Trials@uspto.gov
`571.272.7822
`
`
`
`IPR2016-01000, Paper 21
`IPR2016-01003, Paper 20
`May 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Petitioner,
`
`v.
`
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Patent Owner.
`
`
`IPR2016-01000 (Patent 9,038,656 B2)1
`IPR2016-01003 (Patent 8,261,761 B2)
`
`
`
`
`
`
`Before BEVERLY M. BUNTING, and ROBERT L. KINDER,
`Administrative Patent Judges.
`
`ROBERT L. KINDER, Administrative Patent Judge.
`
` ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case. The parties are not authorized to use
`this style heading for any subsequent papers. For convenience, paper
`numbers refer to those filed in IPR2016-01003.
`
`
`571.272.7822
`
`
`
`IPR2016-01000, Paper 21
`IPR2016-01003, Paper 20
`May 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Petitioner,
`
`v.
`
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Patent Owner.
`
`
`IPR2016-01000 (Patent 9,038,656 B2)1
`IPR2016-01003 (Patent 8,261,761 B2)
`
`
`
`
`
`
`Before BEVERLY M. BUNTING, and ROBERT L. KINDER,
`Administrative Patent Judges.
`
`ROBERT L. KINDER, Administrative Patent Judge.
`
` ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case. The parties are not authorized to use
`this style heading for any subsequent papers. For convenience, paper
`numbers refer to those filed in IPR2016-01003.
`
`
`
`IPR2016-01000 (Patent 9,038,656 B2)
`IPR2016-01003 (Patent 8,261,761 B2)
`
`
`
`On May 23, 2017, Patent Owner sent email correspondence to the
`Board seeking a conference call to request authorization to file a Sur-Reply
`of seven pages in both IPR2016-01000 and IPR2016-01003. Pursuant to a
`request from the Board, both parties submitted a joint email on May 25,
`2017, briefly setting forth the reasons for Patent Owner’s request, and the
`basis of Petitioner’s opposition to the request to file a sur-reply.
`Patent Owner seeks to file a seven page sur-reply directed to two
`issues. First, the parties dispute the claim construction of certain “counter”
`limitations. At issue in each proceeding is whether the “counter” limitations
`are means-plus-function limitations subject to 35 U.S.C. § 112 ¶ 6. Patent
`Owner contends that additional briefing is necessary to respond to
`Petitioner’s contention, raised for the first time in Petitioner’s Replies, that
`the term “counter” denotes a particular class of structures. Also, Patent
`Owner seeks to address new evidence (Exs. 1012, 1014, and 1018) produced
`by Petitioner. Patent Owner also seeks to respond to Petitioner’s
`characterization of deposition testimony on the meaning of “counter” by
`Patent Owner’s expert.
`Petitioner contends that Patent Owner should have already addressed
`the presumption related to whether a term not reciting the traditional “means
`for” language should invoke § 112, ¶ 6. Petitioner also contends its
`arguments are directly responsive to those arguments raised by Patent
`Owner in its Response, and are not the proper subject of a sur-reply—
`particularly Patent Owner’s requests to respond to case law and
`“characterizations” of deposition testimony.
`
`2
`
`
`
`IPR2016-01000 (Patent 9,038,656 B2)
`IPR2016-01003 (Patent 8,261,761 B2)
`
`Under the particular circumstances of this case, and for this issue, we
`
`exercise our discretion under 37 C.F.R. § 42.20(d) and grant Patent Owner’s
`request for authorization to file a sur-reply. Petitioner raises a valid
`objection, namely that a sur-reply is not a proper mechanism to address
`“characterizations” of deposition testimony. Accordingly, Patent Owner’s
`sur-reply may only address new evidence and argument related to the
`“counter” limitations. The briefing should not attempt to recant or reform
`prior deposition testimony. The time for redirect is past and the Board is
`capable of parsing out any alleged mischaracterizations, which Patent Owner
`may also address and bring to our attention during oral hearing.
`
`Patent Owner also seeks additional briefing to address issues raised in
`Petitioner’s Replies as to whether the Howell reference, asserted as § 102
`prior art in the proceedings, is properly enabled. Patent Owner seeks to
`respond to Petitioner’s contention that newly produced Exhibits 1012, 1014,
`1016, and 1018 demonstrate that a POSITA would have been able to
`predictably implement Howell’s mechanism. We agree that briefing related
`to these new exhibits and argument is proper considering, as Petitioner
`recognizes, “it is Patent Owner’s burden to demonstrate non-enablement.”
`Paper 18, 10–11. We are mindful of Petitioner’s objection that Patent
`Owner is seeking to remedy deficiencies in its original Wands analysis.
`Although we exercise discretion to allow Patent Owner to file a sur-reply,
`the briefing should only address new evidence and argument from
`Petitioner’s Reply and not attempt to characterize Patent Owner’s original
`analysis, or reargue what may or may not be present in Patent Owner’s
`Response.
`
`
`3
`
`
`
`IPR2016-01000 (Patent 9,038,656 B2)
`IPR2016-01003 (Patent 8,261,761 B2)
`
`
`Under the particular circumstances of this case, we exercise our
`discretion under 37 C.F.R. § 42.20(d) and grant Patent Owner’s request for
`authorization to file a seven-page sur-reply. Our decision to authorize a Sur-
`Reply is influenced by the fact that Petitioner’s Reply presents certain new
`evidence and argument. Patent Owner did not request, and is therefore not
`authorized, to present any new evidence or expert testimony with the sur-
`reply.
`
`Accordingly, it is:
`ORDERED that Patent Owner’s request for authorization to file a Sur-
`Reply is granted;
`FURTHER ORDERED that Patent Owner’s Sur-Reply is limited to
`seven pages;
`FURTHER ORDERED that Patent Owner shall file its Sur-Reply no
`later than June 2, 2017;
`FURTHER ORDERED that no new evidence or testimony of any
`kind shall be introduced or filed with Patent Owner’s Sur-Reply; and
`FURTHER ORDERED that Petitioner is not authorized to file a
`responsive submission.
`
`
`
`
`4
`
`
`
`IPR2016-01000 (Patent 9,038,656 B2)
`IPR2016-01003 (Patent 8,261,761 B2)
`
`
`PETITIONER:
`
`Scott McKeown
`Stefan Koschmieder
`Christopher Ricciuti
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`CPDocketMcKeown@oblon.com
`CPDocketSK@oblon.com
`CPDocketRicciuti@oblon.com
`
`PATENT OWNER:
`
`Mark Garrett
`Eagle Robinson
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`
`
`5
`
`
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