`571.272.7822
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`Paper 44
`Entered: September 21, 2018
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`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
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`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
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`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
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`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
`
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`6
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