregory Gonsalves
`GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`12
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