Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 37
`Date: May 29, 2020
`
`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.
`
`IPR2019-00768
`Patent RE46,137 E
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Staying Reexam
`37 C.F.R. § 42.122(a); 35 U.S.C. § 315(d)
`
`INTRODUCTION
`I.
`In this proceeding, we instituted inter partes review as to claims 1–44
`of U.S. Patent No. RE46,137 E (Ex. 1001, “the ’137 patent”). See Paper 8.
`Patent Owner filed a request for ex parte reexamination of claims 2, 4–7,
`12–15, 18, 19, 23–30, 32–40, 43, and 44 the ’137 patent. Ex. 1043, 1. The
`Office granted the request in Reexamination Control No. 90/014,418 (the
`
`
`Tel: 571-272-7822
`
`Paper 37
`Date: May 29, 2020
`
`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.
`
`IPR2019-00768
`Patent RE46,137 E
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Staying Reexam
`37 C.F.R. § 42.122(a); 35 U.S.C. § 315(d)
`
`INTRODUCTION
`I.
`In this proceeding, we instituted inter partes review as to claims 1–44
`of U.S. Patent No. RE46,137 E (Ex. 1001, “the ’137 patent”). See Paper 8.
`Patent Owner filed a request for ex parte reexamination of claims 2, 4–7,
`12–15, 18, 19, 23–30, 32–40, 43, and 44 the ’137 patent. Ex. 1043, 1. The
`Office granted the request in Reexamination Control No. 90/014,418 (the
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`“Reexam” or “Reexamination”) and further included independent claim 1
`within the scope of the reexamination because claims depending from
`claim 1 “cannot be reexamined without a reexamination of claim 1.”
`Ex. 1044, 3. Thus, claims 1, 2, 4–7, 12–15, 18, 19, 23–30, 32–40, 43,
`and 44 of the ’137 patent are subject to reexamination.
`The Board has authority to stay or terminate a reexamination
`involving a patent challenged in an inter partes review. 37 C.F.R.
`§ 42.122(a) (2019); see also 35 U.S.C. § 315(d) (2012). For the reasons
`discussed below, we determine that it is appropriate to stay the
`Reexamination.
`II. FACTUAL AND PROCEDURAL BACKGROUND
`We instituted review of claims 1–44 in this proceeding on September
`5, 2019. Paper 8. Patent Owner filed its request for ex parte reexamination
`on December 9, 2019. Ex. 1043, 36. Without conceding that the claims are
`unpatentable, the request set forth that Patel ’427 raised a substantial new
`question of patentability (“SNQ”) under 35 U.S.C. § 303(a) with respect to
`claims 2, 4–7, 12–15, 18, 19, 23–30, 32–40, 43, and 44 of the ’137 patent,
`based, in part, upon Petitioner’s argument in this proceeding that Patel ’427
`anticipates claims 2, 4–7, 12–15, 18, 19, 23–30, 32–40, 43, and 44.
`Ex. 1043, 4, 13. Patent Owner also sought entry of new claims 45–97. Id.
`at 5–12.
`On January 29, 2020, the Examiner ordered reexamination as to
`claims 2, 4–7, 12–15, 18, 19, 23–30, 32–40, 43, and 44. The Examiner
`further ordered reexamination of all other original claims of the ’137 patent
`and indicated that the newly presented claims would also be entered and
`
`2
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`examined in view of the similarities to the claims for which Patent Owner
`requested reexamination. Ex. 1044, 11.
`We authorized Petitioner via e-mails on February 13 and 18, 2020, to
`file a motion to terminate or stay the Reexam and Patent Owner to file an
`opposition. Petitioner filed its Motion to Terminate and/or Stay. Paper 21
`(“Mot.” or “Motion”). Patent Owner filed its opposition to the Motion.
`Paper 23 (“Opp.” or “Opposition”). Before filing the Opposition, Patent
`Owner filed a statutory disclaimer of claims 2–7, 12–15, 18–30, 32, 33,
`35–40, 43, and 44. Opp. 4; Ex. 2005. Therefore, of the claims in the
`’137 patent, only claims 1, 8–11, 16, 17, 31, 34, 41, and 42 remain in this
`proceeding and the Reexamination (the “Remaining Claims”).
`III. TERMINATION OF THE REEXAM
`We have reviewed Petitioner’s arguments for terminating the Reexam
`to foreclose alleged “gamesmanship” by Patent Owner before the Office.
`Mot. 5–7. We determine that Petitioner’s arguments are unpersuasive
`because they are based upon speculation about Patent Owner’s allegedly
`improper intent to delay resolution of the dispute between the parties.
`Moreover, Patent Owner’s filing of a request for reexamination during an
`inter partes review is expressly recognized as proper by the Office. See
`Notice Regarding Options for Amendments by Patent Owner Through
`Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed.
`Reg. 16,654, 16,656 (Apr. 22, 2019) (“Notice Regarding Amendment
`Options”). Accordingly, we deny Petitioner’s motion for termination of the
`Reexam.
`
`3
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`
`IV. STAY OF THE REEXAM
`Office guidance outlines factors the Board considers in AIA trials in
`deciding whether to stay a parallel reexamination involving the same patent.
`Notice Regarding Amendment Options, 84 Fed. Reg. at 16,657. Based on
`our consideration of each of those factors as described below, we grant
`Petitioner’s motion for a stay of the Reexam.
`A. Whether the claims challenged in the AIA proceeding are the same as
`or depend directly or indirectly from claims at issue in the concurrent
`parallel Office proceeding
`All Remaining Claims are subject to reexamination and review in this
`proceeding. Accordingly, this factor favors a stay.
`B. Whether the same grounds of unpatentability or the same prior art
`are at issue in both proceedings
`Both proceedings involve analysis of the patentability of the claims in
`view of Patel ’427 as the primary reference. Patent Owner points out that
`other references may be cited as a basis for examination of the newly added
`claims in the Reexam. Opp. 4. However, the newly presented claims recite
`many substantively similar limitations as the Remaining Claims. Compare,
`e.g., Ex. 1043 (claim 45), with Ex. 1001, 4:42–51 (claim 1). Moreover, the
`focus on Patel ’427 as a primary reference in both proceedings favors
`staying the Reexam so that we can complete our analysis of the Remaining
`Claims in view of Patel ’427. This factor favors a stay.
`C. Whether the concurrent parallel Office proceeding will duplicate
`efforts within the Office
`Because the Remaining Claims and Patel ’427 are also at issue in the
`Reexam, allowing both to proceed concurrently would duplicate efforts
`within the Office. This factor favors a stay.
`
`4
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`D. Whether the concurrent parallel Office proceeding could result in
`inconsistent results between proceedings (e.g., whether substantially
`similar issues are presented in the concurrent parallel Office
`proceeding)
`The Reexam and this proceeding address all Remaining Claims and
`Patel ’427, which raises the possibility of inconsistent analyses by the Board
`and the Examiner. This factor favors a stay.
`E. Whether amending the claim scope in one proceeding would affect
`the claim scope in another proceeding
`Patent Owner has submitted a preliminary amendment in the Reexam
`that seeks to add 53 new claims to the ’137 patent. Ex. 1043, 5–12. Our
`analysis of Patel ’427 as it applies to the Remaining Claims may affect the
`manner in which the Examiner applies Patel ’427 and other prior art during
`the Reexam. This factor favors a stay.
`F. The respective timeline and stage of each proceeding
`This proceeding is at an advanced stage, and the Reexam is at a
`relatively early stage, before a first office action. The deadline for entering a
`final decision in this proceeding is no later than September 4, 2020. A
`decision in this case would likely occur before a decision in the Reexam
`rendering the Board the preferred forum for addressing common issues.
`This factor favors a stay.
`G. The statutory deadlines of the respective proceedings
`This proceeding is subject to a statutory deadline that requires a final
`decision by no later than September 4, 2020, absent a rare extension.
`35 U.S.C. § 316(a)(11). The Reexam is required to be conducted with
`“special dispatch,” but is not subject to a specific statutory deadline.
`35 U.S.C. § 305. This factor favors a stay.
`
`5
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`H. Whether a decision in one proceeding would likely simplify issues in
`the concurrent parallel Office proceeding or render it moot
`A determination in this proceeding regarding the patentability of the
`Remaining Claims in view of Patel ’427 and the other references mustered
`by Petitioner would simplify the issues in the Reexam, which is considering
`the same claims and at least Patel ’427. Accord Avaya Inc. v. Network-1
`Security Solutions, Inc., IPR2013-00071, Paper 9, 2 (PTAB Dec. 21, 2012).
`Conversely, the issuance of a reexamination certificate in the Reexam before
`a final decision in this proceeding could simplify or render moot this
`proceeding. See M&P Golf, LLC v. Max Out Golf, LLC, IPR2016-00784,
`Paper 43 (PTAB Aug. 30, 2017) (entering judgment against Patent Owner as
`to original claims when Patent Owner amended each of those claims in a
`reexamination, and the reexamination certificate had issued). However,
`considering the current stages of the proceedings and the ordinary timeline
`for reexaminations, that eventuality is unlikely. This factor favors a stay.
`V. CONCLUSION
`The pertinent factors overwhelmingly weigh in favor of staying the
`Reexamination Proceeding. The facts here present an archetypal pattern
`warranting a stay. See Notice Regarding Amendment Options, 84 Fed. Reg.
`at 16,656 (“Good cause for staying a case may exist if, for example, an
`ongoing AIA proceeding, which is subject to statutory deadlines, is
`addressing the same or overlapping claims of a patent at issue in a parallel
`Office proceeding.”).
`
`VI. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion to stay Reexamination Control
`No. 90/014,418 is granted;
`
`6
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`FURTHER ORDERED that Reexamination Control No. 90/014,418
`is stayed pending the termination or completion of IPR2019-00768;
`FURTHER ORDERED that this stay tolls all time periods for filing
`further papers in Reexamination Control No. 90/014,418, and no further
`papers shall be filed in the reexamination while this stay remains in place;
`and
`
`FURTHER ORDERED that Petitioner’s motion to terminate
`Reexamination Control No. 90/014,418 is denied.
`
`7
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`PETITIONER:
`Douglas R. Wilson
`Michelle Armond
`ARMOND WILSON, LLP
`doug.wilson@armondwilson.com
`michelle.armond@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
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
