`571.272.7822
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` Paper No. 8
` Entered: January 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HALLIBURTON ENERGY SERVICES, INC.,
`Petitioner,
`
`v.
`
`SCHLUMBERGER TECHNOLOGY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01777
`Patent 8,167,043 B2
`____________
`
`Before PATRICK R. SCANLON, JEREMY M. PLENZLER, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01777
`Patent 8,167,043 B2
`
`
`On November 2, 2017, Schlumberger Technology Corp. (“Patent
`Owner”) filed Exhibit 2001 (“Disclaimer in Patent Under 37 CFR 1.321(a),”
`hereafter “Disclaimer”) with its Preliminary Response (Paper 6). The
`Preliminary Response contends that the Disclaimer would render this
`proceeding moot and requests no inter partes review be instituted. Paper 6,
`1.
`
`A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the
`original patent” as of the date on which it is “recorded” in the Office.
`35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the
`document filed by Patent Owner 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; (3) state the present extent of patentee’s
`ownership interest in the patent; and (4) be accompanied by the relevant fee.
`37 C.F.R. § 1.321(a).
`The presently filed Disclaimer does not appear to be signed by an
`attorney of record and does not appear to be owned by Schlumberger
`Technology Corp. In particular, according to Office records, Customer #
`27452 includes the attorneys of record for the patent at issue, U.S. Patent
`No. 8,167,043 (“the ’043 patent”). The Disclaimer is signed by Mr. Jeremy
`P. Welch, and neither his name nor his registration number is associated
`with Customer # 27452. Also, the Disclaimer represents that the extent of
`patentee’s ownership interest in the patent is recorded at “reel/frame
`017144/0120.” However, according to Office records, the assignment
`referenced in the Disclaimer is only for U.S. Patent No. 7,380,600 (“the ’600
`patent”). The ’043 patent issued from a division of an application, from
`
`
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`2
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`
`
`IPR2017-01777
`Patent 8,167,043 B2
`
`which the ’600 patent issued. These issues with the Disclaimer were raised
`and addressed in related Case IPR2017-01568.
`
`
`ORDER
`In view of the arguments in the Preliminary Response, it is
`ORDERED that Patent Owner file, using its next exhibit number and
`within five (5) business days of the entry date of this Order, a Disclaimer in
`Patent Under 37 C.F.R. § 1.321(a) that addresses the issues identified above
`in order to avoid a Decision on Institution.
`
`
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`3
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`
`
`IPR2017-01777
`Patent 8,167,043 B2
`
` PETITIONER:
`
`Henry A. Petri
`James P. Murphy
`POLSINELLI PC
`hpetri@polsinelli.com
`jpmurphy@polsinelli.com
`
`
`PATENT OWNER:
`
`Michael L. Kiklis
`Christopher Ricciuti
`Lisa Mandrusiak
`Marc K. Weinstein
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`CPDocketKiklis@oblon.com
`CPDocketRicciuti@oblon.com
`CPDocketMandrusiak@oblon.com
`CPDocketWeinstein@oblon.com
`
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`4
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