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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
`_____________
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`Case No. IPR2014-00993
`Patent 8,459,346
`_____________
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`PETITIONER’S SECOND SUPPLEMENTAL MANDATORY NOTICES
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`Pursuant to 37 C.F.R. § 42.8(a)(3), Petitioner hereby supplements its
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`Mandatory Notices. Specifically, Petitioner supplements Section C below.
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`Mandatory Notices
`A. Real Party-in-Interest (Original - not supplemented)
`The parties in interest for Petitioner are the McClinton Energy Group LLC,
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`Jaycar Energy Group LLC, Surf Frac Wellhead Equipment Co., Motor Mills
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`Snubbing LLC, Stan Keeling and Tony D. McClinton.
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`Standing (Original - not supplemented)
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`B.
`Petitioner certifies that the ‘346 Patent, issued on June 11, 2013, is available
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`for inter partes review and that Petitioner is not barred or estopped from requesting
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`an inter partes review challenging the claims of the ‘346 Patent.
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`C. Related matters (Supplemented twice)
`The ‘346 Patent was asserted against the parties-in-interest in Magnum Oil
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`Tools Int’l LLC v. Tony D. McClinton et al., No. 2:13-cv-00163 (S.D. Tex.), which
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`was consolidated into Case No. 2:12-cv-00099 (S.D. Tex) involving the same
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`parties. The ‘346 Patent is a continuation of Application No. 13/194,871, filed on
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`Jul. 29, 2011, now U.S. Patent No. 8,079,413 (“‘413 Patent”), which is a
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`continuation-in-part of Application No. 12/317,497, filed on Dec. 23, 2008, now
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`U.S. Patent No. 8,496,052. The ‘413 Patent is the subject of an instituted Inter
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`Partes Review, IPR2013-00231.
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`Supplemental Notice Regarding Related Matters:
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`A Final Written Decision in IPR2013-0231 issued on September 2, 2014.
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`See IPR2013-0231, Paper No. 31. All of the claims (claims 1-20) of the ‘413
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`Patent were found unpatentable. Id. at p. 35. The Board’s decision in IPR2013-
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`0231 may implicate collateral estoppel and/or patent owner estoppel under 37 CFR
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`§ 42.73(d)(3) in the present case.
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`Second Supplemental Notice Regarding Related Matters:
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`Patent Owner filed a Request for Rehearing in IPR2013-0231 on October 2,
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`2014. See IPR2013-0231, Paper No. 32. The Board denied the Request. See
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`IPR2013-0231, Paper No. 33. The Board’s decision bolsters Petitioner’s position
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`that collateral estoppel and/or patent owner estoppel under 37 CFR § 42.73(d)(3)
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`should attach to the claims at issue in the present case.
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`D. Lead and Back-up Counsel and Service Information (Previously
`Supplemented)
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`Lead Counsel
`Jason A. Engel
`K&L Gates LLP
`70 W. Madison, Suite 3100
`Chicago, Illinois 60602
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`Back-up Counsel
`Robert Barz (pro hac vice)
`K&L Gates LLP
`70 W. Madison, Suite 3100
`Chicago, Illinois 60602
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`
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`Phone: 312-807-4236
`Fax: 312-827-8145
`jason.engel@klgates.com
`USPTO Reg. No. 51,654
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`Phone: 312-807-4233
`Fax: 312-827-8145
`robert.barz@klgates.com
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`–2–
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`Supplemental Notice Regarding Service Information:
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`Pursuant to 37 CFR § 42.10(b), Petitioner consents to electronic service by
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`e-mail to the above e-mail addresses for lead and backup counsel.
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`Respectfully Submitted,
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` /Jason A. Engel/
`Reg. No. 51,654
`Jason A. Engel
`Customer No. 24573
`Date: November 4, 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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`
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`–3–
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.105, that
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`service was made on the Patent Owner as detailed below.
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`Date of service November 4, 2014
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`Manner of service Electronic Mail
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`Documents served Petitioner’s Second Supplemental Mandatory Notice
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`Persons served Robb D. Edmonds (redmonds@edmondsnolte.com)
`N. Alexander Nolte (anolte@edmondsnolte.com)
`EDMONDS & NOLTE, P.C.
`2625 Bay Area Blvd, Suite 530
`Houston, TX 77058
`Phone: 281-480-2700
`Fax: 281-480-2701
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`Dated: November 4, 2014
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`
` /Jason A. Engel/
`Reg. No. 51,654
`Jason A. Engel
`Customer No. 24573
`Date: November 4, 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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