`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 86
`Entered: December 4, 2019
`
`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.
`
`
`IPR2016-005981
`Patent 7,861,774 B2
`
`
`
`NEIL T. POWELL, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`
`1 IPR2016-001506 has been joined with IPR2016-00598.
`
`
`
`IPR2016-00598
`Patent 7,861,774 B2
`
`
`Petitioner filed a Motion to Submit Supplemental Information seeking
`to submit certain exhibits as supplemental information “to further establish
`the prior art nature of Lane-Wells (Ex. 1002), Van Dyke (Ex. 1006), Baker
`(Ex. 1007), Howard (Ex. 1018), and Hyne (Ex. 1019).” IPR2016-01506,
`Paper 272 (“the Motion” or “Mot.”). Patent Owner filed a Response to
`Petitioners’ Motion to Submit Supplemental Information. IPR2016-01506
`Paper 28 (“Response” or “Resp.”).
`Petitioner argues that each of the exhibits it seeks entered as
`supplemental information has been submitted in a timely manner and is
`relevant to a claim for which trial has been instituted. Mot. 6–10. Asserting
`that Patent Owner received the exhibits more than two months prior to the
`due date for its Patent Owner Response, Petitioner argues that entry of the
`exhibits will not prejudice Patent Owner. Id. at 10.
`Patent Owner objects to entry of only one of the exhibits proffered by
`Petitioner—the Davis-Nichols Declaration (Ex. 11233), which relates to the
`public accessibility of Lane-Wells (IPR2016-01506, Ex. 1002). Resp. 1–5.
`Noting that its Preliminary Response (IPR2016-01506 Paper 17) attacked
`Petitioner’s other evidence of public accessibility of Lane-Wells, Patent
`Owner argues that we should not allow Petitioner to submit new evidence
`that would require Patent Owner to launch a new attack on Petitioner’s
`public accessibility assertion. Id. at 1–3. Patent Owner asserts that
`
`
`
`2 This paper was filed in IPR2016-01506 before that case was joined with
`IPR2016-00598 and terminated.
`3 The Motion and Response refer to this declaration as Exhibit 1023, but the
`declaration appears in the record as Exhibit 1123.
`2
`
`
`
`
`
`Case IPR2016-00598
`Patent 7,861,774 B2
`
`Petitioner’s “attempted reliance on this new evidence demonstrates that the
`Petition itself is fatally flawed.” Id. at 3.
`We find Petitioner’s arguments more persuasive than Patent Owner’s.
`We agree with Petitioner that the Motion complies with the requirements of
`37 C.F.R. § 42.123(a). Additionally, consistent with Petitioner’s arguments,
`we do not find significant prejudice to Patent Owner from the entry of the
`Davis-Nichols Declaration. Contrary to Patent Owner’s argument, the
`Petition is not fatally flawed. As we explained when we instituted trial,
`Petitioner submitted evidence of public accessibility sufficient to
`demonstrate a reasonable likelihood of prevailing. IPR2016-01506
`Paper 19, 6–11. Neither Patent Owner’s initial attack nor its attempt to
`reiterate that initial attack persuade us otherwise. Having submitted
`evidence of public accessibility sufficient to demonstrate a reasonable
`likelihood of prevailing, Petitioner’s response to Patent Owner’s attack with
`additional evidence bolstering its public accessibility contention is
`foreseeable, reasonable, and not unduly prejudicial to Patent Owner.
`Order
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information is granted.
`
`
`
`3
`
`
`
`Case IPR2016-00598
`Patent 7,861,774 B2
`
`PETITIONER:
`
`Mark T. Garrett
`Eagle H. Robinson
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`PATENT OWNER:
`
`Hamad Hamad
`Gregory Gonsalves
`CALDWELL, CASSADY & CURRY P.C
`hhamad@caldwellcc.com
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`
`
`4
`
`
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