`Tel: 571-272-7822
`
`Paper 17
`Entered: December 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
`v.
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`
`IPR2019-00768
`Patent RE46,137 E
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY and JON B. TORNQUIST
`Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`I. BACKGROUND
`Via e-mail to the Board on December 19, 2019, Petitioner requested
`authorization to file a motion to terminate or stay ex parte Reexamination
`Control No. 90/014,418, in which a Request for Ex Parte Reexamination
`was filed on December 9, 2019 (the “Request”). The Office has expressly
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`suggested that a patent owner may seek ex parte reexamination of claims at
`issue in an ongoing inter partes review as follows:
`[P]atent owners may avail
`themselves of a reissue
`application or a request for reexamination before, during, or after
`an AIA trial proceeding results in a final written decision, as long
`as the application or request is timely filed as discussed above
`(i.e., before the Office issues a certificate that cancels all relevant
`claims, or before the Federal Circuit issues a relevant mandate,
`as applicable).
`Notice Regarding Options for Amendments by Patent Owner through
`Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed.
`Reg. 16654, 16655 (April 22, 2019).
`Also on December 19, Patent Owner informed the Board via e-mail
`that the Office had not yet ordered an ex parte reexamination. Based on
`PTO records, we have verified Patent Owner’s assertion. Patent Owner also
`informed the Board that it “intends to disclaim several claims.” Because an
`ex parte reexamination has not yet been ordered by the Office, we determine
`that authorizing the requested motion to terminate or stay is premature. If,
`and when, the Office orders an ex parte reexamination, we will entertain a
`renewed request from Petitioner for authorization to file such a motion.
`II. ORDER
`For the reasons given, it is:
`ORDERED that Petitioner’s request for authorization to move to
`terminate or stay Reexamination Control No. 90/014,418 is denied without
`prejudice;
`FURTHER ORDERED that, Patent Owner is ordered to notify the
`Board immediately of any action taken by the Office in response to Patent
`
`2
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`Owner’s Request in Reexamination Control No. 90/014,418 by filing
`updated mandatory notices pursuant to 37 C.F.R. § 42.8(b)(2); and
`FURTHER ORDERED that Patent Owner shall promptly notify the
`Board of any action taken to disclaim or cancel any claim of U.S. Patent
`RE46,137 E.
`
`3
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`For PETITIONER:
`Douglas Wilson
`ARMOND WILSON, LLP
`doug.wilson@armondwilson.com
`
`J. Boone Baxter
`HEIM PAYNE & CHORUSH, LLP
`bbaxter@hpcllp.com
`
`For PATENT OWNER:
`Mark Garrett
`Eagle Robinson
`Jeremy Albright
`Michael Pohl
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefullbright.com
`eagle.robinson@nortonrosefullbright.com
`jeremy.albright@nortonrosefullbright.com
`michael.pohl@nortonrosefullbright.com
`
`4
`
`
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