`571-272-7822
`
`
`
`
`
` Paper 16
` Entered: January 16, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HALLIBURTON ENERGY SERVICES, INC.,
`Petitioner,
`
`v.
`
`SCHLUMBERGER TECHNOLOGY CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01568
`Patent 8,167,043 B2
`____________
`
`
`Before HYUN J. JUNG, JEREMY M. PLENZLER, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-01568
`Patent 8,167,043 B2
`
`I.
`
`INTRODUCTION
`Halliburton Energy Services, Inc. (“Petitioner”) filed a Petition (Paper
`2, “Pet.”), requesting institution of an inter partes review of claims 1–4, 6, 7
`13, 15, and 25–27 of U.S. Patent No. 8,167,043 B2 (Ex. 1001, “the ’043
`patent”). Schlumberger Technology Corp. (“Patent Owner”) filed a
`Preliminary Response (Paper 10, “Prelim. Resp.”).
`For the reasons explained below, we do not institute an inter partes
`review.
`A. Related Proceedings
`The parties indicate that there are no related judicial or administrative
`proceedings. Pet. 2; Paper 3, 1. The ’043 patent is also the subject of Case
`IPR2017-01777 and is related to the patent at issue in Case IPR2017-01564.
`Id.
`
`
`II. ANALYSIS
`Patent Owner states that it “rendered this proceeding moot by
`disclaiming all claims of the ’043 patent on October 20, 2017.” Prelim.
`Resp. 1 (citing Ex. 2002 (“Disclaimer in Patent Under 37 C.F.R. § 1.321(a)”
`disclaiming claims 1–27 of the ’043 patent)). In response to an order (Paper
`13), Patent Owner filed another Disclaimer in Patent Under 37 C.F.R.
`§ 1.321(a) (Ex. 2003) and confirms that Patent Owner is the assignee of the
`’043 patent (Paper 14, 1–2 (citing MPEP § 306; Ex. 2004 (assignment for
`patent application 11/294,983); Ex. 2004, 3–4 (“Inventors . . . have . . .
`assigned . . . unto [Schlumberger Technology Corp.] . . . entire right, title
`and interest . . . to any . . . divisional . . . application which may be filed on
`said invention, inventions, or improvements in the United States”); see also
`
`
`
`2
`
`
`
`IPR2017-01568
`Patent 8,167,043 B2
`
`Ex. 1001 (62) (stating that the ’043 patent issued from a “[d]ivision of
`application No. 11/294,983”)).
`Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory
`disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this
`chapter, disclaiming one or more claims in the patent” and “[n]o inter partes
`review will be instituted based on disclaimed claims.” A disclaimer under
`35 U.S.C. § 253(a) is “considered as part of the original patent” once it is
`“recorded” in the Office. 35 U.S.C. § 253(a).
`The disclaimer, to be recorded in the Patent and Trademark
`Office, must:
`(1) Be signed by the patentee, or an attorney or agent of record;
`(2) Identify the patent and complete claim or claims, or term
`being disclaimed. A disclaimer which is not a disclaimer of a
`complete claim or claims, or term will be refused recordation;
`(3) State the present extent of patentee’s ownership interest in the
`patent; and
`(4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d).
`37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
`1379, 1382 (Fed. Cir. 1998) (holding that § 253 disclaimer is immediately
`“recorded” on the date that the Office receives disclaimer meeting
`requirements of 37 C.F.R. § 1.321(a)).
`Based on our review of Exhibits 2003 and 2004 and Office public
`records, we conclude that a disclaimer of claims 1–27 of the ’043 patent has
`been recorded in the Office under 35 U.S.C. § 253(a) and 37 C.F.R.
`§ 1.321(a). Because Petitioner challenged claims 1–4, 6, 7, 13, 15, and 25–
`27 of the ’043 patent and Patent Owner filed a statutory disclaimer in
`compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all
`the claims challenged by Petitioner, no inter partes review is instituted in
`this proceeding. 37 C.F.R. § 42.107(e).
`
`
`
`3
`
`
`
`IPR2017-01568
`Patent 8,167,043 B2
`
`III. CONCLUSION
`For the foregoing reasons, we do not institute inter partes review of
`claims 1–4, 6, 7, 13, 15, and 25–27 of the ’043 patent.
`
`IV. ORDER
`Accordingly, it is ORDERED that the Petition is denied for the
`reasons discussed, and no trial is instituted.
`
`
`PETITIONER:
`Henry A. Petri
`James P. Murphy
`POLSINELLI PC
`hpetri@polsinelli.com
`jpmurphy@polsinelli.com
`
`PATENT OWNER:
`Michael L. Kiklis
`Christopher Ricciuti
`Katherine Cappaert
`Marc K. Weinstein
`OBLON, MCCLELLAN, MAIER & NEUSTADT, LLP
`CPDocketKiklis@oblon.com
`CPDocketRicciuti@oblon.com
`CPDocketcappaert@oblon.com
`CPDocketWeinstein@oblon.com
`
`
`
`
`
`
`
`4
`
`
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