throbber
DER2018-00018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIVERSITY OF WATERLOO,
`Petitioner
`(Application No. 15/513,914)
`
`v.
`
`SALIENT ENERGY INC.,
`Respondent
`(Patent No. 9,780,412)
`
`
`
`
`
`Derivation Proceeding No. DER2018-00018
`
`
`RESPONDENT’S MANDATORY NOTICES
`
`
`
` 
`
`
`
`
`
`
`
`
` 
`
`

`

` 
`
`Respondent Salient Energy Inc. provides the following mandatory notices
`pursuant to 37 CFR 42.8(b):
`Real Party in Interest: Salient Energy Inc., Kitchener, Ontario, Canada.
`Related Matters: To Respondent’s knowledge there is no other U.S.
`judicial or administrative matter that would directly affect, or be affected by, a
`decision in this derivation proceeding. In recognition of its duty of candor under
`37 CFR 42.11, Respondent brings to the Board’s attention a Statement of Claim
`filed by Petitioner against Respondent in the Ontario Superior Court of Justice that
`includes many of the same allegations as appear in the Petition in this proceeding.
`A copy of the Statement of Claim is submitted concurrently herewith as Salient
`Exhibit 2001.
`Lead and Backup Counsel: Barry E. Bretschneider, Reg. No. 28,055
`(Lead); Charles C. Carson, Reg. No. 46,603 (Backup); and James W. Hinton, Reg.
`No. 73,114 (Backup). Respondent submits a power of attorney herewith.
`Service Information: Pursuant to 37 CFR 42.8(b)(4), papers concerning
`this matter may be served in accordance with the following.
`Barry E. Bretschneider
`Baker & Hostetler LLP
`Washington Square, Suite 1100
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5304
`Telephone: 202.861.1754 (direct)
`Facsimile: 202.861.1783
`e-mail: bbretschneider@bakerlaw.com
`e-mail: ccarson@bakerlaw.com
`e-mail: jhinton@bereskinparr.com
`
`Respondent consents to electronic service.
`
`
`
`4837-7199-0149.1 
`
`

`

`Dated: January 15, 2019
`
` 
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/Barry E. Bretschneider_
`Barry E. Bretschneider
`Reg. No. 28,055
`
`LEAD ATTORNEY FOR
`RESPONDENT SALIENT
`
`Baker & Hostetler LLP
`Washington Square, Suite 1100
`1050 Connecticut Avenue, N. W.
`Washington, DC 20036-5304
`Telephone: (202) 861-1754 (direct)
`Facsimile: (202) 861-1783
`
`
`
`4837-7199-0149.1 
`
`

`

`DER2018-00018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`University of Waterloo,
`Petitioner
`(Application No. 15/513,914)
`
`v.
`
`Salient Energy Inc.,
`Respondent
`(Patent No. 9,780.412)
`
`Derivation Proceeding No. DER2018-00018
`
`RESPONDENT'S POWER OF ATTORNEY UNDER 37 CFR 42.l0(b)
`
`

`

`On behalf of Respondent Salient Energy Inc., I hereby appoint the
`
`following Practitioners:
`
`Lead Counsel:
`
`Barry E. Bretschneider, Reg. No. 28,055
`Baker & Hostetler LLP
`Washington Square, Suite 1100
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036
`T 202.861.1500
`F 202.861.1783
`e-mail: bbretschneider@bakerlaw.com
`
`Backup Counsel:
`
`Charles C. Carson, Reg. No. 46,603
`Baker & Hostetler LLP
`Washington Square, Suite 1100
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036
`T 202.861.1500
`F 202.861.1783
`e-mail: ccarson@bakerlaw.com
`
`James W. Hinton, Reg. No. 73,114
`Bereskin & Parr
`40 King Street West, 40th Floor
`Toronto, Ontario M5H 3 Y2
`CANADA
`T 519.783.3215
`F 519.783.3211
`e-mail: jhinton@bereskinparr.com
`
`as attorneys to prosecute the aforementioned proceeding, and to transact all
`
`business in the United States Patent and Trademark Office connected therewith,
`
`including the appointment of lead and backup counsel. Please designate the
`
`correspondence address (including any electronic mail address) for this Derivation
`
`Proceeding to be the address associated with the above-identified Lead Counsel.
`
`

`

`Dated:
`
`TitJe: Preside nt
`
`SALIENT ENERGY INC.
`
`

`

` 
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing
`RESPONDENT’S MANDATORY NOTICES was served this 15th day of
`January, 2019, via e-mail to Petitioner’s attorneys of record as follows:
` 
`
`W. Todd Baker, Esq.
`Lisa Mandrusiak, Esq.
`Sasha Rao, Esq.
`Oblon, McClelland, Maier & Neustadt, LLP
`1940 Duke Street
`Alexandria, VA 33214
`cpdocketbaker@oblon.com
`cpdocketmandrusiak@oblon.com
`cpdocketrao@oblon.com
`
`
`
`/s/ Barry E. Bretschneider
`Barry E. Bretschneider
`
`
`
`4837-7199-0149.1 
`
`

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