From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Lisa Moyles; Trials
`Jason Rockman; Heard, Preston; Herman, Barry; Train, Tyler; Patent Docket; 697 Patent-PGR-Service; Stein,
`Alexander B.; Erik.hawes@morganlewis.com; Sujohn.das@morganlewis.com
`RE: PGR2021-00097: Authorization to File Motion to Submit Supplemental Information
`Monday, February 7, 2022 11:24:16 AM
`
`Counsel,
`The panel authorizes Petitioner to file a 6-page motion to submit supplemental information. Any
`motion must be filed on or before February 14, 2022.
`
`The panel also authorizes a 6-page opposition, filed on or before February 22, 2022.
`
` A
`
` conference call is not necessary at this time.
`
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`From: Lisa Moyles <lmoyles@moylesip.com>
`Sent: Monday, February 7, 2022 9:38 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Jason Rockman <jrockman@moylesip.com>; Heard, Preston <Preston.Heard@wbd-us.com>;
`Herman, Barry <Barry.Herman@wbd-us.com>; Train, Tyler <Tyler.Train@wbd-us.com>; Patent
`Docket <PATdocket@moylesip.com>; 697 Patent-PGR-Service <697Patent-PGR-
`Service@morganlewis.com>; Stein, Alexander B. <alexander.stein@morganlewis.com>;
`Erik.hawes@morganlewis.com; Sujohn.das@morganlewis.com
`Subject: Re: PGR2021-00097: Authorization to File Motion to Submit Supplemental Information
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
` I
`
` am lead counsel for Patent Owner in the above-captioned case, and I was inadvertently not
`included in the distribution list for the below correspondence sent February 4, 2022 by Petitioner.
`
`In any event, Patent Owner provided reasons for opposition to this request, which was not included
`in Petitioner’s below email (please see attached correspondence). Patent Owner re-states as follows:
`
`“DynaEnergetics opposes Petitioner’s request to file a motion to submit supplemental information at
`this stage in the proceeding. Petitioner should have submitted all of its evidence that it considers
`
`PGR2021-00097
`
`1
`
`Ex. 3004
`
`

`

`relevant to its asserted grounds with the Petition itself. This late submission of new evidence would
`be prejudicial and hinder the efficient administration of the Office and the Office’s ability to timely
`complete this proceeding. See 35 U.S.C. § 326(b).”
`
`Kind regards,
`Lisa J. Moyles
`Lead Counsel for Patent Owner (USPTO Reg. No. 40,737)
`
`Member
`(Licensed in CT, NC, GA, USPTO)
`Moyles IP, LLC
`
`
`lmoyles@moylesip.com | O 203-428-4420, x. 501 | M 203-258-6675 | F 866-250-1636
`www.moylesip.com
`1 Enterprise Drive, Suite 428, Shelton, CT 06484
`
`CONFIDENTIALITY NOTICE: This communication, and any documents attached hereto, may contain confidential and/or
`proprietary information and may be subject to the attorney-client privilege and/or other confidentiality protections. The
`information is intended only for use by the recipient named above. If you are not the intended recipient, or a person
`responsible for delivering it to the intended recipient, you are hereby notified that any disclosure, copying, distribution or use
`of any of the information contained in or attached to this transmission is strictly prohibited. If you have received this
`communication in error, we ask that you please immediately notify the sender by reply e-mail, and destroy the
`communication and its attachments without reading or saving in any manner. Thank you.
`
`From: Stein, Alexander B. <alexander.stein@morganlewis.com>
`Sent: Friday, February 04, 2022 6:40 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: 697 Patent-PGR-Service <697Patent-PGR-Service@morganlewis.com>; Heard, Preston
`<Preston.Heard@wbd-us.com>; Herman, Barry <Barry.Herman@wbd-us.com>; Rockman, J
`<JRockman@moylesip.com>
`Subject: PGR2021-00097: Authorization to File Motion to Submit Supplemental Information
`
`Your Honors,
`
`Pursuant to 37 C.F.R. § 42.123(a), Petitioner requests authorization to file a motion to submit
`supplemental information. In particular, Petitioner would like to submit, as supplemental
`information, an excerpt of a Schlumberger document that shows a cross-sectional view of the
`SafeJet System (an excerpt of SLBGH_SDTEX_00000195, which was provided pursuant to a
`protective order in related district court litigations) as well as an affidavit from Petitioner’s lead
`counsel, Erik Hawes, concerning (i) Schlumberger recently providing permission for Petitioner to use
`the excerpt in this proceeding and (ii) how the excerpt was created by cropping a portion of
`SLBGH_SDTEX_00000195 due to requirements imposed by counsel for Schlumberger. This
`document is “relevant to a claim for which the trial has been instituted” (37 C.F.R. § 42.123(a)(2)) at
`least because it directly contradicts Patent Owner’s position in its preliminary response (Paper 9)
`
`PGR2021-00097
`
`2
`
`Ex. 3004
`
`

`

`that gun carriers in the SafeJet System have not been shown to be connected to ends of a tandem
`seal adapter (e.g., Paper 9 at 68-72). This request is timely as it is submitted within one month of
`the institution of trial per 37 C.F.R. § 42.123(a)(1).
`
`Patent Owner’s counsel has indicated that it opposes this request, but also indicated that “in the
`event that the Board authorizes Petitioner to file such a motion, DynaEnergetics requests
`authorization to submit a response of equal length.”
`
`The parties are available for a conference call to discuss this request at the following dates and
`times:
`1. 2/8 between 10 AM – 2 PM EST;
`2. 2/9 between 2 PM EST – 5 PM EST;
`3. 2/10 between 3 PM – 5 PM EST; and
`4. 2/11 between 10 AM – 2 PM EST.
`
`
`Respectfully Submitted,
`
`Alexander Stein (Reg. No. 71.397)
`Counsel for Petitioner
`
`Alexander B. Stein
`Morgan, Lewis & Bockius LLP (Silicon Valley Office)
`(650) 843-7278 | Email My Assistant
`
`
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`e-mail and delete the original message.
`
`
`
`PGR2021-00097
`
`3
`
`Ex. 3004
`
`