UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________
`
`PASON SYSTEMS USA CORP.,
`
`Petitioner,
`
`v.
`
`AUTO-DRIL, INC.,
`
`Patent Owner.
`
`Patent No. 6,994,172
`
`Issue Date: February 7, 2006
`
`Title: WELL DRILLING CONTROL SYSTEM
`
`_________________________________
`
`Case IPR: 2016-00624
`
`_________________________________
`
`
`
`
`
`PASON SYSTEMS USA CORP. AND AUTO-DRIL, INC.’s JOINT
`MOTION TO TERMINATE PROCEEDING PURSUANT TO
`35 U.S.C. § 317
`
`1
`
`
`
`
`
`
`
`
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________
`
`PASON SYSTEMS USA CORP.,
`
`Petitioner,
`
`v.
`
`AUTO-DRIL, INC.,
`
`Patent Owner.
`
`Patent No. 6,994,172
`
`Issue Date: February 7, 2006
`
`Title: WELL DRILLING CONTROL SYSTEM
`
`_________________________________
`
`Case IPR: 2016-00624
`
`_________________________________
`
`
`
`
`
`PASON SYSTEMS USA CORP. AND AUTO-DRIL, INC.’s JOINT
`MOTION TO TERMINATE PROCEEDING PURSUANT TO
`35 U.S.C. § 317
`
`1
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Pason Systems USA Corp.
`
`(“Pason”) and Patent Owner Auto-Dril, Inc. (“Auto-Dril”) (collectively, “the
`
`Parties”) jointly request termination of the Inter Partes Review of U.S. Patent No.
`
`6,994,172, Case No. IPR2016-00624 based on a resolution between the Parties.
`
`I.
`
`Reasons for Granting the Motion
`
`Generally, the Board expects that a proceeding will terminate after the filing
`
`of a joint motion to terminate. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,768 (Aug. 14, 2012). Pursuant to 37 C.F.R. § 42.20(b), the
`
`Petitioner sought prior authorization from the Board to file this request on
`
`April 12, 2016. The Board gave the Parties authorization to file this request via
`
`email on April 19, 2016. Case No. IPR2013-00428, Paper No. 56 provides
`
`guidance as to the content of a motion to terminate. There, the Board indicates that
`
`a joint motion, such as this one, should (a) include a brief explanation as to why
`
`termination is appropriate; (b) identify all parties in any related litigation involving
`
`the patent at issue; (c) identify any related proceedings currently before the Office,
`
`and (d) discuss specifically the current status of each such related litigation or
`
`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
`
`motion satisfies each of the above requirements and is accompanied by a copy of
`
`the Parties’ Confidential Global License and Dismissal Agreement (“the
`
`Agreement”), as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`
`
`
`2
`
`
`
`A. Brief Explanation of Why Termination is Appropriate
`Termination is appropriate because a final written decision has not been
`
`reached in this proceeding. Pason filed its petition for Inter Partes review on
`
`February 16, 2016. Auto-Dril has not filed a preliminary response, and one is not
`
`due until May 16, 2016. This Inter Partes review has not been instituted.
`
`Termination of this proceeding is appropriate because Petitioner will no
`
`longer be participating in this proceeding, and the Board has not decided the merits
`
`of the proceeding. The Parties have reached an agreement to terminate this Inter
`
`Partes review, which is memorialized in their Agreement. The Agreement also
`
`terminates the Parties’ related district court litigation regarding the ‘172 Patent:
`
`Auto-Dril, Inc. v. Pason Systems USA Corp., Civil Action No. 4:16-cv-00293 in
`
`United States District Court for the Southern District of Texas – Houston Division
`
`(consolidated for pretrial purposes under lead case Auto-Dril Inc. v. National
`
`Oilwell Varco, L.P., Civil Action No. 4:16-cv-00280). This district court litigation
`
`was dismissed per the Parties’ Agreement on April 6, 2016.
`
`B. All Parties in Any Pending Related Litigation Involving the
`Patent at Issue
`
`In addition to Petitioner, National Oilwell Varco, L.P. and Canrig Drilling
`
`Technology, Ltd. are defendants in two related patent infringement actions styled
`
`Auto-Dril, Inc. v. National Oilwell Varco, L.P., Civil Action No. 4:16-cv-00280,
`
`and Auto-Dril, Inc. v. Canrig Drilling Technology, Ltd., Civil Action No. 4:16-cv-
`
`
`
`3
`
`
`
`00287, both currently pending in United States District Court for the Southern
`
`District of Texas (consolidated for pretrial purposes under lead case Auto-Dril Inc.
`
`v. National Oilwell Varco, L.P., Civil Action No. 4:16-cv-00280). The Agreement
`
`to terminate the district court litigation only includes termination as to Petitioner,
`
`and not to National Oilwell Varco, L.P. and Canrig Drilling Technology, Ltd.
`
`In addition, National Oilwell Varco, L.P. and Patent Owner are also parties
`
`in a related civil action styled National Oilwell Varco, L.P. v. Auto-Dril, Inc., Civil
`
`Action No. 5:15-cv-27 currently pending in United States District Court for the
`
`Eastern District of Texas.
`
`C. Related Proceedings Currently Before the Office
`There is no other pending inter partes review proceeding involving the
`
`‘172 Patent.
`
`D. Current Status of Each Such Related Litigation or Proceeding
`With Respect to Each Party to the Litigation or Proceeding
`
`Sections II.B and C above indicate the status of each related litigation or
`
`proceeding with respect to each.
`
`II.
`
`Confidential Global License and Dismissal Agreement
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
`
`Agreement is in writing, and a true and correct copy is being filed concurrently
`
`
`
`4
`
`
`
`herewith as Exhibit 1018.1 The Parties are also filing concurrently herewith a joint
`
`request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat the Agreement
`
`as business confidential information and keep it separate from the files of the
`
`‘172 Patent.
`
`III. Conclusion
`
`For all of these reasons, Pason and Auto-Dril respectfully request
`
`termination of the Inter Partes Review of U.S. Patent No, 6,994,172, Case No.
`
`IPR2016-00624.
`
`
`Dated: April 20, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`ARNOLD, KNOBLOCH &
`SAUNDERS, L.L.P.
`
`/s/ Gordon T. Arnold
`Attorney Reg. No. 32,395
`Gordon T. Arnold
`docketing@amold-iplaw.com
`4900 Woodway, Suite 900
`Houston, Texas 77056
`Telephone: 713-972-1150
`Facsimile: 713-972-1180
`
`ATTORNEY FOR PETITIONER
`PASON SYSTEMS USA CORP.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 The Agreement is being filed via the Patent Review Processing System (PRPS)
`with access to “Parties and Board only.”
`
`
`
`5
`
`
`
`Dated: April 20, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`Gray Reed & McGraw, P.C.
`
`/s/ David G. Henry, Sr.
`David G. Henry, Sr.
`Reg. No. 32,735
`dhenry@grayreed.com
`Michael D. Ellis
`Reg. No. 72,628
`
`mellis@grayreed.com
`1300 Post Oak Blvd., Suite 2000
`Houston, Texas 77056
`(713) 986-7000
`(713) 986-7100 (Telefax)
`ATTORNEY FOR PATENT
`OWNER AUTO-DRIL, INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 20th day of April 2016, a copy of the foregoing
`
`Joint Motion to Terminate Proceeding was served by email upon the following:
`
`David G. Henry, Sr.
`GRAY REED & MCGRAW, P.C
`dhenry@grayreed.com
`1300 Post Oak Blvd., Suite 2000
`Houston, Texas 77056
`Telephone: (713) 986-7000
`Facsimile: (713) 986-7100
`
`
`
`Respectfully submitted,
`
`/s/ Godon T. Arnold
`Gordon T. Arnold
`Attorney Reg. No. 32,395
`ARNOLD, KNOBLOCH & SAUNDERS, L.L.P.
`docketing@amold-iplaw.com
`4900 Woodway, Suite 900
`Houston, Texas 77056
`Telephone: 713-972-1150
`Facsimile: 713-972-1180
`
`ATTORNEY FOR PETITIONER
`PASON SYSTEMS USA CORP.
`
`
`
`
`
`7
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
