throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 44
`Entered: September 21, 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.
`____________
`
`Cases
`IPR2017-01917 (Patent 9,296,518 B2)
`IPR2017-01918 (Patent 9,403,626 B2)
`IPR2017-02103 (Patent 9,511,929 B2)
`IPR2018-00914 (Patent 9,511,929 B2)1
`
`____________
`
`
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`CHERRY, 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 B2)
`IPR2017-01918 (Patent 9,403,626 B2)
`IPR2017-02103 (Patent 9,511,929 B2)
`IPR2018-00914 (Patent 9,511,929 B2)
`
`
`
`
`On September 12, 2018, we issued a Decision to Institute (“Decision”
`
`or “Dec.”) in IPR2018-00733 (“the ’733 IPR”). See Case IPR2018-00733,
`
`Paper 13. The ’733 IPR involves the same parties and a patent related to the
`
`patents at issue in these proceedings. See Case IPR2018-00733, Paper 1, 2.
`
`In its preliminary response in the ’733 IPR, Oren Technologies, LLC
`
`(“Patent Owner”) argued that Proppant Express Investments, LLC, and
`
`Proppant Express Solutions, LLC, (collectively, “Petitioner”) failed to name
`
`all real parties in interest, namely, Big Box Proppant Investments, LLC
`
`(“Big Box”). Case IPR2018-00733, Paper 7, 1–29. In our Decision, we
`
`agreed with Petitioner that, based on the current record in the ’733 IPR, the
`
`evidence showed that Big Box was not a real party-in-interest in the ’733
`
`IPR. Dec. 18–19. However, we determined that the evidence suggested that
`
`Liberty Oilfield Services, LLC (“Liberty”) might be an unnamed real party-
`
`in-interest. Id. at 19–20. Patent Owner had not made that argument, so to
`
`allow Petitioner the opportunity to respond, we scheduled additional papers
`
`to be filed to address the real party-in-interest issue. Id. at 20. In particular,
`
`we authorized Petitioner the opportunity to file, by September 18, 2018, an
`
`updated mandatory notice to correct the real parties-in-interest in the
`
`’733 IPR. Id. at 20–21; Case IPR2018-00733, Paper 14, 8.
`
`On September 17, 2018, Petitioner indicated that it would name Big
`
`Box and Liberty as real parties-in-interest in the ’733 IPR, and Petitioner
`
`requested authorization to do the same in these proceedings. Patent Owner
`
`argued that Liberty should be named in these proceedings, as well. See, e.g.,
`
`2
`
`

`

`IPR2017-01917 (Patent 9,296,518 B2)
`IPR2017-01918 (Patent 9,403,626 B2)
`IPR2017-02103 (Patent 9,511,929 B2)
`IPR2018-00914 (Patent 9,511,929 B2)
`
`
`
`Case IPR2017-019172, Paper 31 (Patent Owner Response), at 3–27; Case
`
`IPR2017-01917, Paper 40 (Supplemental Patent Owner Response). We
`
`previously granted the parties additional briefing on the issue. See, e.g.,
`
`Case IPR2017-01917, Paper 34.
`
`On September 19, 2018, we conducted a call with the parties.3 During
`
`the call, Petitioner represented that it wished to file updated mandatory
`
`notices identifying Big Box and Liberty as real parties-in-interest. Patent
`
`Owner did not oppose the request. Also during the call, we authorized
`
`Petitioner to file such notices because doing so resolved a major contended
`
`issue in the proceedings. Under Lumentum Holdings, Inc. v. Capella
`
`Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB Mar. 4, 2016)
`
`(Paper 38), “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); see also
`
`Elekta, Inc. v. Varian Med. Sys., Inc., Case IPR2015-01401, slip op. at 6–10
`
`
`2 The filings in IPR2017-01917 are representative of the filings and
`arguments made in all of these proceedings. Thus, we cite only to the filings
`in IPR2017-01917.
`
`3 A court reporter was present and recorded the call. The parties are directed
`to file a transcript of the call in all of the proceedings. The parties should
`also file any other transcripts of telephone conferences we have had in these
`cases in the respective case.
`
`3
`
`

`

`IPR2017-01917 (Patent 9,296,518 B2)
`IPR2017-01918 (Patent 9,403,626 B2)
`IPR2017-02103 (Patent 9,511,929 B2)
`IPR2018-00914 (Patent 9,511,929 B2)
`
`
`
`(PTAB Dec. 31, 2015) (Paper 19) (holding that disclosing additional real
`
`parties in interest via an updated disclosure does not mandate a change in
`
`petition filing date). We had preliminarily determined in IPR2017-01917, -
`
`01918, and -02103, that, on the record before us, Liberty was not an
`
`unnamed real party-in-interest. See, e.g., Case IPR2017-01917, Paper 19.
`
`However, since that decision, the Federal Circuit has issued Applications in
`
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) and
`
`Worlds Inc. v. Bungie, Inc., No. 2017-1481, 2018 WL 4262564, at *4 (Fed.
`
`Cir. Sept. 7, 2018), which have provided detailed guidance on the law of real
`
`parties-in-interest.
`
`We determine that allowing Petitioner an opportunity to update its
`
`mandatory notices, in light of these recent decisions, will serve to narrow the
`
`issues in dispute while also ensuring that the proper parties are subject to the
`
`estoppel provisions of 35 U.S.C. § 315(e). For these reasons and the reasons
`
`we stated on the call, we granted Petitioner’s request.
`
`Petitioner filed its updated mandatory notices listing Big Box and
`
`Liberty on September 19, 2018. See, e.g., Case IPR2017-01917, Paper 43.
`
`Because this resolves the real party-in-interest dispute between the
`
`parties, the parties agree that Petitioner no longer needs the additional 3,000
`
`words we granted them for their Reply briefs in IPR2017-01917, -01918,
`
`and -02103. See, e.g., Case IPR2017-01917, Paper 34.
`
`For the reasons given, it is hereby:
`
`4
`
`

`

`IPR2017-01917 (Patent 9,296,518 B2)
`IPR2017-01918 (Patent 9,403,626 B2)
`IPR2017-02103 (Patent 9,511,929 B2)
`IPR2018-00914 (Patent 9,511,929 B2)
`
`
`
`
`ORDERED that, as we stated on our telephone call, Petitioner was
`
`authorized to file updated mandatory notices listing Big Box and Liberty as
`
`real parties-in-interest;
`
`FURTHER ORDERED that the word limit for Petitioner’s Reply
`
`Brief in IPR2017-01917, IPR2017-01918, and IPR2017-02103 is restored to
`
`the word limit provided in 37 C.F.R. § 42.24(c)(1); and
`
`FURTHER ORDERED that the party that commissioned the court
`
`reporter who transcribed the conference call of September 18, 2018, shall
`
`seasonably file a copy of the transcript of the call as a paper in each of these
`
`proceedings after it becomes available.
`
`
`
`
`
`5
`
`

`

`IPR2017-01917 (Patent 9,296,518 B2)
`IPR2017-01918 (Patent 9,403,626 B2)
`IPR2017-02103 (Patent 9,511,929 B2)
`IPR2018-00914 (Patent 9,511,929 B2)
`
`
`
`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
`
`
`6
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket