`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNAMIC AIR INC.,
`Petitioner
`
`v.
`
`M-I DRILLING FLUIDS UK LTD.,
`Patent Owner
`
`Case IPR2016-00259
`U.S. Patent No. 7,544,018 B2
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. §42.8(a)(2)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to 37 C.F.R. §42.8(a)(2), Patent Owner, M-I Drilling Fluids
`
`UK Ltd., submits the following mandatory notice information:
`
`I.
`
`Notice of Real Party-In-Interest Pursuant to 37 C.F.R.
`
`§42.8(b)(1).
`
`The real party-in-interest for Patent Owner is M-I Drilling Fluids UK
`
`Ltd., (“M-I Drilling”), the current assignee of U.S. Patent No. 7,544,018 B2
`
`(“the ’018 patent”). The ‘018 patent is exclusively licensed to M-I LLC, who
`
`has Smith International Acquisition Corp. and Schlumberger Technology
`
`Corporation as
`
`its members.
`
`Schlumberger Holdings Corporation,
`
`Schlumberger B.V (“Schlumberger Limited”) and Schlumberger Services
`
`Inc. are also real parties-in–interest in this proceeding.
`
`II.
`
`Notice of Related Matters Pursuant to 37 C.F.R. §42.8(b)(2)
`
`M-I Drilling identifies the following pending judicial or administrative
`
`matters that would affect, or be affected by, a decision in this proceeding:
`
`Pending Judicial Matters
`
`The ’018 patent is at issue in Case No. 0:14-cv-04857, pending in the
`
`District of Minnesota. The ’018 patent is also at issue in Case No. 13-cv-
`
`2385, District of Minnesota.
`
`Pending Administrative Matters
`
`2
`
`
`
`Petitioner has also requested inter partes review of U.S. Patent No.
`
`6,702,539 B2 (“the ’539 Patent”), which is pending as IPR2016-00256; U.S.
`
`Patent No. 7,033,124 B2 (“the ’124 Patent”), which is pending as IPR2016-
`
`00260; U.S. Patent No. 7,186,062 B2 (“the ’062 Patent”), which is pending as
`
`two separate IPRs, specifically IPR2016-00262 and IPR2016-00263; and
`
`U.S. Patent No. 6,709,217 B1 (“the ’217 Patent”), which is pending as
`
`IPR2016-00264.
`
`U.S. Patent Nos. 7,033,124, 7,186,062, 6,709,217 6,702,539,
`
`6,698,989, and 6,709,216 may be affected by a decision in this proceeding.
`
`III. Notice of Lead and Backup Counsel Pursuant to 37 C.F.R.
`
`§42.8(b)(3)
`
`Patent Owner hereby gives notice of the following lead and backup
`counsel:
`
`Patent Owner’s Lead Counsel
`
`Bruce J. Rose
`Reg. No. 37,431
`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
`Tel: 704-444-1036
`Fax: 704-444-1736
`Email: bruce.rose@alston.com
`
`3
`
`
`
`Patent Owner’s Back-up Counsel
`
`Christopher TL Douglas
`Reg. No. 56,950
`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
`Tel: 704-444-1119
`Fax: 704-444-1799
`Email:
`Christopher.douglas@alston.com
`
`IV. Notice of Service Information Pursuant to 37 C.F.R.
`§42.8(b)(4)
`
`Service of all documents may be made to the lead counsel and backup
`
`counsel at the email addresses listed above.
`
`Dated: December 16, 2015
`
`Respectfully submitted,
`
`/Bruce J. Rose/
`Bruce J. Rose (Reg. No. 37,431)
`Christopher TL Douglas (Reg. No.
`56,950)
`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
`Tel: 704-444-1000
`Fax: 704-444-1111
`bruce.rose@alston.com
`Christopher.douglas@alston.com
`
`Attorneys for
`Patent Owner M-I Drilling Fluids UK
`Ltd.
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6(e), the undersigned hereby certifies that,
`
`on December 16, 2015, a true copy of the foregoing “PATENT OWNER’S
`
`MANDATORY NOTICES PURSUANT TO 37 C.F.R §42.8(a)(2)” was
`
`served upon the following via email:
`
`Alan G. Carlson
`Dennis C. Bremer
`CARLSON, CASPERS, VENDENBURGH, LINDQUIST AND
`SCHUMAN, P.A.
`acarlson@carlsoncaspers.com
`dbremer@carlsoncapers.com
`
`/Bruce J. Rose/
`Bruce J. Rose
`(Reg. No. 37,431)
`
`5
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