Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 27
`Entered: October 19, 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 IPR2017-00247
`Patent 9,303,501 B2
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 27
`Entered: October 19, 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 IPR2017-00247
`Patent 9,303,501 B2
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00247
`Patent 9,303,501 B2
`
`
`Introduction
`Petitioner has timely filed a Motion for Joinder with Case IPR2016-
`01380. Paper 3 (“Motion” or “Mot.”). Patent Owner filed a Response to
`Petitioner’s Motion for Joinder. Paper 9 (“Response” or “Resp.”).
`Petitioner notes that this case and IPR2016-01380 involve “the same
`patent, the same challenged claims, the same proposed claim constructions,
`the same parties, and the same expert for [Petitioner].” Motion 1.
`Regarding the effect of the requested joinder on the trial schedule and
`discovery, Petitioner indicates that it is flexible. Id. at 7–8.
`Petitioner also explains that this case and IPR2016-01380 involve
`many of the same references asserted as prior art. Id. at 5. Petitioner notes,
`for example, that both cases involve the Thomson1 reference. Id. Petitioner
`explains that “[i]n the 1380 Proceeding, the primary reference is Thomson, a
`1997 reference that shows an assembly with ball-actuated sliding sleeves
`and multi-element, solid body packers that was used for acidizing in a cased
`hole.” Id. In this case, Petitioner notes that Thomson is relied on for
`teachings related to packers. Id.
`Petitioner further notes that Ellsworth2 and Halliburton3 are asserted
`as prior art references in both this case and IPR2016-01380. Id. at 6.
`Petitioner explains that Halliburton is relied on in both proceedings as
`
`
`1 D.W. Thomson et al., Design and Installation of a Cost-Effective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE (Society for Petroleum Engineering) 37482,
`97–108 (1997).
`2 B. Ellsworth et al., Production Control of Horizontal Wells in a Carbonate
`Reef Structure, 1999 Canadian Institute of Mining, Metallurgy, and
`Petroleum Horizontal Well Conference (1999).
`3 Halliburton, Completion Products, Second Edition.
`2
`
`
`
`
`
`IPR2017-00247
`Patent 9,303,501 B2
`
`teaching a hydraulically actuated sliding sleeve. Id. at 6. Petitioner also
`notes that in both this case and IPR2016-01380, Ellsworth is relied on for
`teaching the use of solid body packers. Id.
`Patent Owner contends that Petitioner has not shown that joinder was
`appropriate at the time Petitioner filed the Motion. Resp. 2. Patent Owner
`bases this on observations that it had not yet been decided whether to
`institute inter partes review in certain other cases, or whether to grant certain
`other motions for joinder filed by Petitioner. Id. at 1. Noting some
`differences in how prior art references are asserted in this case and IPR2016-
`01380, Patent Owner also asserts that “[j]oinder will increase the risk that
`[Petitioner] may assert theories or uses for references not disclosed in a
`particular petition.” Id. at 2.
`Under the circumstance of this case, we are persuaded that joinder is
`warranted. Because the cases involve the same patent, the same challenged
`claims, and the same parties, we are persuaded that significant substantive
`and procedural efficiencies would result from joining the cases.
`Procedurally, we determine that it would be efficient to have oral argument
`relating to the challenged patent on the same day. With respect to Patent
`Owner’s concern that certain other decisions had not been entered when
`Petitioner filed the Motion, those decisions have since been entered. See
`Resp. 1. Regarding Patent Owner’s other concern that Petitioner may
`attempt to rely on references for more than they were relied on in the
`respective petitions of this case and IPR2016-01380, we always exercise
`vigilance for any improper new arguments. And Patent Owner may raise
`any such issues with us at any time during the proceedings.
`
`
`
`3
`
`
`
`IPR2017-00247
`Patent 9,303,501 B2
`
`
`In view of the foregoing, we grant Petitioner’s Joinder Motion. A
`revised scheduling order for the joined cases is being issued concurrently.
`Order
`In consideration of the foregoing, it is hereby:
`ORDERED that IPR2017-00247 is joined with IPR2016-01380;
`FURTHER ORDERED that IPR2017-00247 is terminated under
`37 C.F.R. § 42.72 and all further filings should be made in Case IPR2016-
`01380; and
`FURTHER ORDERED that a copy of this Decision is to be entered in
`the file of Case IPR2016-01380.
`
`
`
`4
`
`
`
`IPR2017-00247
`Patent 9,303,501 B2
`
`PETITIONERS:
`
`Mark T. Garrett
`Eagle H. Robinson
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`
`PATENT OWNER:
`
`Hamad M. Hamad
`CALDWELL, CASSADY & CURRY P.C.
`hhamad@caldwellcc.com
`
`Gregory J. Gonsalves, Reg. No. 43,639
`GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`5
`
`
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