Trials
`Fowler, Karon N.; Trials
`Bregman, Dion M.; MLB-CM-IPR-Team; Porter, Greg; Shanley, Daniel
`RE: IPR2023-00804 / Corrected Filing
`Tuesday, January 30, 2024 12:25:05 PM
`image002.png
`
`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`Based on Ms. Fowler’s representation that Petitioner’s counsel does not oppose filing of the
`corrected Response and exhibits, or that the Response and exhibits be deemed timely filed, the
`Board will enter the corrected Response and Exhibits and expunge Paper 25, Ex. 2006, and Ex. 2012.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Fowler, Karon N. <karon.fowler@morganlewis.com>
`Sent: Thursday, January 25, 2024 10:35 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Bregman, Dion M. <dion.bregman@morganlewis.com>; MLB-CM-IPR-Team <MLB-CM-IPR-
`Team@morganlewis.com>; Porter, Greg <GregPorter@andrewskurth.com>; Shanley, Daniel
`<DShanley@andrewskurthkenyon.com>
`Subject: RE: IPR2023-00804 / Corrected Filing
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`Thank you for your patience. We write in response to your email below.
`
`At the time of filing, Patent Owner experienced technical issues related to generating the table of contents and
`authorities and citations, and as a result, initially filed an incomplete response at approximately 12:08 AM.
`Thereafter, the technical issues were remedied as promptly as possible, and Patent Owner filed the “CORRECTED”
`filings, correctly bates labeled documents for those documents filed under seal, and redacted public versions of the
`documents filed under seal. None of the arguments were changed for the “CORRECTED” filings.
`
`We have conferred with Petitioner counsel, who has graciously confirmed that they do not oppose (1) the corrected
`filings and (2) Patent Owner’s request that the Response and accompanying documents be deemed timely filed. In
`addition, the parties have jointly agreed to modify Due Date 2 to provide an extra day for Petitioner to file their
`Reply brief in light of the foregoing, and Patent Owner has filed a notice of stipulation to that effect.
`
`As such, Patent Owner respectfully requests that the originally filed documents be deleted so that only the
`“CORRECTED” documents remain, as shown below.
`
`Exhibit 3001
`
`

`

`ORIGINALLY FILED documents to be deleted
`“Patent Owner’s Response to Petition” (Paper 25)
`
`“Ex. 2006 - Expert Declaration of Dr. Gary Wooley iso
`Patent Owner Response”
`
`“Exhibit 2012 Jake Hamdan Deposition
`Transcript_REDACTED_Redacted”
`
`CORRECTED documents to remain in the record
`“CORRECTED Patent Owner Response – SEALED”
`(Paper 27)
`“CORRECTED Patent Owner Response – REDACTED”
`(Paper 28)
`“CORRECTED Ex. 2006 - Expert Declaration of Dr. Gary
`Wooley iso Patent Owner Response_SEALED”
`“CORRECTED Ex. 2006 - Expert Declaration of Dr. Gary
`Wooley iso Patent Owner Response_REDACTED”
`“CORRECTED Exhibit 2012 Jake Hamdan Deposition
`Transcript_SEALED” and
`“CORRECTED Exhibit 2012 Jake Hamdan Deposition
`Transcript_REDACTED”
`
`We sincerely apologize for this mishap, which will not happen again.
`
`Please let us know if you have any questions or need any additional information.
`
`Sincerely,
`
`Karon
`
`Karon N. Fowler
`Morgan, Lewis & Bockius LLP
`110 North Wacker Drive, Suite 2800 | Chicago, IL 60606-1511
`Direct: +1.312.324.1142 | Main: +1.312.324.1000 | Fax: +1.312.324.1001
`karon.fowler@morganlewis.com | www.morganlewis.com
`
`Pronouns: She/Her/Hers
`
`From: Porter, Greg <GregPorter@andrewskurth.com>
`Sent: Monday, January 22, 2024 7:52 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Bregman, Dion M. <dion.bregman@morganlewis.com>; MLB-CM-IPR-Team <MLB-CM-IPR-
`Team@morganlewis.com>; Fowler, Karon N. <karon.fowler@morganlewis.com>; Shanley, Daniel
`<DShanley@andrewskurthkenyon.com>
`Subject: RE: IPR2023-00804 / Corrected Filing
`
`[EXTERNAL EMAIL]
`Dear Ms. Goldschlager,
`
`Apologies for the lack of clarity in my email. Petitioner does not oppose any corrected filings.
`
`

`

`Petitioner reserves any comment on Patent Owner’s explanation and related evidence
`regarding the late filings per 37 C.F.R. 42.5(c)(3).
`
`Best regards,
`Greg
`
`
`Gregory Porter
`Partner
`gregporter@HuntonAK.com
`p 713.220.4621
`bio | vCard
`
`Hunton Andrews Kurth LLP
`600 Travis Street
`Suite 4200
`Houston, TX 77002
`
`HuntonAK.com
`
`
`
`
`This communication is confidential. If you are not an intended recipient, please
`advise by return email immediately and then delete this message, including all
`copies and backups.
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, January 22, 2024 2:28 PM
`To: Porter, Greg <GregPorter@andrewskurth.com>; Trials <Trials@USPTO.GOV>
`Cc: Bregman, Dion M. <dion.bregman@morganlewis.com>; MLB-CM-IPR-Team <MLB-CM-IPR-
`Team@morganlewis.com>; Fowler, Karon N. <karon.fowler@morganlewis.com>; Shanley, Daniel
`<DShanley@andrewskurthkenyon.com>
`Subject: RE: IPR2023-00804 / Corrected Filing
`
`
`Counsel, From the Board – Petitioner’s email does not address all of the corrected filings that were the subject of Ms. Fowler’s email. We request Petitioner’s response as to all of Patent Owner’s proposed corrected filings. We also note that
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`This Message Is From An External Sender
`Hunton Andrews Kurth warning: This message came from outside the firm.
`
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`Counsel,
`
`From the Board –
`
`Petitioner’s email does not address all of the corrected filings that were the subject of Ms. Fowler’s
`email. We request Petitioner’s response as to all of Patent Owner’s proposed corrected filings.
`
`We also note that Patent Owner has not provided an explanation for filing the Patent Owner
`Response after the January 18, 2024 deadline. Patent Owner should explain its late filing. See 37
`C.F.R. 42.5(c)(3).
`
`
`

`

`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Porter, Greg <GregPorter@andrewskurth.com>
`Sent: Monday, January 22, 2024 8:31 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Bregman, Dion M. <dion.bregman@morganlewis.com>; MLB-CM-IPR-Team <MLB-CM-IPR-
`Team@morganlewis.com>; Fowler, Karon N. <karon.fowler@morganlewis.com>; Shanley, Daniel
`<DShanley@andrewskurthkenyon.com>
`Subject: RE: IPR2023-00804 / Corrected Filing
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Ms. Goldschlager,
`
`Thank you for forwarding the ex parte email below. Petitioner does not oppose substituting a
`corrected version (Papers 27 and 28) for the originally filed Patent Owner Response (Paper 25).
`Petitioner leaves it to the Board’s discretion as to whether to consider any of the Patent Owner’s
`1/19/2024 filings (Paper Nos. 25-29) as timely filed under the Board’s scheduling order (Paper 9)
`that had a 1/18/2024 deadline.
`
`Best regards,
`Greg Porter
`
`Gregory L. Porter
`Partner
`
`ANDREWS KURTH KENYON LLP
`600 Travis Street, Suite 4200 | Houston, Texas 77002
`+1.713.220.4621 Phone | +1.713.220.4285 Fax
`+1.713.220.4099 Assistant - Sharron Prescott
`email | vCard | Bio | andrewskurthkenyon.com | Twitter
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, January 19, 2024 11:32 AM
`To: Fowler, Karon N. <karon.fowler@morganlewis.com>; Trials <Trials@USPTO.GOV>; Porter, Greg
`<GregPorter@andrewskurth.com>; Shanley, Daniel <DShanley@andrewskurthkenyon.com>
`Cc: Bregman, Dion M. <dion.bregman@morganlewis.com>; MLB-CM-IPR-Team <MLB-CM-IPR-
`Team@morganlewis.com>
`Subject: RE: IPR2023-00804 / Corrected Filing
`
`
`Counsel, From the Board – We remind counsel that ex-parte communications with the Board are prohibited and that all counsel of record must be included on any communication with the Board. 37 C. F. R. 42. 5(d). We have included Petitioner’s
`ZjQcmQRYFpfptBannerStart
`
`

`

`This Message Is From An External Sender
`Hunton Andrews Kurth warning: This message came from outside the firm.
`
`ZjQcmQRYFpfptBannerEnd
`
`Counsel,
`
`From the Board –
`
`We remind counsel that ex-parte communications with the Board are prohibited and that all counsel
`of record must be included on any communication with the Board. 37 C.F.R. 42.5(d). We have
`included Petitioner’s counsel in this email and request that Petitioner respond to Patent Owner’s
`request.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Fowler, Karon N. <karon.fowler@morganlewis.com>
`Sent: Friday, January 19, 2024 3:58 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Bregman, Dion M. <dion.bregman@morganlewis.com>; MLB-CM-IPR-Team <MLB-CM-IPR-
`Team@morganlewis.com>
`Subject: IPR2023-00804 / Corrected Filing
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Hello,
`
`Patent Owner C&M Oilfield Rentals LLC filed its Patent Owner Response in IPR2023-00804 earlier
`this evening. Unfortunately, the version of the Patent Owner Response as filed did not contain a
`table of contents or certificate of service and had some missing citations. As such, Patent Owner has
`filed a corrected version, and we respectfully request that the originally filed Patent Owner
`Response (Paper 25) be deleted and replaced with the corrected version (Paper 27 (SEALED) and
`Paper 28 (PUBLIC REDACTED)).
`
`Related to that correction, we also respectfully request that (1) the version of Ex. 2006 titled
`“CORRECTED Ex. 2006 - Expert Declaration of Dr. Gary Wooley iso Patent Owner Response_SEALED”
`and “CORRECTED Ex. 2006 - Expert Declaration of Dr. Gary Wooley iso Patent Owner
`Response_REDACTED” replace “Ex. 2006 - Expert Declaration of Dr. Gary Wooley iso Patent Owner
`Response,” and (2) the version of Ex. 2012 titled “CORRECTED Exhibit 2012 Jake Hamdan Deposition
`Transcript_SEALED” and “CORRECTED Exhibit 2012 Jake Hamdan Deposition Transcript_REDACTED”
`replace “Exhibit 2012 Jake Hamdan Deposition Transcript.”
`
`

`

`
`We sincerely apologize for the error, and we appreciate your attention to the matter.
`
`Sincerely,
`
`Karon
`
`Karon N. Fowler
`Morgan, Lewis & Bockius LLP
`110 North Wacker Drive, Suite 2800 | Chicago, IL 60606-1511
`Direct: +1.312.324.1142 | Main: +1.312.324.1000 | Fax: +1.312.324.1001
`karon.fowler@morganlewis.com | www.morganlewis.com
`
`Pronouns: She/Her/Hers
`
`