`Tel: 571-272-7822
`
`Paper 9
`Entered: September 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
`v.
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`
`Cases IPR2019-00708 and IPR2019-007681
`Patent RE46,137 E
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This Order sets the schedule for the above-identified, related proceedings,
`which were each instituted on the same day. We exercise our discretion to
`issue one order covering each proceeding. The parties, however, are not
`authorized to use this style heading in any subsequent papers.
`
`
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`IPR2019-00708 and IPR2019-00768
`Patent RE46,137 E
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`The parties are directed to contact the Board within a month of this
`Order if there is a need to discuss proposed changes to this Scheduling Order
`or proposed motions that have not been authorized in this Order or other
`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
`preparing for the initial conference call). A request for an initial conference
`call shall include a list of proposed motions, if any, to be discussed during
`the call.
`2. Protective Order
`A protective order does not exist in this proceeding unless the parties
`file one and the Board approves it. If either party files a motion to seal
`before entry of a protective order, a jointly proposed protective order should
`be presented as an exhibit to the motion. We encourage the parties to adopt
`the Board’s default protective order if they conclude that a protective order
`is necessary. See Default Protective Order, Practice Guide, App. B. If the
`parties choose to propose a protective order deviating from the default
`protective order, they must submit the proposed protective order jointly
`along with a marked-up comparison of the proposed and default protective
`orders showing the differences between the two and explain why good cause
`exists to deviate from the default protective order.
`The Board has a strong interest in the public availability of trial
`proceedings. Redactions to documents filed in this proceeding should be
`limited to the minimum amount necessary to protect confidential
`information, and the thrust of the underlying argument or evidence must be
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`Patent RE46,137 E
`clearly discernible from the redacted versions. We also advise the parties
`that information subject to a protective order may become public if
`identified in a final written decision in this proceeding, and that a motion to
`expunge the information will not necessarily prevail over the public interest
`in maintaining a complete and understandable file history. See Practice
`Guide 48,761.
`3. Dispute Resolution During Trial
`The Panel encourages parties to resolve disputes arising during the
`trial on their own and in accordance with the precepts set forth in 37 C.F.R.
`§ 42.1(b). To the extent that a dispute arises between the parties, we order
`the parties to meet and confer to resolve their dispute before contacting the
`Board. If attempts to resolve the dispute fail, a party may request a
`conference call with the Board and the other party in order to seek
`authorization to move for relief.
`In any request for a conference call with the Board to resolve a
`dispute, the requesting party shall: (a) certify that it has conferred with the
`other party in an effort to resolve the dispute; (b) identify with specificity the
`issues for which agreement has not been reached; (c) identify the precise
`relief to be sought; and (d) propose specific dates and times at which both
`parties are available for the conference call.
`4. Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, Appendix D, apply to this proceeding. The Board
`may impose an appropriate sanction for failure to adhere to the Testimony
`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
`impedes, delays, or frustrates the fair examination of a witness.
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the deposition
`rather than excerpts of only those portions being cited. After a deposition
`transcript has been submitted as an exhibit, all parties who subsequently cite
`to portions of the transcript shall cite to the first-filed exhibit rather than
`submitting another copy of the same transcript.
`5. Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`(1) cross-examination begins after any supplemental evidence is due and
`(2) cross-examination ordinarily ends no later than a week before the filing
`date for any paper in which the cross-examination testimony is expected to
`be used. 37 C.F.R. § 42.53(d)(2).
`6. Motions to Amend
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. 37 C.F.R. § 42.121(a). To satisfy this
`requirement, Patent Owner should request a conference call with the Board
`no later than two weeks prior to DUE DATE 1. See Section B below
`regarding DUE DATES.
`Patent Owner has the option to receive preliminary guidance from the
`Board on its motion to amend. See Notice Regarding a New Pilot Program
`Concerning Motion to Amend Practice and Procedures in Trial Proceedings
`under the America Invents Act before the Patent Trial and Appeal Board, 84
`Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”). If Patent
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`Owner elects to request preliminary guidance from the Board on its motion,
`it must do so in its motion to amend filed on DUE DATE 1.
`Any motion to amend and briefing related to such a motion shall
`generally follow the practices and procedures described in MTA Pilot
`Program Notice unless otherwise ordered by the Board in this proceeding.
`The parties are further directed to the Board’s Guidance on Motions to
`Amend in view of Aqua Products (https://go.usa.gov/xU6YV), and
`Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129 (Paper 15) (PTAB
`Feb. 25, 2019) (precedential).
`As indicated in the MTA Pilot Program Notice, Patent Owner has the
`option at DUE DATE 3 to file a revised motion to amend (instead of a reply,
`as noted above) after receiving petitioner’s opposition to the original motion
`to amend and/or after receiving the Board’s preliminary guidance (if
`requested). A revised motion to amend must provide amendments,
`arguments, and/or evidence in a manner that is responsive to issues raised in
`the preliminary guidance and/or petitioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board shall enter
`a revised scheduling order setting the briefing schedule for that revised
`motion and adjusting other due dates as needed. See MTA Pilot Program
`Notice, App’x B 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary board guidance on the motion to amend and the Patent
`Owner does not file either a reply to the opposition to the motion to amend
`or a revised motion to amend at Due Date 3, Petitioner may file a reply to
`the Board’s preliminary guidance, no later than three (3) weeks after Due
`Date 3. The reply may only respond to the preliminary guidance. Patent
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`Owner may file a sur-reply in response to Petitioner’s reply to the Board’s
`preliminary guidance. The sur-reply may only respond to arguments made
`in the reply and must be filed no later than three (3) weeks after the
`Petitioner’s reply. No new evidence may accompany the reply or the sur-
`reply in this situation.
`7. Oral Argument
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`To permit the Board sufficient time to schedule the oral argument, the
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth in the Due Date Appendix.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria. The
`parties may jointly request that the oral argument instead be held at any one
`of the USPTO Regional Offices. The parties should meet and confer, and
`jointly propose the parties’ preference at the initial conference call, if
`requested. Alternatively, the parties may jointly file a paper stating their
`preference for the hearing location within one month of this Order. Note
`that the Board may not be able to honor the parties’ preference of hearing
`location due to, among other things, the availability of hearing room
`resources and the needs of the panel. The Board will consider the location
`request and notify the parties accordingly if a request for change in location
`is granted.
`Seating in the Board’s hearing rooms may be limited, and will be
`available on a first-come, first-served basis. If either party anticipates that
`more than five (5) individuals will attend the argument on its behalf, the party
`should notify the Board as soon as possible, and no later than the request for
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`oral argument. Parties should note that the earlier a request for
`accommodation is made, the more likely the Board will be able to
`accommodate additional individuals.
`
`B. DUE DATES
`This Order sets due dates for the parties to take action after institution
`of the proceeding. The parties may stipulate to different dates for DUE
`DATES 1 through 3, 5, and 6 (earlier or later, but no later than DUE
`DATE 7). In stipulating to move any due dates in the scheduling order, the
`parties must be cognizant that the Board requires four weeks after the filing
`of an opposition to the motion to amend (or the due date for the opposition,
`if none is filed) for the Board to issue its preliminary guidance, if requested
`by Patent Owner. A notice of the stipulation, specifically identifying the
`changed due dates, must be promptly filed. The parties may not stipulate an
`extension of DUE DATES 4, 7, and 8.
`In stipulating to different times, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony.
`1. DUE DATE 1
`The Patent Owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120). If Patent
`Owner elects not to file a response, Patent Owner must arrange a conference
`call with the parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.
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`b.
`A motion to amend the patent (37 C.F.R. § 42.121).
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s Response.
`Petitioner may file an opposition to the motion to amend.
`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may also file either:
`a.
`a reply to Petitioner’s opposition to the motion to amend and
`the Board’s preliminary guidance (if provided); or
`b.
`a revised motion to amend.
`4. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`5. DUE DATE 5
`a.
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend.
`b.
`Either party may file a motion to exclude evidence (37 C.F.R
`§ 42.64(c)).
`6. DUE DATE 6
`Either party may file an opposition to a motion to exclude evidence.
`Either party may request that the Board hold a pre-hearing conference.
`7. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`8. DUE DATE 8
`The oral argument (if requested) will be held on DUE DATE 8.
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`DUE DATE APPENDIX
`
`DUE DATE 1 ..................................................................... December 2, 2019
`Patent Owner’s response to the Petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ..................................................................... February 26, 2020
`Petitioner’s reply to Patent Owner’s Response
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ............................................................................. April 8, 2020
`Patent Owner’s sur-reply to Petitioner’s reply
`Patent Owner’s reply to Petitioner’s opposition to the motion to
`amend OR Patent Owner’s revised motion to amend
`DUE DATE 4 ........................................................................... April 29, 2020
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 .............................................................................. May 20, 2020
`Petitioner’s sur-reply to Patent Owner’s reply for motion to amend
`Motion to exclude evidence
`DUE DATE 6 ............................................................................ May 27, 2020
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 .............................................................................. June 2, 2020
`Reply to opposition to motion to exclude
`DUE DATE 8 .............................................................................. June 9, 2020
`Oral argument (if requested)
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`IPR2019-00708 and IPR2019-00768
`Patent RE46,137 E
`PETITIONER:
`Douglas R. Wilson
`ARMOND WILSON, LLP
`doug.wilson@armondwilson.com
`
`J. Boone Baxter
`HEIM PAYNE & CHORUSH, LLP
`bbaxter@hpcllp.com
`
`PATENT OWNER:
`Mark T. Garrett
`Eagle H. Robinson
`Jeremy Albright
`Michael Pohl
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefullbright.com
`eagle.robinson@nortonrosefullbright.com
`jeremy.albright@nortonrosefullbright.com
`michael.pohl@nortonrosefullbright.com
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