`571.272.7822
`
`
`Paper 8
`Entered: January 8, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROPPANT EXPRESS INVESTMENTS, LLC,
`PROPPANT EXPRESS SOLUTIONS, LLC,
`Petitioner,
`
`v.
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01917 (Patent 9,296,518)
`Case IPR2017-01918 (Patent 9,403,626)1
`
`____________
`
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`
`IPR2017-01917 (Patent 9,296,518)
`IPR2017-01918 (Patent 9,403,626)
`
`
`
`
`
`In its preliminary responses, Oren Technologies, LLC (“Patent
`Owner”) argues that Proppant Express Investments, LLC, and Proppant
`Express Solutions, LLC, (collectively, “Petitioner”) failed to name all real
`parties in interest, namely, Liberty Oilfield Services, LLC (“Liberty”).
`Paper 7, 12–32 (IPR2017-01917); Paper 7, 12–33 (IPR2017-01918).
`The statute governing inter partes review proceedings sets forth
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a); see also
`37 C.F.R. § 42.8(b)(1) (providing a requirement to identify real parties-in-
`interest in mandatory notices). “Whether a party who is not a named
`participant in a given proceeding nonetheless constitutes a ‘real party-in-
`interest’ . . . to that proceeding is a highly fact-dependent question” with no
`“bright line test,” and is assessed “on a case-by-case basis.” 77 Fed. Reg. at
`48,759 (citing Taylor v. Sturgell, 553 U.S. 880, 893–95 (2008)).
`Our precedential decision in Lumentum Holdings, Inc. v. Capella
`Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB Mar. 4, 2016)
`(Paper 38), indicates that “a lapse in compliance with those requirements
`[under 35 U.S.C. § 312(a), including that all real parties in interest be
`identified] does not deprive the Board of jurisdiction over the proceeding, or
`preclude the Board from permitting such lapse to be rectified.” See also
`Intel Corp. v. Alacritech, Inc., Case IPR2017-01392, slip op. at 23 (PTAB
`Nov. 30, 2017) (Paper 11) (noting that real parties in interest can be
`corrected); Elekta, Inc. v. Varian Med. Sys., Inc., Case IPR2015-01401, slip
`op. at 6–10 (PTAB Dec. 31, 2015) (Paper 19) (holding that disclosing
`
`2
`
`
`
`
`
`IPR2017-01917 (Patent 9,296,518)
`IPR2017-01918 (Patent 9,403,626)
`
`
`additional real parties in interest via an updated disclosure does not mandate
`a change in petition filing date).
`Our policy is to “secure the just, speedy, and inexpensive resolution of
`every [inter partes review] proceeding.” 37 C.F.R. § 42.1. To that end, we
`grant Petitioner leave, if it wishes, to amend its mandatory notices to include
`Liberty. This amendment will not change the filing date accorded to the
`petitions in these proceedings. This Order does not decide the issue of
`whether Liberty is a real party in interest. That is, this Order shall not be
`construed as a finding that Liberty is a real party in interest in these
`proceedings. If Petitioner does not believe that Liberty is an unnamed real
`party in interest, in lieu of updating its mandatory notices, Petitioner may
`file a reply brief to address Patent Owner’s argument regarding the real party
`in interest issue (and only that issue).
`For the reasons given, it is hereby:
`ORDERED that within 5 days of the entry of this Order, Petitioner
`may amend its mandatory notices to name Liberty as a real party in interest
`in each of IPR2017-01917 and IPR2017-01918, and updating its mandatory
`notices will not result in a new filing date accorded to the petitions;
`FURTHER ORDERED that in lieu of updating its mandatory notices,
`Petitioner may file a 10-page reply brief to address only Patent Owner’s real
`party in interest arguments in each of IPR2017-01917 and IPR2017-01918,
`if such briefs are filed within 10 days of the entry of this Order; and
`FURTHER ORDERED that Patent Owner may not file a sur reply in
`response to Petitioner’s reply briefs, if filed.
`
`
`
`3
`
`
`
`
`
`IPR2017-01917 (Patent 9,296,518)
`IPR2017-01918 (Patent 9,403,626)
`
`
`For PETITIONER:
`Mark Garrett
`W. Andrew Liddell
`Jeffrey Kitchen
`Jeremy Albright
`Charles Walker
`Catherine Garza
`Norton Rose Fulbright US LLP
`mark.garrett@nortonrosefulbright.com
`andrew.liddell@nortonrosefulbright.com
`jeff.kitchen@nortonrosefulbright.com
`jeremy.albright@nortonrosefulbright.com
`charles.walker@nortonrosefulbright.com
`cat.garza@nortonrosefulbright.com
`
`
`For PATENT OWNER:
`Gianni Cutri
`Eugene Goryunov
`Adam Kaufmann
`Kyle Kantarek
`KIRKLAND & ELLIS LLP
`gianni.cutri@kirkland.com
`egoryunov@kirkland.com
`adam.kaufmann@kirkland.com
`kyle.kantarek@kirkland.com
`
`4
`
`
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