Paul Bernard Lee

Patent Trials and Appeals Board

Mar 19, 2021

IPR2020-01425 (P.T.A.B. Mar. 19, 2021)

Trials@uspto.gov Paper 13
571-272-7822 Entered: March 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
EXACTA FRAC ENERGY SERVICES, INC. AND
GRAYHAWK TOOLS INTERNATIONAL, LLC,
Petitioner,
v.
PAUL BERNARD LEE,
Patent Owner.
____________

IPR2020-01425
Patent 9,869,163 B2
____________

Before BART A. GERSTENBLITH, JAMES A. WORTH, and
PAUL J. KORNICZKY, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

JUDGMENT
Granting Request for Adverse Judgment After Institution of Trial
37 C.F.R. § 42.73(b)

IPR2020-01425
Patent 9,869,163 B2

2
I. INTRODUCTION
Exacta Frac Energy Services, Inc. and GrayHawk Tools International,
LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting institution of
inter partes review of claims 1–6, 8–13, 15–18, and 20–25 (“the Challenged
Claims”) of U.S. Patent No. 9,869,163 B2 (Ex. 1001, “the ’163 patent”).
Paul Bernard Lee (“Patent Owner”) filed a Preliminary Response (Paper 7,
“Prelim. Resp.”). On February 11, 2021, we granted institution of inter
partes review. Paper 10 (“Inst. Dec.”). On March 1, 2021, Patent Owner
filed a Request for Adverse Judgment Under 37 C.F.R. § 42.73(b). Paper 12
(“Request”).
Patent Owner’s Request indicates that “[i]n co-pending reissue
application no. 17/099,556, Patent Owner is pursuing substantially narrowed
claims that better articulate the novelty and nonobvious of Patent Owner’s
invention.” Request 1. Patent Owner states, “[w]ith the understanding that
the amended and new claims that Patent Owner is pursuing in the reissue
application are patentably distinct from each claim at issue in this [inter
partes review], Patent Owner hereby requests adverse judgment.” Id.
Petitioner does not oppose Patent Owner’s request so long as the
challenged claims are cancelled without condition. Ex. 3001 (March 10,
2021, email from Petitioner’s counsel). In particular, Petitioner does not
agree with Patent Owner’s statement that the claims of the reissue
application are patentably distinct from claims 1–6, 8–13, 15–18, and 20–25
of the ’163 patent. Id.
IPR2020-01425
Patent 9,869,163 B2

3
II. DISCUSSION
“A party may request judgment against itself at any time during a
proceeding.” 37 C.F.R. § 42.73(b) (2019). Patent Owner has so requested
and Petitioner does not oppose. The parties’ sole disagreement, whether the
claims sought in the reissue application are patentably distinct from the
Challenged Claims, is not a question for us today and we offer no opinion.1
Accordingly, we grant Patent Owner’s unopposed Request.
III. ORDER
Accordingly, it is:
ORDERED that Patent Owner’s Request is granted and judgment is
entered against Patent Owner under 37 C.F.R. § 42.73(b) with respect to
claims 1–6, 8–13, 15–18, and 20–25 of the ’163 patent.

1 See 37 C.F.R. § 42.73(d)(3)(i) (2019) (“A patent applicant or owner is
precluded from taking action inconsistent with the adverse judgment,
including obtaining in any patent: A claim that is not patentably distinct
from a finally refused or canceled claim.”).
IPR2020-01425
Patent 9,869,163 B2

4
For PETITIONER:

Brian K. Buss
BUSS & BENEFIELD PLLC
brian@bussbenefield.com

Chris N. Cravey
JACKSON WALKER LLP
ccravey@jw.com

FOR PATENT OWNER:
Brian D. Tucker
Evan R. Witt
KIRTON MCCONKIE
btucker@kmclaw.com
ewitt@kmclaw.com