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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`McClinton Energy Group L.L.C.
`Petitioner
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`v.
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`Magnum Oil Tools International, Ltd.
`Patent Owner
`_____________
`
`Case No. IPR2013-00231
`Patent 8,079,413
`_____________
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`PETITIONER’S CONTINGENT REQUEST FOR ORAL ARGUMENT
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`1
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`Petitioner does not believe oral argument is necessary in this proceeding. To
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`the extent the Board grants Patent Owner’s Request (Paper No. 24), Petitioner
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`requests oral argument and, pursuant to 37 C.F.R. § 42.70, specifies the following
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`issues to be argued:
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`I.
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`Invalidity
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`A. Are Claims 1-3, 5-8, 12, and 13 unpatentable under U.S.C. §
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`103(a) over the combination of Lehr, Cockrell, and Kristiansen?
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`B. Are Claims 4 and 9-11 unpatentable under U.S.C. § 103(a) over
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`the combination of Lehr, Cockrell, Kristiansen, and Slup?
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`C. Are Claims 14 and 16 unpatentable under U.S.C. § 103(a) over
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`the combination of Lehr, Cockrell, Kristiansen, and Streich;
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`D.
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`Is Claim 15 unpatentable under U.S.C. § 103(a) over the
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`combination of Lehr, Cockrell, Kristiansen, Streich, and
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`McKeachnie?
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`E. Are Claims 17-19 unpatentable under U.S.C. § 103(a) over the
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`combination of Lehr, Cockrell, Kristiansen, Slup, and Streich?
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`F.
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`Is Claim 20 unpatentable under U.S.C. § 103(a) over the
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`combination of Lehr, Cockrell, Kristiansen, Slup, Streich, and
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`McKeachnie?
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`2
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`G. Has Patent Owner shown any secondary considerations of non-
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`obviousness sufficient to overcome a strong prima facie case of
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`obviousness?
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`Petitioner further reserves the right to address any arguments presented by Patent
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`Owner.
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`Petitioner requests the ability to use audio visual equipment to display
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`demonstrative exhibits, including the use of a projector and screen for PowerPoint
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`display.
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`Respectfully submitted,
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`
` /Jason A. Engel/
`Reg. No. 51,654
`Jason A. Engel
`Customer No. 24573
`Date: April 14, 2014
`K&L Gates LLP
`e-mail: jason.engel@klgates.com
`telephone number: 312-807-4236
`fax number: 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`Dated: April 14, 2014
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`3
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Real Party in Interest: McClinton
`Energy Group L.L.C.
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`§§§§§§§§§
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`
`Case No. IPR2013-00231
`Patent 8,079,413
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`U.S. Patent No. 8,079,413
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`Issued: December 20, 2011
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`Title: BOTTOM SET
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`DOWNHOLE PLUG
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that service
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`was made on the Patent Owner as detailed below.
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`Date of service April 14, 2014
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`Manner of service FEDERAL EXPRESS
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`Documents served Contingent Request For Oral Argument
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`Persons served Robb D. Edmonds
`EDMONDS & NOLTE, P.C.
`2625 Bay Area Blvd, Suite 530
`Houston, TX 77058
`redmonds@edmondsnolte.com
`USPTO Reg. No. 46,681
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`N. Alexander Nolte
`EDMONDS & NOLTE, PC
`10411 Westheimer Road, Suite 201
`Houston, TX 77042
`anolte@edmondsnolte.com
`USPTO Reg. No. 45,689
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`
` /Jason A. Engel/
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